Date: 20070330
Docket: T-1548-06
Citation: 2007 FC 344
Ottawa, Ontario, March 30, 2007
PRESENT: The Honourable Madam Justice Snider
BETWEEN:
LES LABORATOIRES SERVIER,
ADIR, ORIL INDUSTRIES,
SERVIER CANADA INC.,
SERVIER LABORATORIES (AUSTRALIA) PTY LTD
and SERVIER LABORATORIES LIMITED
Plaintiffs
and
APOTEX INC.
and
APOTEX PHARMACHEM INC.
Defendants
REASONS FOR ORDER AND ORDER
Costs on Injunction Motion
[1] These
reasons deal with the issue of costs that arise as a consequence of an
application by the Plaintiffs (collectively referred to as Servier or the
Plaintiffs) for an interlocutory injunction against the Defendants
(collectively Apotex or the Defendants).
[2] The
Plaintiffs have commenced an action against the Defendants for infringement of
the Plaintiffs’ Canadian patent no. 1,341,196 (the '196 Patent).
On November 8, 2006, the Plaintiffs filed a Notice of Motion for an
interlocutory injunction against the Defendants. On November 29, 2006, Justice
Simon Noël granted an interim injunction to the Plaintiffs ([2006] F.C.J. No.
1887 (F.C.) (QL), 2006 FC 1443). In his decision, at para. 31, Justice Noël
stated that the costs of the interim injunction would follow the decision on
the motion for the interlocutory injunction. In a decision dated December 13,
2006 (2006 FC 1493, [2006] F.C.J. No. 1954 (F.C.) (QL)), this Court dismissed
the motion for injunctive relief and directed the parties to make written
submissions on the matter of costs.
[3] The Defendants, being the successful party in
the motion, seek their costs for both the interim and interlocutory injunction
motions. They request that costs be fixed in the lump sum amount of $100,000, plus
disbursements ($214,716.71), payable in any event of the cause, for a total of
$314,716.71. A bill of costs is submitted by the Defendants in support of their
request.
[4] The
Plaintiffs submit
that costs in the cause should be ordered, since this Court found that there is
a serious issue to be tried and since there has been an admission of infringement
by Dr. Sherman, the Chair of Apotex. In the alternative, the Plaintiffs submit
that, if costs are awarded now, the quantum thereof should be left to the trial
judge. The Plaintiffs submit that, in order to properly evaluate the quantum
sought for fees and disbursements, more detailed information is required from
the Defendants, including the supporting documentation underlying the bill of
costs.
Analysis
[5] Rule 400 of
the Federal Courts Rules, SOR/98-106 provides the general
framework for the awarding of costs between parties. This Rule gives full
discretionary powers over the amount and allocation of costs to the Court and
sets out certain factors that may be considered by the Court. Of further
relevance is Rule 401 which states that:
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401.(1) The Court may award
costs of a motion in an amount fixed by the Court.
(2) Where the Court is
satisfied that a motion should not have been brought or opposed, the Court
shall order that the costs of the motion be payable forthwith.
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401.(1)
La Cour peut adjuger les dépens afférents à une requête selon le montant
qu’elle fixe.
(2) Si la Cour est
convaincue qu’une requête n’aurait pas dû être présentée ou contestée, elle
ordonne que les dépens afférents à la requête soient payés sans délai.
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[6] It is now clear
that the motions judge has the discretion to award the costs of a motion to
either party, regardless of the outcome of the main matter (Enterprise
Rent-A-Car Co. v. Singer, 91 A.C.W.S. (3d) 716, [1999] F.C.J. No. 1687 at
para. 6 (F.C.A.) (QL); Lifescan, Inc. v. Novopharm Ltd., 2001 FCT 809,
107 A.C.W.S. (3d) 377, [2001] F.C.J. No. 1176 at paras. 8-10 (F.C.T.D.) (QL)).
This is particularly applicable where the issue on the motion is discrete from
the issues at trial (AIC Ltd. v. Infinity Investment Counsel Ltd. (1998),
148 F.T.R. 240 at para. 5 (F.C.T.D.), 80 A.C.W.S. (3d) 1150).
[7] In this case,
I am of the view that the issues in the motion are discrete. Although the
question of whether there is a serious issue to be tried was considered during
the motion, there was certainly no determination of the merits of the action.
At trial, there will be no need to revisit the determinations made by this
Court on the interim injunction decision. Accordingly, it is appropriate to
award costs on this motion separate from and in advance of the trial.
