Himachal drugmaker agrees to destroy infringed stock of Merck Diabetes Drug Sitagliptin

This comes after Merck Sharp & Dohme Corp filed in Delhi High Court a suit seeking a decree of permanent injunction to restrain the Hariom, their directors, officers from selling, distributing, offering for sale or dealing in API or any other product including Sitagliptin that infringes Merck's Indian Patent No.209816 or any of the claims therein including Sitagliptin.

Developed by Merck Sharp & Dohme (MSD), a UK subsidiary of Merck & Co, sitagliptin is used for treating type 2 diabetes mellitus. Sold under the brand name Januvia (sitagliptin phosphate) is an antihyperglycaemic drug containing an orally active inhibitor of the dipeptidyl peptidase-IV (DPP-IV) enzyme.

The hearing for the instant case was conducted by Justice Jayant Nath through video conferencing.

In its submission, the council for Merck averred that the suit patent No.209816 was granted by the Indian Patent Office on September 6, 2007. It learnt that the Hariom Pharmachem was dealing in Sitagliptin API commercially in India.

Responding to this, the Hariom Pharmachem's counsel filed an appearance after receiving an advance copy of the plaint. She stated that since March 2020 there has been no dealing whatsoever in the stated product. She further added that the Hariom Pharmachem was only dealing in raw material and is willing to suffer a decree in terms of prayer 54(a) of the plaint. stated,

"This submission is being made without prejudice to her contention that this court does not have the territorial jurisdiction to try the present suit." contended the counsel of Hariom Pharmachem.

The court had allowed Hariom to file an affidavit stipulating to undertake the terms and conditions as spelt out in the complaint. "Needful be done within two weeks." the court further added.

Later, in the hearing dated 08.03.2021, counsel for Merck submitted,

"As per the affidavit filed by the defendant, they have a stock of five Kg of the infringing products. In case, the defendant was to destroy the said products, this suit could be disposed of."

In response to the same, the counsel for the Hariom Pharmachem submitted a statement mentioning that it would be appropriate for the firm to be allowed to retain the goods until the patent in question expires on July 5, 2022.

However, in the very next hearing dated 19.03.2021 the counsel for the Hariom Pharmatech claimed that she has been given instructions to state that the drugmaker in question wants to destroy the infringing product stock. She also confirmed that she will file an affidavit in court to the said effect with a copy of the same to the counsel for Merck.

In view of the contentions, the court subsequently disposed of the petition and held;

"In view of the above statement of the learned counsel for the defendant, learned counsel for the plaintiffs submits that she has instructions to state that she does not press any further relief as part of the suit was already decreed on 18.02.2021. The said suit is disposed of as above."

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