Case Details
- Citation: [2010] SGCA 51
- Title: Martek Biosciences Corp v Cargill International Trading Pte Ltd
- Court: Court of Appeal of the Republic of Singapore
- Date of Decision: 28 December 2010
- Civil Appeal No: Civil Appeal No 55 of 2010
- Coram: Chao Hick Tin JA; Andrew Phang Boon Leong JA
- Plaintiff/Applicant (Appellant): Martek Biosciences Corp
- Defendant/Respondent (Respondent): Cargill International Trading Pte Ltd
- Legal Area: Civil Procedure
- Procedural Posture: Appeal against the High Court’s refusal of an interlocutory application for leave to adduce further evidence in an ongoing High Court appeal challenging revocation of a Singapore patent
- High Court Decision (reported): Martek Biosciences Corp v Cargill International Trading Pte Ltd [2010] 3 SLR 927
- Underlying Tribunal Decision: Cargill International Trading Pte Ltd v Martek Biosciences Corporation [2009] SGIPOS 12
- Tribunal: Deputy Registrar of Patents and Principal Assistant Registrar of Patents (collectively “the Tribunal”)
- Patent at Issue: Singapore patent P-No 42669 (“the Patent”)
- Subject Matter of Patent: Method for producing arachidonic acid (“ARA”) in triglyceride form for use in infant formula
- Key Claim Feature: Claim required that “the oil comprises at least 50% ARA”
- Interlocutory Application: Summons No 234 of 2010 seeking leave to adduce further evidence
- High Court Appeal: Originating Summons No 1418 of 2009 (“OS 1418/2009”)
- Statutes/Rules Referenced: Patents Act; Subordinate Courts Act; Supreme Court of Judicature Act; Trade Marks Act (as referenced in the judgment’s discussion of procedural regimes); Rules of Court (Cap 322, R 5, 2006 Rev Ed) including O 55 r 6(2), O 87A r 13(2), and related provisions
- Counsel: Lai Tze Chang Stanley SC, Vignesh Vaerhn and Lim Ming Hui Eunice (Allen & Gledhill LLP) for the appellant; Daniel Koh (briefed) (Eldan Law LLP) and Low Wei Ling Wendy (Rajah & Tann LLP) for the respondent
- Judgment Length: 17 pages, 9,607 words
- Prior/Related Authorities Cited (as provided): [2009] SGIPOS 12; [2010] SGCA 51
Summary
Martek Biosciences Corp v Cargill International Trading Pte Ltd [2010] SGCA 51 is a Court of Appeal decision addressing a narrow but practically significant procedural question in patent litigation: what test governs an application for leave to adduce further evidence in an appeal from the Patents Registrar to the High Court under O 87A r 13(2) of the Rules of Court (ROC). The appellant, Martek, sought to introduce experimental evidence after the Tribunal had revoked its Singapore patent for lack of inventiveness. The High Court refused leave, and Martek appealed to the Court of Appeal.
The Court of Appeal upheld the High Court’s approach and, in substance, endorsed the application of the Ladd v Marshall framework (with appropriate modifications) to the O 87A r 13(2) context. The Court emphasised that parties should exercise due diligence in securing and presenting relevant evidence before the Tribunal. Where the evidence could have been obtained earlier, and where the proposed evidence would not materially affect the outcome—particularly because the patent had been found invalid on other independent prior art—the court is unlikely to grant leave. The appeal therefore failed, and the proposed further evidence was not admitted.
What Were the Facts of This Case?
The Patent concerned a method for producing arachidonic acid (“ARA”) in triglyceride form for use in infant formula. The patent claims included a quantitative limitation: one claim required that “the oil [made using the patented method] comprises at least 50% ARA”. This threshold became central to the inventiveness analysis because the respondent’s invalidity case relied on prior art that allegedly disclosed the same method and produced oil with a high ARA content.
Following an application by Cargill to revoke the Patent on grounds of lack of novelty or inventiveness, the matter proceeded before the Tribunal over four days (9 to 12 February 2009). After hearing evidence and submissions, the Tribunal reserved judgment. On 3 November 2009, it issued written reasons revoking the Patent for lack of inventiveness. The Tribunal’s reasoning relied, among other things, on a particular prior art disclosure referred to as “D4a”, which was the English translation of a Japanese patent describing a skin cosmetic product that also used ARA.
