Isabella Mariam

The High Court of Madras Division Bench of Justice G Jayachandran and Justice Mummineni Sudheer Kumar on November 25 set aside a Single Judge’s order that had allowed a multinational pharmaceutical company to enforce a United States court’s request for evidence from a Chennai-based drug manufacturer. The Bench held that the US District Court’s Letters Rogatory—formal requests by a foreign court seeking assistance in securing documents and testimony—which sought extensive documents and deposition in relation to a patent dispute over a tafamidis-based drug, in substance amounted to pre-trial discovery that India may refuse under its declaration to the Hague Evidence Convention. The Court accordingly declined to compel the non-party Indian manufacturer to disclose technical and confidential material for use in the foreign proceedings.

The dispute arises from Letters Rogatory issued on 13.05.2024 by the United States District Court for the District of Delaware in a patent infringement suit initiated by the petitioners, who alleged that certain companies had submitted ANDA applications before expiry of Patent No. 9,777,0441 relating to the drug Tafamidis. The petitioners asserted that the defendants in the foreign proceedings disclosed the name of the appellant, an Indian manufacturing company, as a third-party manufacturer of their ANDA products.

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Relying on the Hague Convention, the foreign court sought assistance from Indian courts to obtain depositions and documents from the appellant. The petitioners filed applications before the Madras High Court seeking appointment of a Local Commissioner to collect evidence, record testimony, set up a confidentiality club, and transmit the collected material to the U.S. Court.

The appellant opposed the petitions stating it was not a party to the proceedings before the U.S. Court and contended that the request was prejudicial to its confidentiality and business interests. It argued that Letters Rogatory cannot be used as a device for a “fishing expedition,” particularly when the Indian Patent Office had rejected the petitioners’ patent application for the same drug within India. The appellant also stated that India had exercised its right under Article 23 of the Hague Convention to decline pre-trial discovery requests.

The Single Judge allowed the petitions, holding that the appellant was not a stranger to the dispute as it had contractual links with companies facing the U.S. litigation and that Order XXVI Rules 19–22 of the Code of Civil Procedure permitted issuance of commissions for evidence. A confidentiality club was also constituted.

The appellant filed Letters Patent Appeals challenging the order, stating that the documents sought were vague and non-specific and that enforcing pre-trial discovery would violate India’s domestic law, sovereignty, and the declared reservation under the Hague Convention.

The Court examined the Hague Convention provisions and recorded that “the Republic of India had declared that it will not execute Letter of Request issued in pursuant to Article 23… for the purpose of obtaining pre-trial discovery of documents.”  It observed that “orders cannot be passed as a matter of routine” when Letters Rogatory are received and stated that the domestic court must undertake careful scrutiny.

Referring to the limits of reciprocal obligations, the Bench stated that “domestic law permits honouring the request for documents by a Foreign Court… however such reciprocal obligation is subject to conditions, as provided under Articles 11 and 12… as well as Article 23.”

Discussing judicial precedents, the Court recorded that earlier decisions permitting execution of Letters Rogatory “had no opportunity to consider the fact that Republic of India had exercised its right under Article 23… and had notified that it will not execute Letters of Request… in the nature of collecting pre-trial evidence.”

The Bench further stated: “execution of a Letter of Request… necessarily be satisfied before executing the Letters Rogatory that recording of evidence does not prejudice the sovereignty of the Country.”

Analysing the factual background, the Court observed that the petitioners’ patent application for the same drug had been refused in India and that “this appellant… cannot be forced to part away documents when there is a potential threat to the appellant’s registered Indian Patent.”

The Bench recorded that the Letters Rogatory were in the nature of “attempt to collect pre-trial documents” and that the Single Judge had allowed the petitions “without consideration the rights exercised by the Republic of India.”

Ultimately, it held that “the Letters Rogatory is vague, without any specificity as required under Article 3… The appellant have a right to refuse to give evidence exercising right under Article 11… The privilege to refuse also arises from Article 23… which excludes execution… in respect of pre-trial discovery of documents.”

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The Court held that “L.P.A.Nos.17 & 18 of 2025 are allowed. The judgment and decree passed in O.P.(PT). No.5 & 6 of 2024, dated 28.01.2025 are hereby set aside. The applications filed by the respondents for the issuance of Commission as per the Letters Rogatory issued by the United States District Court, Delaware stands dismissed. Consequently, connected Miscellaneous Petitions closed. No costs.”

Advocates Representing The Parties

For the Appellant: Mr. Raghavachari, Senior Counsel for A.K. Balaji & S. Nithya

For the Respondents: Mr. P.S. Raman, Senior Counsel assisted by Pravin Anand, K. Prem Chandar & Tusha Malhotra

Case Title: Softgel Healthcare Private Limited v. Pfizer Inc. & Others
Neutral Citation: NA

Case Number: L.P.A. Nos. 17 & 18 of 2025
Bench: Justice G. Jayachandran and Justice Mummineni Sudheer Kumar