Cipla Agrimed (Pty) Ltd v Merck Sharp Dohme Corporation and Others

• Jurisdiction: South Africa
• Citation: 2018 (6) SA 440 (SCA)

Cipla Agrimed (Pty) Ltd v Merck Sharp Dohme Corporation and Others
2018 (6) SA 440 (SCA)

2018 (6) SA p440

Citation	2018 (6) SA 440 (SCA)
Case No	972/2016; [2017] ZASCA 134
Court	Supreme Court of Appeal
Judge	Ponnan JA, Cachalia JA, Mathopo JA, Gorven AJA and Rogers AJA
Heard	September 29, 2017
Judgment	September 29, 2017
Counsel	C Puckrin SC (with MC Seale) for the appellant.; L Bowman SC (with G Marriott) for the respondents.

Flynote : Sleutelwoorde

Appeal — Appealability — Generally — Restatement of test for appealability of judgment or order.

Appeal C — Appealability — Interim interdict — Interim interdict granted prohibiting infringement of patent — Claim that patent would have expired prior to determination of final interdict — Whether interdict final in effect, and therefore appealable — Discussion of test set out in BHT Water Treatment (Pty) Ltd v Leslie and Another 1993 (1) SA 47 (W) for whether application for interim interdict should be treated as final — Court concluding that D interim interdict not final in effect and therefore not appealable.

Headnote : Kopnota

Cipla was the proprietor of patent 92/7457 (the 1992 patent); Merck, of patent 98/10975 (the 1998 patent). In June 2011 Cipla instituted an application (revocation application) in the Court for the Commissioner of Patents (the E CCP) for the revocation of Merck's 1998 patent, based on two grounds: that the 1998 patent was anticipated by Cipla's 1992 patent (anticipation point); and that it did not involve an 'inventive step' (obviousness point). Merck, in October 2011 in the CCP, launched an action (infringement action) for an interdict against what it alleged to be Cipla's infringement of its 1998 patent. Cipla, in its plea to such action, submitted that Merck's F patent was invalid, and liable to be revoked on the same grounds set out in the revocation application. When the revocation application was heard before the CCP in March 2013 (the infringement action was stayed in the meantime), Cipla, in argument, attacked the validity of Merck's patent only on the anticipation point. The CCP granted revocation, but the SCA upheld the appeal (in which Merck again relied only on its anticipation point), heard in November 2015, finding that the 1998 patent was valid and that G on such grounds the revocation application should have been dismissed.

In January 2016 Merck launched an urgent application in the CCP — the court a quo for present purposes — for an interdict pending the final determination of the infringement action. Cipla now sought to rely on its 'obviousness point' to once again dispute the validity of the 1998 patent. The CCP (delivering H judgment in March 2016) granted an interdict, with the proviso that it would lapse on the expiry date of the 1998 patent — 3 December 2018 — if the action was not finally determined by that date. The sole ground on which the court granted relief was that the validity of the 1998 patent was res judicata. In explanation it added that, although only the anticipation point had been argued in the CCP and before the SCA, Cipla had been I obliged to put forward, in the revocation application, all its attacks on the validity of the 1998 patent. The CCP granted leave to Cipla to appeal to the SCA. Only one issue was in issue: the appealability of the court a quo's decision to grant the interlocutory interdict. The rule, referred to by the SCA, was that, for a decision to be appealable, as a general principle, it had to have three attributes (see [18] and [37]): it had to be final in effect; it had J to be definitive of the rights of the parties; and it had to have the effect of

2018 (6) SA p441

disposing of at least a substantial portion of the relief claimed in the main A proceedings. Cipla acknowledged the general rule that interdicts granted pending final relief were not appealable. It, however, argued that, although the interdict was interim in form, it was final in effect, because the pending infringement action was unlikely to be determined before the expiry of the patent on 3 December 2018. Since the final interdict claimed in the infringement action could itself not endure beyond 3 December 2018, B the interim order in effect finally disposed of the interdictory relief. On such basis, Cipla concluded, the granting of the interim interdict was appealable. Gorven AJA and Rogers AJA wrote separate judgments. Both arrived at the same conclusion — that the court a quo's decision to grant an interim interdict was not appealable, and the appeal should hence be struck from the roll — but differed in their approach (see [33] and [34]). C

