Date: 20090120
Docket: T-1742-03
Citation: 2009 FC 51
BETWEEN:
AVENTIS
PHARMA INC.
Applicant
and
APOTEX INC. and
THE MINISTER
OF HEALTH
Respondent
and
SCHERING CORPORATION
Respondent/Patentee
ASSESSMENT OF
COSTS - REASONS
Charles E. Stinson
Assessment
Officer
[1]
The
Respondent, Apotex Inc. (Apotex), served a Notice of Allegation (NOA) alleging
that Canadian Patent No. 1,341,206 (the ‘206 Patent) was invalid for a
number of reasons. The Applicant (Aventis) brought this application for
judicial review for a declaration that the NOA was deficient and alternatively
for an order prohibiting the Minister of Health from issuing a Notice of
Compliance (NOC) permitting Apotex to market rampiril (a pharmaceutical
addressing hypertension) until after the expiration of the ‘206 Patent. The
Court dismissed the application for judicial review and awarded costs to Apotex
to include mid-level Column III counsel fees, second counsel including
attendance at cross-examinations and reasonable disbursements (the Decision).
[2]
Consistent
with my approach outlined in paragraph 2 of Halford v. Seed Hawk Inc.,
[2006] F.C.J. No. 629 (A.O.) [Halford], my account in these reasons
of the respective positions of the parties is at times somewhat summary in
nature. It is detailed enough for an understanding of the notion of issues
between the parties, but should be read keeping in mind that there are nuances
and details of the issues in the record, all of which I have read and
considered. My findings in Halford above, Biovail Corp. v. Canada
(Minister of National Health and Welfare) (2007), 61 C.P.R. (4th)
33, [2007] F.C.J. No. 1018 (A.O.), aff’d [2008] F.C.J. No. 342 (F.C.) [Biovail]
and Abbott Laboratories v. Canada (Minister of
Health)
(2008), 66 C.P.R. (4th) 301, [2008] F.C.J. No. 870 (A.O.) [Abbott]
(under appeal) set out my views on threshold of proof for categories of costs
and approach to their assessment. Paragraphs 68 to 71 inclusive of Abbott
above summarize the subjective elements and the notion of rough justice in
assessments of costs. I have not summarized the respective positions of the
parties on distributive nature relative to an award of costs and on sufficiency
of evidence as Abbott sufficiently canvassed those issues.
[3]
I
have not summarized the respective evidence and submissions of the parties
concerning counsel fee items 2 (claimed 11 times for the affidavits in the
record); 15 (compendium) and 24 (travel time of counsel) as I rely on my
findings in Abbott above for their disposition. I allow a single fee
item 2 for preparation of Apotex’s record and fee item 27 (such other services
as the assessment officer may allow) for the compendium instead of fee item 15
(written argument where requested by the Court). I disallow the six fee item 24
claims in the absence of a visible direction from the Court (see paragraph
3 of Abbott). Items of costs not in issue are allowed as presented.
[4]
Aventis
conceded the fee item 27 claim for preparation of the bill of costs, but
objected, on the basis that it was too late and that there might be divided
success on the assessment of costs, to Apotex’s attempt before me to add fee
item 26 (assessment of costs) for its appearance before me. As in Abbott,
I disallow fee item 27 and allow fee item 26.
I. Apotex’s Position
[5]
The
Respondent, Schering Corporation (Schering) owns the ‘206 Patent. It licensed
Aventis to market rampiril. Apotex argued generally that its case
presentation was complicated by the presence of Schering’s materials in
support of Aventis. Apotex noted the affidavit of Harry R. Radomski (the
Radomski Affidavit), one of the counsel with direct carriage of this matter,
sworn June 28, 2006, asserting the complexity of this matter and its importance
for access to the rampiril market with sales of hundreds of millions, if not
billions, of dollars. The Radomski Affidavit does not present the underlying
invoices and receipts, but its evidence on individual items of costs,
coupled with the appearance before me by counsel for Apotex to establish each
disbursement further to Tariff B1(4), proves prima facie the relevance
and reasonableness of the disbursements. As Aventis chose not to cross-examine
Mr. Radomski nor demand production of receipts, and its evidence does not
undermine that of Apotex, it cannot now challenge the credibility of the evidence.
[6]
Apotex
argued that a five-day hearing involving several expert witnesses for each of
three discrete parties and resulting in a lengthy decision (109 pages)
demonstrated the complexity of this matter. Apotex succeeded on an issue (sound
prediction) of invalidity of the ‘206 Patent, but had to prepare for the
other issues raised in this matter, which included five other issues of
invalidity. The position of Aventis, i.e. that a review of the Decision
will assisting in determining which, if any, of Apotex’s items of costs are
assessable, is flawed because paragraph 371 of the Decision has already
confirmed entitlement by Apotex, leaving only as issues of assessment whether
the claimed counsel fee items are properly at mid-level Column III and the disbursements
are reasonable.
II. Fees
[7]
Counsel
for Apotex conceded that he could not speak to his own witness (Dr. Robert
McClelland) between the first day (July 15, 2004) of the cross-examination of
the latter on his expert affidavit and the resumption (September 30, 2004) of
cross-examination, but argued that a second fee item 8 (preparation for
cross-examination) should be allowed as counsel had to prepare for
re-attendance several months later, i.e. to put himself in the position he was
in at the instant of the adjournment, and billed the client accordingly. Apotex
argued that fresh work (fee item 8) was required for the re-attendance
(interval from August 4 to August 20, 2004) on the continued
cross-examination of Dr. William Pirkle on his expert affidavit on behalf of
Aventis. Aventis should have raised concerns about such items before the
hearing judge issued her directions on costs.
[8]
Apotex
disagreed with the submission that various claims for fee item 9 (attendance on
cross-examination of affiants) be reduced by factoring out recess or lunch
breaks by arguing that counsel continued to work during those breaks to ensure
expeditious completion of the cross-examinations. A similar argument applies to
fee item 14 (attendance at hearing). The presumption in the position of
Aventis of an eight-hour day is inconsistent with the actual sitting times.
III. Disbursements
[9]
Apotex
argued that the submission of Aventis that travel (claimed at $17,947.44)
should be disallowed ignores the finding in Carlile v. Canada (M.N.R.)
(1997), 97 D.T.C. 5284 (T.O.) that the real costs of litigation should be
recognized even if the proof is less than absolute. Here, it is obvious that
six trips by Apotex’s counsel for cross-examinations were necessary.
