THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT

Case No: 139/2012
In the matter between:
CIPLA MEDPRO (PTY) LIMITED
Appellant
and
AVENTIS PHARMA SA
Respondent
and
TREATMENT ACTION CAMPAIGN
Amicus Curiae

Case No: 138/2012
In the matter between:
AVENTIS PHARMA SA
1st Appellant
SANOFI AVENTIS SOUTH AFRICA (PTY) LTD
2nd Appellant
WINTHROP PHARMACEUTICALS (PTY) LTD
3rd Appellant
and
CIPLA LIFE SCIENCES (PTY) LTD
1st Respondent
CIPLA MEDPRO (PTY) LTD
2nd Respondent
MEDPRO PHARMACEUTICA (PTY) LTD
3rd Respondent
and
TREATMENT ACTION CAMPAIGN
Amicus Curiae
Neutral citation: Cipla Medpro v Aventis Pharma (139/12) Aventis
Pharma SA v Cipla Life Sciences (138/12) [2012]
ZASCA 108 (26 July 2012)
Coram:
NUGENT, HEHER, SNYDERS, TSHIQI JJA and
McLAREN AJA
Heard:
15 MAY 2012
Delivered:
26 JULY 2012
Summary:
Patent – validity – whether claim vague or
otherwise revocable – contributory infringement –
interim interdict – relevance of public interest.

___________________________________________________________

ORDER
___________________________________________________________

On appeal from: Commissioner of Patents (Southwood J sitting as court
of first instance):

1.
The appeal in the s 51(1) proceedings (Case No 139/2012) is
dismissed with costs that include the costs of two counsel.

2.
The appeal in the infringement proceedings (Case No. 138/2012) is
upheld with costs that include the costs of two counsel, to be paid by the
respondents jointly and severally. The order of the Commissioner in those
proceedings is set aside and the following order is substituted:

„(a)
Pending the outcome of the action for final relief the respondents
are interdicted from procuring or inducing, aiding and abetting, advising,
inciting or instigating or assisting any other person to infringe claim 1 of
South African Patent no 93/8936 in the Republic, and from disposing of
or offering to dispose of CIPLA DOCETAXEL and CIPLA
DOCETAXEL solvent.
(b)
The respondents, jointly and severally, are to pay the costs of the
application, including the costs of two counsel, and the costs of the expert
witness Prof Davies.‟

___________________________________________________________

JUDGMENT
___________________________________________________________

NUGENT JA (HEHER, SNYDERS, TSHIQI JJA and McLAREN
AJA CONCURRING)

[1] There are two appeals before us. The protagonists in each appeal
are one or more companies within the Aventis group, on the one side, and
one or more companies within the Cipla group on the other. There is no
need to name each of the companies and for convenience I will refer to
the companies in each group interchangeably as Aventis and Cipla
respectively.

[2] Both appeals concern South African Patent 93/8936, which is
registered in the name of Aventis.1 The patent is due to expire on 30
November 2013. Claim 1 of the patent specification was amended on two
occasions. The first amendment is not relevant to this appeal. The second
amendment was made in 2007. For convenience I will refer to the claim
before its amendment in 2007 as the „original claim‟ and to the claim
after that amendment as the „amended claim‟.

[3] Aventis sells in South Africa a pharmaceutical product known as
Taxotere, which has been registered for sale under the Medicines and
Related Substances Act 101 of 1965. The active ingredient is docetaxel –
a chemical compound in the taxoid family, also referred to as a taxane
derivative. Docetaxel was synthesized in 1986 and was the subject of a
patent that expired in 2007. It is used in the treatment of various cancers,

1Aventis Pharma SA, a French corporation, to be precise.

diluted in a perfusion solution, typically a solution of saline,2 and
administered by way of a drip. The components of Taxotere are presented
for sale separated in two vials. The contents of the two vials are mixed
together immediately before use so as to produce a composite solution
that is injected into the bag of saline solution. Aventis says that Taxotere
falls within the terms of its patent.

[4] Early in 2011 Aventis became aware that Cipla had applied for
registration of, and intended importing and selling, a generic equivalent
of Taxotere that it calls Cipla Docetaxel. In all material respects the
components of Cipla Docetaxel correspond with those of Taxotere. Its
components are also presented for sale separated into two vials – one
containing what it calls Cipla Docetaxel and the other containing Cipla
Docetaxel solvent – to be mixed together and administered in the same
way as Taxotere.

[5] On 9 May 2011 the attorneys for Aventis wrote to Cipla‟s attorneys
alleging that „the exploitation of Cipla Docetaxel and Cipla Docetaxel
solvent‟ would infringe its patent, and calling for an undertaking that
Cipla would not „make, use, exercise, dispose or offer to dispose of or
import the Cipla Docetaxel or Cipla Docetaxel solvent products‟ until
expiry of the patent.

[6] Cipla declined to give the undertaking and two applications were
brought before the Commissioner of Patents. The first was an application
by Cipla for an order setting aside the 2007 amendment of claim 1.3 That
was followed shortly by an application by Aventis for an interim interdict

2The perfusion solution need not necessarily be a saline solution but for convenience I refer to it as
such.
3 SCA Case No 139/2012.

against infringement pending the outcome of an action for a final order to
that effect.4

[7] The two applications were heard together by Southwood J sitting
as the Commissioner of Patents. Both applications were dismissed and
the respective parties now appeal with his leave.

[8] Before turning to the specific issues that arise in each appeal it is
convenient to set out some background that is common to both.

