Date: 19980918
Docket: T-2248-93
OTTAWA, ONTARIO, Friday, this 18th day of September, 1998
PRESENT: THE HONOURABLE JUSTICE McGILLIS
| IN THE MATTER OF an application for an |
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| Order pursuant to Section 55.2(4) of the Patent Act and Section 6 of the Patented Medicines (Notice of Compliance) Regulations |
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BETWEEN:
ELI LILLY AND COMPANY, AND
ELI LILLY CANADA INC.
Applicants,
- and -
NOVOPHARM LIMITED, AND
THE MINISTER OF NATIONAL HEALTH AND WELFARE
Respondents.
REASONS FOR ORDER AND ORDER
[1] UPON hearing the submissions of counsel, I have concluded that the motion should be granted.
[2] In restoring the judgment of the Trial Division in this matter, the Supreme Court of Canada ordered that Novopharm Inc. ("Novopharm") was entitled to its costs throughout. Counsel for the parties have agreed that, by virtue of that Judgment and section 51 of the Supreme Court Act , R.S.C. 1985, c.-26, as amended, Novopharm is entitled to its costs in the proceedings before the Trial Division. Counsel have further agreed that the Federal Court Rules, 1998 apply to the assessment of costs in this matter. However, I cannot accept the qualification advanced by counsel for Eli Lilly and Company and Eli Lilly Canada Inc. ("Eli Lilly") that the Tariff from the previous Federal Court Rules continues to apply. In my opinion, the Federal Court Rules, 1998 apply in their entirety in this matter.
[3] Counsel for Eli Lilly submitted that the Court could not make a lump sum award of costs or give directions to the assessment officer to grant costs to Novopharm on an increased scale over Tariff B, Column III. In support of his submission, he relied on the decision MacMillan Bloedel (Saskatchewan) Ltd. v. Consolboard Inc. (1981), 58 C.P.R. (2d) 100 (F.C.A.), a decision of Ryan J. sitting alone on a motion to enlarge party-and-party costs in a patent infringement action. In that decision, Ryan J. stated as follows:
| The judgment of the Supreme Court of Canada awarding costs of the appeal in the Federal Court of Appeal is, as I read it, the usual or standard award of costs, costs which would, of course, be subject to taxation; and the judgment is clearly final. This being so, this Court, in my view, has no authority on an application under para. (7) of the Rule to substitute the award of a fixed or lump sum for the costs awarded by the Supreme Court judgment. |
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[4] In order to determine whether the principles enunciated in MacMillan Bloedel (Saskatchewan) Ltd. v. Consolboard Inc. continue to apply, it is useful to review briefly the relevant provisions of the Federal Court Rules, 1998.
[5] Under Rule 403, a party may bring a motion for directions to be given to the assessment officer respecting any matter referred to in Rule 400, whether or not the judgment of the Court included an order for costs. In the present case, the judgment of the Trial Division, as restored by the Supreme Court of Canada, now includes an order granting costs to Novopharm. As a result, Novopharm is entitled, by virtue of Rule 403, to request the Court to give directions to the assessment officer in respect of any matter referred to in Rule 400. Under Rule 400(4), the Court "... may fix all or part of any costs by reference to Tariff B and may award a lump sum in lieu of, or in addition to, any assessed costs." As a result, even after the Court has rendered a judgment including costs, it may give directions to an assessment officer, including a direction to award a lump sum in lieu of any assessed costs.
[6] Counsel for Eli Lilly submitted, on the basis of MacMillan Bloedel, that the Court is precluded from granting an increased award of costs or a lump sum in lieu of assessed costs. I cannot accept that submission. In my opinion, the MacMillan Bloedel decision, rendered by a single judge of the Federal Court of Appeal under the previous Federal Court Rules, does not preclude the Court from exercising the broad, discretionary powers over the amount and allocation of costs provided for in the Federal Court Rules, 1998.
[7] In determining the appropriate directions to be given to the assessment officer, I have carefully considered the oral and written submissions of counsel. I have also considered the factors outlined in subsection 400(3) of the Federal Court Rules, 1998, particularly those concerning the result of the proceeding, the importance of the issues and the amount of work involved. I have decided, in the exercise of my discretion, to direct the assessment officer to award Novopharm a lump sum in the amount of $42,000.00 in lieu of assessed costs. In making this decision, I have also considered Rule 3, which requires the " ... just, most expeditious and least expensive determination of any proceeding ...". Counsel for the parties took three hours to argue the motions before me. In my opinion, it would be inconsistent with the general principle in Rule 3 to permit a further lengthy proceeding to take place before an assessment officer, since the matter was fully and ably argued before me.
[8] IT IS ORDERED THAT the motion is granted. The assessment officer is directed to award Novopharm a lump sum of $42,000.00, inclusive of disbursements, in lieu of any assessed costs.
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