Delhi High Court
Sugen,Inc.And Ors. vs Mr. K Vijaya Prakash And Ors. on 25 April, 2023
Author: Amit Bansal
Bench: Amit Bansal
2023:DHC:2918 * IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of Decision : 25th April, 2023 + CS(COMM) 4/2016 and I.A. 174/2016 (O-XXXIX R-1& 2 of CPC) SUGEN, INC. AND ORS. ..... Plaintiffs Through: Mr.Pravin Anand, Ms.Tusha Malhotra and Ms.Richa Bhargava, Advocates. versus K VIJAYA PRAKASH AND ORS. ..... Defendants Through: Mr.Abhishek Malhotra and Ms.Shilpa Gamnani, Advocates. CORAM: HON'BLE MR. JUSTICE AMIT BANSAL AMIT BANSAL, J. (Oral)
I.A.1383/2016 (O-XXXIX R-2A of the CPC) and I.A. 10292/2016 (O-XXXIXR-2A of the CPC)
1. These applications have been filed on behalf of the plaintiffs under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (CPC) to hold the defendants liable for contempt, having violated the injunction order dated 6th January, 2016 passed by this Court.
2. The present suit was filed alleging infringement of three patents of the plaintiffs, being Indian Patents No. 249316, 250050 and 243571. The said three patents cover and claim the commercial product of the plaintiffs "Crizotinib" sold under the trade names "Xalkori®" and "Crizalk®" in India.
3. Vide order dated 6th January, 2016, ex-parte ad interim injunction was Signature Not Verified Signed By:AMIT BANSAL Location: Signing Date:30.04.2023 CS(COMM) 4/2016 02:08 Page 1 of 10 2023:DHC:2918 passed in the following terms:
"...Plaintiff no. 2 is the owner of Indian Patent No. 250050... Defendants are acting in concert, inasmuch as are under a common control and management. Plaintiffs have come to know that defendant nos. 1 to 7 in concert of each other are either manufacturing the impugned generic product in India and exporting, selling and/or offering for sale the same in Bangladesh and/or at the very least, surreptitiously and clandestinely importing and diverting for sale into the Indian markets the impugned product, that is, „CRIZO SPL‟, having the same molecule as that of „Crizotinib‟ involved in Indian Patent No. 250050. It is further submitted that defendants are in the process of manufacturing and marketing generic „Crizotinib‟ for sale across the country including within the jurisdiction of this Court. It is contended that this act of defendants amounts to infringement of aforesaid Indian Patent of the plaintiffs.
I have heard learned counsel, perused the plaint and the documents annexed therewith and am of the view that plaintiffs have succeeded in disclosing a prima-facie case for grant of ex- parte injunction in their favour, inasmuch as, balance of convenience is also in their favour. In case, defendants are not restrained, plaintiffs will suffer loss and injury. Accordingly, till further orders, defendants, their directors, employees, officers etc. are restrained from making, using, selling, distributing, advertising, exporting, importing and offering for sale in India, in any manner whatsoever directly or indirectly, the aforesaid drug, being subject matter of the Indian Patent No.250050 of plaintiffs."
4. I.A. 1383/2016 was filed on behalf of the plaintiffs on 25 th January, 2016 alleging that the defendants, in concert with each other, have violated the aforesaid order dated 6th January, 2016 and are continuing to manufacture, import, promote and advertise and offer for sell the impugned generic product under the name "CRIZO SPLTM" in the Indian market.
Signature Not Verified Signed By:AMIT BANSAL Location: Signing Date:30.04.2023 CS(COMM) 4/2016 02:08 Page 2 of 102023:DHC:2918 Along with the aforesaid application, the plaintiffs filed photographs of the infringing products purchased from the market and which showed that they were manufactured by the defendant no.5 in Bangladesh.
5. Notice in I.A. 1383/2016 was issued on 5th February, 2016. On 2nd May, 2016, counsel entered appearance on behalf of the defendants no.1 to 4, 6 and 7. Replies have been filed on behalf of the defendants no.6 and 7.
6. On 22nd August, 2016 another application under Order XXXIX Rule 2A of CPC, being I.A. 10292/2016, was filed on behalf of the plaintiffs alleging wilful violation of the order dated 6th January, 2016 passed by this Court. In the aforesaid application, it was alleged that the defendants were selling the impugned generic drug under the marks "CIRZO SPLTM" and "CRIZO SPALTM". Along with the application, the plaintiffs also filed an affidavit of a private investigator, Mr. Vincent Jose.
