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Pfizer Inc And Ors vs Shivalik Rasayan Limited on 15 July, 2020

Author: Rajiv Shakdher

Bench: Rajiv Shakdher

                           $~1
                           *       IN THE HIGH COURT OF DELHI AT NEW DELHI
                           +       CS(COMM) 257/2020
                                   PFIZER INC AND ORS                                       .....Plaintiffs
                                                 Through            Mr. Pravin Anand with Ms. Tusha
                                                                    Malhotra and Ms. Rashi Punia, Advs.
                                                      versus

                                   SHIVALIK RASAYAN LIMITED                   .....Defendant
                                                Through  Mr. Amit Sahni, Adv.

                                   CORAM:
                                   HON'BLE MR. JUSTICE RAJIV SHAKDHER
                                                ORDER

% 15.07.2020 [Court hearing convened via video-conferencing on account of COVID-19] I.A. No. 5639/2020

1. Allowed. The plaintiffs are permitted to file additional documents. 1.1 The additional documents will be filed within 30 days of the lockdown qua this Court being lifted.

I.A. No.5640-41/2020

2. Allowed, subject to the plaintiffs curing the deficiencies referred to in the captioned applications within five days of the lockdown qua this Court being lifted.

CS(COMM) No.257/2020 & I.A. No.5638/2020

3. Issue summons in the suit and notice in the captioned application.

4. The plaintiffs claim ownership in patents bearing nos. IN 218291, IN 209251 & IN 232353. These patents concern Palbociclib [i.e. IN 218291]; Sunitinib [i.e. IN 209251]; and Axitinib [i.e. IN 232353]. 4.1 Mr. Pravin Anand, who appears for the plaintiffs, says that the patent qua Palbociclib [i.e. IN 218291] expires on 10.01.2023, whereas, the patent concerning Sunitinib [i.e. IN 209251], expires on 15.02.2021. 4.2 However, insofar as Axitinib [i.e. IN 232353] is concerned, I am informed by Mr. Anand that the patent qua the same expired on 30.06.2020. Therefore, only damages are claimed qua this patent. 4.3 Mr. Anand says that insofar as the other two patents are concerned i.e. IN 218291 and IN 209251, injunction as well as damages are claimed. 4.4 Furthermore, Mr. Anand says that the defendant has been infringing the rights of the plaintiffs as conferred upon them by the aforementioned patents. For this purpose, Mr. Anand has drawn my attention, inter alia, to pages 692 and 809 of the documents filed by the plaintiffs.

5. At this stage, Mr. Amit Sahni enters appearance and accepts service on behalf of the defendant.

5.1 Mr. Sahni says that the defendant has not made any commercial use of the aforementioned patents as claimed by the plaintiffs. 5.2 In this behalf, my attention has been drawn by Mr. Sahni to the disclaimer entered by the defendant on its website, the screenshot of which is appended on page 693 of the documents filed by the plaintiff.

6. To be noted, Mr. Anand refutes this position, that is, that no commercial use has been made by the defendant of the plaintiffs' patents.

6.1 Mr. Anand has submitted that the website of the defendant sets out that 250 kilograms of Palbociclib was exported.

6.2 According to Mr. Anand, such a huge quantity could not have been exported for the purpose of research.

6.3 Besides this, Mr. Anand says that even if the defendant's claim is accepted that it had exported the aforementioned Active Pharmaceutical Ingredients [in short "APIs"] for the purpose of research, it will have to follow the regime qua declaration of the information as mandated by the Division Bench of this Court in Bayer Corporation vs. Union of India and Others, 2019 SCC OnLine Del 8209. In this behalf, in particular, Mr. Anand has drawn my attention to paragraph 113 of the aforementioned judgement.

7. Having heard learned counsel for the parties, the defendant is injuncted, for the moment, from making any commercial use of the APIs concerning the aforementioned drugs, which, in any case, is the stand that Mr. Sahni has taken before me today on behalf of the defendant. 7.1 Furthermore, if the defendant wishes to export the APIs concerning the aforementioned drugs, it will follow the regime set forth by the Division Bench of this Court in Bayer Corporation [supra].

8. At this stage, counsel for the parties say that the matter be stood over for one week to enable them to work out a possible amicable settlement in the matter.

9. Accordingly, at request, renotify the matter on 04.08.2020.

                                                                               RAJIV SHAKDHER, J
                           JULY 15, 2020
                           pmc/KK                          Click here to check corrigendum, if any
                           CS(COMM) 257/2020                                                      3/3



Signature Not Verified
digitally signed byVIPIN
KUMAR RAI
signing date16.07.2020
09:42
 Signature Not Verified
digitally signed byVIPIN
KUMAR RAI
signing date16.07.2020
09:42