[1] This litigation addressed patent infringement relative to seismic bore hole plugs sold commercially under the name "King Plug". The Defendant, Anchortek Ltd. (hereafter "Anchortek") manufactured and sold a plug called the "Energy Plug" (hereafter the "Defendant Plug") allegedly infringing the Plaintiff's patent. The remaining Defendants (hereafter the "Distributor Defendants") bought and sold the Defendant Plug. Initially, the Plaintiff brought separate actions against each of the Distributor Defendants, but those actions (T-607-96, T-608-96 and T-610-96 as they related to the Defendant Plug only) were eventually consolidated with this action by orders dated April 27, 1998. The Plaintiff's patent was the subject of litigation decided (hereafter the "Nutron Plug decision") prior to the hearing of this matter. The Agreed Statement of Facts in this matter acknowledged that the Nutron Plug decision construed claims 1 and 5 of the Plaintiff's patent.
[2] The judgment (December 19, 2001) after trial found that the Defendants had infringed the Plaintiff's patent, provided directions for a reference for damages, dismissed Anchortek's counterclaim and reserved costs to a supplementary judgment. The Supplementary Judgment - Costs (May 23, 2002) read:
...
1. The plaintiff, Almecon Industries Limited, is entitled to its costs of this action, including the counterclaim;
2. The Court hereby directs that an assessment of the plaintiff's costs shall take place in accordance with the following directions:
a) the plaintiff's costs are to be assessed on the ordinary scale, that is to say, in accordance with column III of the table to Tariff B of the Federal Court Rules, 1998;
b) the plaintiff shall be entitled to costs of two counsel at trial, with all other claims for second counsel left to the discretion of the Assessment Officer;
c) the plaintiff shall be entitled to all travel, accommodation and related expenses for two counsel at trial and, except as otherwise provided, for one counsel at examinations for discovery and on motions with all other claims for travel, accommodation and related expenses for a second counsel left to the discretion of the Assessment Officer;
d) the plaintiff shall be entitled to the fees and disbursements of its expert witnesses, including Mr. Anderson, including reasonable costs for preparation before trial, for attendance at trial, in giving testimony at trial, and in the case of Mr. Anderson, including fees and disbursements for the tests carried out on behalf of the plaintiff in preparation for trial, and for his assistance in the preparation of the plaintiff's case;
e) the plaintiff shall be entitled to a reasonable amount in respect of all disbursements not otherwise provided for in this Order that were reasonably incurred; and
3. All of the foregoing being subject to any determination in accordance with Rule 420 regarding any written offer to settle that has not at this time been made known to the Court.
The Defendants' appeal was dismissed with costs.
[3] The Plaintiff presented a single bill of costs encompassing the four trial court files. The Plaintiff (as Respondent) presented a single bill of costs for the related Federal Court of Appeal matters (A-34-02 and A-398-02). A copy of these reasons is filed in each court file and applies there accordingly. Before me, counsel for both sides agreed on certain items. As well, counsel for the Plaintiff withdrew claims for certain interlocutory items because their associated orders were silent as to costs. I have made the appropriate notations on the bills of costs as assessed and filed.
[4] The Defendants argued generally for all counsel fee items that only the lower portion of available ranges should be used. The Defendants argued that the severing, by the April 27, 1998 orders above, of the hearing of infringement claims relative to the Defendant Plug from the hearing of infringement claims relative to the Nutron Plug simplified litigation of the former claims and made any costs associated with litigation of the latter claims irrelevant for any issues of costs here. The settlement of claims against another distributor, Austin Powder Ltd. (T-609-96) is also irrelevant.
[5] The Defendants argued further to Rule 400(3)(c) that this matter was not complex compared to other patent litigation because the workings of seismic bore plugs are straightforward, only claims 1 and 5 of the Plaintiff's patent were in issue, the Agreed Statement of Facts acknowledged that the Nutron Plug decision had construed said claims 1 and 5 and the trial judge here adopted that construction. The Defendants asserted that the Nutron Plug decision considered several plugs relative to prior art, but that was unnecessary here. The Defendants argued further to Rule 400(3)(i) and (o) that the Plaintiff's approach against Anchortek, ie. commencement in 1992, but no substantive steps taken until 1997, after the Nutron Plug decision, unnecessarily lengthened this litigation. The Defendants argued that their conduct contributed to shortening of this litigation, ie. the Agreed Statement of Facts described in paragraph [5] of the trial judge's reasons as "reasonably extensive", agreements to qualifications of experts, narrowing of issues in the counterclaim at trial and the recognition by the trial judge, at the end of the trial transcript, of expeditious conduct by the parties.