Gorven AJA (with whose judgment Ponnan JA, Cachalia JA and Mathopo JA concurred) (judgment from [34]) provided an overview of the principles governing the appealability of decisions of a court, in particular the circumstances in which interlocutory orders might qualify as being 'final in effect', despite their being interim in form. 'Final in effect' meant that an issue in the suit had been affected by the order such that the issue could not D be revisited either by the court of first instance or the court hearing the appeal (see [47]). Gorven AJA noted that the fact that the granting of an interim interdict gave rise to prejudice on the person against whom it operated did not in itself render such an order appealable; the only prejudice which might make such an order appealable was prejudice that in some way affected the final determination of an issue in the suit or stood in E the way of an issue being determined at a later date. (See [39] – [40].) Cipla's argument — that the interim interdict against it was 'final in effect' because the patent would have run its course by the time the main action came to be considered — Gorven AJA held, boiled down to the argument that Cipla was prejudiced because 'time could not be recalled'. This kind of prejudice did not render the order of the court a quo appealable. (See [47].) F The court a quo had not finally decided the res judicata issue; it would be considered by the court considering the infringement action. Gorven AJA concluded that the order was not final in effect, was in form and effect an interlocutory interdict and not appealable. (See [48] and [50].)

Rogers AJA differed from Gorven AJA to the extent that he found it appropriate G to consider and apply the principles established in a case relied on by Cipla — BHT Water Treatment (Pty) Ltd v Leslie and Another 1993 (1) SA 47 (W). [*] In that case the applicant had sought to enforce a 12-month restraint of trade. Presiding Judge Marais said that, although what the applicant sought was an interim interdict, it was in substance final because the granting of an interdict would not be finally determined before the expiry of the restraint. Marais J thus considered that he should apply the H test for final interdicts. (See [21].) A principle to be extracted from such case, Rogers AJA held, was that if a court granted an interim interdict in circumstances where it should, on the basis of BHT, have treated the application as one for final relief, the interdict, though interim in form, was final for purposes of appealability. This was particularly so where, as here, I

2018 (6) SA p442

Cipla A pertinently alleged in the court a quo, and subsequently argued, that the matter should, in accordance with BHT, be adjudicated as a claim for a final interdict and where the court a quo's failure to do so was one of the grounds of appeal. (See [23].) (Since the correctness of the competing lines of authority was not canvassed in argument, Rogers AJA assumed, without deciding, that the BHT approach was sound in principle (see [24]).) B Rogers AJA, however, held that, on the basis of BHT, the court a quo was correct in treating the interdict asked for as an interim one (see [27]). This was so because the BHT approach had to be confined to cases where it was clear, at the time the court granted the interdict, that the matter would not be able to be finally determined before the interdict in any event expired (see [24]). That condition was not met here on the facts: when the court a C quo heard the matter in March 2016, the probabilities were that a final decision could be achieved prior to 3 December 2018 (see [26]). Rogers AJA concluded that the interdict that was granted was interim in form and in substance, and on ordinary principles it was not appealable (see [27]).

Cases cited

African Wanderers Football Club (Pty) Ltd v Wanderers Football Club D 1977 (2) SA 38 (A): applied

Arrow Altech Distribution (Pty) Ltd v Byrne and Another [2008] 1 All SA 356 (D): referred to

Astral Operations Ltd t/a County Fair Foods and National Chicks v Country Bird (Pty) Ltd and Another [2006] ZAFSHC 53: referred to

BHT Water Treatment (Pty) Ltd v Leslie and Another E 1993 (1) SA 47 (W): discussed

Blaauwbosch Diamonds Ltd v Union Government (Minister of Finance) 1915 AD 599: dictum at 601 applied

Celliers NO and Others v Ellis and Another [2017] ZASCA 13: compared

Cipla Medpro (Pty) Ltd v Aventis Pharma SA and Related Appeal 2013 (4) SA 579 (SCA): F dictum in para [40] applied

Cronshaw and Another v Fidelity Guards Holdings (Pty) Ltd 1996 (3) SA 686 (A) ([1996] 2 All SA 435; [1996] ZASCA 38): discussed and applied

FirstRand Bank Ltd t/a First National Bank v Makaleng [2016] ZASCA 169: compared and dictum in para [15] applied

Globe and Phoenix Gold Mining Co Ltd v Rhodesian Corporation Ltd G 1932 AD 146: dictum at 155 applied

JR 209 Investments (Pty) Ltd and Another v Pine Villa Country Estate (Pty) Ltd; Pine Villa Country Estate (Pty) Ltd v JR 209 Investments (Pty) Ltd 2009 (4) SA 302 (SCA) ([2009] 3 All SA 32; [2009] ZASCA 3): compared and dictum in para [25] applied

Knox D'Arcy Ltd and Others v Jamieson and Others H 1996 (4)...