Janssen Inc. v. Teva Canada Limited

Janssen Inc. v. Teva Canada Limited
Court (s) Database
Federal Court Decisions
Date
2012-01-12
Neutral citation
2012 FC 48
File numbers
T-2175-04
Decision Content
Federal Court
Cour fédérale
Date: 20120112
Docket: T-2175-04
Citation: 2012 FC 48
BETWEEN:
JANSSEN INC. and
DAIICHI SANKYO COMPANY LTD.
Plaintiffs
(Defendants by Counterclaim)
and
TEVA CANADA LIMITED
Defendant
(Plaintiff by Counterclaim)
ASSESSMENT OF COSTS - REASONS
Bruce Preston
Assessment Officer
By way of Reasons for Judgment and Judgment as to Costs (the Costs Judgment) dated November 6, 2006, the Court ordered:
a. The Plaintiffs are entitled to costs at the upper end of Column IV of the Tariff and to reasonable disbursements as set out in these Reasons
b. The Defendant is entitled to fees and disbursements with respect to Dr. Gerster and with respect to Plaintiffs’ amended pleadings as set out in these reasons: such costs are to be set off against those allowed to the Plaintiffs;
c. An assessment officer of this Court shall assess such costs in a manner as directed by these reasons; and
d. Costs bear interest at the rate of five percent (5%) per annum, not compounded, from the date of issue of this judgment.
[2] On April 18, 2011, counsel for Janssen filed a Revised Bill of Costs as Exhibit A to the Affidavit of Neil Belmore sworn April 18, 2011. It is this Revised Bill of Costs which is being assessed. For ease of reference, I will be referring to the Item numbers in the table of assessable services found in Tariff B of the Federal Courts Rules as well as the claim numbers referred to in the Revised Bill of Costs.
[3] The hearing of the assessment of costs was held on July 14, 2011. At the commencement of the hearing counsel confirmed that claims number 1, 3, 4, 5, 6, 7, 9, 18, 19, 20, 21, 26, 27, 28, 29, 31A, 34, 42, 43, 48, 49, 50 and 67 were not being contested by the Defendant. It was further confirmed that Janssen was withdrawing claim 2 (Item 2 of Tariff B), claim 40 (the disbursement for the CIPO Patent copies) and claim 66 (transportation expenses (tokens)). Further, during the hearing, counsel settled claim 45 (Taxis), claimed at $2,999.34, for $2,000.00, claim 47 (Parking), claimed at $124.73, for $108.75, claim 51 (Court Reporter), claimed at $37,630.96, for $32,198.14 and claim 57 (Travel: Meals), claimed at $1,394.90, for $400.00.
[4] It is noted that the issues addressed in this assessment were complicated by the fact that the Plaintiffs, Janssen and Daiichi, Licensee and Patentee respectively, were represented by different counsel on this proceeding.
[5] Several times throughout the hearing of the assessment, counsel for the Defendant submitted that the Plaintiff Daiichi had settled the issue of costs with the Defendant. The terms of that settlement were not in evidence in the submissions presented before me and therefore they have not been considered in reaching a decision in this assessment. On the other hand, the Costs Judgment contains provisions which necessitate a consideration of the fact that Daiichi and Janssen have been awarded costs both separately and jointly. Therefore, when necessary, I will consider which costs were awarded jointly or separately and their impact on the present assessment.
Fees
Item 6, Item 8 and Item 9
[6] Counsel for Janssen submitted that claims 8, 11 to 17 and 22 to 25 relate to the preparation and attendance at examinations for discovery of Daiichi corporate representatives and inventors (Items 8 and 9) and appearance on the Defendant’s motion to compel Daiichi to provide written answers to outstanding questions from the examination for discovery of Daiichi’s representatives and inventors (Item 6). Counsel submitted that one of the guiding principles referred to in the Costs Judgment is that both parties are entitled to recover costs for separate representation. Janssen contended that invention history is very important to validity, which was the central issue of this case and that it was entirely reasonable for counsel for Janssen, who was largely running the case, to be present at the examination for discovery of Daiichi’s representatives. At paragraph 30 of its Written Submission, Janssen argues that the amounts claimed are in accordance with paragraph 32 of the Costs Judgment.
[7] In reply concerning claim 8, the Defendant submitted that the motion arose from the examination for discovery of the Daiichi witnesses. Counsel submitted that the motion was argued by counsel for Daiichi and that the claim by Janssen was outside the terms of the Costs Judgment. At paragraph 14 of its Responding Submissions, the Defendant argues:
…. Daiichi was represented by independent counsel and its claim for costs has been settled. It was not necessary for Janssen’s counsel to attend this motion and Teva should not be required to pay twice.