[10]
Apotex
argued generally that the submission of Aventis that Apotex’s total
($315,267.79, about one-half of that spent by Aventis) for experts was
excessive is irrelevant because the lack of success by Aventis indicates that
its strategy for experts was deficient and because, further to Apotex Inc.
v. Egis Pharmaceuticals, 4 O.R. (3d) 321 at 331 (Ont. Ct. Gen. Div.),
hindsight should not be determinative of assessments of experts’ costs. Apotex
properly prepared its experts, preferred by the Court on the issue (sound
prediction) determinative of this litigation, and those experts for issues not
ultimately determinative, but still integral to the case.
[11]
Apotex
argued that the Decision did not find that the evidence of Dr. Imre Csizmadia
and that of Dr. Garland Marshall duplicated or overlapped one another. The
submission of Aventis that reductions should occur further to the perceived
weight or not given to experts should have been made to the hearing judge as
such consideration is beyond the scope of an assessment of costs. An assessment
officer should not attempt to analyse from the perspective of the hearing judge
how the various experts did or did not affect the outcome as the latter would have
been in a much better position to do so.
[12]
Apotex
discounted the relevance of Janssen-Ortho Inc. v. Novopharm Ltd. (2007),
57 C.P.R. (4th) 58 (F.C.) [Jansenn-Ortho] by arguing
that the circumstances there, i.e. the hearing judge in the best position to
have evaluated the worth of the experts for the outcome directing the
assessment officer to not allow costs for certain experts, are different from
those here, i.e. no such directions and no basis for an assessment officer to
attempt such an evaluation.
[13]
Apotex
argued that the photocopying claim ($72,302.75) was reasonable, based as it was
on $0.25 per page charged to the client: see Janssen-Ortho above
approving of that rate and of eight copies per document. The submission of
Aventis ignores the size of Apotex’s legal team and the record (49 volumes
comprising about 16,000 pages). Disbursements for telephone calls ($2,661.25);
telecopies ($448.97); couriers ($3,550.03); meetings ($492.05);
parking/cab/mileage ($567.53); transcripts ($24,902.28); process servers
($500.00); file retrieval ($74.10); record retrieval ($449.55); prior art
obtained solely for this litigation ($4,977.17); computer time ($6,612.83),
search fee ($100.00); file histories ($57.00); Quicklaw™ ($225.08) and
LPIC (Lawyers Professional Indemnity Corporation) levy ($50.00) have been
routinely approved by assessment officers.
IV. The Position of Aventis
A. Fees
[14]
Aventis
argued generally that the presence of Schering did not complicate the
litigation for Apotex as the respective positions of the former two were
identical. Aventis argued that fee item 8 (preparation) contemplates only
a single recovery regardless of re-attendance on the cross-examination and the
second fee item 8 claims for Dr. Pirkle and Dr. McClelland should therefore be
disallowed. That is, the wording for fee item 8 is “an examination” and not
“examination” meaning only one fee item 8 is permissible for each affiant
because an adjournment be it five minutes, an hour for lunch, several days or
indefinite postponement does not result in a new and compensable examination.
There was no evidence of additional preparation during the adjournments.
Aventis should not have to pay for the cost of Dr. Pirkle’s adjournment which
was requested by Apotex to accommodate the latter’s schedule. Aventis did not
raise these objections before the hearing judge because there was no indication
that such costs would be sought. Therefore, the assessment officer’s discretion
to disallow them is unfettered.
[15]
Aventis
argued that the transcripts of the cross-examinations indicate that too many
hours are claimed under fee item 9 (attendance for six of the affiants) because
of inappropriate charges for breaks. This equates to double recovery as
fee item 8 already addresses preparation.
[16]
Aventis
argued that Apotex’s estimate of 8 hours per day used for fee item 14
(attendance at hearing) resulted in 40 hours total instead of the actual
duration of 31 hours. As above, breaks are not compensable because the wording
for item 14 provides only for per hour “in court”. As well, fee item 13 already
addresses any element of preparation in breaks.
B. Disbursements
[17]
Aventis
argued generally for disbursements that Apotex carries the burden to prove its
costs, which it did not do here. Relative to Apotex’s reliance on Browne v.
Dunn (1893), 6 R. 67 (H.L.), Aventis does not attack Mr. Radomski’s
credibility, but rather whether his evidence sufficiently discharged the burden
of proof. The burden was not on Aventis to request invoices. For travel, the
only evidence is the assertion in paragraph 11 of the Radomski Affidavit that
Apotex incurred costs for travel to the cross-examinations of opposing
witnesses and that they were entirely reasonable in the circumstances. This is
insufficient proof given the absence of any invoices and of details of the
individual costs particular to each trip, of who was involved and of relevance
and necessity for trips outside of Canada for which
teleconferences might have been a viable alternative. The bald figure
($17,947.44) presented precludes breakdown by cross-examinations, meetings with
witnesses, taxis, meals and hotels.
[18]
Aventis
argued that there is no evidence of the number of photocopies and their
relevance. Photocopies for five lawyers, including counsel who did not appear
at the hearing, were excessive and a luxury as were their costs ($72,302.75) in
general given that Aventis prepared and paid for the Application Record
supplied to Apotex. At the rate of $0.25 per page in the evidence, this claim
represents over 250,000 pages. A significant portion of the Application Record
consisted of the prior art documents listed in the NOA, copies of which Apotex
would already have had prior to institution. The five copies of the Application
Record made by Apotex amount to 80,000 pages leaving unaccounted some 200,000
pages.
[19]
Commercial
copy outlets charge as little as $0.05 per page. The threshold is not what the
practice of the law firm or the Registry is, but rather what each photocopy
costs, for which there is no evidence. If anything is to be allowed, it should
reflect the limit of two counsel in the award of costs, i.e. 16,000 pages (the
length of the Application Record) x $0.10 per page x 2 = $3,200. The result
in Jansenn-Ortho is irrelevant because the eight copies allowed there
were, unlike here, for the party responsible for producing the record.
[20]
For
telephone, telecopies, couriers, meetings and parking/cab/mileage, Aventis
conceded that some charges would have been incurred, but argued that the
absence of details essentially constitutes a blank cheque for Apotex. The
parking/cab/mileage charge duplicates the claim for travel. A similar argument
applies to transcripts, process servers, file retrieval and record retrieval.
There is not a single invoice and no evidence of number, relevance and
necessity. A similar argument applies to computer time, search fees and
Quicklaw™. Aventis conceded that some case law has approved charges prior to
institution, but on the basis of relevance for the outcome, i.e. there is no
guarantee that service of an NOA will result in litigation. These items overlap
as well. Therefore, disallow all of them.
[21]
Aventis
argued that prior to institution Apotex already had to have had the 108 pieces
of prior art relied upon in the NOA and that there was no evidence that they
had not already been obtained and paid for relative to prior proceedings. A
similar argument applies to file histories and the LPIC levy, i.e. there is no
evidence to directly relate them to this litigation.
