Georgetown Rail Equipment Company v. Tetra Tech Eba Inc.

Georgetown Rail Equipment Company v. Tetra Tech Eba Inc.
Court (s) Database
Federal Court Decisions
Date
2023-03-15
Neutral citation
2023 FC 347
File numbers
T-896-15
Decision Content
Date: 20230315
Docket: T-896-15
Citation: 2023 FC 347
BETWEEN:
GEORGETOWN RAIL EQUIPMENT
COMPANY
Plaintiff
and
TETRA TECH EBA INC.
Defendant
REASONS FOR ASSESSMENT
GARNET MORGAN, Assessment Officer
Introduction
[1] This assessment of costs is pursuant to an Order and Reasons of the Federal Court dated December 23, 2020 (2020 FC 1188), wherein the Court stated the following at paragraphs 1 and 2 of the Reasons:
[1] This order concerns the costs and disbursements payable to Tetra Tech EBA Inc [Tetra Tech] by Georgetown Rail Equipment Company [Georgetown] as a result of the Federal Court of Appeal’s judgment in Tetra Tech EBA Inc v Georgetown Rail Equipment Company, 2019 FCA 203 [Tetra].
[2] For the reasons that follow, Tetra Tech’s fees shall be assessed in accordance with Column V of Tariff B. Tetra Tech shall be reimbursed for only those disbursements that are shown to be reasonable and necessary.
II. Background
[2] To provide greater context and clarity, I am including some passages from various decisions contained in the related Federal Court (T-896-15), and Federal Court of Appeal (A-69-18) court files, which will help to explain the origin of this assessment of costs and some of the terminology and procedural steps that will be referred to throughout these Reasons.
[3] In the Court’s Bifurcation Order (T-896-15) dated May 30, 2016, explanations were provided for the terms “liability phase”, and “quantification issues”, which were the two determinative halves for this bifurcated action proceeding. Although, the Bifurcation Order only refers to a liability phase, the parties’ costs documents often referred to the second determinative half of this proceeding, as being the “quantification phase”, “remedies phase”, or “remedies stage.” Below is an excerpt from the Court’s Bifurcation Order dated May 30, 2016, from paragraphs 1 to 3, with explanations for the terms “liability phase” and “quantification issues”:
[1] In this Order:
[…]
c). “Liability Phase” means discovery and all other steps up to and including a trial or other determination of all the Liability Issues, including any appeals.
d). “Quantification Issues” means:
(i). the quantum of the Plaintiff’s damages, if any, arising from any infringement by Tetra Tech of the Patents and the quantum of reasonable compensation, if any, to which the Plaintiff is entitled;
(ii). the quantum of Tetra Tech’s profits, if any, arising from any infringement by Tetra Tech of the Patents; and
(iii). the extent of infringement, if any, of the Patents.
[2] The Quantification Issues in this action shall be determined separately from, and only after the Liability Phase, if necessary, depending upon the outcome of the Liability Phase. For greater certainty, during the Liability Phase there shall be no further documentary or other discovery on matters solely relating to the Quantification Issues.
[3] If it is necessary, depending upon the outcome of the Liability Phase, to proceed to a determination of the Quantification Issues, the procedure to be followed for the determination of the Quantification Issues, including whether such determination shall be by way of further trial or reference, shall be as directed by the Liability Phase trial judge, and either party may bring a motion for such directions after judgment following the trial in the Liability Phase. Such a motion for directions may be brought regardless of whether the judgment is being appealed.
[4] Concerning the origin of this assessment of costs, the Federal Court of Appeal’s Reasons for Judgment (A-69-18) dated July 9, 2019 (2019 FCA 203), provides some clarification at paragraphs 10 and 134:
3. The decision of the Federal Court
[10] For reasons indexed as 2018 FC 70, the Federal Court found that the patents were not invalid on the ground of obviousness. The Federal Court went on to find that the essential elements of each patent were present in the 3-D TAS so that Tetra’s sale of the system to CN Rail and its support of the system infringed both patents. The Federal Court made no finding about remedy because, pursuant to a bifurcation order, only issues relating to liability were before the Federal Court.
