2023 FC, 2023 FC 1187

Date: 20230831 Docket: T-127-19 Citation: 2023 FC 1187 Ottawa, Ontario, August 31, 2023 PRESENT: Mr. Justice Sébastien Grammond BETWEEN: FROMFROID SA Plaintiff and 1048547 ONTARIO INC FRIMASCO INC Defendants ORDER AND REASONS AS TO COSTS [ 1 ] Fromfroid SA [Fromfroid] sued 1048547 Ontario Inc [Skotidakis] and Frimasco Inc [Frimasco] for patent infringement. In a judgment bearing neutral citation 2023 FC 925 , I allowed the action and I ordered Skotidakis and Frimasco to pay regular and punitive damages to Fromfroid, for a total amount of $399,270. I reserved the issue of costs.

These are my reasons for awarding $127,000 in costs. [ 2 ] Fromfroid seeks a lump sum of $184,009.70, which is based on the upper end of Column IV of the Tariff. Of that amount, $116,865.73 would be solidarily payable by both defendants. An additional amount of $67,144 would be payable by Skotidakis, because it refused an offer to settle that would have been more favourable to it than the judgment I rendered. Skotidakis argues that costs should rather be calculated according to the mid-point of Column III of the Tariff, which would yield a total amount of $88,658.45.

It does not dispute that the offer it refused met the criteria of rule 420 of the Federal Courts Rules , SOR/98-106 . Frimasco did not file separate submissions regarding costs but indicated that it supports Skotidakis’s position. [ 3 ] I agree that awarding costs in a lump sum will simplify the process.

In my view, however, the proper basis for assessing costs in this matter is somewhat less than the top end of Column IV. [ 4 ] This Court’s recent practice in complex intellectual property cases is to award costs in a lump sum that is approximately 25%-33% of the prevailing party’s actual legal fees: Apotex Inc v Shire LLC , 2021 FCA 54 at paragraph 22 .

Where the case is less complex, or where other factors favour a lesser award, the top end of Column IV of the Tariff is often used as a benchmark, although it is by no means a default rule: Guest Tek Interactive Entertainment Ltd v Nomadix, Inc , 2021 FC 848 at paragraphs 16–19 . [ 5 ] In this case, the following factors point to some degree of restraint in the award of costs: The matter was not overly complex and cannot be compared to cases in which an elevated lump sum was awarded; The trial lasted only four days and the main issue was purely factual; While Fromfroid claimed over $1.3 million in damages, I awarded approximately $400,000. [ 6 ] Moreover, I do not find that Skotidakis and Frimasco acted in a way that unduly lengthened the proceeding or that otherwise justify an elevated award of costs.

I have already awarded punitive damages, based mainly on the defendants’ attempt to mislead the Court. Awarding elevated costs on the same basis would be duplicative. [ 7 ] Taking these factors into account, I award a lump sum of $60,000, to be paid solidarily by Skotidakis and Frimasco. Pursuant to rule 420 , I also award a lump sum of $50,000, to be paid by Skotidakis only. [ 8 ] These lump sums include specific items claimed by Fromfroid, namely, costs for a motion for particulars dated July 17, 2019 and costs for preparing the submissions regarding costs.

They also include costs regarding a contempt of court motion. Contrary to what Skotidakis is asking, I cannot reverse the decision of the Associate Judge who dismissed the motion with costs to follow suit. [ 9 ] With respect to disbursements, I agree with Skotidakis that the expert report and testimony of Mr. Michelin were not useful, for the reasons given at paragraph 99 of my judgment on the merits. I will therefore not include his fees in my award.

I award an amount of $17,000 in disbursements. [ 10 ] I also confirm that Fromfroid’s counsel may now release the amount of $20,000 held in trust as security for costs. ORDER in T-127-19 THIS COURT ORDERS that:

1 . The defendants are solidarily condemned to pay the plaintiff $77,000 in costs, inclusive of disbursements and taxes, plus interest at the annual rate of 6% from the date of this judgment. 2 . The defendant 1048547 Ontario Inc. is condemned to pay the plaintiff $50,000 in costs, plus interest at the annual rate of 6% from the date of this judgment. 3 .

The plaintiff’s counsel may release the amount of $20,000 held in trust as security for costs. “Sébastien Grammond” Judge FEDERAL COURT SOLICITORS OF RECORD DOCKET: T-127-19 STYLE OF CAUSE: FROMFROID SA v 1048547 ONTARIO INC, FRIMASCO INC WRITTEN SUBMISSIONS ON COSTS CONSIDERED IN OTTAWA, ONTARIO, PURSUANT TO JUDGMENT 2023 FC 925 ORDER AND REASONS: GRAMMOND J DATED: August 31, 2023 APPEARANCES : Alain Y Dussault James Duffy FOR THE PLAINTIFF Kristen Petitclerc Shu Nan Zhao Gao FOR THE DEFENDANT 1048547 ONTARIO INC Magali Fournier FOR THE DEFENDANT FRIMASCO INC SOLICITORS OF RECORD : Lavery de Billy, LLP Montréal, Quebec FOR THE PLAINTIFF Renno Vathilakis Inc Montréal, Quebec FOR THE DEFENDANT 1048547 ONTARIO INC Brouillette Legal Inc Montréal, Quebec FOR THE DEFENDANT FRIMASCO INC