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Judgment
Rakesh Kumar Jain, J.—In conformity with Article 3 of the Hague Convention of 18th March 1970 on the Taking of Evidence Abroad in
Civil or Commercial Matters (the ""Convention""), the United States District Court for the District of New Jersey (the ""Court"") issued a letter of
request dated 10.04.2008 to obtain evidence relating to the civil action pending before it between the companies mentioned underneath.
Clauses 7, 8, 9, 10 and 14 of the letter of request needs to be mentioned, which are reproduced as under:
Clause 7. Nature and purpose of the proceedings for which evidence is needed (Article 3(c) of the Convention):
The above-captioned matters are civil actions for patent infringement arising under the patent laws of the United States, Title 35, United States
Code, Sections 10 et seq., brought by plaintiffs Aventis Pharmaceuticals Inc. (""Aventis"") and AMR Technology, Inc. (""AMR""). These actions
relate to the generic versions of Aventis''s ALLEGRA and ALLEGRA-D drug products for which Barr has obtained marketing approval from the
U.S.Food and Drug Administration (""FDA"") and which Barr Laboratories, Inc. (""Barr"") has marketed and intends to market in the United States
after being induced to engage in such marketing by Teva Pharmaceuticals USA, Inc. (""Teva""). These actions also relate to generic versions of
Aventis''s ALLEGRA. drug products for which Teva has obtained approval from the FDA and has been marketing in the United States after being
induced to engage in such marketing by Barr. These actions also relate to Aventis''s ALLEGRA- D. drug product for which Impax Laboratories,
Inc. (""Impax"") has sought marketing approval from the FDA and which Impax intends to market in the United States immediately upon FDA
approval. Aventis and AMR assert that Defendants'' conduct constitutes infringement and induced infringement under 35 U.S.C. $ 271 of one or
more of the claims in patents assigned to AMR and licensed to Aventis.
Clause 8. Evidence to be obtained or other judicial act to be performed (Article 3(d) of the Convention):
The evidence sought by Aventis pertains to these actions. The Court requests that, in the interests of justice, you cause, by your proper and
usual process, the requested documents, as specified below in response No. 10, to be provided to Aventis from Ind-Swift Laboratories Ltd.
Aventis seeks the specified documentary evidence from Ind-Swift Laboratories Ltd. because, as set forth in the Affidavit of Aaron Barkoff,
sworn to January 23, 2008, 1-16 (""Barkoff Aff.,"" attached hereto as Exhibit A), Aventis has reason to believe that Ind-Swift Laboratories Ltd. is a
current supplier of chemical intermediates used in the manufacture of fexofenadine to Teva Pharmaceutical Industries Ltd., which is a supplier of
fexofenadine to Defendants Barr, Impax and Teva. In addition, Aventis has reason to believe that Ind-Swift Laboratories Ltd. supplied
fexofenadine to Defendants Amino Chemicals, Ltd., Dipharma S.p.A. or Dipharma Francis S.r.1.
Clause 9. Identity and business address of the person to be examined or entity possessing documents to be inspected or produced (Article 3(e) of
the Convention):
Ind-Swift Laboratories Ltd.
S.C.O.850, Shivalik Enclave, Manimajra
Chandigarh-160101
INDIA
Clause 10. Documents to be inspected or produced by Ind-Swift Laboratores, Inc. (Article 3(g) of the Convention):
a) Documents concerning the process Ind-Swift uses or has used to manufacture and purify Fexofenadine Keto Ester and Fexofenadine Keto
Acid.
b) Documents concerning the process Ind-Swift used to manufacture any Fexofenadine that was provided to either Dipharma or Amino prior to
May 2001, including but not limited to Fexofenadine from batch No.0003004620.
c) Documents concerning any testing or analysis of any Fexofenadine or Fexofenadine Intermediate provided to Teva Pharmaceutical Industries
Ltd., Amino chemicals, Ltd., Dipharma S.p.A. or Dipharma Francis S.r.I.
d) Documents concerning the sale of any Fexofenadine or Fexofenadine Intermediate to Teva Pharmaceutical Industries Ltd., Amino Chemicals,
Ltd. Dipharma S.p.A. or Dipharma Francis S.r.I, including but not limited to purchase orders, bills of sale, shipping documents and contracts.
e) Documents concerning any correspondence or agreements with Teva Pharmaceutical Industries Ltd., Amino Chemicals, Ltd., Dipharma S.p.A
or Dipharma Francis S.r.I. Concerning any Fexofenadine or Fexofenadine Intermediate.
f) A one hundred (100) gram sample of any Fexofenadine Keto Ester and Fexofenadine Keto Acid, including a sample taken from each lot
thereof.
g) A one hundred (100) gram sample of any Fexofenadine or Fexofenadine Intermediate, including a sample taken from each lot thereof.
h) A one hundred (100) gram sample of any Fexofenadine manufactured prior to May 2001 and shipped to Amino Chemicals, Ltd., Dipharma
S.p.A. or Dipharma Francis S.r.I., including but not limited to a sample of batch No.0003004620.