[22]
Aventis
argued that the 7% calculation for GST applied to the total claim ($451,184.92)
for disbursements reflects the lack of care and attention in formulating
the bill of costs in turn demonstrating the problem in simply approving the
costs claimed in the face of bald and inadequate statements of reasonableness
and necessity. For example, no GST was payable for the accounts of foreign
experts.
[23]
Aventis
argued generally that Apotex’s evidence for the claimed costs of the experts
does not discharge the burden of proof relative to reasonableness, relevance,
details of hours worked, hourly rate, description of work, the absence of
duplicative work and of excessive charges all equating to a blank cheque for these
experts.
[24]
Aventis
noted that the evidence of Dr. Haralambos Gavras, limited to the issue of
utility, was unnecessary and irrelevant for the outcome. As paragraph 298 of
the Decision found that he used the wrong test for utility and paragraph 322
found that Apotex failed on the issue of utility, nothing should be allowed.
His charge was outrageous, i.e. no details of how his account of $69,482.89 was
calculated for a seven-page affidavit and cross-examination of 2.7 hours.
If something is allowed, $10,000 would be sufficient.
[25]
Aventis
noted that the evidence for Dr. Sergei Danilov consists simply of a line item
in the bill of costs supported by the bare statement in the Radomski Affidavit
that his charge ($36,376.40) was reasonable and necessary. Aventis asserted
that it is not hindsight analysis for it to argue that it should not have to
pay for Apotex’s decision to introduce evidence found irrelevant and improper
in paragraphs 304 and 305 of the Decision because it unfairly raised new
facts and went beyond the parameters of Apotex’s case defined by and limited to
the allegations in the NOA. This was prejudicial to Aventis who had to lead its
evidence first in the judicial review proceeding triggered and shaped by the
NOA.
[26]
Aventis
noted that, as for Dr. Gavras, paragraphs 309 and 311 of the Decision found
that Dr. Marshall applied the wrong test for utility. The record indicates
that his evidence was irrelevant for the outcome as it addressed matters not in
issue, i.e. the number of compounds covered by the ‘206 Patent. As some of his
evidence might have been relevant for the outcome and given that Aventis spent
less than one-half of what Apotex did for its experts, a 50 percent benchmark
could be applied to his charge of $55,973.31.
[27]
Aventis
conceded that some of the evidence of Dr. Edward Lee-Ruff was relevant for the
outcome, but noted as for other experts that the Decision (paragraphs 207 –
215) found his evidence flawed or sloppy and irrelevant, and that Apotex had
failed to discharge the burden of establishing that the disclosure in Example
20A was insufficient. Aventis should not have to pay for that nor for issues
advanced further to an unsure and unfocused strategy of asserting an excessive
number of allegations in the hopes of success for one of them. Again, if
anything is allowed, apply the 50 percent benchmark to his charge of
$36,244.
[28]
Aventis
argued relative to Dr. McClelland as for the other experts that the absence of
evidence equates to a blank cheque. It may be prudent in litigation with
considerable dollars at stake to prepare evidence duplicative of another expert
(Dr. Lee-Ruff on sufficiency of disclosure) in case one falters in
cross-examination, but that is a luxury for which Aventis is not liable. Apply
the 50 percent benchmark to his charge of $61,926.38.
[29]
Aventis
argued that nothing should be allowed for Dr. Csizmadia because, as for
Dr. Marshall, Apotex instructed him to address a number of compounds not
in issue resulting in evidence duplicative of that of Dr. Marshall. A charge of
$44,200 for a two-page affidavit and 0.8 hours of cross-examination is
outrageous.
[30]
Aventis
argued that nothing is allowable for the charge ($11,064.81) for Gerald Oyen
because he gave opinion evidence on matters of law, an area reserved
exclusively for the hearing judge, or on patents, an area for which he did not disclose
any credentials.
V. Assessment
A. Fees
[31]
The
direction here for mid-level Column III counsel fees means that I do not have
flexibility as in paragraph 23 of Aventis Pharma Inc. v. Apotex Inc.,
2008 F.C.J. No. 1238 (A.O.) [Aventis Pharma Inc.], to address a second
fee item 8 claim for the same witness by a single fee item 8 allowance at the
maximum value in the available range. As there, I examined the affidavit and
transcript of cross-examination of each affiant. They do not reflect problems
or issues so considerable or distinct as to warrant a second and separate fee
item 8 for each: I disallow these two claims.
[32]
The
evidence of Aventis provided the results of its analysis of transcripts as to
net hours for the fee item 9 claims in issue, but not the cross-references
to underlying page numbers. Accordingly, I noted each instance of a break
throughout to determine the accuracy of the calculations. Some were not
recorded with a number of minutes, but with a descriptive phrase such as “short
recess” on page 163 of the transcript of Dr. Lee-Ruff’s cross-examination on
his affidavit (the references ensuing in these reasons to cross-examinations
each refer to the cross-examination on the respective affidavit of the various
affiants) (Application Record, Volume XL). Lunch breaks were not lengthy. In
paragraph 24 of Aventis Pharma Inc. above, I reduced the fee item 9
claims as requested. Here, I am not so inclined in every instance. The
cross-examination of Dr. Danilov for example had two brief breaks of ten and seven
minutes respectively, but no lunch break. I allow the fee item 9 claim as
presented for him as I view these breaks as below for Dr. McClelland.
[33]
The
transcript (Application Record, Volume XXXVIII) for Dr. McClelland’s
cross-examination (July 15, 2004) shows start and end times of 10:35 a.m. and
5:05 p.m. respectively giving rise to the 6.5 hours claimed. Reducing 6.5 hours
by the two recesses (14 and 24 minutes respectively, at pp. 48 and 127) and the
lunch break (1 h 35 min, at p. 74) gives 4.28 hours (4 h 17 min).
Aventis suggests 4.2 hours. I think that a recess could stretch into a break so
long as to mean a lawyer was no longer fully engaged within the meaning of
attendance on a deposition. I do not think that the breaks here of 14 and 24
minutes did that. I do not think that the lunch break here was an assessable
part of attendance. For Dr. McClelland and certain others, I will use Apotex’s
figure for duration as the starting point for any of my calculated reductions.
The 6.5 hours claimed for Dr. McClelland reduced by 1 hour 35 minutes gives
4 hours 55 minutes. Pages 87 and 88 of the transcript disclose a testy exchange
about time lost relative to the lunch break. I allow 5 hours for the fee item 9
calculation.
