Merck Sharp And Dohme Corp & Anr. vs Yms Laboratories Private Limited
2022 Latest Caselaw 3399 Del

                                      Neutral Citation Number : 2022/DHC/005609

                  $~5
                  *      IN THE HIGH COURT OF DELHI AT NEW DELHI
                  +      CS(COMM) 250/2021 and I.A. 6917/2021 (Order XXXIX
                         Rules 1 and 2 of the CPC)

                         MERCK SHARP AND DOHME CORP & ANR. ..... Plaintiffs
                                      Through: Ms. Tusha Malhotra and Ms.
                                      Yamini Jaswal, Advs.

                                               versus

                         YMS LABORATORIES PRIVATE LIMITED ..... Defendant
                                      Through: Mr. Sushant Singh, Adv.
                         CORAM:
                         HON'BLE MR. JUSTICE C.HARI SHANKAR
                                               JUDGMENT (ORAL)

% 15.12.2022

I.A. 21336/2022(Order XXIII Rule 3 of the CPC)

1. The dispute between the plaintiffs and the defendant stands settled mutually.

2. This application under Order XXIII Rule 3 of the Code of Civil Procedure, 1908 (CPC) seeks that the suit be decreed in terms of the said settlement.

3. The terms of settlement, as set out in para 2 of the application may be reproduced, thus:

"(i) The Parties have agreed that the Commercial Suit for Patent Infringement, being C.S.(Comm) 250 of 2021 shall be decreed by the Hon'ble High Court of Delhi, in terms of the present settlement agreement.

(ii) The Defendant acknowledges the validity of the suit patent IN 209816 and the Plaintiff No. 1 's exclusive right in Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI

Signing Date:16.12.2022 17:11:49 Neutral Citation Number : 2022/DHC/005609 dealing in Sitagliptin or any of its pharmaceutically acceptable salts, as an Active Pharmaceutical Ingredient (hereinafter referred as 'API') including Sitagliptin Phosphate Monohydrate, as an impurity, finished product or any of its pharmaceutically acceptable salts, during its lifetime. The Defendant further admits that during the lifetime of IN 209816, any act of making, using, offering for sale, selling or importing exporting or otherwise using the subject matter of IN' 816, including Sitagliptin and also its pharmaceutically acceptable salts including Sitagliptin Phosphate Monohydrate, would be violative ofthe statutory rights of the Plaintiffs herein.

(iii) With respect to the Defendant's activities concerning the infringing Sitagliptin product, the Defendant states:

a. That the Defendant received notice of the order of interim Injunction dated May 31,2021, on July 16,2021;

b. The Defendant undertakes that during the subsistence of the suit patent, the Defendant had not manufactured Sitagliptin or any of its pharmaceutically acceptable salts, including Sitagliptin Phosphate Monohydrate; and

c. The Defendant further undertakes to remove all infringing listings featuring the infringing Sitagliptin or any other product infringing the suit patent from third party e-commerce websites/platforms including www.indiamart.com and www.tradeindia.com.

(iv) The Defendant undertakes that it has not dealt with Sitagliptin in any manner, including manufacturing, using, offering for sale, selling, importing and exporting a generic version of Sitagliptin during the validity of IN 209816.

(v) The undertakings given above by the Defendant shall be binding henceforth on the Defendant, its associates, representatives, successors, partners, employees, affiliates and assignees-in-business.

(vi) Subject to the undertakings given by the Defendant herein, the Plaintiffs forego their claim for damages, rendition of accounts and costs of the proceedings as regards the Defendant, as prayed for in paragraph 53 clauses (b) to (d) of the Plaint. However, in the event of a breach of these undertakings by the Defendant, the Plaintiffs reserve their right to seek any remedies available to them in law and equity. Furthermore, the Defendant shall be liable to indemnify the Plaintiffs against all costs and damages incurred, either INR 2 crores or the actual costs and damages incurred by the Plaintiffs due to such continued or future breach by the said Defendant, whichever is higher. Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI

Signing Date:16.12.2022 17:11:49 Neutral Citation Number : 2022/DHC/005609

(vii) The parties agree that the present proceedings shall be decreed in favor of the Plaintiffs and against the Defendant, in terms of the present settlement agreement."

4. Learned Counsel for the parties are present and agree on behalf of their respective clients that they would remain bound by the terms of the settlement.

5. As such, nothing survives for adjudication in the suit.

6. The suit is, accordingly, decreed in terms of the aforesaid terms of settlement, by which the parties shall remain bound.

7. The Registry is directed to draw up a decree-sheet accordingly. Miscellaneous application is also disposed of.

8. The plaintiffs shall be entitled to refund of the court fee paid by them in the matter.

C.HARI SHANKAR, J DECEMBER 15, 2022 rb

Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI

Signing Date:16.12.2022 17:11:49