[…]
7. Conclusion and costs
[134] For these reasons, I would allow the appeal and set aside the judgment of the Federal Court. Pronouncing the judgment that ought to have been pronounced, I would dismiss Georgetown’s claim for infringement and allow Tetra’s counterclaim in part. I would declare Canadian Letters Patent 2,572,082 and claims 7, 11 and 18 of Canadian Letters Patent 2,766,249 to be invalid. I would remit to the Federal Court for redetermination in accordance with these reasons the issues of the validity of the remaining claims of Canadian Letters Patent 2,766,249. As Tetra has been substantially successful on appeal I would award it its costs in the Federal Court.
[5] Prior to the issuance of the Federal Court of Appeal’s Judgment, and Reasons for Judgment dated July 9, 2019, the Federal Court had partially dealt with the issue of the Plaintiff’s costs for the liability phase trial (liability trial), wherein the Court’s Order (T-896-15) dated March 28, 2018, stated the following:
[1] On January 31, 2018, this Court issued its Public Judgment and Reasons in Georgetown Rail Equipment Company v Rail Radar Inc, 2018 FC 70 [Georgetown Rail]. The Court held that Canadian Patents 2,572,082 and 2,766,249 owned by Georgetown Rail Equipment Company [Georgetown] are valid and have been infringed by Tetra Tech EBA Inc [Tetra].
[2] On May 30, 2016, Prothonotary Kevin Aalto ordered that the action be bifurcated. This Court’s decision in Georgetown Rail concerns only the question of liability. Subject to any settlement between the parties, the question of remedy falls to be determined at a future reference on damages or an accounting of profits.
[3] Georgetown seeks costs for the liability phase of the action. However, Georgetown says that the precise quantum of costs cannot be determined at this time. Georgetown states that it made a settlement offer to Tetra on September 29, 2017, the details of which remain confidential. Whether the amount of this offer is greater or less than the remedy ultimately obtained, and whether Georgetown is entitled to increased costs pursuant to Rule 420 of the Federal Courts Rules, SOR/98-106, will not be known until the reference on damages or profits is completed.
[4] Tetra appealed this Court’s decision in Georgetown Rail on February 22, 2018. The appeal is pending and no hearing date has been set.
[5] Tetra asks that any determination of costs in the liability phase be deferred until the appeal is decided and the reference on remedies is completed. Georgetown opposes this request, but has said little to support its position beyond noting that it will seek additional costs following the reference if the ultimate award is greater than the settlement offer.
[6] A pending appeal is not sufficient grounds upon which to defer an award of costs (Gillan v Mount St Vincent University, 2007 NSSC 249 at paras 2-4). However, a Court’s inability to fully quantify costs until the proceedings have reached their conclusion may be grounds to defer.
[7] In Apblouin Imports Ltd v Global Diaper Services Inc, 2013 ONSC 5170 [Apblouin Imports], the Ontario Superior Court deferred a determination of costs due to ongoing uncertainty regarding liability and the quantum of the plaintiff’s eventual recovery. The Court noted that further litigation was anticipated to address a number of outstanding issues, and concluded that it was logical to defer any decision on costs until there was greater clarity “as to where and at what amount the liability for costs should fall” (Apblouin Imports at para 6).
[8] Similar considerations apply here. It is logical to defer any decision on costs in the liability phase until there is greater clarity regarding the apportionment of costs and their quantum. Georgetown has not suggested that it will suffer prejudice if the determination of costs is deferred until the conclusion of the reference.
THEREFORE THIS COURT ORDERS that, subject to any settlement between the parties, the determination of costs in Georgetown Rail is deferred until the completion of the reference on damages or an accounting of profits.
[6] The Court’s Order dated March 28, 2018, clarifies that the determination of the Plaintiff’s costs in relation to the liability trial was “deferred until the completion of the reference on damages or an accounting of profits” and that the action proceeding in the Federal Court continued to be litigated concurrently with the interlocutory appeal proceeding in the Federal Court of Appeal. When the Federal Court of Appeal issued its Judgment, and Reasons for Judgment dated July 9, 2019, setting aside the Federal Court’s Public Judgment and Reasons dated January 31, 2018 (2018 FC 70), and pronouncing a new judgment in favour of the Defendant, it now meant that costs were to be determined for the Defendant instead of the Plaintiff for the liability trial. The Federal Court of Appeal’s judgment also meant that the remedies phase for the Federal Court proceeding that was being litigated concurrently with the interlocutory appeal proceeding ceased to continue so that the unresolved liability trial matters highlighted by the Federal Court of Appeal could be dealt with in a remanded hearing in the Federal Court, which was held on December 3, 2019. Concerning the issue of costs for the remanded hearing, the Court’s Judgment and Reasons (T-896-15) dated January 17, 2020 (2020 FC 64), at paragraph 59, stated “[i]n keeping with the agreement of the parties, because success is divided there is no award of costs.” Therefore, there are no additional costs to be assessed in relation to the remanded hearing in this assessment of costs.
