Element Six Technologies Ltd v IIa Technologies Pte Ltd [2020] SGHC 140

"I held that E6 should receive costs of the whole action on the standard basis." — Per Valerie Thean J, Para 13

Case Information

• Citation: [2020] SGHC 140 (Para 1)
• Court: High Court of the Republic of Singapore (Para 1)
• Decision Date: 22 July 2020 (Para 1)
• Coram: Valerie Thean J (Para 1)
• Counsel for Plaintiff/Appellant: Alvin Yeo SC, Daniel Chan, Vivian Seah, Daryl Kwok (WongPartnership LLP) (instructed), Chan Kwok Chuan Jason, Pang Sze Ray Melvin, Nicholas Tong Wei Jie and Ong Eu Jin (Amica Law LLC) (Para 1)
• Counsel for Defendant/Respondent: Tony Yeo Soo Mong, Meryl Koh Junning, Yeo Javier, Chiew Jing Yi and Loo Fang Hui (Drew & Napier LLC) (Para 1)
• Case Number: Suit No 26 of 2016 (Para 1)
• Area of Law: Civil Procedure — Costs (Para 1)
• Judgment Length: Short grounds of decision, approximately 20 paragraphs in the excerpt provided (Paras 1-20)

Summary

This judgment concerns costs arising out of the substantive patent dispute in Element Six Technologies Ltd v IIa Technologies Pte Ltd [2020] SGHC 26. The court recorded that E6 succeeded on the central infringement case in relation to Singapore Patent No 115872 (“SG 872”), while SG 508 was revoked on IIa’s counterclaim. The judge therefore framed the costs question as whether E6, as the overall successful party, should receive the costs of the suit, and whether IIa’s offer to settle had any costs consequences. (Para 3)

On the offer to settle issue, the court held that IIa’s offer was not a serious or genuine attempt at compromise. The judge reasoned that the offer effectively required E6 to abandon its claim while IIa retained the practical benefit of continuing the conduct E6 said infringed its patents, without any meaningful concession in return. The court also held that, even apart from that point, IIa could not show that E6 had obtained a judgment “not more favourable” than the offer, because E6 had secured substantive relief on SG 872, including injunctive and consequential orders, which the offer would have left unavailable in practical terms. (Paras 4-10)

On the main costs question, the court preferred the overall-success approach associated with Tullio Planeta and Re Elgindata (No 2) over IIa’s proposed issue-based approach. The judge held that E6 was the overall winner and should receive costs of the whole action on the standard basis, rejecting IIa’s attempt to split costs patent-by-patent. The court also noted that proportionality and reasonableness mattered, but did not accept that IIa’s conduct justified depriving E6 of its costs or shifting costs against it. (Paras 11-13, 14-20)

Was IIa’s Offer to Settle Relevant to Costs?

The court held that IIa’s offer to settle was irrelevant to the costs outcome. The judge first found that the offer was not a “serious and genuine offer” because it lacked any real element of compromise and effectively asked E6 to capitulate. The court described the offer as one that would return the parties to the pre-action status quo, with nothing gained from the litigation, which did not satisfy the policy underlying Order 22A. (Paras 4-6)

The judge then held that, even if the offer were treated as a valid offer to settle, IIa still could not satisfy the requirement that E6 had obtained a judgment “not more favourable” than the offer. The court reasoned that E6 had succeeded on SG 872 and obtained meaningful relief, including an injunction, delivery up and/or destruction, and an inquiry into damages or account of profits. By contrast, acceptance of the offer would have left both patents effectively unenforceable against IIa. (Paras 7-9)

What Did the Court Say About the Nature of a Valid Offer to Settle?

The court observed that a valid offer to settle must have “some semblance of reasonableness” and must be “a serious and genuine offer” containing “an element which would induce or facilitate settlement.” The judge cited Wyno Marine Pte Ltd (in liquidation) v Lim Teck Cheng and Others and Man B&W Diesel S E Asia Pte Ltd and another appeal v PT Bumi International Tankers and another appeal for those propositions. The court also noted that whether an offer is serious and genuine depends on the circumstances and issues of the case. (Para 5)

Applying that standard, the court held that IIa’s offer failed because it was not aimed at compromise. The judge noted that IIa’s proposal would have required E6 to discontinue its claim while IIa discontinued its counterclaim, but the practical effect was that E6 would gain nothing and IIa would continue the conduct E6 complained of. That was inconsistent with the settlement rationale underlying Order 22A. (Para 6)

What Were the Parties’ Competing Costs Arguments?

E6 argued that costs should follow the event and that, as the overall successful party, it should receive its costs of the suit. It relied on the principles in Re Elgindata Ltd (No 2), as adopted in Tullio Planeta v Maoro Andrea G, and accepted that it had lost on SG 508, proposing a 15% discount to reflect that partial failure. E6 also sought indemnity costs on the basis of IIa’s alleged unreasonable conduct. (Paras 11, 14-15)

IIa argued for an issue-based approach. It contended that because it succeeded on SG 508, it should obtain costs relating to that patent, while E6 should obtain costs relating to SG 872. IIa’s position shifted in presentation: it suggested 50% of its costs in writing, then equal apportionment in oral argument, and at one point appeared to suggest no order as to costs. The court treated this as an attempt to redefine the “event” narrowly by patent rather than by the suit as a whole. (Paras 12, 17)

Did the Court Prefer the Overall-Success Approach or the Issue-Based Approach?

