Les Laboratoires Servier & Another v Apotex Inc & Others [2011] EWHC 730 (Pat) was decided today by Mr Justice Arnold in the Patents Court, England and Wales. IP Finance thanks Bristows, which acted for Servier, for the following information:
This morning, the High Court of England and Wales handed down an unprecedented judgment which will impact on the complex financial assessment that every company has to make before asking the Court to grant an interim injunction pending trial.
The judgment is the latest in an ongoing dispute which is the first case in recent times in which the Court has been asked to consider the level of damages payable under a cross undertaking given in exchange for an interim injunction in a patent case. In an unusual twist, the judgment ... found that Apotex should pay back to Servier the £17.5 million plus interest that Servier was ordered to pay to Apotex in 2008 after the hearing of the damages inquiry. Liz Cohen, Partner at Bristows comments:
"... As a matter of public policy, a party should not be able to claim compensation for being prevented from infringing one patent on the basis that it would have infringed another patent, if the injunction had not been granted. It further reinforces the principle that there is no automatic right to compensation under a cross undertaking. This will undoubtedly impact on the complex financial assessment that every company has to undertake before launching a product at risk in the UK”
In August 2006, Servier obtained an injunction against Apotex preventing it from marketing and selling its generic perindopril in the UK pending trial. In exchange for the injunction, Servier gave Apotex a cross undertaking, agreeing to comply with any order the Court made to pay compensation to Apotex for any damage suffered as a result of the injunction. In July 2007, the patent was invalidated, the injunction was lifted and an inquiry into the level of damages suffered by Apotex was ordered. Judgment in the damages inquiry was given by the High Court in October 2008. Shortly before this judgment was handed down, Servier asked the Court for permission to amend its pleading to enable it to argue that, as matter of public policy, Apotex should not be able to recover any damages under the cross undertaking due to the fact that it would have manufactured its generic perindopril in Canada, an act which had recently been found to infringe Servier’s Canadian Patent. The judge in the High Court refused the amendment and Servier was ordered to pay Apotex £17.5 million damages plus interest.
Servier appealed this decision to the Court of Appeal. In February 2010, the Court of Appeal allowed Servier’s amendment and on 15-16 March 2011, the High Court heard the public policy issues relating to Servier’s amended pleading. The judgment handed down this morning reflects the finding of the High Court that Apotex should not be able to rely upon its own illegality to benefit from the cross undertaking given by Servier".
It's most unusual for a judge an IP proceedings of this nature to have the chance to apply the principle of
ex turpi causa, and Mr Justice Arnold was swift to take the opportunity to do so.