[7] Following the conclusion of the remanded hearing, the Defendant filed a letter dated September 15, 2020, seeking the Court’s assistance with the resolution of the Defendant’s pending costs in relation to the liability trial. The Court obliged this request, which led to the issuance of the Court’s Order and Reasons (T-896-15) dated December 23, 2020, which was the catalyst for the filing of the Defendant’s Bill of Costs on June 22, 2021, and this assessment of costs.
III. Assessment of Costs - documentation and hearing
[8] The Defendant filed a Bill of Costs on June 22, 2021, which initiated the Defendant’s request for an assessment of costs. The Assessment Officer (O. Di Mavindi), who was assigned to this file, issued a direction to the parties on June 29, 2021, regarding the conduct and filing of additional documents for this assessment of costs, which was heard by videoconference on August 26, 2021. The court record (hard copy file and computerized version) shows that the following documents were filed by the parties for this assessment of costs:
a) On July 21, 2021, the Defendant filed a Book of Authorities, and a costs record (5 vol.) containing an Affidavit of Bentley Gaikis, sworn on July 21, 2021; an Affidavit of Bob Sotiriadis, sworn on July 21, 2021; and Submissions for Costs Assessment.
b) On August 11, 2021, the Plaintiff filed a Book of Authorities, and a costs record (1 vol.) containing an Affidavit of Lori-Anne DeBorba, sworn on August 11, 2021; and Responding Costs Submissions.
c) On August 18, 2021, the Defendant filed a costs record (1 vol.) containing Reply Submissions for Costs Assessment and additional authorities.
IV. Preliminary Issues
A. Assignment of a different Assessment Officer
[9] The Assessment Officer (O. Di Mavindi) who presided over the assessment of costs hearing on August 26, 2021, vacated her position before a decision had been rendered for this assessment of costs. On August 31, 2022, I issued a direction to the parties advising that I had assumed carriage of this file and inquired about any concerns the parties may have with the assignment of a different Assessment Officer. I noted the following in my direction regarding my ability to conduct this assessment of costs:
I am prepared to assess the costs for this file based on the written material submitted by the parties, in conjunction with the Zoom audio recording and transcript of the assessment of costs hearing and the court record. I will also note that I was an observer at the assessment of costs hearing, so I have some previous familiarity with this file.
[10] In response to the direction, the Defendant filed a letter dated September 9, 2022, advising that there were “no concerns”; and the Plaintiff filed a letter dated September 13, 2022, advising of their “consent”, with my assuming carriage of this assessment of costs. Further to the parties’ responses, I will proceed with my assessment of the Defendant’s costs.
B. Assessable Services - level of costs under Column V of Tariff B of the Federal Courts Rules [FCR]
[11] At paragraphs 8 and 9 of the Defendant’s Submissions for Costs Assessment, the Defendant submitted the following regarding the Court’s award of costs contained in the Order and Reasons dated December 23, 2020:
[8] The Costs Judgment did not specify at which range of Column V should Tetra Tech’s fees be assessed. As a result, the Court armed the assessment officer with the discretion to assess costs within the full range of Column V. Tetra Tech submits that assessment under the high end of Column V is appropriate in this case.
[9] In assessing costs, an assessment officer may consider the factors referred to in Rule 400(3) to determine the appropriate amount of costs. Tetra Tech submits that the Rule 400(3) factors warrant an assessment of costs at the top of Column V. Further, an assessment of costs at the top of Column V is consistent with Georgetown’s 2018 costs submissions which claimed that their costs for the liability phase should have been assessed at an amount no less than the top of Column V. Also, the Court has noted that the Tariff is generally inadequate in intellectual property litigation which further warrants awarding costs at the top of Column V.
[12] Concerning the overall level of costs for this assessment of costs, the Court stated the following at paragraphs 27 to 29 of the Order and Reasons dated December 23, 2020:
[27] In its costs submissions dated March 1, 2018, filed following this Court’s decision in Georgetown #1, Tetra Tech took the position that a lump sum costs award was not appropriate, and “costs should be awarded based on the applicable standard set out in Rule 407; that is, the mid-point of Column III”. Tetra Tech distinguished the present case from the circumstances in which the FCA approved a lump sum costs award in Nova:
Nova was “an extremely complex patent case involving much expert testimony,” noting “22 allegations of invalidity, 33 days of discovery, 32 days of trial, written submission exceeding 700 pages, and the closing argument lasting three days.” It is based on these considerations, that the trial judge concluded that an increased award of costs was justified. This is far from the present situation.
