Case Details
- Citation: [2015] SGHCR 4
- Case Title: Towa Corp v ASM Technology Singapore Pte Ltd and another
- Court: High Court of the Republic of Singapore
- Date of Decision: 02 February 2015
- Coram: Justin Yeo AR
- Case Number: Suit No 359 of 2013
- Summons No 4919 of 2014: Defendants’ Application for specific discovery
- Summons No 5125 of 2014: Plaintiff’s Application for specific discovery
- Plaintiff/Applicant: Towa Corporation (“Towa Corp”)
- Defendants/Respondents: ASM Technology Singapore Pte Ltd (First Defendant) and ASM Pacific Technology Ltd (Second Defendant)
- Legal Areas: Civil Procedure — Discovery; Patents and Inventions — Infringement
- Judgment Length: 18 pages, 8,726 words
- Counsel for Plaintiff: Mr Foo Maw Jiun and Mr Ng Chong Yuan (Rodyk & Davidson LLP)
- Counsel for Defendants: Mr Daniel Lim (Joyce A Tan & Partners)
- Statutes Referenced: Rules of Court (Cap 322, R 5, 2006 Rev Ed), in particular O 24 r 5 and O 87A r 5; Patents Act (as referenced in the CIPA Guide to the Patents Act)
- Secondary Materials Cited/Referenced: CIPA Guide to the Patents Act (including reference to Glaverbel); Singapore Civil Procedure (2015) vol 1 (G P Selvam gen ed)
Summary
This High Court decision concerns interlocutory applications for specific discovery in a patent infringement suit. Towa Corporation, the proprietor of Singapore Patent No SG49740, sued ASM Technology Singapore Pte Ltd and ASM Pacific Technology Ltd for infringement by an IDEALmold machine. The dispute at this stage was not the merits of infringement or validity, but the scope of documentary disclosure that each party should be compelled to produce for the purposes of the litigation.
Before Justin Yeo AR, the Defendants sought specific discovery of 13 categories of documents, while the Plaintiff sought discovery of eight categories. The court’s analysis focused on whether the requested categories were sufficiently targeted, relevant to pleaded issues (particularly validity grounds such as novelty, obviousness, and insufficiency), and whether the categories were overbroad or overlapped with other categories such that the request became impractical or unfair. The court declined to order discovery for certain categories, including Categories 2 and 6, largely because the Plaintiff had explained on oath that the relevant documents were no longer in its possession, custody or power and the explanation was accepted as adequate in the circumstances.
The decision also addressed the approach to discovery of “opinions” and submissions made by a patentee in other jurisdictions. While the Defendants relied on an English authority (Vickers) and commentary in Singapore Civil Procedure, the court noted that the position in Vickers was not followed in a later English case (Glaverbel). This signalled that Singapore courts would not simply adopt English discovery principles without considering subsequent developments and the more nuanced approach reflected in later authority and commentary.
What Were the Facts of This Case?
Towa Corp is a Japanese company and the proprietor of Singapore Patent No SG49740. The patent relates to moulding resin to seal electronic parts, including semiconductor devices. The First Defendant, ASM Technology Singapore Pte Ltd, is incorporated in Singapore and provides semiconductor equipment and materials. It is wholly owned by the Second Defendant, ASM Pacific Technology Ltd, which is incorporated in the Cayman Islands and publicly listed in Hong Kong. For convenience, the parties were referred to collectively as “the Defendants”.
Towa Corp commenced the infringement suit in 2013. The allegedly infringing product is an IDEALmold machine. The background to the suit had been set out in an earlier decision, Towa Corporation v ASM Technology Singapore Pte Ltd [2014] SGHCR 16. The present decision, dated 2 February 2015, dealt with discovery applications brought after pleadings and in preparation for the trial process.
Both applications were brought under O 24 r 5 of the Rules of Court, with reference also made to O 87A r 5. The Defendants’ Summons No 4919 of 2014 sought specific discovery of 13 categories of documents. The Plaintiff’s Summons No 5125 of 2014 sought specific discovery of eight categories. The court’s reasons in this extract primarily concern the Defendants’ application, though the procedural context is that both sides were attempting to obtain documentary material to support their respective positions on infringement and validity.
