Roche files a total of ten law suits for infringement of its ‘erlotinib’ patent – IN 196774


While Novartis was the first land mark case on Section 3(d), it was the Roche-Cipla tussle over Indian Patent No. 196774, which laid down the first judicial precedent for the grant of interim injunctions in the case of infringement of pharmaceutical patents. This infringement suit was filed in January, 2008 and Justice Bhat subsequently delivered orders on the interim injunction application within 2 months. The matter then went to trial, which is now complete and should hopefully be argued before the Delhi High Court before the end of the year.

In 2009, Roche filed a second law-suit before the Delhi High Court, against NATCO for the violation of the same patent. This was followed by two more law-suits against Glenmark and Dr. Reddy’s in 2010, both of which were also filed before the Delhi High Court. This was followed by another lawsuit before the Madras High Court against Matrix and in which matter the Madras High Court granted an ex-parte interim injunction against Matrix. To the best of my knowledge this interim injunction is yet to be vacated by the Madras High Court.

Now, in 2011, Roche has filed another 4 lawsuits before the Delhi High Court against Oncare Life Sciences, Aureate Healthcare Pvt. Ltd., Innova Life Sciences Pvt. Ltd., Accura Care Pharmaceuticals Pvt. Ltd for the infringement of the same patent. Another lawsuit has been filed against Intas before the Madras High Court. That’s a total of 10 lawsuits for one patent and only one interim injunction so far by the Madras High Court. Interestingly Roche has also split the litigation between two law firms with the last 4 lawsuits before the Delhi High Court being handled by the Corporate Law Group (CLG), a Delhi based law firm. Let us see how exactly these matters proceed in the future.

Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

9 comments.

  1. AvatarAnonymous

    I see you say that the ex parte interim injunction is yet to be vacated by the Madras High Court or in other words it is yet to be heard on merits and there after whether the vacate or confirm.

    The Delhi High Court is notorious in hearing (read not hearing)and deciding the applications for interim injunction orders where the ex parte interim injunction order has been issued the chances are that it will continue for many months, may be more than 30 months or even more whereas as per the law the application should be decided by the court granting the ex parte interim injunction within the period of 30 days from the date of such grant. Similar seems to be the position with the Madras High Court.
    I have a case in Madras High Court though it relates to Trade Mark infrignmentment where the ex parte interim injunction has been granted and many months have passed by but the application for the confirmation/vacation of the said ex parte interim injunction order has yet to be heard. The local lawyer has even stopped replying to the e-mails or other queries out of shame that there has been no hearing at all whereas the ex parte interim injunction has been obtained by making false statement and that too against the registered proprietor of the mark who is prior user. CAN YOU BELIEVE IT?
    I do not know what is the position in other High Courts like Mumbai and Kolkatta. I note that most of the District courts in almost all over India at least try to follow the said law of disposing the applications within the period of 30 days and make serious efforts for that(though the cases where the ex parte ad interim injunction is not granted frequently).

    Reply
  2. AvatarPrashant Reddy

    @ Anon – 2:26PM: Feel free to write to the objective bloggers and ask them to start blogging more. Of course, that would require you to reveal your name and you obviously don’t have the guts to do that. Until then you’re stuck with me. 😉

    Best,
    Prashant

    Reply
  3. AvatarAnonymous

    @anon – I think Reddy is as objective as they come. However, I do understand the source of your angst, as I know of at least one law firm which would be smarting due to this accurate reporting of events by Prashant. Of course, since you obviously belong to a camp, all attempts to convince you of Prashant’s objectivity would be futile!
    Keep it up Prashant ! 🙂

    Reply
  4. AvatarPrashant Reddy

    @ Anon (8:38AM): I’ve just received information that the ex-parte injunction against Matrix has been absolute by the Madras High Court just a few days ago. Apparently the arguments for vacation of the injunction were heard about a year ago but the judgment was reserved until recently.

    Prashant

    Reply
  5. AvatarAnonymous

    Prashant, don’t you think that the Madras High Court violated the provisions of proviso to Order 39 rule 3 according to which the duty of the court is to dispose off the application for the grant of interim injunction within the period of 30 days when there is an ex parte ad interim injunction?

    Reply
  6. AvatarPrashant Reddy

    Anon, its an unfortunate reality that applications for the vacation of ex-parte injunctions are rarely ever decided in time. In the Roche case, I think the Judge had heard the arguments within 30 days but then just sat on the judgment for 10 months. Unfortunately judges these days are not accountable to anybody.

    Best,
    Prashant

    Reply
  7. AvatarAnonymous

    Prashant:

    Can you give us the details on the Chennai HC making the injunction absolute against Matrix.

    To my knowledge, this would be possibly the only case in medicine segment of patents where an injunction has been made absolute.

    Also, if the injunction was made absolute, how does that help Patentee who has not got injunctions against other generic players at Delhi HC (the cases that your team has been covering so well)?

    Regards,
    Watcher

    Reply
  8. AvatarAnonymous

    Dear Prashant:

    The Roche folks have now got it back.

    a) The injunction on Matrix was removed long back – that part of your information is incorrect.

    b) The Div Bench of the Chennai HC has vacated the leave to sue granted to Roche in the Matrix case, effectively, removing the Forum shopping tactic that Roche and its team employed. The Chennai HC’ div bench ruled on this in a order dated 01/Dec/2011. This order is already on the Che Judis site.
    The media or your site did not pick up this Div bench news, however, another site- Pharmasia news has details (paid site).

    c) Likewise, in the Intas matter that you highlighted, the Che HC has today (12 Dec) dismissed the Roche case.

    Looks like the forum shopping for Roche is not helping.

    Best wishes,
    Watcher

    Reply

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