[8] The Defendant presented similar arguments for claims 11 to 17 and 22 to 25. At paragraph 16 ofits Responding Submissions, the Defendant contends:
…. Justice Hughes did not award Janssen costs incurred while attending discoveries of Daiichi’s witnesses. Paragraph 32 of the Costs Judgment awards the costs of one senior and one junior counsel to “the Plaintiffs”; it does not award each Plaintiff the costs of attending the examinations for discovery of the other Plaintiff. Daiichi has already claimed the costs of counsel’s attendance at the discovery of its inventors.
Counsel for the Defendant continues by submitting that there was no reason for Janssen’s counsel to attend, they did not participate and they could have informed themselves of what transpired simply by reading the transcripts. Then at the hearing of the assessment, the Defendant submitted that subparagraph 3 of paragraph 3 of the Costs Judgment, which provides that both plaintiffs are entitled to recover costs for separate representation, does not apply to discoveries. Counsel argued that at paragraph 32 of the Costs Judgment, the Court was careful to say that when it comes to discovery of witnesses, the parties are entitled to one senior and one junior counsel and no more. Counsel contended that this statement did not allow for Daiichi and Janssen to claim for counsel on the discoveries of the other Plaintiff’s representatives.
[9] Concerning claim 8, in their written rebuttal submissions, counselfor Janssen refers to Merck & Co. v. Apotex, 2006 FCA 324 to support the contention that despite raising overlapping issues, a patentee and licensee should not be required to share a single award of costs. Janssen further submits that the costs of the motion were in the cause and that, as Janssen was awarded costs of the proceeding, they are entitled to the costs of the motion. Concerning claims 11-17 and 22-22, Janssen submits that given the guiding principle found in subparagraph 3 of paragraph 3 of the Costs Judgment, paragraph 32 of the Costs Judgment entitles Janssen to recovery of the attendance of one senior and one junior counsel for both Daiichi and Janssen for the discovery of witnesses. Then by way of rebuttal at the hearing of the assessment, counsel for Janssen argued that he had no knowledge of the terms of the settlement between Daiichi and the Defendant and cannot confirm whether Daiichi submitted claims for the preparation and examination of its representatives. Counsel further contended that under the Federal Courts Rules Janssen was entitled to attend and ask questions of the co-plaintiff on discovery. Finally, counsel submitted that only one counsel was being claimed, not two.
Assessment
[10] Paragraph 32 of the Costs Judgment states:
The Plaintiffs are entitled to the attendance of one senior and one junior counsel at such discovery. In addition to the days actually spent on discovery, the Plaintiffs are entitled to one day preparation time for each day of discovery.
[11] Concerning claims 8, 11 to 17 and 22 to 25, counsel for the Defendant has not called the number of units or the number of hours claimed into question. Their submissions are limited to the contention that Janssen is not entitled to claim these amounts as the motion and discovery related to Daiichi and they would have already been claimed by Daiichi.
[12] At paragraph 3 in the Costs Judgment, the Court refers to five principles of law which guided the decision as to costs. They are:
A successful party is usually entitled to receive costs, the scale of such costs are not intended to be punitive or extravagant, but is intended to be a compromise between compensating the successful party and not unduly burdening an unsuccessful party. (A.B. Hassle v. Genpharm Inc., (2004), 34 C.P.R. (4th) 18 (F.C.) [A.B. Hassle]).
Patent cases are not to be treated any differently than other types of cases in this Court. (A.B. Hassle, supra).
Where a patentee and licensee are each plaintiffs, they are entitled to separate representation and to be compensated in costs accordingly. This concept is not strictly limited to a situation where separate representation has been ordered, but such limitation may be taken into account. (Apotex Inc. v. Merck & Co. Inc., 2006 FCA 324 [Apotex]).
Pre-trial Orders are not to be dealt with in dealing with costs after trial unless the pre-trial Order expressly says so. (Apotex, supra).
The successful party’s lack of success on certain issues may be considered (Merck &
Co. Inc. v. Apotex Inc., 2006 FC 631, aff’d 2006 FCA 324 [Merck]).