[28] Tetra Tech has had two opportunities to provide the Court and the Plaintiff with a detailed record and sufficient information on which to base a lump sum costs award, but is either unwilling or unable to do so. Having regard to Tetra Tech’s position following this Court’s decision in Georgetown #1 that these proceedings were significantly less complex than those at issue in Nova, and that costs should be assessed in accordance with Tariff B, I accept that this is a reasonable approach to determining costs in this case.
[29] Georgetown proposes that Tetra Tech’s fees be assessed in accordance with Column V of Tariff B, and that it be reimbursed for only those disbursements that are shown to be reasonable and necessary. An Order will be issued accordingly.
[13] In the Defendant’s Bill of Costs submitted for this assessment of costs, all of the claims for assessable services have been claimed at the highest end of Column V; and the Plaintiff has responded by reducing most of the Defendant’s claims to the mid-point of Column V (Defendant’s Submissions for Costs Assessment, paras 14 to 18; Plaintiff’s Responding Costs Submissions, paras 16, 18 to 20 and DeBorba Affidavit, exhibit B; and Defendant’s Reply Submissions for Costs Assessment, paras 3 to 7). Further to the parties’ current positions on costs, my review of the parties’ 2018 costs submissions, which were for the Court’s consideration, revealed that the parties have had differing positions on the level of costs that should be applied in relation to the liability trial, depending on whether costs were owed or costs were payable (Plaintiff’s costs submissions dated Feb. 15, 2018, paras 30, 31, 37, 38; and Defendant’s costs submissions dated March 1, 2018, paras 2, 3).
[14] Concerning the Defendant’s 2018 costs submissions, it is noted that these submissions were filed by a different counsel of record and that the current counsel of record may have a new perspective on the level of costs to be applied in relation to the liability trial (Defendant’s Submissions for Costs Assessment, paras 4, 5). Although this has been noted, the court record does reflect that the Defendant had once argued that “costs should be awarded based on the applicable standard set out in Rule 407; that is, the mid-point of Column III” and that this was referred to in the Court’s Order and Reasons dated December 23, 2020, at paragraph 27, just before reaching a conclusion on costs at paragraph 29.
[15] In support of the Defendant’s claims for costs at the highest end of Column V, Allergan Inc v Sandoz Canada Inc, 2021 FC 186 [Allergan], was cited, wherein the Court stated the following at paragraphs 25 and 26, regarding the inadequacies of Tariff B to sufficiently compensate some intellectual property proceedings:
[25] The "default" level of costs in this Court is the mid-point of Column III in Tariff B: Rule 407; Sanofi-Aventis Canada Inc v Novopharm Limited, 2009 FC 1139 at para 4 [Sanofi-Novopharm FC], aff'd 2012 FCA 265; Apotex v Sanofi-Aventis, 2012 FC 318 at para 5 [Apotex v Sanofi-Aventis]; Dennis v Canada, 2017 FC 1011 at para 8; Bernard v Professional Institute of the Public Service of Canada, 2020 FCA 211 at para 38. Column III is intended to provide partial indemnification (as opposed to substantial or full indemnification) for "cases of average or usual complexity": Thibodeau, above, at para 21; Novopharm Ltd v Eli Lilly and Co, 2010 FC 1154 at para 5 [Novopharm v Eli Lilly].
[26] In recognition of the particular attributes of intellectual property proceedings, it is common for increased costs to be awarded in those proceedings: see, e.g., Consorzio, above, at para 6; Lainco Inc c Commission scolaire des Bois-Francs, 2018 FC 186 at para 8(c). Those particular attributes include greater than average complexity, sophisticated parties, legal bills far in excess of what is contemplated by Column III of Tariff B, and "giving parties an incentive to litigate efficiently": Seedlings Life Science Ventures, LLC v Pfizer Canada ULC, 2020 FC 505 at para 4 [Seedlings]. For cases that involve drug patent disputes and a cost award fixed by reference to the tariff, the high end of Column IV is often considered to be reasonable and appropriate: Sanofi-Novopharm FC, above, at para 13, aff'd 2012 FCA 265; Novopharm v Eli Lilly, above, at para 7; Apotex v Sanofi-Aventis, above. See also Federal Court of Appeal and Federal Court Rules Committee, Review of the Rules on Costs: Discussion Paper, October 5, 2015, at page 8.
