Contemnor to pay Rs20 million to Pfizer in Indian patent infringement case
27 February 2023
Contemnor to pay Rs20 milion to Pfizer in Indian patent infringement case
Pfizer Inc. and its group companies filed a suit bearing no. CS (COMM) No. 442 of 2021 titled as Pfizer Inc. & Ors. v. Triveni Interchem Private Limited & Ors. before the Delhi High Court for infringement of patent IN 218291 for the compound palbociclib.
The entities, Triveni Interchem Private Limited and Triveni Chemicals were found to advertise and offer for sale generic palbociclib in API form on their own websites and on the IndiaMART ecommerce platform without permission or authorization from Pfizer. After grant of an ad interim injunction dated October 21, 2021, in favour of Pfizer, contempt proceedings were initiated against the Triveni entities, where the court had held the Triveni entities in wilful disobedience and guilty of contempt of the court’s order under Order 39 Rule 2A of the Code of Civil Procedure, 1908. Vide order dated January 24, 2023, the court sentenced the contemnor to pay Rs20 million (US$240,000) to Pfizer within two weeks, failing which the contemnor shall be imprisoned for two weeks in Tihar Jail.
Background
Upon filing the suit in September 2021, the court found a prima facie case in favour of Pfizer and granted an ad-interim injunction vide order dated October 21, 2021. Sometime in July 2022, Pfizer again found the infringing products to be available on IndiaMART in a new packaging (on the same impugned link as per suit and on a new link). Pfizer filed a contempt application against the contemporaneous activities of the Triveni entities.
The Court vide order dated July 7, 2022, found the Triveni entities in contempt of the injunction order dated October 21, 2021, and directed the Triveni entities to render a specific reply on how the changed packaging came to be uploaded. Thereafter, Triveni entities had filed affidavits of K. K. Singh and Kamlesh Singh on September 13, 2022, however the same lacked material information as per the directions of the court’s order. Vide order dated July 7, 2022, Kamlesh Singh, director of Triveni entities, was directed to appear before the court. Even after filing of the affidavit of the Triveni entities, the infringing products were found to be available on Connect2India, another ecommerce platform.
When the matter was listed on December 14, 2022, the court held Kamlesh Singh guilty of wilful disobedience and contempt of the injunction order passed by the court. On January 5, 2023, the suit was listed for sentencing and further steps to be taken. The counsel on behalf of the Triveni entities and Kamlesh Singh had sought time to file an affidavit regarding Paragraph 14 of the Order dated December 14, 2022, i.e., sentencing and steps to be taken thereof.
The Triveni entities and Kamlesh Singh filed another affidavit dated January 17, 2023, wherein they did not make any submissions with regard to sentencing or with regard to steps to be taken; in fact, they had stated that in the period April 2022 to December 2022, the defendants had dealt with palbociclib, i.e., at a time which is after the passing of the injunction order dated October 21, 2021, and contradictory to the statements made in the previous affidavit dated September 13, 2022, and the statement made before the court on December 14, 2022.
The counsel on behalf of the Triveni entities alleged that through the affidavit dated January 17, 2023, it was clear that they had dealt with palbociclib only in July 2022 and there was no other contravention done by them and as the breach ceased after that, no order of the attachment of property be passed. Accordingly, no further actions would be required to be taken up against the contemnors.
As evident, the Triveni entities had filed false affidavit that they had not dealt with palbociclib, and despite stating that they had inadvertently missed removing the infringing listings, the infringing products were still found to be listed on September 16, 2022, i.e., after filing the affidavit. The court vide order dated January 24, 2023, took critical note of the conduct of the Triveni entities and observed the following:
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The Triveni entities had time and again filed false affidavits and despite being given opportunities, hadn’t come clean. The Triveni entities had continuously been stating that they had not dealt with palbociclib or any of the pharmaceutically acceptable salts.
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It is difficult to understand and believe that despite the continuous listings of the advertisements the Triveni entities, they had only dealt with palbociclib once. The apology of the Triveni entities is unacceptable as they were not willing to disclose the instances when dealt with palbociclib.
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It is unacceptable that in absence of any stocks, the Triveni entities were advertising palbociclib, as this practice is contrary to trade.
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In view of the aforesaid, and as per the settled law (Samee Khan v. Bindu Khan, 1998 7 SCC 59, and Citigroup Inc. v. Citicorp Business & Finance Pvt. Ltd., 2018 SCC OnLine Del 12864) the court can consider alternate remedies other than attachment of property for breach of order of court such as direct detention for 15 days. However, detention and/or civil imprisonment would be an extreme step when there is no other manner in which the contempt could be purged and payment of costs would be appropriate.
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The Triveni entities had clearly committed contempt of court and Kamlesh Singh had rendered himself for punishment. In view of the fact that the Triveni entities had made revenues of around Rs180 million (US$2.17 million) in the year 2020-21; Rs360 million (US$4.34 million) in the year 2021-22 and Rs130 million (US$1.57 million) in the period April 2022 to December 2022, an imposition of costs would be appropriate in present case.
In view of the aforesaid, the court, for the first time, directed Kamlesh Singh, director of the Triveni entities, to pay to the plaintiffs Rs20 million (US$240,000) within a period of two weeks, failing which, he be taken into custody and detained in civil imprisonment for two weeks at Tihar Jail.
Pfizer was successfully represented by Pravin Anand of Anand and Anand, along with firm lawyers Tusha Malhotra and Richa Bhargava.
- Asia IP
