Date: 19980511
File No.: T-2234-89
BETWEEN :
ALLIEDSIGNAL INC.
Plaintiff
- and -
DUPONT CANADA INC. and THE COMPLAX CORPORATION
Defendants
TAXATION OF COSTS - REASONS
Marc D. Reinhardt,
Taxing Officer
[1] The Plaintiff's Bill of Costs came on for hearing before me on Friday, November 21, 1997 in Ottawa. Ms. Hélène D'Iorio of the firm of GOWLING, STRATHY & HENDERSON appeared on behalf of the Plaintiff. Mr. Arthur Renaud of the firm of SIM HUGHES ASHTON & McKAY acted for the Defendant DuPont Canada. No one appeared or acted for the other Defendant The Complax Corporation. The parties had been given until December 19, 1997 to file and exchange written submissions.
[2] The patent in suit relates to a blended polyamide/polyolefin film of low crystallinity, suitable for use in the preparation of sheet moulding compound. The film consists of a blend of a polyamide (i.e. nylon) and of a polyolefin, both of a given crystallinity, the film having a specified thickness, tear strength, styrene permeability and peelability.
[3] The case was a highly complex one involving x-Ray diffraction (XRD), nuclear magnetic resonance (NMR), infrared spectroscopy (IR), density gradient column and differential scanning calorimetry (DSC). Also, adhesion tests and scanning electron microscopy were used to test the physical properties and to visually examine the material at issue. There were four main issues in the case, namely (1) the crystallinity of the nylon component of the film made by the Defendant, (2) whether the second component of the film was a polyolefin, (3) whether thick moulding compound (TMC) was the equivalent of the sheet moulding compound (SMC) claimed and (4) the validity of the patent. Unlike typical patent infringement actions which usually involve one or two technical disciplines, this case required considerable additional effort to organize and explain the different analytical techniques and experiments.1 The Trial hearing lasted 12 days; 71 documents were referred to as exhibits and 14 witnesses in all were called by both sides (10 of which were expert witnesses). A series of Inter Partes tests were also conducted by or on behalf of the Plaintiff in Morristown, New Jersey and on behalf of the Defendants in Kingston, Ontario and Wilmington, Delaware. Videotapes were made of some of these tests for possible tendering at trial as exhibits.
[4] On September 3, 1993, Madam Justice Reed of the Trial Division found the patent invalid on the grounds of ambiguity and insufficiency and made no findings as to infringement. By a decision rendered May 11, 1995, the Court of Appeal reversed the Trial Division, finding the patent was valid and that there was infringement.
[5] Upon being successful at trial following the Court of Appeal's decision, the Plaintiff brought a motion for increased costs, which motion was allowed by Mr. Justice Joyal pursuant to his Order of August 23, 1995. The Order is as follows:
| IT IS ORDERED THAT the taxing officer in taxing costs of the Plaintiff shall take account of the following directions: |
| 1. That the reasonable fees and disbursements be paid in relation to travel, accommodation and living expenses for the witnesses and counsel including the preparation of the witness statements or affidavits of: |
| William J. MacKnight |
| John Sibilia |
| Sean Curran, |
| for the preparation of their trial evidence and for the entire period of their attendance at trial pursuant to Tariff B 1(2)(a). |
| 2. That the reasonable fees [and] disbursements be paid in relation to travel, accommodation and living expenses for counsel and the representatives of the client to meet during the conduct of the litigation. |
| 3 That the reasonable fees and disbursements be paid in relation to the travel, accommodation and living expenses of counsel (excluding in-house counsel of AlliedSignal Inc.) and the expert witnesses for the inter partes tests conducted by or on behalf of the Plaintiff in Morristown, New Jersey and by or on behalf of the Defendants in Kingston, Ontario and Wilmington, Delaware. |
| 4. That reasonable fees and disbursements be paid in relation to the production of videotapes of the experiments performed by or on behalf of the Plaintiff in Morristown, New Jersey even though such videotapes were not used as exhibits at trial. |
| 5. That reasonable fees and disbursements be paid in relation to the production of videotapes of a production a line of nylon film and of a SMC operation, which tapes were used at trial and marked as exhibits. |
| 6. That the fees allowed for the following services be increased over the amont specified in Tariff B to the following amounts: |
| a. preparation and filing of pleadings to $2,000. [Tariff B 1(1)(a)]; |
| b. services prior to examinations for discovery to $2,000. [1(1)(b)]; |
| c. fees and expenses of two counsel for the Plaintiff be allowed on the discoveries of the parties in this action, including an order for increasing the fee per half day for senior counsel to $500. and junior counsel to $250. [1(1)(c)]; |
| d. fees for the preparation and appearance by counsel on all opposed interlocutory motions be increased per half day spent in Court to $250. for senior counsel [1(1)(d)] and $150. for junior counsel; |
| e. services for preparation for trial to $5,000. for each two days of actual trial [1(1)(h)]; |
| f. conduct of the trial, by increasing counsel fees to $1,500. per day and allowing junior counsel fees at $750. per day. |
7. That the reasonable costs of photocopying be allowed for copies of material provided to the Court, counsel, the court reporter and for copies of materials provided to the client and opposing counsel during the course of the litigation and for all other copying and reproduction necessary for the conduct of the litigation and for the preparation of trial exhibits.
[6] Tariff B as it existed before September 1, 1995 is applicable to the taxation at bar. The revised Plaintiff's Bill of Costs runs as follows [for sake of convenience, the amounts agreed to appear in parenthesis; where two amounts appear vis-à-vis one item, the higher amount is the amount which the Plaintiff has claimed and the lower amount (in italics) is what the Defendant DuPont submits is the proper amount to be awarded]:
FEES DISBURSEMENTS
1. For all services prior to ($2,000.00)
and including preparation
and filing of pleadings
A. Filing fee in Federal Court ($50.00)
B. Miscellaneous expenses ($83.78)
| 2. For all services prior to |
examination for discovery ($2,000.00)
A. Travel and living expenses for $4,068.37
counsel $2,093.43
B. Miscellaneous expenses $952.13
$768.89
3. For examination for
discovery
A. Yang on Dec. 5/90 and Bula on ($3,000.00)
Dec. 5-6/90 in Toronto
i. For transcript of examination ($605.00)
for discovery of Yang
ii. For transcript of examination ($645.00)
for discovery of Bula
iii. Travel and living expenses ($1,558.25)
for counsel
B. Degrassi on Dec. 12-13/90 and Combs ($4,500.00)
on Dec. 13-14/90 in Ottawa
i. For transcript of examination ($340.00)
for discovery of Degrassi in Ott.
ii. For transcript of examination ($423.50)
for discovery of Combs
iii. Travel and living expenses for ($342.55)
counsel
iv. Travel and living expenses of ($1,436.85)
Degrassi
v. Travel expenses of R. Combs $984.11
$923.08
C. Miscellaneous expenses for items A and B $82.66
$49.82
4. For preparation and appearance
on interlocutory motions
A. Motion in writing for a Rule 480 order $75.00
- July 13, 1990 $0.00
B. Motion in writing for a protective order $75.00
- August 2, 1990 $0.00
i. Miscellaneous expenses $12.71
$0.00
C. Contested motion to compel answers $250.00
- June 19, 1992 $0.00
i. Travel and living expenses $383.51
for counsel $0.00
ii. Miscellaneous $76.71
$0.00
D. Contested motion for production of $250.00
electronic data - Aug. 26/1992 $0.00
A. Travel and living expenses $45.29
for counsel $0.00
B. Miscellaneous $93.60
$0.00
C. Contested Motion ($250.00)
re: July 25/96 letter
5. For inter partes tests
A. For inter partes conducted by the
Plaintiff in Morristown, New Jersey
i. In June 1992
(a) travel and living $4,411.43
expenses for counsel $2,549.51
(b) travel and living expenses $5,638.90
of expert witnesses $3,123.19
ii. In April 1993
(a) travel and living expenses $2,623.63
for counsel $1,199.20
(b) travel and living expenses $5,777.06
of expert witnesses $3,261.00
iii. Fees of Film Group incurred in $125,593.67
connection with all pre-trial tests $0.00
B. For inter partes tests conducted by
the Defendants
i. In Kingston, Ontario in Jan. 1993
(a) travel and living expenses for $551.98
counsel $428.44
(b) travel and living expenses of $3,852.50
expert witnesses $2,609.69
ii. In Wilmington, Delaware in Feb. 1993
(a) travel and living expenses for $2,087.35
counsel $1,199.66
(b) travel and living expenses of $2,891.00
expert witnesses $2,049.97
iii. In Kingston, Ontario in May 1993
(a) travel and living expenses for ($262.82)
counsel
(b) travel and living expenses of $1,476.73
expert witnesses $1,173.56
6. For preparation of videotapes of ($17,127.11)
experiments performed by Plaintiff
and a production line nylon film and
a SMC operation
7. For travel, accommodation and living
expenses for counsel and representatives
of the client to meet during the conduct
of the litigation
A. Expenses for counsel $10,840.28
$9,280.34
B. Expenses for representatives $11,035.01
of the client $1,289.23
8. For preparation for a 12 day trial ($30,000.00)
in the Trial Division
A. Miscellaneous expenses $18,752.76
$11,086.38
B. Filing of unilateral application for ($75.00) ($100.00)
place and time of the trial
C. Preparation for and attendance at ($250.00)
pre-trial conference
D. Expenses and fees - Sacks $5,150.99
$0.00
E. Expenses and fees - MacKnight $22,116.82
$15,177.65
F. Expenses and fees - Hoffman $2,368.14
$0.00
9. For conduct of a trial ($27,000.00)
A. Travel and living expenses for $27,918.85
counsel during trial (including $14,879.43
accommodations for witnesses
B. Expenses and fees of witnesses $42,097.20
$22,112.49
C. Miscellaneous expenses ($16,893.67)
10. For services after judgment ($125.00)
A. Miscellaneous ($482.67)
GRAND TOTAL CLAIMED $412,084.59
$204,806.16
____________________________
I. PREFATORY ISSUES
-- The March 26, 1997 Taxation Hearing
[7] On March 26, 1997, the parties attended before me in Ottawa for the taxation of the Plaintiff"s Trial Bill of Costs pursuant to an Appointment dated February 13, 1997. Prior to that day, the Plaintiff had filed the following Affidavits:
(i) Affidavit of Todd Harrold, sworn January 24, 1997;
(ii) Affidavit of Kenneth Franck Machacek, sworn January 16, 1997; and
(iii) Affidavit of Donald Legal, sworn June 15, 1996.
| [8] There is a dispute between the parties as to whether or not the taxation hearing commenced on March 26, 1997. It is undisputed that Plaintiff's counsel requested an adjournment of the taxation of the Trial Bill and that DuPont's counsel objected to the adjournment request. I granted the adjournment sought by the Plaintiff and agreed with the Plaintiff"s counsel that the matter of the Trial Bill had been adjourned before it had commenced (vide below my Direction of April 21, 1997) and, eventually directing that the Plaintiff was free to initiate the taxation process once again. The adjournment had been sought by counsel for the Plaintiff in the wake of what transpired earlier in the day during the taxation of the Bill of Costs for the Appeal proceedings. Counsel for the Defendant DuPont had argued that the Affidavits in support of the Appeal Bill of Costs were insufficient to discharge the onus of the party whose Bill is being taxed to prove that the disbursements were necessarily incurred and were reasonable in these circumstances. Sensing that the same argument would be made during the taxation of the Trial Bill, counsel for the Plaintiff sought and obtained the above-mentioned adjournment in order to have an opportunity to submit more detailed Affidavits to which, it was presumed at the time, would be exhibited copies of actual invoices and other substantiating documents. In other words, this stratagem by counsel for AlliedSignal was intended to counter the lack of proof argument raised by counsel for DuPont who had objected vehemently to the adjournment and had asked that this issue of whether or not a party can submit fresh Affidavits, once the Appointment has been served, be referred to the Court for adjudication. Counsel for DuPont further demanded that the issue of the adjournment be also included in the reference to the Court. On April 21, 1997, I wrote to the parties and advised of the following: |
| I am writing in the wake of what transpired during and after the March 26, 1997 taxation hearing. |
| As you will recall, we had exhausted the Bill of Costs for the Appeal proceedings and were about to address the Trial Bill, when counsel for the Plaintiff sought an adjournment. Based on the oral submissions, I granted the adjournment and concluded, at the request of counsel for [DuPont] who had objected to the adjournment, that the unresolved question of adducing further evidence on disbursements would be referred to the Court. |
| I have since then received correspondence from both counsel on this matter. I granted the adjournment on the basis that the hearing for the Trial Bill had not yet begun and that it was entirely open to the party whose Bill is being taxed to withdraw the Bill at any time prior to the hearing. Counsel for the Plaintiff appears to agree with this position as evidenced by her letter of April 4 which states that: "We want our position to be made clear that we are of the view that the trial division taxation was adjourned before it was commenced." The decision to adjourn before the hearing commenced clearly puts the matter of a reference to the Court outside the parameters of subsection (3) of Tariff B [old Tariff], which reads: |
| 3. On taxation of costs, disbursements, other than payments to the Registry, shall be supported by acceptable evidence and, if an issue develops, the matter may be referred to the Court. |
| Having sought and obtained the adjournment, the onus is now upon counsel for the Plaintiff (whose Bill is being taxed) to seek a fresh Appointment from the Registry. Counsel faces two choices: reconvene the hearing either with or without new affidavits (if new affidavits are filed and served, counsel for the Defendants should be afforded an opportunity to cross-examine on the new affidavits). In any event, upon commencement, adjournments associated with the need to supplement evidence will not be granted. |
| If the Defendants have been put to additional costs because of the adjournment granted herein, then it will be for the Court, following an application by the Defendants for directions as to costs, to address the matter. Such matter would be beyond my authority as a Taxing Officer. |
Please govern yourselves accordingly.
