Date: 20211118
Docket: T-451-20
Citation: 2021 FC 1247
Ottawa, Ontario, November 18, 2021
PRESENT: The Honourable Mr. Justice Zinn
BETWEEN:
KOBOLD CORPORATION
KOBOLD COMPLETIONS INC.,
AND 2039974 ALBERTA LTD.
Plaintiffs/
Defendants by Counterclaim
and
NCS MULTISTAGE INC.
Defendant/
Plaintiff by Counterclaim
ORDER AND REASONS
[1] In my Order 2021 FC 742 dated July 14, 2021, dismissing the Defendant’s motion to file reply expert evidence on its motion for summary judgment, costs were awarded to the Plaintiffs. The parties have not agreed on costs and both have filed written submissions.
[2] The Plaintiffs seek costs in the amount of $7,500 payable forthwith. They allege that the “actual costs of preparing for and opposing the … motion by Kobold exceeded $20,000.”
[3] The Defendant opposes both the quantum sought and the requirement that it be paid forthwith.
[4] The submissions of both parties have been carefully considered.
[5] It is fair to say that the Court is moving away from the Tariff in intellectual property trials and pre-trial proceedings and towards awards of fixed costs. The Chief Justice in Allergan Inc v Sandoz Canada Inc, 2021 FC 186 at para 22 observed that this is “increasingly common” and Justice Grammond in Bauer Hockey Ltd v Sport Maska Inc (CCM Hockey), 2020 FC 862 at para 13, said it “has become the norm.” The Federal Court of Appeal in Philip Morris Products SA v Marlboro Canada Ltd, 2015 FCA 9 at para 4 noted the “judicial trend to grant costs on a lump sum basis whenever possible.”
[6] At the same time, however, as is pointed out by the Defendants, the Federal Court of Appeal in Nova Chemicals Corp v Dow Chemical Co, 2017 FCA 25 at para 18 cautions that a party seeking a lump sum award of costs must provide sufficient detailed evidence so that the Court can be satisfied that the fees were actually incurred. Moreover, at para 19, it provides direction to judges when fixing costs:
While, as noted above, a judge fixing costs on a lump sum basis has a wide discretion, the discretion is not unfettered. As noted, it is not a matter of plucking a number out of the air. The discretion must be exercised prudently. The criteria set forth in Rule 400(3), the case law and the objectives that underlie awards of costs are all relevant considerations. Efficiency in the administration of justice is one value that underlies lump sum awards, but costs must also be predictable and consistent so that counsel can properly advise and clients can make informed decisions about litigation risks. The ability to forecast cost consequences also bears both on the ability of parties to settle and on the question of access to the courts.
[7] While I agree with the Plaintiffs that it would be appropriate to grant a lump sum award in this matter, I am unable to do so. The Plaintiffs have not provided any bill of costs, any affidavit evidence as to its actual costs, nor indeed any evidence from which the Court can determine if the amount sought is appropriate.
[8] I further agree with the Defendants that it is unusual to make an order that costs in a preliminary matter are to be paid forthwith. It is typically done where the Court is satisfied that the motion ought not to have been brought. In this case, I cannot reach that conclusion. I do agree that the moving party ought to have filed the reply evidence it was seeking leave to file; however, I cannot conclude that the motion itself ought not to have been brought. Nonetheless, the costs awarded will reflect the Defendant’s failure to file proper evidence, thus resulting in the Plaintiffs having to respond to a motion that was doomed to fail.
[9] Costs of the motion are awarded to the Plaintiffs in any event of the cause to be taxed at the upper end of Column V of Tariff B.
ORDER IN T-451-20
THIS COURT ORDERS that costs of the Defendant’s motion to file expert reply evidence are awarded to the Plaintiffs in any event of the cause to be taxed at the upper end of Column V of Tariff B.
"Russel W. Zinn"
Judge
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET:
t-451-20
STYLE OF CAUSE:
KOBOLD CORPORATION ET AL v NCS MULTISTAGE INC
COST SUBMISSIONS MADE IN WRITING CONSIDERED AT OTTAWA, ONTARIO
ORDER AND reasons:
zinn J.
DATED:
November 18, 2021
WRITTEN REPRESENTATIONS BY:
Christopher J. Kvas William D. Regan Evan Reinblatt Rachel J. Meland
for the PLAINTIFFS/
DEFENDANTS BY COUNTERCLAIM
Patrick S. Smith
Scott Foster
Sharn K. Mashiana
Sarah Li
FOR THE DEFENDANT/
PLAINTIFF BY COUNTERCLAIM
SOLICITORS OF RECORD:
Piasetzki Nenniger Kvas LLP
Toronto, Ontario
for the PLAINTIFFS/
DEFENDANTS BY COUNTERCLAIM
Seastone IP LLP
Calgary, Alberta
Gowlings WLG (Canada) LLP
Calgary, Alberta
FOR THE DEFENDANT/
PLAINTIFF BY COUNTRCLAIM