On 28 December 2010, the Singapore Court of Appeal granted judgement in favour of Cargill International Trading Pte Ltd (“Cargill”) against Martek Biosciences Corp (“Martek”), dismissing Martek’s application for leave to adduce further evidence in relation to a pending action in the High Court.
Cargill had, in 2009, succeeded in an application before the Intellectual Property Office of Singapore (“IPOS”) to revoke Martek’s Singapore patent under section 80(1)(a) of the Patents Act. Cargill relied on ten prior art documents and alleged that the patent claims are not novel and inventive, and that the patent specification does not disclose the invention clearly and completely for it to be performed by a person skilled in the art. The Patent was eventually revoked by IPOS for lacking in an inventive step. Martek appealed IPOS’ decision to the High Court. It was this pending action before the High Court that Martek applied for an interlocutory application requesting leave to adduce further evidence. The High Court judge dismissed the interlocutory application.
Martek’s patent is directed towards processes for the production of arachidonic acid (“ARA”) containing oils, which preferably are free of eicosapentaneoic acid and includes compositions containing oils of very high amounts of ARA in triglyceride form, and to uses of such oils.
The evidence which Martek wanted to adduce relates to a repeat of an experiment described in one of the ten prior art documents – a Japanese patent which claims to teach a process for producing the oil comprising 72.9% ARA, falling within the scope of Martek’s patent claim of producing oil comprising at least 50% ARA. However, Martek had themselves conducted the experiment and their results showed that the oil produced from the experiment taught by the Japanese prior art document produced an ARA content of less than 50%, and not 72.9% as claimed.
It appears that it was a case of Martek carrying out the experiment a little too late. In dimissing Martek’s appeal, the Court of Appeal found that Martek should have either carried out the experiment prior to the hearing before IPOS, or applied for leave from IPOS during the hearing to carry out the experiment and adduce the results obtained as evidence in the hearing. The Court of Appeal agreed with the High Court’s decision that the Martek’s inaction showed “a lack of due diligence in securing all relevant evidence before [IPOS]”.