[9] DuPont"s counsel sought a review of my decision by the Court. The Honourable Madame Justice Tremblay-Lamer held on October 1, 1997 that my directions were not a "final decision" and the Court was therefore without jurisdiction to dispose of the motion.2
[10] Subsequent to the March 26, 1997 adjournment, counsel for the Plaintiff filed a further Affidavit of Todd Harrold sworn June 13, 1997 and an Affidavit of Chantal Lapierre sworn October 31, 1997. In view of the dispute over the evidence, DuPont"s counsel requests that I identify specifically the evidence upon which I rely in arriving at my conclusions. This procedure will preserve, it is urged by counsel, DuPont's ability to make the arguments it intended to make before Madame Justice Tremblay-Lamer should either party desire to have my "final decision" in this matter reviewed.
[11] In conformity with and as a consequence of my "direction" of April 21, 1997, I intend to refer to and use all the evidence that is available to me, be it the Affidavits in support of the Bill of Costs, the Court file and records and the explanations given orally and submitted in writing by counsel, in order to determine the appropriateness of any particular claim. I will therefore resort to all the Affidavits filed in this matter, including the two Affidavits filed after the March 26, 1997 aborted taxation hearing. This taxation is an administrative process not to be confused with judicial or even quasi-judicial processes where strict adherence to rules prescribing the tendering of evidence must be observed. As requested however by counsel for DuPont, I will, whenever possible, indicate which evidence I have relied upon to make an award.
-- The July 25, 1996 "without prejudice" letter
[12] The Lapierre Affidavit introduces into evidence a copy of a letter marked "without prejudice" dated July 25, 1996 from which certain information has been deleted. This letter, explains counsel for the Defendants, was written by DuPont's counsel to settle certain of the items claimed in the Plaintiff's earlier draft Bill of Costs which it forwarded to DuPont's counsel on May 13, 1996.
[13] Counsel for DuPont argues that, to the extent the July 25, 1996 letter constituted an offer to settle, it was never accepted by the Plaintiff and was subsequently withdrawn. Therefore, counsel opines, the evidence contained in the Lapierre Affidavit is irrelevant to the issues on this taxation.
[14] This evidence is also irrelevant, counsel for DuPont claims, for the simple reason that the amounts indicated in DuPont's letter were based upon an earlier draft Bill of Costs (which has now been superseded by a revised Bill of Costs) and which costs were arrived at by the Defendant after a review of various documents made available to DuPont's counsel back in May 1996 when attending the premises of Plaintiff"s counsel. At the time of the review by DuPont's counsel, none of the original three Affidavits filed in support of this taxation had been served [although representations had been made to counsel for the Defendant that the Affidavits would be identical to the ones he had seen in a draft form]. Much of the evidence contained within the second Todd Harrold Affidavit (filed after the March 26, 1997 adjournment) did not appear in the documents which DuPont's counsel had reviewed in May 1996. Surely, counsel concludes, DuPont cannot be held to be bound to amounts to settle, in good faith, certain taxable items, the basis for which has been superseded by subsequently disclosed evidence, which materially affects the amounts to be awarded and which was never, reminds counsel, accepted by the Plaintiff in any event.
[15] For her part, counsel for the Plaintiff is of the opinion that the Lapierre Affidavit, to which is appended the July 25, 1996 "without prejudice" letter, should not be ignored by the Taxing Officer simply because it formed part of an offer to settle which was subsequently withdrawn.
[16] It is submitted by counsel for the Plaintiff that the only portion of the July 25, 1996 letter which is an offer to settle is the first page thereof where all amounts have been expurgated. On pages 2 to 4 of the said letter, it is argued by the Plaintiff that the Defendant"s counsel acknowledges the reasonableness of some of the fees and disbursements set out in the Bill of Costs. It is further argued by counsel that such an acknowledgement of the reasonableness of the fees and disbursements was not contingent on the offer to settle made by the Defendant.
[17] It seems to me that the impugned letter is a part of the public domain, as was held earlier by Madam Justice Tremblay-Lamer, and must therefore be looked at and evaluated in the same measure as any other piece of evidence. It must be remembered that counsel for the Defendant had already inspected and seen, back in May 1996 when he attended the premises of Plaintiff"s counsel, most of the supporting documentation to the first Bill of Costs. What precipitated the "friendly" feud in this taxation is the fact that counsel for the Plaintiff did not append this supposedly supporting documentation to the revised Bill of Costs at the time an Appointment was requested for the taxation. I have already indicated that that omission is not fatal to the Plaintiff"s case. That being said, it remains to be seen however what weight should be given to the impugned statement by Defendant"s counsel to the effect that, by the without prejudice letter, he acknowledges, with some stated exceptions of course, the reasonableness of the fees and disbursements as sought in the initial Bill.
[18] As an independent decision maker with respect to the assessment of these costs, I must above all draw my own conclusions regarding reasonableness and necessity. Of course, I can take notice of the without prejudice letter which, as we have seen, has lost its character of privileged information in any event. In arriving at my own conclusions as to the reasonableness of each of the items claimed, I am inclined therefore to give some weight or consideration to the affirmation contained in the letter. I say some weight or consideration because, and without too much speculation, the letter was likely based on the information and supporting documentation available to counsel for the Defendant back in May 1996. It is therefore certainly conceivable that, with more information, counsel"s view of the costs might very well have been different. The scope of such letter and the averment it contains on the reasonableness of the fees and disbursements ought then, in all logical sequence, be limited to the amounts that figured in the original Bill. I have thus decided to use the letter only as reinforcement of any other available piece of evidence for the expenses claimed and not by and of itself to prove the reasonableness of or necessity for any particular item.
[19] I would add that I am urged by counsel for the Plaintiff to keep in mind that the without prejudice letter was sent by counsel for the Defendant with respect to the original Bill of Costs -- attached to the Donald Legal Affidavit of February 5, 1997 -- and that this Bill differed from the later Bill -- attached to the Todd Harrold Affidavit -- in that the amounts in the Legal Bill of Costs were higher because no adjustments had been made for photocopying costs and for the fees of the Film Group which resulted in a reduction of the total amount claimed by roughly $200,000. Counsel for the Plaintiff felt that no prejudice had been caused to the Defendant by the adjustments in that they did not materially affect, or colour, the general statement on reasonableness contained in the letter. I disagree with counsel for the Plaintiff. This argument is purely speculative. Nothing could have prevented, for example, counsel for the Defendant, rekindled with these new downward figures which impacted significantly on the overall dollars being sought, to go back to its client and to urge acceptance of a settlement under those conditions. Hence my decision to rely on the without prejudice letter as a secondary element of proof only.
[20] Even if I am wrong in my analysis, the weight to be given to the disputed letter must in any event be commensurate with the context under which, and for which, it was sent, which was very early in the process after receipt of a preliminary Bill and following a visit by Defendant"s counsel to review draft versions of the supporting affidavits and any supporting invoices and receipts available at the time. I simply am not prepared to equate the scope of the without prejudice letter with a consent. It is at least arguable that I might be bound by a consent, unless clearly fraud or collusion is demonstrated, but certainly I am not bound by a general affirmation on the reasonableness of the fees and disbursements made by one of the counsel, whatever the context in which it was made. Reasonableness in the context of an assessment of costs is the domain of the Taxing Officer. It must be appreciated from that perspective, not from the dictates of the parties.
-- The Order of Mr. Justice Wetston dated November 3, 1997
[21] The adjournment of the Trial Division taxation hearing and the consequences flowing from that adjournment were the subject of two motions by counsel for DuPont. The first motion dated October 1, 1997 has been discussed earlier. The second motion sought an order directing the Taxing Officer to consider awarding costs to DuPont (i.e. the responding party in the taxation of costs hearing) for the aborted hearing of March 26 and for any ensuing hearing regarding the trial proceedings (which hearing in fact took place on November 21).
[22] It is trite law that a Taxing Officer has no jurisdiction to award such costs without an order or direction from the Court having that effect [It was brought to my attention however that such authority will be given to Assessment Officers in the proposed Federal Court Rules, 1998 published in Part II, Vol. 132, No. 4 of the February 5, 1998 Canada Gazette as SOR/98-106 (see Rule 408(3) affecting assessments after April 25, 1998].
| [23] On November 3, 1997, Mr. Justice Wetston ordered as follows: |
"That [the Taxing Officer] may award costs for the preparation, travel and attendance upon the taxation hearing with respect to the trial of this action, to Allied Signal Inc. and DuPont in respect to such attendance in Ottawa by counsel for that purpose, as is appropriate, should [the Taxing Officer] decide, in his discretion, that costs be so awarded."
[24] The parties have agreed that the best way to deal with the matter of costs for the preparation, travel and attendance at the taxation hearings is in separate bills of costs to be submitted following assessment of the present Costs. I will therefore turn now to the disputed items of the Bill at bar:
II. BILL OF COSTS - DISPUTED ITEMS
| 2. For all services prior to |
examination for discovery
A. Travel and living expenses for counsel (Schedule 2.1) $4,068.37
$2,093.43
[25] Paragraph 2 of the Joyal J. Order for increased costs provides:
That the reasonable fees disbursements be paid in relation to travel, accommodation and living expenses for counsel and the representatives of the client to meet during the conduct of the litigation.
[26] The disbursements covered in Schedule 2.1 are, according to counsel for the Plaintiff, for meetings with the client between December 1989 and December 1990. A claim is made for six meetings, three of which were out of town. During that period of time, counsel argues, the following steps occurred in the litigation: namely the consideration of the Statement of Defence, the preparation and filing of a Reply and Defence to Counterclaim, the preparation of an Affidavit of documents and the preparation of a representative of the client and of one of the inventors, Mr. Degrassi, for examination for discovery.
[27] It is submitted by counsel for the Plaintiff that, under the circumstances, the Plaintiff is entitled to recover for the expenses of both counsel at all of the said meetings since it has been shown that the Order of Mr. Justice Joyal contains no limitation as to the number of counsel, the costs were incurred in the course of litigation and the costs were reasonable. In support, counsel refers to the case of Kristan Seafoods International Inc. v. Tom Siddon, Minister of Fisheries and Oceans3 wherein the Taxing Officer allowed the disbursements for two trips between Halifax and Ottawa for meetings with the Minister of Fisheries and other justice officials in order to prepare a defence, in an action which did not proceed to trial, and on the grounds that the disbursements were reasonably incurred. Similarly, in Anheuser-Busch Incorporated v. Carling O"Keefe Breweries of Canada Limited,4 the Taxing Officer allowed the costs of a trip by counsel for the Appellant to New York to meet with in-house counsel to discuss the launching of an appeal on the ground that it was (page 4) "a reasonable step for the parties to take in deciding whether or not to launch an appeal."
[28] Counsel for the Defendant objects to the above disbursements set out in Schedule 2.1 for two reasons, namely that the Plaintiff should not be entitled to recover for the travelling of more than one counsel and that disbursements pertaining to the meals of Roger Criss, the Plaintiff"s in-house patent counsel, are not recoverable in view of the Beloit Canada Ltée v. Valmet-Dominion Inc.5 decision.
[29] The first ground of attack by counsel for the Defendant questions the necessity for the presence of two counsel at the six meetings alluded to above. Counsel for the Defendant argues that there is simply no evidence before me on the necessity for both lawyers to be present at these meetings and refers to the case of Carling O"Keefe Breweries of Canada Ltd. v. Anheuser-Busch Inc., et al.6, as cited by J.F.D. Cousineau, Taxing Officer, in Nekoosa Packaging Corporation et al. v. AMCA International Ltd. et al.7, wherein Taxing Officer Clegg held at pages 10 and 11 of the Nekoosa decision:
| "That counsel and client should have some face to face contact during the course of a court action is reasonable, however, for senior counsel and an associate counsel both to attend that meeting, without any evidence in the affidavit of disbursements for the necessity of the presence of both , is in my opinion not a cost that the unsuccessful party to an action should be expected to bear." |
(Defendant"s emphasis)
[30] Counsel for the Defendant concludes on his first ground of attack by arguing that the Joyal J. Order for increased costs does not permit recovery for two counsel for these services. The Order in question (paragraph 2) permits recovery for travel, accommodation and living expenses "for counsel" to meet with "representatives of the client" during the conduct of the litigation. A proper interpretation of that Order, counsel suggests, is that the reasonable expenses of only one counsel are recoverable. If His Lordship had intended that costs for two counsel be assessed, he would have clearly directed so, as he did for example at paragraphs 6(c), (d) and (f) of his Order which expressly permits the recovery of fees and disbursements for two counsel or senior and junior counsel in respect to certain services.
| [31] The second ground of objection to the above claim for "travel and living expenses for counsel" pertains specifically to a meal expense incurred by Roger Criss, the Plaintiff"s in-house patent counsel. The Defendant argues that the March 5, 1990 meal with Roger Criss should not be recoverable at all given the decision in Beloit (supra note 5) where the Court of Appeal stated the following in respect of costs of in-house patent counsel, who was represented, in that case, to be "essential to instruct counsel and assist in the preparation for and conduct of the appeals" (at page 92): |
"...he is very much in the shoes of his employer. I am aware of no authority for the proposition that a party and party award of costs embraces the travelling and living expenses of the successful party in instructing counsel and attending the hearing, however necessarily they have been incurred".
[32] Further, counsel for the Defendant submits, the language of the Joyal J. Order cannot be stretched to include in-house patent counsel within the meaning of "counsel" or "representatives of the client". If such costs were to be recovered, the Order would have clearly set out that fact, given the decision in Beloit (supra note 5) some four years prior to the Joyal J. Order. "In-house counsel" is referred to in paragraph 3 of the Order. Clearly, therefore, in-house counsel is not included within the meaning of the phrase "representatives of the client". The obvious meaning given to "counsel" in paragraph 3 of the Joyal J. Order is that it is intended to mean the expenses of one counsel, who cannot be in-house counsel for the Plaintiff.
[33] After reading Mr. Justice Joyal"s Order for increased costs, my initial reaction was that the word "counsel" includes the two counsel for the Plaintiff. I am reminded by Mr. Justice Cattanach in the case of Spur Oil Ltd. v. The Queen8 at page 250 that the word "counsel" is both plural and singular. The context in which the word is used, moreover, will hopefully determine whether or not it was meant in the present circumstances to be plural or singular.
[34] The Order of Mr. Justice Joyal contains numerous references to the word "counsel", at times standing alone and at other times preceded or followed by some modifier. For examples of contexts where is it used alone, I refer to the reasonable fees and disbursements paid to counsel in relation to travel, accommodation and living expenses to prepare the statements and affidavits of the witnesses and for their attendance at trial (contained in paragraph 1 of the Order); the sums to be paid to counsel for travel, accommodation and living expenses to meet with the client during the litigation (paragraph 2) and the amounts to be paid to counsel for the inter partes tests conducted by both sides (paragraph 3). It is also referred to in the plural form in the same Order in the context of the fees and expenses of two counsel on discoveries (paragraph 6(c)); in the context of increased fees for senior and junior counsel on all opposed interlocutory motions (paragraph 6(d); and in the context of paragraph 6(f) wherein increases for counsel and junior counsel are permitted for the conduct of the trial.
[35] Thus, in the present instance at least, the overall context remains unclear. Counsel for the Defendant argues that Mr. Justice Joyal used the singular, and at other times the plural form, with a specific purpose in mind and that it would have been easy for him to indicate the number of counsel (thus the plural form) if that would have been his intention under certain paragraphs of his Order. Attractive as that argument may be, it is not decisive here in my view. Where references are made to what appears to be the word "counsel" in the singular form (and that is only a supposition), one must remember that the same word is also capable of the plural form in the same paragraphs and context. There are no other words or qualifiers or indicia in the sentence that would make it inexorably singular or plural. It therefore becomes a judgment call on my part.
[36] It is my view that the context should be broadened and looked at from the whole of the litigation. This was indeed a complex case where the issues of fact and law and the volume of work (as demonstrated by the Defendant"s very own Affiant Scott MacKendrick) were of such importance that I am of the opinion it was reasonable for two counsel to meet with the client. I am also comforted by the fact that the Defendant"s own application for increased costs, which led to the Order of Madame Justice Reed, appears to be inconsistent with the views expressed by counsel at the taxation. The Defendant had three counsel to defend its case. It is at least arguable then that the increase for fees and disbursements obtained by the Defendant after Trial would have in all likelihood included more than one counsel. Certainly, the language of that Order is identical to the present one and leaves the door open for such a conclusion.
[37] Finally on this issue, I am inclined to lend a sympathetic ear to Plaintiff"s argument to the effect that the Tariff (at least the old Tariff), which has always made provisions for one counsel, requires a Court direction to cover two (or more) counsel. Paragraph 2 of the Order of Mr. Justice Joyal addressed an item that is not in the Tariff and must therefore apply to more than one counsel. Thus, I accept the claim for two counsel, and in doing so, have reviewed the supporting documentation appended in the second Todd Harrold Affidavit filed June 17, 1997.
[38] As for Defendant"s second objection, I agree with counsel for the Plaintiff that the Order of Joyal J. specifically provides in paragraph 2 that the Plaintiff is entitled to reasonable fees and disbursements of representatives of the client. In note as well that there is nothing in the Order that says the representative of the client cannot be in-house counsel for AlliedSignal, although Mr. Justice Joyal specifically excluded in-house counsel in paragraph 3 of his Order when allowing fees and expenses for counsel and the expert witnesses during the conduct of the inter partes tests. The amounts claimed are allowed as detailed in the Donald Legal Affidavit of February 5, 1997 and the first Todd Harrold Affidavit also of February 5, 1997.
| 2. For all services prior to |
examination for discovery
B. Miscellaneous expenses (Schedule 2.2) $952.13
$768.89
[39] Grouped under this heading are six (6) items of expenses for all services prior to examination for discovery. They are: courier charges, court charges (photocopies), long distance telephone, patent copies, photocopy charges and telecopier charges. The only dispute under this item, according to counsel for the Plaintiff, is Defendant"s suggestion that the photocopying charges should be reduced by half.
[40] As indicated in the Harrold Affidavits filed in support of this taxation, the costs of photocopying were, writes counsel, $0.08 per page. Furthermore, photocopying costs are posted directly to the file whenever a photocopy is made. The charges reflected in Schedule 2.2 are those for the period of November 1989 to December 1990. In a case of this magnitude and complexity, writes counsel, it is impossible to reconstruct eight (8) years after the fact exactly what was photocopied. However, as the disbursements are posted directly to the file, it is submitted that the photocopying was necessary and essential for the conduct of the action and was incurred as a result thereof.
[41] The photocopying costs are, according to counsel for the Plaintiff, for approximately 4,000 copies. During the time period in question, documents being copied would have included the prior art cited in the Statement of Defence, namely twelve (12) patents and the documents found in both the Plaintiff"s and in the Defendant"s affidavit of documents. Counsel adds that, contrary to what was asserted by Defendant"s counsel, each party made copies for opposing counsel and did not charge for them. The Plaintiff"s affidavit of documents contained seventy (70) multi-page documents while the Defendant"s affidavit of documents contained forty-one (41) multi-page documents. This can be ascertained from the affidavits of documents and the Statement of Defence on file with the Court. Counsel concludes by submitting that the photocopy expenses listed in Schedule 2.2 ought to be recoverable in their totality.
[42] Counsel for the Defendant objects and argues that no effort has been made in the supporting affidavits to explain the reasonableness or necessity of the claimed photocopy charges. All that is said by the Plaintiff, in the supportive affidavits and written submissions, is that these charges were posted to the file. The case law in respect to photocopies is, according to counsel for the Defendant, that:
| "It is therefore necessary for the party claiming photocopying disbursements to give satisfactory evidence to the Taxing Officer that the photocopying disbursement being claimed was essential for the conduct of the action."9 |
(emphasis in original quote)
[43] Counsel for the Defendant concludes by stating that there is no evidence (as there should be -- see the Windsurfing10 case --) as to what was photocopied and its necessity. Given the lack of evidence, it is reasonable to discount the photocopying charges by 50%, according to counsel for the defendant, leaving $768.89 as the amount recoverable under this item.
[44] I understand that the difference here the Plaintiff is seeking is roughly $200 more than the Defendant is willing to pay. In a total Bill of Costs that could conceivably reach the half million dollars mark it is a relatively small sum, nevertheless it is an important issue which I believe warrants a few words devoted to the matter.
[45] The evidence proffered by counsel for the Plaintiff consists of a statement contained in two affidavits. The first is in the Affidavit of Todd Harrold, sworn February 5, 1997, to which is attached a list of schedules evincing the expenses incurred for each item. The next reference is in paragraph 8 of the second Todd Harrold Affidavit of June 17 where it is affirmed that "With respect to Schedule 2.2, as explained above, charges thereon were directly posted to the file." Of course this evidence is supplemented by the above explanations for the expenses given by counsel for the Plaintiff.
[46] The evidence appears meagre indeed, but not fatal, I believe, to Plaintiff"s case. A quick calculation reveals that roughly 4,656 [($366.48 + $6.) / $0.08] copies were necessary for all services prior to the examination for discovery. In its brief, counsel for the Plaintiff is claiming for 4,000 copies only. For the reasons that follow, I have no hesitation in accepting, in the case at bar, this figure of 4,000 copies as being reasonable and necessary in the circumstances. The final amount should then be 4,000 copies multiplied by $0.08, for a total of $320. The final figure for Schedule 2.2 should thus be reduced to $905.65. Before closing this matter, however, I will address the issue of sufficiency of the evidence for an item such as photocopies.
