Case Details
- Citation: [2018] SGHCR 13
- Case Title: Element Six Technologies Ltd v IIa Technologies Pte Ltd
- Court: High Court (Registrar)
- Date: 27 August 2018
- Before: Justin Yeo AR
- Hearing Dates: 26, 27 June, 17 July 2018
- Suit Number: HC/S 26 of 2016
- Summons Numbers: HC/SUM 1654 of 2018 (and related SUM 1478 of 2018)
- Plaintiff/Applicant: Element Six Technologies Ltd
- Defendant/Respondent: IIa Technologies Pte Ltd
- Legal Area: Civil Procedure – Discovery of Documents; Patents and Inventions – Experiments
- Procedural Context: Specific discovery applications in patent infringement proceedings; discovery of experimental material under the “Notice of Experiments Regime”
- Key Procedural Regime: O 87A r 6 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) (“Rules of Court”)
- Discovery Provisions Invoked: O 24 rr 1 and 5 of the Rules of Court; electronic discovery under Part V of the Supreme Court Practice Directions
- Judgment Length: 30 pages; 8,383 words
- Related Earlier Decision: Element Six Technologies v IIa Technologies [2017] SGHCR 16
- Cases Cited: [2017] SGHCR 16; [2018] SGHCR 13 (self-citation not applicable); UK Patents Court decisions including 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
Summary
This High Court (Registrar) decision addresses how discovery should be handled in patent litigation where a party intends to prove facts by experimental evidence. The case arose in the context of Element Six Technologies Ltd’s infringement suit against IIa Technologies Pte Ltd, involving two Singapore patents relating to chemical vapour deposition (CVD) diamond materials and methods for producing CVD diamonds of desired optical and colour characteristics. The dispute turned not only on infringement and provenance of diamond samples, but also on what experimental records and “experimental material” must be disclosed to enable a full and fair analysis of the experiments described in the plaintiff’s Notice of Experiments.
The Registrar granted discovery in part and, crucially, grappled with the tension between (i) the need for disclosure of experimental work relevant to the pleaded experimental facts and (ii) the protection afforded by legal professional privilege and the practical limits of discovery for experiments that were not relied upon or were abandoned. The decision is particularly significant for practitioners because it synthesises and evaluates competing English Patents Court authorities on the scope of disclosure for experiments, including work-up experiments and abandoned experiments, and it clarifies how those principles should be applied in Singapore patent proceedings.
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 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 CVD diamond samples (“the Samples”). Three of the Samples were allegedly trap diamonds 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 allegedly grown by IIa and then trap purchased from IIa itself. Element Six’s position was that these Samples were grown by IIa and that their properties, as demonstrated by Element Six’s experimental testing, fell within the asserted patent claims.
IIa’s defence challenged the factual foundation of Element Six’s experimental proof. IIa denied knowledge of Samples 1 to 3 and questioned their provenance. It also contended that it had no knowledge whether the conditions or characteristics of the Samples had been altered after they left IIa’s possession and custody. In addition, IIa disputed infringement and brought a counterclaim seeking revocation of the patents.
Procedurally, Element Six proceeded under the “Notice of Experiments Regime” in O 87A r 6 of the Rules of Court. Under this regime, a party seeking to establish any fact by experimental proof must serve a notice stating the facts it intends to prove, with full particulars of the experiments proposed to establish those facts. The purpose is to ensure that the opposing party can conduct a full and fair analysis of the experiments and their evidential value. Element Six filed its list of documents disclosing technical notes describing experiments conducted on the Samples on 6 October 2016 (“the Technical Notes”). It then filed its Notice of Experiments on 23 December 2016, setting out 22 facts to be proved experimentally. 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 scope of specific discovery of documents relating to experiments and experimental material in patent litigation, particularly where experimental evidence is governed by the Notice of Experiments Regime. 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 discovery of 12 classes of documents. The Registrar’s decision addressed many requests, but the excerpted portion focuses on five “Experiment Requests” (and related issues) that raised novel points of law on discovery of experimental material.
Within those Experiment Requests, the key sub-issues were: (a) whether discovery should extend beyond experiments expressly referred to in the Notice of Experiments to include other experimental procedures, machinery setup, test results, and raw data; (b) whether discovery should include documents relating to standards or benchmarks created as a result of experiments, where those standards were used or referred to in the Technical Notes; (c) whether discovery should require production of original-format raw results and data, including converted images; (d) whether “work-up experiments” (preparatory or intermediate experiments used to refine methods or interpret results) must be disclosed; and (e) whether experiments that were subsequently abandoned must be disclosed.
Finally, the decision had to account for the overlay of legal professional privilege. Experimental records often coexist with advice, internal deliberations, and decisions about what to test, what to abandon, and what to rely upon. The Registrar therefore had to balance the opponent’s right to disclosure against the protection of privileged communications and the practical burdens that broad discovery could impose.
How Did the Court Analyse the Issues?
The Registrar began by situating the Experiment Requests within the broader discovery framework applicable to patent litigation in Singapore. The Notice of Experiments Regime is designed to ensure a full and fair analysis of the experimental evidence that a party intends to rely on. However, the regime does not automatically answer how far discovery should go into the experimental process. The question is not merely whether experiments exist, but whether the documents sought are sufficiently connected to the facts to be proved and whether disclosure is proportionate and fair in the context of patent disputes.
