Eli Lilly Canada Inc. v Apotex Inc., 2015 FC 1092 (Leblanc, J.)
September 18, 2015
Borden Ladner Gervais LLP for the Applicant Eli Lilly Canada Inc. and the Respondent Patentee ICOS Corporation
Jordan Scopa of Goodmans LLP for the Respondents Apotex Inc. an the Minister of Health
Eric Peterson of William F. Pentney for the Respondents and Minister of Health
The Federal Court overturned a Prothonotary’s award of costs against Apotex Inc. payable forthwith in any event of the cause in connection with an uncontested motion for a confidentiality order. The Court held that, as costs had not been requested on the motion, the Prothonotary erred in awarding them.
Eli Lilly Canada Inc. had sought protective and confidentiality orders. Its motion was not contested, and thus costs were not sought. The Prothonotary issued the protective order, but directed the parties to identify the specific portions of documents to be maintained confidential and provide additional supporting submissions. After reviewing the parties’ proposed redactions, the Prothonotary expressed concern about Apotex’s proposal and directed Apotex to revise and resubmit it. The Prothonotary later accepted Lilly’s proposed redactions, but only some of Apotex’s. As a result, the Prothonotary awarded costs against Apotex.
On appeal, the Court noted that costs are at the complete discretion of the Court, and that discretionary orders of Prothonotaries ought to be disturbed only when clearly wrong in the sense that the exercise of discretion was based upon wrong principle or misapprehension of facts.
However, the Court held that it may not award costs when costs are not requested. Referring to the decision of the Federal Court of Appeal in Exeter v Canada (Attorney General) (2013 FCA 134), the Court noted that awarding costs when none are requested would amount to a breach of the duty of fairness. As Lilly did not seek costs in its notice of motion or in its written representations, the Court held that costs should not have been awarded.
By: Kiernan A. Murphy, Gowling Lafleur Henderson LLP