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Pfizer Inc. v. Polyking Pharmaceutical Limited and Anor.

Federal High Court

Judgement delivered on Wednesday August 5, 1992
Citation: 35 NIPJD [FHC. 1992] 178/1992
Suit No. FHC/L/CS/178/1992        Jurisdiction: Nigeria

 Judgement delivered by Sanyaolu J.

Appearances: Mr. O. B. Ogunkeye – For the Plaintiff/Applicant

CITED IN

Suit No. FHC/UY/CS/47/2003 – Rev. (Dr.) C.J.A. Uwemedimo & Anor. v. Mobil Producing Nig. Unlimited

Excerpt from citation:

“It was held in Pfizer Incorporation v. Polyking Pharmaceutical Limited and Anor. – (1998) 1 F.H.C.L.R. 1 at 2, that “a patentee’s right of action to sue on his patent accrued from the date he applied for the grant, but that right cannot entertain until after the grant…”

SUMMARY OF FACTS, FULL CASE AND JUDGEMENT

The Plaintiff/Applicant — Pfizer Inc., brought an action against the Defendant — Polyking Pharmaceutical, for the infringement of their Patent. The Plaintiff averred that they were the owners of Patent No. RP 9708 in respect of a chemical compound “Piroxicam”. According to the Plaintiff, the Defendant infringed their patent by importing for sale “Rossiden Capsules”, which contained the same compounds Piroxicam as that of Plaintiff.

II. FULL CASE

The Plaintiff’s claim as endorsed in the writ of summons was for:

1. A declaration that Patent No. RP 9708 is valid and has been infringed by the Defendants and each of those on whose behalf the Defendant is sued.

2. An Injunction to restrain the Defendants jointly and severally and each of those upon whose behalf the Defendants are sued, whatever acting by themselves or their directors, officers, employees, servants or agents or any of them or otherwise howsoever from doing the following acts or any of them:

i.Infringing the Patent No. RP 9708 aforesaid

ii. Importing, selling, using or stocking for the purpose of sale the pharmaceutical product branded as ROSIDEN Manufactured by SHIN POONG PHARM CO. Ltd. of C.P.O. Box 4491 Seoul Korea.

iii. An Order for delivery up or destruction upon Oath of all ROSIDEN Capsules and any other patented product in relation to which the Patent No. RP9708 aforesaid is infringed or any article in which that product is inextricably comprised which are in the possession or custody of the Defendants or of any those whose behalf the Defendants are sued.

iv. N100,000,000 as damages against the Defendants jointly and severally for Infringement of the Plaintiffs Patent. Further or other reliefs.

Simultaneously, on the same day, that is the 30th day of July, 1992, the Plaintiff filed a motion ex-parte praying that the court grant the following reliefs:

1. That the Plaintiff may sue the Defendants on their own behalf and as representing all members of the class defined as “all persons importing, selling, or stocking for the purpose of trade a pharmaceutical preparation branded as ROSIDEN and made by a company named SHIN POONG PHARM. CO. LTD. of Seoul, Korea”.

2. That the Defendants and each of those upon whose behalf the Defendants are sued, whether acting by themselves their servants or agents or any of them or otherwise howsoever be restrained until further Order from doing or authorizing the doing of the following acts or any of them that is to say, importing stocking for the purpose of trade, selling, offering for sale, inviting offers to acquire or distribution for the purposes of sale the pharmaceutical preparation branded ROSIDEN and made by SHIN POONG PHARM. CO. LTD. of Seoul Korea.

3. That the Defendants whether jointly or severally and whether acting by themselves their officers, directors, partners, employees, servants, agents or any of them or otherwise howsoever do forthwith deliver and surrender up to the Plaintiffs firm of legal Practitioners and or the Legal Practitioner from the Plaintiffs firm of Legal Practitioners serving this order for preservation pending trial of this action or further Order all units of the aforesaid pharmaceutical preparation branded as ROSIDEN and ·all other materials which constitute evidence of the fact of the infringement of the Plaintiffs patent. No. RP 9708 and the volume of transaction or trade which had been done by the Defendants such as, order forms, invoices, bills, delivery orders and receipts which are in the possession of the Defendants, their officers, directors, partners, servants or agents or any of them.

