2025:HHC:29389 IN THE HIGH COURT OF HIMACHAL PRADESH, SHIMLA OMP No.876 of 2022 in COMS No.25 of 2022 Reserved on 05.08.2025 Decided on: 29.08.2025 Boehringer Ingelheim International GmbH & Anr. … Applicants/Plaintiffs Versus Nexkem Biotech Private Limited & Anr. … Respondents/Defendants Coram Hon’ble Mr. Justice Ajay Mohan Goel, Judge. Whether approved for reporting?1 ____________________________________________________ _ For the applicants/ plaintiffs. : Mr. Ashok Aggarwal, Senior Advocate, with Dr. Sanjay Kumar, M/s Arpita Sawhney, Atul Jhingan, Priyansh Sharma, Ankit Thakur and Sanket Singh Sengar, Advocates. For the respondents/ defendants : Mr. Nitin Thakur, Advocate, for defendant No.1. Mr. Arjun Lall, Advocate, for defendant No.2. Ajay Mohan Goel, Judge This order shall dispose of an application filed under Order XXVI, Rule 9 read with Order XXXIX, Rule 7 of the Civil Procedure Code, by the applicants/plaintiffs. In terms of the application, the applicants have prayed for the following reliefs:- “(a) Appoint advocate(s)/official(s) of the Hon'ble Court as Local Commissioner(s) to visit the premises of the Respondents at the addresses given above and such other premises/godowns which the said Respondents, their directors, promoters, assigns, successors-in-interest, licensees, franchisees, partners, representatives, servants, 1 Whether reporters of the local papers may be allowed to see the judgment? 2 2025:HHC:29389 distributors, employees, stockiest, retailors, agents, sister concerns, subsidiaries etc. or anyone associated with them would disclose to the Local Commissioner(s), where the offending products including infringing products covered by the subject patent, labels, cartons, packets, materials and things in relation thereto are kept or stocked; (b) Direct the Local Commissioner(s) so appointed to make an inventory of all infringing products covered by the subject patent including labels cartons, packets, materials and things at the premises of the said Respondents; (c) Direct the Local Commissioner(s) so appointed to, upon making the above inventory, confiscate and take into custody the infringing products covered by the subject patent including labels, cartons, packets, materials and things and keep the same in safe custody, under lock and key and/or alternatively entrust the same to the said Respondents on superdari, retaining a few samples for deposit in Court: (d) Permit the Local Commissioner(s) to take assistance of any responsible Officer from the office of the Central Drugs Standard Control Organisation, Himachal Pradesh, to inspect the premises and take inventories with regard to the infringing products and consequently, direct the said Officer to extend the assistance to the Local Commissioner; (e) Authorize the Applicants representatives to enter the premises of the said Respondents along with the Commissioner(s) to assist in the execution of the Commission, if necessary; (f) Permit the Applicants/their representatives to take 3 2025:HHC:29389 photographs of all the infringing products including labels, cartons, packets, materials and things; (g) Authorize the Local Commissioner(s) to obtain police assistance from the area Police Station, in case they are obstructed in the performance of their duties”. 2. The applicants/plaintiffs have filed the suit on the plea that plaintiff No.1 is owner of Indian Patent Number 268846, which was granted on 18.09.2015 and as the non-applicants/defendants are infringing the Patent of the applicants, they be injuncted from doing so. Said Patent expired on 11.03.2025. 3. This Court, on 07.12.2022, in OMP No.874 of 2022, has inter alia passed the following order:- “Notice in above terms. Till the next date of hearing, the respondents are restrained either themselves or through their directors, licensees, stockiest and distributors, retailers, agents, servants and/or anyone claiming through any of them, jointly and severally, from infringing the patent rights of plaintiffs/applicants under Indian Patent No. 268846 by launching, advertising making, using, offering for sale, selling, importing and/or exporting the medicinal product Empagliflozin in any form whatsoever, including Empagliflozin API, the medicinal product “Empagliflozin Tablet” and/or “Empagliflozin + Metformin Hydrochloride Tablets” or any “generic version” thereof or any product sold under the trademark/name “EmpaRav-10 & EmpaRav-25” or any other trademark/name whatsoever, or any other product covered by the subject patent granted by the Controller of Patents in favour of plaintiffs/applicants. Respondents 4 2025:HHC:29389 are further directed to remove the impugned product from any third party website(s)/e-portal(s), including Https://www.indiamart.com. This order is subject to compliance of provisions of Order 39, Rule 3 of the Code of Civil Procedure.” 