[34]
The
transcript (Application Record, Volume XL) for Dr. Lee-Ruff’s cross-examination
disclosed two breaks each described at pages 45 and 163 as “short recess”. I
allow the duration (5.8 hours) suggested by Aventis further to its removal
of 50 minutes for lunch (p. 79). For similar reasons, I allow the duration (7.2
hours) suggested by Aventis for Dr. Marshall. The transcript (Application
Record, Volume XLIII) for James Wuest disclosed start and end times of 10:15
a.m. and 4:20 p.m. respectively, a fire drill lasting 25 minutes (p. 20), a
lunch break of 35 minutes (p. 67) and a short recess (p. 43). The
calculation by Aventis removed only the 35 minutes leaving 5.5 hours which I
allow.
[35]
The
transcript (Application Record, Volume XLV) for the continued cross-examination
(August 20, 2004) of Dr. William Pirkle disclosed start and end times of 11:37
a.m. and 4: 28 p.m. respectively, meaning that Apotex’s calculation of seven
hours duration does not match my calculation (4 h 51 min). Page 191 discloses a
break of 28 minutes for what was described as a “quick lunch”. An earlier
recess (p. 174) of 12 minutes had been taken to order sandwiches for all
participants. There were two other recesses (pp. 218 and 240) of 12 and 11
minutes respectively. The calculation (four hours) by Aventis left out one of
the 12 minute breaks. I remove only the 28 minutes leaving 4.4 hours
allowed.
[36]
The
transcript (Application Record, Volume XLVII) for Edward Mazer disclosed start
and end times of 9:55 a.m. and 3:41 p.m. respectively, meaning that Apotex’s
calculation of 5.6 hours duration does not match my calculation (5 h 46 min or
5.77 hours). The recorded breaks (pp. 44, 105, 127 and 162) total 21 minutes
making my net calculation 5 hours 25 minutes or 5.42 hours which does not match
the 4.3 hours suggested by Aventis. The recorded lunch break was 12:35 - 12:43
p.m. (p. 105). Although a rough indicator of pace, the first 44 pages of
transcript consumed 1 hour 5 minutes. The next 61 pages consumed 1 hour 30
minutes ending with the start of lunch. The next 22 pages apparently
consumed 1 hour 41 minutes with no apparent pauses (as at p. 27) and ending
(p. 127) at 2:24 p.m. for a recess. The apparent pace of the third portion
seems inconsistent with the first two. If I assume that the real end time for
lunch was 1:43 p.m., my net calculation becomes 4 hours 25 minutes or 4.42
hours, which is close to the calculation by Aventis. I will use a conservative
approach in the circumstances of the evidence and presume a lunch break of 68
minutes, meaning an allowance of 4.6 hours (4 h 38 min).
[37]
I
indicated in paragraph 24 of Aventis Pharma Inc. that I think duration
issues for fee item 14 can be considered differently than those for fee
item 9: see paragraph 102 of Abbott. My calculation of total
duration for the five-day hearing is 39 hours 8 minutes inclusive of any
breaks. I allow 35.5 hours as I think it factors out lunch breaks, but not
recesses or time getting settled in the courtroom just prior to commencement.
B. Disbursements
[38]
A
major difference between the affidavit on behalf of Apotex before me in Abbott
and the Radomski Affidavit here is that the former had as exhibits tens if not
hundreds of pages of invoices, charts and redacted law firm billings (from
both the solicitor of record and from the law firm of Ivan M. Hughes LLP who apparently
also acted here as co-counsel), but the latter has nothing. Apart from the
explanations further to Tariff B1(4) by counsel appearing before me, the only
evidence for disbursements totalling $482,767.86 is the body of the seven-page
Radomski Affidavit, the first two pages of which provide background with the
balance describing the bill of costs and repeatedly asserting the reasonableness
and relevance of its various claims. My assertion in paragraph 30 of Fournier
Pharma Inc. v. Canada (Minister of Health), (2008
F.C.J. No. 1151 (A.O.) [Fournier Pharma Inc.] that if “I can recognize a
reasonable charge given an invoice, I can likely recognize one without an
invoice, albeit with more difficulty” might seem rash in hindsight given the
circumstances of the evidence here.
[39]
However,
there is some evidence and other materials in the record such as the expert
affidavits in issue and the associated transcripts of cross-examinations. I
think that the Court’s findings on evidence relative to lump sum costs in Fournier
Pharma Inc. v. Canada (Minister of Health), (2008) F.C.J. No. 462 (F.C.) [Fournier]
reflect a common sense appreciation of the realities of litigation. Keeping in
mind that a lump sum award of costs is not a variation of, but rather, an
alternative to assessed costs, the findings in Fournier that evidence
however scanty should not be ignored without at least some consideration of its
value (or not) and the subjective nature of the evaluation of costs are, in my
opinion, applicable to assessments of costs. In particular, my approach to
assessments of costs as outlined in Halford, Biovail and Abbott
seems to accord with the practical considerations in Fournier. As it
happens, it was an affidavit of Mr. Radomski that was the subject of Fournier,
an affidavit which seems to have been comparable in content to the one before
me.
[40]
In
paragraph 71 of Abbott, I held that a paucity of evidence may result in
conservative results on an assessment of costs. As in Abbott, I accept
the Radomski Affidavit as establishing that the disbursements were incurred,
but also as in Abbott, I hold that its assertions of relevance and
reasonableness do not preclude my jurisdiction to assess each item of costs in
turn and allow, reduce or disallow each in its circumstances as they related to
the outcome. In so doing, I do not think my rough approximations below in some
instances are “lump sum” results by another name because I do examine the
elements of each individual category of cost as to its relevance for the
outcome and as to reasonableness of the amount, i.e. what I would expect as a
charge for the service performed and result achieved.
[41]
Paragraphs
77 and 81 of the Decision respectively noted that all of the issues raised in
NOA related to the validity of the ‘206 Patent and that much of the hearing
addressed sound prediction, i.e. whether Schering had a sound basis for
predicting that the ‘206 Patent would be useful in the treatment of
hypertension. An order dated February 12, 2004 rejected Apotex’s attempt to
strike the separate evidence of Schering on the basis of abuse of process and
prejudice. In addressing and dismissing Apotex’s appeal of said order, the
Court’s decision dated April 15, 2004 held (para. 22) that “Schering did not
duplicate the evidence of Aventis” and that “there may be many good commercial
reasons to explain why Schering may have a distinct interest in defending the
validity of certain claims which may be of lesser importance to a licensee such
as Aventis.” A document dated October 6, 2004 in the record and titled “Points
of Law Vis-à-Vis the Status of Schering Corporation” reinforces the distinction
of Schering, although a pre-hearing direction dated May 17, 2005
referred to Schering and Aventis as “allied in interest”. The transcripts of
the cross-examinations of affiants confirm that counsel for Schering led
questions relative to the particular interests of his client. I reject the
position of Aventis on the impact of Schering on costs, but I also do not think
that its impact was as considerable as Apotex contends it was. The Decision was
at times critical of Apotex’s evidence, but it did not penalize it with
directions for reduced or restricted costs.
