Case Details
- Title: Martek Biosciences Corp v Cargill International Trading Pte Ltd
- Citation: [2010] SGHC 135
- Court: High Court of the Republic of Singapore
- Date of Decision: 03 May 2010
- Case Number: Originating Summons No 1418 of 2009/E; Summons No 234 of 2010/Q
- Judge: Tay Yong Kwang J
- Coram: Tay Yong Kwang J
- Plaintiff/Applicant: Martek Biosciences Corp
- Defendant/Respondent: Cargill International Trading Pte Ltd
- Procedural Context: Patent revocation appeal; interlocutory application for leave to adduce further evidence
- Legal Area: Civil Procedure – Appeal – Leave – Admission of Further Evidence
- Statutory Framework Referenced (as stated in extract): Patents Act (Cap 221, 2005 Rev Ed) s 80(1)(a) and (c); Rules of Court (Cap 322, R 5, 2006 Rev Ed) Orders 55 and 87A; Supreme Court of Judicature Act (Cap 322, 2007 Rev Ed) s 37(3)
- Tribunal/Registrar Decision Under Appeal: Cargill International Trading Pte Ltd v Martek Biosciences Corporation SGIPOS 12 (grounds of decision dated 3 November 2009)
- Patent at Issue: Singapore Patent P-No. 42669 (“Arachidonic Acid and Methods for the production and use thereof”)
- Key Prior Art Mentioned in Extract: D1 to D10; D4a (English translation of Japanese document D4)
- Fresh Evidence Sought: Leave to conduct an experiment described in D4a and to adduce evidence relating to it
- Length of Judgment: 18 pages; 9,181 words
- Counsel for Applicant: Lai Tze Chang Stanley SC, Vignesh Vaerhn and Lim Ming Hui Eunice (Allen & Gledhill LLP)
- Counsel for Respondent: Daniel Koh (briefed) (Eldan Law LLP) and Wendy Low Wei Ling (Rajah & Tann LLP)
- Cases Cited (as provided): [2010] SGHC 16; [2010] SGHC 135
Summary
Martek Biosciences Corp v Cargill International Trading Pte Ltd concerned an interlocutory application in the context of a patent revocation appeal. The respondent had succeeded before the Patents Tribunal in revoking the applicant’s Singapore patent under s 80(1)(a) and (c) of the Patents Act. The applicant then appealed to the High Court. While the substantive appeal had not yet been heard, the applicant sought leave to adduce “fresh evidence” on the appeal—specifically, to conduct an experiment described in a prior art document (D4a) and to adduce evidence relating to that experiment.
The central procedural question was whether the High Court, hearing an appeal from the Patents Tribunal under Order 87A rule 13(2) of the Rules of Court, should apply the restrictive principles commonly associated with the admission of further evidence on appeal (as articulated in Ladd v Marshall). The applicant argued that those principles should not apply because the appeal is a “rehearing” and the High Court should be entitled to revisit the totality of the evidence. The court’s analysis focused on the nature of the appeal, the statutory and procedural wording, and the appropriate test for admitting further evidence in this specific patent appeal setting.
What Were the Facts of This Case?
Both parties operated in the infant formula business. The applicant, Martek Biosciences Corporation, held a Singapore patent (P-No. 42669) entitled “Arachidonic Acid and Methods for the production and use thereof”. The invention, as described in the patent abstract, related to processes for producing arachidonic acid containing oils—preferably free of eicosapentaneoic acid—and to compositions containing very high amounts of arachidonic acid in triglyceride form. A preferred embodiment involved cultivating Mortierella alpina under conditions yielding triglyceride oil with particularly high levels of arachidonic acid residues, harvesting biomass, extracting and recovering the oil, and using it as an additive for infant formula.
In the patent specification, arachidonic acid was described as a structural lipid and a direct precursor for various eicosanoids (including PGE2, PGI2, TxA2, LTB4 and LTC4), which were said to have regulatory effects on lipoprotein metabolism, blood rheology, vascular tone, leucocyte function and platelet activation. The patent also emphasised that arachidonic acid cannot be synthesised de novo in humans and must be provided through diet, which is particularly important during infancy. It further stated that human breast milk contains high levels of arachidonic acid, but that many mothers do not breastfeed or do not do so for the entire period of rapid infant growth, leading to reliance on infant formula.