7. Notice in this application was issued on 26 th August, 2016. Subsequently, replies to both the applications have been filed on behalf of the defendants no.1 to 3, 6 and 7 and rejoinders thereto have been filed on behalf of the plaintiff. In response to the directions passed by this Court, affidavits were also filed by the defendants no.1 to 4, stating that (i) they are not engaging in any infringing activities relating to the impugned product; and, (ii) they do not engage in any manufacturing activities in Bangladesh.
8. On 9th January, 2017, this Court passed a detailed order in I.A.10292/2016, which reads as under:
"12. Mr Anand, learned counsel for the applicants (plaintiffs) has referred to the screenshot of a website of defendant no.4 which indicates that SP Labs Bangladesh Pvt. Ltd. (defendant no. 5) is disclosed as an associate company of defendant no.4. The screenshot is placed at Page 639 of the documents.Signature Not Verified Signed By:AMIT BANSAL Location: Signing Date:30.04.2023 CS(COMM) 4/2016 02:08 Page 3 of 10
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13. The learned counsel appearing for the defendant no.4 states that the said screenshot is not of its website. He has handed over another screenshot which indicates that SP Labs India Pvt. Ltd. is the only associated company of defendant no.4. Defendant no.4 shall file an affidavit unequivocally indicating (a) whether screenshot of the website as pointed out by the applicant (plaintiff) at page 639 of the documents was ever the screen of its website; (b) defendant no.4 shall produce the screenshot of its website(s) under the domain name www.sppharma.in. in the past three years; and (c) the whereabouts and the address of SP Labs Bangladesh Pvt. Ltd. Defendant no. 3 shall also file an affidavit affirming whether the logo "SP Labs" as appearing on the carton at page 605 of the documents was ever a logo adopted by defendant no.3. Let the said affidavits be filed within a period of four weeks from today."
9. Pursuant to the above order, the defendant no.4 filed an affidavit dated 5th May, 2017, stating as under:
"3. I say that the screenshot of the website filed by the Plaintiff (at page 639 of the Documents) is not a screenshot of the Defendant No.4‟s website. I further say that the said screenshot was never the screen/home page of the Defendant No.4‟s website.
4. I say that a print out of the screen shot of the Defendant No. 4‟s website as on date is annexed herewith as Annexure-A.
5. I say that I am not aware about the whereabouts/address of SP Labs Bangladesh Pvt. Ltd. I further say that Defendant No. 4 has no connection with the said SP Labs Bangladesh Pvt. Ltd."
10. Annexure A was exhibited as DW-1/PY during the trial.
11. On 12th September, 2017, suit was proceeded ex-parte against defendant no.5 and decreed against the defendants no.1 to 4, 6 and 7 in the following terms:
Signature Not Verified Signed By:AMIT BANSAL Location: Signing Date:30.04.2023 CS(COMM) 4/2016 02:08 Page 4 of 102023:DHC:2918 "1. Learned counsel appearing for the defendants no. 1 to 4, 6 & 7 submits that the said defendants have never engaged in any infringing activity related to the Suit Patent, in any manner, and have no relation or concern with the component Crizotinib which is stated to be covered by the Suit Patent of the plaintiff.
2. It is further submitted that CRIZO SPL AND CRIZO SPAL are not being manufactured or sold by defendant no. 1 to 4, 6 and 7. He further submits that he has no objection to a decree in terms of prayer 'a' of the plaint being passed against the said defendants.
3. Learned counsel for the plaintiff submits that in view of the above statement without prejudice to his contentions in the LA.
No. 1383/2016 and LA. No. 10292/2016, he would not press prayer b to e of the plaint against the said defendants and prays that a decree in terms of prayer 'a' be passed.
4. In view of the above, the Suit is decreed against the defendant no. 1 to 4, 6 and 7 restraining the defendants, directors, employees, officers, servants, agents, 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 that infringes the subject matter of Indian Patent Nos. 249316, 250050 and 243571.