[42]
Paragraph
9 of the expert affidavit of Dr. Gavras set out his mandate, i.e. relative to
the NOA and ‘206 Patent, comment on the teachings of the patent and on certain
experts for Aventis. His cross-examination on his affidavit began without
preliminaries about his qualifications, instructions or manner of formulation
of his evidence. The last few pages of the transcript did probe his background.
Pages 72 to 79 disclosed an exchange between counsel concerning the relevance of
questions during which Apotex’s counsel asserted (pp. 76 and 78 – 79) that Dr.
Gavras did not give an opinion on sound prediction.
[43]
The
Decision held that the application by Aventis for prohibition would be
dismissed further to a finding in favour of Apotex on the issue of sound
prediction, but stated in paragraph 258 that “in the event that I am mistaken
in my conclusion in relation to the issue of sound prediction, I propose
to address the remaining issues raised by Apotex.” The remainder of the
Decision apart from the finding on costs was obiter and addressed a
number of experts including Dr. Gavras.
[44]
Paragraphs
282 to 293 inclusive of the Decision summarized evidence, including that of
Dr. Gavras, on the issue of utility. Paragraphs 294 to 322 inclusive
contained the Court’s analysis and finding in favour of Aventis on the issue of
utility. Paragraph 298 was critical of the evidence of Dr. Gavras and found
that he asserted an incorrect test for utility. Sometimes, a presiding judge
softens the rejection of an expert’s evidence by simply indicating a preference
for the opinion of an adverse expert. Paragraph 298 was pointed in its rejection
of his evidence.
[45]
As
it happened, I assessed an account ($55,717.22) of Dr. Gavras in Aventis
Pharma Inc. for expert services on behalf of Apotex. His account did
not fare well at my hands (reduced to $31,301.72). Problems included charging
for two airfares for one trip and charging for his sleeping time. There is of
course no indication that such problems are present here because the evidence
is minimal. Abbott and Fournier Pharma Inc. set out my concerns
with benchmarking the accounts of experts. The Federal Court of Appeal in Merck
& Co. v. Apotex Inc., [2008] F.C.J. No. 1656 (F.C.A.) [Merck]
allowed an appeal from a decision of the Federal Court, which had varied by the
use of benchmarking the allowances by an assessment officer for experts, and
restored the assessment officer’s allowances. The assessment officer had
rejected one form of benchmarking. Paragraph 14 of Merck above noted
that the limited material available to assessment officers generally means
rough justice between the parties. Benchmarking as a factor here would be
somewhat elusive given that no accounts were produced. There is nothing in the
record on whether or not he required multiple drafts before finalizing his
report. I allow $38,000 for Dr. Gavras, which includes his costs for his trip
from Boston to Toronto
for his cross-examination, as paragraphs 11 and 16 of the Radomski Affidavit
assert that the travel claim addressed trips by counsel to venues outside Canada for
cross-examination of adverse witnesses. GST could only be claimed for the Toronto hotel,
ground transportation and meals associated with Dr. Gavras, but not his
airfare, fees or Boston ground transportation.
[46]
Paragraph
3 of the expert affidavit of Dr. Danilov indicated that Ivor Hughes instructed
him to conduct both in vitro and in vivo tests on two series of
compounds identified only by code to assess their ability to inhibit
angiotensin converting enzyme. The cross-examination on his affidavit opened
with probing of his credentials followed by probes on methodology. Counsel for
Schering opened his cross-examination with probes (pp. 48 – 49) on the duration
(four months) of his testing and his laboratory notes. Pages 66 to 78 probed on
methodology and factors possibly influencing his test results in the context of
the instructions from supervising counsel.
[47]
The
obiter portion of the Decision on utility considered his evidence.
Paragraph 299 noted the objection to his evidence on the basis that “his test
results and opinion are not mentioned anywhere in Apotex’s NOA” and that that
was “hardly surprising, given that Dr. Danilov did not carry out his testing
until several months after the NOA was served on Aventis.” The ensuing
paragraphs considered Dr. Danilov from the perspective of whether his evidence
was “merely additional evidence supporting allegations that are contained in
Apotex’s NOA” or whether it amounted to new facts. Paragraph 304 held that his
evidence, being new facts, should not be considered. Paragraph 305 found that
“given that Aventis was required to lead its evidence first in the proceeding,
and was reliant on the definition of the issues and facts identified by Apotex
in its NOA, it would, in my view, be unfair to allow Apotex to introduce new
facts later on in the process, at a time that Aventis had no opportunity to
respond.” Paragraphs 307 and 308 found that his opinion was based on an
incorrect test for utility and would not have been persuasive.
[48]
The
law firm of Ivor M. Hughes LLP (the Hughes Firm) is an experienced practitioner
in this area of patent law. I do not think that faulty instructions by
supervising counsel were, as in Halford in one instance, a factor here.
Dr. Danilov’s affidavit was sworn on February 27, 2004, and his
cross-examination occurred on July 16, 2004 about 11 months before the hearing.
As the court file reflects case management, I am unclear as to why an early
challenge was not advanced to preclude taking up hearing time with a witness
whose evidence was apparently strongly objectionable as a matter of law. A
Direction about two weeks before the hearing required the parties to be
prepared to address costs at the hearing, which they did, but there is nothing
in the Decision indicating that discounting of costs for this expert was
addressed or should occur. There was a direction for “reasonable
disbursements”.
[49]
Dr.
Danilov suffered the brunt of two disparate criticisms of his work, one of
which as a matter of law was within the capacity of supervising counsel to
preclude by not engaging this expert because it was too late to introduce his
evidence. The relevant case law cited in paragraph 305 of the Decision was
issued February 4, 2005, over four months before the hearing and after the
costs for Dr. Danilov had been incurred. I do not have the Rule 400(1)
authority exercised in a very pointed manner in Janssen-Ortho, as indicated
there by the hearing judge expressing concern in paragraph 43 “with what has
been increasingly observed as mounting and often extravagant fees charged by
expert witnesses,”. Evidence here of whether or not supervising counsel
anticipated a challenge on the timing of introduction of his evidence, and if
they did, its timing and context, might have been of assistance in resolving
this claim. I disallow his claim ($36.376.40) in its entirety.