[9] Taxane derivatives are not easily soluble in water. To hold a taxane
derivative in solution when it is introduced into the saline solution,
according to the patent specification, it had been found necessary first to
prepare a stock solution of the taxane derivative, dissolved in a mixture of
solvents comprising a surface-active agent (a wetting agent) and ethanol.
For reasons that are not material the ethanol is then withdrawn leaving the
taxane derivative dissolved in the stock solution. It was found, however,
that when the stock solution was introduced into the saline solution, it
formed a gel that inhibited its dissolution. Various techniques existed to
prevent the formation of gel or to break down the gel when it formed and
the patent relates to one such technique.

[10] The invention of the patent consists in an intermediate solution
containing the taxane derivative dissolved in a surface active agent,
mixed with an additive (ethanol) that breaks the gel or prevents its
formation when the intermediate solution is introduced into the saline
solution. The invention – titled „New Taxoid-Based Compositions‟ – was
claimed as follows in the original claim 1:

4SCA Case No 138/2012.

„An injectable composition comprising a taxane derivative in a surface-active agent
and an additive which prevents the formation of, or breaks, a gelled phase during the
mixing of the solution with an aqueous medium.‟

[11] In 2007 Aventis sought and was granted an amendment to claim 1
under s 51 of the Patents Act 57 of 1978. After amendment the invention
was claimed as follows:
„An injectable composition comprising (a) a taxane derivative in a polysorbate and (b)
an additive, (a) and (b) being provided in ampoules, bottles or a double compartment
device, the injectable composition being produced by mixing (a) and (b) to form an
intermediate solution, wherein the additive prevents the formation of, or breaks, a
gelled phase during mixing of the intermediate solution with an aqueous medium‟.

[12] The „polysorbate‟ referred to in the amended claim is a „surface-
active agent‟ of the kind referred to in the original claim and is not
significant. The material amendment lies in the words „provided in
ampoules, bottles or a double compartment device, the injectable
composition being produced by mixing (a) and (b) to form an
intermediate solution‟.

The First Appeal: The Amendment of Claim 1 (SCA Case No. 139/2012)
[13] Section 51(1) of the Act allows a patentee at any time to apply to
the registrar for the amendment of a patent specification. Under s 51(1)
an amendment that has been made in conflict with the provisions of the
Act may be set aside on application to the Commissioner. An amendment
will be in conflict with s 51(7) of the Act
„if the specification as amended would include any claim not wholly within the scope
of a claim included in the specification before amendment.‟
That section is aimed at preventing the patentee from broadening the
monopoly that was originally claimed. Whether the amendment indeed

does so is a matter for construction and comparison of the claim before
and after amendment.5

[14] Gentiruco A.G. v Firestone SA (Pty) Ltd6 remains the leading case
on the construction of patent specifications, in which it was said that
„the rule of interpretation is to ascertain, not what the inventor or patentee may have
had in mind, but what the language used in the specification means, i.e., what his
intention was as conveyed by the specification, properly construed, … since he is
presumed to have intended what his language means. To ascertain that meaning the
words used must be read grammatically and in their ordinary sense.‟7

[15] The affidavits in both applications need to be read together for the
purpose of each appeal. They contain considerable evidence by experts
on each side concerning the proper construction of the claims. I return
presently to the role of experts in construing a specification. For the
moment I need only say that it is common cause, and the Commissioner
approached the matter on those lines, that the claim before and after
amendment must be given its ordinary meaning. The evidence of the
experts does no more than to advance the meaning that each attributed to
the claim on the ordinary meaning of language. That evidence is neither
helpful nor admissible and I say no more about it at this stage.

[16] Counsel on both sides approached the matter on the basis that the
amendment altered the original claim so as to claim what was called at
times a „two vial composition‟ – whatever that might mean – or what
counsel for Cipla called a „kit‟ from which the composition was to be
made. That was said by Cipla to have broadened the original claim and by

5Kimberly-Clark of South Africa (Pty) Ltd v Proctor & Gamble SA (Pty) Ltd 1998 (4) SA 1 (SCA)
12H-I.
6Gentiruco A.G. v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A).
7At 614B-C.

Aventis to have narrowed it. The Commissioner approached the matter in
the same way. He summarised the case put forward by Cipla as follows:
„The applicant … contends in the founding affidavit that the amended claim 1 is
intended to cover an unmixed collection of the specified ingredient substances which
Mr Puckrin SC on behalf of the applicant referred to as a „kit‟ to distinguish it from
the composition.‟
but said that
„amended claim 1 cannot be properly interpreted in that way. It still refers to an
injectable composition, i.e. something which is obtained by mixing the ingredients
referred to, and the method of mixing is expressly provided for.‟
and he concluded that
„by amending the claim as it has done the patentee has restricted its monopoly and not
extended it‟.

[17] The ordinary meaning of a „composition‟ in the present context is
„a substance formed by combination of various ingredients‟.8 It goes
without saying that before they were combined the two ingredients
described in the original claim existed separately. And if they were
solutions then they must necessarily each have been held in impervious
containers – whether bottles or ampoules or any other kind of impervious
container. All of that is silently stated by mere description of the
invention as a „composition‟ of the stated constituents.

[18] The words added by amendment do not purport to claim a different
invention. The invention of the amended claim remains a „composition‟
with the same constituents and effect as stated in the original claim. The
added words do no more than describe the prior state of those constituents
before they were brought together to form the composition. In so doing
they merely express what was silent in the original claim and neither

8Meaning III 1. In The Shorter Oxford English Dictionary.

broaden nor narrow it. It matters not that the Commissioner found that the
claim was narrowed – it is sufficient if it was not broadened, which it was
not, and on that basis the application was rightly dismissed.

