Case Details
- Citation: [2018] SGHCR 13
- Title: ELEMENT SIX TECHNOLOGIES LIMITED v IIa TECHNOLOGIES PTE. LTD.
- Court: High Court (Registrar)
- Date: 27 August 2018
- High Court Suit No: HC/S 26 of 2016
- Summons No (Plaintiff): HC/SUM 1654 of 2018
- Judgment reserved: 26, 27 June and 17 July 2018 (heard over four days in June and July 2018)
- Judge: Justin Yeo AR
- Plaintiff/Applicant: Element Six Technologies Ltd
- Defendant/Respondent: IIa Technologies Pte Ltd
- Legal Area(s): Civil Procedure – Discovery of Documents; Patents and Inventions – Experiments
- Statutes/Rules Referenced: Rules of Court (Cap 322, R 5, 2014 Rev Ed), including O 87A r 6 (Notice of Experiments Regime); O 24 rr 1 and 5 (specific discovery); Part V of the Supreme Court Practice Directions (electronic discovery)
- Prior Related Decision: Element Six Technologies v IIa Technologies [2017] SGHCR 16
- Cases Cited: [2017] SGHCR 16; [2018] SGHCR 13 (this case); Electrolux Northern Ltd v Black & Decker [1996] FSR 595; Mayne Pharma Pty Ltd v Debiopharm SA [2006] FSR 37; Magnesium Elektron Ltd v Neo Chemicals and Oxides (Europe) Ltd [2017] EWHC 2957; Honeywell Ltd v Appliance Components Ltd (February 22, 1996, unreported) (as discussed in Electrolux)
- Judgment Length: 30 pages; 8,383 words
Summary
This High Court (Registrar) decision addresses how discovery should be handled in patent litigation where one party seeks experimental evidence to prove infringement-related facts. The case arises in the context of the “Notice of Experiments Regime” under O 87A r 6 of the Rules of Court, which requires a party intending to establish facts by experimental proof to serve a notice with full particulars of the experiments proposed. The dispute in Element Six Technologies Ltd v IIa Technologies Pte Ltd centres on the scope of specific discovery for documents relating to experiments and experimental material, including raw data, standards/benchmarks, work-up experiments, and experiments that were abandoned or not relied upon.
The Registrar’s analysis is particularly focused on whether, and to what extent, experimental material beyond what is expressly referenced in the Notice of Experiments should be disclosed. The court considered three influential UK Patents Court decisions—Electrolux Northern Ltd v Black & Decker, Mayne Pharma Pty Ltd v Debiopharm SA, and Magnesium Elektron Ltd v Neo Chemicals and Oxides (Europe) Ltd—each taking different approaches to the disclosure of experimental work and abandoned experiments. The court ultimately adopted a principled approach to balancing fairness in experimental proof against the burdens and privilege concerns that can arise when discovery is sought for experiments that were not intended to be relied upon.
What Were the Facts of This Case?
Element Six Technologies Ltd (“Element Six”) is the proprietor of two Singapore patents: Patent No 115872 (“the ‘872 Patent”) and Patent No 110508 (“the ‘508 Patent”). The ‘872 Patent concerns an optical quality synthetic single crystal chemical vapour deposition (CVD) diamond material and methods for producing it. The ‘508 Patent concerns a method of producing CVD diamonds of a desired colour. Element Six alleged that IIa Technologies Pte Ltd (“IIa”) infringed multiple claims in both patents.
Element Six’s infringement case relied on four trap-purchased CVD diamond samples (“the Samples”). Three samples were trap purchased from third parties: Sample 1 from Gemesis Diamond Company, Sample 2 from Microwave Enterprises Inc, and Sample 3 from Pure Grown Diamonds. The fourth sample, Sample 4, was trap purchased from IIa itself. Element Six’s position was that these Samples had been grown by IIa and that the Samples’ characteristics could be used to support infringement of the asserted patent claims.
IIa’s defence challenged the provenance and integrity of the Samples. It denied knowledge of Samples 1 to 3 and questioned whether those samples were indeed what Element Six claimed them to be. IIa also contended that it had no knowledge of whether the conditions or characteristics of all four Samples had been changed after they left IIa’s possession and custody. In addition, IIa disputed infringement on the substantive merits and brought a counterclaim for revocation of the patents.
