Les Laboratoires Servier and Another v Apotex Inc and Others: CA 3 May 2012

The court was asked as to ‘the availability of the defence of illegality to a claim on a cross-undertaking in damages where (1) the holder of a patent enforceable in this jurisdiction has obtained an interim injunction against the defendant from selling infringing products here, (2) the patent is subsequently held to be invalid and the injunction is discharged, but (3) the goods which the defendant would have sold here, but for the interim injunction, would have been manufactured in a foreign country in breach of a valid patent granted and enforceable there.’
Held: The appeal was allowed.
Etherton LJ said: ‘It is not necessary in order to resolve this appeal to undertake a comprehensive analysis of the decided cases. Such an exercise would in any event be complex, very lengthy and in large part unrewarding. The decisions inevitably turn on their own particular facts. The statements of law or principle they contain are not all consistent or easily reconciled. The jurisprudence in this area has been an evolving one, but its evolution has not followed a consistent pattern.’
The infringement of Servier’s Canadian patent was not a relevant illegality for the purposes of the defence. This was because in dealing with the illegality defence, the court was entitled, ‘to take into account a wide range of considerations in order to ensure that the defence only applies where it is a just and proportionate response to the illegality involved in the light of the policy considerations underlying it.’ That test was not satisfied.


Laws, Etherton, Kitchin LJJ


[2012] EWCA Civ 593, [2012] WLR(D) 138, [2013] RPC 21, [2013] Bus LR 80


Bailii, WLRD


England and Wales


Appeal fromLes Laboratoires Servier and Another v Apotex Inc and others PatC 11-Jul-2007
In a patents claim over a form of the perindopril erbumine compound, an ACE inhibitor used for treating hypertension and cardiac insufficiency, the court held that the patent had been infringed, but that it was invalid. In injunction previously . .

Cited by:

CitedParkingeye Ltd v Somerfield Stores Ltd CA 17-Oct-2012
The claimant company operated parking management for the defendant, charging customers for overparking. The defendant came to believe that the claimant’s behaviour was over-aggressive, and the use of falsehoods, and terminated the contract. The . .
Appeal fromLes Laboratoires Servier and Another v Apotex Inc and Others SC 29-Oct-2014
Ex turpi causa explained
The parties had disputed the validity a patent and the production of infringing preparations. The english patent had failed and damages were to be awarded, but a Canadian patent remained the defendant now challenged the calculation of damages for . .
CitedPatel v Mirza SC 20-Jul-2016
The claimant advanced funds to the respondent for him to invest in a bank of which the claimant had insider knowledge. In fact the defendant did not invest the funds, the knowledge was incorrect. The defendant however did not return the sums . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Contract

Updated: 29 April 2022; Ref: scu.454064