At sub-paragraph 3 the Court relies on Apotex Inc. v. Merck & Co. Inc. (Apotex, supra) in support of the finding that where a patentee and licensee are each plaintiffs, they are entitled to separate representation and to be compensated in costs accordingly. As Daiichi is the Patentee and Janssen is the licensee, I am bound by this legal principle. However, the Defendant has argued that the provisions of paragraph 32 of the Costs Judgment create a situation where claims 8, 11-17 and 22-25 may be distinguished from this principle.
[13] Concerning claim 8 for attendance at the Defendant’s motion to compel Daiichi representatives and inventors to provide written answers to outstanding questions from the examination for discovery, at paragraph 13 of the Costs Judgment, the Court states: “the disposition of costs made on all pre-trial Orders is unaffected”. This is in keeping with the fourth principle of law as outlined in paragraph 3 of the Costs Judgment, above. Counsel for Janssen submitted that the Court ordered costs in the cause in its disposition of this motion and that Janssen was awarded costs of the proceeding, therefore they are entitled to costs of the motion. Having reviewed the court record, it is clear that counsel for Janssen was present at the hearing of the motion. Also, having reviewed the Order of April 26, 2006, I can find nothing that specifies the Court intended to limit the award of costs in the cause to Daiichi. Further, the award is precisely the award requested by counsel for the Defendant in the consented to draft order provided to the Court on April 21, 2006. Finally, in keeping with the legal principles set out in paragraph 12, above, I find that the Court’s award of costs in the cause for the motion entitles Janssen, a Plaintiff present at the motion who was ultimately awarded costs in the Costs Judgment, to costs of the Defendant’s motion to compel Daiichi to provide written answers to outstanding questions. Therefore, Claim 8 is allowed as presented.
[14] Concerning claims 11-17 and 22-25, the Defendant’s principal argument is that the general guideline found at subparagraph 3 of paragraph 3 of the Costs Judgment is modified by the specific principle found at paragraph 32 of the Costs Judgment. I do not agree. Paragraph 32 reads:
The Plaintiffs are entitled to the attendance of one senior and one junior counsel at such discovery. In addition to the days actually spent on discovery, the Plaintiffs are entitled to one day preparation time for each day of discovery. (Emphasis added)
Items 8 and 9 of the Table in Tariff B read:
Preparation for examination, including examinations for discovery, on affidavits, and in aid of execution
Attending on examinations, per hour.
It is noted that Item 9 does not allow for the attendance of more than one counsel at examinations for discovery. Given this, it is reasonable to find that the Court wanted to ensure that the Plaintiffs obtained costs for attendance on examinations at a level greater than is permitted by the Tariff and that the Court did not intend to limit the costs awarded. Further, the Court’s award of costs states:
The Plaintiffs are entitled to costs at the upper end of Column IV of the Tariff and to reasonable disbursements as set out in these Reasons. (Emphasis added)
[15] Given the legal principle included at subparagraph 3 of paragraph 3 of the Costs Judgment, it is reasonable to interpret this paragraph to mean that each plaintiff is entitled to costs. Further, the highlighted phrase is worded exactly the same as paragraph 32 which reads:
The Plaintiffs are entitled to the attendance of one senior and one junior counsel at such discovery. In addition to the days actually spent on discovery, the Plaintiffs are entitled to one day preparation time for each day of discovery. (Emphasis added)
In contrast to this, concerning Notices to Admit, the wording at paragraph 35 of the Costs Judgment states:
One set of costs only are allowed to the Plaintiffs. (Emphasis added)
Given the Court’s wording of these paragraphs, I find that the Court was clear when there was an intention to award one set of costs. If the Court had worded paragraph 32 using language similar to that of paragraph 35, the Defendant’s argument would have been more compelling. As the Court did not specifically indicate that “one set of costs only” was being awarded for the examination for discovery of the Daiichi representatives, I find that both Janssen and Daiichi are entitled to costs for preparation and attendance at the discovery of the Daiichi representatives. Therefore, claims 11-17 and 22-25 are allowed as presented.
Item 7
[16] Concerning claim 10, discovery of documents, including listing, affidavit and inspection (Item 7), counsel for Janssen submitted that the Defendant did not object to the claim for the Affidavit of Documents (claim 9) but objected to the claim for the Supplementary Affidavit of Documents (claim 10).Counsel for Janssen submitted that if one was allowed the second should be allowed as counsel was dealing with thousands of documents and it was not unreasonable that there be a Supplementary Affidavit of Documents.