[16] In Allergan, the Court stated that the default level of costs in the Federal Court is “the mid-point of Column III in Tariff B” and that increased costs for intellectual property proceedings may be justified based on particular attributes for these types of proceedings, such as “greater than average complexity, sophisticated parties,” and “legal bills far in excess of what is contemplated by Column III of Tariff B” (Allergan, para 26). My review of the Order and Reasons dated December 23, 2020, indicates that the Court considered the attributes for this file, such as complexity and the quantum of costs requested by the Defendant and ultimately awarded increased costs under Column V without any specific instructions to the Assessment Officer regarding the specific range of units to apply within Column V (Order and Reasons dated December 23, 2020, paras 10, 12, 22, 27 to 29). The Court’s costs decision for this file can be distinguished from Eurocopter v Bell Helicopter Textron Canada Ltée, 2012 FC 842 [Eurocopter], which was cited by the Defendant, wherein for that file, the Court awarded increased costs under Column IV but also stipulated that these costs “shall be assessed only at the upper end of column IV of Tariff B” (Eurocopter, para 22).
[17] Further to my consideration of the aforementioned facts, I do not find that sufficient justification has been presented by the Defendant to compel me to make a blanket allowance for all of the Defendant’s claims for assessable services at the highest end of Column V. In Starlight v Canada, [2001] FCJ No 1376 [Starlight], at paragraph 7, the Assessment Officer stated the following regarding assessing each assessable service based on its own circumstances:
[7] The structure of the Tariff embodies partial indemnity by a listing of discrete services of counsel in the course of litigation, not necessarily exhaustive. The Rules are designed to crystallize the pertinent issues and eliminate extraneous issues. For example, the pleading and discovery stages may involve a complex framing and synthesizing of issues leaving relatively straightforward issues for trial. Therefore, each item is assessable in its own circumstances and it is not necessary to use the same point throughout in the range for items as they occur in the litigation. If items are a function of a number of hours, the same unit value need not be allowed for each hour particularly if the characteristics of the hearing vary throughout its duration. In this bill of costs, the lower end of the range for item 5 and the upper end of the range for item 6 are possible results. Some items with limited ranges, such as item 14, required general distinctions between an upper and lower assignment in the range for the service rendered.
[18] Utilizing the Starlight and Eurocopter decisions as guidelines, and pursuant to Court’s Order and Reasons dated December 23, 2020, I will assess the Defendant’s claims for assessable services individually to determine the quantum of costs to allow for each claim. For my assessment of each claim, I will consider the full range of units available under Column V, in conjunction with the factors listed under Rule 400(3) of the FCR, which I am able to consider as an Assessment Officer pursuant to Rule 409 of the FCR. My assessment of each claim will also include a review of the parties’ costs documents, the court record, and any relevant rules, statutes, and jurisprudence that may be applicable for a particular claim.
C. Assessable Services - second counsel fees and travel by counsel
[19] The Defendant’s Bill of Costs has claims submitted under Items 8, 9, 13(a), 13(b) and 14(a) for second counsel fees, and claims submitted under Item 24 for travel by counsel. At paragraph 39 of the Defendant’s Submissions for Costs Assessment the following was submitted regarding second counsel fees:
[39] The Court’s lack of direction regarding second counsel is due to Tetra Tech seeking a lump sum award in its costs submissions and not a result of the Court determining that the inclusion of fees for second counsel services is not appropriate in this proceeding. The recent trend towards awarding lump sum costs in the Court has changed the landscape from old case law where costs submissions were based on the Tariff and it appears Justice Fothergill never turned his mind to how many counsel should be awarded under the Tariff calculations. If the Assessment Officer finds she lacks jurisdiction to award second counsel, Tetra Tech seeks leave to file a motion pursuant to Rule 397 seeking direction from Justice Fothergill with respect to second counsel.
The Defendant did not provide any initial submissions regarding the claims for travel by counsel.
