Delhi High Court - Orders
Pharmacyclics Llc & Anr vs Bdr Pharmaceuticals International Pvt ... on 25 August, 2020
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~1 (original side)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 342/2020 & I.A. 7332/2020, I.A. 7333/2020, I.A.
7334/2020, I.A. 7335/2020
PHARMACYCLICS LLC & ANR. ..... Plaintiffs
Through: Mr. Pravin Anand, Mr. Dhruv
Anand, Ms. Udita M. Patro, Ms. Kavya
Mammen and Ms. Sampurnaa Sanyal, Advs.
versus
BDR PHARMACEUTICALS INTERNATIONAL
PVT LTD & ORS. ..... Defendants
Through: Mr. J. Sai Deepak, Adv. briefed
by Mr. Guru Nataraj and Mr. Avinash K.
Sharma, Advs. for D-1 and D-3
Mr. Anirudh Wadhwa, Mr. Vipul Kumar and
Ms. Lakshya Kampani, Advs. for D-2
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 25.08.2020
(Video-Conferencing)
I.A. 7335/2020 in CS(COMM) 342/2020
1. Exemption allowed, subject to all just exceptions.
2. The application stands disposed of.
I.A. 7334/2020 in CS(COMM) 342/2020
1. This is an application under Order XI Rule 1(4) of the CPC, seeking leave to file additional documents.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 342/2020 Page 1 of 6 Signing Date:26.08.2020 22:52:072. The plaintiff is permitted to do so, within a period of four weeks from today with copies thereof marked to learned counsel for the defendants, who may deny or admit the documents during the course of proceedings.
3. The application stands disposed of.
I.A. 7333/2020 in CS (COMM) 342/2020
1. Issue notice to the defendants.
2. Notice is accepted by Mr. Guru Nataraj and Mr. Anirudh Wadhwa, learned counsel on behalf of Defendant Nos. 1 and 3 and Defendant No.2 respectively.
3. Renotify on 11th September, 2020.
CS(COMM) 342/2020
1. Let the plaint be registered as a suit.
2. The grievance of the plaintiff is that the compound IBRUTINIB, in respect of which the plaintiff has been granted Indian patent IN262968 (hereinafter referred to as "the suit patent") and which is being sold by the plaintiff under the brand name "IMBRUVICA", is also, possibly, being marketed by the defendants, in generic form. The details of the suit patent as well as the chemical formulation thereof, the method of its synthesis and the mode of its Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 342/2020 Page 2 of 6 Signing Date:26.08.2020 22:52:07 activity, have been set out in the plaint, which asserts that the aforesaid molecule, which was invented by the plaintiff, is a potent inhibitor of Bruton's Tyrosine Kinase (BTK) activity, and is used in cancer therapy.
3. It is further stated that the compound "IBRUTINIB" is to be specifically found at Example 1b in IN'968, and that the method of synthesis thereof is stated in the specifications submitted for registration of the said patent. "IBRUTINIB", it is further asserted, is claimed both in Claim 1, as well as specifically, by chemical name, as Compound 13 in Claim 2.
4. The plaintiff submits that the aforesaid compound "IBRUTINIB" was commercially launched, by the plaintiff, under the brand name "IMBRUVICA" on 12th February, 2016, in the Indian market.
5. The plaintiff alleges possible infringement, of the aforesaid suit patent, by the defendants, by way of marketing of product manufactured by Defendant No.1 and sold by the remaining defendants.
6. Essentially, three factual assertions are contained, in the plaint, to support this assumption viz. (i) that, on its Indiamart profile, M/s Dr. Vijay Pharma Pvt. Ltd., which claims to be a wholesaler of pharmaceutical products, has displayed the "IBRUTINIB" product under the brand name "IB-TIB", and that the depiction, as contained Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 342/2020 Page 3 of 6 Signing Date:26.08.2020 22:52:07 on the website, indicates that the product is manufactured by Defendant No. 1 i.e. M/s BDR Pharmaceutical International Pvt. Ltd. and marketed through M/s Cadila Pharmaceutical Limited, i.e. Defendant No. 2, (ii) telephonic conversations, with the representatives of Defendant Nos. 2 and 3, seem to indicate that the defendants, in fact, have commenced marketing of generic formulations of "IBRUTINIB", in June, 2020, and (iii) Defendant Nos. 2 and 3 have applied for registration of their trade mark "IB- TIB" and "IBRUSTA", on a "proposed to be used" basis, both the aforesaid brand names, as referring to formulations of "IBRUTINIB", regarding which patent rights vest in the plaintiff.
7. At the same time, the plaint candidly acknowledges that no infringing "IBRUTINIB" products are reflected on the website of the defendants, in any online pharmacy or in any shop selling medical and pharmaceutical preparations.
8. Nevertheless, in view of the assertions that M/s D. Vijay Pharma Pvt. Ltd. has displayed the "IB-TIB" product, on its Indiamart profile, clearly reflecting the product to be a formulation of "IBRUTINIB", with the Defendant No. 2 being shown as the entity marketing the said product, and in view of the application, for registration of trademarks, for manufacture and clearance of formulations of "IBRUTINIB", by Defendant Nos. 2 and 3, the matter deserves consideration, especially as it relates to pharmaceutical patent rights, and involves, therefore, an overwhelming consideration of public interest.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 342/2020 Page 4 of 6 Signing Date:26.08.2020 22:52:079. Accordingly, issue summons to the defendants to file a written statement in response to the suit within a period of four weeks, accompanied by affidavit of admission/denial of plaintiff's documents with advance copy to the plaintiff, who may file replication thereto, if any, within two weeks thereof, accompanied by affidavit of admission/denial of defendants' documents.
10. The written statement and replication would not be taken on record, unless accompanied by said affidavits.
11. List the suit for completion of pleadings, admission/denial of documents and marking of exhibits before the Joint Registrar (Judicial), on 3rd November, 2020.
I.A. 7332/2020 (stay) in CS(COMM) 342/2020
1. Issue notice to the defendants to file a response to this application within a period of one week, with advance copy to learned counsel for the applicant, who may file rejoinder thereto, if any, within one week thereof.
2. Notice is accepted by Mr. Guru Nataraj and Mr. Anirudh Wadhwa, learned counsel appearing on behalf of Defendant Nos. 1 and 3 and Defendant No. 2 respectively.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 342/2020 Page 5 of 6 Signing Date:26.08.2020 22:52:073. Renotify this application on 11th September, 2020 before the Court.
C. HARI SHANKAR, J.
AUGUST 25, 2020 dsn Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 342/2020 Page 6 of 6 Signing Date:26.08.2020 22:52:07