The Second Appeal: Infringement (SCA Case No. 138/2012)
[19] Section 65(4) of the Act allows any ground upon which a patent
may be revoked under s 61 to be raised as a defence to an infringement
claim. Four grounds for revocation of claim 1 were raised by Cipla. First,
that the claim was not clear.9 Secondly, that the invention claimed was
not a new invention.10 Thirdly, that the invention claimed did not involve
an inventive step.11 And fourthly, that the prescribed declaration lodged
when the patent was applied for contained a false statement or
representation.12

[20] The Commissioner found that claim 1 was not clear and thus
invalid and for that reason he found it unnecessary to deal with the other
grounds for revocation, though he expressed the view that none placed
the validity of the claim in serious doubt. On the view that I take it
becomes necessary to deal with each of the grounds of alleged invalidity,
other than one. The statement in the declaration that was alleged to have
been false was a statement that the invention was new. If the invention
was not new then the patent is invalid on that ground. The statement to
the contrary in the declaration thus takes the matter no further and I need
say no more about that ground.

9Section 61(1)(f)(i).
10Section 61(1)(c) read with s 25(1).
11Section 61(1)(c) read with s 25(1).
12Section 61(1)(g).

[21] It is curious that the Commissioner, having found sufficient
meaning in the claim to enable him to find that the original claim had
been narrowed, then proceeded to find that its meaning was uncertain.
The explanation lies in the approach that he took to the admissibility of
expert evidence. The approach adopted by the Commissioner when
construing the claims for purposes of the s 51 was that expert evidence
was not admissible and it fell to be construed according to its ordinary
language. However, he said that expert evidence was admissible to
determine whether the claim was „clear‟ for purposes of s 61(1)(f)(i). In
that respect he preferred the evidence that had been given by the expert
on behalf of Cipla – who expressed the view that the amended claim was
ambiguous – and held that the patent was invalid on that ground. In my
respectful view that approach was erroneous. It seems to me to confuse
the clarity of the claim with the sufficiency of the specification.

[22] Patent protection provides an inducement for new knowledge to be
brought into the public domain. In return for the monopoly that is
conferred upon the patentee for a fixed period the patentee must describe
the invention sufficiently to enable it to be performed once the monopoly
expires. For that reason a patent may be revoked under s 61(1)(e) if
„the complete specification concerned does not sufficiently describe, ascertain and,
where necessary, illustrate or exemplify the invention and the manner in which it is to
be performed in order to enable the invention to be carried out by a person skilled in
the art of such invention‟.

[23] As pointed out in Burrell’s South African Design and Patent
Law,13 „an inquiry as to this ground of revocation involves a question of
fact, namely, whether to a person skilled in the art the specification

13Timothy Donald Burrell Burrell’s South African Design and Patent Law 3 ed (1999) para 4.22.

contains proper instructions for enabling the invention to be put into use‟.
For that purpose expert evidence is admissible, but only for that limited
purpose. As Nicholas J expressed it in De Beers Industrial Diamond
Division (Pty) Ltd v Ishizuka14
„[i]nsufficiency is a matter on which the opinion of expert witnesses is admissible. It
is one of those cases where the court is, by reason of a lack of special knowledge and
skill, not sufficiently informed to enable it without the assistance of an expert to come
to any useful conclusion …. An expert witness is therefore “entitled to say whether in
his opinion that which is described in the specification on a given hypothesis as to its
meaning is capable of being carried into effect by a skilled worker”‟ (my
emphasis).

[24] It is a different question whether a claim is clear. Holmes JA
pointed out in Letraset Ltd v Helios Ltd15 that the function of the claim (in
contradistinction to the body of the specification) is to „inform
prospective rivals of the limits of the field denied to them while the patent
lasts‟ and for that purpose „the monopoly must clearly and succinctly
define the limits of the field closed to others so that he who runs may
read.‟16 In determining whether the limit of the monopoly is sufficiently
defined „technical term[s] [are] to be interpreted in the light of evidence
given by witnesses learned or skilled in the relevant art‟ but
„[w]ords which have no special technical meaning are to be interpreted, not by
witnesses, but by the Court, and are to be given their natural and ordinary meaning‟.17

[25] I have already found, when dealing with the s 51 application, that
the invention of the amended claim remains a composition with the same
constituents and effect as stated in the original claim, and that the added

14De Beers Industrial Diamond Division (Pty) Ltd v Ishizuka 1980 (2) SA 191 (T) 198H.
15Letraset Ltd v Helios Ltd 1972 (3) SA 245 (A).
16At 249F-G.
17At 250C-E. As to the limits of expert evidence generally see Gentiruco, above, at 617G-618A,
quoting with approval from British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171 at 195.

words merely describe what was previously silent. What is claimed is
clearly and unambiguously stated and does not offend s 61(1)(f)(i).

[26] For a patent to be granted the invention must be new. Burrell
points out that „the best workable method to test for novelty is to take the
integers of a given claim seriatim and to look for their counterparts in the
alleged anticipation‟.18 Leaving aside the superfluous words that I
referred to earlier, the integers of the claim are (a) an injectable
composition comprising (b) a taxane derivative (c) in a polysorbate and
(d) an additive (e) wherein the additive prevents the formation of, or
breaks, a gelled phase during the mixing of the intermediate solution with
an aqueous medium. I do not think it is necessary to refer to any of the
documents that are said to anticipate the claim. Suffice it to say that none
describes integer (e).

