Matrix Laboratories Limited v F. Hoffman-La Roche Ltd (2011)

Summary

The plaintiffs relied on a “revocation petition dated 30.4.2010 before the Intellectual Property Appellate Board (in short, ‘IPA Board’), Chennai, wherein the appellant had expressed its intention to commercially make/use/sell/ distribute/market Erlotinib Hydrochloride” (para 3). “the Court granted leave to sue on 16.09.2010” and the appellant “filed A.No.5529 of 2010 to revoke the leave granted to the respondents under clause 12 of the Letters Patent.” (para 4) The Single Judge had held that “by the act of the appellant in approaching IPA Board by filing a revocation petition, a part of cause of action has arisen in Chennai” (para 6).

The Bench held that “filing of revocation petition in Chennai is by statutory compulsion” (para 19) and that “The statements made in the revocation petition without anything more cannot give rise to a cause of action to invoke jurisdiction of Madras High Court.” (para 39) “No cause of action, much less a substantial or integral part of cause of action has arisen in Chennai. The learned single Judge was not right in saying that by filing a revocation petition part of cause of action has arisen in Chennai” (para 47). The order was “set aside and this appeal is allowed. The respondents/plaintiffs are at liberty to move the appropriate Court.” (para 48)

What the court decided

1. The forum for an infringement suit. “Since definition of ‘District’ in the Code of Civil Procedure is inclusive of High Court, the ordinary civil jurisdiction of High Court will have the jurisdiction to entertain the suit for infringement of Patent.” “The Madras High Court, being Chartered High Court, ordinary civil jurisdiction of Madras High Court is governed by Letters Patent.” (para 9)
2. Trade marks and copyright contrasted. “in Section 62(2) of the Copyright Act as well as Section 134(2) of the Trademarks Act, a deliberate departure is made from Section 20 of the Civil Procedure Code” (para 12); “Per contra, as per Section 104 of the Patents Act, the infringement of a Patent and other infringement actions i.e., actions under Sections 105 and 106 may be brought before the District Court as per the definition of the Code of Civil Procedure or the High Court.” (paras 12–13)
3. The fourth limb of clause 12. “Since the sole defendant/ appellant is having its registered office at Secunderabad and also carrying on business in the said place, the 4th limb of clause 12 is not applicable. We will have to see whether cause of action has partly arisen in Chennai.” (para 16)
4. Procedure. The plaint decides. “For the purpose of considering application for the grant of leave or revocation of leave one has to look into the plaint averments.” “At this stage, the plea taken by the appellant/defendant would be wholly irrelevant.” (para 17)
5. Procedure. Section 20 and the Original Side. “in view of Section 120 C.P.C, Sections 17, 18 and 20 of Civil procedure Code are not applicable to the original Side of the High Court. Therefore plaintiff cannot invoke Section 20 C.P.C.” (para 21)
6. Filing at the Appellate Board. “Thus, filing of revocation petition in Chennai is by statutory compulsion. Mere filing of an application for revocation in IPA Board, Chennai cannot give rise to a cause of action.” “Therefore, mere filing of revocation petition before IPA Board in Chennai cannot amount to giving rise the cause of action and can only be stated as a transitory one.” (para 19)
7. Averments as a threat. “The averments in the revocation petition amount to threat of infringement and therefore the respondents/plaintiffs are entitled to file a quia timet action.” (para 33)
8. Threat and territorial jurisdiction. “If that contention is to be accepted, all revocation petitions filed before IPA Board, which has its registry at Chennai would invariably contain such statements and in all such cases if the jurisdiction of Madras High Court is to be invoked, the Madras High Court would be flooded with the suits for infringement of a Patent.” (para 34) “The statements made in the revocation petition without anything more cannot give rise to a cause of action to invoke jurisdiction of Madras High Court.” (paras 34, 39)
9. Clinical trials in Chennai. “merely because the Appellant/Defendant herein has once launched the drug Efavirenz 600 mg tablets, it will not lead to any conclusion that Appellant/Defendant would conduct the test only at the same laboratory in future and it will be launched at Chennai.” (para 44) “The facts pleaded must have nexus on the basis of which the suit prayer can be granted.” (paras 44–45)
10. Disposition. “No cause of action, much less a substantial or integral part of cause of action has arisen in Chennai. The learned single Judge was not right in saying that by filing a revocation petition part of cause of action has arisen in Chennai and the impugned order is liable to be set aside.” (para 47) “The respondents/plaintiffs are at liberty to move the appropriate Court.” (paras 47–48)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 17 October 2026.