The enforcement of foreign Letters Rogatory must align with domestic law, particularly concerning confidentiality and non-disclosure rights in pre-trial evidence collection.

COMMON JUDGMENT

Dr.G.Jayachandran, J.

&

Mummineni Sudheer Kumar, J.

M/s.Pfizer Inc., a company incorporated in New York, USA, is the holder of the patent for the crystalline forms of TAFAMIDIS 61 mg, sold under the brand name ‘VYNDAMAX’ in USA. On submission of Abbreviated New Drug Applications ('ANDA') before the US Patent Office by M/s.Cipla and M/s.Hikma (formerly Zenara). Pfizer asserted that, their Patent No:9,7770,441 (441 patent), protected by United States Patent law, is under threat of infringement. M/s.Ffizer filed suit Civil Action No:23-879 (GBW) (CJB) before the District Court for the District of Delaware, claiming that Cipla’s submission of ANDA No:218409 and Zenara's (now Hikma's) ANDA No:21805 are before the expiry of the Pfizer Patent 441 and hence it constitutes infringement. As the plaintiff, Pfizer also asked the defendants, Dexcel Pharma Technologies Ltd and others through application for discovery disclosure of information. M/s.Cipla and M/s.Zenara (now Hikma) disclosed the names of the Indian Companies as third party contractors and manufacturers of their ANDA products.

2. The United States District Court at Delaware referring on the Hague Convention, 1970, issued Letters Rogatory on 13.05.2024 requesting the Indian Courts to obtain deposition and documents from the Indian manufacturing Company, M/s.Softgel Health Care Private Limited having its manufacturing unit within the territorial jurisdiction of Madras High Court. As a consequence and follow up, Pfizer Incorporation along with three others filed joint petition before this Court as Intellectual Property disputes in O.P.(PT).Nos.5 & 6 of 2024.

3. The relief sought in these applications are:-

i) An order appointing a Local Commissioner, preferably a senior person having good knowledge in the field of Chemistry such as a retired Professor or a District Judge for collection of evidence, documents (as mentioned in Clause 11 and Schedule A to the Letters Rogatory) as well as for obtaining and recording the testimony (as mentioned in Clause 10 and Schedule B to the Letters Rogatory) from the Respondent and its authorized representatives whose details are given in Clause 9 of the Letters Rogatory; and

ii) An order conferring 'Special Powers' on the aforesaid Commissioner including the power to summon the person or persons including corporations and/or their authorized representatives to produce documents and things; the power to accept copies of the said documents and things; the power to summon person or persons including corporations and/or their authorized representatives, to administer oath to them and to record their evidence; the power to allow the Petitioners' and the Respondent's respective Indian counsel the opportunity to examine or cross-examine the aforesaid witnesses; the power to permit the Petitioners' and the Respondent's respective foreign representatives to attend and observe the examination of said person or persons including corporations and/or their authorized representative; the power to record the testimony of the said person or persons including corporations and/or their authorized representative; the power to have the said recording transcribed verbatim; and the power to provide, both the documents and recording and the transcript to the Petitioners' and the Respondent's respective representatives, their respective Indian Counsel, and

iii) An order setting up a Confidentiality Club consisting of the persons stated in paragraph 12 and on the lines stated as stated in paragraph 13 of the instant petitions; and 

iv) An order to conduct the further proceedings before this Court as well as before the Local Comm