Case Details
- Citation: [2015] SGHCR 4
- 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
- Summonses: Summons No 4919 of 2014; Summons No 5125 of 2014
- Plaintiff/Applicant: Towa Corporation (“Towa Corp”)
- Defendants/Respondents: ASM Technology Singapore Pte Ltd (First Defendant); ASM Pacific Technology Ltd (Second Defendant)
- Legal Areas: Civil Procedure — Discovery; Patents and Inventions — Infringement
- Patent at Issue: Singapore Patent No SG49740 (“the Patent”)
- Allegedly Infringing Product/Machine: IDEALmold machine
- Procedural Posture: Applications for specific discovery under O 24 r 5 of the Rules of Court, with reference to O 87A r 5
- Judicial Context: Background previously set out in Towa Corporation v ASM Technology Singapore Pte Ltd [2014] SGHCR 16
- 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)
- Judgment Length: 18 pages; 8,726 words
- Statutes Referenced: Rules of Court (Cap 322, R 5, 2006 Rev Ed) — O 24 r 5; O 87A r 5
- Statutory/Secondary Authority Referenced: CIPA Guide to the Patents Act (including reference to Glaverbel); Patents Act; CIPA Guide to the Patents Act
- Cases Cited (as per metadata): [2014] SGHCR 16; [2014] SGHCR 18; [2015] SGHCR 4
Summary
This High Court decision concerns competing applications for specific discovery in a patent infringement suit. Towa Corp, the proprietor of Singapore Patent No SG49740, sued ASM Technology Singapore Pte Ltd and ASM Pacific Technology Ltd for infringement using the IDEALmold machine. The present judgment addresses the scope of document categories to be disclosed under O 24 r 5 of the Rules of Court, in the context of patent litigation where discovery can be particularly contentious because it may expose technical research, internal reasoning, and prior positions taken in other jurisdictions.
The court (Justin Yeo AR) declined to order discovery for certain categories sought by the defendants, primarily because the requested categories were either insufficiently distinct from other categories already sought, or because the defendants did not demonstrate that the documents would be relevant in a way that justified the burden of production. The court also accepted, in relation to some categories, the plaintiff’s explanation that older research and experimental documents were no longer in its possession, custody or power, and that it was neither reasonable nor necessary to require extensive additional searches for events from two decades earlier.
Although the excerpt provided is truncated, the decision’s core contribution lies in its careful management of discovery in patent cases: it emphasises relevance, avoids duplication across overlapping categories, and applies a pragmatic approach to document retention and the evidential adequacy of affidavits explaining non-possession.
What Were the Facts of This Case?
Towa Corp is a company incorporated in Japan and the proprietor of Singapore Patent No SG49740. The patent concerns a method and/or apparatus for moulding resin to seal electronic parts, including semiconductor devices. The alleged infringement relates to a machine known as the IDEALmold machine, which is used in semiconductor equipment and materials contexts.
The First Defendant, ASM Technology Singapore Pte Ltd, is incorporated in Singapore and provides semiconductor equipment and materials. It is a wholly owned subsidiary of the Second Defendant, ASM Pacific Technology Ltd, which is incorporated in the Cayman Islands and publicly listed in Hong Kong. The defendants were collectively referred to as “the Defendants” in the proceedings.
After the suit commenced, the defendants brought Summons No 4919 of 2014 seeking specific discovery of 13 categories of documents. In parallel, the plaintiff brought Summons No 5125 of 2014 seeking specific discovery of eight categories of documents. Both applications were brought under O 24 r 5 of the Rules of Court, with reference also made to O 87A r 5, reflecting the special procedural framework that often applies in intellectual property disputes.
In this judgment, the court dealt with the defendants’ application category-by-category. The court noted that 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 therefore focused on discovery rather than infringement merits, and it addressed how to delineate document categories that bear on validity and infringement issues.
What Were the Key Legal Issues?
The principal legal issue was the proper scope of specific discovery in a patent infringement action under O 24 r 5 of the Rules of Court. The court had to decide whether the defendants’ proposed categories of documents were sufficiently relevant to issues in dispute, and whether they were appropriately tailored rather than overbroad or duplicative.
A second issue concerned the evidential and practical requirements for ordering discovery where the plaintiff asserts that documents are no longer available. The court had to consider whether the plaintiff’s affidavits explaining non-possession, custody or power were adequate, and whether it was reasonable to require further searches or additional depositions from individuals with personal knowledge of events occurring many years earlier.
Third, the court had to address how discovery should be approached in relation to foreign patent proceedings and the patentee’s positions in other jurisdictions. The defendants sought documents reflecting the plaintiff’s opinions and submissions in other jurisdictions, relying on authority that had been discussed in English cases and in secondary materials such as the CIPA Guide to the Patents Act and Singapore Civil Procedure.
How Did the Court Analyse the Issues?
The court began by setting out the defendants’ categories and then assessing each category’s relevance and distinctness. For Category 1, which concerned documents relevant to validity issues (novelty, obviousness and insufficiency), the plaintiff argued that no documents fell within the category because the patent had never been challenged prior to the suit. The plaintiff’s position depended on a narrow reading of Category 1, limiting it to documents about prior challenges to validity.
Justin Yeo AR rejected that narrow reading. While the narrow approach was “plausible at first blush,” the court agreed with the defendants that Category 1 was not limited to prior challenges; rather, it concerned documents relevant to validity issues that had been put in issue in the litigation. However, the court still refused to grant discovery for Category 1 because of a practical difficulty: it was not clear how Category 1 documents would differ from documents sought in other categories (notably Categories 2, 3 and 6). The defendants suggested that Category 1 was a “larger circle” and that some internal discussions might fall only within Category 1, but the court was not convinced that the overlap was sufficiently controlled.
