Date: 20070309
Docket: T-1499-04
Citation: 2007
FC 273
Ottawa, Ontario, March 9, 2007
PRESENT: The Honourable Mr. Justice Hugessen
BETWEEN:
SANOFI-AVENTIS CANADA INC. and
SANOFI-AVENTIS DEUTSCHLAND GmbH
Applicants
and
APOTEX INC. and
THE MINISTER OF HEALTH
Respondents
REASONS FOR ORDER AND ORDER
[1]
The respondent, Apotex Inc. (Apotex) moves for a special Order
respecting costs following the dismissal, by Order on consent dated 27 June,
2006, of the applicants' Sanofi-Aventis Canada Inc. and Sanofi-Aventis
Deutschland GmbH (Aventis) application for a prohibition Order pursuant to the Patented
Medicines (Notice of Compliance) Regulations (SOR/93-133, as amended
to SOR/99-379) (the Regulations). Since that dismissal was stated to be
with costs to Apotex without more, Apotex would normally be entitled by reason
of Rule 407 of the Federal Courts Rules (SOR/98-106) to costs calculated
in accordance with Column III of Tariff B plus allowable disbursements. The
motion seeks costs on a solicitor and client basis, or some proportion thereof
or, at the least, under Column V of Tariff B.
[2]
The principal ground advanced by Apotex in support of the motion
is the allegedly improper conduct of Aventis in waiting until virtually the eve
of the scheduled hearing date for its application to realize that its chances
of success were forlorn and consenting to a consent disposition as described
above. In fact, it is quite clear from the record that the triggering event for
Aventis’ decision to fold its tent was the rendering by the Federal Court of
Appeal of a unanimous judgment in the case of Pharmascience Inc. v.
Sanofi-Aventis Canada Inc., 2006 FCA 229 (Pharmascience), a
unanimous decision rendered on June 21, 2006. There may arguably have been some
ambiguity in the state of the Court of Appeal's case law prior to that date as
to the question whether consumption by patients of a generic drug for a
patented use, without any inducement or procurement by the manufacturer of that
drug, beyond merely selling it, could justify an order prohibiting the Minister
of Health from granting a Notice of Compliance to the generic manufacturer in
respect of the same drug; however, that ambiguity was clearly resolved by the
decision and the Court made it crystal clear that that mere sale, without inducement
or procurement, could not justify a prohibition under the Regulations in
respect of a patent solely for use of that drug.
[3]
Almost immediately upon receipt of the decision in Pharmascience
counsel for Aventis initiated conversations with counsel for Apotex with the
result that the hearing of Aventis’ application, scheduled for the following
week, did not take place and the consent Order of dismissal was entered
(subject to Aventis’ right to appeal).
[4]
In my respectful view, the present motion is wholly misconceived
and devoid of merit.
[5]
There is an important public interest in encouraging parties to
settle their disputes prior to trial thereby saving both public and private
expenditure of time and money. They should not be mulcted in costs when they do
so. In my judgment there was nothing whatever reprehensible in Aventis’ waiting
until the results of the Pharmascience appeal (to which it was itself a
party) before deciding to abandon the fight against Apotex. Once that appeal
was decided, Aventis acted with commendable promptness and neither the Court
nor Apotex were put to any further or unnecessary expense or effort.
[6]
A secondary ground urged by Apotex, namely that it has suffered
damage from being delayed in coming to market by the very existence of Aventis’
proceedings, is equally without merit. If damage has been suffered by reason of
the Aventis application under the Regulations, a motion for elevated costs is
not the proper vehicle for asserting such claim.
[7]
There will be no Order for increased costs beyond what has
already been granted by Column III of Tariff B and reasonable expenses. If the
parties cannot agree as to the amounts in play, they may go before an
assessment officer to have their disagreement settled in the usual way.
[8]
I should add that, in my view, this result is entirely compatible
with the very recent decision of the Federal Court of Appeal which granted
significantly increased costs to Apotex ($25,000 inclusive of disbursements of
a little over $4,000) upon the dismissal of Aventis’ appeal from the consent
dismissal on the merits herein. (See A-575-05, Judgment of 5 March,
2007).
[9]
In the first place, that appeal was clearly forlorn in the light
of the Pharmascience decision which was rendered prior to the appeal
being launched. Secondly, and very significantly, a quick perusal of the motion
record before the Court of Appeal reveals that there was conduct by Aventis’
counsel in the carriage of the appeal which was deserving of some sanction by
the Court. Here, as I have indicated, there is none.
[10]
In my view, Apotex should bear the costs of the present motion
which I fix at $1,000 inclusive of disbursements.
ORDER
THIS COURT ORDERS that
1. The motion is dismissed with
costs to Aventis of $1,000 inclusive of disbursements.
“James
K. Hugessen”
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