Apotex Inc. v. Wellcome Foundation Ltd.
T-3197-90
Wetston J.
13/11/98
32 pp.
Glaxo seeking directions to assessment officer pursuant to Federal Court Rules, 1998, rr. 400 to 404, 420 regarding scale of costs, allowance for multiple counsel, special costs, doubling of costs resulting from offers to settle, disbursements, other miscellaneous costs-Apotex Inc., Novopharm Ltd. bringing motions for order abridging time for service of motion to strike certain passages from written representations of Glaxo-Action challenging patent validity-Proceedings legally, factually complex-Court having full discretionary power over amount, allocation of costs, determination of by whom to be paid: r. 400(1)-Factors to be considered by Court in exercise of discretion set out in r. 400(3) i.e. result of proceeding; importance, complexity of issues; any written offer to settle; amount of work; any conduct of party tending to shorten, unnecessarily lengthen duration of proceeding, failure to admit anything that should have been admitted or to serve request to admit; whether any step in proceedings improper, vexatious or unnecessary; any other matter considered relevant-If costs left to be determined by assessment officer, Court may give directions to assessment officer, including direction costs be assessed under specific column of Tariff B: r. 400(5)-Tariff B formulated to reflect philosophy party-and-party costs should bear reasonable relationship to actual costs of litigation, while preserving Court's, assessment officer's discretion-Costs should be neither punitive nor extravagant-Tariff B striving to accomplish that balance-Award of costs representing compromise between compensating successful party, not unduly burdening unsuccessful party-(1) As to scale of costs, solicitor-client scale generally based on misconduct-Court not accepting Glaxo's submission solicitor-client costs warranted due to speculative, unfounded allegation of fraud-Alternatively award of costs equal to two-thirds of reasonable counsel fees incurred in relation to proceedings, plus disbursements, inappropriate as would simply be unwarranted extension of solicitorclient costs-In further alternative Glaxo seeking costs at maximum rate provided under Column V of Table in Tariff B-Only in most exceptional case should Court depart from Tariff B in award of party-and-party costs-Glaxo asserting reasons to go outside Tariff or increase Tariff from Column III-Apotex', Novopharm's references to prior art, despite order striking them for failure to adequately particularize them, making trial more complex, requiring at least more time, effort of both experts, counsel in these proceedings-Glaxo's failure to produce certain key documents in trial also consideration in exercise of overall discretion with respect to directions-Parties agreeing trial hard fought-Both parties tenacious, gave no ground-Neither party displaying tendency to narrow issues, agree on facts, provide any admissions during trial regarding invalidity-Excessive costs one obvious result of parties' failure to take any of these measures-Scale of costs should be increased to upper end of Column IV, Tariff B-Such increase warranted by volume of work involved; importance, complexity of legal issues; nature of work involved; fact party and party costs should bear reasonable relationship to actual costs of litigation-(2) Glaxo seeking order for fees of two senior, one junior counsel at maximum rate provided by Column V -Also seeking costs equal to two-thirds of reasonable counsel fees incurred for preparation, filing of written submissions at close of trial-Submitting additional counsel required in all matters due to exceptional volume of work, complexity of matters raised-Glaxo's cost for counsel fees should be calculated at Unit 4 of column IV, Tariff B-For matters at trial, Glaxo granted fees for one first counsel, two second counsel at 50% of amount calculated for first counsel-For motions, discovery, examinations, pre-trial procedures, Glaxo granted fees for one first counsel, one second counsel at 50% of amount calculated for first counsel-With respect to preparation, filing of written submissions at close of trial, Glaxo granted fees of one first counsel, one second counsel at 50% of amount calculated for first counsel-(3) Glaxo seeking double costs due to its offers to settle made before trial-R. 420(1) providing unless otherwise ordered, where plaintiff making written offer to settle that is not revoked, and obtains judgment as favourable or more favourable than terms of offer to settle, plaintiff shall be entitled to party-and-party costs to date of service of offer, and double such costs, excluding disbursements, after that date-While evidence not extensive, nature of Glaxo's offer to settle sufficient to allow parties to negotiate settlement-Relief obtained as favourable or more favourable than Glaxo's offer to settle, as required by r. 420-Glaxo's offer not overbroad with regard to exporting, inducing others to infringe, selling bulk forms of zidovudine-Both offers of settlement by Glaxo late in proceedings, responsive only to Apotex and Novopharm's proposals-While evidence regarding likelihood of settlement not apparent, nevertheless in accordance with Rules, additional costs warranted-Costs assessed against Novopharm, Apotex for all proceedings subsequent to January 27, 1997, December 9, 1996 respectively at 150%-(4) Glaxo seeking travel, living expenses, miscellaneous disbursements for two senior, one junior counsel for all pre-trial matters, for two senior, two junior counsel during trial, one law clerk during trial-Discovery taking place in North Carolina, Rhode Island, Toronto, London, England-Trial held in Toronto at Apotex' request-During trial, counsel for Glaxo required to travel to North Carolina, Florida to attend examinations-Glaxo should receive travel, living expenses during trial for two second counsel-Travel, living expenses to North Carolina, Florida incurred during trial should also be granted to Glaxo-Glaxo not granted costs for travel, living expenses incurred by counsel pre-trial-Glaxo not granted costs for evidence, attendance of Dr. Brechard, whose evidence unnecessary-Glaxo granted costs for experts' fees, disbursements arising as result of experts' time spent in: preparing affidavits; reviewing patent; reviewing other experts' affidavits, attendance in Court-Glaxo shall receive costs for experts' travel, but only with respect to attendance in Court-Request for costs for experts' time spent meeting with counsel denied-Glaxo not entitled to costs for fees, disbursements related to experts not called at trial-Glaxo not entitled to recover costs for fees, disbursements of expert witnesses incurred after conclusion of evidence-Glaxo shall receive costs for all travel, living expenses for trial incurred by fact witnesses-Glaxo entitled to costs for law students, law clerks at 50% of amount calculated for solicitor, pursuant to Tariff B, item 28-Reasonableness of number requested left to assessment officer-Glaxo not entitled to travel, living expenses costs for law clerks, students-Not entitled to pre- or post-judgment interest regarding costs-Entitled to costs in respect of fees, disbursements related to factual aspects of inventorship issues-Motion for order abridging time for service of motion to strike dismissed-Federal Court Rules, 1998, SOR/98-106, rr. 400, 401, 402, 403, 404, 420, Tariff B.