PFIZER INC. & ORS vs LUCIUS PHARMACEUTICALS & ORS.

2023-10-30 Information

$~6
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 624/2017 & I.A. 10909/2017, I.A. 2450/2020, I.A. 13833/2023

PFIZER INC. & ORS ….. Plaintiffs
Through: Ms. Tusha Malhotra, Mr. Aditya Kaushik, Advs.

versus

LUCIUS PHARMACEUTICALS & ORS. ….. Defendants
Through: Mr. Parveen Kumar Aggarwal and Mr. Abhishek Grover, Advs. for D-4
Mr. Rahul Kumar, Adv. for D-5
Mr. Ajay Chowdhary, Adv. for D-7

CORAM:
HON’BLE MR. JUSTICE C. HARI SHANKAR
O R D E R (ORAL)
% 30.10.2023

CS(COMM) 624/2017 & IA 10909/2017

1. Defendants 1 and 2 have already been proceeded ex parte on 27 November 2018 and 30 July 2019 respectively.

2. Qua Defendants 3 and 6, the suit already stands decreed.

3. The dispute also stands settled between the plaintiff and Defendants 4 and 5 with the intervention of the Delhi High Court Mediation and Conciliation Centre.

4. The settlement agreements dated 3 October 2023 and 16 August 2023 are on record.

5. The terms of settlement agreement qua Defendant 4 read as under:

1. The Defendant No. 4 acknowledges the validity of the suit patents and the Plaintiffs’ exclusive right in dealing in products containing Sunitinib and Axitinib, or any of their pharmaceutically acceptable salts during the lifetime of patents IN 209251 and IN 232353 respectively and Crizotinib or any of their pharmaceutically acceptable salts which is subject matter protected by the claims of the suit patents IN 249316, 243571,250050;

2. The Defendant No. 4 states that during the lifetime of the patents IN 209251 and 232353 the Defendant No. 4 has not indulged in any act of commercially making, using, offering for sale, selling or importing, exporting the infringing products as manufactured by Defendant No. 1 which in any manner infringes the subject matter of the said patents.

3. The Defendant No. 4 further undertakes not to violate and infringe the rights of the Plaintiffs in the suit patents IN 249316, 243571, 250050 during their lifetime, by manufacturing, making, using, offering for sale, advertising, selling, importing and/or exporting a generic version of Crizotinib or any other product (s) covered by the claims of the suit patents including the impugned Lucicriz products of the Defendant No. 1.

4. The Defendant No. 4 further undertakes to make his best efforts for removal of the advertisements/ listings of generic Crizotinib of the Defendant No. 1 i.e. Lucius Pharmaceuticals, on any third party websites, namely www.indiamart.com, etc. at the earliest however not later than 1 month from the signing of the present settlement and undertakes to never in the future advertise and/or offer for sale on their own website or any e-pharmacies generic Crizotinib of the Defendant No. 1 marketed under the brand names Lucicriz;

5. The Defendant No. 4 undertakes to provide to the Plaintiffs, information regarding any generic product which infringes Plaintiffs’ patents IN 249316, 243571, 250050 for Crizotinib, including the product of the Defendant No. 1 marketed under the brand names Lucicriz or any other brand name.

6. Subject to the aforesaid undertakings given by the Defendant No. 4, the parties declare that they have no other claims against each other and agree that on the basis of the above terms the present suit may be decreed in terms of paragraph 95 (a) of the Plaint and the terms of the present settlement agreement.

7. In lieu of the Defendant No. 4’s undertakings, the reliefs claimed in paragraph 95(b) to (e) of the Plaint are given up by the Plaintiffs against the Defendant No. 4. However, in the event of a breach of these undertakings in this Agreement, the parties reserve the right to seek any remedies available to them in law and equity. It is further submitted that the above undertakings shall be binding henceforth on the Defendant No. 4 or Plaintiffs as appropriate, as well as their respective associates, representatives, successors, partners, employees, affiliates and assignees-in-business.

8. In view of the settlement arrived at between the parties, the present suit may be decreed in terms of the aforesaid terms of settlement and the Plaintiffs are entitled to seek full refund of the court fees paid by it under Section 16 of the Court Fees Act, 1870.

9. The Parties agree that they have executed the present Settlement Agreement of their own free will and volition, without any force or pressure from any person. The Parties also agree that they have understood the contents of the present Settlement Agreement as the same have been explained to them by the Mediator and their respective counsels, in the presence of each other and they have consented to the same in its true letter and spirit, and as such they shall not dispute the same ever in future.