Fees and costs (Article 14 and 26 of the Convention):
Fees and costs incurred which are reimbursable under the Convention will be borne by Aventis. Payment of such fees and costs by Aventis in
accordance with this Letter of Request is without prejudice to Aventis making subsequent application to an appropriate court for reimbursement.
WITNESS my hand and seal of said Court in the City of Newark in the District of New Jersey on this 10 day of April, 2008.
Sd/-
Madeline Cox Arleo
United States Magistrate Judge
Code of Civil Procedure, 1908 (for short ''CPC'') lays down the provisions for Commissions issued by the Foreign Courts and the procedure
thereof in Section 78 and Order 26 Rule 19 to 22 which are also reproduced for ready reference:
Rule 78. Commissions issued by foreign Courts. - Subject to such conditions and limitations as may be prescribed, the provisions as to the
execution and return of commissions for the examination of witnesses shall apply to commissions issued by or at the instance of-
(a) Courts situate in any part of India to which the provisions of this Code do not extend; or
(b) Courts established or continued by the authority of the Central Government outside India; or
(c) Courts of any State of country outside India.)
Cases in which High Court may issue commission to examine witness. (1) if a High Court is satisfied-
(a) that a foreign Court situated in a foreign country wishes to obtain the evidence of a witness in any proceeding before it,
(b) that the proceeding is of a civil nature, and
(c) that the witness is residing within the limits of the High Court''s appellate jurisdiction,
It may, subject to the provisions of rule 20, issue a commission for the examination of such witness.
(2) Evidence may be given of the matters specified in clauses (a), (b) and (c) of sub rule (1)-
(a) by a certificate signed by the consular officer of the foreign country of the highest rank in India and transmitted to the High Court through the
Central Government, or
(b) by a letter of request issued by the foreign Court and transmitted to the High Court through the Central Government, or
(c) by a letter of request issued by the foreign Court and produced before the High Court by a party to the proceeding.
Application for issue of commission.- The High Court may issue a commission under Rule 19-
(a) upon application by a party to the proceeding before the foreign Court,
or
(b) upon an application by a law officer of the State Government acting under instructions from the State Government.
To whom commission may be issued.- A commission under rule 19 may be issued to any Court within the local limits of whose jurisdiction the
witness resides, or (***) where the witness resides within the local limits of (the ordinary original civil jurisdiction of the High Court), to any person
whom the Court thinks fit to execute the commission.
Issue, execution and return of commissions, and transmission of evidence to foreign Court.- The provisions of rules 6,15, (sub-rule (1) of Rules
16A, 17, 18 and 18B) of this Order in so far as they are applicable shall apply to the issue, execution and return of such commissions, and when
any such commission has been duly executed it shall be returned, together with the evidence taken under it, to the High Court, which shall forward
it to the Central Government, along with the letter of request for transmission to the foreign Court.
As per Section 78 of CPC, the provisions as to the execution and return of the commissions for the examination of the witnesses shall apply to
commissions issued by or at the instance of Courts situate in any part of India to which the provisions of this Code do not extend; or Courts
established or continued by the authority of the Central Government outside India; or Courts of any State or country outside India. As per Order
26 Rule 19 CPC, if the High Court is satisfied that a foreign Court situated in a foreign Country wishes to obtain the evidence produced before it in
the proceeding of civil nature and the witness is residing within the limits of the High Court''s appellate jurisdiction, it can order the issuance of
commission on a letter of request issued by foreign Court.
