Mylan (Previous Matrix) Laboratories Limited vs Pfizer Inc., OSI Pharmaceuticals Inc., F. Hoffman-La Roache Ltd. And The Controller of Patents

Prabha Sridevan, J

This application is for receiving additional documents pending the revocation petition filed by the petitioner herein. The Petitioner challenges the

patentability of Patent No. 196774 for a novel [6.7-bis(2methoxyehoxy)quinazolin-4-yl]-(3-ethynylphenyl) amine hydrochloride and a process for

preparing the same. Though the Petitioner originally sought revocation on several grounds including non-disclosure, obviousness and others, the

petitioner claims he is not pressing any of the grounds except the grounds of non-disclosure, and non-furnishing the information required by Section 8

of the Patents Act (""Act"" in short). In the grounds of revocation, the Petitioner had pleaded that information relating to US patent '221 was not

disclosed and now the Petitioner seeks to produce before us 12 documents and information relating thereto which according to the Petitioner ought to

have been furnished by the Respondent. According to the Petitioner, these documents were secured from the website and they are relevant for

deciding the issue in dispute.

Shri P.S. Raman, the Learned Senior Counsel appearing for the Respondent submitted that there is no explanation why the documents were not

produced earlier, since it is apparent that the downloaded documents were in the possession of the Petitioner even in 2009. The Petitioner has

suppressed the reasons why these documents were not produced at an early stage. The averments in paragraph 2 of the Miscellaneous Petition that at

the last hearing of this matter on 20th December 2012, the Board had directed the last date for exchange of documents is 30th January, 2013, is not

correct. This would indicate that the Board had granted leave, but no such leave was actually granted.

The Learned Senior Counsel submitted that this Board had in ORA/1/2007/PT/MUM (TVS Motor Co. Ltd. vs. Bajaj Auto Ltd.) refused to allow

an expert to give his opinion because the application was filed at a belated stage. The Learned Senior Counsel, however, submitted that of all the 12

documents the one relating to '221 alone may be entertained, since it was mentioned in the grounds for revocation. The Learned Senior Counsel

stressed that the Petitioner may only invoke 64(i)(m) and not 64(i)(j) of the Act since he had specifically given up all other grounds except the ground

for revocation under Section 64(1)(m). The following decisions were relied upon:

ILR Supp. (5) 2001 DEL 18(M/s. Gold Rock World Trade Ltd. vs. M/S. Veejay lakshmi Engineering Works Ltd.): Where the delay in producing

the documents was not accepted on the ground that the same could have been produced with due diligence.

MP No. 124 of 2012 in ORA/1/2007/PT/MUM (M/s. TVS Motor Co. Ltd. vs. Baja Auto Ltd.)(referred to supra)

He also referred to the order passed by the Division Bench of the Hon'ble Delhi High Court, in the appeal filed by Cipla and Roche wherein in

paragraph 18, the Division Bench had recorded a statement made by the Learned Senior Counsel who appeared for the Petitioner herein (who was a

third party applicant in that matter) before the Division Bench that ""Before IPAB his client would be pressing the case for revocation of the patent

only on the ground of non-disclosure."" According to the Respondent this application shall not be allowed.

The Learned Counsel for the Petitioner Mr. S. Majumdar referred to a letter written by the Petitioner where the Petitioner had stated that except

for Section 64(1)(m) and 64(1)(j) all other grounds are given up. The Learned Counsel Mr. S. Majumdar also referred to (1994) 4 SCC 659 (Billa

Jagan Mohan Reddy and Another Vs. Billa Sanjeeva Reddy and Others where the Supreme Court held that it is settled law that if the documents are

found to be relevant to decide the real issue in the controversy, then, the interest of justice requires the documents may be received, giving an

opportunity to prove the documents and rebuttal, if any, and consider the effect thereof while considering the issues raised in the controversy.

According to the Learned Counsel these documents are essential to decide the controversy.