[20] In response, the Plaintiff submitted that the Defendant’s claims for second counsel fees and travel by counsel should be disallowed, as there are no Court directions allowing these costs, and that the time has expired for the Defendant to submit a motion for reconsideration pursuant to Rule 397 of the FCR. The Plaintiff cited the decisions Janssen Inc v Teva Canada Ltd, 2012 FC 48, at paragraph 40 [Janssen]; Merck & Co v Canada (Minister of Health), 2007 FC 312, at paragraph 9; and Bayer AG v Novopharm Ltd, 2009 FC 1230, at paragraph 8; wherein claims for second counsel fees and travel by counsel were disallowed due to an absence of a Court decision or the absence of a specific provision in Tariff B for an allowance of the claim (Plaintiff’s Responding Costs Submissions, paras 9 to 11, 50, 52).
[21] In reply, at paragraph 9 of the Defendant’s Reply Submissions for Costs Assessment the following was submitted regarding second counsel fees and travel by counsel:
[9] Tetra Tech did not file a motion pursuant to Rule 397 within 10 days of the Costs Judgment or a motion pursuant to Rule 403 within 30 days of the Costs Judgment, as it did not anticipate Georgetown would oppose the assessment of services that it previously argued should be assessed. Should the Assessment Officer find she lacks jurisdiction to award amounts for second counsel and counsel travel services, Tetra Tech requests an opportunity to seek leave to file a motion pursuant to Rule 397 seeking direction from Justice Fothergill regarding second counsel and counsel travel services.
[22] As a preliminary matter at the beginning of the assessment of costs hearing held on August 26, 2021, the parties’ positions regarding second counsel fees and travel by counsel were discussed, and the Assessment Officer (O. Di Mavindi) advised the parties that she was of the opinion that she did not have the authority to assess costs for second counsel fees and travel by counsel in the absence of a Court direction or decision specifically awarding these costs. Subsequent to this discussion, the parties argued the remaining issues for the assessment of costs, and at the conclusion of the hearing the Defendant undertook to seek some instructions on the filing of a motion and endeavoured to advise the Assessment Officer and the Plaintiff forthwith. Later that same day, the Defendant sent an e-mail to the Assessment Officer and the Plaintiff advising the following:
We are writing to let you know that we will not be seeking leave to file a motion for further direction from Justice Fothergill regarding the second counsel and counsel travel services.
(Defendant’s e-mail dated August 26, 2021, 5:31 p.m.)
[23] Further to my review of the aforementioned facts, I am in agreement with the position that was held by the Assessment Officer (O. Di Mavindi), that in the absence of a Court direction or decision specifically awarding second counsel fees and travel by counsel as an assessable service, I do not have the authority to assess these costs. My review of the assessable services listed in Tariff B that specifically mention second counsel fees or travel by counsel (Items 14(b), 22(b) and 24), all indicate that costs can only be assessed with a direction from the Court, or at the Court’s discretion. In Capra v Canada (Attorney General), 2009 FC 916 [Capra], at paragraphs 8 and 9, which was cited by the Plaintiff, the Assessment Officer stated the following regarding claims submitted under Item 14(b) for second counsel fees:
[8] In Balisky v. Canada (Minister of Natural Resources), 2004 FCA 123, [2004] F.C.J. No. 536, at paragraph 6 the assessment officer states:
Rule 400(1), which vests full discretionary power in the Court over awards of costs, means that orders and judgments must contain visible directions that costs have been awarded. Given the Federal Courts Act, ss. 3 and 5(1) defining the Court and Rule 2 of the Federal Court Rules, 1998 defining an assessment officer, the absence of that exercise of prior discretion by the Court leaves me without jurisdiction under Rule 405 to assess costs.
[9] Item 14(b) includes the provision "where Court directs". As an assessment officer is not a member of the Court, and there being no direction or order of the Court concerning second counsel on file, I am without jurisdiction to allow the amount claimed under Item 14(b).
[24] Concerning Item 22(b), in Coca-Cola Ltd v Pardhan (cob as Universal Exporters), 2006 FC 45 [Coca-Cola], at paragraph 20, the Assessment Officer stated the following regarding Item 22(b) and Court directions:
[20] […] In my opinion, the key phrase in Item 22(b) of Tariff B of the Federal Courts Rules is "...where the Court directs..." I have reviewed the material in the Court record and have determined that no such direction exist, therefore, this assessable service is disallowed for each of the appeal proceedings.