[6] The Defendants argued that the trial judge's reasons confirmed their position throughout, ie. that only interpretation of the construction of the claims in the Nutron Plug decision would be an issue. The Defendants argued that the fact that discovery of the Plaintiff and of Anchortek occurred at the same time undermines the assertion of extra work as a function of multiple discoveries. The Defendants argued that the Plaintiff's examples of higher cost awards are irrelevant because their circumstances are different, ie. the presence of prior art considerations in the Nutron Plug decision, consent agreements to elevated costs or punitive considerations.
[7] The Plaintiff argued that the removal of the Nutron Plug issues, which occurred only after all avenues of appeal against the Nutron Plug decision had been exhausted, did not diminish complexity as construction of the patent was still outstanding here for all alleged instances of infringement. The Plaintiff argued that the use, by the Distributor Defendants, of solicitors of record different from the solicitor of record throughout for Anchortek indicates the variance among these Defendants of their perspectives and interests. The Distributor Defendants did not engage Anchortek's solicitor until just prior to trial. Accordingly, each Defendant required separate steps prior to trial, including individual pleadings and amendments of pleadings; affidavits of documents; discoveries; undertakings and motions, all generating considerable logistical complications for the Plaintiff. Consolidation of the various pieces of litigation could only occur after several steps had been taken. The Plaintiff asserted that settlement with the Distributor Defendants, but not Anchortek, also reflects the differences among the Defendants.
[8] The Plaintiff asserted that its experts had to prepare for prior art defences not dropped until just before trial. The Plaintiff noted that certain counterclaim issues were not dropped until just before trial and the fact that no counterclaim costs are in the Plaintiff's bill of costs should favour allowances in the upper end of ranges. The Plaintiff asserted that the Defendants maintained throughout on interlocutory motions that they would not be bound by the Nutron Plug decision and that they waited until just before trial before agreeing to the construction of the patent in that decision. The Plaintiff argued that its delay of steps until 1997, to permit application of the Nutron Plug decision, was prudent and reduced costs.
[9] The Plaintiff argued that various decisions have held that assessed costs should bear some relationship to the actual costs of litigation. Here, the actual counsel fees for the trial proceeding were approximately $500,000.00, disbursements were approximately $200,000.00 and costs for the appeal proceeding were approximately $100,000.00. The Plaintiff noted that it has not claimed four sets of costs notwithstanding vigorous and separate defences. The Plaintiff argued that its complete success at trial should favour approval of the costs claimed. The Plaintiff asserted that the Nutron Plug decision had to address only one defendant, yet it still awarded upper end Column III costs. Other patent decisions have awarded Column III or IV costs. One of the interlocutory orders in this matter awarded Column IV costs in the cause to Anchortek.
(Tariff)
Item 1: 7 units claimed for each Statement of Claim in T-992-92, T-607-96, T-608-96 and T-610-96; available range 4 - 7 (hereafter the numbers in brackets following the claimed units represent the available range)
[10] The Defendants argued that the Distributor Defendants should receive only one-half of the allowance for Anchortek because the early resolution of the Nutron Plug matter should preclude the Plaintiff from benefiting twice on costs. The Plaintiff argued that it is reasonable and necessary to add and subtract causes of action without there being a penalty for costs, ie. because of settlement here against the Distributor Defendants. The resolution of the Nutron Plug issues with the Distributor Defendants separately from Anchortek does not result in double costs. The Plaintiff argued that the amounts claimed are minimal compared to the actual costs and are within the limits of the award of costs.
Assessment
[11] I concluded at paragraph [7] in Starlight v. Canada [2001] F.C.J. 1376 (A.O.) that the same point in the ranges throughout the Tariff need not be used as each counsel fee item must be considered in its own circumstances and that some generalization is required between the available values in ranges. I have read the pleadings, interlocutory decisions and interlocutory materials with particular regard to potential difficulties posed by different interests, if any, among the Defendants. The Plaintiff's institution of separate proceedings was not improper. The affidavit of David M. Reive sworn April 22, 1998, in support of the motions leading to the April 27, 1998 orders above, confirms Nutron Plug activity and does not suggest that the work relative to the Defendant Plug had been simplified. In Milliken & Company et al. v. Interface Flooring Systems (Canada) Inc. 2003 FC 1258 (A.O.), I addressed the effect on costs of the addition and subtraction of causes of action and concluded that apportionment, although an option, was not mandatory in resolving related issues of costs.
