Hoffman-La Roche Ltd. v. Apotex Inc. et al., (2013) 444 F.T.R. 237 (FC)

• Jurisdiction: Federal Jurisdiction (Canada)
• Court: Federal Court (Canada)
• Citation: (2013), 444 F.T.R. 237 (FC),2013 FC 1265
• Date: 18 December 2013

Hoffman-La Roche Ltd. v. Apotex Inc. (2013), 444 F.T.R. 237 (FC)

MLB headnote and full text

[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

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Temp. Cite: [2013] F.T.R. TBEd. DE.024

Hoffman-La Roche Limited (applicant) v. Apotex Inc. and The Minister of Health (respondents) and Roche Palo Alto LLC (respondent/patentee)

(T-1165-09; 2013 FC 1265; 2013 CF 1265)

Indexed As: Hoffman-La Roche Ltd. v. Apotex Inc. et al.

Federal Court

Preston, Assessment Officer

December 18, 2013.

Summary:

Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance (NOC) to Apotex Inc. to market a generic version of mycophenolate mofetil (MMF). Roche maintained that the Minister should not issue an NOC to Apotex until the expiry of Canadian Patent 1,333,285 (the '285 patent) held by Roche. Apotex alleged that the '285 patent was invalid on the basis that MMF's utility was neither demonstrated nor soundly predicted when Roche applied for its patent, and MMF was an obvious variant on the prior art.

The Federal Court, in a decision reported at (2011), 394 F.T.R. 142, allowed Roche's application with costs. Roche filed a Bill of Costs to be assessed.

An Assessment Officer of the Federal Court assessed and allowed Roche's Bill of Costs at $302,177.96 plus post judgment interest at 5% from July 13, 2011.

Food and Drug Control - Topic 1111.2

Drugs - New drugs - Notice of compliance - Costs - [See both Practice - Topic 7085 , Practice - Topic 7092 , Practice - Topic 7097 and Practice - Topic 7641 ].

Practice - Topic 7064

Costs - Party and party costs - Counsel fees - Article clerks, paralegals, etc. - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Roche claimed 2.5 units under Item 28 for the services of a paralegal - Roche argued that the paralegal assisted with the preparation of the Draft Bill of Costs, and the preparation of the Application Record and Authorities - An Assessment Officer of the Federal Court stated that "I find that 'the limit imposed by Item G28 is that the litigant to be indemnified cannot recover once for the supervising lawyer and again for the non-lawyer'. In keeping with this, I find that the services rendered by the paralegal may not be allowed as Roche has already claimed for the services under Item 1 for the Application Record and Item 27 (corrected to Item 26) for the Draft Bill of Costs. Therefore, the claim under Item 28 is not allowed" - See paragraphs 21 to 23.

Practice - Topic 7066

Costs - Party and party costs - Counsel fees - Written argument - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Roche submitted a claim under Item 15 for the preparation of Written Submissions on costs - An Assessment Officer of the Federal Court stated that "Item 15 allows for 'preparation and filing of written argument, where requested or permitted by the Court'. It has been decided that Assessment Officers are not members of the Court ... As the Written Submissions on costs were filed further to a Direction of an Assessment Officer, and not the Court, Roche's claim under Item 15 is not allowed" - See paragraphs 17 to 19.

Practice - Topic 7084

Costs - Party and party costs - Witness fees and costs of preparation for trial or appeal - Witnesses - Preparation for trial - [See Practice - Topic 7097 ].

Practice - Topic 7085

Costs - Party and party costs - Witness fees and costs of preparation for trial or appeal - Expert witness fees - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Roche submitted claims for four expert witnesses: Dr. Cattral, Dr. Thisted, Dr. Anderson and Dr. Sawchuk - Apotex submitted that Dr. Anderson charged $8,000 for 16 hours for his cross-examination, which lasted only 3  hours, and that Roche needed to justify the reasonableness of Dr. Anderson and Dr. Sawchuk, who charged approximately nine times the amount charged by Dr. Cattral and Dr. Thisted - An Assessment Officer of the Federal Court found that the court had referred to the evidence of Dr. Anderson and Dr. Sawchuk more than that of Dr. Cattral or Dr. Thisted - Further, the review of the prior art and preparation of the affidavits of Dr. Anderson and Dr. Sawchuk were time consuming - However, the Assessment Officer found that the amount claimed for Dr. Anderson for his cross-examination was not reasonable - The Assessment Officer allowed only 4 hours at $500 per hour for the cross-examination of Dr. Anderson - The amounts claimed were otherwise reasonable - Therefore, the amount claimed for Dr. Sawchuk was allowed as claimed at $63,975.46 and the claim for Dr. Anderson was allowed at $84,056.18 to account for the reduction for his cross-examination - See paragraphs 30 to 36.