[17] In response, counsel for the Defendant submitted that Item 7 in Tariff B captures all the work related to an affidavit of documents and allows for one recovery only. In support of this contention counsel referred to Dewji & Gheciu Consultants Inc. v. A&A Consultants & Felicia Bilc, [1999] F.C.J. No. 1263 [Dewji].
Assessment
[18] In reaching a conclusion concerning claim 10, I find the circumstances in Dewji very helpful. Paragraphs 3 and 4 of Dewji read:
3 The defendants present two claims for fees under item 7 of the Tariff. Counsel for the plaintiffs took the position that this item can only be claimed once. In reply, counsel for the defendants explained that the filing of a second affidavit of documents followed a change of plaintiffs' counsel who presented a second, completely new, affidavit.
4 I interpret the Tariff to suggest that it is the aggregate event of discovery that is intended to be reimbursed rather than each event in that process. This approach is consistent with the view taken in other assessments in this Court. I am persuaded by counsel's argument, however, that the defendants were put to an unusual amount of work for discovery. I have therefore decided to allow the defendants' second claim of 5 units for discovery, but under Tariff item 27 for "(s)uch other services as may be allowed by the assessment officer or ordered by the Court" rather than under item 7.
[19] I agree with the assessment officer when he concludes that it is the aggregate event of discovery that is intended to be reimbursed rather than each event in that process. However, in Dewji the assessment officer allowed for a subsequent claim for discovery under Item 27 for "(s)uch other services as may be allowed by the assessment officer or ordered by the Court". I find that the circumstances before me do not warrant a similar approach. In Dewji the Defendant was faced with a completely new affidavit of documents filed by the Plaintiff’s new counsel. Counsel for Janssen has presented no similar extenuating circumstances. Counsel contends that the claim is reasonable due to the volume of documents. I do not think this is sufficient to warrant deviating from the norm, that Item 7 is intended to reimburse for the aggregate of the discovery process. Further, in keeping with the legal principle found at subparagraph 2 of paragraph 3 of the Costs Judgment, that patent cases are not to be treated any differently than other types of cases, the enormous volume of documents produced should not be considered an exceptional circumstance warranting the use of Item 27.Therefore, claim 10 is not allowed for the Supplementary Affidavit of Documents.
Item 12
[20] Concerning claim 30, notice to admit facts or admission of facts, notice for production at hearing or trial or reply thereto (Item 12), Janssen has submitted that paragraph 35 of the Costs Judgment refers to “Notices to Admit” and that Janssen is entitled to recover for the four Notices to Admit served on the Defendant.
[21] Counsel for the Defendant submitted that paragraph 35 of the Costs Judgment provided for one set of costs for the Plaintiffs. Counsel further contended that although there were four Notices to Admit filed, two of the Notices were required to correct clerical errors in previously served Notices to Admit. Counsel submitted that it is recognised that, pursuant to paragraph 35 of the Costs Judgment, Janssen is only claiming one half of the costs for the four separate Notices. Counsel argued that by claiming for the amendments Janssen is effectively claiming four sets of costs. Finally, at paragraph 19 of its Responding Submissions, the Defendant argues that Janssen should not be awarded costs for the additional two Notices required to correct errors.
Assessment
[22] Under the heading “Notices to Admit”, paragraph 35 of the Costs Judgment reads: “One set of costs only are allowed to the Plaintiffs”. I am in agreement with the Defendant that the effect of paragraph 35 is that the Court awarded only one set of costs for the Notices to Admit, to be shared by the Plaintiffs Daiichi and Janssen.
[23] It has been previously decided that an assessment officer may allow more than one claim for Notices to Admit (Aird v.
Country
Park
Village
Properties (Mainland) Ltd., 2005 FC 1170 at para. 29 - 31). In keeping with this finding, I find that the reference to Notices to Admit in paragraph 35 of the Costs Judgment also provides for the recovery of costs for more than one Notice. From the Defendant’s submissions I find that counsel does not object to the first two Notices to Admit served. Without having reached a decision concerning the Notices to Admit served on August 15, 2006 and September 1, 2006,I find that the costs for the first two Notices to Admit may be allowed.
[24] Concerning the Notices to Admit served on August 15, 2006 and September 1, 2006, the Defendant has argued that the service of a Notice to Admit, which was necessitated due to a clerical error, should not generate costs. I have been presented with no case law to support the Defendant’s position. Moreover, I can find no case law on point. However, I think it is clear that if the issue before me related to the costs of amending a pleading under Item 3, no costs would be allowed for a clerical error as an amendment must be “necessitated by a new or amended originating document, pleading, notice or affidavit of another party”. Therefore, given the unique nature of the issue before me and in the context of a party-and-party assessment, I find that if it is determined that the service of a Notice to Admit was necessitated due to a clerical error, costs should not be allowed.
