Letters Rogatory (also known as Letters of Request) are formal requests issued by a Court in one jurisdiction to a Court in another jurisdiction, seeking judicial assistance in gathering evidence, summoning witnesses, or performing other judicial acts necessary for legal proceedings. These requests are typically made under international treaties or conventions, such as the Hague Convention of 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters, which facilitates cooperation between Courts in different countries. Such letters are crucial in cross-border litigation, such as in patent disputes where parties, witnesses, or evidence are located in multiple jurisdictions. In India, all High Courts having original civil jurisdiction have the enabling power to execute the Letter Rogatory, issued by a foreign Court, under Order XXVI Rule 19 to 22 read with Section 78 of the Civil Procedure Code, 1908 (CPC).

Recently, in Pfizer Inc. & Ors. vs Softgel Healthcare Private Limited [OP(PT)/5/2024, OP(PT)/6/2024], a common joint petition was filed by the Petitioners before the Madras High Court, seeking execution of Letters Rogatory issued by the United States District Court in Delaware under the Hague Convention, 1970. In the Letters Rogatory, the U.S. Court sought judicial assistance from the Madras High Court in connection with an ongoing U.S. based patent infringement lawsuit.  

The U.S. patent litigation involves the Petitioners’ U.S. patent (“441 Patent”) for TAFAMIDIS 61 mg capsules (marketed as VYNDAMAX^®), used to treat transthyretin amyloid cardiomyopathy. The Petitioners alleged that Cipla and Zenara (Defendants in the U.S. lawsuit) had infringed their patent rights by filing Abbreviated New Drug Applications (ANDAs) with the U.S. Food and Drug Administration (FDA), seeking approval to launch generic versions of VYNDAMAX^® before the expiry of the suit patent. During the proceedings, Cipla had suggested that it would obtain all necessary documents related to its ANDA product from Softgel Healthcare Pvt. Ltd.

Softgel Healthcare (Respondent in the instant case before the Madras High Court) is an Indian pharmaceutical company that has a contractual association with Cipla and Zenara for the manufacture and sale of their pharmaceutical products. Therefore, when Cipla failed to furnish the necessary documents, the Petitioners sought international judicial assistance, and, the Delaware Court accordingly issued Letters Rogatory requesting the Madras High Court’s assistance in securing the necessary documents and testimonies from Softgel Healthcare to support the ongoing patent infringement proceedings in the U.S.

Multiple refiles were sought in the common joint petition, including appointment of a Local Commissioner to collect evidence and record testimonies from the Respondent, conferment of special powers on the commissioner, establishment of a confidentiality club to safeguard sensitive information, and a directive for the Local Commissioner to transmit the collected evidence and recorded testimonies to the U.S. Court. The Petitioners submitted that the collected documents would aid in proving their patent infringement claims.

The Respondent opposed the petition on various grounds, including that no infringement allegations had been made against it by the Petitioners, and as such, it could not be compelled to provide evidence. Moreover, being a third-party to the U.S. litigation, the Respondent contended that it could not be subject to judicial assistance beyond the scope permitted under the Hague Convention.

The Respondent also pointed out that the Petitioners had no enforceable patent rights in India, as their application for VYNDAMAX^® had been rejected by the Indian Patent Office under Section 3(d) of the Patents Act, 1970. Permitting the petition, they argued, would amount to bypassing India’s legal determinations through international judicial assistance.

The Respondent also asserted that the Hague Convention does not override domestic law, and that Article 11(1) of the Convention permits them to refuse participation in judicial assistance if the request conflicts with Indian laws or sovereignty.

Additionally, the Respondent contended that the Research and Development (R&D) data sought by the Petitioners constituted confidential information, which was safeguarded under the Convention.They argued that the Petitioners’ request lacked the requisite specificity and proportionality mandated by Article 23 of the Convention. They further submitted that disclosure of such sensitive information would adversely affect their commercial interests.

