Date: 19990928
Docket: T-3197-90
BETWEEN:
APOTEX INC. and NOVOPHARM LTD.
Plaintiffs
- and -
THE WELLCOME FOUNDATION LIMITED
Defendant
Docket: T-2983-93
BETWEEN:
THE WELLCOME FOUNDATION LIMITED and
GLAXO WELLCOME INC.
Plaintiffs
- and -
NOVOPHARM LTD.
Defendant
Docket: T-2624-91
BETWEEN:
THE WELLCOME FOUNDATION LIMITED and
GLAXO WELLCOME INC.
Plaintiffs
- and -
INTERPHARM INC. and
APOTEX INC. and
ALLEN BARRY SHECHTMAN
Defendants
REASONS FOR ORDER
LEMIEUX J.:
BACKGROUND
[1] By motion, dated August 6,1999, in writing, the Wellcome and Glaxo Wellcome Inc. ("Glaxo") seek an order from this Court pursuant to Rule 397(2) of the Federal Court Rules, 1998, "correcting a clerical mistake, error or omission in the Order of the Honourable Mr. Justice Wetston dated November 13, 1998". Glaxo also seeks an order from this Court "confirming that Glaxo Wellcome is entitled to recover particular disbursements incurred by it in the defence of these proceedings, namely laboratory fees paid to Lab-IRPI of Laval, Quebec, pursuant to invoices dated August 8, September 30 and November 11, 1996.
[2] Apotex Inc. and Novopharm Ltd. oppose, on several grounds, the orders sought by Glaxo.
[3] The backdrop to Glaxo's motion arises out of a trial before Wetston J. who ruled in favour of Glaxo on March 25, 1998, awarding Glaxo costs and disbursements by further order of August 5, 1998. This order is under appeal.
[4] On September 10 and 11, 1998, Glaxo filed a motion for directions to be given to the assessment officer regarding costs. Wetston J. entertained submissions and on November 13, 1998, issued directions to govern the assessment of costs in the proceedings. He also issued reasons for direction. On November 23, 1998, Novopharm filed a notice of appeal (A-694-98) regarding Wetston J.'s November 13, 1998 cost assessment directions.
WETSTON J.'S COST ASSESSMENT DIRECTIONS
[5] As noted, Glaxo sought directions governing costs. In its notice of motion, under a heading entitled "Disbursements" Glaxo asked Wetston J. for an order directing the assessment officer to assess and allow disbursements incurred by Glaxo at full costs for, inter alia, " (iv) all experts' fees and disbursements, including fees associated with the preparation for trial and the review of materials produced by Apotex and Novopharm which were not entered in the evidence at trial". Glaxo said that it was obliged to call experts in reply and in defence of the patent at issue including calling Dr. Simon Béchard on the subject of "utility of pharmaceutical formations described in the Patent".
[6] Glaxo filed in support of its motion the affidavit of Hélène Gladue, an employee of the law firm of Ogilvie Renault, counsel for Glaxo. In her affidavit, Hélène Gladue said this at paragraph 76:
| 76. Glaxo Wellcome was obliged to retain Dr. Simon Béchard, an expert pharmacist, who confirmed his opinion that the formulations could be prepared as described in the Patent by supervising the preparation and testing of every formulation in the Patent. In addition to fees for Dr. Béchard's time, Glaxo Wellcome paid fees to the laboratory where the formulations were prepared. |
[7] Apotex and Novopharm opposed the cost directives sought by Glaxo. Specifically, in terms of Dr. Béchard's evidence, Apotex and Novopharm opposed any fees and disbursements being awarded. Apotex and Novopharm pointed to Wetston J. his findings at trial reflected in his March 25, 1998 judgment where he said this on the topic of pharmaceutical formulation:
| In this regard, I agree with the submissions of Apotex and Novopharm and conclude that Dr. Béchard's evidence was unnecessary.... I am satisfied that the formulation question which Dr. Béchard was asked to consider was interesting but not necessary in this trial and, as such, Glaxo was unnecessarily cautious in calling Dr. Béchard. |
[8] As noted, after reviewing the written submissions of the parties, Wetston J. issued his directions. Under "Disbursements", paragraphs 7 and 8 of the direction of November 13, 1998, made by Wetston read as follows:
| 7. The Court directs that the assessment officer not grant Glaxo costs for the evidence and attendance of Dr. Béchard. |
| 8. The Court directs that the assessment officer grant Glaxo costs for experts' fees and disbursements which arose as a result of experts' time spent in: preparing their affidavits; reviewing the patent; reviewing the other experts' affidavits; and attendance in court. |
[9] In his reasons for order dated November 13, 1998, Wetston J. said the following in respect of the evidence of Dr. Béchard:
| [62] A & N [Apotex and Novopharm] submit that the cost of Dr. Bechard's attendance at trial should be disallowed, as Glaxo has admitted that his evidence was not required.... |
| [63] I am satisfied that the formulation question which Dr. Bechard was asked to consider was interesting but not necessary in this trial and, as such, Glaxo was unnecessarily cautious in calling Dr. Bechard. Glaxo should not be granted costs for the evidence and attendance of Dr. Bechard.... |
[10] On December 4, 1998, counsel for Glaxo wrote to a Senior Registry Officer ("SRO") of the Court following up on a telephone conversation counsel for Glaxo had with the SRO that day "concerning clarification required from the Court with respect to a recent Order". Counsel for Glaxo wrote this to the SRO:
| The issue which we seek to have clarified by the Court concerns the interrelationship of paragraphs 7 and 8. In particular, based on our reading of the relevant portion of the Reasons for Order (pages 29 and 30), it would appear that the denial of recovery contained in paragraph 7 relates only to that portion of the fees of Dr. Bechard which arise from his attendance at court and his trial testimony. As best we can tell, the Court does not appear to have denied Glaxo recovery for the fees of Dr. Bechard which arose from the laboratory testing which he carried out when first retained well in advance of the trial. In the circumstances, we would expect at the assessment of costs to be given the opportunity to demonstrate that our clients suffered expense in the way of fees charged by Dr. Bechard for his laboratory testing, for which they ought to be reimbursed by the opposing parties. |
A copy of Glaxo's counsel's letter to the SRO was sent to counsel for Apotex and Novopharm.
