Merck Sharp Dohme Corporation and Others v Cipla Agrimed (Pty) Ltd (98/101975) [2016] ZAGPPHC 465 (8 April 2016)

Merck Sharp Dohme Corporation and Others v Cipla Agrimed (Pty) Ltd (98/101975) [2016] ZAGPPHC 465 (8 April 2016)

The court found that the respondent's attempt to reserve and later introduce further grounds of invalidity constitutes impermissible piecemeal litigation and an abuse of process. The respondent was required to bring its entire case regarding patent validity before the court and cannot now seek to amend its plea to introduce new grounds after the SCA upheld the patent's validity. The requirements for an interim interdict were satisfied: the applicants have a clear right following the SCA judgment, the balance of convenience favours them as the respondent's product directly competes with theirs, and a claim for reasonable royalty is not a satisfactory alternative remedy due to difficulties...

Citation
[2016] ZAGPPHC 465
Parties
Applicant: Merck Sharp Dohme Corporation; Applicant: Merial Limited (Merial LLC); Applicant: Merial South Africa (Pty) Ltd; Respondent: Cipla Agrimed (Pty) Ltd
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
8 April 2016
Case Number
98/101975
Procedural Posture
Urgent Application / Application for Interim Interdict Pending Final Determination of Infringement Action
Outcome
Interim interdict granted restraining respondent from infringing specified patent claims pending final determination of the action; costs reserved.
Judges
W Louw
Legal Topics
Patent Infringement, Interim Interdict, Res Judicata, Abuse of Process, Amendment of Plea
Intellectual Property Civil Procedure Patent Infringement Interim Interdict Res Judicata Abuse of Process Amendment of Plea

Case Brief

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Parties

Merck Sharp Dohme Corporation

Applicant

Merial Limited (Merial LLC)

Applicant

Merial South Africa (Pty) Ltd

Applicant

Cipla Agrimed (Pty) Ltd

Respondent

Procedural Posture

Urgent Application / Application for Interim Interdict Pending Final Determination of Infringement Action

Legal Issues

  1. 1 Whether the respondent is entitled to pursue piecemeal litigation by holding over grounds of invalidity for future proceedings.
  2. 2 Whether the requirements for an interim interdict restraining patent infringement are satisfied.
  3. 3 Whether the issue of patent validity is res judicata between the parties following the SCA judgment.

Ratio Decidendi

The court found that the respondent's attempt to reserve and later introduce further grounds of invalidity constitutes impermissible piecemeal litigation and an abuse of process. The respondent was required to bring its entire case regarding patent validity before the court and cannot now seek to amend its plea to introduce new grounds after the SCA upheld the patent's validity. The requirements for an interim interdict were satisfied: the applicants have a clear right following the SCA judgment, the balance of convenience favours them as the respondent's product directly competes with theirs, and a claim for reasonable royalty is not a satisfactory alternative remedy due to difficulties...

Court Disposition

Interim interdict granted restraining respondent from infringing specified patent claims pending final determination of the action; costs reserved.

Orders

  • The respondent is interdicted from infringing claims 1 to 7, 18 to 23 and 29 of South African patent 98/10975 pending the final determination of the action instituted by the applicants against the respondent on 18 October 2011 under the above case number, provided that the interdict will lapse on the expiry date of...
  • The costs of the application are reserved for determination in the action.