Costs of second tadalafil prohibition application against the same patent assessed at midpoint of column IV

As we previously reported here, Justice Gleason allowed Lilly’s prohibition application in respect of the Canadian Patent No. 2,226,784 with costs following the event. The parties were subsequently unable to agree on the costs and the matter was remitted back to Justice Gleason, with Lilly seeking approximately $510,000 and Apotex submitting that it should be liable for approximately $213,000.

This was not the first time that Lilly had brought a prohibition application in respect of the 784 Patent. As we previously reported here, Lilly was successful in in a prohibition application involving Mylan and the 784 Patent. Since this was the second time Lilly had argued many of the same issues, and Lilly had previously agreed to fees at the midpoint of column IV in the Mylan proceeding, Justice Gleason held that there was no reason to depart from the mid-point of column IV.

Justice Gleason also rejected Lilly’s claim that it was entitled to a multiplier on fees because Apotex did not pursue a number of allegations raised in its Notice of Allegation. Following Sanofi-Aventi v. Apotex, Justice Gleason held,  absent an abuse of process, a party should not be penalized for dropping issues after hearing the evidence.

Tariff Item 1

Tariff Item 1 provides assessable fees for the preparation and filing of originating documents and applications records. Lilly sought to recover assessable fees for each document it prepared. Following Musée des beaux-arts du Canada v. Front des artiste canadiens and Lundbeck v. Cobalt Justice Gleason held that the weight of authority is that the applicant can only recover once under Item 1 of Tariff B.

In a separate Order, Justice Gleason concluded that the same parameters should apply to Lilly’s failed prohibition application against Apotex  involving Canadian patent No. 2,379,948 (see our earlier post here)

Copies of Justice Gleason’s Orders and Reasons in respect of the 784 and 948 Patents, may be found here and here.