Ottawa, Ontario, January 5, 2006
PRESENT: The Honourable Mr. Justice O'Reilly
BETWEEN:
(Defendant by Counterclaim)
and
MERCK FROSST CANADA & CO.
(Plaintiffs by Counterclaim)
REASONS FOR ORDER AND ORDER
[1] In 2002, the defendants succeeded in a motion for summary judgment on their claim against the plaintiff for patent infringement. Justice William McKeown held that the defendants were entitled to choose whether to be compensated by monetary damages or by an accounting of the profits the plaintiff realized from the sale of the infringing product. In 2003, the Federal Court of Appeal held that the parties should be entitled to further discoveries before the question whether the defendants could choose an accounting of profits, in lieu of damages, was decided. In 2004, Justice Luc Martineau allowed the defendants' motion to separate the question of an entitlement to profits from the determination of the actual quantum of the profits or damages. On March 2, 2005, I granted the defendants' motion for summary judgment on the issue of their entitlement to an accounting of the plaintiff's profits. That motion was brought in writing, on consent of the plaintiff.
[2] The 2005 summary judgment order, in addition to making clear that the defendants were entitled to an accounting of profits, stipulated that the "costs of the defendants' summary judgment motion shall be dealt with separately, in writing". I have now received the parties' written submissions. The defendants seek $175,000 in fixed costs, which they suggest is about 75% of their actual costs over the preceding 18-month period. In the alternative, they ask for $125,000 for the costs directly associated with the 2005 summary judgment motion.
[3] The plaintiff submits that the defendants' costs demands are excessive for a summary judgment motion, especially one brought with its consent, and proposes that the defendants be granted $5,000 in costs.
[4] I agree with the plaintiff that the defendants' costs are excessive. For example, the defendants assert that 271.4 hours, about seven weeks, were spent in preparing for the summary judgment motion and drafting the appropriate order. However, at the same time, I do not accept the plaintiff's submission that $5,000 would be an adequate award. The plaintiff consented to the defendants' motion at the last minute. The defendants had to prepare for a contested hearing and assemble their materials and arguments accordingly. The plaintiff's conduct resulted in unnecessary scheduling conferences and delays.
[5] In my view, the defendants should be compensated at the upper end of Column III of Tariff B for the work of two counsel. Having reviewed the defendants' Bill of Costs in that light, and to avoid putting the parties to an assessment at this point, I propose to fix costs in the amount of $20,000, plus disbursements, payable forthwith.
ORDER
THIS COURT ORDERS that:
1. The plaintiff shall pay to the defendants fixed costs in the amount of $20,000, payable forthwith, plus the disbursements set out in the defendants' Bill of Costs.
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-294-96
STYLEOF CAUSE: APOTEX INC v. MERCK & CO., INC. AND MERCK FROSST CANADA & CO.
MOTION DEALT WITH IN WRITING WITHOUT APPEARANCE OF PARTIES
REASONS FOR ORDER
APPEARANCES:
H.B. Radomski FOR THE PLAINTIFF
Richard Naiberg (Defendant by Counterclaim)
G. Alexander Macklin, Q.C. FOR THE DEFENDANTS
(Plaintiffs by Counterclaim)
SOLICITORS OF RECORD:
Goodmans LLP. FOR THE PLAINTIFF Toronto, Ontario (Defendant by Counterclaim)
tOTTT
Ottawa, Ontario FOR THE DEFENDANTS
(Plaintiffs by Counterclaim)