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HIGH COURT OF DELHI
Date of Decision: 3rd June, 2022.
CHUGAI SEIYAKU KABUSHIKI KAISHA & ANR. ..... Plaintiffs
Through: Mr. Sharwan Chopra, Ms. Prachi Aggarwal and Ms. Misthi Dubey, Advocates. (M:8800972785)
Through: Mr. J. Sai Deepak and Mr. Ankur Vyas, Advocates.
JUDGMENT
1. This hearing has been done through hybrid mode.
2. The present suit has been filed seeking permanent injunction restraining infringement of Indian Patent No.294424 (hereinafter, “suit patent”) which is titled “TETRACYCLIC COMPOUND”, along with damages, rendition of accounts, delivery up, and other reliefs, against the Defendant. According to the suit patent, the claimed tetracyclic compound, salts or solvates thereof are useful, inter alia, in the treatment of diseases including cancer. The suit patent discloses and covers a compound having the International Non-Proprietary Name (INN) – ‘Alectinib’, being commercially sold by the Plaintiffs under the brand name Alecensa®. The term of the suit patent of expires on 9th June, 2030.
3. The Plaintiff No.1 – Chugai Seiyaku Kabushiki Kaisha (also known as “Chugai Pharmaceutical Co. Ltd.”) is a company headquartered in Japan 2022:DHC:2254 and is a leading innovator in the healthcare industry. Plaintiff No.2 – F. Hoffmann-La Roche AG is a company headquartered in Switzerland and is also one of the world’s largest pharmaceutical company. As per the Plaint, Plaintiff No.1 is the patentee of the suit patent and the Plaintiff No.2 is the exclusive licensee of the suit patent by virtue of an exclusive license agreement dated 31st October, 2012 entered into between the Plaintiffs.
4. The Defendant – Natco Pharma Limited is a pharmaceutical company engaged, inter alia, in the manufacture, sale, and offering for sale various generic pharmaceutical products in India.
5. It is the case of the Plaintiffs that in the last week of May, 2021, an investigation was conducted by an independent investigator at the behest of the Plaintiffs which shed light on the fact that the Defendant had indulged in the export of Alectinib API in May 2019, which amounts to infringement of the suit patent as per Section 48 of The Patents Act, 1970. Thereafter, in June 2021, the Plaintiffs discovered that the Defendant has filed a patent application, namely IN 201941022366 in respect of Pharmaceutical compositions comprising Alectinib on June 06, 2019 before the Indian Patent Office. The Plaintiffs also acquired knowledge that another Patent Application was filed by the Defendant pertaining to Alectinib, before the Indian Patent Office bearing application no. 201741029461 in respect of A novel process for the preparation of an intermediate of Alectinib. Thus, the Plaintiffs filed the present suit apprehending that the Defendant intends to launch generic Alectinib or its salt or solvates or intermediate(s) thereof or any other product that infringes the suit patent.
6. The suit was listed on 13th September 2021, on which date, the ld. Counsel for the Defendant had made a statement that the product is being used only for research purposes. The said order records as under:
7. An affidavit dated 6th April, 2022 has now been filed by Dr. Pratima Jain on behalf of the Defendant stating inter alia, as under:
8. The remaining contents of the affidavit is not pressed by the ld. Counsel for the Defendant. The same shall accordingly stand deleted. In view thereof, the present suit is decreed in terms of paragraphs 4(a) to 4(d) as extracted above. Decree sheet be drawn accordingly. Parties to bear their own costs.
9. Since the matter has been amicably resolved, full court fee is directed to be refunded to the Plaintiff in terms of the judgement in Nutan Batra v. M/s. Buniyaad Associates [2018 (255) DLT 696].
10. Next date of hearing stands cancelled. All pending applications are also disposed of.
PRATHIBA M. SINGH JUDGE JUNE 3, 2022/dk/ad