[27] An invention must not only be new in order to qualify for a patent
but must also involve an inventive step – as it is usually expressed, it
must not be obvious. Reading ss 25(1), (6) and (10) together – described
in Ensign-Bickford (South Africa) (Pty) Ltd v AECI Explosives and
Chemicals Ltd19 as constituting a „statutory code‟ on the subject – the
enquiry involves the following steps:20
„(1)
What is the inventive step said to be involved in the patent in suit?
(2)
What was, at the priority date, the state of the art (as statutorily defined)
relevant to that step?
(3)
In what respect does the step go beyond, or differ from, that state of the art?
(4)
Having regard to such development or difference, would the taking of the step
be obvious to the skilled man?‟

18Para 4.71.2.
19Ensign-Bickford (South Africa) (Pty) Ltd v AECI Explosives and Chemicals Ltd 1999 (1) SA 70
(SCA) at 80F.
20At 80H-J. See, too, Roman Roller CC v Speedmark Holdings (Pty) Ltd 1996 (1) SA 405 (A).

[28] The inventive step claimed for the invention is the addition of an
additive (ethanol) to the intermediate solution, having the effect of
preventing or breaking a gelled phase during the mixing of the solution
with an aqueous medium. The expert opinion of Dr Parolis – who
deposed to an affidavit on behalf of Cipla – was that if that step did
indeed go beyond or differ from the state of the art at the priority date,
then it would have been obvious to the skilled addressee to take that step.
His evidence on that issue was countered by Dr Davies, who deposed to
an affidavit on behalf of Aventis. Counsel for Aventis readily accepted
that it was not open to us to resolve that dispute on the affidavits, and that
it falls to be resolved in the action that has been commenced for final
relief. Nonetheless, the evidence on affidavit, and particularly the
description in the specification of the methods that had previously been
used to overcome the difficulty, is sufficient to establish prima facie –
and in my view strongly so – that the taking of that step was far from
obvious, and that the patent is not susceptible to revocation on that
ground. That being so Aventus has established at least prima facie an
entitlement to enforce its patent.

[29] But here Aventis encounters a complication that precludes its main
claim – that is, its claim for an interdict against infringement. The Act
confines infringement to „making, using, exercising, disposing or offering
to dispose of, or importing the invention‟.21 I have already found that the
invention claimed in claim 1 is a composition made up of the
components, and having the effect, stated in the claim. The product being
imported and offered for disposal by Cipla is not that composition but
only its components. A health worker who mixes the contents of the two

21Section 45(1).

vials „makes‟ the composition that is the subject of the claim, thereby
infringing the patent, but the infringement is by the health worker who
made the composition, and not by Cipla who supplied the means for
infringing.

[30] Nonetheless, it is clear that Cipla imports and supplies its product
with the direct and sole intention that that act of infringement should
occur. Indeed, the insert that accompanies the product directs health
workers to use the product in that way. It is on that basis that Aventis
claims, as an alternative to its main claim, pending the outcome of its
action for final relief, an order interdicting Cipla
„from procuring or inducing, aiding and abetting, advising, inciting or instigating or
assisting any other person to infringe claim 1 of [the patent] by [Cipla], in the
Republic, disposing of or offering to dispose of CIPLA DOCETAXEL or CIPLA
DOCETAXEL solvent‟.

[31] The unlawfulness of what has come to be known as „contributory
infringement‟ has widespread acceptance internationally. In England,
under s 60(2) of the Patents Act 1977, a person infringes a patent if,
without the consent of the proprietor, he
„supplies or offers to supply in the United Kingdom a person other than a licensee or
other person entitled to work the invention with any of the means, relating to an
essential element of the invention, for putting the invention into effect when he
knows, or it is obvious to a reasonable person in the circumstances, that those means
are suitable for putting, and are intended to put, the invention into effect in the United
Kingdom‟.

[32] In Grimme Maschinenfabrik GmbH & Co KG v Derek Scott (t/a
Scotts Potato Machinery)22 the Court of Appeal explained that the section
has its origins in Art. 26 of the Community Patent Convention – which
requires that as far as possible the same legal rules should apply across all
the countries where the provisions of the Convention have been
implemented. That Article is in substantially the same terms as s 60(2) of
the English Act. It also observed that that form of infringement has been
recognised in the United States for more than 100 years and said that
„[t]he specific origin of the term [contributory infringement] appears to have been
s.271 of the US Patent Act 1952, in which it is specifically mentioned. Section 271(c)
has marked similarities to Art. 26.1, and is as follows:
“Whoever offers to sell or sells within the United States or imports into the United
States a component of a patented machine, manufacture, combination or composition,
or a material or apparatus for use in practising a patented process, constituting a
material part of the invention, knowing the same to be especially made or especially
adapted for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial non-infringing use, shall be liable as
a contributory infringer.”
Section 271(b) also makes anyone who “actively induces infringement liable as an
infringer”.‟

[33] There are no comparable provisions in our Patents Act but our law
would be most deficient if it had no remedy against intentionally aiding
and abetting infringement of a patent and in my view there is indeed no
such deficiency.

[34] Almost a century ago, in McKenzie v Van der Merwe,23 it was
accepted by this court that a person is delictually liable if he aids and

22Grimme Maschinenfabrik GmbH & Co KG v Derek Scott (t/a Scotts Potato Machinery) [2010]
EWCA Civ 1110.
23McKenzie v Van der Merwe 1917 AD 41.