[12] The Plaintiff is entitled to assess costs as a function of its work on the cause of action relative to the Defendant Plug in each pleading which resulted in a costs award independent of and not contingent upon the Nutron Plug award of costs. As each asserted cause of action unfolded from the pleadings, the record discloses multiple interests and solicitors of record facing the Plaintiff. The Plaintiff's position concerning multiple interests is implicitly supported by the provisions in each April 27, 1998 order that the consolidation of the Defendant Plug and the Nutron Plug claims to T-992-92 and T-610-96 respectively, relative to the Distributor Defendants, include the discovery relative to each plug which had already taken place. The scheme of the Rules defines and refines issues via interlocutory process. That includes the addition and subtraction of causes of action. Rule 400 vests the Court with broad discretion for costs. Rule 400(6)(a), for greater clarity, states that the Court may "award or refuse costs in respect of a particular issue or step in a proceeding". There is nothing in the interlocutory and final awards of costs in these matters to suggest that the Defendant Plug costs were to be reduced as a function of the Nutron Plug litigation.
[13] These pleadings were neither the simplest nor the most difficult to address. I will apply discretion consistent with my approach in Grace M. Carlile v. Her Majesty the Queen (1997) 97 D.T.C. 5284 at 5287 (T.O.) and the sentiment of Lord Justice Russell in Re Eastwood (deceased) (1974) 3 All. E.R. 603 at 608, that assessment of costs is "rough justice, in the sense of being compounded of much sensible approximation", in sorting out a reasonable result for costs. A counterclaim is essentially an independent action with its own disposition for costs. I give no weight to the absence in the Plaintiff's bill of costs of a claim for counterclaim costs. I allow 6 units for T-992-92 and 5 units for each of T-607-96, T-608-96 and T-610-96. In so doing, I took into account the Defendants' concern that these pieces of work did not necessarily occur in a vacuum.
[14] The Defendants objected generally to all counsel fee items claimed at the maximum (106 such items), but did not address all of them with individual submissions as, for example, the pleadings above. I have made allowances, in the bill of costs, for such items not specifically identified in these reasons in a manner consistent with my approach for the pleadings above and as a function of the circumstances for each event in this litigation.
Item 4: 4 units claimed for the Plaintiff's motion in each of T-607-96, T-608-96 and T-610-96 resulting in the April 27, 1998 Orders above which provide for "costs...in the discretion of the Trial Judge" (2 - 4)
[15] The Defendants argued that no costs are payable because the Supplementary Judgment - Costs did not address the outstanding issue of costs in these three orders. Further to Geddes v. Lamin Tech Corp. [1999] F.C.J. No. 1745 (A.O.) concerning sufficiency of notice, the Defendants objected to the attempted inclusion below of costs for the cross-motions. The Defendants asserted that the Plaintiff had sufficient notice of their intention to seek a set-off of costs per Rule 408(2) for the orders dated November 17, 1998 (costs of the motion to Anchortek) and September 25, 2000 (Column IV costs of the motion to Anchortek in the cause), including item 24 travel by counsel. The allowances should be comparable to the results for the Plaintiff, ie. middle to low end of the range.
[16] The Plaintiff argued that this excerpt from the Supplementary Judgment - Costs, "plaintiff...is entitled to its costs of this action", addresses these costs. The wording of these orders is tantamount to costs in the cause. The Plaintiff argued that these orders are different from those orders silent as to costs and for which associated costs were withdrawn accordingly from the bill of costs. The Plaintiff asked permission to add $440.00 for each cross-motion referred to in the orders and argued, relative to the Defendants' submissions for set-off of costs, that all proposed additions for both sides should be allowed in or all should be refused.
Assessment
[17] Costs awarded for interlocutory proceedings are governed by the orders disposing of them. If the wording of the interlocutory award of costs does not specifically restrict those costs to the interlocutory proceeding, they are taken as so restricted and may be varied or removed as a function of an appeal to the Federal Court of Appeal, but they cannot be varied or removed by the judgment after trial. If the wording of the judgment on the substantive issues of the litigation does not specifically authorize judgment costs throughout from institution of the litigation, they are taken as so authorized except where interlocutory orders pre-empt such application of the judgment, ie. "costs in any event of the cause", "costs", "no costs" etc. The term "costs in the cause" permits recovery of those interlocutory costs only after success in the substantive event of the litigation, ie. judgment after trial. Here, Anchortek cannot claim costs as a function of the September 25, 2000 order because it was not successful in the cause. The Plaintiff is not entitled to costs as a function of the April 27, 1998 orders because the trial judge did not specifically and visibly exercise the discretion required, ie. the wording in the orders being "costs of the motion and the cross-motion are in the discretion of the Trial Judge". In the circumstances, I deny set-off costs relative to the November 17, 1998 order.