Procedurally, Element Six proceeded under the “Notice of Experiments Regime” in O 87A r 6. Under that regime, a party seeking to establish any fact by experimental proof must serve a notice stating the facts it intends to prove and giving full particulars of the experiments proposed. Element Six filed its list of documents on 6 October 2016, disclosing technical notes describing experiments conducted on the Samples (“the Technical Notes”). It then filed a Notice of Experiments on 23 December 2016 containing 22 facts it intended to prove by experimental evidence. IIa responded on 13 January 2017, stating it did not admit any of the 22 facts.
What Were the Key Legal Issues?
The central legal issue was the proper scope of specific discovery in patent litigation where experimental proof is contemplated and where experimental material may be relevant to the testing, verification, and interpretation of the experiments described in the Notice of Experiments. Element Six sought specific discovery of 13 classes of documents under O 24 rr 1 and 5, and electronic discovery under Part V of the Supreme Court Practice Directions. IIa sought specific discovery of 12 classes of documents. The applications were heard together over four days, reflecting the complexity and volume of the requests.
Within IIa’s application, five “Experiment Requests” (Requests 2 to 6 as set out in the judgment extract) raised novel or difficult points of law about discovery of experimental material. These included requests for: (i) documents relating to experimental procedures, machinery setup, test results (including raw data) of the Samples regardless of whether the Samples had been in Element Six’s possession; (ii) documents relating to standards and/or benchmarks created as a result of experiments and used in the Technical Notes; (iii) original-format raw results/data for tests relied upon to prepare the Technical Notes, including original files and converted images; (iv) documents relating to work-up experiments used or relied on or referred to in the Technical Notes; and (v) documents relating to experiments conducted on the Samples that were subsequently abandoned and/or not relied upon by Element Six.
A further legal issue was the interaction between discovery and privilege. The judgment recognises that experimental documents may often be privileged from disclosure, and that discovery orders must be calibrated to avoid unfairness while respecting privilege and the practical burdens of disclosure. The court therefore had to determine how far discovery should extend into experimental work, including work-up and abandoned experiments, and how to treat experimental material that was not expressly referenced in the Notice of Experiments.
How Did the Court Analyse the Issues?
The Registrar’s analysis proceeded by examining the relevant legal principles governing discovery of experimental material in patent cases, with heavy reliance on three UK Patents Court decisions. The parties took sharply different positions on what the “current state of English law” required. IIa’s counsel argued that Mayne Pharma and Magnesium Elektron represented the operative approach and that Mayne Pharma had effectively overruled Electrolux. On that basis, IIa contended that disclosure should cover work-up experiments and experiments not expressly referred to in the Notice of Experiments, even if those experiments were abandoned.
Element Six’s counsel argued that Mayne Pharma and Magnesium Elektron were confined to the specific context of “work-up experiments”, while Electrolux remained operative for “abandoned experiments”. In other words, the court was asked to draw a principled distinction between experiments that were part of the experimental process leading to the Technical Notes (work-up) and experiments that were abandoned and not relied upon. This distinction mattered because the consequences for disclosure and privilege could be materially different.
To resolve these competing submissions, the Registrar first considered Electrolux Northern Ltd v Black & Decker. In Electrolux, the court dealt with a scenario where each party suggested the other had carried out experiments not disclosed. The question was whether the court should infer that undisclosed experiments were favourable to the party who did not disclose them and whether such inference should drive discovery. Laddie J in Electrolux disagreed with a contemporaneous view attributed to Jacob J in Honeywell that it “hardly” could be right to suppress experiments that did not support the suppressing party’s case. Instead, Electrolux emphasised that litigation proceeds on the basis that, save for discovery, each party puts forward material it believes supports its case or undermines its opponent’s case, and there is no general obligation to call witnesses or adduce evidence on every point.
Electrolux further reasoned that, in patent litigation, experiments often fail or are abandoned for many reasons unrelated to whether they would help an opponent. Experiments may be abandoned because they are unclear, too open to attack, because the expert would be a poor witness, because counsel decides there is a better and simpler way to prove the point, or even because initial impressions suggest they might support the opponent’s case but would require complicated evidence to disprove. On this view, it would be wrong to infer from abandonment alone that an experiment was favourable to the opposing party. Importantly, Electrolux also highlighted the practical and fairness consequences: if courts inferred that abandoned experiments were favourable and required disclosure, the party from whom discovery is sought could be placed in an “impossible position”, having to disclose experiments it intended to abandon and to explain why it abandoned them, potentially involving waiver of privilege in counsel’s advice and additional expert evidence.
