Delhi High Court - Orders
Merck Sharp And Dohme Corp & Anr vs Actis Generics Pvt Ltd on 5 March, 2021
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~10
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 106/2021
MERCK SHARP AND DOHME CORP & ANR. ..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Tusha
Malhotra and Ms. Pankhuri Malik,
Advocates.
versus
ACTIS GENERICS PVT LTD ..... Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 05.03.2021 I.A. 3460/2021 (for exemption)
1. Allowed, subject to all just exceptions.
2. The application is disposed of.
I.A. 3459/2021(under Order 11 Rule 1(4) Section 151 CPC 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'). 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. I.A. is disposed of.
Signature Not Verified Digitally Signed CS(COMM) 106/2021 Page 1 of 5 By:SAPNA SETHI Signing Date:09.03.2021 16:12CS(COMM) 106/2021
4. Let the plaint be registered as a suit.
5. Issue summons to the Defendant. Summons in the suit shall indicate that the written statement to the plaint shall be filed positively within 30 days of receipt of summons. Along with the written statement, the 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.
6. Liberty is given to the Plaintiffs to file a replication within 15 days of the receipt of the written statement. Along with the replication filed by the Plaintiffs, if any, 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.
7. List before the Joint Registrar for marking of exhibits on 20th May, 2021. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
8. List before Court for framing of issues thereafter on 15th July, 2021.
I.A. 3458/2021 (under Order 39 Rule 1 & 2)
9. Mr. Anand submits that the advance copy of the plaint has been served on the Defendant by email. However, there is no appearance on behalf of the Defendant.
10. 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 Signature Not Verified Digitally Signed CS(COMM) 106/2021 Page 2 of 5 By:SAPNA SETHI Signing Date:09.03.2021 16:12 No.1 - M/s. Merck Sharp & Dohme Corp., USA is the owner of the said Patent and M/s Sun Pharmaceutical Industries Ltd. 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 pharmaceutical composition Sitagliptin for which a certificate of validity has 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. The validity of the patent expires in July 2022. Mr. Pravin Anand, learned counsel for the Plaintiffs submits that the Plaintiffs had filed a suit before this Court [CS (COMM) 159/2020] against Angels Pharma India Pvt. Ltd.. In the said suit, pursuant to the discovery motion by the Plaintiffs, the Defendant in the said suit made a disclosure which now forms part of the joint application filed by the parties under Order 23 Rule 3. Relevant extract of the same reads as below:
"(vii.) The Defendant also discloses that the Defendant procured Sitagliptin in n-1 form from another entity, i.e. Actis Generics, with its office at 5-5- 35/18/1&3, Plot No 74, 4th floor Prashanthi Hagar, Kukatpally Hyderabad
- 500 072, Andhra Pradesh. (...)"
11. Mr. Anand argues that an investigation was carried out by the Plaintiffs and it has been revealed that the Defendant, without any authorization or permission from the Plaintiffs is distributing and selling, its infringing Sitagliptin API in India. Further, it is also advertising and offering for sale, Signature Not Verified Digitally Signed CS(COMM) 106/2021 Page 3 of 5 By:SAPNA SETHI Signing Date:09.03.2021 16:12 its infringing Sitagliptin API in India. He states that these acts of the Defendant is against the public interest and Plaintiffs have a prima-facie case and an irreparable loss shall be caused to the Plaintiffs if ad-interim order, as sought in the application is not granted. Mr. Anand also refers to the print out of the webpage of the Defendant's website and points outs, that the Defendant is manufacturing, selling and distributing the Sitagliptin API, which is infringing the Plaintiff No. 1's patent IN'816. Mr. Anand submits that on becoming aware of the aforesaid, the Plaintiffs had issued a notice dated 7th October, 2020, to the Defendant, however despite service thereof, there is no response. Mr. Anand also relies upon several orders passed by this Court in the past wherein an ex-parte injunction has been granted by this Court against parties who have been manufacturing products which are conflict in with the Plaintiff's patent. In view of the above, and considering the fact that Plaintiff No. 1 has a valid and subsisting patent being IN'816 for which a certificate of validity was granted by this Court, as also the other averments in the plaint itself, the Court finds that the Plaintiffs have made out a prima facie case in his favour and in case no ex-parte ad-interim injunction is granted the Plaintiffs will suffer an irreparable loss. The balance of convenience also lies in favour of the Plaintiffs and against the Defendant.
12. Therefore, an ex-parte injunction is granted in favour of the Plaintiffs and against the Defendant and its directors, employees, officers, servants, agents and all others, acting for and on its behalf 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' patent Signature Not Verified Digitally Signed CS(COMM) 106/2021 Page 4 of 5 By:SAPNA SETHI Signing Date:09.03.2021 16:12 IN'816 or any of the claims thereof, including Sitagliptin or any of its pharmaceutically acceptable salts.
13. Compliance of Order 39 Rule 3 CPC be done with one week from today.
14. List before the Court on 15th July, 2021.
SANJEEV NARULA, J MARCH 5, 2021 nk Signature Not Verified Digitally Signed CS(COMM) 106/2021 Page 5 of 5 By:SAPNA SETHI Signing Date:09.03.2021 16:12