Item 13(b): 3 units claimed for trial preparation per day after the first day (2 - 3)
Assessment
[18] After some discussion between counsel about whole days versus half-days as multipliers, the parties agreed that item 13(b) could be presented as a function of 5 days. As well, they agreed that item 14(a) (appearance at trial) could be presented as a function of 6.5 hours per day for 5.5 days. The Defendants still maintained that only middle to low values in the available ranges should be allowed.
[19] Paragraph 30 of the Reive affidavit above (on behalf of the Plaintiff) read: "...if the Anchortek Claims and the Nutron Claims are separated...there will be very restricted infringement and validity issues in both sets of actions...trials in the actions will be greatly simplified, in comparison with a typical patent infringement action...." Subsequent complicating events could, of course, render such assertions irrelevant. Paragraph [19] of the trial judge's reasons stated that by "reason of earlier decisions of both Divisions of this Court with regard to the Almecon Patent, the issues regarding validity are substantially narrower than originally contemplated by the pleadings...." My reaction generally to this litigation is comparable to that in paragraphs [83] to [90] inclusive in Milliken & Company, supra, ie. this litigation was more difficult in preliminary stages than to argue at trial. I will apply the approach for item 14(a) there to the item 14(a) claimed here. That is, I allow item 14(a) at 2 units per hour for 3.5 days and at 3 units per hour for 2 days (both as a function of 6.5 hours per day). I allow item 13(b) as presented at 3 units per day.
Item 24: 5 units claimed for travel by the Plaintiff's counsel for the test conducted by expert Clifford J. Anderson on the Defendant Plug (1 - 5)
[20] The Defendants noted that re-scheduling of this test was the subject of their motion just before trial. The trial judge ordered that the motion be adjourned sine die (July 24, 2001) after strongly recommending that the Plaintiff reproduce the test for the Defendants. The Defendants objected to any allowance for counsel fees, and associated travel disbursements, because the Court never considered the substantive elements of the motion and because such costs are claimed as a function of the Court's order, which was silent on costs. The Defendants argued that paragraph [82] of the trial judge's reasons is not a positive comment on the value of this test.
[21] The Plaintiff argued that the order is not silent on costs because no order ever issued on the merits of the motion. The Plaintiff asserted that the Defendants' conduct caused them to miss the first test, which was part of trial preparation. The fact that the Defendants followed up with a motion for relief demonstrates that they thought the test was relevant. Paragraph [27] of the Federal Court of Appeal's reasons supports the relevance of the test.
Assessment
[22] These costs are part of trial preparation and were not relevant for the hearing of the motion. The Federal Courts Act, ss. 4 and 5.1 defining the Court, and Rule 2 of the Federal Court Rules, 1998 defining an assessment officer, preclude me from usurping the discretion vested in the Court by Rule 400(1) to award costs. A Rule 400(1) award of costs does vest an assessment officer with jurisdiction to decide which items of costs are to be allowed and their quantum. I do not exercise the discretion reserved to the Court for item 24. The special directions in the Supplementary Judgment - Costs do not cover this particular claim and I therefore disallow item 24. However, I routinely allow associated travel disbursements, in the absence of special directions for item 24, if the presence of counsel is essential at a venue. Here, I consider the presence of lead counsel to have been essential and I allow the associated travel disbursements within my reduced allowance below for the $40,817.09 in issue for travel for pre-trial matters.
Item 9: 1.5 units (the maximum available) per hour claimed for attendance by second counsel on discovery on several occasions
Item 13(a): 2.5 units (the maximum available) for the first day of trial and 1.5 units (the
and (b) maximum available) for each subsequent day of trial claimed for trial preparation by second counsel
Item 24: 2.5 units (the maximum available) for travel by second counsel to discovery and 2.5 units for travel by second counsel to the trial
[23] The Defendants argued further to Desnoes & Geddes Limited v. Hart Breweries Limited [2002] F.C.J. No. 869 (F.C.T.D.) at paragraph [25] and Wong v. Canada (Minister of Citizenship & Immigration) 3 Imm. L.R. (3d) (A.O.) at paragraphs 3 and 7 that the Plaintiff's materials have not established complexity warranting second counsel. The Defendants asserted that they generally required only one counsel at motions and discoveries throughout notwithstanding the use of second counsel by the Plaintiff.
