Delhi High Court - Orders
Pfizer Inc & Ors vs Azista Industries Private Limited & Ors on 15 September, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~10
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 190/2022
PFIZER INC & ORS. ..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Tusha
Malhotra and Ms. Risha Bhargava,
Advocates (M: 9999954489).
versus
AZISTA INDUSTRIES PRIVATE LIMITED
& ORS. ..... Defendants
Through: Mr. Ajay Sahni, Advocate.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 15.09.2022
1. This hearing has been done through hybrid mode.
2. The present suit has been filed seeking injunction against the infringement of patent no. IN 218291 titled "2-(Pyridin-2-ylamino)- Pyrido(2,3-d) Pyrimidin-7-ones" which covers the pharmaceutical product 'Palbociclib'. An ad-interim injunction was granted on 29th March, 2022 in the following terms:
"19. In the opinion of the Court, the Plaintiffs has made out a prima facie case for grant of ad-interim ex parte injunction. The balance of convenience in the present case lies in favour of the Plaintiffs, considering the fact that the patent is an old patent with a priority date of almost 19 years ago. The Defendants, or anyone acting on their behalf are, accordingly, restrained from manufacturing. marketing, sellins. exporting. importins products containing 'Palbociclib' or in any other manner infringing 'IN 218291' till the next date of hearing. "
3. Pleadings are complete in the matter. On behalf of Defendant Nos. 1 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 190/2022 Page 1 of 4 Signing Date:15.09.2022 17:07:59 & 3, a statement has been made in the written statement that the said Defendants have neither manufactured nor sold or offered to sell the product 'Palbociclib' in India nor do they have any intention to commercially launch any such product in India during the lifetime of the patent IN 218291.
4. Insofar as Defendant No.2, which is a company based in Bhutan, is concerned, the stand taken is that there is no violation of the suit patent by the said Defendant. It is also stated in the written statement that it does not have any intention to manufacture, export or commercially sell the product of the Plaintiff in India during the lifetime of the patent.
5. In view of the above position, on 29th July, 2022, this Court was of the opinion that the suit could be finally decreed against the Defendants. The Plaintiff's counsel, however, sought time for conducting further inquiries. Subsequently, on 12th September, 2022 alleged transcripts of some conversations between an investigator and a representative of Defendant No.1 was handed over the Court expressing apprehension that the Indian company i.e., Defendant No.1- Azista Industries Pvt. Ltd. had expressed its willingness to supply 'Palbociclib' for a patient in India. The said transcripts were handed over to Mr. Ajay Sahni, ld. Counsel, who wished to seek instructions in the matter.
6. Today, Mr. Ajay Sahni, ld. Counsel, on instructions, submits that insofar as Defendant No.2- Azista Bhutan Healthcare Limited is concerned, it has already given instructions to Defendant No.1 and Defendant No.3 not to dispatch any products of 'Palbociclib' in India or offer the same for commercial sale in India. He submits that the transcripts of the telephonic conversation has been perused by the Defendant companies and the Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 190/2022 Page 2 of 4 Signing Date:15.09.2022 17:07:59 instructions that he received were that repeated phone calls were made on behalf of the one 'Ganpati Medicos' seeking supply of the drug 'Palbociclib' on humanitarian grounds for one patient. However, it is his submission that no dispatch of the product has been made. He further submits that Defendants have no objection if the suit is decreed in terms of paragraph 78(a) of the prayer clause so long as the said order is applicable only within India.
7. Considering the submissions made by ld. Counsel for the Defendants, Mr. Anand, ld. Counsel, submits that since the Defendants have given an undertaking to not to manufacture, sell, distribute, import or export products covered by the suit patent in India during the lifetime of the patent i.e., till 10th January, 2023, the suit can be decreed.
8. Heard. In view of the submissions made by both the counsel for the parties, the assurances given and undertakings recorded on behalf of the Defendants are accepted. It is directed that the Defendant shall be bound by the undertakings given in their written statements and the suit shall stand decreed in the following terms:-
"a. A decree of permanent injunction restraining the Defendants, their directors, employees, officers, servants, agents, stockiest, retailers, wholesalers, distributors, associate and group companies and all others acting for and on their behalf from using, making, selling, distributing, advertising, exporting, importing and offering for sale, or in any other manner, directly or indirectly, dealing in any product (in any form), including Palbociclib either as API or any of its pharmaceutically acceptable salt, or finished formulation or in any other form including under the brand name "Palbib" or any other brand name, that infringes the subject matter of Indian Patent Nos. IN Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 190/2022 Page 3 of 4 Signing Date:15.09.2022 17:07:59 218291 (Palbociclib and its pharmaceutically acceptable salts);"
The above decree shall operate only in the territory of India and shall also apply to 'individual sales'.
9. The suit stands decreed in the above terms. Decree sheet be drawn. All applications, if any, are disposed of.
PRATHIBA M. SINGH, J SEPTEMBER 15, 2022 MR/SK Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 190/2022 Page 4 of 4 Signing Date:15.09.2022 17:07:59