Digests

Wellcome Foundation Ltd. v. Apotex Inc.

T-80-83

2001 FCT 174, MacKay J.

12/3/01

18 pp.

With respect to reference to assess extent of patent infringement and for accounting of profits proceedings--Reasons dealing with submissions of both parties in relation to plaintiffs request for costs to be assessed with special directions and establishing grounds for fixing costs by taxing officer, if counsel cannot agree upon amount of costs in light of directions issued on March 7, 2000 in supplementary judgment concerning costs--Conduct of defendant Apotex and counsel did not warrant award of costs on solicitor-client basis for trial of reference--Defendant failed to produce documents in timely manner--No agreement on any facts until after hearing commenced, and certain facts acknowledged by defendant on basis of information put to it many months before hearing--Furthermore, full costs and expenses of plaintiffs' expert accountants should be recoverable as costs disbursed by plaintiffs in view of valuable help in reconstructing from Apotex' limited documents reasonable representation of Apotex' operations, determination of defendant's sales and profits attributable to infringing use of plaintiffs' patented process--Applicable principles: (1) under r. 400, full discretion in Court over amount and allocation of costs, according to various factors; (2) Tariff B intended to reasonably reflect costs incurred in litigation, but not to defray actual costs in full in any given case; unless otherwise ordered, costs awarded on party and party basis assessed in accord with Tariff B, column III; combination of factors relevant to costs may, in given case, warrant award above column III; (3) motion for special directions to be given to assessment officer in respect of costs not essential where issue of costs, as here, arising at conclusion of hearing on reference concerning extent of infringement and accounting of profits to be paid, continuing proceedings to specify relief in quantitative terms following judgment in action where costs claimed by successful party; here, Court acting pursuant to r. 400 without further formal motion required; (4) complexity in assessing extent of infringement by analysis of many samples required, in accountants' extensive work required to establish basis for extent of infringement and accounting of profits, in number of issues to be resolved; (5) discretion in r. 400 permitting award of costs on level of solicitor-client costs, if warranted, but exercise of discretion would require explanation of same sort as for solicitor-client costs; (6) even though very substantial difference between amounts claimed and amounts awarded, success not divided, plaintiffs successful--Court directing plaintiffs' senior counsel's work with U.K. plaintiff in preparing, assessing and reporting on analyses of 115 sample batches of defendant's product, for reasonable period of time actually spent for travel and consultation in U.K. and for up to 2 similar days in Canada, shall be allowed in accord with column IV of Tariff B for services as may be allowed by Court--In addition, expense of return air fare, hospitality class, Toronto to London allowed, as expense for transport and maintaining integrity of 115 samples--Court directing costs allowable shall include allowance for reasonable out-of-pocket expenses incurred in analyzing defendant's samples, but not including salaries or allowances of employed staff, or capital expenditures or general operating expenses of laboratory attributable to analysis of defendant's samples--Court directing costs allowable shall include counsel fees for senior counsel at upper level of Tariff B, column IV, item 27, in relation to preparation of trial in working with expert accountants for up to 4 working days, of up to 7 hours each, spent in analyzing and reviewing defendant's inventory and financial records and preparing, and revising quantity and revenue schedules in preparation of evidence in advance of hearings of reference--Court directing costs allowable include provision for one, but not two, junior counsel in relation to services and fees under items 13 and 14 of Tariff B, without duplicating costs claimed in relation to clauses (i) and (iii) of present order--Court directing costs allowable for services of counsel generally in Tariff B, except services specified in clauses (i) and (iii) and services in relation to assessment of costs, shall be at maximum level of column III with discretion in assessment officer to exceed that level for reasons deemed exceptional--Court directing plaintiffs' allowable disbursements, to be included in recoverable costs, include (a) reasonable expenses and fees for payments in relation to three expert witnesses who testified at reference, including travel and accommodation expenses, in participating in, planning and analyzing results of analyses of defendant's 115 sample batches; in drafting and executing affidavits, participation in reference proceedings; (b) all reasonable fees and expenses charged to, and paid by them for work of their expert accountants; (c) reasonable fees charged to and paid by them for services of U.K. and European patent agent, rendered as independent consultant after retirement from employment by U.K. plaintiff--Court directing costs of time reasonably spent by plaintiffs' senior counsel in reviewing with accounting experts, invoices and shipping documents produced by defendant after hearing of reference commenced, shall be assessed at upper level of Tariff B, column IV, item 13(a), for fees for preparation for hearing--Court directing costs allowed shall include reasonable costs to be proven by plaintiffs for in-house photocopying, and failing proof thereof, allowance of $1,500 for costs of such copying --Federal Court Rules, 1998, SOR/98-106, r. 400, Tariff B, columns III, IV.