5. Prayers 'b' to 'e' of the plaint, against the said defendants, are dismissed as withdrawn."
12. Counsel for the plaintiffs has placed reliance on the affidavit of the investigator engaged by the plaintiff, Mr.Vincent Jose, which states as follows:
i. That defendant no.3, SP Labs Private Limited was an associate company of defendant no.4, M/s SP Pharma. Further, the records maintained by the Ministry of Corporate Affairs confirmed that Signature Not Verified Signed By:AMIT BANSAL Location: Signing Date:30.04.2023 CS(COMM) 4/2016 02:08 Page 5 of 10 2023:DHC:2918 defendant no.l Mr. Katikala Vijaya Prakash was a director of defendants no.2 and 3.
ii. That defendant no. 2, SP Accure Labs Private Limited is the proprietor of the trademark "CRIZO SPAL™" in class 5 pertaining to medical and pharmaceutical preparations and substances, as per Application No. 3076416.
iii. On conducting an extensive internet search, the investigator also found that apart from M/s SRIS Pharmaceuticals, M/s SPR Oncocare Private Limited was advertising the impugned generic drug "CRIZO SPAL™" as manufactured by defendant no.4. The relevant printouts from the website "http://www.sprpharma.in/" and "http://www.sprpharma.in/anti-cancer-capsules.htm" of M/s SPR Oncocare Private Limited are filed with the affidavit of the investigator.
iv. The stock of "CIRZO SPAL" manufactured by defendant no.4 was available at the price of Rs.92,000/-.
v. The drug "CRIPZO SPL" was manufactured by defendant no.5, which showed the manufacturing date of March, 2016. vi. Defendant no.4 had authorized defendant no.5 under an agreement to manufacture the impugned drug "CRIZO SPAL", which is being manufactured in Bangladesh.
13. Subsequently, Mr. Vincent Jose, the investigator of the plaintiff, and defendant no.1 were cross-examined.
14. Counsel for the defendant submits that Mr. Vincent Jose, the investigator engaged by the plaintiffs has himself not carried out the investigation and therefore, his affidavit is based on hearsay evidence, which Signature Not Verified Signed By:AMIT BANSAL Location: Signing Date:30.04.2023 CS(COMM) 4/2016 02:08 Page 6 of 10 2023:DHC:2918 cannot be permitted. I do not find merit in this submission. As the supervisor, Mr. Vincent Jose has validly filed the evidence in respect of investigation done by his operatives and the same cannot be termed as hearsay.
15. Counsel for the plaintiffs has drawn attention of the Court to the website of defendant no.4, which shows that the defendant no.3 and defendant no.5 have been shown as associate companies of the defendant no.4. (page 639 of the plaintiffs' documents).
16. In their reply to the I.A. 10292/2016, defendants no.1 to 3 have stated that defendants no.1 to 3 have no connection with defendant no.5. It is stated that the plaintiffs have failed to produce actual samples of the infringing drug allegedly purchased by the plaintiff. It is further averred in the reply that the screenshots of the website of defendant no.4 and 5 filed by the plaintiffs are inaccurate.
17. In view of the aforesaid stand taken on behalf of the defendants, the plaintiffs engaged the services of the website "Internet Archive," which offered a tool known as "Wayback Machine" that provided access to a digital library of internet sites in digital form. The said service makes it possible to surf the records of saved URLs stored on the web archives of Internet Archive.
18. The plaintiffs have filed an affidavit of one Mr. Christopher Butler, the office manager at Internet Archive, which placed on record the relevant page from the website of defendant no.4 as on 11th January, 2016. On the said webpages as well, defendant no.5 has been shown as an associate company of the defendant no.4. This confirms the veracity of the printout of the defendant no.4's website, filed on behalf of the plaintiffs at page 639 of Signature Not Verified Signed By:AMIT BANSAL Location: Signing Date:30.04.2023 CS(COMM) 4/2016 02:08 Page 7 of 10 2023:DHC:2918 the documents.
19. In his cross-examination, defendant no.1 has admitted that the domain name "sppharma.in" belongs to him. In response to a question with regard to the affidavit filed by Mr.Butler along with the exhibits, the relevant cross- examination is set-out below:
"Q.90 Please see the download of the website appearing at page 639 (Mark Y and Z) which download was taken on the 1st January 2016. I am showing you an original certificate of one Mr. Christopher Butler who works for the Internet archive company and who has certified on 5th February, 2018 that the download appearing at page 639 was genuine and had properly been archived in that form. The explanation of the URL is given in the said certificate. What do you have to say?
