India: Ex-Parte Interim Injunction By The Delhi High Court Against Aprica Pharmacuticals

Last Updated: 14 August 2013

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."

Explaining injunction

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

4 MIPR2011(3)1

5 2011)162PLR32

6 2000 5SCC57

7 1994 SCC (4) 225

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Singh & Singh Lall & Sethi (SSL&S)
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Singh & Singh Lall & Sethi (SSL&S)
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions