Janssen-Ortho Inc. et al. v. Novopharm Ltd., (2012) 428 N.R. 318 (FCA)

• Court: Federal Court of Appeal (Canada)
• Case Date: February 27, 2012
• Jurisdiction: Canada (Federal)
• Citations: (2012), 428 N.R. 318 (FCA);2012 FCA 29

Janssen-Ortho Inc. v. Novopharm (2012), 428 N.R. 318 (FCA)

MLB headnote and full text

Temp. Cite: [2012] N.R. TBEd. FE.014

Novopharm Limited (appellant) v. Janssen-Ortho Inc. and Daiichi Pharmaceutical Co., Ltd. (respondents)

(A-500-06; 2012 FCA 29)

Indexed As: Janssen-Ortho Inc. et al. v. Novopharm Ltd.

Federal Court of Appeal

Bruce Preston, Assessment Officer

February 27, 2012.

Summary:

The plaintiffs sued for infringement of a patent relating to the antimicrobial drug "levofloxacin", specifically claim 4. The patent application was filed on June 19, 1986. The patent was issued on June 23, 1992. The defendant admitted infringement, but disputed the claim's validity.

The Federal Court, in a decision reported at 301 F.T.R. 166, held that claim 4 was valid and had been infringed. The court issued an injunction. A separate trial was to proceed respecting the quantum of damages. The defendant appealed.

The Federal Court of Appeal, in a decision reported at 366 N.R. 290, dismissed the appeal. The defendant sought an order, pursuant to rule 397(1)(b), for reconsideration of the judgment.

The Federal Court of Appeal, in a decision reported at 368 N.R. 286, dismissed the motion. The plaintiffs were awarded costs of both the appeal and reconsideration motion. The plaintiff Janssen filed a bill of costs for each of the decisions.

An Assessment Officer of the Federal Court of Appeal held that the Bill of Costs for the appeal, presented at $76,746.47, was assessed and allowed in the total amount of $25,550.98, plus interest from the date of judgment; the Bill of Costs for the motion for reconsideration, presented at $2,718.84, was assessed and allowed for a total amount of $2,710.87, plus interest from the date of judgment.

Interest - Topic 3502

Statutory interest - On judgments - Commencement of - The plaintiffs successfully sued for patent infringement - The defendant's appeal was dismissed - The plaintiffs were awarded costs - The plaintiff Janssen filed a bill of costs - It also claimed post-judgment interest - The defendant submitted that the Court of Appeal did not award Janssen post-judgment interest and that an assessment officer had no jurisdiction to award interest or set an interest rate - An Assessment Officer of the Federal Court of Appeal held that he lacked jurisdiction to award post judgment interest, in the assessment before him - However, the Court of Appeal did not exercise its jurisdiction to disallow post judgment interest - Consequentially, post judgment interest ran from the date of judgment - See paragraphs 36 to 38.

Interest - Topic 3502

Statutory interest - On judgments - Commencement of - [See Interest - Topic 3506 ].

Interest - Topic 3506

Statutory interest - On judgments - Rate of interest - The plaintiffs successfully sued for patent infringement - The defendant's appeal was dismissed - The plaintiffs were awarded costs - The plaintiff Janssen filed a bill of costs - The defendant argued that s. 37(2) of the Federal Courts Act was applicable to the calculation of interest as the cause of action arose in more than one province - An Assessment Officer of the Federal Court of Appeal reviewed the Statement of Issues and found that both Janssen and Teva were corporations located in Toronto, Ontario - Further, the court could find no admission by Janssen in the statement confirming that s. 37(2) of the Federal Courts Act was applicable to the issue of interest - Thus, s. 37(1) of the Act should be used in determining post judgment interest as both companies had head offices in Ontario - Therefore, post judgment interest ran from the date of judgment, calculated according to the laws relating to interest, on judgments in causes of action between subject and subject, which were in force in the province of Ontario - See paragraphs 38 and 39.

Practice - Topic 7060.1

Costs - Party and party costs - Counsel fees - At hearing of trial or appeal - The Federal Court of Appeal held that lunch breaks were not to be included when calculating counsel time in court - See paragraphs 4 to 6.

Practice - Topic 7134

Costs - Party and party costs - Disbursements - Photocopies, scanning, printing or binding - The plaintiffs successfully sued for patent infringement - The defendant's appeal was dismissed - The plaintiffs were awarded costs - The plaintiff Janssen filed a bill of costs - The plaintiffs claimed $16,924.25 for photocopies produced internally and $18,668.66 for photocopies produced by an external service provider - An Assessment Officer of the Federal Court of Appeal held that the amount claimed for photocopying was unsubstantiated and excessive - However, the number of photocopies required in the appeal would have been extensive, including a three volume Book of Authorities and a Compendium of Documents for the court - The court allowed photocopying for one lump sum of $17,178.09 to cover both internal and external photocopies based on $0.25 per page - This amount also included $7,520.50 for two photocopies of the Appeal Book - See paragraphs 8 to 12.

Practice - Topic 7134

Costs - Party and party costs - Disbursements - Photocopies, scanning, printing or binding - The plaintiffs successfully sued for patent infringement - The defendant's appeal was dismissed - The plaintiffs were awarded costs - They filed a bill of costs - The plaintiff Janssen claimed, inter alia, $3,820.75 for binding - The defendant argued that binding was overhead and could not be recovered - An Assessment Officer of the Federal Court of Appeal found that the vast majority of the binding claimed was not related to filings with the court - As the court found that it was only reasonable or necessary to allow for internal binding when there was a correlation between the binding and court filings, binding was allowed at $148.30 - See paragraphs 13 to 15.

