Les Laboratoires Servier & Anor v Apotex Inc & Ors (Rev 1)

Les Laboratoires Servier & Anor v Apotex Inc & Ors (Rev 1)

The illegality defence does not bar Apotex's claim under the cross-undertaking because the unlawful manufacture in Canada was low on the scale of culpability, Apotex acted in good faith believing the patent invalid, and the paragraph 26 concession ensures consistency and comity by deducting profits recoverable under Canadian law. The claim for lawful UK sales is not offensive to public policy, and the defence only applies where it is a just and proportionate response to the illegality.

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
Civil Appeal / Appeal From Chancery Division, Inquiry as to Damages Following Discharge of Interim Injunction
Outcome
appeal allowed
Legal Topics
Patent Infringement, Cross Undertaking in Damages, Illegality Defence, Public Policy, Foreign Law, Interim Injunctions
Intellectual Property Civil Procedure Patent Infringement Cross Undertaking in Damages Illegality Defence Public Policy Foreign Law Interim Injunctions

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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

Civil Appeal / Appeal From Chancery Division, Inquiry as to Damages Following Discharge of Interim Injunction

Legal Issues

  1. 1 Whether the defence of illegality bars a claim for damages under a cross-undertaking when the manufacture would have infringed a foreign patent
  2. 2 Whether Apotex's claim relies substantially on unlawful acts under Canadian law
  3. 3 Whether the illegality principle applies to patent infringement absent moral turpitude or knowledge of validity

Ratio Decidendi

The illegality defence does not bar Apotex's claim under the cross-undertaking because the unlawful manufacture in Canada was low on the scale of culpability, Apotex acted in good faith believing the patent invalid, and the paragraph 26 concession ensures consistency and comity by deducting profits recoverable under Canadian law. The claim for lawful UK sales is not offensive to public policy, and the defence only applies where it is a just and proportionate response to the illegality.

Court Disposition

appeal allowed

Orders

  • Apotex's claim under the cross-undertaking is not barred by the illegality defence
  • Damages to Apotex to be reduced by the amount recoverable by Servier under Canadian law for infringement (paragraph 26 concession)