4. Learned Senior Counsel for the applicants submitted that in the peculiar facts of the case it is indeed necessary to appoint a Local Commissioner at this stage itself in terms of the prayers made in the application, because in case needful is not done at this stage, then the non-applicants would get time and opportunity to do away with the evidence which would prejudice the case of the applicants. Learned Senior Counsel further submitted that the reason as to why the application was filed alongwith the suit was that as all material evidence is in the possession of the non- applicants/defendants and the applicants do not have any access to the facility of the defendants, therefore, issuance of necessary directions for appointment of a Commissioner are necessary. Learned Senior Counsel further submitted that appointment of Local Commissioner inter alia is necessary to ascertain the following facts:- “1. To ascertain whether the impugned products had been offered for sale/sold/exported to and manufactured for parties other than Defendant No. 2. 2. To ascertain whether the impugned products are still being offered for sale/sold/exported to and manufactured for parties including Defendant No. 2. 3. To make a complete Inventory of the impugned 5 2025:HHC:29389 products including labels, cartons, packets, material and things at the site and keep the same in safe custody, under lock and key and/or alternatively entrust the same. 4. To review date wise Report and Certificate issued by Chartered Accountant reflecting the total unit manufactured, sold, recalled and destruction of the impugned products and related documents pertaining thereto including books of accounts. 5. To seize and seal the impugned products including labels, cartons, packets, material and things at the site. 6. To ascertain total value of impugned products manufactured/ sold/offered for sale to parties other than Defendant No. 2.” 5. Learned Counsel appearing for defendants No.1 and 2 have opposed the application by inter alia submitting that as objections stand raised to the maintainability of the civil suit itself, therefore, no purpose is going to be served by appointing a Commissioner in terms of the prayer made in the application. However, this Court is of the considered view that in light of the fact that there is an allegation that the Patent of the applicants was infringed by the non-applicants/ no prejudice is going to be caused in case the application is allowed and accordingly, this Court herein appoints Mr. Raman Jamalta and Mr. Paras Dhaulta, learned Counsel, as Commissioners to do the following:- “(1) Learned Commissioners shall visit the manufacturing premises of defendant No.1, situated in District Solan, Himachal Pradesh and on the basis of record available submit his report to the effect whether the products in 6 2025:HHC:29389 issue have been offered for sale/sold/ exported to by defendant No.1 and manufactured for parties other than defendant No.1? (2) Learned Commissioners shall ascertain whether the products in issue are still being offered for sale/ sold/ exported to and being manufactured for parties including defendant No.2. (3) Learned Commissioners shall make a complete Inventory of the impugned products including labels, cartons, packets, material and things at the site and keep the same in safe custody, under lock and key and/or alternatively entrust the same. (4) Learned Commissioners shall review date wise report and Certificate issued by Chartered Accountant reflecting the total unit manufactured, sold, recalled and destruction of the impugned products and related documents pertaining thereto including books of accounts. (5) Learned Commissioners shall seize and seal the impugned products including labels, cartons, packets, material and things at the site. (6) Learned Commissioners shall ascertain total value of impugned products manufactured/ sold/offered for sale to parties other than Defendant No. 2.” 6. In addition, learned Commissioners shall also submit report as to whether there is any record available with defendant No.1 qua the total products manufactured/ sold /recalled or destroyed which are subject matter of the Civil Suit. 7. Let, the premises be visited by Local Commissioners on or before 10.10.2025. The fee of learned Commissioners is fixed at 7 2025:HHC:29389 Rs.1,50,000/-, which shall include the expenses also. The fee as well as expenses shall be borne exclusively by the plaintiffs. The report be submitted by learned Commissioners on or before the next date of hearing, i.e. 28.10.2025. Learned Commissioners are permitted to take assistance of the Station House Officer of the area, if required. Learned Commissioners are also allowed to take photographs and videography of the proceedings. Learned Commissioners shall inform the plaintiffs as well as defendants of the date and time of the visit of the premises in question and learned Commissioner shall be accompanied by a representative of the plaintiffs as well as defendants. Learned Commissioners shall submit report in a sealed cover to the Court and copies thereof shall not be supplied to the parties by learned Commissioners. The application stands disposed of. (Ajay Mohan Goel) Judge August 29, 2025 (Rishi)