Practice - Topic 7085

Costs - Party and party costs - Witness fees and costs of preparation for trial or appeal - Expert witness fees - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Apotex argued that Roche's claims for Dr. Allison and Dr. Lee were inappropriate as both doctors were not tendered as expert witnesses but were put forward as fact witnesses to speak to the purported invention in suit - An Assessment Officer of the Federal Court stated that "I find that the maximum amount allowable under Tariff A3(1) of the Federal Courts Rules is the amount allowable under Tariff A of the Rules of Civil Procedure for the Province of Ontario, being $50.00 per day of necessary attendance at the hearing plus reasonable travel expenses. However, given that Dr. Allison and Dr. Lee provided affidavit evidence and did not attend the hearing to provide viva voce evidence in Court, I find that I am not able to allow any of the disbursements claimed to the services they provided. Therefore, the claims for Dr. Allison and Dr. Lee are not allowed" - See paragraphs 47 to 53.

Practice - Topic 7092

Costs - Party and party costs - Witness fees and costs of preparation for trial or appeal - Expert advisors to counsel - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Roche presented claims for Dr. Eugui, Dr. Williams III and Dr. Pankiewicz - Roche submitted that these experts provided technical assistance due to the complexity and technical nature of the proceeding - Counsel argued that the costs of experts not called to testify could be assessed if the experts were not clearly superfluous - An Assessment Officer of the Federal Court stated that "counsel for Roche has presented no evidence that there was ever an intention to call Dr. Eugui, Dr. Williams III or Dr. Pankiewicz as expert witnesses. There is no evidence that any of the technical consultants prepared an affidavit nor is there any evidence that there had ever been consideration given to the possibility of Dr. Eugui, Dr. Williams III or Dr. Pankiewicz preparing an expert affidavit. Under these circumstances, I find that the claims for Dr. Eugui, Dr. Williams III and Dr. Pankiewicz do not meet the requirements set out in Eurocopter, Sanofi-Aventis and Adir. Therefore, the claims for Dr. Eugui, Dr. Williams III and Dr. Pankiewicz are not allowed" - See paragraphs 37 to 46.

Practice - Topic 7097

Costs - Party and party costs - Witness fees and costs of preparation for trial or appeal - Cross-examination - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Roche submitted 11 claims under Item 8 for the preparation for the cross-examination of the Roche affiants and the Apotex affiants - An Assessment Officer of the Federal Court found that a claim of five units for the preparation of Roche's witnesses was excessive - Although there would be a requirement to prepare the affiant, there would not be preparation to the extent there would be for the Apotex affiants - Therefore, for six Roche affiants, the Assessment Officer allowed four units for each claim under Item 8 - For the five Apotex affiants, the Assessment Officer allowed five units for each claim under Item 8 - The Assessment Officer also found that in conducting the cross-examinations, the complexity and effort involved would be greater while examining the Apotex affiants than it would be while attending at the cross-examination of the Roche affiants - Therefore, Item 9 was allowed for two units per hour for the Roche affiants and three units per hour for the Apotex affiants - See paragraphs 11 to 16.

Practice - Topic 7132

Costs - Party and party costs - Disbursements - Evidence required in support of - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Roche argued that the affidavit of McIntomny (a paralegal) provided a sufficient basis for the assessment of the disbursements claimed - An Assessment Officer of the Federal Court found that the evidence provided established that the disbursements were paid or payable by Roche - However, the disbursements for which no invoices were produced were of concern - The Assessment Officer stated that "Although this may be sufficient to establish prima facie evidence that the disbursements were incurred, in circumstances such as this proceeding, where there is a motion for which no costs were awarded, I am provided with no evidence that the disbursements related to that motion were deducted from the disbursements claimed. Further, as Roche claimed fees for said motion, I am led to conclude that the disbursements for the motion were included in the Bill of Costs. ... Therefore, when assessing the disbursements for which no invoices were provided, I will use my discretion to ensure that Apotex is not prejudiced concerning any costs which may have arisen in relation to Roche's Motion to have this matter specially managed" - See paragraphs 25 to 29.

Practice - Topic 7132

Costs - Party and party costs - Disbursements - Evidence required in support of - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - An Assessment Officer of the Federal Court stated that "Concerning courier, process server, binding, fax charges and long distance, I have been provided no evidence other than paragraph 14 of the Affidavit of Erin McIntomny [a paralegal]. This makes it impossible to reach a determination concerning necessity as there is no evidence concerning to which step in the proceeding these charges relate. I find that it is not enough to simply state that these charges were incurred since there are steps for which no costs have been allowed. On the other hand, even though Roche has provided no particularity concerning these disbursements, from a review of the Court Record it is clear that expenses would have been incurred in the process of the litigation. Therefore, I will allow courier, process server, binding, fax charges and long distance for a total lump sum of $500" - See paragraph 61.

Practice - Topic 7136

Costs - Party and party costs - Disbursements - Travelling expenses - General - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Roche claimed $87,100.31 for travel disbursements - An Assessment Officer of the Federal Court stated that "I have reviewed the receipts for travel included in the Affidavit of Erin McIntomny [a paralegal] and find that there are several instances where alcoholic beverages were included in the meal. I also found several receipts for 'lavish meals' which did not include a breakdown of what the meal included. Also, there is no evidence concerning who was present at the meals. This is of concern as it has been decided that travel and meals for clients are not recoverable ... I find it reasonable to reduce the amount claimed for travel so as not to reimburse for expenses not properly claimed or supported by the evidence" - The amount claimed for travel was allowed at $84,500 - See paragraphs 54 to 55.

Practice - Topic 7138

Costs - Party and party costs - Disbursements - Computer research - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Roche claimed $1,288.86 for Quicklaw and Westlaw fees - An Assessment Officer of the Federal Court stated that "The only evidence provided is the statement at paragraph 14 of the Affidavit of Erin McIntomny [a paralegal]. Counsel did not provide a copy of a printout from the accounting system referred to by Ms. McIntomny ... given the lack of evidence provided by Roche, it is impossible to reach a determination concerning relevance or necessity of the on-line searches. Therefore the claim for Quicklaw and Westlaw fees is not allowed" - See paragraph 60.

Practice - Topic 7605

Costs - Taxation of costs - Powers of taxing officer - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Although not contested by Apotex, the Assessment Officer noted that Roche had submitted a claim under Item 2 for the preparation of their Application Record - Item 2 could be claimed for the "preparation and filing of all defences, replies, counterclaims or respondents' records and materials" - An Assessment Officer of the Federal Court stated that "It has been held that, in the absence of submissions, an Assessment Officer should not step away from a position of neutrality but is not able to allow Items which fall outside the authority of the Judgment or Tariff ... As Roche is the Applicant to this proceeding, and having already allowed a claim under Item 1, I find that Roche is not entitled to a claim under Item 2"- See paragraphs 9 to 10.

Practice - Topic 7641

Costs - The tariffs, schedules etc. - General - Hoffmann-La Roche Ltd. (Roche) applied for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex Inc. - The application was granted with costs - Roche filed a Bill of Costs to be assessed - Roche referred to, inter alia, the complexity of the proceeding in suggesting that its request for costs at the upper end of Column III was reasonable - Apotex submitted that, unless the court ordered otherwise, the mid-level of Column III of the table to Tariff B should be applied to assessable services - An Assessment Officer of the Federal Court stated that "I find nothing in the wording of Rule 407 which limits the assessment of the assessable services claimed to the mid-point of Column III. Further, it has been decided on many occasions that 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 ... I find that in assessing the costs of Roche, I am able to determine the number of units to be allocated for each individual assessable service within the full range of Column III" - See paragraphs 3 to 8.

Cases Noticed:

Sanofi-Aventis Canada Inc. et al. v. Novopharm Ltd., [2009] F.T.R. Uned. 807; 2009 FC 1139, refd to. [para. 3].

Novopharm Ltd. v. Eli Lilly & Co., [2010] F.T.R. Uned. 896; 2010 FC 1154, refd to. [para. 3].

Merck & Co. et al. v. Apotex Inc., [2006] F.T.R. Uned. 627; 2006 FC 631, refd to. [para. 4].

Ludco Enterprises Ltd. et al. v. Ministre du Revenu national (2002), 298 N.R. 352; 2002 FCA 450, refd to. [para. 4].