The petitioner thus filed the present Civil Original Petition under Order 26 Rule 19 & 20(a) read with Section 151 CPC for the appointment of a
Commission for recording evidence of a technically qualified representative of Ind-Swift Laboratories Ltd. and to peruse and obtain photocopies
of the documents mentioned in the letter of request. In the Original Petition, notice of motion was issued on 09.09.2008 for 20.10.2008 wherein it
was ordered that service upon the respondents be effected dasti either through courier/E-mail/Registered post or through Indian Embassy. The
case was adjourned from time to time to await the service of the respondents. When the case was listed for service of the respondents on
21.04.2009, the petitioner filed an application ""CM No.9122- CII of 2009"" alleging therein that the petitioner has entered into a settlement with
two respondents namely, Barr Laboratories, Inc. and Teva Pharmaceuticals USA, Inc. It was also averred that pursuant to the orders of the Court
dated 18.10.2008 and 21.11.2008 the respondents have been served with the summons as well as the Court papers through courier and in
evidence thereof a certificate of Blue Dart Express Ltd. (Courier service) has been attached as ''Annexure B'' with the application. In view of the
aforesaid averments in the application ""CM No.9122-CII of 2009"", amended memo of parties was taken on record and in view of the averments
made in the said application which is supported by an affidavit the service has been accepted to have been effected. Thereafter case was again
adjourned from time to time on the request of learned counsel for the petitioner. The petitioner again filed an application ""CM No. 12902-CII of
2009"" invoking the powers of the Court u/s 151 CPC for placing on records fresh letter of request received from the United States District Court.
District of New Jersey dated 11.05.2009. It was now between the following parties.
The said application has been allowed and the fresh letter of request has been taken on record vide order dated 29.5.2009.
No one has put in appearance on behalf of respondents to contest the petition.
Sh.Anand Chhibar, learned counsel appearing on behalf of the petitioner, has submitted that this Court has power under the provisions of the
CPC to appoint a Commission in terms of the letter of request issued by the Foreign Court and this Court can issue a Commission to a Court
within the local limits of its jurisdictions where the witness resides or can appoint any person whom the Court thinks fit to execute the Commission.
He further submits that Court may appoint Dr. S.V.Eswaran or Prof. V.K.Rattan, Head of Department of Chemical Engineering, Panjab
University, Chandigarh as Local Commissioner. In support of his submissions, learned counsel for the petitioner has also referred to two decisions
of the Delhi High Court and Madras High Court, namely, Wooster Products Inc. Vs. Magna Tek Inc. and Others, and Kirit Kumar Pathak
2007(5) RCR(Civil) 137 to contend that even an intervenor would have no right to object to the issue of Commission for execution in pursuance of
letter of request. The issuance of letter of request is to be accepted and executed owing to reciprocity between the two foreign countries.
I have heard learned counsel for the petitioner and have given my thoughtful consideration to the contentions raised by him. From the letter of
request issued by the United States District Court, District of New Jersey, I am satisfied that the said Court situated in the foreign Country wishes
to obtain evidence in civil dispute of a witness. M/s. Ind-Swift Laboratories Ltd., SCO 850, Shivalik Enclave, Manimajra Chandigarh located
within the territorial jurisdiction of this High Court by examining technically qualified representative of M/s. Ind.Swift Laboratories Ltd. by the
Commission and also to peruse and obtain photocopies of the documents mentioned in Clause 10 of the letter of request. Thus, in terms of the
powers enshrined in Order 26 Rules 20(a) and 21, this Court deem it appropriate to appoint Dr. S.V.Eswaran. Head of Department Chemistry,
St.Stephen''s College, University of Delhi, Delhi who appears to be highly qualified in view of his resume available on record as ''Annexure P2'', as
Commission for the purpose of recording evidence of a technically qualified representative of M/s.Ind-Swift Laboratories Ltd. and to peruse and
obtain documents contained in Clause 10 of the letter of request in consonance with the definitions provided in Clause 12 of the letter of request.
The remuneration of the Commissioner is fixed at Rs.50,000/- which is to be paid by the petitioner directly.
Registry is directed to issue warrant of Commission in the name of Dr. S.V.Eswaran forthwith. The registry shall append all the necessary
papers filed in this petition with a copy of this order with the warrant of Commission. The Commission shall serve an advance notice to M/s. Ind-
Swift Laboratories Ltd. of his visit to enable them to arrange their technically qualified representative to depose before the Commission in relation
to the documents mentioned in Clause 10 of the letter of request and nothing beyond thereto.
The Commission is directed to return the evidence so collected in a sealed cover to the Registrar (Judicial) of this High Court within a period of
four weeks from the date of receipt of the warrant of commission, who shall then forward it to the Central Government along with letter of request
for transmission to the foreign Court.
With these observations, the present petition is disposed of.
No costs.