[24] For the various discoveries (item 9), the Plaintiff relied on its submissions above concerning the logistical difficulties in dealing with multiple defendants having multiple counsel. These discoveries were complicated by four sets of documents and the necessity to prepare for four distinct defendants whereas Anchortek had only to prepare for a single plaintiff. The Plaintiff applied the same argument to trial preparation and noted that the Defendants themselves used three counsel as compared to two for the Plaintiff. The Defendants' authorities are distinguishable because the Supplementary Judgment - Costs granted fees for second counsel at trial and it therefore follows that second counsel for trial preparation was essential.
Assessment
[25] Other than item 14(b)(trial) and item 22(b)(appeal), the Tariff does not visibly provide for second counsel. The Supplementary Judgment - Costs vests me with discretion for second counsel beyond these two items. Counsel for the Plaintiff withdrew the only claim for second counsel on a motion: I would have disallowed it in any event. As noted above, I think this litigation was more difficult in the earlier stages than at trial as a function of the individual circumstances of the Defendants. I allow second counsel for each of the discoveries of the Defendants, but I disallow it for the Plaintiff's discovery. For these discoveries, I think that the work relative to each Defendant in turn could have had a simplifying effect. From a different perspective, it could be argued that, because an item is claimed specific to and for each Defendant, each item must be considered independently in its own circumstances. I made allowances in the bill of costs as a function of these considerations.
[26] I allow second counsel as presented for item 13(a) and (b) trial preparation. The bill of costs included three item 24 claims for travel by first counsel to discovery venues. These were not in issue, other than for the number of units claimed. The authority to include those claims in this bill of costs is not clear. On its face, paragraph 2(b) of the Supplementary Judgment - Costs appears to address only item 14 counsel fees and paragraph 2(c) appears to address only disbursements. In the circumstances, I disallow any associated claims under item 24 for second counsel. The same rationale underlies my disallowance of the item 24 claims for travel to the trial venue by second counsel.
Photocopies ($15,474.85); Facsimiles ($1,358.05); Long Distance ($258.53); Couriers ($4,485.36) and Transcript Fees ($11,766.77)
[27] The Defendant argued further to F-C Research Institute Limited et al. v. Her Majesty the Queen et al. 95 D.T.C. 5583 at page 5584 (T.O.) that the supporting evidence, being essentially the law firm's computer printout showing dates, but not details, is insufficient and therefore these disbursements should be disallowed. The Defendants did concede that some disbursements would have been necessary, but argued further to Windsurfing International Inc. et al. v. Bic Sports Inc. et al. 6 C.P.R. (3d) 526 (F.C.T.D.) and Diversified Products Corp. v. Tye-Sil Corp. 34 C.P.R. (3d) 267 (F.C.T.D.) that there must be some evidence of purpose, necessity and reasonableness. The Defendants noted that the cross-examination of Ronald E. Dimock on his affidavit sworn March 8, 2002, in support of costs, resulted in a statement that no additional records for photocopies were available. The Defendants asserted that even the invoices from outside suppliers of photocopies lacked details by which purpose, relevance and reasonableness could be gauged.
[28] The Defendants argued that the state of this evidence precludes confirmation that Nutron Plug costs are not somehow bound up in these disbursements as claimed. The Defendants suggested a one-third reduction for photocopies, facsimiles and couriers and conceded $258.53 for long distance. For transcript fees, the Plaintiff removed $2,340.70 and $322.20 (13/11/1998 and 30/11/1998 respectively, on page 19 of Exhibit I to the Dimock affidavit) leaving $9,103.87 for transcript fees, to which the Defendants agreed. The Defendants argued that the Plaintiff's agreement to remove these two amounts indicates that human error can occur in entries for computer logs and that should be a consideration in the assessment of the other disbursements in issue.