abets another to commit a delict. Although the court was divided on the
outcome that principle was endorsed by both the minority and the
majority. Solomon JA, with whom De Villiers AJA and Juta AJA
concurred,24 expressed the law on the point as follows:
„Under the Lex Aquilia not only the persons who actually took part in the commission
of a delict were held liable for the damage caused, but also those who assisted them in
any way, as well as those by whose command or instigation or advice the delict was
committed. To a similar effect is the passage which was quoted from Grotius (3, 32,
12, 13) that everyone is liable for a delict "even though he has not done the deed
himself, who has by act or omission in some way or other caused the deed or its
consequence: by act, that is by command, consent, harbouring, abetting, advising or
instigating".‟
(On the facts, the majority held the defendant not to be liable.) In a
dissenting judgment C.G. Maasdorp JA said on that point of law:
„According to the Digest (47, 2, 54, 4), "he who knowingly furnished instruments for
stealing is liable, although he did not counsel the theft." This law we find laid down
also by Van der Linden (2, 1, 8), and Matthaeus, in his work on Crimes (1, 11). Here
the writers speak of crimes from which a civil liability for damages arises. In Voet
(47, 2, 7) special mention is made of the liability of a person who lends a thief a
ladder, well knowing what it was to be used for.‟

[35] The principle is not confined to inducing or aiding and abetting the
commission of a delict. In Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn
Ghwano (Pty) Ltd25 it was held to be a delict for a person to induce
another to breach a contract. Van Dikhorst J expressed it as follows:
„A delictual remedy is available to a party to a contract who complains that a third
party has intentionally and without lawful justification induced another party to the
contract to commit a breach thereof. Solomon v Du Preez 1920 CPD 401 at 404;
Jansen v Pienaar (1881) 1 SC 276; Isaacman v Miller 1922 TPD 56; Dun &

24Innes CJ decided the matter on a different basis and did not touch directly on the point.
25Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd 1981 (2) SA 173 (T).

Bradstreet (Pty) Ltd v SA Merchants Combined Credit Bureau (Cape) (Pty) Ltd 1968
(1) SA 209 (C) at 215.‟

[36] In Esquire Electronics Ltd v Executive Video26 a submission that
for there to be an infringement of a trade mark there must be use by the
alleged infringer personally or through his servant or agent was disposed
of by this court as follows:
„I do not think that this argument has any merit. The modern law of trade mark
infringement is statutory, but its origins are to be found in the common law rule that it
is an actionable wrong, ie, a delict, to filch the trade of another by imitating the name,
mark or device by which that person has acquired a reputation for his goods (see
Policansky Bros Ltd v L & H Policansky 1935 AD 89 at 97). A delict is committed
not only by the actual perpetrator, but by those who instigate or aid or advise its
perpetration. See McKenzie v Van der Merwe 1917 AD 41 .... In the present case
Executive Video produced the video cassettes and disposed of them, knowing and
intending that they would be put to use for the purpose for which they were purchased
or hired and that such use would necessarily involve the visual representation of the
trade mark. In the circumstances it is idle to contend that Executive Video is innocent
of infringement.‟

[37] In Bayerische Motoren Werke AG v Auto Body Spares SA (Pty)
Ltd27 it was not disputed that the decision in Esquire Electronics applied
equally to aiding and abetting infringement of a design registered under
the Designs Act 195 of 1993.
[38] The principle was asserted in relation to patent infringement in
Viskase Corporation v Columbit (Pty) Limited and Harold Henry Zeh.28
In that case the managing director of a company that was alleged to have

26Esquire Electronics Ltd v Executive Video 1986 (2) SA 576 (A).
27Bayerische Motoren Werke AG v Auto Body Spares SA (Pty) Ltd 1999 BP 51 (T).
28Viskase Corporation v Columbit (Pty) Limited and Harold Henry Zeh 1986 BP 432 (CP). See, too,
Grande Paroisse SA v SASOL Ltd 2003 BIP 11 (CP).

infringed a patent was sought to be held liable, on the grounds that he had
„caused and/or procured the First Defendant to infringe the said patents
and in the premises [had] aided and abetted the First Defendant in the ...
infringement.‟29 Harms J appears to have accepted it as self-evident that
one who intentionally aids and abets infringement of a patent commits a
delict. Although not necessary for the decision in that case (the company
was found not to have infringed) he made the following observations:
„As indicated, it is not alleged that second defendant committed an act of infringement
but that he aided and abetted the first defendant. The whole case against second
defendant was that he, as Managing Director of first defendant, controlled its affairs
and was instrumental in the purchase and sale of the infringing casings by the first
defendant. That fact may establish that the second defendant did aid the first
defendant but it does not establish any abetting by him. I fail to see how a person can
abet unless he knows or has reason to believe that the act in question is a tortuous act.
The concept of aiding and abetting applies only to delicts committed with intent (or
dolus). In casu there is no evidence that second defendant had a "weder-
regtelikheidsbewussyn". I do not believe that the statement of the English law in
Morton-Norwich Products Inc & Others v Intercen Ltd 1978 RPC 501 (Ch. D) is in
accordance with our law where it was stated at 515 that:
"I hold that if there is a concerted design by two persons to sell goods which in fact
infringe an English patent, then the parties who have such design and do so sell are in
fact joining tortfeasors and both infringe the patent whether they knew that such a sale
would be an infringement or not. Once tortfeasance is proved the knowledge as to
whether the act in question is or is not a tort does not affect liability."
On the other hand I do believe that Rainham Chemical Works Ltd (In Liq) v Belvedere
Fish Guano Co Ltd (1921) 2 AC 465 (HL) is in accordance with our law and I quote
at page 476:
"If the company was really trading independently on its own account, the fact that it
was directed by Messrs. Feldman and Partridge would not render them responsible for
its tortuous act unless, indeed, they were acts expressly directed by them. If a
company is formed for the express purpose of doing a wrongful act or if, when

29At 434D.

formed, those in control expressly direct that a wrongful thing should be done, the
individuals as well as the company are responsible for the consequences.”‟

[39] I think it is plain from McKenzie, and the authorities relied upon in
that case, that, upon ordinary delictual principles, it is unlawful to incite
or aid and abet the commission of a civil wrong, and I do not think it
matters whether it is a wrong at common law or whether it is a wrong
created by statute. Indeed, the decision of this court in Esquire
Electronics seems to me to be directly in point. That it concerned a trade
mark, and this case concerns a patent, does not seem to me to be a
material distinction. It is clear that Cipla‟s product is to be imported and
disposed of with the specific and sole intention that it will be used in a
manner that will infringe the patent, and its conduct in doing so will be
unlawful.

