Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2022 Supreme(HP) 392

IN THE HIGH COURT OF HIMACHAL PRADESH AT SHIMLA
AJAY MOHAN GOEL, J.
Boehringer Ingelheim International GMBH 55216 – Appellant
Versus
Dr. Reddy’s Laboratories Limited Khol – Respondent
OMPS No. 532, 565 and 692 of 2021 IN COMS No. 5 of 2021
Decided on : 11-03-2022

Advocate Appeared:
For the Appellant :M/S ASHOK AGGARWAL AND VINAY KUTHIALA, SENIOR ADVOCATES WITH M/S ATUL JHINGAN, SHILPA SOOD, SANJAY KUMAR, PRIYANSH SHARMA AND HARSHIT DIXIT, ADVOCATES)
For the Respondent:MR. BIPIN CHANDER NEGI, M/S JAI SAI DEEPAK, GURUSWAMY NATRAJAN, SHRADHA KAROL, ANKUR VYAS & UDIT KAUSHIK, ADVOCATES

The main legal point established in the judgment is that the grant of interim relief in patent infringement cases requires a prima facie case and balance of convenience in favor of the plaintiffs, and the absence of a credible challenge to the patent by the defendant.

Headnote:
Patent Infringement - Indian Patents Act - Section 43, Section 64, Section 151 - The court granted interim relief to the plaintiffs restraining the defendants from infringing the patent rights of plaintiff/applicant No. 1 under Indian Patent No. 268846. The court found that the plaintiffs had a prima facie case and balance of convenience in their favor, and the defendant had not filed any challenge to the 'subject patent' until the launch of its infringing product. The court also highlighted the absence of any challenge to the patent by the Central Government or the defendant, and the lack of a credible challenge to the patent by the defendant. The court referred to various judgments and legal provisions to support its decision.
Fact of the Case:

The plaintiffs filed a suit for permanent prohibitory injunction for restraining the defendants from infringing the patent owned by plaintiff No. 1 under Indian Patent No. 268846. The defendants filed an application under Order XXXIX, Rule 4, read with Section 151 of the Code of Civil Procedure, praying for vacation of ad-interim injunction. The plaintiffs also filed an application under Order VIII, Rule 1 read with Section 151 of the Civil Procedure Code, praying for closing the right of the Respondent to file its Written Statement and striking out the defence of the Respondent.
Finding of the Court:

The court found that the plaintiffs had a prima facie case and balance of convenience in their favor, and the defendant had not filed any challenge to the 'subject patent' until the launch of its infringing product. The court also highlighted the absence of any challenge to the patent by the Central Government or the defendant, and the lack of a credible challenge to the patent by the defendant. The court dismissed the application filed by the plaintiffs under Order VIII, Rule 1 of the Civil Procedure Code, and the application filed by the defendants under Order XXXIX, Rule 4 of the Civil Procedure Code.
Issues: The issues involved the grant of interim relief to the plaintiffs, the challenge to the 'subject patent' by the defendant, and the effect of not filing a written statement on the application for vacation of ad-interim injunction.
Ratio Decidendi: The court held that the plaintiffs had a prima facie case and balance of convenience in their favor, and the defendant had not filed any challenge to the 'subject patent' until the launch of its infringing product. The court also highlighted the absence of any challenge to the patent by the Central Government or the defendant, and the lack of a credible challenge to the patent by the defendant. The court also found that the defendant could file an application under Order XXXIX, Rule 4 of the Civil Procedure Code for vacation of the ad-interim order without filing a written statement.
Final Decision: The court made the interim protection granted to the plaintiffs absolute during the pendency of the civil suit, subject to any further order(s) which may be passed by the Court. The court dismissed the application filed by the plaintiffs under Order VIII, Rule 1 of the Civil Procedure Code, and the application filed by the defendants under Order XXXIX, Rule 4 of the Civil Procedure Code.

ORDER :

OMPS No. 532 AND 565 OF 2021

This order shall dispose of OMP No. 532 of 2021, which has been filed by the plaintiffs/applicants under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure praying for interim directions as also OMP No. 565 of 2021, which has been filed under Order XXXIX, Rule 4, read with Section 151 of the Code of Civil Procedure, praying for vacation of ad-interim injunction, dated 20.10.2021.