Against this background, the Registrar’s task was to determine how these principles should apply to the Experiment Requests in the present case. The judgment extract indicates that the court would consider the ambit of Electrolux, Mayne Pharma, and Magnesium Elektron in detail before setting out its own views on the applicable legal principles. The key analytical challenge was to craft a discovery regime that enables a fair and full analysis of experimental proof—consistent with the purpose of O 87A r 6—without turning discovery into a broad fishing exercise into every experiment ever conducted, including those abandoned for legitimate reasons or those likely to attract privilege concerns.
Although the provided extract truncates the remainder of the judgment, the structure of the analysis is clear: the court first identifies the competing UK authorities and the parties’ interpretations, then evaluates the reasoning in Electrolux, and would proceed to compare that reasoning with Mayne Pharma and Magnesium Elektron to determine which principles apply to each category of experimental material. The court’s approach is therefore best understood as category-based: different types of experimental documents (raw data, standards/benchmarks, work-up experiments, abandoned experiments) raise different fairness and burden considerations, and the discovery scope should reflect those differences.
What Was the Outcome?
The Registrar granted Element Six’s and IIa’s applications to varying extents. The judgment indicates that on 27 August 2018, the court rendered judgment for both applications, with oral grounds given for SUM 1478 and for seven of the 12 requests in IIa’s SUM 1654. The remaining five requests in SUM 1654—namely the Experiment Requests—were addressed in the written grounds canvassed more fully in the judgment.
Practically, the outcome means that the court ordered specific discovery for certain categories of experimental documents while rejecting or limiting others, particularly where the requested material went beyond what was necessary for a fair analysis of the experiments described in the Notice of Experiments or where privilege and burden considerations were acute. The decision therefore provides guidance on how to frame discovery requests for experimental material in Singapore patent litigation, including how to distinguish between work-up experiments and abandoned experiments.
Why Does This Case Matter?
Element Six Technologies Ltd v IIa Technologies Pte Ltd is significant because it addresses a recurring and difficult problem in patent litigation: how to ensure that experimental evidence can be properly tested and analysed, while avoiding disproportionate discovery into experimental work that may be irrelevant, abandoned, or privileged. The decision is anchored in the Notice of Experiments Regime, which aims to promote procedural fairness by requiring parties to disclose the experiments they intend to rely on. This case clarifies that discovery of experimental material is not unlimited and must be calibrated to the purpose of the regime.
For practitioners, the case is particularly useful in drafting and responding to discovery applications in patent cases involving experimental proof. It signals that courts will scrutinise the category of experimental documents sought—raw data, standards/benchmarks, work-up experiments, and abandoned experiments—and will consider whether disclosure is necessary for a full and fair analysis of the facts in issue. It also highlights that privilege concerns are not abstract: requests that effectively require a party to disclose why it abandoned experiments, or that would force disclosure of privileged advice, may be resisted.
As a High Court (Registrar) decision, it is not the highest appellate authority, but it remains a persuasive and practically influential authority within Singapore patent practice. It also demonstrates how Singapore courts engage with foreign jurisprudence—particularly UK Patents Court decisions—to develop principled discovery rules in a specialised technical context. Lawyers should therefore treat this case as a reference point when advising on the scope of discovery for experimental material and when structuring Notices of Experiments to reduce later disputes.
Legislation Referenced
- Rules of Court (Cap 322, R 5, 2014 Rev Ed), O 87A r 6 (Notice of Experiments Regime)
- Rules of Court (Cap 322, R 5, 2014 Rev Ed), O 24 rr 1 and 5 (specific discovery)
- Supreme Court Practice Directions, Part V (electronic discovery)
Cases Cited
- Element Six Technologies v IIa Technologies [2017] SGHCR 16
- Element Six Technologies Ltd v IIa Technologies Pte Ltd [2018] SGHCR 13
- Electrolux Northern Ltd v Black & Decker [1996] FSR 595
- Mayne Pharma Pty Ltd v Debiopharm SA [2006] FSR 37
- Magnesium Elektron Ltd v Neo Chemicals and Oxides (Europe) Ltd [2017] EWHC 2957
- Honeywell Ltd v Appliance Components Ltd (February 22, 1996, unreported) (as discussed in Electrolux)
Source Documents
This article analyses [2018] SGHCR 13 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.