Cipla Medpro (Pty) Ltd v Aventis Pharma SA and Related Appeal

• Jurisdiction: South Africa
• Citation: 2013 (4) SA 579 (SCA)

Cipla Medpro (Pty) Ltd v Aventis Pharma SA and Related Appeal
2013 (4) SA 579 (SCA)

2013 (4) SA p579

Citation	2013 (4) SA 579 (SCA)
Case No	139/2012 and 138/2012; [2012] ZASCA 108
Court	Supreme Court of Appeal
Judge	Nugent JA, Heher JA, Snyders JA, Tshiqi JA and McLaren AJA
Heard	May 15, 2012
Judgment	July 26, 2012
Counsel	In the appeal by Cipla Medpro (Pty) Ltd: CE Puckrin SC (with R Michau SC) for the appellant.; LG Bowman SC (with APH Cockrell SC and B du Plessis SC) for the respondent.; S Cowen (with A Hassim and U Rugege) for the Treatment Action Campaign as amicus curiae.; In the related appeal by Aventis Pharma SA and Others: LG Bowman SC (with APH Cockrell SC and B du Plessis SC) for the appellants.; CE Puckrin SC (with R Michau SC) for the respondents.; S Cowen (with A Hassim and U Rugege) for the Treatment Action Campaign as amicus curiae.

Flynote : Sleutelwoorde E

Intellectual property — Patent — Infringement — Remedies — Interdict — Refusal F on ground of public interest — Pharmaceutical company seeking interim interdict to prevent rival from infringing its patent by marketing cheaper generic equivalent of cancer drug — Though interim interdicts may be G refused in public interest, court will not do so only to frustrate patent-holder's lawful monopoly — In any event no material prejudice to public interest in present case since patent holder itself intending to launch own cheap generic.

Intellectual property — Patent — Infringement — Contributory infringement — H Inciting and abetting infringement of patent — Unlawfulness — Not covered by South African patent legislation but enjoying widespread international acceptance — Contributory infringement would on ordinary delictual principles be unlawful in South Africa — Thus, where product imported and disposed of with specific and sole intention that it will be used so as to infringe patent, such conduct unlawful. I

Intellectual property — Patent — Amendment — Validity — Whether amendment unlawfully broadening scope of claim — Amended claim merely expressing what was silent in original claim — Neither broadening nor narrowing scope of claim — Since scope not broadened, amendment valid — Patents Act 57 of 1978, s 51(7). J

2013 (4) SA p580

A Interdict — Interim interdict — Discretion of court — Public interest — Requirements of interim interdict flexible enough for public interest to be taken into account in appropriate circumstances.

Statute — Interpretation — Requirement that court 'promote the spirit, purport and objects of the Bill of Rights' when interpreting legislation — Not opening B door to changing meaning of statute — If statute in conflict with Bill of Rights, remedy is to strike statute down — Constitution, s 39(2).

Headnote : Kopnota

Aventis sought to interdict Cipla from infringing its patent for a cancer drug by marketing a cheaper generic equivalent. The patent was due to expire on C 30 November 2013. The evidence was that Cipla was importing the constituents of the drug and that local healthworkers would then mix them to make the infringing product. In the course of its judgment the Supreme Court of Appeal dealt, inter alia, with the validity of an amendment to Aventis' patent claim; the alleged infringement of the patent; the delict of contributory infringement (aiding and abetting, since the patented drug was D made, not by Cipla, but by the healthworkers who mixed its components); and arguments against the interdict — advanced by the Treatment Action Campaign (the TAC, as amicus) — on the grounds of (1) the constitutional right to healthcare; and (2) public interest.

As to the validity of the amendment

E An amendment would be in conflict with s 51(7) of the Patents Act 57 of 1958 if the specification as amended would include any claim not wholly within the scope of a claim included in the specification before its amendment. In the present case the amended claim merely expressed what was silent in the original claim, and was thus valid. (Paragraph [18] at 586G – H.)

F As to infringement

Under s 65(4) any ground on which a patent may be revoked may be raised as defence to an infringement claim. None of these, in particular lack of novelty, was present here, and Aventis would accordingly be prima facie entitled to enforce its patent. (Paragraphs [19] – [28] at 586I – 589H.)

As to contributory infringement

G Although the unlawfulness known as 'contributory infringement' has widespread acceptance internationally, there is no comparable provision in the Patents Act. It is, however, plain on ordinary delictual principles that it is unlawful to incite or aid or abet the commission of a civil wrong, whether under the common law or a statute such as the Patents Act. Since the components of Cipla's drugs were being imported and distributed with the specific and sole H intention that they would be used to infringe the Aventis patent, that conduct would be unlawful. (Paragraphs [30] – [31] and [39] at 590C – F and 593G – I.)

As to the constitutional issue

I Section 39(2) of the Constitution calls upon the courts to 'promote the spirit, purport and objects of the Bill of Rights' when interpreting legislation, but that would not open the door to changing the clear meaning of a statute. If the clear meaning of a statute or statutory provision would be in conflict with the Bill of Rights, then the remedy would be to strike it down. Since the Aventis patent was not revocable for want of an inventive step, constitutional principles would not come into play so as to deny Aventis its J right to enforce it. (Paragraph [45] at 595C – E.)