[50]
Paragraphs
9 and 10 of Dr. Garland Marshall’s expert affidavit outlined his instructions
from Mr. Hughes, which included requests for comments on the evidence of
Aventis and of Schering, on disclosures and claims in two patents, on sound
prediction and on utility. Dr. David Triggle, an expert for Aventis, was
present at the cross-examination on his affidavit which focused immediately on
his opinion. Pages 47 to 49, 57 to 59, 172 to 174, 195 to 197 (counsel for
Schering at that point) and 232 to 234 of the transcript disclosed probing on
the parameters of his opinion evidence, his relationship with Apotex, his
instructions and his credentials. A testy exchange on pages 191 and 192 between
counsel when Mr. Hughes attempted to intervene during cross-examination by
Schering could indicate the potential for complication for Apotex faced with
the discrete interests of two adversaries, but it seems that Apotex’s counsel
took it in stride. Pages 169 and 170 disclosed references to “some last minute
changes” to his affidavit and the “old version” of his affidavit, and an
intervention by Apotex’s counsel to preclude probing on changes to his
affidavit. These references could indicate that Dr. Marshall required certain
time for revisions of, or perhaps reformulating, his evidence.
[51]
Dr.
Marshall’s evidence assisted the Court in its analysis (paras. 53 – 60 of the
Decision) of the ‘206 Patent. The Court eventually preferred (para. 143)
his evidence on sound prediction. The Court’s analysis (paras. 148 – 150) of
the respective evidence of Dr. Marshall and Dr. Triggle was not in the nature
of an assessment of costs, but I think it reinforces for me the careful
consideration to be given to objections made in NOC proceedings during
assessments of costs on the basis that work asserted to be exclusive to the
subject litigation was in fact performed and paid for in a previous independent
proceeding involving the same patent. That is, these three paragraphs noted
that a third reason to prefer Dr. Marshall’s evidence was that Dr. Triggle’s
affidavit here was very similar to his affidavit sworn on behalf of Aventis in
an earlier proceeding involving the ‘206 Patent except that three paragraphs in
the earlier affidavit were not part of his affidavit here. Said three
paragraphs were significant in that they considerably corroborated elements of
Dr. Marshall’s opinion. Paragraph 149 noted Apotex’s case law asserting that
expert evidence should be an independent product of the expert uninfluenced by
the exigencies of litigation and its submission that the removal of said three
paragraphs showed that Dr. Triggle’s evidence had not met that threshold (para.
150 of the Decision indicated that Dr. Triggle agreed with the three paragraphs
when they were put to him in cross-examination).
[52]
Paragraphs
152 to 155 of the Decision indicated concerns with Dr. Marshall’s evidence on
utility, but noted (paragraph 154) that minor concerns with his evidence on sound
prediction did not undermine “the weight to be attributed to his evidence.”.
The obiter paragraphs 309 to 322 did not repudiate his evidence on
utility, but found it not sufficiently persuasive for the desired conclusion on
utility. As with the other experts’ accounts, I do not have underlying
invoices, if any, to assist in gauging the relevance and reasonableness of time
taken and billing rate for his work. I would think that an amount of $55,973.31
could not be tallied for billing purposes without the existence of some sort of
timesheet. I allow his claim ($55,973.31) at the reduced amount of $49,000
inclusive of his disbursements. As a foreign expert, GST for him is restricted
as above for Dr. Gavras.
[53]
Paragraph
4 of the expert affidavit of Dr. Edward Lee-Ruff outlined his instructions from
an associate of Mr. Hughes, i.e. reproduce Example 20 (consisting of 20A and
20B) in the ‘206 Patent as it would have been understood by a person skilled in
the art of chemistry as at October 1980 and March 2001. He concluded in
paragraphs 56 and 57 that Example 20A could not be obtained and that the
compound rampiril could not be isolated following the teachings of the ‘206
Patent. His cross-examination on his affidavit opened (transcript pp. 1 –
36) with probes on his background, timing and manner of formulation of his
evidence and instructions including regard to the potential for bias in favour
of Apotex. He apparently produced a written report (two to three pages) that
was the basis for a final affidavit that underwent two or three drafts
reflecting only minor changes and adjustments. There ensued (pp. 36 – 45)
questions on a person skilled in the art, a probe (p. 51) on his instructions
and a testy exchange (pp. 111 – 112) between counsel about whether
interventions by Apotex’s counsel were compromising the cross-examination by
influencing Dr. Lee-Ruff’s responses.
[54]
The
Decision considered Dr. Lee-Ruff as part of the section on sound prediction and
noted (paras. 190 – 191) challenges to his evidence by one of Schering’s
experts. The Decision further considered (paras. 207 – 215) certain problems
with his evidence and that of Dr. McClelland in ultimately preferring that of
the experts of Aventis and Schering concerning the creation of compounds. There
was nothing to suggest that the decision by Apotex’s counsel to instruct them
was ill-advised. Their evidence was simply not persuasive. However, still in
the section on sound prediction, the Decision preferred their evidence on
separation and characterization (paras. 243 – 252) in finding in favour of
Apotex. I think that the use of Dr. Lee-Ruff was prudent, but given the paucity
of evidence, I must shield Aventis from excessive costs with a conservative
allowance of $31,500 (down from $36,244) inclusive of any disbursements.
[55]
I
am familiar with accounts for Dr. Robert McClelland having assessed them in
other NOC matters. His instructions from supervising counsel (Mr. Hughes)
touched on an area (Example 20) common to Dr. Lee-Ruff, but gave him
additional work, i.e. compare patent claims and analyze two adverse expert
reports. The transcript of the first day (July 15, 2004) of the cross-examination
on his affidavit disclosed initially that counsel for Aventis had one of his
experts present in an advisory role. There followed some probing on his
familiarity with certain documents leading into questions on persons skilled in
the art. A series of questions (pp. 133 – 160) probed for bias in favour
of Apotex (Aventis in its Memorandum of Fact and Law before the Court noted the
repeated use by Apotex of certain experts for multiple proceedings addressing
angiotensin converting enzyme, i.e. footnote 32 for para. 17, footnote 45 for para.
73 and para. 76) and on the manner and timing of formulation of his evidence.
This first day and the second day (September 30, 2004) did not in my opinion
expose any deficiencies of approach either of his own volition or further to
problematic instructions by supervising counsel notwithstanding that some of
his evidence was not preferred by the Court.
[56]
I
think that Dr. McClelland’s claim of $61,926.38 is likely fair value for his
work, but I also think that a cautious result on assessment is warranted in
face of the effective presumption of my jurisdiction to evaluate whatever, if
any, invoices or statements he provided. I therefore allow $54,000.
[57]
Paragraph
2 of Dr. Csizmadia’s expert affidavit states that Mr. Hughes instructed him to determine
the number of compounds described in the six Claims of the ‘206 Patent in
issue. The transcript of the cross-examination on his affidavit was 31
pages, the first eight of which probed his credentials and the amount of
time to formulate his evidence. He could only provide what he characterized as
a “crude estimate” of the latter, i.e. 100 to 150 hours, as he “didn’t
bookkeep” (p. 7). Pages 20 to 28 reflected disagreement over the clarity of a
photocopy.
