Boehringer Ingelheim Pharma Gmbh & Co. Kg vs Vee Excel Drugs And Pharmaceuticals Private Ltd.

Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2023 Supreme(Del) 2185

IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Boehringer Ingelheim Pharma Gmbh & Co. Kg – Appellant
Versus
Vee Excel Drugs And Pharmaceuticals Private Ltd. & Ors. – Respondents
CS(COMM) 239 of 2019 & CCP(O) 82 of 2019, I.A. 6797 of 2019 (O-XXXIX R-1 & 2 of CPC), I.A. 9272 of 2019 (O-VII R-11 of CPC), I.A. 2042 of 2020 (u of S 151 CPC), I.A. 2044 of 2020 (u of s 151 CPC)
Decided On : 29-03-2023

Advocates appeared:
Dr. Sanjay Kumar, Ms. Arpita Sawhney, Mr. Arun Kumar Jana, Ms. Meenal Khurana, Mr. Harshit Dixit and Mr. Priyansh Sharma, Advocates, for the Plaintiff in CS(COMM) 239 of 2019 & CCP(O) 82 of 2019, I.A. 6797 of 2019 (O-XXXIX R-1 & 2 of CPC), I.A. 9272 of 2019 (O-VII R-11 of CPC), I.A. 2042 of 2020 (u of S 151 CPC), I.A. 2044 of 2020 (u of s 151 CPC) & CS(COMM) 240/2019 & CCP(O) 81/2019, I.A. 6802/2019 (OXXXIX R-1 & 2 of CPC), I.A. 9277/2019 (O-VII R-11 of CPC), I.A. 2036/2020 (u/S 151 CPC), I.A.2038/2020 (u/S 151 CPC) & CS(COMM) 236/2022, & I.A. 5801/2022 (O-XXXIX R-1 & 2 of CPC), I.A. 5802/2022(O-XXVI R-9 of CPC), I.A. 5803/2022(O-XI R-1 (6) as amended by the Commercial Court Act), I.A. 5804/2022 (for directions), I.A.22459/2022 (for condonation of delay of 88 days in WS to the CC) & CS(COMM) 296/2022 & I.A. 7109/2022 (O-XXXIX R-1 & 2 of CPC), I.A. 7110/2022 (O-XXVI R-9 of CPC), I.A. 7111/2022 (OXI R-1 (6) as amended by the Commercial Court Act), 7112/2022 (for directions), I.A. 11729/2022 (u/S 151 CPC).
Mr. Mukesh Rana and Ms. Mamta, Advocates, for the Defendants No.1 and 2 in CS(COMM) 239 of 2019 & CCP(O) 82 of 2019, I.A. 6797 of 2019 (O-XXXIX R-1 & 2 of CPC), I.A. 9272 of 2019 (O-VII R-11 of CPC), I.A. 2042 of 2020 (u of S 151 CPC), I.A. 2044 of 2020 (u of s 151 CPC) & CS(COMM) 240/2019 & CCP(O) 81/2019, I.A. 6802/2019 (OXXXIX R-1 & 2 of CPC), I.A. 9277/2019 (O-VII R-11 of CPC), I.A. 2036/2020 (u/S 151 CPC), I.A.2038/2020 (u/S 151 CPC).
Mr. Adarsh Ramanujan, Ms. Bitika Sharma, Ms. Nitya Sharma, Ms. Vrinda Pathak, Mr. George Vithayathil and Mr. Skanda Shekhar, Advocates, for the Respondent in CS(COMM) 236/2022, & I.A. 5801/2022 (O-XXXIX R-1 & 2 of CPC), I.A. 5802/2022(O-XXVI R-9 of CPC), I.A. 5803/2022(O-XI R-1 (6) as amended by the Commercial Court Act), I.A. 5804/2022 (for directions), I.A.22459/2022 (for condonation of delay of 88 days in WS to the CC)
Mr. Ashok Aggarwal, Senior Advocate with Dr. Sanjay Kumar, Ms. Arpita Sawhney, Mr. Arun Kumar Jana, Ms. Meenal Khurana, Mr. Harshit Dixit and Mr. Priyansh Sharma, Advocates, for the Petitioner in CS(COMM) 237/2022 & I.A. 5806/2022 (O-XXXIX R-1 & 2 of CPC), I.A. 5807/2022 (O-XXVI R-9 of CPC), I.A. 5808/2022 (OXI R-1 (6) as amended by the Commercial Court Act), I.A. 5809/2022 (for directions) & CS(COMM) 238/2022 & I.A. 5811/2022 (O-XXXIX R-1 & 2 of CPC), I.A. 5812/2022 (O-XXVI R-9 of CPC), I.A. 5813/2022 (OXI R-1 (6) as amended by the Commercial Court Act), I.A. 5814/2022 (for directions).
Mr. G. Nataraj, Mr. Ankur Vyas, Mr. Shashi Kant Yadav, Ms. Garima Joshi, Ms. Harshita Agarwal, Mr.Avinash K.Sharma, Mr.R.Abhishek and Mr. Rahul Bhujbal, Advocates, for the Respondent in CS(COMM) 237/2022 & I.A. 5806/2022 (O-XXXIX R-1 & 2 of CPC), I.A. 5807/2022 (O-XXVI R-9 of CPC), I.A. 5808/2022 (OXI R-1 (6) as amended by the Commercial Court Act), I.A. 5809/2022 (for directions).
Mr. J. Sai Deepak, Mr. G. Nataraj, Mr. Ankur Vyas, Mr. Shashi Kant Yadav, Ms. Garima Joshi, Ms. Harshita Agarwal, Mr.Avinash K.Sharma, Mr.R.Abhishek and Mr. Rahul Bhujbal, Advocates, for the Respondent in CS(COMM) 238/2022 & I.A. 5811/2022 (O-XXXIX R-1 & 2 of CPC), I.A. 5812/2022 (O-XXVI R-9 of CPC), I.A. 5813/2022 (OXI R-1 (6) as amended by the Commercial Court Act), I.A. 5814/2022 (for directions).
Ms. Bitika Sharma, Ms. Nitya Sharma, Ms. Vrinda Pathak and Mr. George Vithayathil, Advocates, for the Respondent in CS(COMM) 296/2022 & I.A. 7109/2022 (O-XXXIX R-1 & 2 of CPC), I.A. 7110/2022 (O-XXVI R-9 of CPC), I.A. 7111/2022 (OXI R-1 (6) as amended by the Commercial Court Act), 7112/2022 (for directions), I.A. 11729/2022 (u/S 151 CPC).