[25] The Affidavit of Brad Jenkins sworn May 26, 2011, filed in response to the Bill of Costs, has two letters dated August 15, 2006 and September 1, 2006 attached as Exhibits A and B respectively. Having reviewed Exhibit A, it appears that a Supplemental Request to Admit was being served to correct an incorrect Japanese Document Production number referred to in the Notice to admit served July 26, 2006. I find correcting an incorrect production number to be in the nature of a clerical error. Therefore no costs are allowed for this Notice.
[26] Having reviewed Exhibit B, it appears that, further to a conversation with counsel for the Defendant, a Revised Request to Admit was served replacing the phrase “about October” with the phrase “mid-October”. In the second paragraph of this letter it appears that this change may have enabled the Defendant to immediately admit the facts contained in the Request. Without further evidence to the contrary, I do not find this change to be an amendment due to a clerical error. I find that the service of this Notice amounts to a new request for a different fact (“about October” is not the same as “mid-October”) that was brought about as a result of discussions between the parties with the intent of facilitating an admission of fact in order to isolate issues truly in dispute. Therefore, I allow the cost for the Notice to Admit served on September 1, 2006.
[27] In summary, I allow for the costs of three Notices to Admit. In keeping with the provision of paragraph 35, that one set of cost only is allowed to the Plaintiffs, I find that Janssen is entitled to 50 percent of the costs allowable. Therefore, claim 30 (Item 12) is allowed for three Notices to Admit for a total of 6 units.
Item 13
[28] Under claim 31, the Defendant has consented to the claim for Item 13(a) of Tariff B: preparation for trial or hearing whether or not the trial or hearing proceeds. However, in its Response Submission, the Defendant contends that the Costs Judgment only awards Janssen the costs of senior counsel’s preparation of Dr. Kahn and Dr. Enstrom and that any claim by Janssen for further preparation of additional witnesses cannot be allowed as the costs of further preparation of additional witnesses were not awarded in the Costs Judgment. Counsel argued that as preparation time was awarded per day, the costs of preparing Dr. Kahn and Dr. Enstrom should be calculated according to Item 13(b), the only Tariff Item which addresses daily preparation costs. Counsel submitted that calculated on this basis, Janssen is entitled to, at most, $1,560.00 for the two days of preparation.
[29] In the alternative, counsel submits that if claim 31 is allowed for general preparation under Items 13(b) and 13(c), Janssen’s claim for the preparation of Dr. Kahn and Dr. Enstrom under Item 13 (d) should not be allowed. At paragraph 22 of its Responding Submissions the Defendant argues:
“Tariff Item 13(d)” does not exist. Janssen’s claim actually appears to be based on paragraph 42 of the Costs Judgment which states the “One day for one senior counsel for preparation of each [fact witness] is allowed”. Paragraph 42 prevents Janssen from claiming the cost of junior counsel when preparing fact witnesses and allows only one senior counsel’s time. This limitation reflects the fact that less work is involved in preparing a fact witness than an expert witness. Paragraph 42 does not entitle Janssen to an additional amount above and beyond the amounts awarded for preparation under the Tariff.
[30] At the hearing of the assessment, counsel for the Defendant submitted that paragraphs 37 and 38 of the Costs Judgment, providing for the Plaintiff to recover for two senior and two junior counsel, relate only to claim 32 (Item 14(a) and 14(b) of Tariff B) and should not be applied to claim 31 for preparation for hearing under Item 13 (a) and (b) of Tariff B.
[31] By way of rebuttal Janssen submits that paragraphs 37 and 38 of the Costs Judgment may be applied to both claims 31 and 32. Janssen argues that the costs for one senior and one junior counsel have properly been claimed under claim 31. Counsel for Janssen continues by arguing that paragraphs 41 and 42 of the Costs Judgment award the costs for the preparation of Dr. Kahn and Dr. Enstrom in addition to the costs for preparation under Items 13 (a) and 13(b). Further, counsel argues that the Defendant’s interpretation of paragraph 42 of the Costs Judgment cannot be correct as that would limit Janssen to the preparation of Dr. Kahn and Dr. Enstrom and not provide for any other preparation after the first day of the trial.