4. That the defendants whether jointly or severally and whether acting by themselves, their officers, directors, partners, employees, servants or agents or any of the persons appearing to be in charge of the premises hereinafter specified do forthwith permit a Legal Practitioner from Messrs Allan & Ogunkeye of Western House (13th Floor) 8/10 Broad Street Lagos, the firm of Legal Practitioners for the Plaintiff herein one other employee of the said firm of Legal Practitioners and such other persons not exceeding four in numbers (excluding the said employees) as may be duly authorized by the Plaintiff and a Police Officer for the purpose of preventing a breach of the peace, to enter and remain upon the premises o.f the Defendants situated at:

(i)       11 Enitan Street, Aguda, Surulere, Lagos.

(ii)      Plot 14 Sholabomi Crescent, Aguda, Surulere, Lagos.

or each part or parts thereof of the said premises on any day of the week (to include Saturdays and Sundays) at any hour between 8.00 o’clock in the morning and 6.30 o’clock in the evening for the purpose of:

a. taking into possession and removing there from into the possession and custody of the Plaintiffs said firm of Legal Practitioners pending trial or further Order, all units of the said ROSIDEN and any other pharmaceutical product infringing the Plaintiffs Patent No. RP 9708 and all materials, order form, invoices, bills delivery orders and receipts delivered up or surrendered by the Defendants, their officers, directors, partners, employees, servants or agents pursuant to paragraph 4 hereof.

b. Inspecting, photographing and looking for the said ROSIDENT and other infringing pharmaceutical product and documents including photographing the Defendant’s premises.

5. That the Defendants whether acting by themselves, their officers, directors, employees, servants or agents or any of them or otherwise howsoever do within 48 hours of obtaining possession of any unit of ROSIDEN or any other pharmaceutical products which infringes the Plaintiffs patent No. RP 9708 and documents as herein defined subsequent to the service of the Order of the Court hereupon do surrender them into the custody of the Plaintiffs firm of Legal Practitioners for preservation until trial or further Order.

6. That Leave may hereby be granted that, upon default of compliance with any provision of an order made pursuant hereto by the Defendants or any of the persons on whose behalf the Defendants are sued or any person appearing to be in charge of any premises or stalls in which the said ROSIDEN is found the Plaintiff be at liberty to apply to the Court for committal to prison of any such person upon due notice to him or her without the Plaintiff being required to seek further leave of court after the said default before making such an application.

7. That the Plaintiff may serve any Order made pursuant hereto on all persons upon whose behalf the Defendants are sued by advertising same in any Newspaper or Magazine circulating throughout the country.

8. That the Defendants and each of the persons upon whose behalf the Defendants are sued whether jointly or severally be at liberty to apply to this Honourable Court to have the Order of this Court made pursuant to this application or any part thereof set aside upon giving 24 hours’ notice to the Plaintiffs firm of Legal Practitioners.

9.That the costs of and incidental to this application be cost in the cause.

AND for such further or other Orders as this Honourable Court may deem fit to make in the circumstances.

III. SANYAOLU J.

In moving the application, learned counsel for the Plaintiff Applicant informed the court that the prayers are sought pursuant to Order 13. Rule 14 of the High Court of Lagos (Civil Procedure) Rules 1972, Section 9 of the Federal High Court Act 1973, Order 20, Rules 3 & 4, Order 28, Rule 7 & Order 10 Rule 5(c) of the Federal High Court (Civil Procedure) Rules 1976 and the inherent jurisdiction of this Court. He referred to Order 15 Rule 12 of the White Book 1988 pages 208 & 209 at paragraph 15/12/1 thereof and submitted that this Court has in a case in suit No. FHC/L/40/89 in Re Welcome Foundation Ltd. v. Opeoluwa Co. granted an Anton Piller Order against a represented class of defendants. Further, that an Anton Piller Order requires that the Applicant must show a strong prima-facie case and relied on the White Book 1988, page 485 paragraph 22/3/36 thereof.

Learned Counsel informed  the  Court  that  the  Plaintiffs  claim  is  for  the infringement of Patent No. 9708 and that in the affidavit in support of the motion; it is deposed that the compound which is a medicinal substance with the generic name of “PIROXICAN” falls within Patent No. 9708. He also stated that the Defendants are selling the products comprised of the substance without the authority of the Plaintiff who is the Patentee and are therefore infringing patent right. He submitted that patent is infringed by selling or importing, stocking for purpose of trade without the permission of the patentee and relied in this context on Section 6(1) (a) of the Patent & Design Decree No. 60 of 1990. Further, that the protection granted by the patent is determined by the scope of the claim. That the affidavit in support, contain exhibits Al – 8 which are the letters Patent and specific pages of the complete specification as referred to in paragraph 4 of the affidavit; and that Exh. Bis evidence that the substance which they are claiming falls within the ambit of Patent No. 9708.

