South Africa: One Who Flew Over The Cuckoo's Nest

Last Updated: 30 March 2017
Article by At Van Rooy

On 1 April 2016, the Supreme Court of Appeal (SCA) upheld an appeal by Merial, Merial Limited and Merial South Africa (Pty) Ltd (Merial), against Cipla Vet (Pty) Ltd (Cipla).  The SCA found that Merial's patent was valid and infringed by Cipla's Fiprotec product of which the active ingredients were manufactured and imported from India. The SCA accordingly ordered Cipla to cease all sales of Fiprotec, to deliver up all Fiprotec products to Merial for destruction, to pay Merial's costs, and ordered an enquiry into the damages suffered by Merial as a result of Cipla's infringing conduct. The overall effect of the SCA's decision thus being that Cipla had to cease all sales of Fiprotec and deliver up all infringing products under its control to Merial forthwith.

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

Owing to the success of the Frontline product, Cipla had wontingly, much like the proverbial cuckoo, laid its Fiprotec eggs in another's nest – Merial's Frontline nest to be more precise. Cipla released its Fiprotec product in 2008 in competition with Merial's Frontline product and thus trespassed upon Merial's statutory patent rights. As confirmed by the SCA, the exclusive rights afforded by a patent is defined by the claims of the patent construed in the context of the body of the patent specification.

Cipla initially attacked the patent on various grounds, including lack of novelty, obviousness, inutility and lack of clarity of the claimed invention, and insufficiency of the disclosure. The question of clarity was specifically addressed by the SCA. The notion of reasonable clarity was strongly emphasised and the court unequivocally stated that "absolutism does not perch happily upon the banner of our law". This does not detract from the statutory obligation on the patentee to state clearly and distinctly in the claims what the invention is which it desires to protect.

The weight a court places in patent-related matters on an expert witness, i.e. a person skilled in the field of technology to which the patent relates as addressee of the patent, was highly conspicuous. The court took the time to point out 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 that her evidence was a 'formidable obstacle' in the way of Cipla's case on invalidity.

Cipla resorted to seemingly plausible, though ultimately irrelevant, diversionary tactics by claiming, amongst others, that their infringing product, Fiprotec, contained impurities. The court however saw this diversion for what it was – a red herring.

Cipla attempted to convince the SCA that when certain words are read in conjunction with the body of the specification, uncertainty arises regarding the exact scope of the claims. Much reliance was placed by Cipla on the testimony of their expert witness, wherein it was professed that the effect of the interchangeable roles of the constituent elements of the claimed anti-parasitic formulation was confusing and consequently emphasised the lack of clarity of the patent claims. It was further argued by Cipla 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 patent trial. The court, however, did not fall for this "puzzle at the end of the case" and held that the dual functions of the constituent elements of the claim did not impact on clarity as the interpretation of a patent is a process of construction by a mind willing to understanding, not the deconstruction by a mind desirous of misunderstanding, as in the case of Cipla's witness.

The cuckoo's eggs have thus been kicked out of the nest and did not hatch any Frontline products.

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

Originally published January 2017

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