Before the Patents Tribunal, the respondent sought revocation of the patent. The respondent relied on ten prior art documents (D1 to D10) and argued that the applicant’s claims were not patentable and that the specification failed to disclose the invention clearly and completely for it to be performed by a person skilled in the art. The revocation proceedings commenced on 20 January 2006, and the hearing before the Tribunal took place from 9 to 12 February 2009. The Tribunal delivered its grounds of decision on 3 November 2009, granting revocation after a four-day hearing.
In the High Court appeal, the applicant challenged the Tribunal’s findings on multiple grounds, including lack of inventive step and/or lack of novelty for various claims, often based on combinations of prior art references, including D4a. Pending the hearing of the appeal, the applicant brought an interlocutory application for leave to adduce further evidence. The fresh evidence related to an experiment described in D4a. During cross-examination before the Tribunal, it transpired that the respondent’s witness, Dr William R Barclay, had not personally conducted the experiment described in D4a. The applicant therefore sought leave to conduct the experiment itself and to adduce evidence relating to it on appeal.
What Were the Key Legal Issues?
The primary legal issue was the correct legal test for admitting further evidence on an appeal from the Patents Tribunal to the High Court. The applicant’s application was brought under Order 55 rule 6(2) and/or Order 87A rule 13(2) of the Rules of Court. The question was whether the court should apply the restrictive Ladd v Marshall principles—typically used when an appellate court considers whether to admit evidence that was not before the trial court—given that the appeal under Order 87A rule 13(2) is described as a “rehearing”.
A closely related issue was the proper characterisation of the High Court’s function in such an appeal. The applicant argued that the High Court’s “rehearing” meant it was not confined by the Ladd v Marshall restrictions and could revisit the totality of the evidence. The applicant relied on authority distinguishing confirmatory and appellate functions in other contexts, including Teo Chee Yeow Aloysius and another v Tan Harry and another, to support the proposition that the High Court judge was exercising an unfettered discretion in a rehearing from a Registrar to a judge in chambers.
Finally, the court had to consider whether admitting the fresh evidence would cause prejudice to the respondent and whether the evidence was appropriately connected to the issues on appeal—particularly in a patent revocation context where novelty and inventive step are often assessed against prior art and where experiments may be relevant to whether a prior art disclosure is enabling or accurate.
How Did the Court Analyse the Issues?
The court began by setting out the procedural framework. Order 87A rule 13(2) of the Rules of Court governs appeals from the Registrar of Patents (and, by extension, the Tribunal decision in this context). It provides that an appeal shall be by way of rehearing and that the evidence used on appeal shall be the same as that used before the Registrar, except with the leave of the court, no further evidence shall be given. This wording is significant: it expressly contemplates the possibility of further evidence, but only with leave, and it starts from a presumption against additional evidence.
The court contrasted this with other appeal provisions, notably Order 55 rule 2(1), which governs appeals from lower courts, tribunals or persons to the High Court and provides that such appeals are by way of rehearing. Under Order 55 rule 6(2), the High Court has powers to require further evidence on questions of fact and may direct how it is given. The court’s analysis therefore required careful attention to the different statutory language governing different appellate routes, because the “rehearing” label does not necessarily mean the same procedural posture in every context.
In addressing the applicant’s argument that Ladd v Marshall should not apply, the court examined the principles that govern admission of further evidence in other appellate contexts. It noted that Ladd v Marshall sets out three classic requirements: (1) the evidence could not have been obtained with reasonable diligence for use at the trial; (2) the evidence would probably have an important influence on the result, though it need not be decisive; and (3) the evidence must be apparently credible, though it need not be incontrovertible. The court also observed that these principles have been applied in Singapore in appropriate circumstances.
However, the court’s analysis did not treat the Ladd v Marshall test as automatically controlling. Instead, it focused on whether the nature of the appeal under Order 87A rule 13(2) justifies a different approach. The applicant’s position was that because the appeal is a rehearing, the High Court should be able to revisit the totality of the evidence and is not fettered by the restrictive Ladd v Marshall principles. The court considered this argument in light of the express wording of Order 87A rule 13(2), which preserves the “same evidence” rule and only permits further evidence with leave. In other words, even if the appeal is a rehearing, the procedural rule still signals a policy against supplementation of the record unless the court is satisfied that leave is warranted.
