
The Canadian litigation went to trial in April 2011, after US proceedings were concluded. Apotex argued that Sanofi should not be able to come to Canada to get an award in respect of the same Apo-clopidogrel in respect of which they had already secured judgment and payment in the US. As a matter of law, Apotex argued that the settlement agreement governed and precluded claims in any litigation, worldwide, in respect of the infringing US sales. The trial judge disagreed, noting that the settlement agreement provided that the parties agreed “to settle the litigations between them involving the U.S. Patent No. 4,847,265.” There was no mention of the Canadian patent, which was the basis of the Canadian litigation. In other words, the parties had agreed to settle litigation in respect of the US patent, not to settle litigation in respect of the US sales.
Having failed with that argument, Apotex came at the problem from a different angle, and asserted res judicata and abuse of process. The court held that there was no res judicata, as the cause of action was different, being based on the Canadian patent rather than the US patent. That left the court’s inherent jurisdiction to prevent an abuse of process. The court dismissed this argument summarily, in a couple of sentences.
Ultimately the matter was moot because the court held the Canadian patent to be invalid, but the underlying problem is a general one. The result respecting the settlement agreement is idiosyncratic, though it is a reminder of the need to take care to cover all the angles in a settlement (Merpel says that the agreement did cover very precisely what was intended – or at least what Sanofi intended). But the objection to double recovery has considerable force as a matter of principle, even in those cases in which no settlement agreement had ever been entered into in any jurisdiction. This Kat’s view is that the court reached the right conclusion on res judicata in the strict sense. That leaves abuse of process to address the problem of double recovery; or perhaps it might better be dealt with at the remedial stage, rather than as a defence. While this problem must arise with some regularity, this Kat was unable to find any law addressing the matter directly. This Kat is admittedly not an expert in this particular area, and feels he must be missing something. Can any readers help?
Double Recovery in Transnational Patent Litigation
Reviewed by Norman
on
Friday, January 06, 2012
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