Les Laboratoires Servier & Anor v Apotex Inc & Ors (Rev 1) [2012] EWCA Civ 593 (03 May 2012)

Les Laboratoires Servier & Anor v Apotex Inc & Ors (Rev 1) [2012] EWCA Civ 593 (03 May 2012)

The Court of Appeal held that the illegality defence did not bar Apotex's claim on the cross-undertaking in damages because, after Apotex's concession to deduct from its damages the amount notionally payable for Canadian patent infringement, the policy rationales underlying the illegality principle (consistency, comity, deterrence, and not profiting from one's own wrong) were not sufficiently engaged to justify denying relief. The claim, after deduction, was not substantially founded on unlawful conduct, and denying recovery would result in an unjustified windfall to Servier. The court rejected a rigid or inflexible application of the illegality principle and emphasised a fact-specific,...

Citation
[2012] EWCA Civ 593
Parties
Respondent/claimant: Les Laboratoires Servier; Respondent/claimant: Servier Laboratories Limited; Appellant/defendant: Apotex Inc; Appellant/defendant: Apotex Pharmachem Inc; Appellant/defendant: Apotex Europe Limited; Appellant/defendant: Apotex UK Limited
Jurisdiction
England and Wales
Judgment Date
03 May 2012
Procedural Posture
Appeal From Chancery Division (inquiry as to Damages) / Court of Appeal Judgment
Outcome
Appeal allowed; Apotex's claim on the cross-undertaking in damages is not barred by illegality, subject to deduction for Canadian patent infringement liability.
Legal Topics
Illegality Defence, Cross Undertaking in Damages, Patent Infringement, Public Policy, Foreign Law, Comity
Intellectual Property Civil Procedure Illegality Defence Cross Undertaking in Damages Patent Infringement Public Policy Foreign Law Comity

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Parties

Les Laboratoires Servier

Respondent/claimant

Servier Laboratories Limited

Respondent/claimant

Apotex Inc

Appellant/defendant

Apotex Pharmachem Inc

Appellant/defendant

Apotex Europe Limited

Appellant/defendant

Apotex UK Limited

Appellant/defendant

Procedural Posture

Appeal From Chancery Division (inquiry as to Damages) / Court of Appeal Judgment

Legal Issues

  1. 1 Whether the defence of illegality (ex turpi causa) bars a claim on a cross-undertaking in damages where the lost profits are predicated on manufacture in a foreign country in breach of a valid foreign patent.
  2. 2 Whether Apotex's claim for damages is substantially founded on its own unlawful act under Canadian law.
  3. 3 Whether the court should deduct from damages the amount Apotex would have been liable for in Canada for patent infringement.

Ratio Decidendi

The Court of Appeal held that the illegality defence did not bar Apotex's claim on the cross-undertaking in damages because, after Apotex's concession to deduct from its damages the amount notionally payable for Canadian patent infringement, the policy rationales underlying the illegality principle (consistency, comity, deterrence, and not profiting from one's own wrong) were not sufficiently engaged to justify denying relief. The claim, after deduction, was not substantially founded on unlawful conduct, and denying recovery would result in an unjustified windfall to Servier. The court rejected a rigid or inflexible application of the illegality principle and emphasised a fact-specific,...

Court Disposition

Appeal allowed; Apotex's claim on the cross-undertaking in damages is not barred by illegality, subject to deduction for Canadian patent infringement liability.

Orders

  • Damages awarded to Apotex under the cross-undertaking, subject to deduction of the amount notionally payable to Servier under Canadian law for patent infringement.
  • Servier's defence of illegality dismissed.