In this respect, the court’s analysis reflects a recurring discovery principle: where multiple categories overlap heavily, the court may refuse to order discovery for one category if it would effectively duplicate other ordered (or sought) categories, thereby increasing cost and burden without adding clear incremental value. The court observed that Category 2 dealt with research leading to the invention, Category 3 dealt with opinions expressed in other jurisdictions, and Category 6 dealt with experimental work up to publication. The defendants could not pinpoint document types that would not already fall within those categories, so Category 1 was not granted.
For Categories 2 and 6, the court took a more evidentially grounded approach. Category 2 sought documents relating to the plaintiff’s research leading to the invention relevant to obviousness or insufficiency, while Category 6 sought documents relating to experimental work up to the date of publication. The plaintiff’s deponent, Mr Yasushi Ukai, confirmed on oath that while the documents were relevant, they were no longer in the plaintiff’s possession, custody or power. He explained that the documents were created about 20 years earlier, at a time when the plaintiff had no internal rules regulating retention periods, and that the documents were disposed of when the plaintiff shifted operations in 1997.
The defendants challenged the adequacy of this explanation. They argued that Mr Ukai did not state how he attempted to locate the documents and should therefore provide more detail about the basis for his beliefs. 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 from 20 years ago should depose an affidavit instead. The court, however, accepted the plaintiff’s position. It held 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 of events occurring two decades earlier, particularly where the authorised deponent had already confirmed the plaintiff’s present position on oath. The court also noted that there was no evidence before it that Mr Ukai’s position and explanations ought to be disbelieved.
This reasoning demonstrates a pragmatic approach to discovery in long-running technical disputes. The court did not treat the passage of time as an automatic bar to discovery, but it did recognise that document retention practices and corporate reorganisations can affect the availability of evidence. Importantly, the court required neither perfection nor exhaustive search narratives where the deponent’s sworn evidence was not contradicted and where the additional burden would be disproportionate.
Turning to Category 3, the defendants sought documents relating to the plaintiff’s opinions expressed in other jurisdictions, including counter-arguments to validity attacks and the plaintiff’s approach to infringement. The defendants’ request was motivated by the existence of judgments in other jurisdictions where the equivalent foreign patents (to the Singapore Patent) had been challenged on similar issues of validity and infringement. The plaintiff agreed to disclose those judgments but had delayed disclosure pending translation into English.
The defendants argued that the “opinions and submissions” leading up to those decisions were more important than the decisions themselves, and they relied on a proposition from Singapore Civil Procedure (2015) that discovery should be ordered of “opinions expressed in yet other jurisdictions as disclosing the patentee’s to attacks on validity and his approach to infringement.” The court noted that the proposition was based on the English decision of Vickers plc v Horsell Graphic Industries Ltd [1988] RPC 21, but that the authors of Singapore Civil Procedure also 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.
Although the excerpt ends mid-sentence, the court’s approach is clear: it was attentive to the evolution of authority on whether and to what extent foreign prosecution or litigation materials should be discoverable. The court’s reference to Glaverbel indicates that it was likely to scrutinise whether the requested foreign opinions were truly relevant and whether they should be treated as discoverable evidence in Singapore proceedings, rather than as collateral materials whose disclosure might be broader than necessary.
What Was the Outcome?
For the defendants’ application, the court refused discovery for Category 1 because the defendants could not show that the category was meaningfully distinct from other categories already sought, and the overlap would likely lead to duplication. The court also declined to order discovery for Categories 2 and 6, accepting the plaintiff’s sworn explanation that the relevant research and experimental documents had been disposed of long ago and were no longer in its possession, custody or power. The court considered it neither reasonable nor necessary to require further searching or additional affidavits from individuals with personal knowledge from 20 years earlier.
For Category 3, the court’s analysis indicates that it was prepared to engage with the legal authorities on the discoverability of foreign opinions and submissions. While the provided extract is truncated before the final ruling on Category 3 and the plaintiff’s own application, the decision’s overall thrust is evident: discovery orders in patent cases must be carefully bounded by relevance, non-duplication, and practical evidential considerations.
Why Does This Case Matter?
Towa Corp v ASM Technology Singapore Pte Ltd is significant for practitioners because it illustrates how Singapore courts manage discovery in patent infringement litigation. The decision shows that courts will not automatically grant broad categories of documents simply because they relate to validity or infringement. Instead, the court will examine whether categories are sufficiently targeted and whether they overlap with other categories in a way that makes additional discovery unnecessary.
For patent litigators, the case is also useful on the evidential side of discovery. Where a party asserts that documents are no longer available due to retention practices and corporate changes, the court may accept a sworn explanation without requiring exhaustive reconstruction of events from decades earlier. This is particularly relevant in technical disputes where research documentation may have been created long before the litigation and may not be retained under modern document management policies.
Finally, the case matters for how foreign proceedings are treated in discovery. The court’s engagement with Vickers and Glaverbel (as discussed in secondary sources) signals that the discoverability of foreign prosecution or litigation materials is not a simple rule. Practitioners should therefore frame requests for foreign opinions and submissions with careful attention to relevance, the precise issues in dispute, and the evolving authority on whether such materials should be ordered.
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 (Reference in patent/IP context)
- Patents Act (as referenced through secondary materials, including CIPA Guide to the Patents Act)
Cases Cited
- Towa Corporation v ASM Technology Singapore Pte Ltd [2014] SGHCR 16
- Towa Corporation v ASM Technology Singapore Pte Ltd [2014] SGHCR 18
- Vickers plc v Horsell Graphic Industries Ltd [1988] RPC 21
- Glaverbel SA v British Coal Corp (No 2) [1992] FSR 642
- [2015] SGHCR 4 (the present decision)
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.