| [47] The above-referred statements contained in the two affidavits are scant; akin to the kind of statement that was precisely rejected by my colleague G.M. Smith, Taxing Officer in the case of F-C Research Institute et al. v. The Queen et al.11 This decision came after the oft-quoted case of Diversified (supra note 9) wherein Mr. Justice Teitelbaum had taxed at zero dollars a claim for photocopying charges in the wake of what His Lordship termed as lack of any evidence proffered by counsel on "any photocopy made being essential for the conduct of the action". Shortly after the Diversified decision, my other colleague, C.E. Stinson, came to grips with the same issue in United Terminals Limited v. The Minister of National Revenue et al.12 In a recent taxation, I had occasion to discuss in greater detail all three cases13. Here is what I had to say, which explains, I hope, the rationale that leads me to assessing the present photocopy charges as I have. |
| When I first dealt with this issue of in-house photocopies in the Diversified case, I felt I had the necessary discretion to rely on, in proper circumstances such as those exhibited before me at the time, my experience and knowledge in making an award given the paucity of the evidence on the quantity and reasonableness of the photocopy charges claimed. I proceed thus, based on my experience as Taxing Officer and my knowledge of the realities of private practice, to accept in the Diversified case an "arbitrarily" reduced amount of photocopies in view of the absence of proof for all the photocopies made. Without factual evidence, I also accepted, based once more on my experience and knowledge, an applicable rate of $0.25 per page as being reasonable in the circumstances. This rate was and is still commonly awarded by other Taxing Officers faced with comparable evidence or lack of. |
| An appeal was taken to the Trial Division of my decision in Diversified wherein Mr. Justice Teitelbaum determined that I had erred in law in allowing an "arbitrarily" reduced amount of photocopies without any evidence or substantiation. The Honourable Mr. Justice Teitelbaum also commented on the rate of $0.25 per page being sought. Here is an excerpt from his decision: |
| It is therefore necessary for the party claiming photocopying disbursements to give satisfactory evidence to the Taxing Officer that the photocopying disbursement being claimed was essential for the conduct of the action. |
| In the case before me, I do not have to determine the meaning of "as having been essential for the conduct of the action" as no evidence was submitted to the Taxing Officer as to any photocopy made being "essential for the conduct of the action". The only evidence submitted by the Plaintiffs with regard to photocopies is found in paragraph 23 of the affidavit of Christopher Pibus dated June 11, 1990. |
| -- In respect of photocopying charges, I am informed and verily believe that the computerized system utilized by our office invoices at a rate of 25 cents per photocopied page.-- |
| Therefore, the Taxing Officer erred in law in allowing the sum of $4,635.43. |
| I would also comment with regard to the charge of $0.25 per page of photocopied material. |
| With respect, I cannot agree with the reasoning of the Taxing Officer. The item of photocopies is an allowable disbursement only if it is essential to the conduct of the action. Therefore, this is intended to reimburse a party for the actual out-of-pocket cost of the photocopy. The $0.25 charge by the office of Plaintiff"s counsel is an arbitrary charge and does not reflect the actual cost of the photocopy equipment. A law office is not in the business of making a profit on its photocopy equipment. It must charge the actual cost and the party claiming such disbursements has the burden to satisfy the Taxing Officer as to the actual cost of the essential photocopies. |
| In June of 1991, my colleague C. Stinson, Taxing Officer, had for the first time occasion to tackle this issue in the wake of the Diversified decision of Teitelbaum J. In the United Terminals Ltd. case, Stinson, Taxing Officer, distinguished the Diversified decision by bringing into light the apparent duality of approach developed by His Lordship. According to Stinson, Taxing Officer, Mr. Justice Teitelbaum held, on the one hand, that I had erred in law in allowing an arbitrary amount of photocopies without hard evidence justifying the necessity and the reasonableness of the photocopies that were made and, on the other hand, decided that I was justified in allowing an amount for travel expenses being claimed without any substantiation and on a purely discretionary basis. Seizing this apparent inconsistency in the treatment that was given to comparable disbursements, Stinson, Taxing Officer, felt that he was therefore authorized to continue to exercise his discretion in dealing with disbursements whose proof is absent or deficient somewhat. |
| As for the comments of Mr. Justice Teitelbaum pertaining to the rate of $0.25 that I allowed per photocopies, Stinson, Taxing Officer, considered that they were purely obiter dicta, and proceeded to allow that same rate of $0.25 per page based on what he coined as being the "commercial realities of the practice of law". A closer look at the United Terminals case reveals that my colleague had obviously before him incontrovertible evidence that the in-house photocopies made were essential and felt that, if he was to apply strictly the rationale of Teitelbaum J. and tax at zero dollars for lack of hard evidence on the rate sought, it would frustrate the legitimate claim of a successful litigant to be indemnified (albeit partially) for its costs, including reasonable disbursements and would furthermore not be in keeping with the commercial realities of modern law pra[c]tice. |
| More recently, my other colleague G. Smith, Taxing Officer, in the F-C Research Institute Ltd. case, discussed and compared both the Diversified and United Terminals cases and held, based on the factual background and evidence before him, that: |
| "In my opinion, the simple delineation of expenditures generally escribed in a Bill and supported only by a scant statement that they were reasonable and necessary fails to provide sufficient information upon which a taxing officer can discharge the responsibility of being satisfied that the costs claimed were essential to the conduct of the proceedings, that they were prudently incurred, or that the quantity or rate applied, as the case may be, was reasonable in the circumstances. In arriving at that conclusion, I am guided as well by the principles established by this Court in [...] Diversified Products Corporation v. Tye-Sil Corporation Limited [...] from which decision I derive that [...] disbursements must be supported by evidence which satisfactorily demonstrates that the costs claimed meet the twofold test of reasonableness and necessity." |
| At first blush, it would appear that Smith, Taxing Officer, is adopting a more stringent approach to the assessing of disbursements, but is he going as far as requiring in each case absolute and detailed proof of the kind suggested by Mr. Justice Teitelbaum in Diversified? Without looking exegetically at the reasoning of Smith, Taxing Officer, I think not. In fact from a broader perspective, there is a common thread running through both the F-C Research Institute and United Terminals decision. It is the requirement that sufficient or reasonable proof be lead to satisfy the Taxing Officer that expenses were incurred. It all becomes then a question of degree of evidence. A [bald] statement of the kind singled out by Mr. Justice Teitelbaum in the Diversified case and also found in the F-C Research Institute case, would not be sufficient to satisfy a Taxing Officer. Likewise, absolute and detailed evidence is not an indispensable requirement for an award to be made. As my colleague Stinson, Taxing Officer, said on numerous occasions the more thorough and complete the evidence is, the less the result will be bound up into the Taxing Officer"s discretion, but that does not mean a Taxing Officer is refrained from resorting to his discretion to make an award in the absence of cogent evidence. |
[48] As expressed by counsel for the Plaintiff in its brief, the bulk of the photocopying consisted mainly of the documents listed in the Affidavits of documents filed by both sides and covered the period of November 1989 to December 1990. One hundred and eleven multi-pages documents in all were photocopied, for which, it is contended, more than one copy was deemed necessary in certain circumstances. In fact, some of the documents were reproduced in four and sometimes five copies for the benefit of counsel for both sides and the respective client or its representative. Be that as it may however, I must confess that the evidence herein lacks detail and completeness, the type of detail and completeness which could easily be referred to and relied on at a mere glance. The computer logs and schedules that are more and more frequently attached to the supporting affidavits could indeed be made more detailed and comprehensive as to include, for example, such convenient information as to title of the documents photocopied, the number of pages photocopied and the number of copies produced and their destination. Not only would this information make the assessment process much easier for the Taxing Officer, but it would also enable the Taxing Officer to arrive at an assessment with greater accuracy and certainty to the effect that a successful litigant would be indemnified for an otherwise perfectly legitimate disbursement.14
[49] In reasons issued on November 4, 1997 in Faulding (Canada) Inc. v. Pharmacia S.P.A.15, the Court (McKeown J.) has adopted, it would appear, the Diversified test with respect to an allowable in-house disbursement such as photocopies. Nothing however in the Faulding (Canada) Inc. case (supra note 15), nor in Diversified for that matter, suggests that what is required to meet the test is absolute and beyond doubt evidence on the necessity and reasonableness of the claim. The party whose Bill is being taxed must instead satisfy me on balance of the necessity and reasonableness of the expense, which was the case here.
[50] One last remark on this subject, I note that counsel for the Defendant is suggesting that an arbitrary reduction of 50% be effected for this item. A simple response to this is to say that this is the kind of arbitrary reduction that was specifically rejected by Mr. Justice Teitelbaum in the Diversified case? Further, why reduce the cost by 50% and not by 25% or 75%. Although the burden of proof rests with the Plaintiff on these matters as with any other disbursements, I have not been directed by counsel for the Defendant to any superfluous photocopies that were actually made in the period in question. Although the evidence could have been more detailed, as explained earlier, I nevertheless still had before me, after a perusal of the file and explanations from Plaintiff"s counsel, incontrovertible evidence that at least 4,000 copies were necessary and are reasonable in the within circumstances.
| 3. For examination for discovery |
B.(v) Travel expenses of Richard Combs $984.11
(Schedule 3.4) $923.08
[51] As coined by counsel for the Plaintiff, the only dispute between the parties as to the disbursements in this particular schedule relate to the meal expenses classified by Mr. Combs as "personal" and the meal portion of Roger Criss whom counsel for the Defendant argues should not be recoverable on the basis of the Beloit case (supra note 5).
[52] Mr. Combs was examined in Ottawa in December of 1990 as to the history of the Plaintiff corporation. His expense report for the 2 days spent in Ottawa for his examination shows various amounts for "personal" meals alongside an amount for "business" meals. His report card appears to clearly distinguish between the two types of meals. The argument of counsel for the Defendant is that the "personal" meals portion should be taxed off. On the other hand, counsel for the Plaintiff argues that nothing turns on this apparent distinction, since the classification of the meals for personal or business purposes relates to internal policy of the Plaintiff corporation and should have no impact on whether such costs are recoverable for the purposes of the present taxation.
[53] I have come to the conclusion, not without some hesitations however, to tax off the "personal" meals ($25.), simply because no valid explanation was proffered for the distinction operated in the expense report. I note that the same distinction was made by Mr. Degrassi in his report on expenses (exhibit C-2), but that the issue did not come to the fore front since both sides have agreed on a quantum for Mr. Degrassi"s expenses before the taxation.
[54] As for the second issue under this item pertaining to the meal portion incurred by Roger Criss (in-house counsel for the Plaintiff), I agree with counsel for the Plaintiff that nothing prevents the recovery of the meals for in-house counsel of AlliedSignal acting as representative of the said company under paragraph 2 of the Order of Mr. Justice Joyal. In making an award for Mr. Combs and Mr. Criss, I have thus relied on the evidence contained in the second Todd Harrold Affidavit of June 1997. The total award for this item comes to $959.41.
| 3. For examination for discovery |
C. Miscellaneous expenses for items A & B $82.66
(Schedule 3.5) $49.82
[55] The only issue between the parties here is again as to the photocopying charges. In Schedule 3.5, the charge is for 821 photocopies. Counsel for the Plaintiff argues that these charges were incurred during the course of the examination for discovery where copies of documents would have necessarily have been made. It is submitted that the charges were clearly incurred during the course of the litigation and that the charge for such photocopying is reasonable and the amount should thus be recoverable.
[56] Counsel for the Defendant contended that the only evidence as to reasonableness and necessity is contained in the second Todd Harrold Affidavit wherein the affiant states that these charges were directly posted to the file. This is clearly not enough, adds counsel, before concluding by suggesting a 50% reduction of the claimed photocopying charges.
[57] What distinguishes these photocopying charges from those discussed above under Item 2B is the absence of a reasonable explanation as to what was photocopied and to whom the copies were intended. The evidence here falls well short of the evidence tendered under Item 2B above and without further explanations I cannot allow, based on the Diversified test16 the disbursement. The evidence offered here would not even satisfy the most liberal of approaches, the kind I have adopted in the Melo"s case (supra note 13) which is discussed in great details under Item 2B. For the above reasons, the amount allowed for Item 3C is $16.98.
| 4. For preparation and appearance on |
interlocutory motions
A. Motion in writing for a Rule 480 order $75.00
- July 13, 1987 (sic) $ 0.00
[58] Counsel for the Plaintiff relies first on the Joyal J. Order and second on the case of Teledyne Industries Inc. et al. v. Lido Industrial Products Ltd.17 for claiming an amount under this item. Mr. Justice Dubé wrote that costs shall follow the event unless otherwise ordered and quoted Chief Justice Jackett in Crabbe v. The Honourable Donald C. Jamieson18 who had previously enunciated the rule.
[59] Counsel for the Defendant objects to this claim on the ground that the interlocutory orders are silent as to the costs of the motions and that the Order of Joyal J. can only be relied on to increase the amount of costs which were already awarded. Counsel also relies on Orkin19 who stated that (at page 1-14):
"...if judgment is given for a party without any Order being made as to costs, no costs can be assessed by either party so that when a matter is disposed of on a motion or trial with no mention of costs, it is as though the Judge had said that he saw fit to make no Order as to costs."
[60] Counsel for the Defendant finally concluded that this rationale has been followed by other Taxing Officers. He refers me in particular to the cases of Anglo-Marine Inc. v. 2963-5976 Quebec Inc.20, Penthouse International Ltd. v. 163564 Canada Inc.21 and Gucci Guccio S.p.a. v. Meubles Renel Inc. et al.22.
| [61] The Order of Joyal J. provides in paragraph 6(d) that:[...] the fees allowed for the following services be increased over the amount specified in Tariff B to the following amounts: |
d. fees for the preparation and appearance by counsel on all opposed interlocutory motions be increased per half day spent in Court to $250.00 for senior counsel [1(1)(d)] and $150.00 for junior counsel.
