MERCK SHARP & DOHME LLC v. SANJEEV GUPTA & ORS

1. The disputes between the plaintiff and Defendants 3 and 4 already stand settled.

2. By the present joint application, moved by the plaintiff and Defendants 1 and 2, it is submitted that the disputes qua the said parties also stand settled on the terms of settlement as set out in para 5 of the application, which reads thus: “i. The Parties have agreed that the commercial suit for patent infringement, being C.S.(Comm) 823 of 2018, shall be decreed by the Hon'ble High Court of Delhi, in favour of the Plaintiffs therein and against the Defendants therein, in line with Paragraph 96(a) of the plaint filed by the Plaintiffs therein. ii. The Defendants acknowledge the validity of the suit patent IN'816 and the Plaintiff No. 1's exclusive right in dealing in Sitagliptin in any form whatsoever including as an Active Pharmaceutical Ingredient (hereinafter referred as 'API'), finished product or any of its pharmaceutically acceptable salts, which is the subject matter protected by the suit patent. The Defendants further admit that during the lifetime of IN'816, any act of making, using, offering for sale, selling or importing, exporting or otherwise using the subject matter of lN'816, including Sitagliptin as an API, a finished product or in tablet form (including Sitagliptin tablets under the brand name of SWIZGLIPT 100, SWIZGLIPT 50, SWIZGLIPT M and SWIZGLIPT M FORTE) and also its pharmaceutically acceptable salts, would violate the statutory rights of the Plaintiffs herein during the validity of the suit patent. iii. That the Defendant No. 2 had entered into a marketing and distribution agreement dated November 20, 2014 with Defendant No. 4 whereby Defendant No. 2 was appointed as the importer/distributor of the infringing products in Cambodia and Myanmar. The Defendants submit that after obtaining the Injunction Order from this Hon'ble Court, the Defendants have not dealt with Sitagliptin and during the validity of IN'816. iv. With respect to the Defendants activities concerning the infringing Sitagliptin products, the Defendants state: a. That the Defendants received notice of the order of interim injunction dated April 26,2018 on June 5, 2018; and b. That upon receipt of the order of interim injunction dated April 26, 2018, the Defendants immediately ceased all infringing activities with respect to the subject patent. v. That the Defendants state that they have removed all infringing listings featuring the above four compositions of the Sitagliptin product under the brand name SWIZGLIPT 100, SWIZGLIPT 50, SWIZGLIPT M and SWIZGLIPT M FORTE or any other product under any other brand name infringing the subject patent from their websites and third-party e-commerce websites/platforms. vi. That the Defendants state that they have not dealt with Sitagliptin in any manner, including manufacturing, using, offering for sale, importing and exporting a generic version of Sitagliptin during the validity of IN'816. The Defendants further state that they did not launch the generic Sitagliptin product during the subsistence/validity of this instant suit. vii. The undertakings given above by the Defendants shall be binding henceforth on the Defendants, their associates, representatives, successors, partners, employees, affiliates and assignees-in-business. viii. That the Plaintiffs have received an amount of INR 03 lakhs vide transaction reference no.651728887 dated April 20, 2023 from the Defendants in lieu of costs and damages forego their claim rendition of accounts of the proceedings as regards the Defendants, as prayed for in paragraph 96 clauses (c) of the Plaint. However, in the event of a breach of these undertakings by the Defendant, the Plaintiffs reserve their right to seek any remedies available to them in law and equity including reviving the Plaintiffs' rights to claim damages. ix. The parties agree that the present proceedings shall be decreed in favor of the Plaintiffs and against the Defendants, in terms of with Prayer 96 (a) of the Plaint.”

3. Parties are represented by learned Counsel who undertake on behalf of their clients to abide by the terms of settlement. The Court has perused the terms of settlement and finds that they are in order and capable for enforcement.

4. In accordance with the terms of settlement, the suit shall stand decreed in terms of prayer a. of para 96 of the plaint which reads thus: “a. A decree of permanent injunction restraining the Defendants, its directors, employees, officers, servants, agents and all others acting for and on their behalf from making, using, selling, distributing, advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing in any product 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 such as Sitagliptin Phosphate Monohydrate as well as any Sitagliptin products like Sitagliptin + Metformin Hydrochloride tablets;”

5. Let a decree-sheet be drawn up accordingly.

6. The plaintiff shall be entitled to refund 50% of the court fee deposited by it.

7. The court has pursued the terms of settlement and find them to be lawful.

8. The next date, i.e. 25 September 2023 already fixed in the suit, shall stand cancelled.

C.HARI SHANKAR, J SEPTEMBER 15, 2023