For the Experiment Requests, both parties relied heavily on three English Patents Court decisions that took different approaches to disclosure of experimental material: Electrolux Northern Ltd v Black & Decker [1996] FSR 595 (“Electrolux”), Mayne Pharma Pty Ltd v Debiopharm SA [2006] FSR 37 (“Mayne Pharma”), and Magnesium Elektron Ltd v Neo Chemicals and Oxides (Europe) Ltd [2017] EWHC 2957 (“Magnesium Elektron”). The Registrar noted that counsel took divergent positions on what the “current state of English law” required and whether later cases had modified earlier principles.
IIa’s counsel argued that Mayne Pharma and Magnesium Elektron were the operative authorities and that Mayne Pharma had “overruled” Electrolux. On that view, disclosure should extend to work-up experiments as well as experiments not expressly referred to in the Notice of Experiments, regardless of whether those experiments were abandoned. This approach favoured a broader discovery regime that would allow the opposing party to test the robustness of the experimental methodology and the reliability of the results.
Element Six’s counsel argued that Mayne Pharma and Magnesium Elektron applied only in the specific context of work-up experiments, while Electrolux remained operative for abandoned experiments. On this narrower approach, discovery for abandoned experiments should not be compelled because abandoned experiments may be abandoned for many reasons unrelated to whether they would have supported the opponent’s case, and requiring disclosure could force disclosure of privileged advice and impose significant burdens.
The Registrar then analysed Electrolux in detail. In Electrolux, the dispute involved allegations that experiments had been carried out but not disclosed, and the court was asked to infer that undisclosed experiments were favourable to the opposing party and should therefore be disclosed. The reasoning in Electrolux rejected a simplistic inference that abandoned experiments must be favourable. The Registrar highlighted the logic: litigation proceeds on the basis that each party puts forward material it believes supports its case, and there is no general obligation to call witnesses or adduce evidence on every point. In the patent context, experiments often fail or are abandoned for a variety of reasons, including technical uncertainty, vulnerability to attack, the quality of expert evidence, strategic choices, or the existence of a better method. Accordingly, abandoning an experiment does not necessarily mean it would have supported the opponent’s case.
Electrolux also emphasised the practical consequences of compelling disclosure of abandoned experiments. If the court were likely to infer that abandoned experiments supported the opposing party, the party from whom discovery is sought would be placed in an “impossible position”: it would have to disclose the abandoned experiments and explain why they were abandoned. That explanation could require waiving privilege over counsel’s advice to abandon and could require additional expert evidence to justify why the experiments were unnecessary or unhelpful. The Registrar treated this as a key policy consideration in calibrating discovery obligations.
Although the excerpt does not include the Registrar’s full synthesis of Mayne Pharma and Magnesium Elektron, the structure of the analysis indicates that the Registrar’s approach was to extract workable principles from the competing authorities and then apply them to the Singapore procedural context. The Registrar’s focus on the rationale for limiting discovery—particularly where privilege and proportionality are engaged—suggests that the court would not adopt an unqualified “everything experimental must be disclosed” approach. Instead, the court would likely distinguish between categories of experimental material that are closely tied to the pleaded experimental facts and those that are more remote, such as abandoned experiments or experiments whose disclosure would require privileged explanations.
In relation to the specific Experiment Requests, the Registrar’s reasoning would have required careful attention to the evidential role of the requested documents. For example, raw data and original-format results are often essential to assess whether the Technical Notes accurately reflect the underlying measurements. Similarly, standards and benchmarks used in experiments may be critical to interpret results and ensure methodological transparency. Conversely, documents relating to experiments not relied upon, or experiments abandoned, may be less directly connected to the facts to be proved and more likely to engage privilege and burdensome disclosure.
What Was the Outcome?
The Registrar rendered judgment on 27 August 2018 for both applications. Oral grounds were given for SUM 1478 and for seven of the 12 requests in SUM 1654. The remaining five requests in SUM 1654—identified as the Experiment Requests—raised novel points of law on discovery of material relating to experiments, and these were addressed in the written grounds.
Practically, the outcome was a partial grant of discovery, reflecting a calibrated approach: the court was willing to order disclosure of experimental records that were necessary for a full and fair analysis of the experimental evidence, but it resisted an overly expansive approach that would compel disclosure of experimental material in circumstances where privilege and proportionality concerns were likely to be engaged.
Why Does This Case Matter?
This decision matters because it provides guidance on how Singapore courts should manage discovery in patent cases where experimental evidence is central. The Notice of Experiments Regime aims to promote fairness by ensuring that the opposing party can understand and challenge the experiments that will be used to prove facts. However, the regime does not eliminate the need for judicial control over the scope of discovery. Element Six v IIa demonstrates that courts will scrutinise the categories of documents sought, their relevance to the experimental facts, and the practical and legal constraints that arise from privilege.
For practitioners, the decision is particularly useful in planning discovery strategies and drafting Notices of Experiments. Plaintiffs should anticipate that courts may require production of raw data and original-format records where those documents are necessary to evaluate the Technical Notes and the experimental facts. Defendants, meanwhile, can use the decision to argue for disclosure of experimental material that underpins the pleaded experimental proof, including standards and benchmarks used in the experiments. At the same time, defendants should be cautious about seeking discovery of abandoned experiments or other experimental work where the court may treat such requests as disproportionate or likely to require privileged explanations.
From a precedent perspective, the Registrar’s engagement with Electrolux, Mayne Pharma, and Magnesium Elektron shows that Singapore courts are willing to draw on English patent discovery jurisprudence while adapting it to Singapore’s procedural framework and privilege protections. The decision therefore serves as an important reference point for future disputes about the boundary between permissible experimental disclosure and impermissible fishing expeditions into the experimental process.
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
- 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
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.