Institut Pasteur v Genelabs: HIV-2 Patent Infringement & Validity Dispute

Institut Pasteur and Pasteur Sanofi Diagnostics sued Genelabs Diagnostics Pte Ltd and Nagase Singapore (Pte) Ltd in the High Court of Singapore on 31 March 2000, alleging patent infringement of their HIV-2 retrovirus patent. The plaintiffs sought a declaration of patent validity, an injunction, damages, and delivery up of infringing articles. The defendants counterclaimed for revocation of the patent, arguing lack of novelty, inventive step, and insufficient disclosure. The court ruled in favor of the plaintiffs, upholding the patent's validity and finding infringement by the defendants, except that no damages or account of profits would be ordered against the Second Defendant by virtue of Section 69(1) of the Patents Act. The counterclaim was dismissed.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Judgment for Plaintiffs

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Institut Pasteur sued Genelabs for infringing its HIV-2 patent. The court upheld the patent's validity and found infringement, granting an injunction.

1.7 Decision Date

30 March 2000

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Nagase Singapore Pte Ltd	Defendant	Corporation	Judgment against Defendant	Partial	Jason Chan of Allen & Gledhill Tan Wee Meng of Allen & Gledhill Tan Tee Jim S C of Allen & Gledhill
Genelabs Diagnostics Pte Ltd	Defendant	Corporation	Judgment against Defendant	Lost	Jason Chan of Allen & Gledhill Tan Wee Meng of Allen & Gledhill Tan Tee Jim S C of Allen & Gledhill
Institut Pasteur	Plaintiff	Other	Judgment for Plaintiff	Won	Celeste Ang of Drew & Napier Tony Yeo of Drew & Napier Gerald Koh of Drew & Napier
Pasteur Sanofi Diagnostics	Plaintiff	Corporation	Judgment for Plaintiff	Won	Celeste Ang of Drew & Napier Tony Yeo of Drew & Napier Gerald Koh of Drew & Napier

3. Judges

Judge Name	Title	Delivered Judgment
Tay Yong Kwang	Judicial Commissioner	Yes

4. Counsels

Counsel Name	Organization
Jason Chan	Allen & Gledhill
Tan Wee Meng	Allen & Gledhill
Tan Tee Jim S C	Allen & Gledhill
Celeste Ang	Drew & Napier
Tony Yeo	Drew & Napier
Gerald Koh	Drew & Napier

4. Facts

Institut Pasteur owns a European patent for HIV-2 retrovirus.
Pasteur Sanofi Diagnostics is the exclusive licensee of the patent.
Genelabs Diagnostics manufactured and sold HIV-2 diagnostic kits.
Nagase Singapore distributed Genelabs' HIV-2 diagnostic kits.
Plaintiffs alleged Defendants infringed claims 12, 13, 19, 20, 22, 24, 33, 34, 35, 38 and 39 of the patent.
Defendants argued the patent was invalid due to lack of novelty, inventive step, and insufficient disclosure.
Plaintiffs sent a warning letter to Genelabs in Taiwan regarding the infringing kits.

5. Formal Citations

Institut Pasteur and Another v Genelabs Diagnostics Pte Ltd and Another, Suit 1762/1998, [2000] SGHC 53

6. Timeline

Date	Event
1981-03-26	Collaboration Agreement signed between First Plaintiff and Second Plaintiff
1986-01-22	French application registered, Patent claimed priority
1987-01-01	First Defendant began exhibiting and selling its HIV-2 Western Blot (Version 1.2) diagnostic kits
1989-11-02	European Patent granted
1990-07-11	Collaboration Agreement renewed between First Plaintiff and Second Plaintiff
1991-01-01	First Defendant began exhibiting and selling its HIV Blot 2.2 diagnostic kits
1993-01-15	Patent re-registered in Singapore
1995-02-23	Patents Act came into operation
1997-06-01	Second Defendant entered into an agreement with the First Defendant to be the sole distributor in Malaysia
1998-07-11	Plaintiffs' private investigators offered to dispose of GENELABS DIAGNOSTICS HIV BLOT 2.2 through the Second Defendants
1998-07-17	Plaintiffs’ private investigators purchased GENELABS DIAGNOSTICS HIV BLOT 2.2 from the Second Defendants
1998-07-29	First Plaintiff sent kits to Professor Jacques Henri Max Cohen for testing
1998-09-25	Plaintiffs’ solicitors sent letter of demand to Defendants
1998-10-05	Writ of Summons issued
2000-03-31	Judgment issued

7. Legal Issues

Patent Infringement
- Outcome: The court found that the Defendants had infringed the Plaintiffs' patent by making, offering to dispose of, and disposing of products using the patented invention.
- Category: Substantive
- Sub-Issues:
  - Making infringing products
  - Offering to dispose of infringing products
  - Disposing of infringing products
  - Using patented processes
Patent Validity
- Outcome: The court upheld the validity of the patent, finding that it was novel, involved an inventive step, and was sufficiently disclosed.
- Category: Substantive
- Sub-Issues:
  - Lack of Novelty
  - Lack of Inventive Step
  - Insufficient Disclosure
Laches and Acquiescence
- Outcome: The court rejected the defenses of laches and acquiescence, finding that the Plaintiffs had acted with reasonable dispatch after becoming aware of the infringement.
- Category: Procedural
- Sub-Issues:
  - Unreasonable Delay
  - Detrimental Reliance