[58]
The
Decision does not mention Dr. Csizmadia. Paragraphs 53 to 60 outlined the scope
of the ‘206 Patent and referred to Dr. Marshall’s estimate of the number of
compounds encompassed by the Claims of the ‘206 Patent in issue. Paragraph 66
indicated that it was necessary to construe only Claim 12 as it was the
narrowest claim meaning that Apotex’s case would “stand or fall on whether it
succeeds in relation to the claim.” Paragraph 68 indicated the parties agreed
that, properly construed, Claim 12 “is directed to a compound, and describes a
genus of eight stereoisomers, one of which is rampiril”. The Decision devoted
considerable space to the issue of sound prediction and at paragraph 81 stated
that much of the hearing time “was devoted to the question of whether Schering
had a sound basis for predicting that the compounds covered by the claims in
issue, and, in particular, by Claim 12 of the ‘206 patent, would be useful… in
the treatment of hypertension in humans.” Part of the Court’s analysis (paras. 159
– 254) addressed the issue of proper disclosure in the context of the third
element of the tripartite test in Apotex Inc. v. Wellcome Foundation
Ltd., [2002] 4 S.C.R. 153 [Wellcome].
[59]
Paragraphs
105 to 125 of Schering’s Memorandum of Fact and Law before the Court addressed
sound prediction. Paragraph 116, in addressing proper disclosure, asserted that
none of the experts disputed the clarity of the listing of the compounds
occurring in the Claims and that Dr. Csizmadia was able to identify each and
every one of them. Both Schering and Aventis relied on Wellcome above
for elements of their respective positions. Paragraphs 120 to 124 of Apotex’s
Memorandum of Fact and Law before the Court characterized the ‘206 Patent as a
lottery approach in its patent claims and number of compounds and inconsistent
with Wellcome. I think that supervising counsel was prudent in engaging
Dr. Csizmadia and that his work could be viewed as part of a regular occurrence
in litigation, i.e. narrowing or refining of the issues eventually before the
Court. However, by his own admission, Dr. Csizmadia did not closely document
his hours and his crude estimate reflected a large margin for error. The latter
estimate did not likely include his attendance on cross-examination and any
briefing time with supervising counsel immediately prior. I think that his
claim of $44,200 should be reduced to $25,000.
[60]
Gerald
Oyen is a registered Canadian patent agent with extensive experience in the
preparation and prosecution of patent applications and a member of the bar.
Paragraph 4 of his expert affidavit stated that supervising counsel asked him
“to submit this Affidavit for use in this proceeding” and then listed several
documents provided for reference, including the ‘206 Patent, two other patents
including Canadian Patent 1,187,087 (the ‘087 Patent), patent file histories
and some of the other adverse affidavits. His affidavit was first a summary and
analysis of patent conflict process and second an opinion on the ‘206 Patent
and the two other patents relative to said process. I think it is arguable that
the first portion of his affidavit reflected expertise within the capacity of
an experienced patent solicitor and that the second portion was within the
capacity of a hearing judge assisted by a proper record and cogent submissions
from counsel. As such, my conclusions in paragraph 18 of Chua v. Canada
(M.N.R), 2002 F.C.J. No. 209, 2002 D.T.C. 6824 (A.O.) and in paragraph 183
of Halford would appear to preclude the full extent of his claim, i.e. a
solicitor-client amount, because it sidesteps the partial indemnity limits of
the Tariff meaning that his work should have been subsumed in fee items 2
(record) or 13 (hearing preparation).
[61]
Mr.
Oyen’s cross-examination on his affidavit opened with questions establishing
that he was no longer involved in litigation and instead concentrated on patent
preparation and prosecution, of which about 50 percent involved chemical
patents. After establishing that he did not consider himself an expert on
chemistry akin to someone with a doctorate, a series of questions (pp. 7 – 9) established
that he had no prior relationship with Apotex as an expert and that Mr. Hughes
sought him out as someone with experience and familiarity with patent conflict
practice prior to 1989 with particular regard to conflict practice before the
patent office. Ensuing questions (pp. 9 – 11) probed the manner and timing (two
days to digest the materials plus more time to prepare an initial draft not
much different after discussions with supervising counsel from the final
version) of the preparation of his evidence. A series of questions (pp. 25 et
seq.) by counsel for Aventis probed initially on the distinction if any between,
relative to the ‘206 Patent and the ‘087 Patent, an opinion that a conflict
should have been declared versus an opinion that a conflict existed, and then
on technical matters underlying his opinion before yielding to counsel for
Schering (p. 35).
[62]
The
questions by counsel for Schering probed on the patent scheme. In reading the
transcript, I noted not only the answers given, but also the nature and
construction of the questions with particular regard to whether their subject
was something within the ordinary capacity of supervising counsel and therefore
not indemnifiable as part of an expert’s claim versus something beyond those
parameters and the ordinary capacity of the hearing judge, who is not
necessarily bound to accept any expert’s opinion, therefore requiring the
assistance of an objective expert opinion. For example, two questions (pp. 42 –
43) on the first to invent scheme referred to case law which would appear to be
within the capacity of experienced supervising counsel to research and brief
the Court. Another question (pp. 50 – 51) asked whether he was “familiar with
the practice of the patent office in light of the decision of the Exchequer
Court
in re: Fry.” There were a number of questions related to patent examiners.
[63]
The
Decision did not mention Mr. Oyen by name. It addressed the issue of patent
conflict briefly and did not find (para. 349) the matter of a missed conflict
determinative. There was nothing in the Decision to suggest that Apotex’s
position on patent conflict was trivial or improperly advanced. I think that
Mr. Oyen’s opinion was of assistance to the Court. The concern is whether it is
compensable in full as a disbursement within the parameters of reasonable
necessity or whether it is compensable only in part by being subsumed within
the partial indemnity limits of the fees for supervising counsel. Mr. Oyen’s
cross-examination was completed by July 2004, well before the hearing. This was
sufficient time for Aventis and Schering to have brought interlocutory
applications to preclude tainting of the record with improper evidence. I
considered whether his evidence was simply fact evidence by someone
knowledgeable in the field such as a patent agent. Terminology used by Aventis
in its Memorandum of Fact and Law is not determinative, i.e. the reference to
Mr. Oyen in footnote 52 to paragraph 97 as Apotex’s “expert patent agent”, but
I think it indicates that Mr. Oyen’s opinion was advanced as that of a patent
agent with expertise on practice in the patent office.
