Madras High Court rejects Letters Rogatory issued by district court of Delaware in the United States

The Madras High Court has rejected a Letters Rogatory (a request for international judicial assistance) issued by the district court of Delaware in the United States for securing oral and documentary evidence from a Chengalpattu based pharmaceutical company in connection with a patent dispute between Pfizer and Cipla.

A Division Bench of Justices G. Jayachandran and Mummineni Sudheer Kumar held that the Letters Rogatory isued by the US court on May 13, 2024 could not be honoured since Article 23 of the Hague Convention permits signatory countries to refuse requests that were in the nature of pre-trial discovery of evidence.

The judges pointed out that Pfizer, a popular American pharma company, had instituted a civil suit before the district court of Delaware against Indian pharma majors Cipla and Zenara for alleged infringement of its patent with respect to the drug Vyndamax used for treating transthyretin amyloid cardiomyopathy.

Cipla and Zenara had entered into a contract with Softgel Healthcare Private Limited, located at Kelambakkam-Vandalur Road in Pudupakkam village, for manufacturing their drug and hence, Pfizer had obtained the Letters Rogatory from the Delaware court to record the evidence of the Chengalpattu based pharma company.

Pfizer urged Madras High Court to honour the Letters Rogatory by appointing a Legal Commissioner, knowledgeable both in chemistry as well as the legal procedures, for collection of the evidence in the presence of a ‘Confidentialiy Club’ comprising Indian and American advocates representing both the parties.

A single judge of the High Court had, in January this year, acceeded to Pfizer’s request and appointed a Legal Commissioner for collection of both oral and documentary evidence. He had also constituted the Confidentiality Club and therefore, Softgel had taken his order on appeal before a Division Bench.

Senior counsel V. Raghavachari, representing the appellant, contended that his client could not be forced to disclose confidential information since it would be prejudicial to its interests. He also said, Pfizer could not be allowed to conduct a roving inquiry under the guise of the Letters Rogatory.

Finding force in his submissions, the Bench led by Justice Jayachandran took note that Pfizer’s application seeking patent for the drug in India had been rejected and an appeal against such rejection was still pending. Therefore, the nature of the litigation in the US and the patent appeal in India were inter-linked, it said.

“In such circumstances, this appellant (Softgel), who is neither a party before the United States district court nor connected with any trade of respondents (Pfizer), cannot be forced to part away with documents when there is a potential threat to the appellant’s registered Indian patent,” the Division Bench wrote.

Further, holding that the Letters Rogatory was vague and does not contain specific deails as mandated under Article 3 of the Hague Convention, ratified by both India and the United States, the judges said, the appellant too was entitled to exercise its right under Article 11 of the Convention and refuse to give evidence.

“The privilege to refuse also arises from Article 23 read with the notification of the Government of India which excludes execution of a Letters Rogatory in respect of pre-trial discovery of documents,” the Division Bench said and set aside the orders passed by the single judge in favour of Pfizer.