[62] Although the above reference to paragraph 6(d) of the Joyal J. Order is helpful, it is not determinative of the issue since the motion herein was on "consent" not "opposed". The rules applicable to this taxation are those that were in force at the inception of this action, i.e. 1989. As suggested by counsel for the Plaintiff and as confirmed by the Teledyne case (supra note 15), there was such a rule at the time that did provide that costs follow the event. For this reason, I allow the amount of $75 as claimed.
| 4. For preparation and appearance on |
interlocutory motions
B. Motion in writing for a protective order $75.00
- August 2, 1990 $ 0.00
[63] Also a consent order and the amount is allowed as claimed -- see Item 4(A) above.
| 4. For preparation and appearance on |
interlocutory motions
B. Motion in writing for a protective order
- August 2, 1990
i. Miscellaneous (Schedule 4.1) $12.71
$0.00
C. Contested motion to compel answers $250.00
- June 19,1992 $0.00
i. Travel and living expenses for $383.51
counsel (Schedule 4.2) $0.00
ii. Miscellaneous (Schedule 4.3) $76.71
$0.00
D. Contested motion for production of $250.00
electronic data - August 26, 1992 $0.00
a. Travel and living expenses $45.29
for counsel (Schedule 4.4) $0.00
b. Miscellaneous (Schedule 4.5) $93.60
$0.00
[64] The fees portion of the above items are allowed as claimed as they fall within the purview of the Order of Mr. Justice Joyal for increased costs [paragraph 6(d) reproduced above] and are reasonable in the circumstances.
[65] As for the disbursements portion, they are also allowed as being reasonable and necessary for the conduct of this litigation.
| 5. For inter partes tests |
A. For inter partes tests conducted by the
Plaintiff in Morristown, New Jersey
i. In June 1992
(a) Travel and living expenses $4,411.43
for counsel (Schedule 5.1) $2,549.51
[66] As explained by counsel for the Plaintiff, pre-trial tests were held during the course of this litigation by both the Plaintiff and the Defendant. The Plaintiff held pre-trial tests in Morristown, New Jersey in June 1992 and April 1993. The Defendant held pre-trial tests in Kingston, Ontario in January 1993, in Wilmington, Delaware in February 1993 and in Kingston, Ontario in May 1993. The Order of Mr. Justice Joyal provides at paragraph 3 as follows:3. That the reasonable fees and disbursements be paid in relation to the travel, accommodation and living expenses of counsel (excluding in-house counsel of AlliedSignal Inc.) and the expert witnesses for the inter partes tests conducted by or on behalf of the Plaintiff in Morristown, New Jersey and by or on behalf of the Defendant in Kingston, Ontario and Wilmington, Delaware.
[67] Again, as taken from counsel for the Plaintiff"s brief, the inter partes tests which were carried out were complex and numerous. They were essential for the conduct of the trial and both counsel and expert witnesses were in attendance and participated in their development. The pre-trial tests were the subject-matter of the expert affidavits at trial and the decisions of both the Trial Division and the Court of Appeal turned on the said pre-trial tests. By way of example, writes counsel, the pre-trial tests dealing with the issue of crystallinity are the subject of extensive discussion in the decision of Madame Justice Reed at page 33 of the unreported version. Similarly, the pre-trial tests are discussed in relation to the issue of the polyolefin at page 24 and following of the same unreported decision. The Court of Appeal also relied on the pre-trial tests to find infringement and counsel refers me to the Court Appeal decision attached to her submissions.
[68] Counsel has succeeded in convincing me that the pre-trial tests were essential to the litigation and that these tests fall squarely within the purview of the Order of Joyal J. What remains to be determined is the reasonableness of the amounts claimed.
[69] Counsel for the Plaintiff argues that under this item (a) no limit as to the number of counsel which could attend the tests has been imposed by Mr. Justice Joyal and the travel and living expenses for two counsel (Mr. MacKlin and herself) should be allowed. Counsel is of the view that, had Mr. Justice Joyal wished to limit the number of counsel, His Lordship would have added limiting words to that effect, i.e. the Order would have stated for one counsel. As used in paragraph 3 of his Order, and discussed earlier in these Reasons, the word counsel can embrace more than one person.
[70] Of course counsel for the Defendant argues the contrary, that the Joyal J. Order does not authorize two counsel, only one.
[71] For the reasons enunciated earlier, I hold that the travel and living expenses of two counsel were both reasonable and necessary in these proceedings and that the wording of the Order of Joyal J. is not sufficiently restrictive as would support such an interpretation for only one counsel. The disbursements in question are supported by receipts appended to the second Harrold Affidavit and are recoverable as such.
| 5. For inter partes tests |
A. For inter partes tests conducted by the
Plaintiff in Morristown, New Jersey
i. In June 1992
(b) Travel and living expenses of $5,638.90
expert witnesses (Schedule 5.2) $3,123.19
[72] The fees and disbursements in Schedule 5.2 are those of William MacKnight, one of the Plaintiff"s expert witnesses. Dr. MacKnight testified on the issue of whether the second component of DuPont"s film was a polyolefin. In respect of his testimony, Madame Justice Reed held as follows "I found Dr. MacKnight"s evidence very persuasive" (page 27 of the decision)23.
[73] Dr. MacKnight"s fees were $1,200. per day for services prior to his testifying at trial. Counsel for the Plaintiff submits that the pre-trial tests were an essential component of Dr. MacKnight"s testimony at trial and, as such, the preparation for and attendance at the pre-trial tests was essential and indeed constituted part and parcel of Dr. MacKnight"s preparation for the said trial. Dr. MacKnight was, according to counsel, instrumental in designing the pre-trial tests and referred to such tests in his expert affidavit and in his testimony at trial, which testimony the trial judge held, as reminded by counsel, to be persuasive.
[74] For his part, counsel for the Defendant questions the reasonableness of the $1,200. daily rate charged by Dr. MacKnight. Counsel argues that no effort has been made in the supporting affidavits to justify the reasonableness of the rate and submits that this rate, at the same daily rate allowed for the preparation for trial, is too generous. Given the absence of any detail in the supporting affidavits justifying the $1,200. daily rate, counsel urges me to reduce by one-half the rate claimed, recognizing the attendance at the inspection was, in effect, a fact gathering exercise and not preparation for giving evidence at trial.
[75] Counsel for the Plaintiff of course disputes the characterization by DuPont"s counsel of the pre-trial test as a mere "inspection" for fact gathering purposes.
| [76] The Order of Mr. Justice Joyal for increased costs provides in paragraph 1:That the reasonable fees and disbursements be paid in relation to travel, accommodation and living expenses for the witnesses and counsel including the preparation of the witness statements or affidavits of: |
| William J. MacKnight |
| John P. Sibilia |
| Sean Curran, |
for the preparation of their trial evidence and for the entire period of their attendance at trial pursuant to Tariff B1(2)(a).
| [77] Of course, a party has the right to hire the expert or experts of its choice to advance the merits of its case, but that does not mean a losing side must, invariably, foot the bill of the expert or experts chosen by the winning side without questioning the fees and disbursements claimed. The jurisprudence is replete with cases that attack such bills essentially on two fronts; the first, on whether or not the fees being exacted are reasonable and, second on whether or not the disbursements claimed, as otherwise perfectly legitimate items to be included in such a bill, denote a lavish style of living. In other words, the level of expertise required in a particular case may justify the hiring of the "cadillac" of expert witnesses, but that does not mean the unsuccessful party will necessarily have to pay for a "cadillac" when other expert witnesses were available and charged lower fees. I glean this cautious approach from the statement of Mr. Justice Sirois of the Saskatchewan Court of Queen"s Bench who said in Angelstad v. Frederick Estate24 that: |
Some expert witnesses seem to charge whatever the traffic will bear while others are very reasonable about the remuneration they receive to give testimony before the court. This places the lawyer in an unenviable position if he feels the expert"s testimony is important to his client"s case because he may feel it is necessary to call the witness whatever the cost. While this is an acceptable and legitimate decision on counsel"s part, it follows that the court will not necessarily approve the expert"s fees an item which is all chargeable to the losing litigant. A practice seems to have developed among counsel to simply pay the expert"s bill and seek to charge it off as a disbursement. There is an onus on counsel seeking payment of the expert witness"s charges to justify the expense in the sense that the losing side should not be required to pay costs which are not reasonable having regard to the importance of the witness"s evidence to the outcome of the trial and the complexity of the expertise.
[78] The invoice appended as Exhibit E-2 to the second Todd Harrold Affidavit evinces that Dr. MacKnight"s travel expenses for his three days in Morristown amounted to $446.90. The invoice contains a charge for travel by car (350 miles), a hotel charge for the three nights (June 22, 23 and 24), a dinner on the 22nd and breakfasts for the three days. I have no difficulty in holding that these travel and living expenses were reasonable and should be allowed in full.
[79] The invoice for the expert"s fees is more problematic. For his three days of pre-trial testing, Dr. MacKnight invoiced the Plaintiff for $3,600. U.S. Clearly the direction of Mr. Justice Joyal is to allow an amount for the preparation of this witness. Two stages of preparation have potentially been identified by the parties depending from which side one looks at the matter. The first possible stage consists of the actual pre-trial tests. The Plaintiff"s counsel argues that these tests were an intricate part of the preparation for giving evidence and counsel for the Defendant submits, for his part, that these tests must be severed from the preparation for giving testimony and constituted a fact gathering exercise only. The second stage, if one adheres to the theory of counsel for the Defendant, was the actual preparation for attendance in Court and giving evidence. In the event, I conclude that there were two separate stages of preparation for giving evidence I must determine then whether or not the same rate for preparation for trial would apply to each stage.
[80] After perusing the arguments submitted by the parties, I come to the inescapable conclusion that I cannot dissociate the pre-trial tests from the actual preparation for giving evidence, contrary to what was urged by counsel for the Defendant, and I therefore hold that the pre-trial tests formed an intricate part of the preparation for trial by the expert witness ("part and parcel" to use the coined expression). I now turn to the reasonableness of the fees paid to Dr. MacKnight.
[81] I have read the authorities suggested by the parties and I note that there is a common thread running through most of those cases.25 I note in particular the following guidelines:
| (1) The hiring of an expert must, in the circumstances existing at the time, be prudent and reasonable representation of the client; |
| (2) The hiring of an expert must not constitute a blank cheque for an award; |
| (3) What reliance was placed on the expert"s testimony by the trial judge? |
[82] In this instance, I am of the opinion that it was prudent and reasonable, given generally the field of litigation involved and more specifically the complexity, importance and volume of this case, for Plaintiff"s counsel to hire an expert such as Dr. MacKnight to testify as to the polyolefin content of the impugned film. Dr. MacKnight also testified as to the crystallinity issue. Further, and as a corollary to the above opinion, I am of the view that the hiring of Dr. MacKnight did not constitute a blank cheque for an award. Dr. MacKnight was more than qualified to testify in the fields mentioned above and his testimony was crucial to the Plaintiff"s case. Finally, as to the reliance placed by the trial judge on the expert"s testimony, I take notice that the testimony of Dr. MacKnight was found very persuasive by Madame Justice Reed and it has also been referred to by Madame Justice Desjardins in her reasons for the Court of Appeal.
[83] I now turn to the actual fees exacted by the expert. They may seem high at first blush, but are, I believe, commensurate with the credentials exhibited by Dr. MacKnight and appear to be in keeping with what the market for such expertise is able to bear. This was not a question of selecting between a "cadillac" and a "volkswagen" when it came to expert testimony. I feel it was necessary for Plaintiff"s counsel to hire Mr. MacKnight and to incur such a cost for the advancement of its case. I would allow the amount as claimed.
5A. For inter partes tests conducted by the
Plaintiff in Morristown, New Jersey
ii. In April 1993
(a) Travel and living expenses for $2,623.63
counsel (Schedule 5.3) $1,199.20
[84] Two issues have developed under this item. The first (and a familiar one by now) is whether or not two counsel were required to attend the tests in April 1993 on behalf of the Plaintiff. The second issue pertains to the meal charges incurred by the Mr. Macklin (senior counsel for the Plaintiff) as being extravagantly high.
[85] For the same reasons as expressed under item 5A(i)(a) above, I hold that the presence of two counsel was warranted and reasonable. As for the meal expense being too lavish, I agree with counsel for the Defendant that the amount sought ($423.67 CDN funds for 4 persons) is too high. I would reduce it to $200. (or $50. per person).
