Pfizer Limited v. Tyonex Nigeria Limited and Ebamic Pharmacy Limited
Court: Federal High Court
Judgement delivered on January 23, 2007
Citation: 50 NIPJD (FHC. 2008) 25/7/2007
Jurisdiction: Nigeria
Judgement delivered by Justice B.B. Aliyu
Patent Infringement
This case concerned the alleged infringement of Pfizer’s patent relating to Amlodipine Besylate. Pfizer marketed its pharmaceutical product in Nigeria under the brand name NORVASC. The Defendants imported a generic version of the drug from Turkey and marketed it under the brand name AMLOVAS.
Patent(s) in Dispute
| Patent No. | RP 9970 |
| Patented subject matter | Amlodipine Besylate |
| Plaintiff’s product | NORVASC |
| Defendants’ product | AMLOVAS |
| Nature of dispute | Patent infringement |
I. FACTS
On 25 July 2003, the Plaintiff, Pfizer Limited, filed a writ of summons dated July 24, 2003 against Tyonex Nigeria Limited and Ebamic Pharmacy Limited. Pfizer alleged that the Defendants had infringed its patent rights by importing and marketing AMLOVAS, a generic pharmaceutical product containing Amlodipine Besylate.
The Defendants imported AMLOVAS from Turkey and marketed the product in Nigeria. Pfizer lodged a complaint with the appropriate regulatory authority. Following the complaint, the generic product was deregistered, the Managing Director of the 1st Defendant was arrested, and the premises of both Defendants were sealed for one week.
The Plaintiff’s writ, which was duly endorsed with the Statement of Claim, sought the following reliefs:
- A declaration that Patent RP 9970 was valid and had been infringed by the Defendants, Tyonex Nigeria Limited and Ebamic Pharmacy Limited, and all those on whose behalf the Defendants were sued.
- An injunction to restrain the Defendants and each of those upon whose behalf the Defendants were sued whether by themselves, their directors, officers, employees, servants or agents or otherwise howsoever from doing or authorizing the doing of the following acts or any of them, that is to say importing, selling, using or for the purpose of sale or use in Nigeria, stocking the product branded as “AMLOVAS” or any other product containing the product named Amlodipine Besylate or otherwise infringe Patent No. 9970.
- An order for delivery up for destruction on oath of all stock of AMLOVAS tablets or any other product or chemical compound which were in the Defendants’ possession, custody or power which infringe Patent 9970.
- An enquiry as to damages.
- Such further or other relief as the honourable court deemed fit.
- Costs.
The Defendants filed an amended Statement of Defence and a Counterclaim on April 28, 2006. The counterclaim was in these terms:
a. General damages against the Plaintiff arising from the acts of the Plaintiff’s agent/attorney which resulted in the sealing up of the 1st Defendant’s premises and or depriving the 1st Defendant income from his trade in AMLOVAS.
b. A declaration that the detention of the Chief Executive/ Managing Director of the 1st Defendant at the cells of the F.C.I.D. Alagbon Close, for several days by or at the instance of the Plaintiff, their agents, servants, attorneys and or privies amounts to a serious violation of the 1st Defendant’s right to personal liberty and dignity of the person guaranteed under sections 33, 34 and 35 of the 1999 Constitution and Articles 4, 5 and 6 of the African Charter on Human & Peoples Right (Ratification and Enforcement) Act Cap. 10, Laws of the Federation of Nigeria, 1990.
c. Exemplary and aggravated damages for unlawful violation of the 1st Defendant’s fundamental rights as assessed by the court.
II. ISSUES
The principal issues concerned the validity of Pfizer’s patent rights in relation to Amlodipine Besylate and whether the Defendants’ dealing in AMLOVAS, a pharmaceutical product containing Amlodipine Besylate, infringed those rights.
III. JUDGEMENT
The Federal High Court ruled in favour of the Plaintiff. In considering the validity of the patents, the Court considered expert evidence concerning Amlodipine Besylate and whether the invention was new and had been anticipated by prior knowledge. The Court preferred the evidence of the Plaintiff’s expert witnesses, Professor Coker and Professor Barany, to the evidence presented by Professor Ifudu for the Defendants.
The Court found that there was no previous knowledge made public of the superior physical and chemical properties of Amlodipine Besylate. It further found that the practical application of besylate salt to amlodipine was not obvious before the Plaintiff’s discovery and that the evidence did not establish that Amlodipine Besylate formed part of the prior art before the applications for the patents.
The Court consequently ruled in favour of Pfizer in its patent infringement action against Tyonex (Nig.) Ltd. and Ebamic Pharmacy Ltd. The Court awarded Pfizer ₦5 million in general damages for the infringement of Patent No. RP 9970 and dismissed the Defendants’ counterclaim..
Appellate History
The Defendants appealed the decision to the Court of Appeal in Tyonex (Nig.) Ltd. & Anor. v. Pfizer Limited, Appeal No. CA/L/25/08.
On 24 June 2010, the Court of Appeal allowed the appeal and set aside the Federal High Court’s decision. The Court of Appeal held that the Defendants had been denied a fair hearing because they were not afforded an opportunity to cross-examine Professor Barany, whose affidavit evidence the trial court had relied upon in reaching its decision. The Court held that no valid judicial pronouncement could flow from the flawed procedure and therefore did not proceed to determine the remaining issues in the appeal.
The dispute subsequently proceeded to the Supreme Court in Tyonex Nigeria Limited & Anor. v. Pfizer Limited, SC.360/2010, decided on 3 May 2019. The Supreme Court considered, among other matters, the Court of Appeal’s failure to determine the remaining issues raised before it and the treatment of the Defendants’ counterclaim. The Supreme Court ultimately ordered that the case be remitted to the Federal High Court for retrial.