Boehringer Ingelheim Pharma GmbH & Co.KG a German pharmaceutical company having operations all over the world and its Indian subsidiary viz. Boehringer Ingelheim (India) Pvt.Ltd. (collectively referred to as “Boehringer”) filed a suit for patent infringement at the Madras High Court, stating that Tanmed Pharma India Private Limited (“Tanmed”) was violating its granted patents bearing Nos. 243301 and 227719 by launching, making, using, offering for sale, selling, importing and / or exporting the medicinal product, Linagliptin in different forms. Tanmed, in its response to the suit, stated that it had only obtained a Drug License from the Drug Control Authority, but had not engaged in the manufacture of the drug. Also, Tanmed immediately surrendered the license to the Drug Controller when it received the suit summons. Tanmed argued that since it was not manufacturing Linagliptin and had already surrendered the License, no cause of action was present for the suit to continue. The Court appointed a Local Commissioner to visit Tanmed’s premises to ascertain whether there was any manufacturing activity related to the patented drug. The Local Commissioner found that Tanmed was not manufacturing the drug at all. Tanmed also went on to give an undertaking that it will not manufacture the drug “Linagliptin” as long as the plaintiff holds the exclusive patent right of the said drug. Since the cause did not survive after Tanmed’s undertaking, the Court dismissed the suit. Each party was asked to bear its own costs.
What one must take away from this case, is that 'a stitch in time, saves nine'. It is clear from the defendant’s act of obtaining a license for manufacturing that it intended to manufacture it. The defendant surely did not go through the pains of obtaining a drug license for the fun of it! There is of course ‘no smoke without fire’. However, the Plaintiff’s timely action, before the defendant had started manufacturing, acted as a saving grace for the defendant to give up the idea of manufacturing the patented drug and even provide an undertaking to not manufacture it in the future.