[29] The Plaintiff argued further to Rothmans, Benson & Hedges Inc. v. Imperial Tobacco Ltd. 50 C.P.R. (3d) 59 (F.C.T.D.), Allied Signal Inc. v. Du Pont Canada Inc. [1997] F.C.J. No. 993 (T.O.) and Red Owl Foods (Alta) Ltd. v. Red Owl Stores Inc. 12 C.P.R. (2d) 266 (F.C.T.D.) that assessment officers have broad discretion for the sufficiency of acceptable as opposed to irrefutable evidence. The Plaintiff argued that the presence of four defendants, four pleadings, four discoveries and four sets of correspondence generated a great number of events. Therefore, $15,474.85 for photocopies over several years, consisting of in-house copies at $0.25 per page and the less expensive rate of $0.11 per page for outside copies, are reasonable. The computer case tracking system used minimized human error by requiring input of the client identification number before permitting photocopying to proceed. The Plaintiff asserted that this computer case tracking system applied similarly to the other disbursements in issue.
[30] The Plaintiff argued that the Defendants' premise concerning Nutron Plug costs is flawed because it implies costs associated with causes of action dropped or settled are precluded, in turn creating a penalty for settlement. The Plaintiff argued that Nutron Plug considerations relative to the Distributor Defendants were certainly relevant at least until the April 27, 1998 separation orders. Those considerations were never a factor for costs associated with Anchortek.
Assessment
[31] I rely on Re Eastwood (deceased), supra, and my approach in Carlile, supra and in Canadian Union of Public Employees, Local 4004 v. Air Canada [1999] F.C.J. No. 464 (A.O.) to resolve these issues. I see the linkages asserted by the Plaintiff, but the proof is less than absolute. Such proof in these circumstances would be prohibitively expensive. The cross-examination of Mr. Dimock on his affidavit produced several comments from him to the effect that the cost of absolute proof of charges in the range of $10, $20, $30 etc. would exceed the actual amount of the disbursements themselves. Mr. Dimock is an experienced practitioner in a competitive area of law and I accept his views on the realities of threshold of proof in litigation. A sense of austerity should pervade costs, but real expenditures are needed to advance litigation: a result of zero dollars at assessment would be absurd. I accept to a point that the Plaintiff faced logistical difficulties. I allow facsimiles as presented at $1,358.05. I reduce photocopies and couriers to $12,000.00 and $3,700.00 respectively.
$40,817.09 (including meals, accommodation, taxis and airfare) claimed for several trips by first and second counsel to discovery, motion and trial venues
[32] The Defendants advanced material outlining economy airfares and asserted that the amounts in evidence indicate business class fares were likely used contrary to the principle in Dableh v. Ontario Hydro [1994] F.C.J. No. 1810 (T.O.) at paragraph 20. The Plaintiff should be allowed something less than full fare economy. The Defendants argued that the Supplementary Judgment - Costs did not intend that they subsidize a lavish lifestyle. The Defendants argued that the hotel rate during trial (approximately $264.00 per night) was lavish compared to their own rate and should be reduced to something comparable to the $169.00 used for discoveries.
[33] The Plaintiff argued that something less than full fare economy has restrictions not suitable in litigation, but agreed that business class is not normally allowable. The Plaintiff argued that paragraphs 2(c) and (e) of the Supplementary Judgment - Costs effectively distinguish Dableh, supra. Second counsel was left to my discretion. Therefore, the $2,823.15 and $3,525.95 for travel by second counsel to discoveries in 1998 can be reduced accordingly. Otherwise, there is no discretion for me to interfere with the provisions in the Supplementary Judgment - Costs. The Plaintiff asserted that the Defendants' appeal of the Supplementary Judgment - Costs detailed very specific grounds of appeal, but significantly did not address these portions of the award of costs. The Defendants cannot now attempt to rectify that oversight. The Plaintiff conceded that a less expensive hotel is appropriate for a shorter stay, but argued that an intensive ten-day trial necessitated extra working space, ie. the desire for a lavish hotel suite was not the motivating factor.
Assessment
[34] The Supplementary Judgment - Costs did not remove my discretion nor the threshold for reasonable necessity. The record confirms business class airfares were used. Such airfares are still not the norm. Faresavers are too restrictive for the purposes of litigation. I am not convinced in these circumstances that the extra hotel costs were warranted. Assessment of these costs is complicated by my disposition above of second counsel fee items; my view that paragraph 2(c) of the Supplementary Judgment - Costs addresses disbursements, but not fees; the general wording of paragraph 2(e) and the withdrawal by the Plaintiff of $900.96 for the travel costs of lead counsel to the motion venue to address the dispute concerning Mr. Anderson's test. I think a reasonable amount in the circumstances is $32,000.00, which I allow.