[25] Concerning Item 24, in Marshall v Canada, 2006 FC 1017 [Marshall], at paragraph 6, the Assessment Officer stated the following regarding claims for travel by counsel:
[6] The Federal Courts Act sections 4 and 5.1(1) defining the Federal Court, and Rule 2 of the Federal Courts Rules defining an assessment officer, mean that the terms "Court" (as used in item 24 of Column III of Tariff B for the time of counsel to travel to a venue) and "assessment officer" refer to separate and distinct entities. The Court did not exercise visible direction here for the travel fees of counsel to attend examinations for discovery and therefore I do not have the jurisdiction to allow anything for item 24. That restriction does not apply to the associated travel disbursements, for which I retain jurisdiction under Rule 405. That is, counsel fees and disbursements are distinct and discrete items of costs addressed by different portions of the Tariff, i.e. items 1 to 28 in the TABLE in Tariff B address counsel fees and Tariff B1 addresses disbursements. Accordingly, item 24 addresses counsel fees, but not disbursements. The discretion reserved to the Court to authorize assessment officers to address item 24, or even item 14(b) for second counsel, is exercised distinct from the discretion vested in me by Rule 405 and Tariff B1. There is no implied caveat impeding me from allowance of travel disbursements for counsel in the absence of an item 24 direction from the Court for fees for the time of counsel to travel to and from a hearing venue. […]
[26] In addition, in Fournier Pharma Inc v Canada (Minister of Health), 2013 FC 862 [Fournier], at paragraph 31, which was cited by the Plaintiff, the Assessment Officer stated the following regarding claims submitted under Item 13(b) for second counsel fees:
[32] Having reviewed the Costs Order, I agree with Fournier that the Costs Order makes no provision for second counsel for preparation for hearing. Further, Item 13(b) in the Table to Tariff B makes no provision for second counsel. Given that there is nothing granting me the jurisdiction to exercise discretion for second counsel under Item 13(b), I find that I lack the authority to allow a claim for second counsel. Therefore, Sandoz' claim for second counsel under Item 13(b) is not allowed.
[27] Concerning the duty of an Assessment Officer, the Court stated the following in Pelletier v Canada (Attorney General), 2006 FCA 418 [Pelletier], at paragraph 7:
[7] […] Under section 405, an assessment officer "assesses" costs, which assumes that costs have been awarded. Section 406 provides that an officer does this at the request of "a party who is entitled to costs", which again presupposes that an order for costs was made in favour of that party. Under section 407, the officer assesses the costs in accordance with column III of the table to Tariff B "unless the Court orders otherwise." Section 409 provides that "[i]n assessing costs, an assessment officer may consider the factors referred to in subsection 400(3)." In short, the duty of an assessment officer is to assess costs, not award them. An officer cannot go beyond, or contradict, the order that the judge has made. […]
[28] Upon my review of the parties’ costs documents in conjunction with the court record and the FCR, and utilizing the Capra, Coca-Cola, Marshall, and Fournier decisions as guidelines, and also having considered the decisions cited by the Plaintiff in paragraph 21 of these Reasons; I find that I do not have the authority to assess the Defendant’s claims for second counsel fees and travel by counsel as an assessable service. As the Court stated in the Pelletier decision, my role as an Assessment Officer is only “to assess costs, not award them.” In the absence of a Court direction or decision specifically awarding second counsel fees or travel by counsel as an assessable service, or alternatively any jurisprudence from the Defendant to support the allowance of these costs in the absence of a Court direction or decision, I find that I do not have the authority to assess these types of costs autonomously. Therefore, I have determined that the Defendant’s claims for second counsel fees and travel by counsel as an assessable service must be disallowed as they pertain to the facts for this particular file. The amounts disallowed are 229 units for second counsel fees and 27 units for travel by counsel for a cumulative amount of $40,320.00, which is inclusive of GST.
V. Assessable Services
[29] The Defendant has claimed 1005 units for assessable services, for a total amount of $158,287.50, which is inclusive of GST. Further to my disallowance of the Defendant’s claims for second counsel fees and travel by counsel as an assessable service, there are 749 units for assessable services remaining to be assessed. These remaining claims are for a total amount of $117,967.50, which is inclusive of GST.