Practice - Topic 7134

Costs - Party and party costs - Disbursements - Photocopies, scanning, printing or binding - The plaintiffs successfully sued for patent infringement - The defendant's appeal was dismissed - The plaintiffs were awarded costs - They filed a bill of costs - The plaintiff Janssen claimed, inter alia, for scanning and Summation - The defendant submitted that the invoices supplied by Janssen suggested that this amount was an in-house charge and the only cost of in-house scanning was staff time, which was unrecoverable overhead - Further; Janssen had provided no explanation as to why any scanning costs were necessary - Having regard to Summation document management services, the defendant argued that the cost of Summation was not recoverable - Further, Janssen had already paid to have the trial record entered into Summation and had not explained why a subsequent charge was necessary - Janssen submitted that the trial record and appeal book were different documents and Summation had to be performed for each to provide easy access to the documentation - Given the size of the appeal book, it was critical that counsel have access to a portable, electronic, searchable copy while preparing for and attending the appeal - An Assessment Officer of the Federal Court of Appeal was satisfied that the scanning claimed was reasonable and necessary, and allowed scanning at $0.17 per page for a total of $150 - The court denied the Summation claim, holding that it was part of the normal overhead costs of litigation - See paragraphs 16 to 20.

Practice - Topic 7138

Costs - Party and party costs - Disbursements - Computer research - The plaintiffs successfully sued for patent infringement - The defendant's appeal was dismissed - The plaintiffs were awarded costs - The plaintiff Janssen filed a bill of costs and claimed, inter alia, $1,050.10 for QuickLaw and LexisNexis - The defendant submitted that "Janssen has not established that all this research was necessary. Many charges postdate the filing of Janssen's memorandum of fact and law. Some of the charges postdate the hearing of the appeal. These charges cannot reasonably be considered necessary." - An Assessment Officer of the Federal Court of Appeal stated that legal research conducted after the appeal might not be allowed - However, legal research conducted up to the commencement of the appeal, even after the filing of the memorandum of fact and law, was reasonable as new decisions which could affect the pending appeal could be rendered at any time - The court deducted QuickLaw research conducted after the hearing of the appeal and allowed all other on-line case law research, for a total of $973.17 - See paragraphs 24 to 26.

Practice - Topic 7150.4

Costs - Party and party costs - Disbursements - Items not recoverable as disbursements - [See second and third Practice - Topic 7134 ].

Practice - Topic 7150.7

Costs - Party and party costs - Disbursements - Delivery and service charges - The plaintiffs successfully sued for patent infringement - The defendant's appeal was dismissed - The plaintiffs were awarded costs - The plaintiff Janssen filed a bill of costs and claimed, inter alia, $158 for process servers - The defendant argued that process servers were not necessary for filings in the Court of Appeal - An Assessment Officer of the Federal Court of Appeal noted that no jurisprudence had been provided to support this contention - It had been held many times that costs should not be assessed from the perspective of hindsight - The court found that it was reasonable that Janssen incurred expenses for process servers for the service and filing of documents and it allowed the claim as presented - See paragraphs 27 to 29.

Practice - Topic 7605

Costs - Taxation of costs - Powers of taxing officer - [See first Interest - Topic 3502 ].

Cases Noticed:

Aventis Pharma Inc. v. Apotex Inc. et al., [2009] F.T.R. Uned. 669; 2009 FC 51, refd to. [para. 6].

Estensen v. Canada (Attorney General), [2009] F.T.R. Uned. 74; 2009 FC 152, refd to. [para. 6].

Aventis Pharma Inc. et al. v. Apotex Inc. et al., [2008] F.T.R. Uned. 985; 2008 FC 988, refd to. [para. 6].

AstraZeneca AB et al. v. Apotex Inc. et al., [2009] F.T.R. Uned. 454; 2009 FC 822, refd to. [para. 6].

Janssen Inc. et al. v. Teva Canada Ltd., [2012] F.T.R. Uned. 27; 2012 FC 48, appld. [para. 6].

Minde v. Ermineskin Cree Nation et al., [2009] N.R. Uned. 38; 2009 FCA 128, refd to. [para. 13].

Morphy v. Canada (Attorney General), [2009] F.T.R. Uned. 128; 2009 FC 190, refd to. [para. 13].

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. 19].

Sanofi-Aventis Canada Inc. et al. v. Apotex Inc., [2009] F.T.R. Uned. 806; 2009 FC 1138 refd to. [para. 19].

Dableh v. Ontario Hydro, [1994] F.C.J. No. 1810, refd to. [para. 29].

Wilson v. Canada, 2000 DTC 6641, refd to. [para. 36].

Bayer AG et al. v. Novopharm Ltd. et al. (2009), 361 F.T.R. 42; 2009 FC 1230, refd to [para. 37].

Morin v. Canada (Minister of Indian Affairs and Northern Development), [2002] F.T.R. Uned. 594; 2002 FCT 898, refd to. [para. 37].

Statutes Noticed:

Federal Courts Act, R.S.C. 1985, c. F-7, sect. 37(1), sect. 37(2) [para. 39].

Counsel:

David Aitken, for the appellant;

Neil Belmore and Greg Beach, for the respondent, Janssen-Ortho Inc.

Solicitors of Record:

Osler, Hoskin & Harcourt LLP, Ottawa, Ontario, for the appellant;

Belmore Neidrauer LLP, Toronto, Ontario, for the respondent, Janssen-Ortho Inc.

This costs assessment was heard without the personal appearance of parties, by Bruce Preston, Assessment Officer, of the Federal Court of Appeal, who delivered the following decision at Toronto, Ontario, on February 27, 2012.