Headnote:
The Court held that the suit patent was vulnerable to revocation on the ground of prior claiming in terms of Section 64(1)(a) of the Patents Act. The Court also held that by filing multiple patent claims in respect of the same invention, the plaintiffs have made an attempt towards evergreening the invention and re-monopolizing the same. The Court dismissed all the applications for grant of interim injunction with costs.
Fact of the Case:

The plaintiffs, Boehringer Ingelheim Pharma Gmbh And Co. Kg and its group company, Boehringer Ingelheim (India) Pvt. Ltd, are Indian Pharmaceutical Companies, seeking permanent injunction restraining the defendants from infringing Indian Patent No. IN 243301 titled "8-(3 AMINOPIPERIDIN-1-YL)-XANTHINE COMPOUNDS". All the aforesaid six suits were accompanied by applications for grant of interim injunction under Order XXXIX Rules 1 and 2 of Code of Civil Procedure, 1908 (CPC).
Finding of the Court:

The Court held that the suit patent was vulnerable to revocation on the ground of prior claiming in terms of Section 64(1)(a) of the Patents Act. The Court also held that by filing multiple patent claims in respect of the same invention, the plaintiffs have made an attempt towards evergreening the invention and re-monopolizing the same. The Court dismissed all the applications for grant of interim injunction with costs.
Issues: 1. Whether in cases of old patents, the validity of the same has to be presumed by the Court? 2. Whether the validity of the suit patent has to be presumed on account of defendants not having filed pre-grant or post-grant opposition to the suit patent or having filed revocation petition belatedly? 3. Whether the defendants have laid a credible challenge to the suit patent? 4. Whether balance of convenience is in favour of the plaintiffs and against the defendants for the grant of interim injunction?
Ratio Decidendi: 1. In cases of old patents, the validity of the same has to be presumed by the Court. However, this presumption can be rebutted by the defendants by laying a credible challenge to the validity of the patent. 2. The validity of the suit patent cannot be presumed on account of defendants not having filed pre-grant or post-grant opposition to the suit patent or having filed revocation petition belatedly. A person is expected to raise a challenge to the validity of the patent only when the need arises. 3. The defendants have laid a credible challenge to the suit patent by showing that the suit patent has been prior claimed by the plaintiffs in the genus patent (IN `719). The plaintiffs are guilty of evergreening of the suit patent (IN `301). 4. Balance of convenience is in favour of the defendants and against the plaintiffs for the grant of interim injunction. The plaintiffs have enjoyed a twenty-year monopoly of Linagliptin under the genus patent. Except the defendants in CS (COMM) 239/2019 and CS(COMM)240/2019, the defendants waited for the twenty-years term of the genus patent to expire on 21st February, 2022, before launching their drugs in the market.
Final Decision: The Court dismissed all the applications for grant of interim injunction with costs.