[40] I have already held that, but for the question of obviousness, no
grounds have been shown for revocation of the patent. The question of
obviousness will be determined in the pending action but the material
before us establishes, at least prima facie, that the patent is valid, and that
Cipla is intent upon inciting, aiding and abetting its infringement. Where
the existence or otherwise of a right asserted by an applicant cannot be
decided finally on affidavit, but is nonetheless „prima facie established
though open to some doubt‟, it is trite that a court has a discretion to grant
an interdict pending the outcome of proceedings for its final
determination. The classic formulation of how that discretion is to be
exercised is that of Holmes J in Olympic Passenger Service (Pty) Ltd v
Ramlagan:30

30Olympic Passenger Service (Pty) Ltd v Ramlagan 1957 (2) SA 382 (D) at 383E-F.

„In such cases, upon proof of a well grounded apprehension of irreparable harm, and
there being no adequate ordinary remedy the Court may grant an interdict – it has a
discretion, to be exercised judicially upon a consideration of all the facts. Usually this
will resolve itself into a nice consideration of the prospects of success and the balance
of convenience – the stronger the prospects of success, the less need for such balance
to favour the applicant: the weaker the prospects of success, the greater the need for
the balance of convenience to favour him.‟

[41] Cipla contends that damages will be an adequate remedy if it is
found in due course that the patent is valid but I do not think that can
seriously be considered. The very nature of the market is such that it will
be almost impossible to determine what sales would have been made but
for the presence of Cipla‟s product. Nor is it an answer to its claim for an
interdict that Aventis might be awarded a reasonable royalty as an
alternative to damages.31 That is a remedy available at the option of a
patentee and it cannot be compelled in effect to license the use of its
patent. The case resolves itself, then, into balancing against one another
its prospects of success in the action it has commenced and the balance of
convenience if an interdict were to be granted or withheld, as the case
may be.

[42] There is some mention in Cipla‟s affidavits of prejudice to cancer
sufferers if an interdict were to be granted but it is perfectly plain that in
reality Cipla‟s resistance to an interdict is founded upon its commercial
interests. It explains, quite frankly, the advantage to be had from being
the first in the market for the supply of cheaper generic products once a
patent expires. It says that a generic can be expected to expand the market
for the medicine and that the first generic on the market can be expected
permanently to capture about 70% of the expanded market within about

31Section 65(6).

eighteen months, leaving the remaining 30% to be shared amongst the
original product and other generics that come onto the market. At the
time its answering affidavit was filed Cipla was due to receive stock of
Cipla Docetaxel, had already taken orders, and was in a position to
immediately enter the market to secure that commercial advantage.

[43] The Treatment Action Campaign (TAC) was admitted to the appeal
as amicus curiae, with the consent of both parties. Although purporting to
act as an amicus curiae in truth it aligns itself with Cipla‟s opposition to
the grant of an interdict. Its objections to an interdict were more widely
framed.

[44] The TAC founded its objections upon s 27(1) of the Constitution,
which guarantees to everyone the right to have access to health care
services, which, it has been said, includes a right to have access to
affordable medicines.32 In its heads of argument the TAC submitted that
the Patents Act must be construed „through the prism of the Constitution‟
and in a way that appropriately balances the rights of a patentee against
the constitutional rights of others, and that it „must be interpreted and
applied to ensure the public interest in patent protection is in fact served
and ensuring other rights are not unreasonably limited thereby‟.

[45] What we are to make of viewing the legislation through the prism
of the Constitution was not developed by the TAC. Section 39(2) indeed
calls upon a court to „promote the spirit, purport and objects of the Bill of
Rights‟ when interpreting legislation, as pointed out by the TAC, but that
does not open the door to changing the clear meaning of a statute. If the

32Minister of Health v New Clicks SA (Pty) Ltd 2006 (2) SA 311 (CC) per Ngcobo J para 514 and
Moseneke J para 706.

clear meaning conflicts with the Bill of Rights then the remedy is to strike
it down, but there has been no challenge to the constitutional validity of
any of the provisions of the Act that are now material. There is also no
suggestion that the meaning of those provisions is not clear. The disputes
centre instead on the application of those provisions to the facts of this
case. On the assumption that the patent is not revocable for want of an
inventive step I cannot see how s 39(2) or the prism of the Constitution
comes into play so as to deny Aventis its right to enforce its patent.

[46] The TAC is on stronger ground when it advances factors to be
taken account of when weighing the balance of convenience. In that
respect it submitted that the broader public interest, and not only the
interests of the litigating parties, must be placed in the scales when
weighing where the balance of convenience lies. Apart from decisions to
that effect in this country,33 we were referred to cases in other
jurisdictions, particularly the United States, where injunctions against
infringement have been refused on that ground.

