Delhi High Court - Orders
Merck Sharp And Dohme Corp & Anr vs Indilina Pharmaceuticals on 23 March, 2021
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~30
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 133/2021
MERCK SHARP AND DOHME CORP & ANR. ..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Tusha
Malhotra, Ms. Pankhuri Malik and
Ms. Yamini Jaswal, Advocates.
versus
INDILINA PHARMACEUTICALS ..... Defendant
Through: Appearance not given.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 23.03.2021 I.A.No.4388/2021 (for exemption)
1. Exemption allowed, subject to all just exception.
2. The application stands disposed of.
I.A. No. 4387/2021 (under Order 11 Rule 1(4) read with Section 151 of CPC, 1908 for filing additional documents)
3. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act').
4. The Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act. The application is thus, disposed of.
CS(COMM) 133/2021
5. Let the plaint be registered as a suit.
6. Issue summons. Mr. Suri, learned counsel for the Defendant, appearing on advance notice accepts summons. Written statement to be filed by the Defendant within 30 days from today. Along with the written statement, the Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:26.03.2021 16:53 Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiffs, without which the written statement shall not be taken on record.
7. Liberty is given to the Plaintiffs to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendant be filed by the Plaintiffs, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
8. List before the Joint Registrar for marking of exhibits on 19th May, 2021. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
I.A. No. 4386/2021 (under Order XXXIX Rules 1 and 2 r/w Section 151 of CPC, 1908)
9. Plaintiff No. 1 - M/s Merck Sharp & Dohme Corp., USA and Plaintiff No. 2 - M/s Sun Pharmaceutical Industries Ltd. have filed the present suit seeking an injunction restraining the infringement of Patent No. 209816 (hereinafter referred to 'IN'816'). The case of the Plaintiffs is that Plaintiff No.1 is the owner of the said patent and Plaintiff No. 2 is licensee of Plaintiff No. 1. The said patent covers the novel compound 'SITAGLIPTIN'. The Plaintiff No. 2 sells 'SITAGLIPTIN' in various formulations in India. Globally, 'SITAGLIPTIN' products are sold under mark ISTAVEL and ISTAMET. However, in India they are sold under the marks 'JANUVIA' and 'JANUMET'. The Plaintiff No. 1 is the holder of IN'816 granted on 6th September, 2007 with priority date as 6th July, 2001. IN'816 relates to pharmaceutical composition Sitagliptin for which a certificate of validity has Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:26.03.2021 16:53 already been granted by this Court in CS(OS) 586/2013 vide judgment and Order dated 7th October, 2015. There has been neither any pre-grant nor post-grant opposition in respect of the Plaintiff's suit patent 'Sitagliptin'. Mr. Pravin Anand, learned counsel for the Plaintiffs states that Mr. Anand, assisted by Ms. Tusha Malhotra, submits that the Plaintiffs learnt about the infringing activities of the Defendant on 30th January, 2021 when Plaintiff No.1 received an intimation from its Commercial Operations team that the Defendant had entered bid for the tenders opened by Nuclear Power Corporation of India Limited ('NPCIL'). The screenshots of the bid submitted by the Defendant have also been placed on record. It is submitted that a perusal of the bid offer of the Defendant shows that the Defendant has submitting bids for tablets of 'Sitagliptin' and is therefore offering the said tablets for sale.
10. Mr. Suri, learned counsel for the Defendant submits that he has instructions to say that that the bids submitted to NPCIL have since been withdrawn by the Defendant. He submits that he would file an affidavit to this effect within a period of two weeks from today. The aforesaid statement of the counsel is taken on record, and the Defendant is held bound by the same. Therefore, the Defendant, its directors, partners, employees, officers, servants, agents and all others acting for and on its behalf are restrained from manufacturing, using, selling, distributing, advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing in either API or intermediates or any product, that infringes the claimed subject matter of the Plaintiffs' Indian Patent No 209816 or any of the claims thereof, including 'Sitagliptin' or any of its pharmaceutically acceptable salts;
Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:26.03.2021 16:5311. Further, the Defendant is directed to disclose on an affidavit details, statement of profits with respect to the transactions, if any, made by the Defendant concerning 'Sitagliptin' API and tablets.
12. List before the Court on 29th April, 2021.
SANJEEV NARULA, J MARCH 23, 2021 v Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:26.03.2021 16:53