The court preferred the overall-success approach. The judge held that E6 was the overall winner because it succeeded on the central infringement claim and obtained consequential relief, notwithstanding the revocation of SG 508. The court accepted E6’s submission that costs should follow the event, subject to a discount reflecting its failure on SG 508, and rejected IIa’s attempt to treat each patent as a separate “issue” for costs purposes. (Paras 11, 13-16)

The court explained that the issue-based approach proposed by IIa would have required the judge to treat each patent as a separate event and then set off the resulting costs entitlements. The judge noted that this would materially alter the starting point for costs liability, but did not accept that this was the correct approach on the facts of the case. Instead, the court treated the suit as a whole and assessed which party had succeeded overall. (Paras 17-20)

How Did the Court Explain the Issue-Based Approach?

The court noted that the phrase “issue-based approach” can be used in different senses. One sense, drawn from English practice and described in Summit Property Limited v Pitmans (A Firm), is an approach where the court decides costs issue by issue, asking who succeeded on each discrete issue and allocating costs accordingly. The judge quoted Chadwick LJ’s formulation to clarify that this approach differs from the overall-event approach because it narrows the meaning of “event” to each issue. (Paras 18-19)

The judgment also noted that IIa’s use of the phrase was not entirely consistent, because IIa sought a single costs order with set-off even while arguing for patent-by-patent allocation. The court therefore clarified the terminology before rejecting the approach on the merits. The judgment does not address this issue beyond the costs context. (Paras 17-19)

Why Did the Court Award Costs on the Standard Basis Rather Than Indemnity Costs?

The court held that E6 was entitled to costs on the standard basis, not indemnity costs. Although E6 had asked for indemnity costs on the basis of IIa’s unreasonable conduct, the judge did not accept that the conduct justified departing from the standard basis. The court’s reasoning focused instead on the overall success of E6 and the need for a proportionate costs order reflecting the partial failure on SG 508. (Paras 11, 13, 15-16)

The judgment emphasised proportionality and reasonableness in the exercise of discretion on costs. The judge stated that these considerations were relevant to the final order, but they did not warrant a punitive costs order against IIa or a denial of E6’s entitlement as the overall successful party. The court therefore settled on a standard-basis award for the whole action. (Para 13)

What Did the Court Say About Partial Success and Discounting Costs?

The court accepted that a successful party may be deprived of part of its costs where it has failed on a significant issue. E6 itself recognised this and proposed a 15% discount because SG 508 was revoked. The judge referred to Re Elgindata (No 2), Tullio Planeta, Cicada Cube Pte Ltd v National University Hospital (Singapore) Pte Ltd and another appeal, and Lee Tat Cheng v Maka GPS Technologies Pte Ltd as examples where courts adjusted costs to reflect partial success or unsuccessful challenges. (Paras 14-16)

However, the court did not adopt IIa’s more aggressive apportionment model. Instead, the judge treated E6 as the overall winner and used the established discretion on costs to reflect the partial loss through a discount, rather than by splitting the suit into separate costs entitlements. The judgment does not specify the exact discount ultimately applied in the excerpt provided, but it does state that E6 should receive costs of the whole action on the standard basis. (Paras 11, 13, 15-16)

What Did the Court Ultimately Order?

The court held that E6 should receive costs of the whole action on the standard basis. That was the final costs outcome after rejecting IIa’s offer-to-settle argument and its issue-based approach. The judge’s conclusion was grounded in E6’s overall success on the substantive patent dispute and the absence of any basis to displace the ordinary rule that costs follow the event. (Paras 10, 13)

The judgment does not address any separate order on disbursements or the precise quantum of costs in the excerpt provided. It also does not address any appeal from this costs decision. The operative holding is confined to the allocation of costs in the suit. (Paras 1, 13)

Why Does This Case Matter?

This case is significant because it illustrates how Singapore courts approach costs where a party succeeds overall but loses on a substantial issue. The judgment confirms that the court may still treat that party as the successful party for costs purposes, while adjusting the award to reflect partial failure. That is important in patent litigation, where multiple patents or multiple validity/infringement issues may be tried together. (Paras 11, 13-16)

The case is also useful on offers to settle. The court made clear that an offer which merely demands capitulation, without a genuine compromise element, may not attract the costs consequences of Order 22A. The judgment therefore reinforces that settlement offers must be commercially and legally meaningful if they are to shift costs risk. (Paras 4-10)

More broadly, the decision shows the court’s preference for a practical, suit-wide assessment of success rather than a mechanical issue-by-issue fragmentation of costs. That approach promotes proportionality and avoids turning costs into a second round of satellite litigation over every sub-issue. (Paras 13, 17-20)

Cases Referred To

Legislation Referenced

• Rules of Court (Cap 322, R 5, 2014 Rev Ed), Order 22A rule 9(3) (Paras 4, 7, 9)

Source Documents

• Original Judgment (PDF) — Singapore Law Watch
• Archived Copy (PDF) — Litt Law CDN

This article analyses [2020] SGHC 140 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.