Mylan Pharmaceuticals
ULC v Bristol-Myers Squibb Canada Co. [2013
FCA 231]

Background

This is an appeal of a cost award from a Judgment of
Justice Barnes awarding $45,000 plus HST and reasonable disbursements. The
costs were awarded based on Justice Barnes disposing of an application by
Bristol Myers under the PM(NOC) regulation for a prohibition order against
Mylan. The prohibition order was granted with respect to one of the two patents
at issue. Despite the divided success Justice Barnes awarded costs to Bristol
Myers for half of their claimed costs and disbursements.

Analysis

Cost decisions are highly discretionary and will not be
disturbed on appeal unless the decision is based on an error or is plainly
wrong.[5] Mylan suggested that this award provides an incentive to generic drug
manufacturers to issue multiple notices of allegation rather than one where more
than one patent is involved.[9] The Court felt that if this behavior were
noticed by the Federal Court Judges and Prothonotaries they would be more than
capable of handling it themselves.

The appeal was dismissed with costs.

ABB Technology AG v
Hyundai Heavy Industries Co., Ltd. [2013
FC 1050]

Background

The defendant argued for a departure from the Court
tariff seeking to recover half of its actual legal costs. The Judge notes that
this case is an example of the growing disparity between Federal Court tariffs
and the actual cost of patent litigation. While the trial took place in Canada
much of the evidence was obtained elsewhere including Korea and Germany.

Approximately a month before trial the Defendant served
an Offer to Settle that ended up being a better outcome for the Plaintiffs than
the judgment rendered.

Analysis

Taking all of the facts into consideration the Judge
settled on an amount of $350,000 for the party-and-party costs.[8] Disbursements
will require an assessment separately because the amounts sought are not
sufficiently detailed. The Defendant’s did not retain experts
unnecessarily.[10] The hourly rates however were assessed at the lesser of the
rates actually charged or the hourly rate of the Defendant’s most senior legal
counsel.

Hotel, meals and business class travel are allowed for
witnesses who testified, as well as for two senior counsel and one junior
counsel provided they actually attended. Expenses of in-house counsel and other
non-testifying corporate representatives are not allowed. Expenses of counsel
to attend in Korea, Germany and Vancouver in advance of the trial are allowed. Defendant’s
costs of retaining a German Patent Agent and United States counsel were not
justified. All translation expenses were allowed.