[8] With regards
to Rule 401(2), the Plaintiffs’ motion for an interlocutory injunction was
reasonably brought. As I concluded in my decision dated December 13, 2006,
there is a serious issue to be tried. It is apparent from the analysis
contained in that decision that the question of irreparable harm required
careful consideration. On this basis, it cannot be found that the Plaintiffs
ought not to have brought the motion. As a result, an order for costs to be
payable forthwith, pursuant to Rule 401(2), is not warranted.
[9] In exercising
my discretion, I have had regard to all of the factors set out in Rule 400(3).
Certain of those factors are of particular relevance; these factors are
discussed below.
Results of the
Proceeding
[10] Although the
Plaintiffs were unsuccessful in their motion for an interlocutory injunction,
they were successful on the motion for an interim injunction. However, in his
Order dated November 29, 2006, Justice Noël ordered that costs would follow the
decision on the motion for an interlocutory injunction. Consequently, this
factor favours the Defendants.
Importance
and Complexity of Issues
[11] The
Defendants submit that the matter was of importance to the Plaintiffs and that
the issues were complex.
[12] In my view,
the legal issues arising on the motion were not complex since the test for an
interlocutory injunction is very clear. It is the complexity of legal issues
rather than the factual issues that the Court is to consider when dealing with
this factor (TRW Inc. v. Walbar of Canada Inc. (1992), 43 C.P.R. (3d)
449 (F.C.A.)).
Other Factors
(a) Multiple
Counsel
[13] The
Defendants submit that the Plaintiffs’ demand for an expedited schedule for the
hearing of the interim and interlocutory motions placed extraordinary demands
on them. Thus, it was necessary to involve eight lawyers on the file. The
Defendants argue that, without the work of these lawyers, it could not have met
the demands that the Plaintiffs placed upon them.
[14] In the
Plaintiffs’ submission, Tariff B only permits claims for multiple counsel in
part E, “Trial or Hearing”, and part F, “Appeals”. Consequently, they argue
that tariff fees for time spent by between two and five counsel in relation to
the motions should not be allowed.
[15] In my view,
it was reasonable for the Defendants to utilize multiple counsel on these
motions. I agree with the Defendants that they would not have been able to
respond adequately to the motions without involving more than one lawyer on the
file. I question, however, whether eight counsel were required at all stages
of these motions described in the bill of costs.
(b) Expert
Evidence
[16] The
Plaintiffs take issue with the Defendants for requesting tariff fees for time
spent by counsel and related disbursement (other than expert fees) to prepare
the Klibanov, Gavras and McClelland Affidavits and attend at their
cross-examinations since they believe that these opinions are relevant at
trial, rather than on these motions. The Plaintiffs also question the expert
fee for David Matthew (the UK expert).
[17] In my view,
the Defendants may have gone beyond a reasonable level in retaining their
experts for these motions. The Defendants should, therefore, bear some of the
costs of those experts. The expert fee paid to David Matthew was $97,907.58 CAD
(converted from £46,232). I agree with the Plaintiffs that this expert fee is
disproportionately high in comparison to the expert fee paid to Aidan Hollis,
Stephen Cole, Philip Williams and Des Threlfall. The Plaintiffs should not have
to pay for the Defendants’ “Cadillac” expert (Apotex Inc. v. Syntex
Pharmaceuticals International Ltd. (1999), 2 C.P.R. (4th) 368 at
para. 20 (F.C.T.D.), 91 A.C.W.S. (3d) 722, 176 F.T.R. 142).
(c)
Disbursements
[18] The
Defendants are entitled to reasonable disbursements. However, I note that
little supporting documentation was provided by which I could assess the
reasonableness of some of the disbursements. In brief, I have the following
concerns with respect to the disbursements:
- I agree
with the Plaintiffs that the category “meetings” is quite vague.
- It is
unusual that the travel and hotel accommodations costs are in round
numbers.
- A review
of the amount of the claimed travel items shows that the travel was luxurious.
- The
photocopy expenses (at over $25,000) are extremely high.
[19] Thus, while
the Defendants are entitled to disbursements, I would cap the disbursements at
$100,000.
Conclusion
[20] I am
satisfied that, on the facts of this case, it would be appropriate to fix costs
as a lump sum. Exercising my discretion, I would fix the costs for the two
motions at $150,000 -- $50,000 for counsel fees and $100,000 for disbursements --
plus GST and PST, if applicable.
ORDER
THIS COURT
ORDERS
that:
- The costs
of the motions for the interim injunction and the interlocutory injunction
are fixed at $150,000 plus GST and PST, if applicable, payable by the
Plaintiffs to the Defendants; and
- The
costs are payable at the final disposition after trial, to be set off at
that time if appropriate.
“Judith A.
Snider”
_____________________________
Judge
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