Madras High Court
Boehringer Ingelheim Pharma Gmbh & ... vs / on 21 January, 2020
Author: G.Jayachandran
Bench: G.Jayachandran
C.S.No.282 of 2019 and A.No.3184 of 2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated : 21.01.2020
CORAM:
THE HONOURABLE DR. JUSTICE G.JAYACHANDRAN
C.S.No.282 of 2019
and A.No.3184 of 2019
1.Boehringer Ingelheim Pharma GmbH & Co.KG,
D-55216, Ingelheim am Rhein
Germany
Rep by its Power of Attorney Mr.Sujeet Kumar
2.Boehringer Ingelheim (India) Pvt.Ltd.,
1102, 11th Floor, Hallmark Business Plaza,
Guru Nanak Hospital,
Bandra (East), Mumbai
India, 400051
Rep by its Power of Attorney Mr.Sujeet Kumar .. Plaintiffs
/versus/
Tanmed Pharma India Private Limited,
Registered office at No.18,
Dr.Ambedkar Road,
Kodambakkam, Chennai 600 024
And also Factory at
No.1/429, Multi Industrial Nagar,
Gerugambakkam,
Chennai-600128. .. Defendant
This Civil Suit is filed under Order IV Rule 1 Original Side Rules
read with Order VII Rule 1 of CPC and under Sections 104-106 of the Patents
Act prayed for (a) The defendant, by themselves, their directors, licensees,
stockiest and distributors and / or anyone claiming through any of them,
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C.S.No.282 of 2019 and A.No.3184 of 2019
jointly and severally be restrained by a permanent order and injunction of
this Hon'ble Court from infringing the patent rights of plaintiff No.1 under
Indian Patent Nos.243301 and 227719 by launching, making, using, offering
for sale, selling, importing and / or exporting the medicinal product,
Linagliptin in any form whatsoever including Linagliptin formulation,
“Linagliptin Tablet” and /or “Linagliptin + Metformin Hydrochroride
Tablets” or any “generic version” thereof or any other product covered by
the subject patents granted by the Controller of Patents on January 19,
2009 and October 5, 2010 in favour of Plaintiff No.1 subsists, or otherwise;
(b) The defendant be, jointly and severally, ordered and decreed to pay to
the plaintiffs a sum of Rupees 25,00,000/- as and by way of damages; ( c)
The defendant be directed to render a true and faithful account of the
profits made by the defendant by selling the impugned products and the
defendant be further directed to pay to the plaintiff such amount as may be
found due and payable on such account being taken; (d) The defendant by
themselves, their servants and agents and any person claiming through or
under them be ordered and decreed to deliver up for destruction to the
plaintiffs or their authorized representatives or attorneys, all the impugned
products manufactured by the defendant that infringes the plaintiff No.1's
subject patents; (e) For costs of the suit.
For plaintiffs : Mr.Galdys Daniel
For Defendant : Mr.K.Ashok Kumar
JUDGMENT
The plaintiff herein a Multinational Company involved in manufacturing of Pharma drugs. The present suit is filed alleging 2/6 http://www.judis.nic.in C.S.No.282 of 2019 and A.No.3184 of 2019 infringement of its product patent “Linagliptin” by the defendant.
2. On receipt of the suit summon, the defendant has filed written statement, wherein, it is stated that it is true that it applied for license to manufacture the drug “Linagliptin Tablet” from the department of Drug Control and in December 2017, license was also issued for manufacturing the drug “Linagliptin Tablet”, though license to manufacture the said drug was obtained, they did not manufacture the said drug.
3. Meanwhile, on receipt of the suit summon on 23.04.2019, from the Court the defendant has surrendered the license to the Drug Controller vide letter dated 27.05.2019. The learned counsel for the defendant state that though the license to manufacture the drug “Linagliptin” was obtained by the defendant, there was no manufacturing or marketing of the said drug by the defendant. Therefore, there is no cause of action to sustain the suit.
4. From the suit records this Court finds that pending suit, pursuant to the application taken by the plaintiff, Mrs A.M.Amutha Ganesh, 3/6 http://www.judis.nic.in C.S.No.282 of 2019 and A.No.3184 of 2019 Advocate was appointed as Commissioner to inspect the premises of the defendant. Accordingly, pursuant to the Commissioner warrant issued by this Court on 15.11.2019, the Advocate Commissioner has inspected the premises of the defendant along with the officials of Drug Control department on 23.12.2019. The Advocate Commissioner has submitted his report to this Court on 02.01.2020, wherein, the Advocate Commissioner has ascertained from the physical inspection of the defendant's premises as well as from the report of the Assistant Director of Drug Control, who accompanied him during the inspection that the defendant has not manufactured the product/formulation “Linagliptin Tablet” and/or “Linagliptin + Metformin Hydrochroride Tablets”.
5. From this report, the fact that the defendant has not manufactured the drug for which the plaintiff claims patent is established. Even the semblance of any attempt to manufacture the said drug has come to halt by surrendering the license on 27.05.2019.
6. Further the defendant has given an undertaking that he will not manufacture the drug “Linagliptin” as long as the plaintiff holds the exclusive patent right of the said drug. Therefore, it is obvious that no 4/6 http://www.judis.nic.in C.S.No.282 of 2019 and A.No.3184 of 2019 infringement has occurred.
7. In the light of the above fact and the undertaking given by the defendant, nothing survives in the suit. This Court opines that this is not a case fit for trial. Accordingly, the suit is dismissed. Parties shall bear their respective costs.
21.01.2020
Speaking Order / Non-Speaking Order
Index : yes/no
rpl
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C.S.No.282 of 2019 and A.No.3184 of 2019
Dr.G.JAYACHANDRAN,J.
rpl
C.S.No.282 of 2019
and A.No.3184 of 2019
21.01.2020
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