Les 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 what it said would have been an infringing trade, and pleaded ex turpi causa.
Held: The application of the ex turpi causa principle commonly raises three questions: (i) what acts constitute turpitude for the purpose of the defence? (ii) what relationship must the turpitude have to the claim? (iii) on what principles should the turpitude of an agent be attributed to his principal, especially when the principal is a corporation? Each of these questions requires a principled distinction to be made between different kinds of immoral or illegal act and different ways in which they may give rise to claims.
Lord Sumption said: ‘the illegality defence is not engaged by the consideration that Apotex’s lost profits would have been made by selling product manufactured in Canada in breach of Servier’s Canadian patent. A patent is of course a public grant of the state. But it does not follow that the public interest is engaged by a breach of the patentee’s rights. The effect of the grant is simply to give rise to private rights of a character no different in principle from contractual rights or rights founded on breaches of statutory duty or other torts. The only relevant interest affected is that of the patentee, and that is sufficiently vindicated by the availability of damages for the infringements in Canada, which will be deducted from any recovery under Servier’s undertaking in England. There is no public policy which could justify in addition the forfeiture of Apotex’s rights.’

Lord Neuberger, President, Lord Mance, Lord Clarke, Lord Sumption, Lord Toulson
[2014] UKSC 55, [2015] 1 AC 430, [2014] WLR(D) 452, [2014] BUS LR 1217, [2014] 3 WLR 1257, UKSC 2012/0158, [2015] 1 All ER 671, [2015] RPC 10
Bailii, Bailii Summary, WLRD, SC, SC Summary, SC Video
England and Wales
Citing:
At first instanceLes 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 . .
Appeal fromLes 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 . .
See AlsoLes Laboratoires Servier and Another v Apotex Inc and others CA 9-May-2008
Appeal against finding that patent was invalid for lack of novelty, but that if valid the defendant’s product would have infringed it. . .
CitedHolman v Johnson 5-Jul-1775
ex turpi causa non oritur actio
Mansfield LCJ set out the principle of ex turpi causa non oritur actio: ‘The objection, that a contract is immoral or illegal as between plaintiff and defendant, sounds at all times very ill in the mouth of the defendant. It is not for his sake, . .
CitedBowmakers Ltd v Barnet Instruments Ltd CA 1945
An action was brought for the wrongful conversion of machine tools delivered under hire purchase agreements which contravened wartime statutory orders. The plaintiff established its legal title to the goods at issue without relying upon the illegal . .
MentionedPalaniappa Chettiar v Arunasalam Chettiar PC 31-Jan-1962
Malaya . .
CitedEuro-Diam Ltd v Bathurst CA 1990
The illegality defence was invoked in response to a claim on a property insurance.
Held: The court noted the extension of the concept of ex turpi causa non oritur actio: ‘It applies if in all the circumstances it would be an affront to the . .
CitedTinsley v Milligan HL 28-Jun-1993
Two women parties used funds generated by a joint business venture to buy a house in which they lived together. It was vested in the sole name of the plaintiff but on the understanding that they were joint beneficial owners. The purpose of the . .
CitedGray v Thames Trains and Others HL 17-Jun-2009
The claimant suffered severe psychiatric injured in a rail crash caused by the defendant’s negligence. Under this condition of Post-Traumatic Stress Disorder, the claimant had gone on to kill another person, and he had been detained under section . .
CitedMoore Stephens (A Firm) v Stone Rolls Ltd (in liquidation) HL 30-Jul-2009
The appellants had audited the books of the respondent company, but had failed to identify substantial frauds by an employee of the respondent. The auditors appealed a finding of professional negligence, relying on the maxim ex turpi causa non . .
At Patents CourtLes Laboratoires Servier and Another v Apotex Inc and Others PatC 29-Mar-2011
Arnold J considered what kinds of unlawfulness would engage the ex turpi causa principle.
Held: a relevant illegality was one which was sufficiently serious in all the circumstances of the case, including in particular whether the illegal act . .