In particular, the Defendants’ Category 1 targeted documents relevant to validity issues (novelty, obviousness, and insufficiency) within a defined time window around the earliest claimed priority date. Categories 2 and 6 targeted documents relating to the Plaintiff’s research and experimental work up to publication, again tied to specific claim features and to the same validity grounds. Category 3 targeted documents relating to the Plaintiff’s opinions expressed in other jurisdictions, including its counter to attacks on validity and its approach to infringement. The court’s treatment of these categories illustrates how discovery in patent cases is shaped by relevance, specificity, and practical considerations about document retention and availability.
What Were the Key Legal Issues?
The principal legal issue was the proper scope of specific discovery under O 24 r 5 in a patent infringement action. The court had to decide whether the requested categories of documents were sufficiently relevant to issues put in play in the pleadings, and whether the categories were drafted in a manner that was not overly broad, duplicative, or difficult to administer. This required the court to examine how each category related to the pleaded grounds of invalidity and to the claim features identified by the Defendants.
A second issue concerned the adequacy of the Plaintiff’s explanation for non-disclosure. For Categories 2 and 6, the Plaintiff conceded relevance but asserted that the documents were no longer in its possession, custody or power. The court had to determine whether the affidavit evidence provided a reasonable and sufficient basis to refuse discovery, including whether the deponent’s lack of personal knowledge from 20 years earlier undermined the explanation.
A third issue concerned whether, and to what extent, a patentee’s “opinions” and submissions in other jurisdictions should be disclosed. The Defendants relied on Singapore Civil Procedure and an English authority (Vickers) for the proposition that discovery should include opinions expressed in other jurisdictions disclosing the patentee’s counter to attacks on validity and its approach to infringement. The court had to consider the impact of later English authority (Glaverbel) and the commentary in Singapore Civil Procedure that suggested Vickers was not followed.
How Did the Court Analyse the Issues?
On the Defendants’ Category 1, the court rejected the Plaintiff’s attempt to narrow the category to documents reflecting “challenges” to validity that occurred before the suit. The court accepted that the Defendants were seeking documents relevant to validity issues (novelty, obviousness, insufficiency), not merely documents arising from prior formal challenges. However, the court found practical difficulties in distinguishing Category 1 from other categories (notably Categories 2, 3 and 6). The Defendants’ counsel suggested that Category 1 was a “larger circle” and that other categories were overlapping, but the court was not persuaded that there were clearly identifiable document types that would fall within Category 1 without overlapping with the other categories.
In particular, the court noted that Category 2 concerned research leading to the invention, Category 3 concerned opinions expressed in other jurisdictions, and Category 6 concerned experimental work up to publication. The Defendants did not pinpoint document types that would be meaningfully distinct from those already targeted by the other categories. The court therefore declined to grant specific discovery of Category 1, reflecting a concern that discovery should not be ordered in a way that is duplicative and unmanageable, especially where the requested categories are not clearly separable.
For Categories 2 and 6, the court accepted that the documents were relevant but focused on whether discovery should still be ordered given the Plaintiff’s asserted inability to produce them. The Plaintiff’s deponent, Mr Yasushi Ukai, confirmed on oath that the documents were relevant but were no longer in the Plaintiff’s possession, custody or power. He explained that the research documents were created around 20 years earlier, when the Plaintiff had no internal rules regulating retention periods, and that the documents were disposed of when the Plaintiff shifted operations to another building in 1997.
The Defendants challenged the adequacy of the explanation. They argued that Mr Ukai did not state how he attempted to locate the documents and should therefore provide more detail. They also argued that Mr Ukai was a managing director of the Plaintiff’s subsidiary rather than an employee of the Plaintiff, and that someone with personal knowledge of events 20 years ago should depose an affidavit. The court, however, accepted that Mr Ukai was authorised to file the affidavits and that his statements were either derived from personal knowledge or based on instructions or documents accessible to him. The court emphasised that it was neither reasonable nor necessary, for the purposes of a specific discovery application, to require the company to locate employees with personal knowledge from two decades earlier, particularly where the authorised deponent had already confirmed the current position on oath.
Crucially, the court also noted the absence of evidence suggesting that Mr Ukai’s position and explanations ought to be disbelieved. In this way, the court treated the discovery application as a procedural mechanism requiring a realistic and fair assessment of what can be produced, rather than an opportunity to impose an onerous reconstruction exercise for documents that were plausibly destroyed long ago. The court therefore did not grant discovery of Categories 2 and 6.
Turning to Category 3, the court considered the Defendants’ request for documents relating to the Plaintiff’s opinions expressed in other jurisdictions, including its counter to attacks on validity and its approach to infringement. The Defendants argued that disclosure of the patentee’s opinions and submissions leading up to foreign decisions was more important than the decisions themselves. They relied on Singapore Civil Procedure, which in turn referenced the English decision of Vickers plc v Horsell Graphic Industries Ltd [1988] RPC 21. The Defendants’ submission was that discovery should be ordered of “opinions expressed in yet other jurisdictions” that disclose the patentee’s counter to attacks on validity and its approach to infringement.
However, the court highlighted that the commentary in Singapore Civil Procedure observed that the position in Vickers was not followed in the later English case of Glaverbel SA v British Coal Corp (No 2) [1992] FSR 642. The court’s reference to Glaverbel (as reflected in the commentary) indicates that the approach to discovery of foreign litigation materials is not automatic. Instead, it depends on the proper legal framework for relevance and the extent to which such materials are genuinely probative of issues in the Singapore proceedings. This part of the analysis underscores that patent discovery is sensitive to both evidential value and the risk of fishing expeditions.
What Was the Outcome?
In relation to the Defendants’ application, the court declined to grant specific discovery for Category 1, and also declined to grant discovery for Categories 2 and 6. The refusal for Category 1 was based on overlap and the inability to identify distinct document types that would fall within that category without duplicating other categories. The refusal for Categories 2 and 6 was based on the Plaintiff’s accepted sworn explanation that the relevant documents were no longer in its possession, custody or power, and the court’s view that it was not reasonable or necessary to require a further search for employees with personal knowledge from 20 years earlier.
The extract also shows that the court was prepared to scrutinise the legal basis for ordering discovery of foreign opinions and submissions, particularly where English authority had evolved. While the full orders for Category 3 and the Plaintiff’s own application are not contained in the truncated extract provided, the reasoning visible in the decision demonstrates a disciplined approach to discovery: relevance is necessary, but so are specificity, non-duplication, and practical fairness in light of document retention realities.
Why Does This Case Matter?
This decision is significant for practitioners because it illustrates how Singapore courts manage the boundary between targeted discovery and overbroad, duplicative requests in patent litigation. Patent cases often involve complex technical subject matter and multiple validity grounds. The court’s refusal of Category 1 shows that even where a category is framed around validity issues, discovery will not be ordered if the category cannot be meaningfully distinguished from other categories already sought. This is a useful reminder that discovery drafting must be precise and administrable.
Second, the case provides practical guidance on how courts assess sworn evidence of non-possession. The court accepted that a deponent without personal knowledge from decades earlier could still provide an adequate explanation, provided the explanation is credible and there is no evidence to suggest it should be disbelieved. For companies, this supports a realistic approach to document retention and disposal, while still requiring a coherent evidential foundation for why documents cannot be produced.
Third, the decision highlights that discovery of foreign litigation materials is not governed by a simplistic rule. The court’s discussion of Vickers and Glaverbel (through the Singapore Civil Procedure commentary) signals that the evidential relevance of foreign opinions and submissions must be assessed carefully, and that later authority may narrow or refine earlier English positions. For litigators, this means that requests for discovery of foreign patent prosecution or litigation strategy should be supported by a clear explanation of how the materials are relevant to pleaded issues in Singapore, rather than relying solely on broad propositions from older cases.
Legislation Referenced
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), O 24 r 5 (specific discovery)
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), O 87A r 5 (as referenced in the applications)
- Patents Act (as referenced in the CIPA Guide to the Patents Act)
Cases Cited
- [2014] SGHCR 16
- [2014] SGHCR 18
- [2015] SGHCR 4 (this decision)
- Vickers plc v Horsell Graphic Industries Ltd [1988] RPC 21
- Glaverbel SA v British Coal Corp (No 2) [1992] FSR 642
Source Documents
This article analyses [2015] SGHCR 4 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.