In D4a, the prior art described an experiment that purportedly produced oil with all the features of Martek’s claim, including an ARA content figure of 72.9%. This figure was treated as matching Martek’s claim requirement that the oil comprises at least 50% ARA. The Tribunal made findings on invalidity relying on D4a, and Martek’s dissatisfaction with the Tribunal’s decision led it to file an appeal to the High Court (OS 1418/2009) on 15 December 2009.
While the High Court appeal was pending, Martek filed an interlocutory application (Summons No 234 of 2010) on 15 January 2010 seeking leave to adduce further evidence. The further evidence related to a repeat of the D4a experiment. Martek’s position was that it had conducted the experiment and obtained results showing that the ARA content was less than 50%, contrary to the 72.9% figure stated in D4a. The High Court judge dismissed the interlocutory application on 12 March 2010, and Martek appealed that refusal to the Court of Appeal.
What Were the Key Legal Issues?
The principal legal issue was procedural: what test should the High Court apply when deciding whether to grant leave to adduce further evidence under O 87A r 13(2) of the ROC in an appeal from the Patents Registrar to the High Court? Although O 87A r 13(2) provides that an appeal is by way of rehearing and that “except with the leave of the Court, no further evidence shall be given”, the judgment noted that Singapore had not previously decided the precise test for such leave in this specific appellate pathway.
A closely related issue concerned the interaction between the statutory/regulatory language of O 87A r 13(2) and the established common law approach to further evidence on appeal. In particular, the High Court had analogised to the Ladd v Marshall test, which is traditionally applied when a party seeks to adduce new evidence on appeal. The Court of Appeal had to determine whether that approach was appropriate in the O 87A r 13(2) context and, if so, how it should be adapted.
Finally, the case also raised a practical evidential question: even if the Ladd v Marshall conditions were satisfied, would the proposed experimental evidence have any material bearing on the High Court appeal? This mattered because the Tribunal had revoked the patent not only on D4a but also on other prior art. The court therefore had to consider whether the new evidence would realistically affect the outcome of the invalidity appeal.
How Did the Court Analyse the Issues?
The Court of Appeal began by framing the legal question: the test for leave to adduce further evidence under O 87A r 13(2) in appeals from the Patents Registrar to the High Court. The Court noted that the High Court judge had treated such an appeal as “akin” to an appeal from the High Court to the Court of Appeal, in the sense that it involved a rehearing but with constraints on additional evidence. This analogy supported the application of the Ladd v Marshall framework, albeit with modifications depending on the nature of the appeal and the factual matrix.
In analysing the procedural regime, the Court of Appeal compared O 87A r 13(2 with other ROC provisions dealing with further evidence. The judgment highlighted that O 87A r 13(2 is similar in structure to O 87 r 4(2) (appeals from the Trade Marks Registrar to the High Court), but differs from O 55 r 6(2) (appeals to the High Court from other courts/tribunals/persons). The Court observed that O 55 r 6(2 appears more liberal, because it expressly empowers the court to require further evidence on questions of fact. By contrast, O 87A r 13(2 contains a default prohibition on further evidence unless the court grants leave.
The Court then considered the relevant authorities on how Ladd v Marshall should be applied in Singapore. It referred to cases such as Su Sh-Hsyu v Wee Yue Chew, which applied the Ladd v Marshall test in the context of further evidence on appeal, and also to Lassiter Ann Masters v To Keng Lam (alias Toh Jeanette), which held that a judge hearing an appeal from a registrar in chambers exercised a confirmatory rather than appellate jurisdiction and therefore had discretion to admit further evidence without strict adherence to the first Ladd v Marshall condition. The Court also referenced WBG Network (S) Pte Ltd v Sunny Daisy Ltd, which clarified that where the first instance hearing did not have the characteristics of a trial, the party seeking leave might still need to satisfy the Ladd v Marshall conditions, because the judge was entitled but not obliged to employ them.
Against this backdrop, the Court of Appeal endorsed the High Court’s approach: the Ladd v Marshall test should apply to O 87A r 13(2) applications, but with appropriate modifications. The key practical consequence was that the party seeking leave must explain why the evidence was not adduced earlier, demonstrate that it is credible and relevant, and show that it would likely have a significant bearing on the issues before the appellate court. The Court’s emphasis on due diligence was particularly important in patent invalidity proceedings, where the Tribunal’s role is to determine validity based on the evidence presented at the hearing.
