Patent Infringement: MSD sues firm in Delhi HC over diabetes drug Sitagliptin

Merck filed an application under Order 39 Rule 1 and 2 CPC seeking an ex-parte injunction to restrain Solitaire, their partners, directors, employees, officers, servants, agents etc. from manufacturing, using, selling, distributing, advertising, exporting, offering for sale or in any manner directly or indirectly dealing with any product that infringes the claimed subject matter of Merck's Indian Patent No.209816 or any other claims thereof, including SITAGLIPTIN or any other pharmaceutically acceptable salts, including Sitaglix, Sitaglix PLUS and Sitaglix FORTE.

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

Merck pleaded in the hearing that the suit patent, 209816, was granted to Merck on September 6, 2007. Marketing approval was also granted by the Drug Controller General of India (DCGI) on 31.10.2007.

Furthermore, Merck suspected that Solitaire Pharmacia Private is violating or would violate the aforementioned Merck patent.

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.

Proceeding further, the learned counsel for Merck referred the court to the previous order passed by the Delhi High Court on 02.09.2013 in CS (OS) 1688/2013 where it was said that Merck had made out a prima facie case on the merits.

Further, the previous order noted, " There are sufficient reasons to grant an ex parte ad interim injunction inasmuch as if an ad interim ex parte injunction is not granted in favour of the plaintiffs it will cause irreparable harm and injury to the plaintiffs. Balance of convenience is also in favour of the plaintiff."

Accordingly, it was ordered in the earlier case., "Till the next date of hearing, defendants, their directors, employees, officers, servants, agents are restrained from selling, distributing, advertising, exporting, offering for sale and in any other manner, directly or indirectly, dealing in any product that infringes the subject matter of the plaintiff's Indian Patent No. 209816."

After learning the facts of the case, the court observed,

"Plaintiffs have made out a prima facie case in their favour."

In addition, the court noted,

"Balance of convenience is in favour of the plaintiffs (Merck) and against the defendant (Solitaire Pharmacia Private)."

In view of the foregoing, the court, subsequently held,

"The partners, directors, employees, agents etc. of the defendant are restrained from manufacturing, using, selling, distributing, advertising, exporting or offering for sale directly or indirectly any products that infringes the said plaintiff's Indian patent including SITAGLIPTIN or any other pharmaceutically acceptable salts including Sitaglix, Sitaglix PLUS and Sitaglix FORTE. Furthermore, the court directed Merck Sharp & Dohme Corp to comply with Order 39 Rule 3 CPC within five days."

To view the official court order, click on the link below-

https://indiankanoon.org/doc/41905128/