Infringement of a patent and liability for damages after the expiration of the patent term

JUDGMENT (Oral)

1. The plaintiff, by this suit, alleged infringement, by the defendants, of Indian Patent No. 209816, whereunder the drug Sitagliptin was patented in favour of the plaintiff. The life of the suit patent expired on 5 July 2022. The plaintiff alleged, in the plaint, that Defendant 1 was manufacturing and Defendant 2 was distributing, pharmaceutical generic versions of Sitagliptin, without obtaining a license from the plaintiff, under trade name "HAPPY JAAN M". The plaint has also provided, in para 42, a photograph of a strip of HAPPY JAAN M, which is a combination of Sitagliptin Phosphate and Metformin Hydrochloride. The strip is shown to be manufactured by Defendant 1 Neptune Life Sciences Pvt. Ltd. and distributed by Defendant 2 Happy Drugs. It is also seen that the strip is from the Batch bearing Batch No. TN - 6084, manufactured in March 2021 with expiry February 2023. As such, it is apparent from the strip in question that a product containing Sitagliptin was indeed manufactured by Defendant 1 and marketed/distributed by Defendant 2, during the time the suit patent was still alive and subsisting.

2. Consequent on issuance of summons, Defendant 2 has consistently remained absent from the proceedings.

3. The right of Defendant 2 to file written statement was closed by the learned Joint Registrar (Judicial) vide order dated 27 September 2022. Defendant 2 has remained absent even thereafter.

4. The suit stands decreed qua Defendant 1 in terms of a settlement arrived at, between the plaintiff and the Defendant 1, with the intervention of the Delhi High Court Mediation and Conciliation Centre, on 14 March 2023. Among the terms of settlement was an undertaking by Defendant 1 to pay, to Plaintiff Rs.2,00,000/- in lieu of the settlement. The said amount stands paid.

5. As, on the aspect of infringement, there is really no contest, and the suit stands decreed qua Defendant 1 with Defendant 2 remaining absent from the proceedings throughout. Mr. Pravin Anand, learned Counsel for the plaintiff prays that the suit may be decreed qua Defendant 2 as well with similar damages of Rs.2,00,000/-.

6. I see no reason to not to accede to the request as, by failing to file any response to the plaint or enter appearance, Defendant 2 has clearly accepted all assertions contained in the plaint.

7. The prayer clause in the suit reads thus:

"60. In light of the above facts and circumstances, it is therefore, it is respectfully prayed that this Hon'ble Court may be pleased to grant the following reliefs in favour of the Plaintiffs:

(i) A decree of permanent injunction restraining the Defendants, their partners, directors, employees, officers, servants, agents and all others acting for and on its behalf from making, using, selling, distributing, advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing in any product, including Sitagliptin, that infringes the claimed subject matter of the Plaintiff's Indian Patent No 209816 or any of the claims thereof, including Sitagliptin or any of its pharmaceutically acceptable salts, including but not limited to under the brand name of HAPPY JANN M;

(ii) An order directing the Defendants to cancel/surrender its manufacturing license numbers MNB/07/517 and MB/07/518for the manufacture of its infringing Sitagliptin drug products;

(iii) An order for damages in favour of the Plaintiff and against the Defendants as stated hereinabove; or

(iv) An order requiring the Defendants to render accounts of all sums earned by the Defendants through its unlawful and infringing activities referred to in this plaint and a decree for the same in favour of the Plaintiffs and against the Defendants;

(v) An order for costs in the proceedings; and

(vi) Any order(s) as this Hon'ble Court may deem fit and proper in the facts and circumstances of the case."

8. As the suit patent has expired, Mr. Pravin Anand does not press prayer (i).

9. As such, Defendant 2 is directed to pay dam