Delhi High Court
Merck Sharp And Dohme Corp & Anr vs Vinod Jadhav & Ors on 15 December, 2017
$~OS-9
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 15.12.2017
+ CS(OS) 3132/2014, CC 71/2015, I.A. 20105/2014 and
I.A.14072/2015
MERCK SHARP AND DOHME CORP & ANR ..... Plaintiffs
Through Mr.Pravin Anand, Mr.Tusha Malhotra
and Ms.Udita M.Patro, Advs.
versus
VINOD JADHAV & ORS ..... Defendants
Through Mr.Aditya Kumar, proxy counsel for
Mr.Vinod Jadhav, Adv.
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J. (Oral)
I.A. 20105/2014
1. This application is filed by the plaintiffs under Order 39 Rule 1 and 2
CPC seeking an ex parte ad interim injunction against the defendants so as
to restrain the defendants from infringing the registered patent in respect to
SITAGLIPTIN.
2. Brief facts of this application are that the plaintiffs are the registered
patentee for drug SITAGLIPTIN having an Indian Patent no. 209816. The
said drug was approved for sale in the Indian Market on 28.03.2008.
Thereafter Plaintiff No. 1 is selling the said drug in India under the
trademark JANUVIA and JANUMET. The said drug is also being sold
under the brand name of ISTAVEL and ISTAMET which are through its
Licensee i.e. Plaintiff No. 2.The said drug was also launched in more than
107 countries. The dispute arose in March, 2014 when the plaintiffs came to
know that the defendants are using the said patent drug under the brand
name of SIFORES and are exporting it to Mauritius and Singapore. Hence,
this application was filed by the plaintiffs to pass an ex parte ad interim
injunction as the plaintiffs are having an apprehension that the said product
may be launched by the defendants any time in the Indian Market in the near
future.
3. This application was heard at length by this court on 14.10.2014,
where it relied on the submission of the learned counsel of plaintiffs
regarding the registered patent of the plaintiffs and was pleased to pass an ex
parte interim injunction. It had also further noted that the defendants intend
to launch medicines/drugs with identical salt by the name of SIFORES in
India which would be an infringement of the patent rights of the plaintiffs as
per the details of the patent as described in the plaint.
4. Learned counsel for the plaintiffs points out that in CS(OS) 586/2013
titled as Merek Sharp & Dohme & Anr. V Glenmark Pharmaceuticals Ltd.,
this court passed a decree dated 07.10.2015 in favour of the plaintiffs and
against the defendants for permanent injunction for using, selling,
distributing etc. or dealing in "Sitagliptin Phosphate Monohydrate Tablets"
or any other salt of "Sitagliptin" in any form alone or in combination with
one or more other drugs thereby infringing the suit patent No.209816 of the
plaintiffs. There was no challenge to the said decree. Thereafter, a certificate
of validity was granted by this court pursuant to the said decree under
Section 113 of the Patent Act.
5. Section 113 of the Patent Act reads as follows:-
"113 Certificate of validity of specification and costs of
subsequent suits for infringement thereof: -
(1) If in any proceedings before the Appellate Board or a High
Court for the revocation of a patent under section 64 and section
104, as the case may be, the validity of any claim of a
specification is contested and that claim is found by the
Appellate Board or the High Court to be valid, the Appellate
Board or the High Court may certify that the validity of that
claim was contested in those proceedings and was upheld.
(2) Where any such certificate has been granted, then, if in any
subsequent suit before a court for infringement of that claim of
the patent or in any subsequent proceeding for revocation of the
patent in so far as it relates to that claim, the patentee or other
person relying on the validity of the claim obtains a final order
or judgment in his favour, he shall be entitled to an order for the
payment of his full costs, charges and expenses of and
incidental to any such suit or proceeding properly incurred so
far as they concern the claim in respect of which the certificate
was granted, unless the court trying the suit or proceeding
otherwise directs: Provided that the costs as specified in this
sub-section shall not be ordered when the party disputing the
validity of the claim satisfies the court that he was not aware of
the grant of the certificate when he raised the dispute and
withdrew forthwith such defence when he became aware of
such a certificate.
[(3) Nothing contained in this section shall be construed as
authorising the courts or the Appellate Board hearing appeals
from decrees or orders in suits for infringement or petitions for
revocation, as the case may be, to pass orders for costs on the
scale referred to therein."
6. The Certification of Validity issued by this court reads as follows:-
"CERTIFICATION OF VALIDITY UNDER SECTION
113, PATENTS ACT, 1970:
It is certified that in Civil Suit being CS(OS) 586 of 2013,
the validity of Claims 1-20 of Indian Patent No. 209816 (the
suit patent) had been contested by the Defendant, on the
grounds inter alia, lack of inventive step, lack of industrial
applicability, insufficient disclosure, claims not being fairly
based, patent having been obtained on false suggestion,
violation of Section 8, etc., in CC No. 46 of 2013, and that the
claims of the patent have been found to be valid through
judgment and Order dated October 7, 2015."
7. Keeping in view the above certificate, in my opinion, the plaintiffs
have clearly made out a prima facie case in its favour. Balance of
convenience is also in favour of the plaintiffs.
8. Learned counsel for the defendants seeks an adjournment stating that
the main counsel is held up in the District Courts. On 04.05.2017, the
learned counsel for the defendants had sought an adjournment stating that
the learned counsel for the defendants was not available. On 13.09.2017, the
learned counsel for the defendants stated that they have filed an application
under Order 7 Rule 10 of CPC but the same is lying under objections. The
said application has still not been listed.
9. In these circumstances, it is clear that the defendants are needlessly
delaying the matter. The request for adjournment is declined.
10. The interim order dated 14.10.2014 is confirmed. This application
stands disposed of.
I.A.14072/2015
11. In view of the above orders, the present application stands disposed
of.
CS(OS) 3132/2014
12. List on 13.02.2018.
JAYANT NATH, J.
DECEMBER 15, 2017/rk
