Rothmans, Benson & Hedges Inc. v. Imperial Tobacco Ltd.
T-1552-90
Rouleau J.
30/6/93
9 pp.
Application for order for special directions concerning taxation of plaintiffs' costs -- Defendant manufacturing and selling preformed product for use in making own cigarettes, and prefabricated tubular cigarette wrapper -- Plaintiffs bringing patent infringement action -- Defendant pleading invalidity based on lack of novelty and obviousness -- Action successful at trial -- R. 344(3) setting out considerations to guide Court in exercise of discretionary power over costs -- Application allowed -- Action not involving complex legal issues, but requiring detailed and extensive evidence concerning progression of state of art of fine cut tobacco -- Plaintiffs calling five expert witnesses as to whether at time of invention obvious to skilled technician in art -- Necessary for plaintiffs' counsel to attend England and Germany to prepare witnesses for examination for discovery -- In light of success at trial, justice dictating only restriction on indemnification for out-of-pocket expenses incurred in bringing action should be expenses not reasonably necessary for proper presentation of plaintiffs' case -- Costs according to Tariff B inadequate -- Court not bound by Tariff in exercise of discretion under R. 344, although excessive increases over and above tariff not permitted -- Fixing costs over Tariff B amounts requiring Judge's determination of worth of services devoted to action based on submissions of counsel, Judge's own experience, what would normally be allowed under Tariff -- Provided Court satisfied all time set out in affidavit required to be spent, no reason increase in Tariff B amounts should not be allowed -- Plaintiffs put to considerable expense to protect ownership in valid patent, admittedly being infringed -- Costs of a witness should not be disallowed as unnecessary unless Court satisfied party could not reasonably have considered witness' evidence relevant to and supportive of case -- Court must consider what would have appeared rational to parties at time of trial -- Witnesses called by plaintiff meet this criteria -- Reasonable fees and disbursements relating thereto should be allowed -- Attendance at proceedings of expert witnesses essential to proper conduct of action -- Unreasonable to limit expert's fees and expenses to days which testified -- No allowance for fees and disbursements in relation to attendances of patent agent on examination for discovery and at trial, as part of overhead -- Federal Court Rules, C.R.C., c. 663, R. 344 (as am. by SOR/87-221, s. 2), Tariff B (as am. idem, s. 8).