Date: 19980428
Docket: T-2234-89
BETWEEN:
ALLIEDSIGNAL INC.
(previously ALLIED-SIGNAL INC.),
Plaintiff,
- and -
DU PONT CANADA INC. and
THE COMPLAX CORPORATION,
Defendants.
REASONS FOR ORDER
HEALD D.J.
INTRODUCTION
[1] The within action was commenced on October 23, 1989. On September 3, 1993 the Trial Division held that the patent herein was partially invalid. There was no finding with respect to infringement in that judgment. On May 11, 1995 the Federal Court of Appeal held that the patent was valid and had been infringed.
[2] The plaintiff elected to recover its damages. On November 28, 1995 Denault J. issued an order dealing with the conduct of the reference. Pursuant to that order, the parties filed their respective affidavits of documents. Examination for discovery of the defendant Du Pont took place in May of 1996. The defendant Du Pont initiated several motions for inspection and further production of documents. The defendant was partially successful in respect of these motions. The plaintiff was examined for discovery in early 1997. The defendant Du Pont brought a motion to compel answers to some of the questions left outstanding on discovery. Du Pont was partially successful on this motion. The hearing of the reference before me took place from August 25, 1997 to September 9, 1997. I rendered the referee's report on February 13, 1998.
ISSUE
[3] The issue raised by this application is whether the plaintiff is entitled to its costs in respect of the within reference.
ANALYSIS
| [4] Pursuant to Rule 344, the Court has full discretionary power with respect to an award of costs. The factors listed in that rule that are relevant to this application are: (i) the result of the proceeding; |
| (ii) the amounts claimed and the amounts recovered; |
| (iii) the importance of the issues; |
| (iv) any offer of settlement made in writing; |
| (v) the volume of work; |
| (vi) the conduct of any party that tended to shorten or to lengthen unnecessarily the duration of the proceeding. |
| (i) Result of the proceeding |
[5] Counsel for the defendant submits that since there were a number of discrete issues in this reference and since there was mixed success on those issues, the costs of the proceeding should be apportioned on a basis corresponding to the success of each party. I am unable to accept this submission. I agree with the plaintiff's counsel that the plaintiff succeeded on a majority of the issues arising on the reference excepting only: (a) the claim for price suppression; (b) whether the plaintiff would have made the sales to Gen Corp; and (c) whether pre-judgment interest should be compounded. The relevant jurisprudence supports the view that a successful party should not be penalized in costs merely because all of the submissions raised by counsel for that party were not accepted by the Court.1
| (ii) Amounts claimed and amounts recovered |
[6] The defendant initially quantified the plaintiff's loss in the area of $570,000 U.S., including pre-judgment interest. However, at the hearing of the reference, the defendant's expert witness, Mr. Rostant, concluded that the plaintiff was entitled to approximately 1 million dollars including pre-judgment interest. On the other hand, the plaintiff originally claimed approximately $21 million U.S., including nearly $10 million in pre-judgment interest. As calculated by the defendant, the referee's award amounts to approximately $3.9 million U.S., considerably less than the plaintiff"s claim, but roughly seven times the original position taken by the defendant at the reference hearing.
| (iii) Importance of the issues |
[7] Counsel for the defendant submits that the important legal issues raised in this reference were: price suppression, interest calculation, and a calculation of a reasonable royalty. He observes that the defendant succeeded on each of these issues and, on this basis, is entitled to its costs in respect of those issues.
[8] I do not agree with this submission. Counsel characterizes the price suppression claim as raising a novel issue. If it is a novel issue, then there is most certainly a public interest in having a judicial determination of such an issue. In any event, I have already dealt with counsel's submissions regarding the defendant's success on the price suppression issue and have concluded that it is not entitled to its costs in respect of this claim.
| (iv) Settlement offer made in writing |
[9] On December 20, 1996, the defendant made an offer of settlement in writing. That offer was significantly less than the amount awarded the plaintiff on the reference. On this basis, this circumstance does not support the defendant's position.1
| (v) Volume of the work |
[10] As noted by counsel for the plaintiff, the volume of work and effort expended by both parties was substantial indeed. I also agree with the further observation by plaintiff's counsel that since the reference was necessary due to the acts of infringement by the defendant, this circumstance should not weigh in the defendant's favour.
| (vi) Conduct of the parties tending to shorten or lengthen unnecessarily the duration of the proceeding |
[11] As noted by counsel for the plaintiff, this issue was raised by counsel for the defendant during the reference hearing as a basis for denying pre-judgment interest to the plaintiff. I rejected that submission and stated at page 87 of the referee's report: "Although the defendant made a number of requests for discovery of witnesses and documents, there is nothing on the record to suggest that the plaintiff was not reasonably forthcoming".
[12] I would make that same observation in respect of this submission dealing with costs.
CONCLUSION
[13] Having regard to all of the relevant factors set out in Rule 344 supra, I have concluded that the plaintiff is entitled to the costs of this reference, to be taxed pursuant to the Rules of Court.
Darrel V. Heald
Deputy Judge
OTTAWA, ONTARIO
April 28, 1998
__________________1. Compare Sunrise Co. Ltd. v. Ship "Lake Winnipeg" , (1988) 96 N.R. 310 at 317 (F.C.A.), per Hugessen J.A.
2. Compare Engine and Leasing Co. v. Atlantic Towing Ltd. , (1993) 164 N.R. 398 at 402 (F.C.A.), per Décary J.A.