He informed the Court that the affidavit in support in its paragraph 11 thereof ties ROSIDEN to the named Defendant and that Exhibit D2 is the receipt of purchase and also shows the name and address of the 1st Defendant. Learned Counsel submitted that in view of Exhs. C, Dl, D2 & Ba strong prima-facie case has been made out. Citing the case of Re Welcome Foundation v. Opeoluwa supra, as well as the case of E.M.J. Records Ltd. v. Kudhail & Ors 1983 F.S.R. page 36, he submitted that in view of their averments in paragraphs 12-18 of the affidavit in support, a case has been made for an ex-parte interim injunction against the class sued. Finally, Learned Counsel submitted that Order 10 Rule 5 of the Federal High Court (Civil Procedure) Rules 1976 authorizes this Court to direct substituted service by advertising in the Newspapers where for any reason personal service cannot be conveniently effected, and urged the Court to grant the application in terms of the motion papers.

This application again is one of the curious and unusual applications in that it involves the grant of an Anton Piller Order or injunction in the form of an ex-parte application. In the case of Anton Pillar K.G. v. Manufacturing Process Ltd. 1975 F.S.R. page 55. It was held that in most exceptional circumstances, where Plaintiffs had a very strong prima-facie case, actual or potential damage to them was very serious and there was clear evidence that defendants possessed vital material which they might destroy or dispose of so as to defeat the ends of justice before any application inter partes could be made, the Court had inherent jurisdiction to order defendants to permit plaintiff representatives to enter defendants premises to inspect and remove such material, and that in the very exceptional circumstances the Court was justified in making the order sought on the Plaintiffs ex-parte application.

In the above-mentioned case, Lord Denning likened an “Anton Piller Order” to a “search Warrant in disguise” and warned that no one would wish to whittle down in the slightest, the principle established in the leading case of Entick v. Carrington 2 Wils K.B 275.

The principle established in the Anton Piller case (supra) has been followed by our Courts in the case of Ferodo Ltd. v. Unibross Stores 1980 F.S.R. page 489 and some other cases through the grant of ex-parte orders of injunction in the form of Anton Piller Orders in actions for infringement of certain registered trademarks.

As I pointed out in suit No. FHC/L/CS/118/92 Solignum Ltd. v. Rogers Adetola & Others what bothers me in this type of application for an Anton Pillar Order is whether or not it will be in the interest of justice to grant the application by way of motion-ex-parte, having regard to the pronouncements of the Supreme Court in the case of Kotoye v. C.B.N. & Others (1989) 1 N. WLR. (Part 98) page 419 to the effect that “Orders 20 and 33 of the Federal High Court Rules must be interpreted and applied in such a way as not to run counter to the letters and spirit of Section 33 of the 1979 Constitution”.  As Suit No. FHC/L/CS/118/92 is now the subject of an Appeal, I shall for the moment refrain from commenting on the issues raised therein.

However, suffice it to say at this stage that one of my reasons for judgment in the case. in question is that an applicant for an Anton Piller Order in form of an Ex-parte Order must amongst other things make out a real case of urgency or any other exceptional circumstances to warrant the grant of the Order.

In other words, that a Plaintiff Applicant has the added duty of showing that there has been a true impossibility of giving notice of motion to the other side – see the case of Bates v. Lord Hailsham of MaryLebone (1972) All E.R. Page 1019 in particular the dictum of Megarry J. at page 1025   thereof.

In the light of the above, I shall now advert myself to the affidavit of urgency filed in support of the application the relevant paragraphs of which in my view are as follows:

  1. “The Plaintiff in making this application hopes to be able to gain access to evidence of the Defendant’s unauthorized trade and distribution for the purpose of sale of the pharmaceutical preparation branded ROSIDEN made by Shin Poong Pharmaceutical Company Ltd. of Seoul Korea without alerting the Defendants and putting them on guard.
  2. Once a writ of Summons is issued in this suit, information may get to any of the Defendants thus providing them with their opportunity of removing the infringing products thereby preventing any Court order from being executed upon the infringing products.
  3. If this application is not heard urgently and the writ of Summons is issued and served on the Defendants, the Defendants will be alerted of the impending action and will consequently adopt precautionary measures which might defeat the purposes of the application if eventually granted”.