Assessment
[32] Under claim 31, Janssen has claimed for the preparation for trial or hearing, whether or not the trial or hearing proceeds (Item 13 (a)), preparation for trial, per day in Court after the first day (Item 13 (b)), second counsel, where Court directs (Item 13 (c)) and one day for senior counsel for preparation of each of Dr. Kahn and Dr. Enstrom (Item 13 (d)).
[33] It is noted that paragraph 42 of the Costs Judgment awards one day for one senior counsel for preparation of each of Dr. Khan and Dr. Enstrom.
[34] In reaching a determination concerning claim 31, I am faced with two preliminary issues. First, I must decide whether paragraph 42 of the Costs Judgment precludes me from allowing costs for preparation for trial, per day in Court after the first day under Item 13(b) of Tariff B. Counsel for the Defendant has submitted that the effect of paragraph 42 is that I should allow only two days for preparation under Item 13(b), one each for Dr. Kahn and Dr. Enstrom. I do not agree with this argument. At paragraph 50 of the Costs Judgment, the Court states:
The assessment officer is to proceed to assess fees and disbursements as set out in the Tariff, at the upper end of Column IV, consistent with the instructions and guidelines as set out in these Reasons. Unless otherwise allowed in these Reasons, no fee or disbursement(s) beyond that set out in the applicable Tariff is to be allowed. Disbursements allowable, but not otherwise discussed in these Reasons, are to be proven and allowed only to the extent that they were reasonably incurred for the purposes of this action and are at a level no greater than those charged in arms length commercial transactions.(emphasis added)
[35] From the above I find that even though the Cost Judgment contains instructions which limit the amount Janssen is allowed to claim to those set out in the applicable Tariff, the intent of paragraph 50 is to provide for the possibility of fees or disbursements beyond that set out in the applicable Tariff. The corollary being that, unless allowed in the Costs Judgment, I am restricted to those fees and disbursements set out in the applicable Tariff. Following this reasoning, I find that paragraph 42 of the Costs Judgment provides for costs for the preparation of Dr. Kahn and Dr. Enstrom above and beyond that which I am able to allow under Item 13(b) of Tariff B.
[36] Having reached this determination, and without reaching a decision concerning the preparation of Dr. Kahn and Dr. Enstrom, and after reviewing the abstract of hearing, I find that Janssen’s claim of $10,920.00 under Item 13(b) of Tariff B, which was not specifically addressed at hearing, is reasonable given the provisions of the Costs Judgment, and is allowed as presented.
[37] The second preliminary issue relates to the validity of Janssen’s claims under Item 13(c) and 13(d). Under claim 31, Janssen has submitted claims under Items 13(a), 13(b), 13(c) and 13(d). Counsel for Janssen has submitted that these claims have properly been submitted. I do not agree. Items 13(c) and 13(d) do not form part of Tariff B. Although I find that the Costs Judgment provides for costs beyond the Tariff, I do not find that it permits me to allow costs under Items which do not properly form part of Tariff B. On the other hand, I will assess the claims presented under 13(c) and 13(d) to determine whether they are otherwise allowable.
[38] Concerning Item 13(c), Janssen has claimed for “second counsel, where the Court directs, 50% of the amount calculated under paragraph (b)”. It appears that counsel has borrowed this wording from Item 14(b) of Tariff B. Further, counsel has submitted that this claim is pursuant to paragraphs 37 and 38 of the Costs Judgment.
[39] I do not agree with this argument. Paragraphs 37 and 38 state:
[37] The Plaintiffs, collectively, had two senior and four junior counsel gowned. The defendant had one senior and three junior counsel gowned.
[38] I allow the Plaintiffs collectively, to recover the fees for the two senior and two junior counsel.
[40] These paragraphs are found under the heading Trial. I find that the reference to counsel being gowned refers to counsel in Court. Further, these paragraphs do not include any specific provision for preparation. Therefore, I find that the Costs Judgment does not provide for second counsel for the preparation for hearing. This being the situation, I must follow the provisions of Tariff B. Under Item 13, there is provision for preparation for trial or hearing and preparation for trial per day in Court after the first day but there is not provision for second counsel, and, as mentioned earlier, there is no Item 13(c). Consequently, I find that Janssen’s claim under Item 13(c) falls outside the provisions of Tariff B and the Costs Judgment and is not allowed.