The court also considered analogies drawn from other jurisdictions and from UK trade mark appeals, where restrictive principles may be treated differently depending on the nature of the statutory appeal. The applicant attempted to show that UK cases had held that Ladd v Marshall does not apply where the question is whether further evidence should be filed on a trade mark appeal from a registrar to the High Court. While the extract provided does not include the court’s final conclusions on those UK analogies, the court’s reasoning indicates that it treated such comparisons as helpful but not determinative, because the Singapore procedural text and the patent appeal context must remain central.
In applying these principles to the facts, the court had to evaluate the relevance and necessity of the proposed fresh evidence. The fresh evidence was not merely additional testimony; it involved conducting an experiment described in a prior art document. The applicant’s justification was procedural and evidential: during cross-examination before the Tribunal, it emerged that the respondent’s witness had not personally conducted the experiment described in D4a. The applicant therefore sought to test the prior art disclosure by replicating the experiment. This raised questions about whether the evidence was genuinely “fresh” in the sense of being unavailable earlier with reasonable diligence, and whether it would likely influence the outcome on issues such as enablement, accuracy, or the factual basis for the Tribunal’s findings.
What Was the Outcome?
The High Court’s decision addressed whether leave should be granted to adduce the fresh evidence on the appeal. The outcome turned on the court’s assessment of the appropriate test for further evidence in a patent revocation appeal under Order 87A rule 13(2), and whether the proposed experimental evidence met the threshold for admission.
Based on the court’s reasoning in the extract, the practical effect of the decision was to clarify the evidential gatekeeping approach for patent appeals from the Patents Tribunal to the High Court—particularly where the applicant seeks to supplement the record by conducting experiments relating to prior art disclosures after the Tribunal hearing.
Why Does This Case Matter?
This case is significant for practitioners because it is one of the early Singapore decisions dealing with the admission of further evidence in the specific procedural setting of a patent revocation appeal from the Patents Tribunal to the High Court. The court’s discussion of Order 87A rule 13(2) highlights that “rehearing” does not automatically mean that parties may freely expand the evidential record. Instead, the rule’s “same evidence” starting point and the requirement of leave reflect a policy of finality and procedural discipline.
For patent litigators, the case also illustrates how experimental evidence may be treated when it relates to prior art. Where a party seeks to replicate experiments described in prior art documents, the court will likely scrutinise whether the evidence could have been obtained earlier, whether it is credible and relevant to the issues on appeal, and whether admitting it would unfairly prejudice the other side. This is especially important in novelty and inventive step disputes, where the evidential record can be decisive.
More broadly, the decision provides guidance on how Singapore courts may approach the Ladd v Marshall principles in appeals from specialist bodies. Even where the appeal is by way of rehearing, the court must reconcile the general appellate principles with the specific procedural text governing patents. Lawyers should therefore treat this case as a procedural authority when preparing interlocutory applications to adduce further evidence in patent appeals, ensuring that the application is framed around the statutory “leave” requirement and the policy considerations embedded in Order 87A rule 13(2).
Legislation Referenced
- Patents Act (Cap 221, 2005 Rev Ed) s 80(1)(a) and (c)
- Rules of Court (Cap 322, R 5, 2006 Rev Ed) Order 55 rule 6(2)
- Rules of Court (Cap 322, R 5, 2006 Rev Ed) Order 55 rule 2(1)
- Rules of Court (Cap 322, R 5, 2006 Rev Ed) Order 87A rule 13(2)
- Supreme Court of Judicature Act (Cap 322, 2007 Rev Ed) s 37(3)
Cases Cited
- Ladd v Marshall [1954] 1 WLR 1489
- Teo Chee Yeow Aloysius and another v Tan Harry and another [2004] 3 SLR(R) 588
- The Vishva Apurva [1992] 1 SLR(R) 912
- [2010] SGHC 16
- [2010] SGHC 135
Source Documents
This article analyses [2010] SGHC 135 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.