[11] By letter dated December 7, 1998, to the SRO, counsel for Apotex said this:
| In our view, the Order is quite clear and requires no clarification. No costs are to be recovered by Glaxo relating to the evidence and attendance of Dr. Bechard. This would include whatever preparatory testing Dr. Bechard did for the purpose of compiling his evidence. |
| If Glaxo/Wellcome have some difficulty with the Order of Mr. Justice Wetston, it ought to appeal the Order. |
[12] On December 18, 1998, Wetston J. issued a direction which reads:
| The order of the Court dated November 13, 1998 included the issue raised by counsel in its letter dated December 4, 1998. No motion is required. |
[13] As noted, Novopharm on November 23, 1998, served a notice of appeal in respect of Wetston J.'s November 13, 1998 cost directive (Appeal A-674-98)
[14] On December 11, 1998, Glaxo filed a notice of motion in the Federal Court of Appeal pursuant to Rule 369 of the Federal Court Rules, 1998, for an order granting leave to Glaxo to file a notice of appearance for a notice of cross-appeal in appeal number A-694-98 until ten (10) days after Wetston J. provides a clarification of his order dated November 13, 1998.
[15] Counsel for Glaxo was not satisfied with Wetston J.'s directive of December 18, 1998. He wrote to counsel for Apotex on December 22, 1998, in the following terms:
| The Court has now responded to our enquiry, saying that our issue was included in its original Order. |
| We interpret the Court's response to mean that the formulation testing fees of Dr. Bechard's laboratory are recoverable by our clients, and that the disallowance of costs in paragraph 7 of the Order concerned only what it says, i.e. the "evidence and attendance of Dr. Bechard". |
[16] On January 18, 1998, counsel for Glaxo wrote again to the Federal Court's SRO where he said this:
| We have received and reviewed the Direction furnished by the Court in respect of the said Order, wherein the Court advised the parties that the Order "included the issue". Unfortunately, counsel have been unable to agree on the meaning of this Direction. In particular, the parties continue to disagree concerning whether the laboratory fees for the original research performed by Dr. Bechard (as opposed to his later fees for trial preparation and attendance) are to be allowed pursuant to Paragraph 8 of the November 13th Order, or alternatively disallowed pursuant to Paragraph 7. The Direction has regrettably not enabled the parties to agree on which Paragraph of the Order is applicable to this particular disbursement. |
| We regret having to trouble the Court for a further clarification in this matter. Unfortunately, it seems that we have little choice but to prevail upon the Court to advise which of Paragraph 7 or Paragraph 8 is applicable in this instance. |
[17] Nothing came of the letter of January 18, 1999 to the Court because Wetston J. had resigned from the Bench and was no longer a presiding judge of the Court.
[18] I should add that on January 18, 1999, counsel to Novopharm wrote to the SRO in response to counsel for Glaxo's January 18, 1999 letter in the following terms:
| We do not agree that any further "clarification" is required. Mr. Justice Wetston made it clear in his Direction that his Order addressed this issue. Accordingly, we respectfully submit that it is not necessary for the court to reconsider this issue. |
[19] To close off matters, MacDonald J.A. of the Federal Court of Appeal issued directions for procedural issues which were before him in the appeals related to these proceedings.