10. The Parties agree that they shall abide by the terms and conditions set out in the present Settlement Agreement and shall not dispute the same hereinafter in future either themselves or through any third parties. The Parties further agree that the statements made by them herein in this Settlement Agreement shall be taken as their respective undertakings before the Hon’ble Court.

11. The Parties undertake to present themselves before the Honble Court during the hearing, either physically, or virtually confirming the terms of the Settlement Agreement.

6. The terms of settlement agreement qua Defendant 5 read as under:
1. The Defendant No. 5 acknowledges the validity of the suit patents and the Plaintiffs’ exclusive right in dealing in products containing Sunitinib and Axitinib, or any of their pharmaceutically acceptable salts during the lifetime of patents IN 209251 and IN 232353 respectively and Crizotinib or any of their pharmaceutically acceptable salts which is subject matter protected by the claims of the suit patents IN 249316, 243571, 250050;

2. The Defendant No. 5 states that during the lifetime of the patents IN 209251 and 232353 the Defendant has not indulged in any act of commercially making, using, offering for sale, selling or importing, exporting the infringing products as manufactured by Defendant No. 1 which in any manner infringes the subject matter of the said patents.

3. The Defendant No. 5 further undertakes not to violate and infringe the rights of the Plaintiffs in the suit patents IN 249316, 243571, 250050 during their lifetime, by manufacturing, making, using, offering for sale, advertising, selling, importing and/or exporting a generic version of Crizotinib or any other product (s) covered by the claims of the suit patents including the impugned Lucicriz products of the Defendant No. 1.

4. The Defendant No. 5 further undertakes to remove or to take steps towards the removal of the advertisements/ listings of generic Crizotinib of the Defendant No. 1 i.e. Lucius Pharmaceuticals, on the Defendant’s website or any third party websites, namely, www.indiamart.com, etc. within the next 15 days from the date of the recordal of the present settlement and undertakes to never in the future advertise and/or offer for sale on their own website or any e-pharmacies generic Crizotinib of the Defendant No. 1 marketed under the brand names Lucicriz;

5. The Defendant No. 5 undertakes to provide to the Plaintiffs, information regarding any generic product which infringes Plaintiffs’ patents IN 249316, 243571, 250050 for Crizotinib, including the product of the Defendant No. 1 marketed under the brand names Lucicriz or any other brand name.

6. Subject to the aforesaid undertakings given by the Defendant No. 5, the parties declare that they have no other claims against each other and agree that on the basis of the above terms, the present suit may be decreed in terms of paragraph 95 (a) of the Plaint and the terms of the present settlement agreement.

7. In lieu of the Defendant No. 5’s undertakings, the reliefs claimed in paragraph 95(b) to (e) of the Plaint are given up by the Plaintiffs against the Defendant No.,5. However, in the event of a breach of these undertakings in this Agreement, the parties reserve the right to seek any remedies available to them in law and equity. It is further submitted that the above undertakings shall be binding henceforth on the Defendant No.5 or Plaintiffs as appropriate, as well as their respective associates, representatives, successors, partners, employees, affiliates and assignees-in-business.

11. The Parties undertake to present themselves before the Hon’ble Court during the hearing, either physically, or virtually confirming the terms of the Settlement Agreement.

7. The Court has perused the terms of settlement and find them to be in order and workable.

8. The plaintiff as well as Defendants 4 and 5 are represented by their Counsel. They undertake, on behalf of their respective clients, to remain bound by the terms of settlement.

9. In that view of the matter, the dispute does not survive for consideration between the plaintiff and Defendants 4 and 5.

10. The suit accordingly stands decreed qua Defendants 4 and 5 in terms of the settlement agreements dated 3 October 2023 and 16 August 2023 respectively, by which the plaintiff and Defendants 4 and 5 shall remain bound.

11. Let a decree sheet be drawn up by the Registry.

12. Re-notify the suit, qua remaining surviving defendants, on 1 February 2024.

IA 2450/2020 (under Order VII Rule 11 of the CPC)

13. This is an application by Defendant 4 under Order VII Rule 11 of the CPC.

14. As the dispute stands settled with Defendant 4, this application has become infructuous and is disposed of as such.

IA 13833/2023 (under Section 151 of the CPC)

15. Issue notice, returnable on 1 February 2024.

16. Notice is accepted, on behalf of the sole contesting Defendant 7, by Mr. Ajay Chowdhary.

17. Reply, if any, be filed within four weeks from today with an advance copy to learned Counsel for the plaintiff, who may file rejoinder thereto, if any, within four weeks thereof.

C. HARI SHANKAR, J.
OCTOBER 30, 2023
dsn

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CS (COMM) 624/2017 Page 1 of 84