[64]
Aventis
led as an expert opinion (also relied upon by Schering in its separate
Application Record) the affidavit of Kevin Murphy sworn November 21, 2003. Mr.
Murphy was a Canadian patent agent and has a Bachelor of Science degree. He was
not a member of the bar. His area of expertise included chemical and
pharmaceutical matters. Supervising counsel provided him with the ‘206 Patent
and the ‘087 Patent and asked him to review the NOA and comment on the portions
therein addressing conflict practice and proceedings in the patent office. His
affidavit also discussed the prosecution history of both patents and concluded
in paragraph 23 that neither Schering nor its agents caused the delay in
prosecution of the ‘206 Patent. In paragraph 28, he asserted that he did not
agree with Apotex’s conclusion that a missed conflict occurred and that he
restricted his “opinion to patent office practice” and expressed “no opinion on
the chemistry issues.”
[65]
The
transcript of his cross-examination on July 29, 2004 probed (pp. 4 – 5) his
conclusions concerning the delay in the ‘206 Patent prosecution history and
confirmed that they were based solely on what he read in the ‘206 Patent file
history, that there was no admission on the part of the patent office that it
caused the delay and that anyone, including the hearing judge, who read the
file history would be as able as him to venture an opinion on the cause for
delay.
[66]
The
transcript disclosed questions on the practice of patent examiners. His answers
from pages 61 to 64 in asserting that he was venturing an opinion on what the
patent examiner had in mind indicated that an important element of his evidence
was not simply fact evidence, but in the nature of an opinion, i.e. “I think it
is fairly reasonable to say that he was looking at a conflict” (p. 61) and
“it is all speculation” (p. 64). Granted, the nature of NOC proceedings is such
that Apotex was required to assert its allegations in the NOA, and of course
prior to institution, meaning that Aventis had led its evidence first as the
Applicant here. However, even if I were to concede that this area fell
within the capacity of supervising counsel and of the hearing judge, I think it
problematic for Aventis to have addressed this point with opinion evidence such
as from Mr. Murphy, have Apotex respond in kind, let the matter go to
hearing without challenging its propriety and then attempt, after directions
for costs in the Decision silent on this point, to have it completely
disallowed on assessment as improper opinion.
[67]
Schering’s
Memorandum of Fact and Law took very seriously, even if asserting their
deficiencies, Apotex’s allegations concerning patent conflict. It referred to
Mr. Oyen several times in support of its position and on at least two occasions
(paras. 63 and 71) to him as Apotex’s “patent agent” witness or expert.
Schering relied on the affidavit of Edward Mazer, a patent attorney with Schering-Plough
Corporation of which Schering is a subsidiary, and whose duties included the
instruction of patent agents in Canada regarding the prosecution of a number of
patent applications one of which was the ‘206 Patent (underway for five years
by the time he joined Schering: p. 14 of the transcript of his cross-examination).
There were elements of fact and opinion in his affidavit, including some relevant
for issues of patent conflict.
[68]
I
find that Apotex reasonably put in issue matters of anticipation for the
purpose of obtaining a declaration of invalidity of the ‘206 Patent and
required opinion evidence on patent prosecution practice from an independent
patent agent whose opinion did not intersect with the professional
responsibilities of its lawyer. Mr. Oyen has acted as an expert for Apotex on
patent prosecution practice in other matters in which the decision referred
several times to his evidence, i.e. Jannssen-Ortho Inc. v. Apotex Inc.,
[2008] F.C.J. No. 936 (F.C.). There was no invoice produced before me. Mr. Oyen
mentioned two days to read the materials. He would have charged for his time to
draft and make the minimal revisions indicated in the record plus presumably to
meet with supervising counsel if only briefly before his cross-examination, and
then to undergo the cross-examination. I think that his claim ($11,064.81)
is good value for his work, but I also think I must be conservative in my
approach to his account: I allow $9,500.
[69]
I
am quite familiar with Apotex’s use of disbursements in NOC proceedings and I
do not think much more comment is needed on the remaining items of costs.
Applying that experience in a conservative manner (the figure in brackets after
each item being the claimed amount), I allow travel ($17,947.44) at $14,500;
telephone ($2,661.25) at $2,400; telecopies ($448.07) at $375; courier
($3,550.03) at $2,700; parking/cab/mileage ($567.53) at $150 and computer time
charges ($6,612.83) at $4,700. There is nothing to add to my comments on
photocopies ($72,302.75) in paragraph 65 of Abbott. Considerations here
are complicated by the fact that Aventis produced the record and provided a
copy to Apotex. I allow $43,000.
[70]
In
paragraph 110 of Abbott, I indicated that claims “for the prosecution
history of patents are allowed as assessed costs”, but disallowed the claim
there for file histories as too obscure. The NOA here relies on file histories
($57). As a file history can be relevant for multiple proceedings, the concern
for this category of item is sometimes whether its presentation is too obscure
to preclude the possibility that its payment originated in another proceeding,
and that the amount paid was simply by oversight lumped in with the claims for
the later proceeding. In paragraph 26 of Aventis Pharma Inc., I
expressed concern about “close scrutiny by counsel as a filter for
reasonableness and clarity.” I allow the $57 as presented. Similar concerns can
be associated with prior art ($4,977.17) which I allow at $4,100.
[71]
I
allow transcripts ($24,902.28); process servers ($500); search fee ($100);
Quicklaw™ ($225.08) and LPIC ($50) as presented. As in Abbott, I have
difficulty with meetings ($492.05); file retrieval ($74.10) and record
retrieval ($449.55) and disallow them.
[72]
Dr.
McClelland’s affidavit was sworn on March 1, 2004, and asserted that he was
from Toronto. A concern
in Aventis Pharma Inc. was that he had left Canada, but I
assumed there and do so here that his expert fee was subject to GST.
[73]
In
Abbott, I had invoices permitting a fairly detailed GST exclusion
calculation in paragraph 112 relative to expenditures outside Canada for experts
and for travel. I made certain adjustments downwards to account for other
miscellaneous expenditures not attracting GST. As noted above, two experts
could not claim for GST, except for travel expenses while physically in Canada.
The evidence is that the claim ($17,947.44 allowed at $14,500) addressed
travel by counsel for depositions outside Canada. Of that,
airfares would have attracted GST, but not for example hotels, meals and ground
transportation outside Canada. Some categories of disbursements may have
already included GST and therefore, as noted in paragraph 112 of Abbott,
complicate this process. The paucity of evidence here necessitates an approach
similar to that in paragraph 35 of Fournier Pharma Inc. I think $13,000
is a conservative allowance, which I allow.
[74]
The
bill of costs of Apotex, presented at $557,811.86, is assessed and allowed at
$376,142.36.
“Charles
E. Stinson”
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