$5,094.18 (of which $73.00 for taxis were conceded) claimed for several trips by non-counsel to discovery venues
$1,102.34 claimed for trip by non-counsel to the venue for Mr. Anderson's test
Assessment
[35] The Defendants argued further to Tariff B1(4) and Archambault v. Canada [2002] F.C.J. No. 649 (A.O.) that the insufficiency here of the evidence precludes any allowances at all. The Plaintiff attempted to introduce some recently located invoices, but the Defendants objected to short notice. The Plaintiff withdrew the invoices, but argued that something should be allowed given that it is a matter of record that these people (the Plaintiff's representatives) had to attend for valid purposes. The Plaintiff agreed to the Defendants' suggestions for the removal of certain amounts if I reject the latter's submissions on sufficiency, which I do. I have endorsed the bill of costs with the agreements reached by the parties.
$14,026.78 claimed for trip by non-counsel to the trial venue
Assessment
[36] The Plaintiff conceded the Defendants' concern for the cost of the hotel (the same as used by trial counsel). The parties left it to me to adjust the allowance consistent with my result above for hotel charges by trial counsel. I allow a reduced amount of $12,200.00.
$86,722.26 claimed for expert Clifford Anderson
[37] The Defendants argued that Mr. Anderson's charges are excessive as compared to the much smaller charges of $5,350.00 claimed by each of the Plaintiff's other two experts. The Defendants conceded that he was the Plaintiff's main expert, but noted that some of his testimony was rejected by the trial judge notwithstanding the comments of the Federal Court of Appeal. The threshold expressed in Camp Robin Hood Limited v. Her Majesty the Queen [1982] 1 F.C. 19 at 38 (F.C.T.D.) and the principle in Apotex Inc. v. Syntex, 2 C.P.R. (4th) 368 at 377 (F.C.T.D.), that an unsuccessful litigant should not have to pay for a "Cadillac" of experts, should limit recovery here. The Defendants do not suggest that the allowance for Mr. Anderson must be limited to the $5,350.00 above, but that amount should be a factor in arriving at an amount for Mr. Anderson. The Defendants asserted concerns for relevance in specific invoices, ie. numbers 5107, 5473 and 128 include Nutron Plug litigation costs which are not recoverable here. The timelines in invoices 5107 and 5473 intersect with the timeline for the Nutron Plug litigation.
[38] The Plaintiff argued that paragraph 2(d) of the Supplementary Judgment - Costs indicates that the trial judge thought highly enough of Mr. Anderson's work to approve all of its elements. Paragraphs [27] and [36] of the Federal Court of Appeal's reasons are a very positive endorsement of his work. His accounts meet the threshold for proof expressed in Camp Robin Hood Limited, supra and Diversified Products Corp., supra. The Defendants' reference to the "Cadillac" of experts is irrelevant for work spanning over six years and performed more efficiently than for comparable cases.
[39] The Plaintiff asserted that the reference line in invoice 5107, ie. "Almecon v. Nutron...", was an error because the work listed in the body of the invoice includes "Detailed analysis of court decision" referring to the Nutron Plug decision. This invoice is for work following his work relative to the Nutron Plug decision and is specific to the Defendant Plug. The Plaintiff asserted that the reference line in invoice 5473, ie. "Almecon v. Nutron...", was also an error because the work listed in the invoice specifically addresses the Defendant Plug, his review of the Nutron Plug decision and his review of his testimony in the Nutron Plug litigation, all in preparation for the Defendant Plug litigation. The Plaintiff applied the same argument to invoice 128 and asserted that these three invoices, together with invoice 6130, address the preparatory stages of litigation during 1995-1998. The Plaintiff asserted that invoices 1027, 1913 and 2045 comprise approximately one-half of his total account and address design and reproduction of his test of the Defendant Plug. The remaining invoices addressed his trial preparation, expert report and rebuttal report. The Plaintiff argued that it was reasonable and necessary to have used Mr. Anderson because he had testified at the Nutron Plug trial. The trial judge there relied heavily on him and it would have been much more expensive to start over here with a new expert.