[47] In EBay Inc. v Mercexchange, L.L.C.34 the United States Supreme
Court affirmed that the ordinary requirements in that country for the grant
of a permanent injunction35 – which include demonstrating that „the
public interest would not be disserved‟ by an injunction – applied as
much to injunctions against patent infringement. We were referred by

33See Bamford v Minister of Community Development and State Auxiliary Services 1981 (3) SA 1054
(C) at 1061D-E; Marinpine Transport (Pty) Ltd v Local Road Transportation Board, Pietermaritzburg
1984 (1) SA 230 (N) at 234D-F; Corium (Pty) Ltd v Myburgh Park Langebaan (Pty) Ltd 1993 (1) SA
853 (C) at 858E-G; Verstappen v Port Edward Town Board 1994 (3) SA 569 (D) at 576H-I.
34EBay Inc v Mercexchange, L.L.C. 547 US 388 (2006) at 392.
35A plaintiff who seeks a permanent injunction must demonstrate: „(1) that it has suffered irreparable
injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for
that injury; (3) that, considering the balance of hardships between the plaintiff and the defendant, a
remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent
injunction‟ - EBay Inc at 391.

counsel for the TAC to four decisions in that country in which that
requirement played a material role in the refusal of an injunction.

[48] In Innogenetics, N.V. v Abbott Laboratories36 the court took
account of the fact that „enjoining [the defendant] from selling its product
could pose a serious risk to the public health if plaintiff [the patentee]
cannot fill the diagnostic market need.‟ Whether that would occur was not
decided but was referred for the hearing of evidence, at which the
„plaintiff will bear the burden of proving by the preponderance of the evidence that
the needs of the Hepatitis C diagnostic market could continue to be met if an
injunction issued against the defendant.‟

[49] In Bard Peripheral Vascular, Inc v W.L.Gore & Associates, Inc,37
the fact that the infringer‟s product had superior medical features weighed
against the grant of an injunction.

[50] Johnson & Johnson Vision Care, Inc v Ciba Vision Corporation38
concerned the sale of contact lenses in infringement of a patent. At the
time the injunction was sought the infringing lenses had been on the
market for five years, they were the largest single-selling lenses in the
United States, they were being worn by approximately 5.5 million
patients, and they were the preferred choice for first fits amongst eye care
practitioners. In refusing an injunction the court said that the evidence
„convinces the Court that millions of innocent contact lens wearers will suffer real
adverse consequences if sale of [the infringing lenses] is enjoined … There will also
be significant disruption, confusion and cost (estimated to be in the hundreds of
millions of dollars) caused by [infringing lens] patients being abruptly told that the

36Innogenetics, N.V. v Abbott Laboratories 578 F. Supp 2d 1079 (W.D.Wis 2007) at 1105.
37Bard Peripheral Vascular, Inc v W.L.Gore & Associates, Inc 2009 WL 920300 (D.Ariz.).
38Johnson & Johnson Vision Care, Inc v Ciba Vision Corporation 712 F.Supp.2d 1285 (M.D.Fla.
2010).

contact lens for which they have been fitted and with which they are satisfied, is no
longer available. Choosing a new lens will at minimum require refitting and the new
lens may not prove as efficacious as the [infringing lens]. Moreover, patients may
have to be refitted more than once until an appropriate lens is found. An unidentified
number will not be able to be refitted appropriately at all.‟

[51] In Edwards Lifesciences AG and Edwards Lifesciences LLC v
Corevale Valve, Inc and Medtronic Corevalve, LLC39 an injunction was
sought against the manufacturing of a prosthetic cardiac valve that could
be implanted without surgery. The infringing valve was being
manufactured in the United State but was being sold abroad. The
evidence established that the infringer was capable of moving its
manufacturing operation to Mexico immediately if an injunction was
granted. In refusing an injunction the court said that
„[t]he public interest would not be substantially advanced or harmed by the issuance
of an injunction, since [the infringer] would be able to continue manufacturing
accused product abroad without seriously affecting the supply of the product available
to the public.‟

[52] The requirements for an interim interdict in this country are more
flexible than those for a permanent injunction in the United States.
Counsel for Aventis accepted, nonetheless, that the „public-interest‟
factors identified in those cases can and ought to be taken into account in
the exercise of our discretion, but amply demonstrated that none of those
concerns arise on the facts of this case.

[53] Bearing in mind the commercial advantage of first-entry to the
generics market, it is common for a patentee of a pharmaceutical product

39Edwards Lifesciences AG and Edwards Lifesciences LLC v Corevale Valve, Inc and Medtronic
Corevalve, LLC 2011 WL 446203 (D. Del).

to enter the market shortly before its patent expires with an alternative
product that will compete with anticipated generics. No doubt it was with
that in mind that Aventis obtained Medicines Control Council registration
in 2006 of a product that it calls Docetere. Docetere is the same product
as Taxotere, but re-branded and priced to compete with generics that can
be expected to enter the market when the patent expires. At the time the
affidavits in this matter were filed Docetere had not yet been placed on
the market.

[54] Both parties filed supplementary affidavits placing new evidence
before us and in each case the evidence was admitted unopposed. It
emerges from the affidavit filed by Cipla that after the interdict had been
refused it launched its product onto the market and that by the end of
March 2012 it was being used in the treatment of some 65-70 patients. On
the other hand, Aventis has also now placed Docetere on the market.

[55] There is no suggestion that Aventis is not able to meet demand for
Taxotere or Docetere, which was the disputed issue in Innogenetics, N.V.
v Abbott Laboratories. Nor can it be said that Cipla‟s product offers
superior medicinal benefits, which was the case in Bard Peripheral
Vascular, Inc v W.L.Gore & Associates, Inc. It is also clear that there will
be no material disruption to patients if an interdict were to be granted, as
there would have been in Johnson & Johnson Vision Care, Inc v Ciba
Vision Corporation. When the application was heard there were no users
of Cipla Docetaxel. By March 2012 there were some 65-70 users, and I
assume that by now there are probably more, but switching to Taxotere or
Docetere for future treatment involves no medicinal disruption. This is
also not a case like Edwards Lifesciences, in which an interdict will have
no practical effect.