[41] Concerning Item 13(d), Janssen has claimed for “one day for senior counsel for preparation of each of these witnesses (Dr. Kahn and Dr. Enstrom)”. Although, as mentioned above, Item 13(d) does not form part of Tariff B, the claim for Dr. Kahn and Dr. Enstrom is clearly pursuant to the provisions of paragraph 42 of the Costs Judgment. Having found in paragraph 45 of these reasons that the costs for the preparation of Dr. Kahn and Dr. Enstrom are above and beyond the costs allowable under Item 13(b), and Item 13(d) not being a viable option as it is outside the provisions of Tariff B, I am faced with the question of how to assess the costs claimed. For this I am in agreement with counsel for the Plaintiff who submitted that the costs associated with the preparation of Dr. Kahn and Dr. Enstrom should be calculated according to Tariff Item 13(b), the only Tariff Item which addresses daily preparation costs. Therefore, in keeping with paragraph 42 of the Costs Judgment, and in the circumstances of this particular file, I allow Item 13(b) at 6 units per day for 2 days for the preparation of Dr. Kahn and Dr. Enstrom. This is above and beyond the amount allowed under Item 13(b) in paragraph 46 above.
Item 14
[42] Concerning claim 32 (counsel time per hour in court for a trial or hearing (Items 14(a) and 14(b)), counsel for the Defendant submitted at the hearing of the assessment that the only issue was lunch breaks. At paragraph 24 of its Responding Submissions the Defendant submits that lunch recesses should be deducted from the amount claimed as Item 14 is awarded “per hour in court”. In support of this position counsel referred to Aventis Pharma Inc. v Apotex, 2009 FC 51(Aventis) at paragraphs 33 and 37. Counsel further submitted that the amount claimed should be reduced by $11,700.00 ($7,800.00 for senior counsel and $3,900.00 for junior counsel).
[43] At paragraph 25 of its Rebuttal Submissions, Janssen contends that lunches are not breaks during trials and counsel typically spend lunches and recesses preparing. At the hearing of the assessment counsel submitted that Janssen had set up a preparation room complete with computers, printers and a white board. Counsel for Janssen submitted that it is common knowledge that recesses are typically spent preparing for the hearing.
Assessment
[44] In keeping with Aventis (supra), it has been held on many occasions that the time for lunch breaks should be factored out of any calculation for counsel time per hour in Court (see: Estensen Estate v. Canada (Attorney General), 2009 FC 152 (Estensen), Aventis Pharma Inc v. Apotex Inc, 2008 FC 988, Mercury Launch & Tug LTD v. Texada Quarrying Ltd, 2009 FC 331, Astra Zeneca AB v. Apotex Inc, 2009 FC 822). However, in none of these cases was I able to find an indication that counsel presented evidence of a “preparation room” having been set up to facilitate work during recesses.
[45] In considering this evidence, I turned to paragraph 16 in Aventis (supra) where counsel contended that fee Item 13 already addresses any element of preparation in breaks and paragraph 15 in Estensen (supra) where it was held that costs for brief recesses when counsel must remain in or close to the courtroom should be allowable as part of fee Item 14. Taking these factors into account and considering the case law in which it has been held that the time for lunch breaks should be factored out of any calculation for counsel time per hour in Court, I find that, further to Janssen’s contention that lunch recesses are typically spent preparing for the hearing, such work falls within the parameters of Item 13(b) (preparation for trial, per day in Court after the first day). Therefore, the time claimed for lunch breaks may not be allowed. Further, having confirmed that the average lunch break during the trial was one hour, I find the deduction submitted by the Defendant at paragraph 53 above to be reasonable.
[46] Having reached a decision concerning Items 14(a) and 14(b), there is one final issue to be addressed. At paragraph 39 of the Costs Judgment, the Court referred to the unnecessary objections raised by the Plaintiffs to the evidence of Dr. Gerster and awarded the Defendant fees for one senior and one junior counsel for one trial day, to be set off against the costs otherwise assessed in favour of Janssen. At the hearing of the assessment, counsel agreed that, if it was found that lunch breaks could not be included in the claims under Items 14(a) and 14(b), the Gerster set off would be a total of $5,085.60. For the reasons outlined above and taking into account the Gerster set off, Items 14(a) and 14 (b) are allowed for a sum total of $71,198.40.
Item 15
[47] Concerning claim 33, at the hearing of the assessment Janssen submitted that, in keeping with the costs judgment, counsel were claiming 9 units under Item 15 (preparation and filing of written argument, where requested or permitted by the Court), for three days for one senior and one junior counsel.
