AstraZeneca AB v Ranbaxy: Striking Out Defence and Counterclaim in Patent Infringement Suit

AstraZeneca AB sued Ranbaxy (Malaysia) Sdn Bhd in the High Court of Singapore, alleging potential infringement of Singapore Patent No. 49283. Ranbaxy filed a Defence and Counterclaim challenging the validity of this patent, as well as Singapore Patent Nos. 32642 and 32641. The Assistant Registrar Tan Sze Yao granted AstraZeneca's application to strike out portions of Ranbaxy's Defence and Counterclaim, finding that Ranbaxy's pleadings disclosed no reasonable cause of action or defence.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Application granted; disputed pleadings in the Defence and Counterclaim struck out.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

AstraZeneca sues Ranbaxy for potential patent infringement. Court strikes out Ranbaxy's defense and counterclaim challenging patent validity on procedural grounds.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Ranbaxy (Malaysia) Sdn BhdDefendantCorporationDefence and Counterclaim struck outLost
Astrazeneca ABPlaintiffCorporationApplication grantedWon

3. Judges

Judge NameTitleDelivered Judgment
Tan Sze YaoAssistant RegistrarYes

4. Counsels

Counsel NameOrganization
Bryan GhowsMirandah Law LLP
Prithipal SinghMirandah Law LLP
Denise MirandahMirandah Law LLP
Mohamed Niroze IdroosDrew & Napier LLC
Gerald KohDrew & Napier LLC

4. Facts

  1. AstraZeneca sued Ranbaxy for potential infringement of Singapore Patent No. 49283.
  2. Ranbaxy filed a Defence and Counterclaim challenging the validity of several patents.
  3. AstraZeneca applied to strike out portions of Ranbaxy's Defence and Counterclaim.
  4. Ranbaxy sought declarations that its actions would not infringe AstraZeneca's patents.
  5. Ranbaxy argued that notices served under the Medicines Act satisfied requirements under the Patents Act.
  6. AstraZeneca argued that Ranbaxy was attempting to challenge claims not asserted against them.

5. Formal Citations

  1. Astrazeneca AB v Ranbaxy (Malaysia) Sdn Bhd, Suit No. 501 of 2011/V-Summons No. 5106 of 2011/Q, [2012] SGHC 7

6. Timeline

DateEvent
Suit No. 501 of 2011 filed
V-Summons No. 5106 of 2011 filed
Ranbaxy served notices on AstraZeneca pursuant to s 12A(3)(a) of the Medicines Act
Affidavit of Jeyabalan Thangarajah filed
Judgment reserved
Decision Date

7. Legal Issues

  1. Striking Out Pleadings
    • Outcome: The court found that the disputed pleadings disclosed no reasonable cause of action or defence and ordered them to be struck out.
    • Category: Procedural
    • Sub-Issues:
      • No reasonable cause of action or defence
      • Frivolous or vexatious pleadings
      • Prejudice, embarrassment or delay of fair trial
      • Abuse of process of the court
    • Related Cases:
      • [1843] 3 Hare 100
      • [2001] 1 SLR(R) 771
  2. Patent Infringement
    • Outcome: The court did not rule on actual infringement, but addressed the procedural aspects of raising invalidity as a defence.
    • Category: Substantive
  3. Validity of Patent Claims
    • Outcome: The court held that the defendant could not challenge the validity of patent claims that the plaintiff had not alleged were infringed.
    • Category: Substantive
    • Related Cases:
      • [1996] FSR 383
      • [2007] EWHC 1900 (Pat)
  4. Declaration of Non-Infringement
    • Outcome: The court found that the defendant had not met the requirements for seeking a declaration of non-infringement under s 78 of the Patents Act.
    • Category: Substantive
    • Related Cases:
      • [2010] EWHC 3249 (Pat)
      • [1989] RPC 131

8. Remedies Sought

  1. Declaration of Patent Infringement
  2. Striking Out of Defence and Counterclaim

9. Cause of Actions

  • Patent Infringement

10. Practice Areas

  • Intellectual Property Litigation
  • Patent Infringement

11. Industries

  • Pharmaceuticals

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Henderson v HendersonCourt of ChanceryYes[1843] 3 Hare 100England and WalesEndorsed the principle that parties must bring their whole case forward in litigation and cannot re-litigate matters that could have been raised previously.
Lee Hiok Tng (in his personal capacity) v Lee Hiok Tng (executors and trustees of the estate of Lee Wee Nam, decd)Singapore High CourtYes[2001] 1 SLR(R) 771SingaporeEndorsed the principle established in Henderson v Henderson regarding the need to bring forward the whole case in litigation.
Organon Teknika Limited v F. Hoffmann-La Roche AGEngland and Wales High CourtYes[1996] FSR 383England and WalesInterpreted the equivalent provision under English law regarding when the validity of a patent may be put in issue.
Nokia Oyj v IPCom GmbH & Co KGEngland and Wales High CourtYes[2010] EWHC 3249 (Pat)England and WalesDistinguished between declarations of non-infringement pursuant to the inherent jurisdiction and declarations of non-infringement under s 78 of the Patents Act.
Arrow Generics Ltd v Merck & Co IncEngland and Wales High CourtYes[2007] EWHC 1900 (Pat)England and WalesAddressed the issue of whether s 74(2) of the UK Patents Act applies where the patent in question has not yet been properly registered.
MMD Design & Consultancy Ltd’s PatentUnknownYes[1989] RPC 131UnknownAddressed the interpretation of the rule in s 71(1)(a) of the UK Patents Act (in pari materia with s 78(1)(a) of the Patents Act).

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Rules of Court (Cap 322, R 5, 2006 Rev Ed)Singapore
Patents Act (Cap 221, 2005 Rev Ed)Singapore
Patents Act (Cap 221, 2005 Rev Ed) s 82Singapore
Patents Act (Cap 221, 2005 Rev Ed) s 78Singapore
Medicines Act (Cap 176, Rev Ed 1985)Singapore
Medicines Act (Cap 176, Rev Ed 1985) s 12ASingapore

15. Key Terms and Keywords

15.1 Key Terms

  • Patent
  • Infringement
  • Validity
  • Defence
  • Counterclaim
  • Striking Out
  • Declaration of Non-Infringement
  • Product Licence
  • Medicines Act
  • Patents Act
  • Independent Claims
  • Dependent Claims

15.2 Keywords

  • patent infringement
  • patent validity
  • striking out
  • defence
  • counterclaim
  • declaration of non-infringement
  • pharmaceuticals
  • Singapore

17. Areas of Law

Area NameRelevance Score
Patents95
Pharmaceutical Patents60
Patent Validity50
Administrative Law30
Civil Procedure25

16. Subjects

  • Intellectual Property
  • Patents
  • Civil Procedure