2. Brief facts necessary for the adjudication of these applications are as under:-

Applicants/plaintiffs in OMP No. 532 of 2021 (hereinafter to be referred as ‘the plaintiffs’ for convenience sake) have filed a suit for permanent prohibitory injunction for restraining the defendants from infringing the patent owned by plaintiff No. 1 alongwith other ensuing reliefs. The case of the plaintiffs is that plaintiff No. 1 is a company incorporated under the laws of Germany and plaintiff No. 2 is a company registered under the Companies Act. Plaintiff No. 1 is the owner of plethora of patents worldwide, including Indian Patent No. 268846 (hereinafter to be referred as ‘subject patent or IN 846’ for short). The subject patent was granted in favour of plaintiff No. 1 on 18.09.2015 as per Section 43 of the Indian Patents Act 1970, under ‘IN 846’ for pharmaceuticals product titled “GLUCOPYRANOSYL-SUBSTITUTED BENZENOL DERIVATIVES, DRUGS CONTAINING SAID COMPOUNDS, THE USE THEREOF AND METHOD FOR THE PRODUCTION THEREOF” for a term of 20 years from the date of filing.

3. When OMP No. 532 was listed on 20.10.2021, the following order was passed:-

“Notice in above terms. Till the next date of hearing, the respondent is restrained either itself or through its directors, licensees, stockiest and distributors, retailers, agents, servants and/or anyone claiming through any of it, jointly and severally, from infringing the patent rights of plaintiff/applicant No. 1 under Indian Patent No. 268846 by launching, making, using, offering for sale, selling, importing and/or exporting the medicinal product Empagliflozin in any form whatsoever, including Empagliflozin API, the medicinal product “Empagliflozin Tablet” and/or “Empagliflozin + Metformin Hydrochloride Tablets” or any “generic version” thereof or any product sold under the trademark/name “VICRA” or any other trademark/name whatsoever, or any other product covered by the subject patents granted by the Controller of Patents in favour of plaintiff/applicant No. 1. Respondent is further directed to remove the impugned product from its website or any other website(s)/e-portal(s).

This order is subject to compliance of provisions of Order 39, Rule 3 of the Code of Civil Procedure.”

4. In the order sheet, the OMP number is mentioned as OMP No. 535 of 2021, which appears to be a typographical error as the OMP in issue is OMP No. 532 of 2021.

5. The arguments on behalf of the plaintiffs were advanced by Mr. Ashok Aggarwal, learned Senior Counsel and Mr. Vinay Kuthiala, learned Senior Counsel. Arguments on behalf of the defendants were advanced by Mr. Bipin Chander Negi, learned Senior Counsel and Mr. Jai Sai Deepak, learned Counsel.

6. Learned Senior Counsel appearing for the plaintiffs argued that for the purpose of grant of interim relief, three primary ingredients, i.e. prima facie case, balance of convenience and irreparable loss are all in favour of the plaintiffs. In addition, they argued that as the defendant has not been able to lay any credible challenge to the ‘subject patent’, therefore, this application be disposed of by confirming ad-interim order dated 20.10.2021.

7. On the other hand, learned Counsel for the defendant have submitted that as the defendant has laid a credible challenge to the ‘subject patent’ therefore, its prayer for vacation of adinterim injunction granted on 20.10.2021 be allowed and the application filed under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure be dismissed and the application filed under Order XXXIX, Rule 4 of the Code of Civil Procedure b

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2022 Supreme(HP) 392

IN THE HIGH COURT OF HIMACHAL PRADESH AT SHIMLAAJAY MOHAN GOEL, J.Boehringer Ingelheim International GMBH 55216 – AppellantVersusDr. Reddy’s Laboratories Limited Khol – RespondentOMPS No. 532, 565 and 692 of 2021 IN COMS No. 5 of 2021Decided on : 11-03-2022

The main legal point established in the judgment is that the grant of interim relief in patent infringement cases requires a prima facie case and balance of convenience in favor of the plaintiffs, and the absence of a credible challenge to the patent by the defendant.

Cases Referred (4)

IN THE HIGH COURT OF HIMACHAL PRADESH AT SHIMLA
AJAY MOHAN GOEL, J.
Boehringer Ingelheim International GMBH 55216 – Appellant
Versus
Dr. Reddy’s Laboratories Limited Khol – Respondent
OMPS No. 532, 565 and 692 of 2021 IN COMS No. 5 of 2021
Decided on : 11-03-2022