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2009 Supreme(P&H) 1060

2009(3) LAW HERALD (P&H) 2093
IN THE HIGH COURT OF PUNJAB AND HARYANA
Before
The Hon’ble Mr. Justice Rakesh Kumar Jain
Civil Original Petition No.2 of 2008
Aventis Pharmaceuticals Inc. & Ors.
v.
Barr Laboratories, Inc. Ranbaxy Labotatories Ltd. & Ors.
{Decided on 01/07/2009}

Advocates:
For the Petitioner:Mr. Anand Chhiber, Advocate.

Headnote:Civil Procedure--Appointment of commission--Letter of request issued by foreign Court--To obtain evidence in civil dispute of witness M/S Ind.-Swift laboratories Ltd. by examining technically qualified representative of M/s Ind. Swift Laboratiories Ltd. by Commission and also persure and obtain photocopies of documents mentioned in letter of request--Head of Department of Chemistry, Stephen College, Delhi being highly qualified appointed as commission--Commission directed to return evidence so collected in sealed cover to Registrar of High Court within four weeks who shall forward it to Central Government along with letter of request for transmission to foreign Court--Civil Procedure Code, 1908, Section 78, Order 26, Rule 19 and 20(a).

       

JUDGMENT

Rakesh Kumar Jain, J.:- In conformity with Article 3 of the Hague Convention of 18th March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters ( the “Convention”), the United States District Court for the District of New Jersey (the “Court”) issued a letter of request dated 10.4.2008 to obtain evidence relating to the civil action pending before it between the companies mentioned underneath.

AVENTIS PHARMACEUTICALS INC. and

AMR TECHNOLOGY, INC., Civil Action No.04-1064

Plaintiffs, (JAG/MCA)

v.

BARR LABORATORIES, INC., RANBAXY

LABORATORIES LTD. and RANBAXY

PHARMACEUTICALS, INC.

Defendants and Counterclaimants.

---------------------------------------------------------------------------------

IMPAX LABORATORIES, INC., RANBAXY

LABORATORIES LTD. And RANBAXY Civil Action No.04-1076

PHARMACEUTICALS, INC. (JAG/MCA)

Defendants and Counterclaimants.

---------------------------------------------------------------------------------

TEVA PHARMACEUTICALS USA, INC.,

AMINO CHEMICALS LTD., DIPHARMA S.p.A. Civil Action No.04-1078

And DIPHARMA FRANCIS S.r.l., (JAG/MCA)

Defendants and Counterclaimants.

---------------------------------------------------------------------------------

2. Clauses 7, 8, 9, 10 and 14 of the letter of request needs to be mentioned, which are reproduced as under :

“Clause 7. Nature and purpose of the proceedings for which evidence is needed (Article 3(c) of the Convention):

The above-captioned matters are civil actions for patent infringement arising under the patent laws of the United States, Title 35, United States Code, Sections 10 et seq., brought by plaintiffs Aventis Pharmaceuticals Inc. (“Aventis”) and AMR Technology, Inc. (“AMR”). These actions relate to the generic versions of Aventis’s ALLEGRA ® and ALLEGRA-D ® drug products for which Barr has obtained marketing approval from the U.S. Food and Drug Administration (“FDA”) and which Barr Laboratories, Inc. (“Barr”) has marketed and intends to market in the United States after being induced to engage in such marketing by Teva Pharmaceuticals USA, Inc. (“Teva”). These actions also relate to generic versions of Aventis’s ALLEGRA ® drug products for which Teva has obtained approval from the FDA and has been marketing in the United States after being induced to engage in such marketing by Barr. These actions also relate to Aventis’s ALLEGRA-D ® drug product for which Impax Laboratories, Inc. (“Impax”) has sought marketing approval from the FDA and which Impax intends to market in the United States immediately upon FDA approval. Aventis and AMR assert that Defendants’ conduct constitutes infringement and induced infringement under 35 U.S.C. $ 271 of one or more of the claims in patents assigned to AMR and licensed to Aventis.

Clause 8. Evidence to be obtained or other judicial act to be performed (Article 3(d) of the Convention):

The evidence sought by Aventis pertains to these actions. The Court requests that, in the interests of justice, you cause, by your proper and usual process, the requested documents, as specified below in response No.10, to be provided to Aventis from Ind-Swift Laboratories Ltd.

Aventis seeks the specified documentary evidence from Ind-Swift Laboratories Ltd. because, as set forth in the Affidavit of Aaron Barkoff, sworn to January 23, 2008, 1-16 (“Barkoff Aff.,” attached hereto as Exhibit A), Aventis has reason to believe that Ind- Swift Laboratories Ltd. is a current supplier of chemical intermediates used in the manufacture of fexofenadine to Teva Pharmaceutical Industries Ltd., which is a supplier of fexofenadine to Defendants Barr, Impax and Teva. In addition, Aventis has reason to believe that Ind-Swift Laboratories Ltd. supplied fexofenadine to Defendants Amino Chemicals, Ltd., Dipharma S.p.A. or Dipharma Francis S.r.l.

Clause 9. Identity and business address of the person to be examined or entity possessing documents to be inspected or produced (Article 3(e) of the Convention):

Ind-Swift Laboratories Lt





















































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