(Objected to by Id. Counsel for Defendants on the ground that mode and manner of production of this document is disputed and the affidavit given by Mr. Butler is disputed as it is based on personal knowledge of Mr. Butler without clarifying as to whether he has seen all the records in relation thereto. Even the Exhibit A referred to in the affidavit filed by Mr. Butler is not authenticated / notarized, let this objection be decided by Hon'ble Court. For the purposes of identification the said document is marked as Mark Z-5).
Ans: The witness has been confronted with an original affidavit of Mr. Butler with Index dated 29 th April, 2019 and after going through the same the witness states I have nothing to answer on this document."
20. In light of the above, it is clear that the plaintiffs had filed accurate screenshots of the website of the defendant no.4, which showed that defendant no.5 is an associate company of the defendant no.4. Further, it appears that when enquired about the screenshot of the webpage of the Signature Not Verified Signed By:AMIT BANSAL Location: Signing Date:30.04.2023 CS(COMM) 4/2016 02:08 Page 8 of 10 2023:DHC:2918 defendant no.4 filed by the plaintiffs, the defendant no.1 altered the website of the defendant no.4 in order to remove any reference to the defendant no.5 being an associate company of the defendant no.4 (Exhibit DW-1/PY). But, in reality, I cannot be denied that the defendant no.5 was an associate of the defendant no.1/defendant no.4.
21. In order to circumvent the injunction order dated 6th January, 2016, the defendant no.1 was getting the impugned drug manufactured in Bangladesh through its associate company i.e., defendant no.5 and importing the same to India. In this regard, the plaintiffs have placed on record photographs of the products purchased from the market under the brand "CRIZO SPLTM" and "CRIZO SPALTM" after the interim injunction was passed by this Court. In respect of "CRIZO SPLTM", the packaging of the impugned product records the name of the manufacturer as SP Labs Bangladesh i.e. defendant no.5. Further, the date of manufacture on the packaging is shown as March, 2016, thereby meaning that the said products were manufactured after the interim injunction was passed by this Court on 6th January, 2016.
22. With regard to the connection between the defendants no.1 and the defendants no.2 to 4, the relevant extract from the cross-examination of the defendant no.1 is set out below:
"Q.99 Is it correct that SPAL Pvt. Ltd. (Defendant No.2) is your company or a company in which you hold an interest? Ans: SPAL Pvt. Ltd. is my company and its fully elaborated name is SP Accure Labs Pvt. Ltd.
Q.100 Is it correct that SP Labs Pvt. Ltd. (Defendant No.3) is also your company or a company in which you hold an interest?
Ans: yes, Defendant No.3 is my company. Signature Not Verified Signed By:AMIT BANSAL Location: Signing Date:30.04.2023 CS(COMM) 4/2016 02:08 Page 9 of 10 2023:DHC:2918 Q.101 Is it correct that SP Pharma (Defendant No.4) is
also your firm or a firm in which you hold an interest?
Ans: Yes Defendant No.4 is my firm."
23. A perusal of the above extract reflects that the defendant no.1 has admitted to the defendants no.2 to 4 being his companies. Therefore, even though the defendant no.2 is the registered proprietor of the trademark "CRIZO SPAL™" in class 5, it is clear that in reality, it is the defendant no.1 who has control over the use of the trademark "CRIZO SPAL™".
24. Counsel for the defendants has also submitted that the plaintiffs have failed to produce samples of the actual products and has only placed reliance on photographs of the actual products. Once again, I do not find any merit in this submission. Plaintiffs have placed on record sufficient material on record in the form of printouts of the third-party websites where the infringing product was being sold as well as photographs of the infringing products purchased by the investigators engaged by the plaintiffs.
25. In view of the discussion above, this Court is constrained to hold that the defendant no.1, Mr. Katikala Vijaya Prakash has committed wilful and contumacious disobedience of the order dated 6th January, 2016 passed by this Court. He is accordingly held liable for committing contempt within the meaning of Order XXXIX Rule 2A of the CPC.
26. Defendant no.1 shall file a response within four weeks with regard to the quantum of punishment to be imposed.
27. List on 28th August, 2023 for consideration on the aspect of sentence.
AMIT BANSAL, J APRIL 25, 2023/sr/rt Signature Not Verified Signed By:AMIT BANSAL Location: Signing Date:30.04.2023 CS(COMM) 4/2016 02:08 Page 10 of 10