Consolidation of Patent Suits by Roche

12 September 2012

The elaborate order on the application for interim injunction in the patent infringement suit filed by F Hoffmann-La Roche against Cipla gave the Indian patent litigation practice its first judicial precedent for inter alia ushering “public interest” into Indian patent jurisprudence. The suit is now slated for final arguments in the category of Finals in the Delhi High Court. But the story on Roche’s tryst against infringement of its patent on Tarceva does not stop here: the Delhi High Court has heard an interlocutory application from Roche for consolidation of its two suits filed for restraining infringement of the same patent. Roche prayed for the consolidation of its F Hoffman-La Roche v. Natco Pharma suit with the present suit F Hoffman-La Roche v. Dr Reddy’s Laboratories. Dr Reddy Labs also filed an application seeking closure of Roche’s right to lead evidence in the present case.

In its application, Roche stated that that its other suit against Natco Pharma is also for the infringement of the same patent and that an order on interim injunction application is reserved after completion of arguments therefore both suits, the present one and the one against Natco Pharma, should be consolidated in order to avoid unnecessary duplication of evidence, thereby saving the time of the court in final adjudication of the two matters.

Dr. Reddy’s Labs, while opposing the prayer for consolidation, submitted in its reply that both suits are at different stages, i.e. the present suit is at the stage of recording of evidence by the local commissioner whereas in the suit against Natco, the issues are yet to be framed. It also noted that while Natco is a party (as second defendant) in the present suit, Dr Reddy’s is not a party in the suit against Natco, hence any decision on the rights and liabilities of Dr Reddy’s in the present suit may cause prejudice to Natco Pharma in the suit where it is the first defendant. On closure of Roche’s right to lead evidence, Dr Reddy’s furthered its argument that even after expiry of the time given, Roche has not filed any evidence by way of affidavit, except a list of witnesses, but preferred the present application for consolidation with mala fide intention. Dr Reddy’s pointed out that Roche cannot ask for consolidation at this stage because it has already opposed a similar application from Dr Reddy’s seeking consolidation of the present suit with three other suits pending before this court on similar reasons including the suit in question of which Roche has now sought consolidation.

Roche, in reply to not consenting for consolidation earlier, stressed that the recordal of evidence in the first suit, i.e. Roche v. Cipla, was done on a priority basis on the direction of the Apex Court expediting the suit for final disposal, otherwise it would have agreed at that time. Roche further said that evidence in the present suit could not be adduced in view of filing of present application for consolidation, and that moreover there was non-compliance on the part of Dr. Reddy’s in not completing the admission/denial of documents. Roche said that it is ready to file the evidence after passing of the order on application for interim injunction in the suit against Natco, as evidence with respect to both the suits, i.e. against Dr. Reddy’s and Natco, are already prepared for filing.

The Court allowed Roche’s application for consolidation considering the fact that most of documents, issues and evidence to be produced by the parties would be common as the nature of the suit and cause of action are similar and that the consolidation of the suits would save time and expenses incurred by the parties. The Court also observed that there is no ulterior motive on the part of Roche; rather, the Court opined, the question of mala fide on the part of Roche does not arise.

The consolidation of the suits by the Court took effect by invocation of its jurisdiction under Section 151 of the Code of Civil Procedure, 1908. The provision provides for inherent power of the court to be exercised by the same where there is no specific provision such as consolidation of proceedings. There is no doubt that inherent powers have to be exercised by the court to meet the ends of justice and to prevent an abuse of the process of the court. The orders of consolidation are normally passed if it saves the parties from multiplicity of the proceeding, delay and expenses.

In the background above, a key question arises: why did Roche repeatedly return to court over the same patent. The instant case also mentions that Roche is not averse to consolidate its proceeding against Glenmark Pharmaceutical over the same patent with the aforementioned. Nevertheless, Roche’s endeavour is somewhat akin to Novartis’s saga over patenting of Gleevec. The Indian patent space is eagerly waiting the Supreme Court’s take on Section 3(d) of the Patent Act, 1970 in the Gleevec case; likewise, Roche’s case may bring clarity on whether “public interest” demands no injunction be granted. Public interest, in the words of the court, refers to cheaper drugs made available by manufacturers in India in comparison with proprietary drugs manufactured at higher costs.

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