After considering the arguments, the Madras High Court ruled in favor of the Petitioners and allowed the reliefs sought in the joint petition. The Court ruled that the requests made by the U.S. Court through the Letters Rogatory were permissible and enforceable in India. It emphasized that the Hague Convention enables international judicial assistance, and since the request did not violate Indian law or sovereignty, the Petitioners were entitled to the relief sought. The Court made the following key observations:

• Article 23 of the Convention allows a contracting State to declare that it will not execute Letters of Request aimed at obtaining pre-trial discovery of documents. This allows Courts to reject broad and unspecific demands for document production, those requiting a party to disclose any documents other than specifically identified evidence in the Letter of Request, which are likely to be in his possession, custody or power. Referring to India’s reservation under Article 23, the Court observed that India has expressly stated it will not execute Letters Rogatory for the purpose of pre-trial discovery. Therefore, it can be said that Indian Courts only execute Letters Rogatory for specific, pre-identified documents.
• Propriety of the Letter of Request, relevance, and admissibility of the requested evidence fall exclusively within the jurisdiction of the foreign Court that issued the Letter. Indian High Courts ought not to assess these aspects, as their role is limited to facilitating the execution of the request in accordance with applicable legal provisions.
• Under Order XXVI Rule 19, read with Section 78 of the CPC, Indian Courts are empowered to assist foreign Courts in obtaining evidences by issuing a commission for execution of the Letters of Request. The Court specifically noted that CPC does not contain any provision that restricts or prohibits obtaining documentary evidence at the request of a foreign Court. The Court emphasized the need for a liberal interpretation of Rule 19 and held that a High Court can issue a commission to obtain both oral and documentary evidence. In reaching this conclusion, the Madras High Court expressly departed from the position taken by the Gujarat High Court in Leighton International Limited & Ors. vs Gavin John Hodge & Ors. [2014 SCC OnLine Guj 15738] and Fenix Diamonds LLC vs Carnegie Institute of Washington [2020 SCC OnLine Guj 1628], which had held that commissions for obtaining documentary evidence were impermissible. The Court opined that both oral and documentary evidence can be procured from an Indian party, provided that the request does not violate the terms of the Hague Evidence Convention.
• International Comity of Courts is a principle that requires Courts to consider the interest of other jurisdictions when making legal decisions. Referencing the U.S. Supreme Court decision in Societe Nationale Industrielle Aerospatiale vs United States District Court for the Southern District of Lowa [482 U.S. 522 (1987)], the Madras High Court noted that that when international discovery requests appropriately balance considerations of comity, Letters Rogatory serve as a valuable tool for obtaining evidence. The Court further clarified that in assessing international comity, Courts ought to weigh costs and benefits of discovery on each party, and consider conflicts between the public and private interests.
• Unless the Letters Rogatory violate Indian domestic laws, their execution ought not to be refused.

Based on these observations, the Court rejected the Respondent’s argument that the Petitioners’ request was vague, particularly since the documents in question were disclosed in the petition and had already been considered by the Delaware Court before issuing the Letters Rogatory. The Court further stated that determining whether the requested documents are sufficiently specific and can be procured is a matter that can only be assessed after appointing a Commissioner, who would have the authority to seek clarifications from both parties, if necessary.

Additionally, the Court highlighted that the Respondent failed to produce any documentary evidence to support its claim that the Petitioners had alternative means of accessing the documents mentioned in the Letters Rogatory. The Court also noted that the Respondent had not provided any evidence to demonstrate that the production of requested documents would be detrimental to India’s national security.

The Court further dismissed the confidentiality concerns of the Respondent, emphasizing that a confidentiality club would be established to safeguard sensitive information, in accordance with the protective order issued by the Delaware Court.

Finally, the Court clarified that the refusal of the Petitioners’ corresponding patent application in India was irrelevant to the adjudication of the petition. The Court reaffirmed that the petition was not in contravention of Indian law and were entertained in accordance with the Hague Convention.

In view of the foregoing, the Court appointed a Local Commissioner to oversee the collection of evidence and testimonies from the Respondent, granted the Commissioner special powers, including the authority to summon witnesses, administer oaths, permit cross-examination, and record depositions in accordance with the Letters Rogatory. The Court further established a confidentiality club to safeguard sensitive information, ensuring that access to collected documents and testimonies would be restricted to the members of the confidentiality club. The Court directed the Petitioners to bear the costs for recording testimonies. The Commissioner was directed to transmit all collected evidence to the U.S. Court through the Registrar General of the Madras High Court in a sealed cover.