Applying these principles to the facts, the Court of Appeal agreed with the High Court that Martek should have either conducted the experiment before the Tribunal hearing or sought leave during the Tribunal hearing to adduce the results. At the latest, Martek could have conducted the experiment between the last day of the Tribunal hearing (12 February 2009) and the date the Tribunal released its judgment (3 November 2009). Martek’s failure to do so indicated a lack of due diligence in securing relevant evidence before the Tribunal.
The Court also addressed the evidential reliability and verification concerns. Martek had not enclosed any report or results of the experiment when seeking leave. This meant the respondent could not verify the credibility of the alleged experimental outcomes. In disputes about technical subject matter—such as ARA content in oils—courts are understandably cautious about admitting evidence that cannot be tested or checked against the original experimental protocol and data.
Finally, the Court considered materiality. Even if the D4a experiment results were inconsistent with the D4a claim figure, the Tribunal had already found the patent invalid based on other prior art besides D4a. Therefore, the proposed further evidence would not have a major or significant bearing on the High Court appeal. This reinforced the conclusion that leave should not be granted, because the court’s discretion under O 87A r 13(2) is not exercised in a vacuum; it is guided by whether the further evidence would realistically affect the appellate determination.
What Was the Outcome?
The Court of Appeal dismissed Martek’s appeal. The practical effect was that the High Court’s refusal to admit the “Alleged Further Evidence” stood, and Martek could not rely on the post-hearing experimental results to challenge the Tribunal’s finding of invalidity.
For litigants, the decision confirms that in patent appeals from the Patents Registrar to the High Court, parties should treat the Tribunal hearing as the primary evidential battleground. Attempts to introduce new technical evidence after the Tribunal has reserved or delivered its decision face significant procedural and substantive hurdles, especially where due diligence is lacking and where the new evidence would not materially alter the invalidity analysis.
Why Does This Case Matter?
Martek Biosciences v Cargill International Trading is important because it clarifies the procedural test for admitting further evidence in the specific appellate pathway under O 87A r 13(2). Prior to this decision, Singapore had not definitively decided the governing approach in this context. The Court of Appeal’s endorsement of the Ladd v Marshall framework—subject to appropriate modifications—provides a clear doctrinal anchor for future applications.
Substantively, the case also illustrates how courts evaluate both diligence and materiality in technical patent disputes. The Court’s reasoning shows that even potentially relevant experimental evidence may be excluded if it could have been obtained earlier, if it cannot be verified, or if the patent has already been invalidated on independent grounds. This is a cautionary tale for patent litigants: evidence planning must be done early, and experimental replication should be treated as part of the pre-hearing preparation rather than a fallback after an adverse decision.
For practitioners, the decision has immediate implications for strategy in patent revocation appeals. Counsel should (i) identify key prior art disclosures that will be relied upon by the Tribunal, (ii) consider whether replication experiments are necessary to rebut specific quantitative or technical assertions, and (iii) if experiments cannot be completed before the hearing, seek procedural permission during the Tribunal process rather than after judgment. The decision thus supports a disciplined approach to evidence management and reduces the likelihood of wasted effort on evidence that will be procedurally barred at the appellate stage.
Legislation Referenced
- Patents Act
- Subordinate Courts Act
- Supreme Court of Judicature Act
- Trade Marks Act
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), including:
- Order 55 r 6(2)
- Order 87A r 13(2)
- Order 57 r 13(2)
Cases Cited
- Ladd v Marshall [1954] 1 WLR 1489
- Su Sh-Hsyu v Wee Yue Chew [2007] 3 SLR(R) 673
- Lassiter Ann Masters v To Keng Lam (alias Toh Jeanette) [2004] 2 SLR(R) 392
- WBG Network (S) Pte Ltd v Sunny Daisy Ltd [2007] SLR(R) 1133
- Cargill International Trading Pte Ltd v Martek Biosciences Corporation [2009] SGIPOS 12
- Martek Biosciences Corp v Cargill International Trading Pte Ltd [2010] 3 SLR 927
Source Documents
This article analyses [2010] SGCA 51 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.