This IPAB had issued a notification that generally all Miscellaneous Petitions would be heard along with the main matter except when grounds of

urgency are made out. This was challenged by the second Respondent herein before the Hon'ble Delhi Court in a writ petition. Though the notification

was challenged, it would appear from the order produced before us that the Writ Petitioner was satisfied with certain directions, in particular the

direction that this Miscellaneous Petition MP No. 33 of 2013 shall be taken up on 13th May, 2013 and if this Board was of the view that reliefs ought

to be granted, the Petitioner will be given an opportunity to file a reply to the main matter along with the evidence and if that eventuality would occur,

the IPAB shall fix the hearing of the main matter in close proximity. Both the Counsel had agreed before the Hon'ble Delhi High Court that they were

not averse to the hearing being held at Chennai, and that, this Board could fix the date and venue after ascertaining the availability of the Counsel.

With these directions, the Writ petition was closed. This is how the matter came to be heard by us yesterday.

According to the Petitioner, the grant of US' 221 would have had an effect on the Controller for deciding the patentability of the claims relating to

polymorph of Erlotinib Hydrochloride. Therefore there was a duty to disclose the same. It is the Petitioner's case that the applications of the

Respondent which they ought to have voluntarily brought to the notice of the Controller are contained in the additional documents now sought to be

produced before us. We asked the Learned Senior Counsel appearing for the Respondent if his case was that these documents were false. The

Learned Senior Counsel replied that his objection was only to the delay in producing the documents and the failure on the part of the Petitioner to

furnish acceptable reasons for receiving the document at this stage.

Whenever documents are produced either at the proper time or belatedly and they are received by the judicial authority, it is always subject to

proof, admissibility and relevance. The fact that they are received does not mean that they are accepted. They will be examined in accordance with

law and the authority will decide whether they support the case of the party who produces the evidence.

In this case, the Petitioner claims that these documents would show that the duty under Section 8 of the Patents Act was breached by the

Respondent. After Justice Ayyangar's report, when this Act came into force, the law makers have made the failure to disclose the information

required by Section 8 as a ground for revocation. It stands on the same footing as anticipation or obviousness, no less. If anticipation and obviousness

would vitiate the claim of innovation and result in revocation of the patent, non-disclosure of the information would also result in revocation. This is

what the law says. If that is so, then the ratio in (1994) 4 SCC (cited supra) applies to this case. If they prove the Petitioner's case then these

documents are essential for rendering justice. We do not see why we should shut the documents out merely because they have been filed with delay.

Candour and honesty is the sine qua non for a person who claims a monopoly and no patent which has been acquired by breaching this duty of

candour shall remain. The patent litigation is imbued with public interest. We are surprised that the party who has not allegedly disclosed the

documents which he was bound in law to disclose, should complain of suppression on the part of the other who is placing the same before us. The fact

that the Petitioner has brought these documents may be belatedly, will not prevent us from receiving them. All that the Patentee can expect is an

opportunity to rebut, which the Patentee shall have. However, we feel that there is a great laxity on the part of the parties to the patent litigation in

bringing the documents and filing them at the earliest juncture. Whoever the party is, early filing of documents would be fair, except of course in rare

cases. So we want to convey a message to the litigants and the members of the Bar that there is a duty to act with diligence and alacrity too, if a

document is known to them. Therefore, we impose terms on the Petitioner as a condition for receiving the documents.

The question whether the Petitioner gave up Section 64(1)(j) or not will be decided when the revocation is heard. This is not the stage when we

should decide that issue. This MP is primarily concerned with the reception of additional documents. The MP is allowed on condition that the

Petitioner pays a sum of Rs. 10,000/- as cost within a week from today failing which the application will be dismissed as regards all the documents

except US '221. The Respondent will have three weeks to file their response to these documents and the Counsel shall consult with each other and

communicate to the Registry the date convenient to them for hearing the matter at Chennai, preferably before 30th June, 2013, because the Hon'ble

Delhi High Court has asked the IPAB to hear the main matter in close proximity after this petition is disposed of. M.P. allowed as above.