Introduction Facts Decision Comment

Introduction

On April 1 2016 the Supreme Court of Appeal upheld the appeal filed by Merial, Merial Limited and Merial South Africa (Pty) Ltd (collectively, 'Merial') against Cipla Vet (Pty) Ltd. The court found that Merial's patent was valid, and that it had been infringed by Cipla's Fiprotec product, the active ingredients of which were manufactured in and imported from India. Accordingly, the court ordered Cipla to:

  • cease all sales of Fiprotec;
  • deliver up all Fiprotec products to Merial for destruction; and
  • pay Merial's costs.

The court also ordered an enquiry into the damages suffered by Merial as a result of Cipla's infringing conduct.

Facts

The patent in suit was registered in respect of Merial's Frontline Plus spot-on formulation of an anti-parasitic treatment for domestic animals. Globally, Frontline is the most successful animal health product to date, presenting an easy-to-use, efficient and long-acting solution to pet owners.

Cipla released its Fiprotec product in 2008 in competition with Merial's Frontline product, thus infringing Merial's statutory patent rights. As confirmed by the Supreme Court of Appeal, the exclusive rights afforded by a patent are defined by the claim construed in the body of the patent specification.

Cipla initially attacked the patent on various grounds, including:

  • lack of novelty;
  • obviousness;
  • the inutility and lack of clarity of the claimed invention; and
  • the insufficiency of the disclosure.

Decision

The court specifically addressed the question of clarity. It strongly emphasised the notion of reasonable clarity and unequivocally stated that "absolutism does not perch happily upon the banner of our law". This does not detract from the statutory obligation on a patentee to state clearly and distinctly in its patent claims the inventions that it wishes to protect.

The weight that the court placed on expert witnesses (ie, persons skilled in the technology field to which the patent relates) as addressees of the patent was highly conspicuous. The court highlighted that Merial's and Cipla's respective expert witnesses were the principal actors in the case. It is thus telling that Merial's expert witness was referred to as an "impressive witness" and her evidence a "formidable obstacle" to Cipla's invalidity case.

Cipla resorted to seemingly plausible, although ultimately irrelevant, diversionary tactics by claiming – among other things – that its infringing product, Fiprotec, contained impurities. However, the court saw through this diversion.

Cipla tried to convince the court that when certain words were read in conjunction with the body of the patent specification, uncertainty arose regarding the exact scope of the claim. Cipla relied heavily on its expert witness – who professed that the effect of the interchangeable roles of the constituent elements of the claimed anti-parasitic formulation were confusing – and consequently emphasised the patent claim's lack of clarity. Cipla further argued that, given the dual and interchangeable functionalities of the elements in the specification, a person of skill would not be able to "unscramble the egg" when interpreting the claim, relying on a set of absurd examples presented on the last day of the trial. However, the court disagreed and held that the dual functions of the constituent elements of the claim did not affect its clarity, as the interpretation of a patent is a process of construction by a mind willing to understand and not a process of deconstruction by a mind desirous to misunderstand, as was the case with Cipla's witness.

Comment

By finding infringement of a valid patent, the Supreme Court of Appeal reaffirmed the value of securing patents for the protection of inventions and the integrity of patent enforcement in South Africa.

For further information please contact At Van Rooy or Izaan van de Merwe at KISCH IP by telephone (+27 11 324 3000) or email (atv@kisch-ip.com or izaanv@kisch-ip.com). The KISCH IP website can be accessed at www.kisch-ip.com.

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