2013 (4) SA p581

As to public interest A

Here the TAC was on stronger ground. In the US injunctions against infringement have been refused on the ground of public interest, and our requirements for an interim interdict are flexible enough for the public interest to be taken into account in appropriate circumstances. However, the TAC's opposition to the interdict amounted to mere antagonism to patent-law monopolies, and the denial of public access to a generic during the lifetime of a patent B is an ordinary consequence of patent protection that applies in all cases. To refuse an interdict only so as to frustrate the patent holder's lawful monopoly would constitute as abuse of the discretionary powers of the court. In any event, the public-interest concerns raised by the TAC would not come into play here since Aventis itself intended to launch a significantly cheaper version of its drug on the local market. The interim interdict C would thus be granted. (Paragraphs [46], [52] and [56] – [61] at 595F – G, 597C – D and 598A – 599D.)

Cases Considered

Annotations

Case law

Southern Africa D

Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and Others 1981 (2) SA 173 (T): dictum at 202G – H applied

Bamford v Minister of Community Development and State Auxiliary Services 1981 (3) SA 1054 (C): dictum at 1061D – E applied

Bayerische Motoren Werke Aktiengesellschaft v Auto Body Spares SA (Pty) Ltd and Others E 1999 BIP 51 (T): considered

Corium (Pty) Ltd and Others v Myburgh Park Langebaan (Pty) Ltd and Others 1993 (1) SA 853 (C): dictum at 858E – G applied

De Beers Industrial Diamond Division (Pty) Ltd v Ishizuka 1980 (2) SA 191 (T): dictum at 198H applied

Ensign-Bickford (South Africa) (Pty) Ltd and Others v AECI Explosives and Chemicals Ltd F 1999 (1) SA 70 (SCA): dictum at 80F – J applied

Esquire Electronics Ltd v Executive Video 1986 (2) SA 576 (A): dictum at 590C – H applied

Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A): dicta at 614B – C and 617G – 618A applied

Grande Paroisse SA v Sasol Ltd and Another 2003 BIP 11 (CP): referred to G

Kimberly-Clark of SA (Pty) Ltd (formerly Carlton Paper of SA (Pty) Ltd) v Proctor & Gamble SA (Pty) Ltd 1998 (4) SA 1 (SCA) ([1998] 3 All SA 77): dictum at 12H – I applied

Letraset Ltd v Helios Ltd 1972 (3) SA 245 (A): dicta at 249F – 250E applied

Marinpine Transport (Pty) Ltd v Local Road Transportation Board, Pietermaritzburg, and Others 1984 (1) SA 230 (N): dictum at 234D – F applied H

McKenzie v Van der Merwe 1917 AD 41: applied

Minister of Health and Another NO v New Clicks South Africa (Pty) Ltd and Others (Treatment Action Campaign and Another as Amici Curiae) 2006 (2) SA 311 (CC) (2006 (1) BCLR 1; [2005] ZACC 14): considered

Olympic Passenger Service (Pty) Ltd v Ramlagan 1957 (2) SA 382 (D): dictum at 383E – F applied I

Roman Roller CC and Another v Speedmark Holdings (Pty) Ltd 1996 (1) SA 405 (A): referred to

Verstappen v Port Edward Town Board and Others 1994 (3) SA 569 (D): dictum at 576H – I applied

Viskase Corporation v Columbit (Pty) Ltd and Harold Henry Zeh 1986 BP 432 (CP): dictum at 452C – 453B applied. J

2013 (4) SA p582

England A

British Celanese Ltd v Courtaulds Ltd [1935] 52 RPC 171 (HL): dictum at 195 applied

Grimme Maschinenfabrik GmbH & Co KG v Derek Scott (t/a Scotts Potato Machinery) [2011] FSR 7 ([2010] EWCA Civ 1110): considered.

United States B

Bard Peripheral Vascular Inc v WL Gore & Associates Inc 2009 WL 920300 (D Ariz): considered

eBay Inc v MercExchange LLC 547 US 388 (2006): considered

Edwards Lifesciences AG v CoreValve Inc 2011 WL 446203 (D Del): considered

Innogenetics NV v Abbott Laboratories 578 F Supp 2d 1079 (WD Wis 2007): considered C

Johnson & Johnson Vision Care Inc v Ciba Vision Corporation 712 F Supp 2d 1285 (MD Fla 2010): considered.

Statutes Considered

Statutes

D The Constitution of the Republic of South Africa, 1996, s 39(2): see Juta's Statutes of South Africa 2011/12 vol 5 at 1-32

The Patents Act 57 of 1978: see Juta's Statutes of South Africa 2011/12 vol 2 at 2-165.

Case Information

In the appeal by Cipla Medpro (Pty) Ltd:

CE Puckrin SC (with R Michau SC) for the appellant. E

LG...