JUDGMENT

1. Execution is sought of a consent decree dated 24th April, 2015 in CS(OS) No.2434/2013 in terms of the compromise arrived at between the parties and as contained in IA No.8386/2015 in the said suit and which forms part of the decree.

2. Under the said consent decree, the defendant has undertaken that it shall not use, manufacture, import, offer to sell and sell `RIVAROXABAN' or any formulation containing `RIVAROXABAN' for the purpose of commercial exploitation or sell the same to manufacturers for commercial purpose and that if the defendant manufactures or sells products falling within the scope of suit patent, the defendant in its invoice will indicate that the sale of `RIVAROXABAN' or the formulation was only for the purpose of as exempted under Section 107A(a) of the Indian Patents Act, 1970. In view of the said undertaking of the defendant/judgment-debtor, the plaintiff/decree-holder made a statement that they were not pressing for damages and costs.

3. Execution petition has been filed pleading that (i) the defendant/judgment-debtor on 29th January, 2013 applied for a Test License (Form 29) for `RIVAROXABAN' and was granted the said licence on 14th May, 2013; (ii) the plaintiff instituted the suit, decree whereunder is in execution, with the cause of action of the defendant/judgment-debtor having applied for manufacturing licence with respect to `RIVAROXABAN' and having advertised `RIVAROXABAN' on its website; (iii) the defendant/judgment-debtor on 11th December, 2013 itself when the suit came up before this Court at the after notice stage gave a statement in the Court that it will not commercialize the product and that it only had a Test Licence under Form 29 and will only manufacture `RIVAROXABAN' for the purpose of testing, analysis and experimentation; (iv) the same stand was repeated in the written statement filed on 21st February, 2014 and on the basis of the said stand of the defendant/judgment-debtor, the compromise aforesaid was entered into and the suit disposed of in terms of the compromise decree; (v) the plaintiff/decree-holder subsequently learnt that the defendant/judgment-debtor on 4th February, 2014 i.e. after the institution of the suit, had applied to the Drug Controller for a Commercial Licence (Form 25) for `RIVAROXABAN' for manufacturing `RIVAROXABAN' for domestic use and export and on 11th February, 2014 had been granted the said licence; (vi) however, the defendant/judgment-debtor did not disclose the said facts in its written statement filed on 21st February, 2014 or at the time of entering into the compromise with the plaintiff/decree-holder; (vii) the plaintiff/decree-holder entered into the compromise not knowing of the commercial licence having been applied for and granted to the defendant/judgment-debtor; and, (viii) the plaintiff/decree-holder learnt of exports on 5th March, 2015 and 17th October, 2016 by the defendant/judgment-debtor of varied quantities of `RIVAROXABAN' to companies in Turkey, Belarus, US, Germany and Hong Kong and hence, this execution was filed on 8th December, 2016.

4. Notice of the execution was issued and the defendant/judgment-debtor in its reply has admitted a commercial licence to export `RIVAROXABAN'.

5. The counsel for the plaintiff/decree-holder on 11th February, 2019 proposed that, recording the statement of the defendant/judgment-debtor that the defendant/judgment-debtor will not commercially use any product subject matter of patent with respect to `RIVAROXABAN' and that in the event of the Division Bench of this Court in RFA (OS) (COMM) No.6/2017 holding that export under Section 107A of the Patents Act cannot be made, whether for commercial purpose or otherwise and that the defendant/judgment-debtor shall remain bound by the said outcome, this execution petition be disposed of. Time was granted to the counsel for the defendant/judgment-debtor to take instructions.

6. The counsel for the defendant/judgment-debtor yesterday stated that