Monsanto Canada Inc. et al. v. Schmeiser et al. (2002), 220 F.T.R. 60; 2002 FCT 439, refd to. [para. 4].

Wyeth Canada et al. v. ratiopharm inc. et al. (2007), 371 N.R. 41; 2007 FCA 361, refd to. [para. 4].

Consorzio Del Prosciutto Di Parma v. Maple Leaf Meats Inc., [2003] 2 F.C. 451; 297 N.R. 135; 2002 FCA 417, refd to. [para. 4].

Merck & Co. et al. v. Apotex Inc. et al. (2008), 382 N.R. 374; 2008 FCA 371, refd to. [para. 4].

Bayer Healthcare AG et al. v. Sandoz Canada Inc. et al., [2009] F.T.R. Uned. 817; 2009 FC 691, refd to. [para. 5].

Nature's Path Foods Inc. v. Country Fresh Enterprises Inc. et al. (2007), 339 F.T.R. 1; 2007 FC 116, refd to. [para. 5].

Eurocopter v. Bell Helicopter Textron Canada Ltd. (2012), 415 F.T.R. 29; 2012 FC 842, refd to. [para. 5].

Johnson & Johnson Inc. et al. v. Boston Scientific Ltd., [2008] F.T.R. Uned. 583; 2008 FC 817, refd to. [para. 5].

Starlight v. Canada, 2001 FCT 999, refd to. [para. 7].

Truehope Nutritional Support Ltd. et al. v. Canada (Attorney General) et al., [2013] F.T.R. Uned. 575; 2013 FC 1153, refd to. [para. 7].

Dahl v. Canada, [2007] F.T.R. Uned. 105; 2007 FC 192, refd to. [para. 10].

Marshall v. Canada, 2006 FC 1017, refd to. [para. 19].

Air Canada v. Canada (Minister of Transport), [2000] F.C.J. No. 101, refd to. [para. 22].

Abbott Laboratories et al. v. Canada (Minister of Health) et al. (2008), 352 F.T.R. 78; 2008 FC 693, refd to. [para. 26].

Halford et al. v. Seed Hawk Inc. et al., 2006 FC 422, refd to. [para. 29].

Merck & Co. v. Apotex Inc., 2002 FCT 842, refd to. [para. 37].

Mercury Launch & Tug Ltd. v. Texada Quarrying Ltd. (2009), 344 F.T.R. 60; 2009 FC 331, refd to. [para. 37].

Fournier Pharma Inc. et al. v. Canada (Minister of Health) et al., [2009] F.T.R. Uned. 531; 2009 FC 1004, refd to. [para. 37].

Adir v. Apotex Inc. - see Laboratoires Servier et al. v. Apotex Inc. et al.

Laboratoires Servier et al. v. Apotex Inc. et al. (2008), 332 F.T.R. 314; 2008 FC 1070, refd to. [para. 37].

Apotex Inc. v. Wellcome Foundation Ltd., [1998] F.C.J. No. 1736, affd. [2001] F.C.J. No. 37, refd to. [para. 38].

Wenzel Downhole Tools Ltd. et al. v. National-Oilwell Canada Ltd. et al. (2011), 401 F.T.R. 74; 2011 FC 1323, refd to. [para. 49].

Balisky et al. v. Canada (Minister of Natural Resources) et al., [2004] N.R. Uned. 275; 2004 FCA 123, refd to. [para. 51].

Janssen-Ortho Inc. et al. v. Novopharm Ltd., [2006] F.T.R. Uned. 768; 2006 FC 1333, refd to. [para. 55].

Allied Signal Inc. v. Dupont Canada Inc. et al. (1997), 81 C.P.R.(3d) 129 (F.C.T.D.), refd to. [para. 55].

Bayer AG et al. v. Novopharm Ltd. et al. (2009), 361 F.T.R. 42; 2009 FC 1230, refd to [para. 55].

Counsel:

Anthony Creber, John Norman and Alexander Gloor, for the applicant;

H.B. Radomski and David E. Lederman, for the respondent, Apotex Inc.

Solicitors of Record:

Gowling LaFleur Henderson LLP, Ottawa, Ontario, for the applicant;

Goodmans LLP, Toronto, Ontario, for the respondent, Apotex Inc.

This assessment of costs was dealt with in writing at Toronto, Ontario, by Preston, Assessment Officer, of the Federal Court, who delivered the following decision on December 18, 2013.