Breaking News: Supreme Court Dismisses Roche "Tarceva" Petition


Earlier today, the Indian Supreme Court dismissed the special leave petition filed by Roche, challenging the order passed by the division bench of the Delhi High Court. However, the bench consisting of Justice Dalvir Bhandari and Justice MK Sharma (both formerly of the Delhi High Court) ordered that the ongoing trial at the Delhi High Court be expedited. They also stated that nothing in the Delhi Division bench order would bind the trial court judge, who is expected to decide the case on final merits.

By way of background, Roche dragged Cipla to the Delhi High court, alleging that Cipla infringed their patent rights over Tarceva, an anti cancer drug (sold as “Tarceva”). The trial judge, Justice Ravindra Bhat, refused to grant an interim injunction on the ground that since Cipla was selling the drug at 1/3rd of the price of Roche, an injunction would have meant lack of affordable access for a large number of cancer patients in India. Therefore, “public interest” demanded that no injunction (restraining order) be granted.

Roche then appealed to the Division Bench, whose order proved much more detrimental for Roche. Not only did the appellate bench uphold the key findings of the trial judge, it went on to impose costs on Roche for suppression of material “patent” information. It also went on to find that Roche had not established a prima facie case of infringement, since the patent in question did not seem to be implicated by Cipla’s generic product. And in any case, the court suggested that Roche’s patent was susceptible to a serious validity attack. As we noted earlier on the blog, this order was very poorly reasoned and demonstrated the relative lack of sophistication of Indian judges with complex patent disputes.

The Trial:

In the meantime, the final trial in this case had also begun and a retired judge (SM Chopra) was appointed as a court commissioner to hear evidence in the matter. We are given to believe that the trial is proceeding relatively quickly (by Indian standards) and the key witness of Roche (their constituted attorney, Mr SM Laud) has been examined by both sides. Another 2 expert witnesses of Roche remain to be examined (and cross-examined). And after this, Cipla will put its own witnesses on the stand. All this is expected to take another 4-6 months or so.

Being aggrieved by the order of the Delhi Division bench, Roche approached the Supreme Court by way of a special leave petition, stating that since the Delhi Division bench order raises very important questions of law, the Supreme Court must admit the matter. Justice Dalvir Bhandari and Justice MK Sharma (both formerly of the Delhi High Court) dismissed the special leave petition. The key reason for this dismissal appears to have been the fact that the matter has anyway proceeded to trial on final merits. Were the Supreme Court to take up this matter now, the trial itself could be delayed.

The judges therefore, while dismissing the petition also ordered that the trial be expedited. As I’d remarked in an earlier interview given to CH Unnikrishnan of the Mint:

“Given that Cipla has been selling the drug for more than a year now, it is unlikely that the Supreme Court will now grant an injunction in favour of Roche.

More so, the final trial is now proceeding in the trial courts,” said Shamnad Basheer, professor of intellectual property law at the National University of Juridical Sciences in Kolkata. “At best, the Supreme Court may order that the trial be expedited…”

Although the Supreme Court ordered an expedition of the trial, it refused to indicate any firm time line for doing so. Upon Mr Andhyarjuna’s (senior counsel appearing for Roche) request that the court order the trial to be completed in 3 months, Justice Bhandari quipped: “You’ve anyway taken 4 months (from the date of decision by the Division Bench) to file this appeal…!”

The “Influence” of the Division Bench Order

Interestingly, the judges also stated in their order that nothing in the Division Bench order will bind the trial judge who will ultimately determine the final merits of the matter (i.e. whether, on the full evidence, Roche’s patent is a valid one. And whether or not, Cipla infringes). Readers following this case closely will recall that the Delhi Division Bench itself had stated in its order that:

“It is however made clear thatthis order will not influence the decision of the learned Single judge in the pending application IA No.1402 of 2008 and the counter­claim of the defendant in the aforementioned suit.”

Conclusion:

While the Supreme Court appears to have taken a sensible route in shifting the focus to the trial, where the matter will be heard in detail and disposed off after an extensive review of evidence and arguments, my own view is that the court threw away a brilliant opportunity to clarify the law relating to interim injunctions in India. For this law is in a state of disarray and the standards deployed by courts are often confusing and inconsistent.

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

3 comments.

  1. Avatarmnbvcxzaq1

    dear shamnad,
    howsoever tempted am i to make some comment on this, i would refrain therefrom, for obvious reasons.
    however, i agree with u that the sc lost an opportunity (but not a ‘brilliant opportunity’, as u opine) to (i)bring clarity in law regarding preliminary injunctions (especially in patent matters) and (ii)set straight the anomalies brought in by the imperfectly understood and delivered judgment of the division bench of the delhi hc. i am distinguishing ‘brilliant opportunity’ from ‘opportunity’. it might have been ;good opportunity’ if (and only if) the appeal had been filed within a few days of the division bench’s judgment. by squandering away the valuble time in filing appeal, under wrong advice, appellant itself foreclosed its case by providing amunition/credence to unfavouarble factors. the sc bench itself observed to this effect during the hearing today.
    anyway, all eyes are on the evidence before the commission of mr. chopra.

    Reply
  2. AvatarShamnad Basheer

    Thanks mnbvc,,

    as you know, chopra will only record evidence. we really have to watch the actual judge that the matter will come up before once he finishes recording and the hearings begin.

    Reply
  3. Avatarmnbvcxzaq1

    i know it shamnad, as it were us who had conducted the first few sessions, even before the commissioner.
    i just wish i cud ve been able to throw more light on the actual trial. but i am bound. lol.

    Reply

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