Assessment
[40] To the extent that it is applicable here, I apply my approach in Merck & Co. Inc. et al. v. Apotex Inc., [2002] F.C.J. No. 1116 (A.O.), affirmed by [2002] F.C.J. No. 1357 (F.C.T.D.), and Bayer A.G. et al. v. Apotex Inc. et al. [2002] F.C.J. No. 1693 (A.O.) to this expert account. It is supervising counsel who set and adjust, as necessary, the parameters for the work of experts as a function of a professional legal opinion of the technical assistance necessary to assist the Court in making a decision. Supervising counsel must be prudent, but not excessive, in determining what non-counsel work can be assigned to the assisting expert. There is a certain degree of imprecision in that division of work and a successful litigant should not be unduly penalized in hindsight as a result. Equally, that litigant should not escape the limits of partial indemnity via the use of experts for work within the capability of supervising counsel, the latter being subject to partial indemnity.
[41] Experts are a reality in patent litigation. It was reasonable here to have used someone already familiar with the materials. The trial judge may have been skeptical about certain aspects of all of the expert evidence, but he did rely on its "totality" (paragraph [83] of his reasons). Paragraph [28] of the Federal Court of Appeal's reasons commented on this "totality" without criticizing Mr. Anderson. I note in the invoices a certain amount of review and analysis during 1995 - 1998 of various things: it is difficult to discern whether such work intersected with responsibilities more properly left with supervising counsel. The work associated with the test seems appropriate. One expert reviewing the work of another expert for the same side, ie. invoice 2109, sometimes, but not necessarily, carries the risk of blurring the line between counsel and non-counsel work, apart from possibly being redundant. The entry in invoice 2371 for "post trial discussions" indicates attention to completeness of the listing of work performed, but on its face falls outside the limits of the award of costs. In the circumstances, I allow a reduced amount of $74,000.00.
Item 5: 7 units claimed for response to the Defendants' motion to set aside my decision dated December 23, 2002, concerning delay of this assessment of costs: dismissed by order dated February 5, 2003, with costs to the Plaintiff (3 - 7)
Item 6: 3 units claimed for appearance (1 - 3)
Item 26: 6 units claimed for assessment of costs (2 - 6)
Assessment
[42] The Defendants conceded that the Plaintiff could add these items 5 and 6 to the bill of costs, but only at the middle to low point in the available ranges. After I commented that it is common for parties to specify the amount claimed for item 26 only after the hearing of the assessment of costs on the basis that, at the time of preparation of the bill of costs, this item would address a future event and therefore the appropriate claim cannot yet be gauged, the Defendants conceded that it could be added, but again only at the middle to low point in the range. In the circumstances, I allow items 5 and 6 at 4 units and 1 unit per hour (for 1.5 hours) respectively. Item 26 is a global fee encompassing both preparation and appearance: I allow 5 units.
$9,244.48 claimed for counsel fees and disbursements for A-34-02 and A-398-02
Assessment
[43] The Defendants objected only to the maximum claimed for item 19 (Memorandum of Fact and Law) in each file and items 22(a) and (b) (appearance fees for first and second counsel) and suggested the middle to low point in the available ranges as these matters were not complex. The Defendants expressed the same concerns as above for sufficiency of evidence, but conceded the disbursements as presented ($2,170.71) without prejudice to their objections above for the trial bill of costs. The Plaintiff relied on its submissions above for its trial bill of costs.
[44] I reduce each item 19 to 5 units. As noted in Bruce Starlight, supra, broad distinctions are sometimes required in choosing a value from limited ranges such as 2 - 3 for item 22(a). I allow item 22(a) as presented at 3 units per hour for 9.8 hours. The Judgment did not authorize anything for second counsel: I disallow item 22(b).
[45] The bill of costs of the Respondent in each of A-34-02 and A-398-02, presented at $9,244.48, is assessed and allowed at $7,043.49 The bill of costs of the Plaintiff in each of T-992-92, T-607-96, T-608-96 and T-610-96, presented at $285,633.42, is assessed and allowed at $224,718.81.
(Sgd.) "Charles E. Stinson"
Assessment Officer
Vancouver, B.C.
November 6, 2003
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-992-92
STYLE OF CAUSE: ALMECON INDUSTRIES LIMITED
- and -
ANCHORTEK LTD. et al.
PLACE OF HEARING: Toronto, ON
DATE OF HEARING: May 12, 2003
REASONS FOR ASSESSMENT OF COSTS: CHARLES E. STINSON
DATED: November 6, 2003
APPEARANCES:
Henry Lue FOR PLAINTIFF
Jeremy E. Want FOR DEFENDANTS
SOLICITORS OF RECORD:
Dimock Stratton Clarizio LLP FOR PLAINTIFF
Toronto, ON
Smart & Biggar FOR DEFENDANTS
Ottawa, ON
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