Pfizer Inc. and its group companies (“Pfizer”) filed a suit bearing no. CS (COMM) No. 442 of 2021 titled as Pfizer Inc. & Ors. v. Triveni Interchem Private Limited & Ors. before the Hon’ble Delhi High Court, for infringement of patent IN 218291 for the compound Palbociclib. The entities, Triveni Interchem Private Limited and Triveni Chemicals (“Triveni entities”) were found to advertise and offer for sale generic Palbociclib in API form on their own websites and on IndiaMART (e-commerce platform), without any permission or authorisation from Pfizer. After grant of ad-interim injunction dated October 21, 2021 in favour of Pfizer, contempt proceedings were initiated against Triveni entities, where the Hon’ble Court had held Triveni entities in wilful disobedience and guilty of contempt of the Hon’ble Court’s order under Order 39 Rule 2A of the Code of Civil Procedure, 1908. Vide order dated January 24, 2023 sentenced the contemnor to pay INR 2 Crores to Pfizer within two weeks, failing which the contemnor shall be imprisoned for two weeks in Tihar Jail.
BRIEF BACKGROUND
Upon filing the suit in September, 2021, the Hon’ble 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 Hon’ble Court vide order dated July 7, 2022 found 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 Mr. K. K. Singh and Mr. Kamlesh Singh on September 13, 2022, however the same lacked material information as per the directions of the Hon’ble Court’s order. Vide order dated July 7, 2022, Mr. Kamlesh Singh (director of Triveni entities) was directed to appear before the Hon’ble Court. Even after filing of the affidavit of the Triveni entities, the infringing products were found to be available on Connect2India (e-commerce platform).
When the matter was listed on December 14, 2022, the Hon’ble Court held Mr. Kamlesh Singh guilty of wilful disobedience and contempt of the injunction order passed by the Hon’ble 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 Mr. 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 Mr. 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, infact had stated that in the period April 2022– December 2022, the Defendants had dealt with Palbociclib i.e. 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 this 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 evidently, 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 Hon’ble Court vide order dated January 24, 2023 took critical note of the conduct of Triveni entities and observed the following:-
(a) 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.
(b) 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.
(c) It is unacceptable that in absence of any stocks, the Triveni entities were advertising Palbociclib, as this practice is contrary to trade.
(d) 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 this Court such as direct detention for 15 days. However, detention / 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.
(e) The Triveni entities had clearly committed contempt of court and Mr. Kamlesh Singh had rendered himself for punishment. In view of the fact that the Triveni entities had made revenues of around INR 18 crores in the year 2020-21; INR 36 crores in the year 2021-22 and INR 13 crores in the period April 2022 to December 2022, an imposition of costs would be appropriate in present case.
In view of the aforesaid, the Hon’ble Court for the first time, directed Mr. Kamlesh Singh, director of the Triveni entities, to pay to the Plaintiffs INR 2 crores within a period of two weeks, failing which, Mr. Kamlesh Singh shall be taken into custody and detained in civil imprisonment for two weeks at Tihar Jail.
Pfizer was successfully represented by Mr. Pravin Anand along with Ms. Tusha Malhotra and Ms. Richa Bhargava.
