Sunday, August 13, 2023

Column IV Costs for Summary Trial

Eli Lilly Canada Inc v Mylan Pharmaceuticals ULC 2023 FC 780 St-Louis J

2,226,784 / tadalafil / CIALIS / NOC

There are a couple of points worth noting in this costs decision following from the summary trial in Lilly v Teva 2022 FC 1398*, in which the defendants, Apotex, Mylan, Teva and Pharmascience, prevailed: see FC “Or” And FC Overbreadth. Only Mylan and Lilly filed written submissions in regards to costs [1].

The first point is that while Rule 407 provides that costs are normally assessed on column III, the jurisprudence has established that the upper end of column IV is often appropriate in patent trials due to their greater than average complexity. Lilly argued that notwithstanding this caselaw, column III should apply in respect of summary trials. St-Louis J rejected this submission: “Accepting Lilly’s argument of some sort of a norm being fixed at column III for summary trials in intellectual property would entail, in addition to encroaching on the Court’s discretion, assuming that summary trials in intellectual property are, by default, of average complexity. While summary trials may mitigate the considerations highlighted by the Chief Justice in Allergan [2021 FC 186], I have not been convinced that they necessarily or always completely diminish the complexity of a pharmaceutical patent litigation to the point that these 400(3) factors cannot be considered and found to be present” [37].

Secondly, St-Louis J confirmed that an offer to settle that does not meet the conditions of Rule 420 may nonetheless be considered as one factor in awarding costs under Rule 400. This point is by now well-established [32]. (In this case, Mylan’s offer did not meet the timing conditions in subsection 420(3)—ie presumably it was made less than two weeks prior to trial.)

(I will have a post on the FCA decision in Benjamin Moore 2023 FCA 168, addressing the difficult issue of patentable subjet-matter, but the post may be delayed as I am teaching a new course in the fall and I have an article deadline coming up.)

*For some reason, the trial decision is still not available on the FC website, so I’ve linked to a copy made available by Smart & Biggar.

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