[48] At paragraph 26 of the Defendant’s Responding Submissions, it is submitted:
The Costs Judgment grants the Plaintiffs “the fees of two senior and two junior counsel for three days for preparation of memoranda of argument”. Janssen has calculated its entitlement under Tariff Item No. 15. Tariff Item No. 15 is not a per diem amount but, rather, a global amount for the preparation of all memoranda. As the judgment awards a per diem amount, the amount awarded should not exceed the 6 units per day allowed for preparation in Tariff Item No. 13(b), the only Tariff Item in which preparation is calculated on a per diem basis.
[49] At the hearing, counsel for the Defendant contended that paragraph 47 of the Costs Judgment is problematic because it does not accord with Tariff B and it makes more sense to use Item 13 (b), which provides for a per diem allowance.
[50] At paragraph 27 of their Rebuttal Submissions, counsel for Janssen submits that the Costs Judgment makes no mention of Item 13(b) and that the 9 units claimed is based on the number of units listed at the upper end of Column IV in Tariff Item 15, as instructed by the Court.
Assessment
[51] Paragraph 47 of the Costs Judgment states:
Plaintiffs are entitled to the fees of two senior and two junior counsel for three days for preparation of memoranda of argument used at trial including submissions as to costs.
[52] Under claim 33, Janssen has submitted three claims under Item 15. I will address the claims for senior counsel first.
[53] Counsel for the Defendant has argued that Item 15 provides for a global amount for the preparation of all memoranda. Item 15 reads: “Preparation and filing of written argument, where requested or permitted by the Court”. Contrary to the submissions of the Defendant, I find nothing in the wording of Item 15 which indicates that only one claim may be allowed. In fact at paragraph 34 of Aird (supra), it was held that more than one claim may be allowed under Item 15. Further, paragraph 47 of the Costs Judgment states; “Plaintiffs are entitled to the fees of two senior and two junior counsel for three days for preparation of memoranda of argument used at trial including submissions as to costs”.
[54] Rule 400(5) and (6) provides the Court with broad discretionary powers concerning directions and the award of costs. It is clear that these rules provide the Court with the discretion to make an award outside the parameters of Tariff B and, the Court having done so, provides an Assessment Officer with the authority to allow the costs pursuant to the award of costs, even if the costs do not fit within Tariff B. However, I do not think that is the situation here. I find that paragraph 47 of the Costs Judgment may be reconciled with the provisions of Item 15.
[55] Even though the award of costs for three days for one senior and one junior counsel caused the Defendant some concern, I do not agree with counsel’s submissions. In addition to the Court’s jurisdiction to provide directions as conferred by Rule 400 (5) and (6), it is noted that the Court uses the plural “memoranda” of argument, indicating an intent to allow costs for more than one memorandum. Having reviewed the record of the proceeding, it was noted that the parties submitted Opening Statements, Closing Statements and Submissions as to Costs. All of these submissions were filed on different dates; hence, they presumably were prepared on different dates. Therefore, paragraph 47 may be reconciled with the Tariff by allowing Item 15 three times for the preparation and filing of Janssen’s Opening Statement, Closing Statement and Submissions as to Costs which were filed on September 5, 2006, October 2, 2006 and October 27, 2006 respectively. Therefore, for senior counsel, Item 15 is allowed as presented at 3 claims of 9 units each.
[56] Having regard to junior counsel, although counsel for the Defendant made no submission concerning the claim for junior counsel, I am faced with determining whether the amount claimed by Janssen is reasonable. Counsel has claimed 50% of the amount claimed for senior counsel. Presumably this is in keeping with the methodology used under Item 14 (b) for second counsel at trial where the Court directs. Although I understand the approach taken, due to the difference in the range of units, I am uncomfortable utilizing a provision from Item 14 when making an allowance under Item 15.
[57] In Eli Lilly and Co. v. Novopharm Ltd, 2009 FC 797, the Assessment Officer was faced with a similar circumstance. In that matter the Court awarded for second counsel throughout. At paragraph 24 it was held that second counsel was allowed under Item 15 at the low end of the column in Tariff B. I find this approach to be consistent with the provisions of paragraph 47 of the Costs Judgment. Therefore, as the range of units for Item 15 under Column IV is 4 to 9, three claims for junior counsel are allowed under Item 15 at 4 units each.
Disbursements
Photocopying
[58] Janssen has submitted two claims for photocopying. The first claim (claim 35) is for photocopies produced in house by the law office. This claim is for $55,206.22. The second claim (claim 36) is for photocopies produced by an external service provider. This claim is f