Recently, the Supreme Court of Appeal of South Africa, the highest court in South Africa, considered “public-interest” factors used in other jursidictions  to grant an injunction against alleged patent infringement on grounds of prejudice to public interest.

The current appeal concerns a South African patent registered in the name of Aventis.  The registered patent claims a composition that facilitates holding an active ingredient in a solution.  The composition is a technique to prevent the formation of a gel or to break down a gel when the active ingredient is introduced into the solution.  Two main issues were raised in the present appeal: (1) whether an amendment, made several years ago, to the patent’s independent claim was valid; and (2) whether an interim injunction shall be granted during pending action in a corresponding patent validity hearing.

The Court dealt with the first issue by examining the construction of the patent specifications and dismissed the appeal.  On the facts of the case, the Court found that the amended claims remained a ‘composition’ with the same constituents and effect as the original patent claim and that the amendment merely expressed what was silent in the original claim.

On the second issue, the Court noted a ‘complication’ in Aventis’ action for an injunction against infringement.  The Court acknowledged that the patent claimed a composition made up of the different components.  The Court also noted that the product being imported and offered by the respondent, Cipla, was not a composition.  Cipla’s product consists only of several components.  As such, Cipla’s product, consisting of several components intended for mixture, was found by the Court to have a specific and sole intention of being used in a manner that can infringe the patent and is therefore unlawful.

The Court canvassed the law in other jurisdictions and found that it would be deficient if there was no remedy against intentionally aiding, abetting or inducing infringement of a patent.

More interestingly, however, the Court considered the submissions of amicus curiae.  Specifically, when determining whether to grant an injunction against infringement, the broader public interest must be taken into account.  Several United States cases were cited. In particular, the cited cases found that:

(a) In granting an injunction against patent infringement, one requirement is that there be no disservice to the public interest (Ebay Inc v Mercexchange, LLC [1])

(b) An injunction may not be granted where enjoining the defendant from selling its product could pose a serious risk to the public health if the patentee could not fill a market need (Innogenetics, NV v Abbott Laboratories [2])

(c)  There is weight against the granting of an injunction if a patent infringer’s product has superior medical features (Barb Peripheral Vascular, Inc v WL Gore & Associates, Inc [3])

(d) An injunction be refused based on evidence that millions of innocent contact lens wearers would suffer real adverse consequence if sale of the infringing contact lenses is enjoined (Johnson & Johnson Vision Care, Inc v Ciba Vision Corporation [4])

(e) An injunction be refused because the public interest would not be substantially advanced or harmed (Edwards Lifesciences v Corevale [5])

In the present case, there was no suggestion that Aventis would not be able to meet a demand for the pharmaceutical product of the disputed patent.  There was also no evidence that Cipla’s product offered any superior medical benefits, nor was there any evidence that there would be material disruption to patients if an injunction were to be granted.  Additionally, the present case is unlike the Edward Lifesciences case, where in that case, an injunction would have no practical effect.

The Court found that Cipla’s resistance to an injunction was founded upon commercial interests. Once Aventis’ patent expires, Cipla sought to gain an advantage of being first to supply a cheaper generic product. On the other hand, Aventis has just as much interest in establishing a first presence in the generic market and refusing an injunction would equally prejudice Aventis.

Overall, the most interesting aspect of the present judgment involves consideration of the “public interest” element when deciding whether to grant an injunction for patent infringement.  As noted above, the Court of Appeal of South Africa canvased and considered the law in other jurisdictions.  Although the cited US case law ruled against granting injunctions on the basis of a “public interest” analysis, the Court of Appeal of South Africa adapted the same inquiries and, based on the facts of the appeal, granted an interim injunction.

The judgment by the Supreme Court of Appeal of South Africa illustrates that consideration of granting an injunction can extend beyond determining simply whether there is a well-grounded apprehension of irreparable harm and whether there is an adequate ordinary remedy.  The cited case law illustrates that in multiple jurisdictions, the Courts are willing to ensure they are not only considering facts of the case in isolation, but also, where necessary, in the context of the broader public interest.  In doing so, however, the Courts must take care in not straying from the spirit and principles underlying respective patent laws.

Stephen Lam is a JD candidate at Osgoode Hall Law School.

[1] Ebay Inc v Mercexchange, LLC 547 US 388 (2006) at 392.

[2] Innogenetics, NV v Abbott Laboratories 578 F. Supp 2d 1079 (WD Wis 2007) at 1105.

[3] Barb Peripheral Vascular, Inc v WL Gore & Associates, Inc 2009 WL 920300 (D. Ariz.).

[4] Johnson & Johnson Vision Care, Inc v Ciba Vision Corporation 712 F. Supp. 2d 1285 (M.D.Fla. 2010).

[5] Edward Lifesciences AG and Ewards Lifesciences LLC v Corevalve Valve, Inc and Medtronic Corevalve, LLC 2011 WL 446203 (D. Del).