[56] The TAC‟s opposition to the grant of an interdict really comes
down to no more than opposition to the monopoly that the law confers
upon a patentee. It submits that those who cannot afford Taxotere, but are
able to afford the price of Cipla Docetaxel, will be prejudiced if
distribution of the latter were to be prohibited. Where the public is denied
access to a generic during the lifetime of a patent that is the ordinary
consequence of patent protection and it applies as much in all cases. To
refuse an interdict only so as to frustrate the patentee‟s lawful monopoly
seems to me to be an abuse of the discretionary powers of a court. But in
any event there will be no material prejudice of that kind on the facts of
this case.

[57] Taxotere, Docetere and Cipla Docetaxel are each sold in dosages of
20 mg and 80 mg. The maximum price at which a medicine may be sold
to the public is what is called its „single exit price‟. The single exit price
of Taxotere is R2 048 for 20 mg and R7 532 for 80 mg.40 The price at
which it is sold to the state by Aventis is R680 for 20 mg and R2 327 for
80 mg. The single exit price of Docetere is R1 100 for 20 mg and R3 850
for 80 mg. The single exit price of Cipla Docetaxel is R1 000 and R3 500
for 20 mg and 80 mg respectively.

[58] It will be apparent, then, that Taxotere is considerably more
accessible than Cipla Docetaxel to patients who are dependent upon
public health care, and there will be no prejudice at all to those patients,
or to the state, if an interdict were to be granted. Patients who are
dependent upon private health care will continue to have access to
Taxotere (albeit at a considerably higher cost) and will have access to

40The prices have all been rounded to the nearest Rand.

Docetere at only a marginally higher cost than Cipla Docetaxel (R100
more for a 20 mg dosage and R350 more for a dosage of 80 mg). Many of
those patients will have access to medical insurance that will meet the
additional cost, and for those who do not, the additional cost of Docetere
is marginal.

[59] Thus the only implication for health care of granting an interdict is
that patients who receive private health care, and who are not able to
recover the cost of treatment from a private medical fund, will be obliged
to pay 10% more for treatment than they might have done had Cipla‟s
product remained on the market. Neither Cipla nor the TAC has identified
any other prejudice that might be suffered by the public.

[60] As to the commercial prejudice to Cipla if an interdict were to be
granted – the loss of the advantage of having the first generic on the
market – Aventis has as much interest as Cipla in establishing the first
foothold in the generic market and the prejudice to it if an interdict is
refused will be precisely the same.

[61] But as appears from Olympic Passenger Service the balance of
convenience is not evaluated in isolation: the stronger the prospects of
success in the main proceedings, the less need for the balance to favour
the applicant, and vice versa. If Aventis eventually establishes the validity
of its patent, and has meanwhile been denied an interdict, it will have lost
the advantage given to it by its monopoly of establishing itself unimpeded
in the generic market before the patent expires. In the interim it will also
have lost sales of Taxotere or Docetere.  On the other hand, if Aventis
does not establish the validity of its patent, and an interdict has
meanwhile been granted, Cipla will have been denied that same

opportunity to establish a foothold in the market, and will have lost sales
of its product. In either event the public interest will not have been
materially affected. The most that can be said is that patients who receive
private health-care, and who are not able to recover the cost of treatment
from a private medical fund, will have been required to pay 10% more for
treatment than they might otherwise have done. In those circumstances
the balance of convenience does not seem to me to fall substantially on
one side or another and the prospects of success or failure in the action
become prominent. In that respect I have already said that such doubt as
there might be as to the validity of the patent seems to me to be slight and
that becomes decisive. In those circumstances I can see no proper ground
for denying Aventis the relief that it claims.

[62] For those reasons
1.
The appeal in the s 51(1) proceedings (Case No. 139/2012) is
dismissed with costs that include the costs of two counsel.
2.
The appeal in the infringement proceedings (Case No. 138/2012) is
upheld with costs that include the costs of two counsel, to be paid by the
respondents jointly and severally. The order of the Commissioner in those
proceedings is set aside and the following order is substituted:
„(a)
Pending the outcome of the action for final relief the respondents
are interdicted from procuring or inducing, aiding and abetting, advising,
inciting or instigating or assisting any other person to infringe claim 1 of
South African Patent no. 93/8936 in the Republic, and from disposing of
or offering to dispose of CIPLA DOCETAXEL and CIPLA
DOCETAXEL solvent.

(b)
The respondents, jointly and severally, are to pay the costs of the
application, including the costs of two counsel, and the costs of the expert
witness Prof Davies.‟

__________________
R W NUGENT
JUDGE OF APPEAL

APPEARANCES:
Case 139/2012
For appellant:
C Puckrin SC

R Michau SC

Instructed by:

Adams & Adams, Pretoria

Honey Attorneys Inc, Bloemfontein

For respondent:
L Bowman SC

A P H Cockrell SC

B du Plessis SC

Instructed by:

Brian Bacon & Associates Inc, Cape Town

Webbers, Bloemfontein

For Amicus Curiae:
S Cowen

A Hassim

U Rugege

Instructed by:

Section 27, Johannesburg

McIntyre & Van der Post, Bloemfontein

Case 138/2012
For appellant:
L Bowman SC

A P H Cockrell SC

B du Plessis SC

Instructed by:

Brian Bacon & Associates Inc, Cape Town

Webbers, Bloemfontein

For respondent:
C Puckrin SC

R Michau SC

Instructed by:

Adams & Adams, Pretoria

Honey Attorneys Inc, Bloemfontein

For Amicus Curiae:
S Cowen

A Hassim

U Rugege

Instructed by:

Section 27, Johannesburg

McIntyre & Van der Post, Bloemfontein