CitedEveret v Williams 1725
The Highwaymens Case – When the court was invited to take an account between two highwaymen, it not only dismissed the claim as ‘scandalous and impertinent’ but ordered the arrest of the plaintiff’s solicitor and fined him. . .
CitedShackell v Rosier 22-Apr-1836
In consideration that Plaintiff had published a libel at Defendant’s request, and had at the like request consented to defend an action brought against Plaintiff for such publication, Defendant promised to indemnify Plaintiff from the costs of the . .
CitedBurrows v Rhodes 1899
The plaintiff was induced to enlist in the Jameson Raid of 1895, contrary to section 11 of the Foreign Enlistment Act 1870, by the defendants’ fraudulent representation that it had the sanction of the Crown (which would have made it lawful). Kennedy . .
CitedWeld-Blundell v Stephens HL 1920
The plaintiff had been successfully sued for a libel contained in a document which he had supplied to his accountant.
Held: He could not recover the damages he had had to pay to the defamed party from his accountant, who had negligently left . .
CitedParkinson v College of Ambulance Ltd and Harrison 1925
Lush J said of a contract to procure an honour, that ‘[n]o Court could try such an action and allow such damages to be awarded with any propriety or decency.’ . .
CitedHall v Hebert 29-Apr-1993
(Canadian Supreme Court) After they had been drinking heavily together, Mr Hebert, who owned a car, allowed Mr Hall to drive it, including initially to give it a rolling start down a road on one side of which there was a steep slope. The car . .
CitedSafeway Stores Ltd and Others v Twigger and Others ComC 15-Jan-2010
. .
CitedAskey v Golden Wine Co Ltd 1948
Denning J said: ‘It is, I think, a principle of our law that the punishment inflicted by a criminal court is personal to the offender, and that the civil courts will not entertain an action by the offender to recover an indemnity against the . .
CitedColumbia Pictures Industries Inc v Robinson ChD 1986
The plaintiff had obtained an Anton Piller order against a defendant whose business consisted almost entirely in the manufacture and sale of pirated videos.
Held: The injunction had been obtained for an improper purpose and without full . .
CitedState Rail Authority of New South Wales v Wiegold 1991
(New South Wales) The plaintiff was seriously injured in an industrial accident caused by the defendant’s negligence. At first he received payments of worker’s compensation but when these ceased he took to supplementing his income by growing and . .
CitedUnited Project Consultants Pte Ltd v Leong Kwok Onn 16-Aug-2005
(Supreme Court of Singapore – Court of Appeal) A taxpayer sought to recover from his accountant an administrative penalty under a statutory provision dealing with the innocent submission of an incorrect tax return.
Held: In determining whether . .
CitedVita Food Products Inc v Unus Shipping Co Ltd PC 30-Jan-1939
(Nova Scotia) Goods were shipped from Newfoundland under a bill of lading which contained an exemption for loss caused by the servants of the carrier. This exemption was void by the law of Newfoundland, whose legislature had enacted the Hague Rules, . .
CitedBrown Jenkinson and Co Limited v Percy Dalton (London) Limited CA 1957
The claimants owned a vessel on which the defendants shipped a cargo of orange juice, packed in barrels which were old, frail and leaky. The claimants said they would issue a claused bill of lading stating the defects in the barrels. The defendants . .
CitedHounga v Allen and Another SC 30-Jul-2014
The appellant, of Nigerian origin had been brought here at the age of 14 with false identity papers, and was put to work caring for the respondent’s children. In 2008 she was dismissed and ejected from the house. She brought proceedings alleging . .

Cited by:
CitedJetivia Sa and Another v Bilta (UK) Ltd and Others SC 22-Apr-2015
The liquidators of Bilta had brought proceedings against former directors and the appellant alleging that they were party to an unlawful means conspiracy which had damaged the company by engaging in a carousel fraud with carbon credits. On the . .

Lists of cited by and citing cases may be incomplete.

Contract, Torts – Other, Intellectual Property

Leading Case

Updated: 02 November 2021; Ref: scu.538150