This is an informal case summary prepared for the purposes of facilitating exchange during the 2022 WIPO IP Judges Forum.
Session Role of the Judiciary in Promoting Balanced and Effective IP, Innovation and Creative Ecosystems
High Court of Delhi, India [2015]: Merck Sharp & Dohme Corpn. v Glenmark Pharmaceuticals, FAO(OS) 190/2013
Date of judgment: March 20, 2015
Issuing authority: High Court of Delhi
Level of the issuing authority: Appellate instance
Subject matter: Patents (inventions), Enforcement of IP and Related Laws
Plaintiff: Merck Sharp and Dohme Corporation and ANR (appellant)
Defendant: Glenmark Pharmaceuticals
Keywords: Interim injunction, public interest
Basic facts: The Appellant, Merck Sharp and Dohme (MSD), owns patents for Sitagliptin molecule, used drugs for type 2 diabetes. MSD launched Sitagliptin in India with a reduced price equivalent to one fifth of the US price in accordance with public interest considerations. The Respondent, Glenmark Pharmaceuticals, sells products also aimed at treating type 2 diabetes. The Appellant filed a suit against the Respondent claiming that the Respondent’s products infringed the Appellant’s patents. The Respondent argued that MSD’s patents were invalid.
Initially, the Single Judge of the Delhi High Court disposed of MSD’s application for an interim injunction.
Held: On appeal, the Division Bench of the High Court of Delhi reverse the decision of the Single Judges and held that all the three ingredients i.e., prima facie, irreparable injury and balance of convenience for passing the order of injunction were established by MSD and injuncted Glenmark from manufacturing and selling of the infringing drugs.
The Court granted MSD an interim injunction and issued the following orders:
- MSD shall provide an affidavit concerning compensation for damages or loss caused to Glenmark in case the suit is dismissed;
- Glenmark must provide a detailed account of its earnings from the products in question, starting the date of filing of the present suit;
- Glenmark is allowed to pursue the sale of the products already present on the market. However, further distribution of Glenmark’s products currently being manufactured shall be halted in compliance with the interim injunction granted to MSD.
Relevant holdings in relation to public interest considerations: The Court underscored the need to balance the public interest and the preservation of the integrity of the patent system to avoid the distortion of a legitimate monopoly. It considered that the nature of the drug and the differences in pricing are to be taken into account when looking at granting an injunction for patent infringement.
Relevant legislation:
Sections 3, 48, 64(1) of the Patents Act 1970 of India