JUDGMENT

Amit Bansal, J.

I.A. 6797/2019 (O-XXXIX R-1 & 2 of CPC) in CS(COMM)239/2019

I.A. 6802/2019 (O-XXXIX R-1 & 2 of CPC) in CS(COMM) 240/2019

I.A. 5801/2022 (O-XXXIX R-1 & 2 of CPC) in CS(COMM) 236/2022

I.A. 5806/2022 (O-XXXIX R-1 & 2 of CPC) in CS(COMM) 237/2022

I.A. 5811/2022 (O-XXXIX R-1 & 2 of CPC) in CS(COMM) 238/2022

I.A. 7109/2022 (O-XXXIX R-1 & 2 of CPC) in CS(COMM) 296/2022

1. The present six suits have been filed on behalf of the plaintiff no.1, Boehringer Ingelheim Pharma Gmbh And Co. Kg and its group company, plaintiff no.2, Boehringer Ingelheim (India) Pvt. Ltd, against various defendants, who are Indian Pharmaceutical Companies, seeking permanent injunction restraining the defendants from infringing Indian Patent No. IN 243301 titled "8-(3 AMINOPIPERIDIN-1-YL)-XANTHINE COMPOUNDS". All the aforesaid six suits were accompanied by applications for grant of interim injunction under Order XXXIX Rules 1 and 2 of Code of Civil Procedure, 1908 (CPC).

Proceedings in the suits

2. Summons in CS(COMM) 239/2019 and CS(COMM) 240/2019 were issued on 10th May, 2019 and an ad interim injunction was granted in favour of the plaintiffs restraining the defendants from manufacturing LINAGLIPTIN tablets and the said interim order has continued till date.

3. Summons in CS(COMM) 236/2022, CS(COMM)237/2022 and CS(COMM) 238/2022 were issued on 19th April, 2022 and the following interim/pro tem arrangement was arrived at between the parties and the said arrangement has continued till date:

"15. After some hearing, learned Senior Counsel appearing on behalf of the Plaintiffs and learned counsels appearing on behalf of the Defendants, on instructions, agree that, as a pro-tem arrangement between the parties, Defendants shall not manufacture, sell, offer for sale and/or use LINAGLIPTIN or LINAGLIPTIN tablets, or any other pharmaceutical preparations or formulations containing LINAGLIPTIN as the active pharmaceutical ingredient, till the next date of hearing.

16. It is further agreed that Defendants shall be at liberty to sell the existing stock, already manufactured and the Defendants shall disclose the existing stocks and packaging, which they have already manufactured along with details of batch numbers, dates of manufacturing as well as the value of the stock, within a period of one week from today, on an affidavit.

17. It is made clear that this is purely a pro-tem arrangement between the parties for expeditious disposal of the applications and will not be treated as a precedent in any other case."

4. Similar interim/pro tem arrangement was arrived at between the parties in CS(COMM) 296/2022.

5. Since the issues involved in all the aforesaid suits and applications for grant of interim injunction are broadly similar, they are being decided by way of this common judgment. As noted in the order dated 4th January, 2023, it was agreed between the parties that CS COMM (236/2022) shall be taken as the lead matter. Accordingly, for the sake of convenience, detailed facts of CS(COMM) 236/2022 have been recorded in the judgment. However, submissions on behalf of the counsels in all the aforesaid suits have been noted.

6. Submissions were heard on behalf of the counsels on 4th January, 2023, 5th January, 2023, 9th January, 2023, 11th January, 2023, 18th January, 2023 and 27th January, 2023 and the judgment was reserved on 27th January, 2023. Counsels for the parties have also placed on record various written submissions along with judgments relied by them.

Factual Background

7. Case set up by the plaintiffs in CS(COMM)236/2022 has been summarised below.

7.1. The plaintiff no.1 is engaged in the business of developing, manufacturing and marketing pharmaceuticals in India through the plaintiff no.2.

7.2. The plaintiff no. 1 was granted Patent IN 243301 (hereinafter also referred to as "suit patent" or "IN'301") on 5th October, 2010 under Section 43 of the Patents Act, 1970 (hereinafter "Patents Act") for the invention titled "8-(3 AMINOPIPERIDIN-1-YL)

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2023 Supreme(Del) 2185

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