5A. For inter partes tests conducted by the
Plaintiff in Morristown, New Jersey
ii. In April 1993
(b) Travel and living expenses of $5,777.06
expert witnesses (Schedule 5.4) $3,261.00
[86] The only issue here pertains to the reasonableness of the full daily rate being charged by Dr. MacKnight. For the same reasons as discussed above under item 5A(i)(b), the claim is allowed at $5,777.06.
5A. For the inter partes tests conducted by
the Plaintiff
iii. Fees of Film Group incurred
in connection with all pre-trial $125,593.67
tests (Schedule 5.5) $0.00
[87] The "film group" in question is, according to the Affidavit of Kenneth F. Machacek, an internal division or group within the Plaintiff"s company. The fees sought comprise the hourly rates of the internal AlliedSignal employees multiplied by the number of hours spent by them in connection with their participation in the inter partes tests.
[88] The pre-trial inter partes tests involved the use of a number of analytical techniques, namely nuclear magnetic resonance, infrared spectroscopy, x-ray diffraction and differential scanning calorimetry. Carrying out these analytical techniques required, according to counsel for the Plaintiff, both sophisticated equipment and personnel. This fact is recognized by both sides.
[89] Counsel for the Defendant argues that the costs claimed are not out-of-pocket expenses of the Plaintiff. Counsel further submits that internal charges of this nature are not recoverable according to the Tariff and that the Order of Mr. Justice Joyal for increased costs is silent as to the "fees of the film group".
[90] Counsel for the Plaintiff argues, for his part, that the Plaintiff ought not be penalized for having conducted in-house the pre-trial tests which it could otherwise have had conducted by an outside organisation. Counsel also argues that, if the tests had been conducted outside, the costs to the Defendant would have been even higher (the figure of $343,400.96 has been advanced). Finally, counsel for the Plaintiff submits that, if expenses are not recoverable as an allowable disbursement, then its client should nevertheless be entitled to recover the costs in the present circumstances in order to prevent the "unjust enrichment" of the Defendant.
[91] This is the most controversial and expensive item on the Bill. The judgment of Madame Justice Reed is replete with references to the pre-trial tests conducted by both sides. I draw from this that the tests formed an essential part of the conduct of the litigation for both parties. Should the costs of the pre-trial tests conducted by the Plaintiff be deemed, however, not recoverable on the sole basis that they were carried out in-house instead of outside the company?
[92] This was perhaps the case before, but it is not that evident today. An analogy may be useful to answer the above question. The case law up until recently on "photocopy" costs, for example, was to the effect of disallowing the "photocopy" costs unless they were done outside the law firm. The recent jurisprudence26 of this Court, however, suggests now that "photocopy" costs done in-house are also recoverable if the party trying to recover those costs can prove, to the satisfaction of the Taxing Officer, that the "photocopies" done in-house were essential to the conduct of the litigation. The party in question must also produce evidence of some relationship to the actual cost of the "photocopies" to the firm. The latter requirement being meant to diffuse, rightly or wrongly, the perception by unsuccessful litigants that many law firms were nickel-and-diming their own clients to make a profit on disbursements such as "photocopies".
[93] After perusing, first, the decision of the Court Appeal and, second, the decision of the Trial Division where numerous references to the tests can be extracted, I am in agreement with the submission of counsel for the Plaintiff that the pre-trial tests formed an essential part of the conduct of the litigation. I am also of the opinion that it was open to the Plaintiff to carry out those tests internally in the circumstances of this litigation and that the costs associated with the above tests ought to be recovered from the Defendant if the Plaintiff can satisfy me of the actual costs of the pre-trial experiments.
[94] The evidence on the actual costs appears in the Affidavit of Kenneth F. Machacek who is Controller at AlliedSignal. He deposed that he had reviewed the costs incurred by the Film Group in connection with the pre-trial tests carried out in June 1992 and April 1993 and, based on monthly statements attached to his Affidavit, Mr. Machacek avers that the total costs attributed to the Film Group was $125,593.67 (CDN funds). This total costs represent, as is deposed by Mr. Machacek, "...A standard hourly rate for both professionals and technicians is set yearly for the purposes of charging out time to all AlliedSignal business units. The rate is fixed yearly based on labour and overhead costs."
[95] It seems to me that the above evidence falls short of satisfying me as to the actual costs to the company of the Film Group. As averred by Mr. Machacek, the monthly schedules attached to his Affidavit highlight the labour and labour overhead costs of the project. This is precisely the type of costs that should not be included in the disbursement part of a Bill. For instance, the elements to be considered in the actual cost of "photocopies" is limited to the costs of operating the machine (such as paper, toner, other maintenance costs, etc.) and not the hourly rate of pay of the operator (normally an overhead charge deemed not to be recoverable). Finally, even if labour costs could be included in the "actual" costs, I have no way of verifying the reasonableness of the various rates of pay employed by the professionals and the technicians evinced in the schedules exhibited to the Machacek Affidavit.
[96] The only other piece of evidence on this subject is contained in the Affidavit of Donald Legal. Mr. Legal had originally deposed that the costs associated with the preparation of the said pre-trial tests amounted to a total of $343,400.96. This amount was later reduced in the revised Bill of Costs to the amount now being claimed. No explanations have been proffered. In any event, I do not agree with counsel for the Plaintiff that the revised lower amount for the Film Group should be allowed on the sole basis that had the tests been conducted outside the costs would have been much higher. What is required here is evidence as to the actual costs of the tests to the company. This, counsel for the Plaintiff has not been able to do, and I must, therefore, reject the entire claim for the Film Group based on the Diversified27 test.
[97] Counsel for the Plaintiff urged me at the hearing to allow the claim for another reason. Counsel argued that not allowing the costs of the Film Group to be recovered against the Defendant would inevitably lead to the unjust enrichment of the said Defendant.
[98] This is the first time the concept, or doctrine, of "unjust enrichment" is pleaded before me in the context of a taxation of costs. I am unaware of any other Taxing Officer encountering the same argument. The argument is framed as follows by counsel for the Plaintiff:It had been held that there is unjust enrichment where there is (a) enrichment of one person, (b) a corresponding deprivation of another, and (c) no juristic reason for the enrichment. In the present circumstances, there would be enrichment of the Defendant as the Defendant would not have to compensate the Plaintiff for the costs of the pre-trial tests, the Plaintiff would suffer deprivation in having carried out such tests in-house. It is submitted that there is no juristic reason for the enrichment since had the tests been conducted outside, they would constitute a recoverable item.
[99] The above may indeed be an attractive proposition, but I do not think I have to resort to the doctrine of "unjust enrichment" to resolve the dispute in the present circumstances. I am nonetheless hopeful that this argument could be raised on another day when all the pleadings and the submissions will be directly focussed on the issue.
[100] In coming to this conclusion, I considered the following hypothetical scenarios. Ordinarily, the disbursements to a disinterested third party paid by an individual lay litigant in a lawsuit are taxable because no profit for the lay litigant occurs. That is so because costs are an indemnity. For example, if the lay litigant pays $2,000. out of his pocket to the court reporter for transcripts, the court reporter profits but the lay litigant is in a loss position. Subsequently, the $2,000. taxed and recovered by the lay litigant replaces the initial outlay of $2,000. Therefore, the lay litigant is even and has not profited by costs. However, the time devoted by that same lay litigant to that litigation is not taxable because the lay litigant never expended dollars in the first place for which he could be indemnified within the philosophy of costs. That is, at the moment of institution of the lawsuit, he has zero dollars. If his time devoted to the lawsuit is valued at $1,000. and he recovers that taxed amount, he has not been indemnified for what he paid in the first instance. Rather, he has profited by $1,000. It makes no difference that, but for the lawsuit, he could have earned $1,000. elsewhere. The lost $1,000. represents something akin to damages for lost income but is certainly not an indemnity within the meaning of costs. He paid nothing for his own time; he gets nothing for said time.
[101] Finally, the company was obligated to pay the employees" salary regardless of the lawsuit. The employees" time is the company"s time, plain and simple. The fact that the time spent by the employees could have been used in some non-litigation function to earn money for the company is irrelevant because that is something akin to damages, i.e. lost income, but is not in the nature of indemnity. Equally, the fact that the company could have paid an outsider and recovered the dollars on taxation to perform the same work is irrelevant because that scenario clearly qualifies as indemnity. Therefore, any dollars recovered on taxation would represent profit, just as for the lay litigant above.
5B. For the inter partes tests conducted by
the Defendants
i. In Kingston, Ontario in
January 1993
(a) travel and living expenses $551.98
for counsel (Schedule 5.6) $428.44
[102] I allow the claim as sought on the basis that the presence of Ms. D"Iorio was essential and the costs incurred were reasonable.
5B. For the inter partes tests conducted by
the Defendants
i. In Kingston, Ontario in
January 1993
(b) travel and living expenses $3,852.50
of expert witnesses (Schedule 5.7) $2,609.69
[103] I note a discrepancy between the amount claimed above ($3,852.50) and the amount claimed in the submissions of counsel for the Plaintiff ($3,443.68). In the absence of an indication on how this discrepancy came to be, I have decided to allow the lower amount of $3,443.68 for this item.
5B. For the inter partes tests conducted by
the Defendants
ii. In Wilmington, Delaware in
February 1993
(a) travel and living expenses $2,087.35
for counsel (Schedule 5.8) $1,199.66
[104] Again, I allow the presence of two counsel but will, in any event, reduce the amount claimed for Ms. D"Iorio. The $45.20 U.S. for the "green Room" is taxed off from the hotel bill. I also reduce the amount recoverable for her accommodation from $175. U.S. per night to $100. U.S. per night. I feel a charge of $175. U.S. per night denotes a lavish lifestyle which should not be borne by the opposing side. An award of $100. U.S. appears to be purely arbitrary but, given an exchange rate of 1.253628, I am of the opinion that the amount awarded is more than reasonable. The total amount allowed under this item is therefore $1,936.67 CDN funds.
5B. For the inter partes tests conducted by
the Defendants
ii. In Wilmington, Delaware in
February 1993
(b) travel and living expenses $2,891.00
of expert witnesses (Schedule 5.9) $2,049.97
[105] I allow the claim but, to be consistent with the previous award, I must reduce the total amount sought to reflect the same exchange rate of 1.2536, being the average rate obtained from the Bank of Canada for the month of February 1993. The total allowed is $2,600.97.
5B. For the inter partes tests conducted by
the Defendants
iii. In Kingston, Ontario in
May 1993
(b) travel and living expenses $1,476.73
of expert witnesses (Schedule 5.11) $1,173.56
[106] The dispute here revolves around the expenses for the rental car and taxi incurred by Dr. MacKnight. Counsel for the Defendant urged me to compare the expenses for this item with the expenses incurred by Dr. MacKnight for an earlier trip (Schedule 5.7) under similar circumstances. I agree with counsel for the Defendant that the expenses claimed are high for this particular pre-trial test and further, the explanation given by counsel for the Plaintiff is insufficient. I allow $1,173.56 for this item.
| 7. For travel, accommodation and living |
expenses for counsel and representatives
of the client to meet during the conduct
of the litigation
A. Expenses for counsel $10,840.28
(Schedule 7.1) $9,280.34
[107] After reading the submissions and reviewing Schedule 7.1 (included in the second Harrold Affidavit) to which are appended copies of the invoices in question, I allow the amount as claimed as being reasonable in the circumstances.
| 7. For travel, accommodation and living |
expenses for counsel and representatives
of the client to meet during the conduct
of the litigation
B. Expenses for representatives of the $11,035.01
client (Schedule 7.2) $1,289.23
| [108] The Order for increased costs of Mr. Justice Joyal provides in paragraph 2: |
That the reasonable fees disbursements be paid in relation to travel, accommodation and living expenses for counsel and the representatives of the client to meet during the conduct of the litigation. [My emphasis]
[109] An issue has arisen regarding the number of face to face meetings between counsel for the Plaintiff and Mr. Roger Criss, in-house counsel of AlliedSignal and one of the representatives of the Plaintiff corporation. Nineteen meetings have taken place during the conduct of the litigation. Counsel for the Defendant argues this is excessive in the circumstances. Counsel for the Defendant also objects to the claim for Mr. Criss on the basis that he was not a representative of the company as contemplated in Mr. Justice Joyal"s Order.