[20] Novopharm's affiant, Angela Furlanetto, in the motion before me, says in paragraph 25 of her affidavit, that on June 8, 1999, a telephone conference call between the Court and the parties concerned the consolidated appeals relating to Wetston J.'s March 25, 1998 order as well as his November 13, 1998 order pertaining to costs. Ms. Furlanetto deposes as follows:
| At this time, Ms. Carol Hitchman, solicitor for Novopharm, requested clarification of the court's direction of May 28, 1999 pertaining to the length and complexity of the memorandum of fact and law on the basis that it mentioned the possibility of a cross-appeal by Glaxo pertaining to Justice Wetston's Order of November 13, 1998. Justice MacDonald confirmed that the reference to this cross-appeal was in error and that Glaxo had no right to cross-appeal in the consolidated appeals for costs. |
ANALYSIS
[21] Rule 397, in its entirety, reads as follows:
| 397. (1) Within 10 days after the making of an order, or within such other time as the Court may allow, a party may serve and file a notice of motion to request that the Court, as constituted at the time the order was made, reconsider its terms on the ground that
(2) Clerical mistakes, errors or omissions in an order may at any time be corrected by the Court. |
397. (1) Dans les 10 jours après qu'une ordonnance a été rendue ou dans tout autre délai accordé par la Cour, une partie peut signifier et déposer un avis de requête demandant à la Cour qui a rendu l'ordonnance, telle qu'elle était constituée à ce moment, d'en examiner de nouveau les termes, mais seulement pour l'une ou l'autre des raisons suivantes :
(2) Les fautes de transcription, les erreurs et les omissions contenues dans les ordonnances peuvent être corrigées à tout moment par la Cour. |
[22] It is to be noted, in this motion, that counsel for Glaxo relies on Rule 397(2). As pointed out by counsel for Apotex, Rule 397(2) has no time limit attached to it whereas a Rule 397(1) motion must be made "within 10 days after the making of an order, or within such other time as the Court may allow".
[23] As a matter of interest, under the old Federal Court Rules, Rule 337(6) read:
| 337. (6) Clerical mistakes in judgments, or errors arising therein from any accidental slip or omission, may at any time be corrected by the Court without an appeal. |
[24] Counsel for Novopharm and Apotex raised several procedural grounds as to why the Glaxo motion should fail:
| (a) the Trial Division no longer has jurisdiction because Wetston J.'s cost order has been appealed; |
| (b) Glaxo should have cross-appealed the issue in the Federal Court of Appeal; |
| (c) the time to have the order reconsidered has long expired (a Rule 397(1) argument); |
| (d) undue delay by Glaxo in bringing this motion; and |
| (e) the Court has no jurisdiction to "confirm that Glaxo Wellcome is entitled to recover particular disbursements". |
[25] I need not deal with any of these grounds because I am of the view Glaxo's motion simply has no merit and cannot fall within the scope of Rule 397(2).
[26] Rule 397(2) is directed to clerical mistakes or errors and omissions in an order or judgment. This is to be contrasted with paragraph 397(1)(b) which allows a Court to reconsider the terms of an order on the grounds that "a matter that should have been dealt with has been overlooked or accidentally omitted.
[27] Rule 397(2) is directed to these circumstances:
| (1) where there has been an accidental slip in the judgment (or order) as drawn; |
| (2) when the Court itself finds the judgment as drawn up does not correctly state what the Court actually decided and intended. |
[28] On the scope of this rule, in Polylok Corporation v. Montreal Fast Print (1975) Ltd., [1984] 1 F.C. 713, Thurlow C.J. said this at page 720 after holding that on the facts there was no reason to think there was any "clerical mistake in the order":
| That leaves for consideration only the wording "errors arising therein from any accidental slip or omission" in Rule 337(6). Having regard to the broad inherent authority exercised in times past by Courts to correct formal judgments or orders to make them accord with the judgment as pronounced or intended, it appears to me that this portion of the Rule should be given a scope which is broad enough to enable the Court to amend so as to make a judgment conform to what was intended when it was pronounced, but that it cannot and should not be used to authorize a judge to review or rescind his judgment or to alter it so as to reflect a change of mind as to what the judgment should have been. |
[29] Glaxo, after Wetston J. had issued his November 13, 1999 cost directions and reasons, specifically raised with the learned judge the issue of Dr. Béchard's fees and lab expenses in the context of his directions 7 and 8. Submissions were received by Wetston J. It will be noted that Glaxo had raised this same issue in its cost submissions quoted in paragraph 6 of these reasons. These submissions, as noted, were that Dr. Béchard confirmed his opinion that the formulations could be prepared as described in the patent by supervising the preparation and testing of every formulation in the patent. Glaxo added that lab fees were also incurred when the formulations were prepared.
[30] Wetston J., on December 18, 1998, as noted, in a direction, said that "the order of the Court dated November 13, 1998 included the issue raised by counsel in his letter of December 4, 1998. No motion is required".
[31] It is patently clear to me that Wetston J. himself was of the view there was no clerical error in the directions he made and these directions, on the point of issue, reflected what the Court had actually decided and intended.
[32] In my view, what Wetston J. said is perfectly clear. Glaxo is not to be awarded costs for the evidence and attendance of Dr. Béchard because his evidence and attendance were not necessary. That evidence concerned the formulation question and included the lab fees and disbursements which were necessary for the preparation of his evidence.
[33] For all of these reasons, Glaxo's motion is denied with costs.
"François Lemieux"
J U D G E
OTTAWA, ONTARIO
SEPTEMBER 28, 1999