By Suchi Rai & Vivswan Kanwar1
In a Patent Infringement suit initiated by Merck Sharp And Dohme Corporation and Anr (hereinafter Plaintiff ) for permanent injunction for restraining Aprica Pharmaceuticals Private Limited (hereinafter Defendant) from infringing the registered patent of the plaintiff in respect of Sitagliptin and its derivatives salt, Delhi High Court in an order dated 17/06/2013, granted an ex-parte interim injunction against defendant.
Reliefs in suit for infringement
Section 108 (1) of the Patents Act, 1970 provides for the Reliefs in suit for infringement. It states that - "The reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits."
A patent owner in India has injunction as one of the remedies available against an alleged infringer to prevent future infringement. There are two types of injunctions available in a patent-infringement lawsuit. One is preliminary injunction, which, is granted very early and it restrains the defendant from infringing the patent during the pendency of litigation. In the event the winning of trail by the plaintiff, the preliminary injunction will be converted into a permanent injunction. Generally,courts have set forth four requirements for granting a preliminary injunction:
- The plaintiff has demonstrated a reasonable likelihood of success on the merits of the case (i.e., that the patent in issue is valid and infringed).
- The plaintiff will be irreparably harmed if the injunction is not issued.
- The threatened harm to the plaintiff outweighs the harm the injunction may inflict on the defendant.
- The injunction will serve the public interest.
In the instant case though the learned judge has pronounced the decision based on the first two requirements but has not explained as to how are these requirements applicable.
Contention of the Plaintiff2
Plaintiff is the registered Patent owner in India for the said molecule Sitagliptin and its derivatives salt, which are sold as drugs Januvia and Janumet (Patent in concern for order is Indian Patent No. 209816). The plaintiffs further submits that the defendant is seeking to launch medicine with the identical salt which would be an infringement of the patent of the plaintiff as the said molecule has been invented by plaintiff who holds patent in over 102 countries for the said drug. Huge investment has been made in the invention of the said molecule and the sales in India alone is in crores and launching the product by infringing the patent will cause irreparable loss and injury to the plaintiff.
Observation of the Court3
In this order Justice, Sanjeev Sachdeva, observed that the plaintiff has established a prima facie case on merits and if ex parte injunction is not granted to the plaintiff and defendant is able to launch the product, irreparable loss and injury would be caused to the plaintiff which cannot be compensated in terms of money. Balance of convenience is in favour of the plaintiff.
Precedents on similar Ex-pa rte orders
The Delhi HC in 2011 had passed a similar order in the case of Vifor (International) Ltd V. D Mohan Rao And Ors.4
Analysis of the Order
The court in Ramrameshwari Devi & Ors. vs Nirmala Devi & Ors5 laid down various general principles to grant ex-parte decisions. Among many other grounds one ground is that:
- Whether irreparable or serious mischief will ensue to the plaintiff.
In the instant case according to the learned judge the plaintiff has prima facie shown that irreparable loss to them would ensue. On this count this order is correct. But if a holistic view is taken the other deficiencies in the case are as follows:
(i) The 'Claims' of the patent are not even reproduced or discussed in the order. How can an ex-parte order be granted without even referring to the main claims?
(ii) The Court does not explain how it has assumed jurisdiction especially when the Defendant is situated in Ahmedabad and not Delhi.
Furthermore in cases of preliminary injunction, the plaintiff is required to post a bond for securing any damages that the defendant will suffer if the preliminary injunction is later found to be improperly granted assuring him that if something arises after the preliminary injunction is issued, such as, invalidation of the patent is proved, the defendant can recover the costs and damages for ceasing the manufacture. No such bond has been secured in the instant case.
The issuance of a preliminary injunction is a remedy to be used only to preserve the status quo between the parties. In many cases, the issuance of a preliminary injunction effectively ends the matter for all practical purposes between the parties, and acts as indicator of defeat to the defendant. Achieving preliminary injunctions through such ex-parte order is not a healthy judicial practice particularly in the Patent cases due to their complex nature. The Supreme Court of India in cases earlier cases of Union of India v. Era Educational Trust6 & Morgan Stanley Mutual Fund v. Kartick Das7 has the slammed the general practice of granting exparte interim injunctions in civil suits laying down several general principles for granting such orders.
Alternatively it is suggested that the interim injunction phase should be done away with altogether in complicated patent disputes and the matter should directly be assessed on issues of validity and infringement in the trail stage, after looking into expert evidence etc.
1 Legal Intern
2 CS(OS) 1236/2013
3 CS(OS) 1236/2013
6 2000 5SCC57
7 1994 SCC (4) 225
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