Tuesday, December 27, 2011

Matrix Labs v. Roche: Madras HC Rules It has No Jurisdiction

An ex parte injunction, which was granted by the Madras High Court in September 2010, was vacated by a Division Bench of the same Court on grounds that the Court did not have jurisdiction to entertain the suit.

The suit for patent infringement was filed by Roche against Matrix Labs alleging infringement of its patent 196774 on Erlotinib Hydrochloride. Roche claimed that the Madras High Court had jurisdiction over the matter for the following reasons:

A. Matrix Labs had filed a revocation petition against Roche’s patent 196774 at the IPAB in Chennai. Since the petition was filed in Chennai, the cause of action had arisen in Chennai vesting the Madras HC with jurisdiction

B. Matrix had allegedly tested the drug in clinical trials in a Chennai-based lab, and hence a part of the cause of action had arisen in Chennai.

The Division Bench rejected the first ground, and rightly so, since it was “a statutory compulsion” for every opponent to file revocation proceedings at the IPAB in Chennai. Mere filing of revocation proceedings at the IPAB, which is located in Chennai, cannot and did not vest the Madras HC with jurisdiction over the matter.

The second ground too was rejected since Roche’s allegation was based on the fact that past clinical trials of Matrix were conducted at a Chennai-based lab. However, no evidence of testing of Erlotinib in Chennai seems to have been adduced by Roche. Therefore, there was not enough evidence for the Court to conclude that a part of the cause of action had arisen within Chennai.

Assuming that tests had indeed been conducted within Chennai, this would still be squarely covered under Section 107A(a) of the Act, which deems reasonable use relating to the development and submission of information, as non-infringing (bolar exemption).

The drug Erlotinib Hydrochloride (aka TARCEVA) has already been the subject-matter of patent infringement suits filed before the High Court of Delhi. In fact, in Hoffman La Roche v. Cipla, the Delhi High Court took a prima facie view which impugned the validity of the Erlotinib patent.

I realize that according to the dicta of the Supreme Court (and principles governing equitable reliefs such as an interim injunction), prima facie views are just that- prima facie, and hence inconclusive. Be that as it may, in a regime like India where the trend is typically against grant of interim injunctions, I really am not sure why did the patentee in this case choose to try its luck in a different Court. May be it was just that- trying its luck.

One interesting side note is that the Madras HC appears open to grant of injunction in a case of threatened infringement. This is not unusual or uncommon or impermissible in other matters, but for an Indian Court to be open to such a remedy in a patent infringement suit is certainly noteworthy... 

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