A. Item 2 – Preparation and filing of all defences, replies, counterclaims or respondents’ records and materials.
[30] The Defendant has claimed 13 units for the preparation of a Statement of Defence filed on July 16, 2015. The Defendant did not provide any specific submissions regarding this particular claim. The Plaintiff also did not provide any specific submissions regarding Item 2 but in the Bill of Costs provided by the Plaintiff, the suggested number of units for Item 2 was reduced to 10 units with a note stating that the Defendant’s Statement of Defence was 6 pages long (DeBorba Affidavit, exhibits B and E). My assessment of this particular claim took into consideration that the Defendant’s Statement of Defence was filed in response to the Plaintiff’s Statement of Claim filed on May 29, 2015, which was an intellectual property matter of moderate complexity. It is noted that the Plaintiff’s Statement of Claim was 18 pages long with several issues to be reviewed and responded to by the Defendant. I have reviewed the factors in awarding costs that are listed under Rule 400(3), and having considered factors such as; “(a) the result of the proceeding;” “(c) the importance and complexity of the issues;” and “(g) the amount of work;” the court record reflects that the Defendant was the successful party in the action proceeding; that the issues argued were of significant importance and of moderate complexity; and that a moderately high amount of work was performed by the Defendant to review and respond to the Statement of Claim. Therefore, I find it reasonable for the Defendant to be allowed costs at a level slightly higher than the mid-point of Column V, and will allow 11 units for Item 2.
B. Item 3 – Amendment of documents, where the amendment is necessitated by a new or amended originating document, pleading, notice or affidavit of another party.
[31] The Defendant has claimed 8 units for the preparation and filing of the Re-Amended Statement of Defence on July 20, 2017, that was in response to the Plaintiff’s Fresh as Amended Statement of Claim filed on June 20, 2017. The Defendant did not provide any specific submissions regarding this particular claim. The Plaintiff also did not provide any specific submissions regarding Item 3 but in the Bill of Costs provided by the Plaintiff, the suggested number of units for Item 3 was reduced to 6 units with a note stating that the Defendant’s Re-Amended Statement of Defence only had minor amendments to paragraphs 4 and 5 (DeBorba Affidavit, exhibits B and G). Similar to Item 2, I have taken into consideration the factors listed under Rule 400(3), and I find the factors for Item 3 to be similar to Item 2, with the exception that only a moderate amount of work was required for the preparation of the Re-Amended Statement of Defence. Therefore, I find it reasonable to allow costs at the mid-point of Column V, and will allow 6 units for Item 3.
C. Item 4 – Preparation and filing of an uncontested motion, including all materials.
[32] The Defendant has claimed 6 units for the preparation and filing of documents related to the Defendant’s motion to amend the Statement of Defence, which was filed on July 16, 2015. At paragraph 25 of the Plaintiff’s Responding Costs Submissions, it is submitted that no costs were awarded for this motion. At paragraph 10 of the Defendant’s Reply Submissions for Costs Assessment it is conceded that this particular motion was granted without costs and the claim for Item 4 was withdrawn. My review of the court record found that this particular motion was filed on April 29, 2016, and that the related Court Order dated May 26, 2016, stated that the Defendant’s motion was granted, “[t]he whole without costs.” Therefore, no costs are allowed for Item 4.
D. Item 5 – Preparation and filing of a contested motion, including materials and responses thereto.
[33] The Defendant has submitted multiple claims under Item 5 for documents related to the preparation and filing of costs documents, and the preparation of charts for refusals motions.
(1) Costs documents
[34] Concerning the Defendant’s claims for the preparation and filing of costs documents, 11 units are claimed for the preparation and filing of costs submissions on March 2, 2018; and 11 units are claimed for the preparation and filing of costs submissions and affidavits on September 15, 2020, and December 11, 2020. The Defendant has submitted that these claims should have been entered under Item 15 in the Bill of Costs, which is for “written argument, where requested or permitted by the Court” and cited Aird v Country Park Village Properties (Mainland) Ltd., 2005 FC 1170, at paragraphs 31 to 34, to support the Defendant’s request to amend these claims (Defendant’s Submissions for Costs Assessment, paras 32, 33).
[35] In response, the Plaintiff submitted that no costs should be allowed for the Defendant’s costs documents as the Court’s Orders (dated March 28, 2018, and December 23, 2020) are silent with respect to costs and cited Quinn v Canada (Attorney General), 2021 FC 470 [Quinn], at paragraphs 22 and 23, to support this argument. In addition, the Plaintiff submitted that the Defendant unilaterally filed costs submissions almost nine months after the remanded hearing decision was issued on January 17, 2020, and that these submissions should be assessed under Item 26. If any costs are allowed for the Defendant’s 2020 costs submissions, the Plaintiff requests that no more than 5 units be allowed (Plaintiff’s Responding Costs Submissions, paras 27, 28, 30, 37, 38).
[36] In reply, the Defendant submitted