[110] I beg to differ with counsel for the Defendant in that the occasion of nineteen meetings between 1989 (year the Statement of Claim was filed) and 1993 (year of the trial of the matter) are not grossly excessive. On the contrary, I find the number reasonable in the circumstances.
| [111] Be that as it may, however, I agree with counsel for the Defendant that, to be a "representative of the client" within the meaning of the Order of Mr. Justice Joyal, Mr. Criss ought to have been called to give testimony at discovery or at trial. In support, counsel for the Defendant refers me to the cases of Beloit Canada Ltée/Ltd v. Valmet Dominion et al.29, TRW Inc.v. Walbar of Canada Inc.30 and Aerlinte Eireann Teoranta v. Canada31 from which I quote the following passage at [paragraph 79]: |
In support of the expenses of Mr. Wilson and Mr. Andreassen, defendants have referred me to cases in which the expenses of a party"s technical advisor have been allowed. Here, however, we have the costs of the parties" own staff. Messrs. Wilson and Andreassen are officials of the defendant Minister of Transport. They filled an undoubtedly useful role in moving the case along, and Mr. Wilson"s evidence was relied upon at trial and regarded with favour by Mr. Justice Muldoon on the central issue of the case. But the travel expenses for Messrs. Wilson and Andreassen are expenses of a party incurred in the course of litigation. They are not travel expenses incurred in order to testify at trial. It is not appropriate to include a party"s own expenses in defending its case in the legal costs to be recovered from a losing party.
[112] Finally, I also agree with counsel for the Defendant who urges me to tax off an amount of $44.10 on account of "personal" expenses incurred by Mr. A. Degrassi who is also a representative of the Plaintiff corporation. As I explained earlier under item 3B(v)32, no valid explanation was proffered for the distinct treatment between "personal" and "business" meals in the expense report. The total amount allowed is therefore $1,289.23.
| 8. For preparation for a 12 day trial in |
the Trial Division
A. Miscellaneous expenses $18,752.76
(Schedule 8.1) $10,396.38
[113] The miscellaneous expenses evinced in Schedule 8.1 are for items such as photocopying, binding charges, overtime charges, car rental charges and charges pertaining to preparation of drawings and figures and enlargements thereof. The number of drawings and enlargements of trial exhibits constituted the issue here.
[114] The attack by counsel for the Defendant focuses on the number of copies, negatives and prints made of trial exhibits alleging that they were excessive.
[115] The Order of Mr. Justice Joyal for increased costs provides, in paragraph 7, for the recovery of "...the reasonable costs for all other copying and reproduction necessary for the conduct of the litigation and for the preparation of trial exhibits ." [My emphasis]
[116] I have reviewed the invoice attached to the second Harrold Affidavit, sworn June 17, 1997, and the written submissions of the parties, and come to the conclusion that the number of copies of drawings and enlargements made were not excessive. I therefore allow the amount claimed for this item which was $18,752.76.
| 8. For preparation for a 12 day trial in |
the Trial Division
D. Expenses and fees - Sacks $5,150.99 (Schedule 8.2) $0.00
[117] The issue here turns on the correct interpretation to be given to paragraph 1 of the Order of Mr. Justice Joyal for increased costs. For sake of convenience, I reproduce again the paragraph:
| 1. That the reasonable fees and disbursements be paid in relation to travel, accommodation and living expenses for the witnesses and counsel including the preparation of the witness statements or affidavits of: |
| William J. MacKnight |
| John Sibilia |
| Sean Curran, |
for the preparation of their trial evidence and for the entire period of their attendance at trial pursuant to Tariff B 1(2)(a).
[118] Is the above wording so restrictive as not to cover the fees and disbursements incurred by Dr. Sacks in preparing to testify? Dr. Sacks testified at trial as a fact witness and as one of the inventors of the patent in suit. He is also an ex-employee of the Plaintiff.
[119] Two possible interpretations have been submitted by the parties. The first, by counsel for the Plaintiff, purports to cover the fees and disbursements of all witnesses at trial, including fact witnesses such as Dr. Sacks. The second, by counsel for the Defendant, purports to restrict the reimbursement of the fees for preparation time to the three experts named in the paragraph.
[120] I must refrain from the temptation of re-writing the paragraph in question. My role is simply to apply the paragraph as I understand it. I agree with counsel for the Plaintiff who states in her written submissions that the fees and disbursements of all witnesses at trial, including fact witnesses are covered by the said paragraph. Under normal circumstances, a fact witness such as Dr. Sacks would only be entitled to $100. per day for each day he testifies (see Tariff A - Section 4(1)). His fees and disbursements incurred in preparation would not however be recoverable unless permitted by the Court (see Tariff A - Section 5). It was suggested that the word "including" in the paragraph in question might import a restriction for witnesses other than the witnesses whose names appear in the said paragraph. I believe the word "including" does not import such a restriction, but, as pleaded by counsel for the Plaintiff, it is used by way of example.
[121] Be that as it may, I will nevertheless reduce the claim for Dr. Sacks to $3,382. I have taxed off completely the invoice of June 24, 1990 submitted by Dr. Sacks.33
| 8. For preparation for a 12 day trial in |
the Trial Division
E. Expenses and fees - MacKnight $22,116.82 (Schedule 8.3) $15,177.65
[122] Two issues have arisen under this item. The first pertains to expenses and fees ($1,353.50) claimed by Dr. MacKnight for a meeting in June 1992, over one year before the trial. The second, deals with the number of days of preparation (7) claimed by Dr. MacKnight for his attendance in Court to testify (which lasted 1 day).
[123] I agree with counsel for the Plaintiff that $1,353.50 is recoverable under the heading of preparation for trial. If I am wrong on this aspect, I am of the view also that the amount is equally recoverable under preparation for the pre-trial tests (see item 5A(i)(b) and Schedule 5.2).
[124] As for the second objection, counsel for the Defendant suggests a more "reasonable" ratio for preparation and attendance of 4 to 1 (i.e. 4 days of preparation for 1 day of attendance). The actual ratio claimed in this instance was 7 to 1. There is no jurisprudence supporting any particular ratio. As I am reminded by counsel for the Defendant, however, there is jurisprudence to the effect that the hiring and payment of expert witnesses is not a "blank cheque"34.
[125] After giving the matter much thought, I have decided to allow the amount of preparation and attendance time as claimed. I base my decision on the fact that I must assess these costs without the benefit of hindsight. Dr. MacKnight testified on the issue of whether or not the second component of DuPont"s film was a polyolefin. He also testified as to the issue of crystallinity. He was called finally in rebuttal to counter the evidence lead by the experts of the Defendant. The issues he testified on were very technical and warranted ample preparation. There are no steadfast rules I can apply to determine the optimum ratio of days of preparation versus attendance in Court required for this case. I see no compelling reasons to reduce the amount of time claimed here and I therefore exercise my discretion in favour of the Plaintiff. Acting otherwise would reveal a purely capricious exercise of discretion on my part. I allow this amount as claimed.
| 8. For preparation for a 12 day trial in |
the Trial Division
F. Expenses and fees - Hoffman $2,368.14 (Schedule 8.4) $0.00
[126] As explained by counsel for the Plaintiff, Mr. Hoffman was an expert at trial and testified on the issue of the equivalency of sheet molding compound (SMC) and thick molding compound (TMC).
[127] Counsel for the Defendant argues that nil dollars should be awarded here on the basis that the Order of Mr. Justice Joyal for increased costs is silent as to Mr. Hoffman. Again we are back to the same argument that was put forward by counsel for Dr. Sacks" fees and disbursements. For the reasons given under item 8 D above, I allow the amount as claimed as being reasonable.
| 9. For conduct of a trial |
A. Travel and living expenses for $27,918.85 counsel during trial (including accommodations $14,879.43
for witnesses) Schedule 9.1
[128] This claim stems again from paragraph 1 of the Order of Mr. Justice Joyal where His Lordship allowed the recovery of the reasonable expenses of the witnesses and counsel for the entire period of attendance at trial.
[129] The first bone of contention pertains to the expenses associated with the travel of a paralegal, Ms. Beaudin, to Toronto to assist at trial. Counsel for the Defendant is of the view that these costs are overhead in nature. Further, counsel argues that if these costs were recoverable, the services of a paralegal in Toronto should have been provided instead of having Ms. Beaudin travel to Toronto. Counsel for the Plaintiff submits that the case was a complex one that had been ongoing for almost four years by the time it went to trial. Many documents had been produced and had to be kept organized and retrieved for counsel. Finally, counsel argues that, to suggest that a paralegal could have been provided by the Toronto office of her firm, does not hold true in a case of this complexity because such a paralegal would have no knowledge of the case or its intricacies.
[130] I hesitated somewhat but have come to the conclusion that the Defendant should not be saddled with the costs associated with the travel and living expenses of a paralegal employed at the Ottawa office of counsel for the Plaintiff. I have not been directed to any jurisprudence concerning the use and assistance of paralegals in a context similar to this one and I cannot help but take notice of the fact that paragraph 1 of the Order of Mr. Justice Joyal is silent on this matter. The Order speaks of "witnesses" and "counsel" only. Are paralegals to be "read in" in paragraph 1? I do not think so. I rather think the services of paralegals are included and subsumed into the services provided by counsel and are therefore overhead of the firm. I compare them to secretaries, librarians, binding clerks and other office clerks when it comes to the assessment of costs. I will thus deduct the $4,479.99 claimed for Ms. Beaudin.
[131] The second apple of discord concerns the hotel charges in Toronto for Mr. Macklin and Ms. D"Iorio, which charges began on May 31, 1993, one week before the commencement of the trial. Is one week of preparation excessive?
[132] Again, I am not provided with any steadfast rules to determine the optimum number of days of preparation required by counsel for such a case. All I can consider is that the trial lasted for 10 days, that it involved very technical evidence, that a multiplicity of documents were produced, and that many witnesses, factual and expert alike, were called to be examined, cross-examined and re-examined. This leads me to the conclusion that a one week preparation time for counsel was not excessive in the circumstances. Except for Ms. Beaudin"s expenses, I allowed the other amounts as claimed.
| 9. For conduct of a trial |
B. Expenses and fees of witnesses $42,097.20 (Schedule 9.2) $22,112.49
[133] The dispute revolves around the expenses and fees claimed for three witnesses, namely Dr. Sacks, Dr. MacKnight and Mr. Hoffman.
[134] For Dr. Sacks, counsel for the Plaintiff claims $3,424.37 representing all his fees and disbursements. Counsel for the Defendant argues that since Dr. Sacks was not an expert witness, the most he is entitled to as a fact witness is $100. plus, of course, his reasonable disbursements, for a total of $909.78.
[135] I refer the parties to paragraphs 115 to 119 above for a discussion on paragraph 1 of the Order of Mr. Justice Joyal. For Dr. Sacks, I allow the full amount of $3,424.37.
[136] Insofar as Dr. MacKnight is concerned, the issue between the parties boils down to the number of days allowable for preparation and the rate charged by Dr. MacKnight for each day in Court.
[137] I have no difficulties in allowing the additional two days of preparation, which was claimed by Dr. MacKnight at the rate of $1,200. U.S. per day. I am not prepared however to allow the same rate for his ten days of attendance at trial. I agree with counsel for the Defendant that a $2,000. U.S. per day in Court rate is not reasonable. In support, counsel referred me to the cases of Engine and Leasing Co. et al.35 and particularly the case of Aerlinte Eireann Teoranta 36 wherein Mr. Justice Joyal noted that:
"Compensation of an expert witness during trial at the hourly rate allowed for preparation may be found to be too generous. There is no foundation for the notion that counsel may incur any expert witness costs which, in the event of success, they will be fully compensated."[My emphasis]
[138] I have not been directed to any specific mathematical formula to arrive at a reasonable rate. It is my understanding that I have full discretion in these matters and will allow, in the circumstances of this case, the rate of $1,200. U.S. per day in Court. As explained by counsel for the Defendant, there is no justification to award a daily rate for attendance at trial which is 67 per cent higher than the daily rate charged for preparation. In fact, the jurisprudence is to the effect that daily rates for attendance at trial should be lower than that charged for preparation. The $1,200. U.S. per day roughly equals the rate allowed by Mr. Justice Joyal for counsel for the conduct of the trial (see paragraph 6 (f) of his Order).