8. Remedies Sought

Declaration of Patent Validity
Injunction
Damages
Account of Profits
Delivery Up of Infringing Articles
Full Discovery
Costs

9. Cause of Actions

Patent Infringement

10. Practice Areas

Patent Infringement Litigation
Commercial Litigation

11. Industries

Healthcare
Biotechnology
Pharmaceuticals

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
General Tire & Rubber Co. v Firestone Tyre & Rubber Co Ltd	English Court of Appeal	Yes	[1972] RPC 457	England and Wales	Cited for the principle of construing prior art documents at the date of publication and the requirement for clear and unmistakable directions for anticipation.
Asahi Kasei Kogyo KK’s Application	N/A	Yes	[1991] RPC 485	United Kingdom	Cited as following the principles in General Tire regarding anticipation.
PLG Research Ltd v Ardon International Ltd	N/A	Yes	[1993] FSR 197	United Kingdom	Cited as following the principles in General Tire regarding anticipation.
Merrell Dow Pharmaceutical Inc v Norton & Co Ltd	N/A	Yes	[1995] RPC 233	United Kingdom	Cited as following the principles in General Tire regarding anticipation.
Von Heydon v Neustadt	N/A	Yes	(1880) 50 LJ Ch. 126	N/A	Cited for the principle that anticipation cannot be based on a mosaic of extracts from different documents.
Lowndes’ Patent	N/A	Yes	(1928) 45 RPC 48	N/A	Cited for the principle that anticipation requires a clear and specific disclosure of something like the patentee's invention, not a combination of elements from prior documents.
Van der Lely N.V. v Bamfords Ltd	N/A	Yes	[1961] RPC 296	N/A	Cited for the definition of a 'person skilled in the art' as neither a genius nor an idiot.
Windsurfing International Inc v Tabur Marine (Great Britain) Ltd	N/A	Yes	[1985] RPC 59	N/A	Cited for the definition of a 'person skilled in the art' as the normally skilled but unimaginative addressee in the art at the priority date.
Van der Lely N.V. v Ruston’s Engineering Co Ltd	N/A	Yes	[1985] RPC 461	N/A	Cited for the definition of a 'person skilled in the art' as a hypothetical unimaginative technician skilled in the particular art.
Catnic Components Ltd v Hill & Smith Ltd	House of Lords	Yes	[1982] RPC 183	England and Wales	Cited for the principles of purposive construction of patent specifications and identifying the essential features of the invention.
Improver Corporation v Remington Consumer Products Ltd	N/A	Yes	[1990] FSR 181	N/A	Cited for the series of questions to determine infringement by a variant.
Valensi v British Radio Corporation	N/A	Yes	[1973] RPC 337	N/A	Cited for the principle that disclosure does not entail minute, step-by-step directions, and a person skilled in the art is expected to display a reasonable degree of skill and common knowledge.
Mentor Corp. v Hollister Inc	N/A	Yes	[1993] RPC 7	N/A	Cited for the principle that disclosure does not entail minute, step-by-step directions, and a person skilled in the art is expected to display a reasonable degree of skill and common knowledge.
Biogen Inc. v Medeva PLC	House of Lords	Yes	[1997] RPC 1	England and Wales	Cited for the principle that sufficiency of disclosure is to be determined as at the date of filing of the application.
Syed Ali Redha Alsagoff v Syed Salim Alhadad	N/A	Yes	[1996] 3 SLR 410	Singapore	Cited for the essential requirements for a case of acquiescence.
Scan Electronics (S) Pte Ltd v Syed Ali Redha Alsagoff	Court of Appeal	Yes	[1997] 2 SLR 13	Singapore	Cited for the applicability of laches and acquiescence.
British and Malayan Trustees Ltd v Sindo Realty Pte Ltd	N/A	Yes	[1998] 2 SLR 495	Singapore	Cited for the applicability of equitable jurisdiction to refuse relief on the ground of acquiescence, laches or otherwise.
Kalman v PCL Packaging (UK) Ltd	N/A	Yes	[1982] FSR 406	United Kingdom	Cited for the proposition that the offer to dispose must be one made in Singapore to dispose of the infringing product in Singapore, but distinguished by the court.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act	Singapore
Patents Act Section 66	Singapore
Patents Act Section 69(1)	Singapore
Patents Act Section 75	Singapore
Patents Act Section 13(1)	Singapore
Patents Act Section 14	Singapore
Patents Act Section 15	Singapore
Patents Act Section 25(4)	Singapore
Patents Act Section 25(5)	Singapore
Limitation Act Section 32	Singapore

15. Key Terms and Keywords

15.1 Key Terms

HIV-2
Patent Infringement
Patent Validity
Antigen
Antibody
Western Blot
Diagnostic Kit
Inventive Step
Novelty
Disclosure
Laches
Acquiescence
18 mer sequence

15.2 Keywords

Patent
Infringement
HIV-2
Diagnostics
Validity
Singapore
Genelabs
Institut Pasteur

17. Areas of Law

Area Name	Relevance Score
Patents	95
Intellectual Property Law	80
Civil Litigation	30
Contract Law	20
Commercial Disputes	15

16. Subjects

Patent Law
Intellectual Property
HIV-2 Diagnostics