It seems to me therefore that by the combined effect of paragraphs 3, 4 & 5 of the affidavit in support of the application quoted above, the Plaintiff Applicant has made out a real case of urgency and on the totality of the documentary evidence before the Court that he has established a prima-facie case for the grant of the order sought in the interest of justice in order to protect the infringement of-the Plaintiffs Patent No. RP 9708.

The case of E.M.l. Records Ltd. V. Kudail & Ors and the case of Re Welcome Ltd. V. Opeoluwa & Co. (supra) relied on by the Plaintiff Applicant are direct authorities.

for the proposition that the Court has jurisdiction to grant an ex-parte order against a represented class of defendants where there is sufficient identity. of interest amongst those trading under that name to justify the grant of such an order.

Accordingly it is hereby ordered as prayed in the terms contained in paragraphs 1, 2, 3, 5, 6. 7, 8 & 9 of the motion papers filed in Court on the 30th day of July 1992 by the Plaintiff application.

  1. That the prayer contained in paragraphs 4 (a) & (b) of the Plaintiffs application Ex-parte application is granted without a condition for a Police Officer to accompany” the search party – subject to the delection of the words “and a Police Officer for the purpose of preventing a breach of the peace” contained thereof.
  2. That the Plaintiff applicant in the present case through their Counsel do enter into an undertaking to indemnify the Defendants in respect of damages if any, which may arise should the Court later finds that it ought not to have made the Order.
  3. This suit should be made returnable on 28/9/92.

IV. JUDGEMENT

The court held that an applicant for an Anton Pillar order in form of an Ex-parte order must amongst other things make out a real case of urgency or any other exceptional circumstances to warrant the grant of the order. In other words, a Plaintiff/Applicant has the added duty of showing that there has been a true impossibility of giving the notice of motion to the other side. (Sanyaolu, J. at page 253 paragraph 2 and 3).

Where a plaintiff has a strong prima facie case, actual or potential damage to them being serious and there is clear evidence that the defendants possessed vital material which they might destroy or dispose off so as to defeat the ends of justice before any application inter parties could be made, the court has inherent jurisdiction to order defendants to permit plaintiff representative to enter defendants’ premises to inspect and remove such materials and in the very exceptional circumstances the court is justified in making the order sought on the Plaintiffs ex-parte application.   (Sanyaolu, J at Page 252 Para. 2)

Anton Pillar Order and Section 33, 1979 Constitution –

Per SANYAOLU, J at Page 252 Para. 4

  1. “As I pointed out in suit No. FHC/L/CS/118/92 Solignum Ltd. and Roger Adetola & Others what bothers me in this type of application for an Anton Piller Order is whether or not it will be in the interest of justice to grant the application by way of motion-ex-parte, having regard to the pronouncements of the Supreme Court in the case of Kotoye v. C.B.N. & Others (1989) 1 N. W.L.R (Part 98) Page 419 to the effect that “Orders 20 and 33 of the Federal High Court Rules must be interpreted and applied in such a way as not to run counter to the letters and spirit of Section 33 of the 1979 Constitution”.

Injunction against representative Class:

  1. The court has jurisdiction to grant an ex-parte order against a represented class of defendants where there is sufficient identity of interest amongst those trading under that name to justify the grant of such an order. (E.M.I. Records Ltd v. Kudail & Ors. (1983) F.S.R. 36 (followed) (Sanyaolu, J at Page 253 Para. 5).

 

V. CASES REFERRED TO IN THE RULING

Nigerian Cases:

  1. E.M.I. Records Ltd. v. Kudail & Ors. (1983) F.S.R. 36 (followed) Ferodo v. Unibross Stores (1980) F.S.R. 489 (referred to)
  2. Kotoye v. C.B.N. (1980) 1 NWLR (Pt. 98) 419 (referred to)
  3. Solignum Ltd v. Adetola FHC/L/CS/118/92 (unreported) – (referred to)
  4. Wellcome Foundation Ltd v. Ope Oluwa & Co. FHC/L/40/89 (unreported (followed).

Foreign Cases:

  1. Anton Piller K.G. v. Manufacturing Process Ltd (1975) F.S.R. 55 (applied) Bates v. Lord Hailsham (1972) 3 ALL E.R. 1019 (referred to)
  2. Entick v. Carrington (1965) 2 K.B. 275 (referred to).

 

VI. STATUTES REFERRED TO IN THE RULING

Constitution of the Federal Republic of Nigeria, 1979 – Section 33

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