[139] Finally, an issue has arisen regarding the expenses claimed by Mr. Hoffman. It is counsel for the Defendant"s contention that Mr. Hoffman, who testified as an expert at trial, is not included in paragraph 1 of the Order of Mr. Justice Joyal. Counsel was further of the view that Mr. Hoffman"s claim should also be taxed off on the basis his testimony was not relied upon by Madame Justice Reed in coming to her conclusions at trial. This fact is, according to counsel, relevant to a determination of whether or not costs will be awarded for an expert witness (see the Aerlinte case supra Note 27). For the reasons given under items 8 F and D, I allow the claim for Mr. Hoffman.
[140] I therefore allow $31,868.4037 for item 9 B.
| III. COSTS OF THE ADJOURNED TAXATION PROCEEDINGS OF MARCH 26, 1997 |
[141] As ordered by Mr. Justice Wetston on November 3, 1997, I must deal with the costs associated with the aborted hearing of March 26, 1997. I also have to deal with the costs pertaining to the November 21, 1997 hearing.
[142] The parties are in agreement that I ought to address the costs of the above hearings in separate proceedings. I therefore invite the parties to forward to me, care of the Registry of the Court, their Bills of Costs with supporting documentation and submissions for the preparation, travel and attendance at the taxation proceedings, including the costs of the attendance upon the aborted taxation proceedings of March 26, 1997.
IV. SUMMATION
[143] For sake of convenience, I have appended to these Reasons a summarizing chart of the various amounts claimed and awarded for this Bill of Costs.
III. COSTS OF THE TAXATION
This revised Bill of Costs presented at $412,084.59 is taxed and allowed at $258,754.13. A certificate will issue for this amount.
_____________________
Marc D. Reinhardt
APPENDIX
| ITEMS |
DESCRIPTION |
FEES |
DISBURSEMENTS |
AWARD |
| 1. |
For all services prior to and including preparation and filing pleadings |
$2,000.00 |
$2,000.00 |
|
| A. |
Filing fee in the Federal Court |
$50.00 |
$50.00 |
|
| B. |
Miscellaneous expenses |
$83.78 |
$83.78 |
|
| 2. |
FOR ALL SERVICES PRIOR TO EXAMINATION FOR DISCOVERY |
$2,000.00 |
$2,000.00 |
|
| A. |
Travel and living expenses for counsel |
$4,068.37 |
$4,068.37 |
|
| B. |
Miscellaneous expenses |
$952.13 |
$905.65 |
|
| 3. |
FOR EXAMINATION FOR DISCOVERY |
|||
| A. |
Yang on Dec. 5/90 and Bula on Dec.5-6/90 |
$3,000.00 |
$3,000.00 |
|
| (i) |
For transcript of examination of Yang |
$605.00 |
$605.00 |
|
| (ii) |
For transcript of examination of Bula |
$645.00 |
$645.00 |
|
| (iii) |
Travel and living expenses for counsel |
$1,558.25 |
$1,558.25 |
|
| B. |
Degrassi on Dec 12-13/90 & Combs on Dec. 13-14/90 in Ottawa |
$4,500.00 |
$4,500.00 |
|
| (i) |
For transcript of examination of Degrassi |
$340.00 |
$340.00 |
|
| (ii) |
For transcript of examination of Combs |
$423.50 |
$423.50 |
|
| (iii) |
Travel and living expenses for counsel |
$342.55 |
$342.55 |
|
| (iv) |
Travel and living expenses of Degrassi |
$1,436.85 |
$1,436.85 |
|
| (v) |
Travel expenses of R. Combs |
$984.11 |
$959.41 |
|
| C. |
Miscellaneous expenses for items A and B |
$82.66 |
$16.98 |
|
| 4. |
FOR PREPARATION AND APPEARANCE ON INTERLOCUTORY MOTIONS |
|||
| A. |
Motion in writing for a Rule 480 order July 13, 1990 |
$75.00 |
$75.00 |
|
| B. |
Motion in writing for a protective order August 2, 1990 |
$75.00 |
$75.00 |
|
| (i) |
Miscellaneous expenses |
$12.71 |
$12.71 |
|
| C. |
Contested motion to compel answers June 19, 1992 |
$250.00 |
$250.00 |
|
| (i) |
Travel and living expenses for counsel |
$383.51 |
$383.51 |
|
| (ii) |
Miscellaneous |
$76.71 |
$76.71 |
|
| D. |
Contested motion for production of electronic data - Aug. 26/92 |
$250.00 |
$250.00 |
|
| a. |
Travel and living expenses for counsel |
$45.29 |
$45.29 |
|
| b. |
Miscellaneous |
$93.60 |
$93.60 |
|
| c. |
Contested motion Re: July 25/96 letter |
$250.00 |
$250.00 |
|
| 5. |
FOR INTER PARTES TESTS |
|||
| A. |
For inter partes tests conducted by the Plaintiff in Morristown, New Jersey |
|||
| (i) |
In June 1992 |
|||
| (a) |
Travel and living expenses for counsel |
$4,411.43 |
$4,411.43 |
|
| (b) |
Travel and living expenses of expert witnesses |
$5,638.90 |
$5,638.90 |
|
| (ii) |
In April 1993 |
|||
| (a) |
Travel and living expenses for counsel |
$2,623.63 |
$2,399.96 |
|
| (b) |
Travel and living expenses of expert witnesses |
$5,777.06 |
$5,777.06 |
|
| (iii) |
Fees of Film Group incurred in connection with all pre-trial tests |
$125,593.67 |
nil |
|
| B. |
For inter partes tests conducted by the Defendants |
|||
| (i) |
In Kingston, Ont. in Jan. 1993 |
|||
| (a) |
Travel and living expenses for counsel |
$551.98 |
$551.98 |
|
| (b) |
Travel and living expenses of expert witnesses |
$3,852.50 |
$3,443.68 |
|
| (ii) |
In Wilmington, Delaware in Feb. 1993 |
|||
| (a) |
Travel and living expenses for counsel |
$2,087.35 |
$1,936.67 |
|
| (b) |
Travel and living expenses of expert witnesses |
$2,891.00 |
$2,600.97 |
|
| (iii) |
In Kingston, Ontario in May 1993 |
|||
| (a) |
Travel and living expenses of counsel |
$262.82 |
$262.82 |
|
| (b) |
Travel and living expenses of expert witnesses |
$1,476.73 |
$1,173.56 |
|
| 6. |
FOR PREPARATION OF VIDEOTAPES OF EXPERIMENTS PERFORMED BY PLAINTIFF AND A PRODUCTION LINE NYLON FILM AND SMC OPERATION |
$17,127.11 |
$17,127.11 |
|
| 7. |
FOR TRAVEL, ACCOMMODATION AND LIVING EXPENSES FOR COUNSEL AND REPRESENTATIVES OF THE CLIENT TO MEET DURING THE CONDUCT OF THE LITIGATION |
|||
| A. |
Expenses for counsel |
$10,840.28 |
$10,840.28 |
|
| B. |
Expenses for representatives of the client |
$11,035.01 |
$1,289.23 |
|
| 8. |
FOR PREPARATION FOR A 12 DAY TRIAL IN THE TRIAL DIVISION |
$30,000.00 |
$30,000.00 |
|
| A. |
Miscellaneous expenses |
$18,752.76 |
$18,752.76 |
|
| B. |
Filing of unilateral application for place and time of the trial |
$75.00 |
$100.00 |
$175.00 |
| C. |
Preparation for attendance at pre-trial conference |
$250.00 |
$250.00 |
|
| D. |
Expenses and fees - Sacks |
$5,150.99 |
$3,382.00 |
|
| E. |
Expenses and fees - MacKnight |
$22,116.82 |
$22,116.82 |
|
| F. |
Expenses and fees - Hoffman |
$2,368.14 |
$2,368.14 |
|
| 9. |
FOR CONDUCT OF A TRIAL |
$27,000.00 |
$27,000.00 |
|
| A. |
Travel and living expenses for counsel, etc. |
$27,918.85 |
$23,438.86 |
|
| A. |
Travel and living expenses for counsel during trial (including accommodation for witnesses) |
$27,918.85 |
$23,438.86 |
|
| B. |
Expenses and fees of witnesses |
$42,097.20 |
$31,868.40 |
|
| C. |
Miscellaneous expenses |
$16,893.67 |
$16,893.67 |
|
| 10. |
FOR SERVICES AFTER JUDGMENT |
$125.00 |
$125.00 |
|
| A. |
Miscellaneous |
$482.67 |
$482.67 |
|
| GRAND TOTAL |
$258,754.13 |
NAMES OF COUNSEL AND SOLICITORS OF RECORD
STYLE OF CAUSE: ALLIEDSIGNAL INC.
Plaintiff
- and -
DUPONT CANADA INC. and THE COMPLAX CORPORATION
Defendants
COURT NO: T-2234-89
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: November 21, 1997
TAXATION OF COSTS - REASONS MARC D. REINHARDT
TAXING OFFICER
DATED: May 11, 1998
APPEARANCES:
Hélène D"Iorio for the Plaintiff
Arthur Renaud for the Defendants
SOLICITORS OF RECORD:
Gowling, Strathy & Henderson
Ottawa, Ontario for the Plaintiff
Sim Hughes Ashton & McKay for the Defendants
__________________1 As explained in details by Mr. Scott MacKendrick in his Affidavit filed on behalf of the Defendants
2 Costs of this Motion has been awarded to the Plaintiff and the parties are in agreement that $250. are to be added to the final figure on account of this Motion.
3 Court file No. T-32-86, unreported decision of F. Pilon, Taxing Officer, dated January 19, 1988.
4 Court file Nos. A-14-83, A-80-83 and A-81-83 unreported decision of J.E. Clegg, Taxing Officer, dated April 23, 1990.
6 Court file Nos. T-298-90, T-2149-80 and T-4900-80, unreported decision of J.E. Clegg, Taxing Officer, dated April 23, 1990.
7 Court file No. T-1848-82, unreported decision dated November 13, 1991.
9 Re Diversified Products Corp. et al. v. Tye-Sil Corporation Limited (1990), 34 C.P.R. (3d) 267 (Fed. T.D.); (1990), 41 F.T.R. 227 at 233.
10 Windsurfing International Inc. et al. v. Bic Sports Inc. et al. 6 C.P.R. (3d) 526 at page 533.
12 Court file No. T-705-89, unreported taxation dated July 3, 1991.
13 Melo"s Food Centre Ltd. v. Borges Food Ltd., Court file No. A-673-95, unreported decision dated August 8, 1996.
14 See generally my Reasons for Taxation in the within Appeal proceedings, Court file No. A-660-93, unreported taxation dated July 16, 1997.
15 Court file No. T-421-97 unreported.
17 56 C.P.R. (2d) 93 (F.C.T.D.).
19 The Law of Costs, Second Edition, Canada Law Book Inc., 1996.
20 [1996] F.C.J. No. 952, Lamy, T.O.
21 [1995] F.C.J. No. 441, Lamy, T.O.
22 Court file No. T-780-90, unreported taxation of Smith, T.O. dated October 26, 1994.
23 See tab 6 of Defendant"s Book of Documents.
25 Engine and Leasing Co. et al. v. Atlantic Towing Ltd. 93 F.T.R. 181 (Joyal J.); Sanmammas Compania Maritima S.A. et al. v. The Ship "Netuno" 102 F.T.R. 172 (Tremblay-Lamer J.); Aerlinte Eireann Teoranta v. Canada [1993] F.C.J. 1462 (Wendt, Taxing Officer) and Dableh v. Ontario Hydro [1994] No. 1810 (Stinson, Taxing Officer).
26 See Diversified Product Corp. et v. Tye-Sil Corp. Ltd, supra note 9 and the plethora of cases that have followed.
28 Rate for February 25, 1993 supplied by the Bank of Canada.
30 (1992), 43 C.P.R. (3d) 43 (F.C.A.).
31 [1993] F.C.J. No. 1462, W.F. Wendt, Taxing Officer.
33 The rate of exchange was 1.1819 on June 24, 1990.
34 Engine and Leasing Co. et al. v. Atlantic Towing Ltd. (1995), 93 F.T.R. 181 (F.C.T.D.).
37 My calculations are as follows: $2,000/day - $1,200/day=$800 x 10 days x 1.2786= $10,228.80 to be deducted. The rate of 1.2786 is the average rate for the month of June 1993 as supplied by the Bank of Canada.