Pfizer Inc. & ORS. v. Beacon Pharmaceuticals Limited & ORS.

$~77 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 587/2019 & I.As. 1857/2020, 11571/2020 PFIZER INC. & ORS.

.....Plaintiffs Through:

Mr.

Pravin Anand, Ms.

Tusha Malhotra and Ms. Sugandha Yadav, Advocates.

versus BEACON PHARMACEUTICALS LIMITED & ORS. .....Defendants Through:

Mr.

Sourav Roy, Mr.

Anshu Deshpande and Mr. Hemant Gupta, Advocates for D-1 and 2.

Ms. Farah Hashmi, Advocate for D-3.

CORAM:

HON'BLE MS. JUSTICE JYOTI SINGH

O R D E R

% 24.03.2026 1.

On 22.09.2025, Court had passed an order, relevant portion of which is as follows:- "6. Learned counsel appearing on behalf of the defendant nos. 1 and 2 states that the defendant nos. 1 and 2 have not exported their medicine to any pharmacy in India, including the defendant no.3. 6.1 He states that the defendant nos. 1 and 2 are willing to suffer a decree of permanent injunction as prayed for in these proceedings and the captioned suit may be disposed of in terms of decree of permanent injunction.

6.2 He states that defendant nos. 1 and 2 are willing to file any affidavit and undertaking required by the plaintiff to confirm that the defendant nos. 1 and 2 have not exported the infringing goods, which are the subject matter of the present case in India.

6.3 He states that defendant nos. 1 and 2 do not accept any responsibility for the goods dispensed by any pharmacy in India and does not admit that these are the products originating or being manufactured by the defendant nos.1 and 2.

6.4 He further states that he will file an affidavit of undertaking to the effect of his statement recorded in this order within a period of four (4) weeks.

7. The learned counsel for the plaintiff states that in view of the aforesaid The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

submissions made by the defendant nos. 1 and 2, he will take instructions for disposal of the suit, viz-a-viz the defendant nos. 1 and 2, while reserving the plaintiffs' right to pursue an alternative remedy against the person(s), who have circulated the infringing goods in the market.

8. The defendant nos. 1 and 2 are directed to file an affidavit of undertaking as regards the submissions noted in this order within a period of four (4) weeks."

2.

Pursuant to the said order, an affidavit of undertaking has been filed on behalf of Defendants No. 1 and 2, relevant portion of which is as under:- "3. I state that in terms of paragraph 6.1 of the order dated 22.09.2025, the Defendant Nos. I and 2 are willing to and do hereby submit to a decree of permanent injunction in as much as Defendant Nos. 1 and 2 will not supply the drugs covered by the suit patents in a manner that constitutes infringement under the Indian Laws.

4. I state that the Defendant Nos. 1 and 2 are willing to and do hereby file this affidavit of undertaking to confirm that the Defendant Nos. 1 and 2 have not exported the infringing goods, which are the subject matter of the present case into India as recorded at paragraph 6.2 of the order dated 22.09.2025.

5. I state that the Defendant Nos. 1 and 2 do not accept any responsibility for any goods dispensed by any pharmacy in India and do not admit that such goods are products originating from or manufactured by Defendant Nos. I and2, as recorded at paragraph 6.3 of the order dated 22.09.2025.

6. I state that without prejudice to the above undertakings, Defendant Nos. I and 2 clarify that nothing herein shall be construed as an admission of liability for any goods allegedly dispensed in India by any third party, and all rights and contentions of Defendant Nos. 1 and 2 are reserved in relation to any independent claims or proceedings that may be initiated by or against third parties. This is consistent with the recording in paragraph 6.3 of the order dated 22.09.2025.

7. I state that the present Affidavit of Undertaking is filed to place on record the statements and commitments of Defendant Nos. I and 2 as recorded by the Hon'ble Court on 22.09.2025 and to enable the passing of an appropriate decree of permanent injunction alone and disposal of the suit.

8. I state that the Defendant Nos. 1 and 2 undertake to abide by the aforesaid undertakings and any further directions that the Hon'ble Court may pass in this regard."

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

3.

Learned counsel for Defendant No. 3, on instructions, submits that in light of the undertaking of Defendants No. 1 and 2 that impugned products do not belong to them and they do not take any responsibility for the same, partners of Defendant No. 3 also undertake that they will not import or deal with the products covered by the suit patents in India. Defendant No. 3 also concedes that Plaintiffs' suit patents IN 218291, 209251, 232353, 241773, 218212, 249316, 243571 and 250050 were valid during the term of the patent and undertakes that no challenge will be laid to the patents even post their expiry.

4.

Learned counsel appearing for the Plaintiffs fairly and candidly submits that since the patents have expired, no relief of permanent injunction can be granted and suit can be disposed of in terms of the undertakings of Defendants No. 1 to 3.

5.

Defendants No. 4 and 5 were proceeded ex parte. Defendants No. 1 and 2 and Defendant No. 3 have given separate undertakings as aforementioned. Suit patents have expired. Accordingly, the suit is disposed of in light of undertakings given by Defendants No. 1 and 2 and Defendant No. 3. Partners of Defendant No. 3 will file undertakings on an affidavit within 10 days from today, with advance copies to learned counsel for the Plaintiffs as also to learned counsel for Defendants No. 1 and 2. 6.

Date of 12.05.2026 before the learned Joint Registrar stands cancelled.

JYOTI SINGH, J MARCH 24, 2026/VP/Sahil Sharma The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.