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
- Case Number: Suit No 359 of 2013 (Summons No 4919 of 2014 and Summons No 5125 of 2014)
- Coram: Justin Yeo AR
- Judge: Justin Yeo AR
- Plaintiff/Applicant: Towa Corporation (“Towa Corp”)
- Defendants/Respondents: ASM Technology Singapore Pte Ltd (“ASM Singapore”) and ASM Pacific Technology Ltd (“ASM Pacific”)
- Legal Areas: Civil Procedure — Discovery; Patents and Inventions — Infringement
- Procedural Posture: Applications for specific discovery under O 24 r 5 of the Rules of Court, with reference to O 87A r 5
- Earlier Decision Referenced: Towa Corporation v ASM Technology Singapore Pte Ltd [2014] SGHCR 16
- Patent at Issue: Singapore Patent No SG49740
- Allegedly Infringing Product/Machine: IDEALmold machine
- Applications: Defendants’ Application (Summons No 4919 of 2014) and Plaintiff’s Application (Summons No 5125 of 2014)
- Discovery Categories (Defendants’ Application): 13 categories (Categories 4 and 13 not ultimately dealt with)
- Discovery Categories (Plaintiff’s Application): 8 categories
- 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/Rules Referenced: Rules of Court (Cap 322, R 5, 2006 Rev Ed), including O 24 r 5 and O 87A r 5
- Secondary Authority Referenced: CIPA Guide to the Patents Act (including reference to Glaverbel SA v British Coal Corp (No 2))
Summary
This High Court decision concerns interlocutory applications for specific discovery in a patent infringement action brought by Towa Corporation against ASM Technology Singapore Pte Ltd and ASM Pacific Technology Ltd. The plaintiff is the proprietor of Singapore Patent No SG49740, relating to moulding resin for sealing electronic parts such as semiconductor devices. The defendants are alleged to have infringed the patent through their IDEALmold machine.
The court (Justin Yeo AR) addressed whether the defendants should be granted specific discovery of multiple categories of documents, particularly documents relevant to the validity of the patent (novelty, obviousness, and insufficiency) and documents relating to the plaintiff’s research, experimental work, and positions taken in other jurisdictions. The court also considered the proper approach to discovery of “opinions” and submissions made in foreign proceedings, and the extent to which categories should be granted where they overlap or are not sufficiently distinct.
Ultimately, the court declined to order discovery for certain categories sought by the defendants, including Category 1 (validity-related documents within a defined time window) and Categories 2 and 6 (research and experimental work), largely because the plaintiff established that the relevant documents were no longer in its possession, custody, or power and the defendants could not identify what would be meaningfully different from overlapping categories. The court’s reasoning reflects a pragmatic, structured approach to discovery in patent cases, balancing relevance, specificity, and proportionality.
What Were the Facts of This Case?
Towa Corporation commenced Suit No 359 of 2013 against ASM Technology Singapore Pte Ltd and ASM Pacific Technology Ltd for infringement of Singapore Patent No SG49740. The patent concerns a method and/or apparatus for moulding resin to seal electronic parts, including semiconductor devices. The allegedly infringing machine is described as the IDEALmold machine. The defendants are part of a corporate group: ASM Technology Singapore is a Singapore-incorporated company providing semiconductor equipment and materials, and it is a wholly owned subsidiary of ASM Pacific, which is incorporated in the Cayman Islands and publicly listed in Hong Kong.
The procedural history includes an earlier decision by the same coram, Towa Corporation v ASM Technology Singapore Pte Ltd [2014] SGHCR 16, which set out the broader background to the litigation. In the present decision, the court dealt with discovery applications brought after pleadings and/or early case management steps. The defendants applied for specific discovery of 13 categories of documents under O 24 r 5 of the Rules of Court, with reference also made to O 87A r 5. The plaintiff, in turn, applied for specific discovery of eight categories of documents.
In the defendants’ application, the court focused on the scope and boundaries of the requested categories. Two categories (Categories 4 and 13) were not ultimately dealt with. The court’s analysis in the excerpted portion of the judgment is particularly concerned with Categories 1, 2, 3, and 6. Category 1 sought documents relevant to validity challenges (novelty, obviousness, insufficiency) within a time window spanning from two years before the earliest claimed priority date to two years after that date. The category was also tied to particular words or phrases appearing in the patent claims, and to similarities/differences between those claim features and disclosures in specified prior art and a machine inspected by the plaintiff.
Categories 2 and 6 sought documents relating to the plaintiff’s research leading to the invention and experimental work up to the date of publication of the patent, again tied to the same claim phrases and to specified prior art references. Category 3 sought documents relating to the plaintiff’s opinions expressed in other jurisdictions, particularly where foreign equivalents of the Singapore patent had been challenged on similar validity and infringement issues. The court’s treatment of these categories illustrates the tension in patent litigation between broad relevance-based requests and the need for discovery orders to be sufficiently targeted and workable.
What Were the Key Legal Issues?
The central legal issue was whether the court should order specific discovery of the requested categories of documents under O 24 r 5, in the context of a patent infringement suit. This required the court to assess relevance to pleaded issues, the proper scope of discovery for validity-related material, and whether the requested categories were sufficiently distinct rather than overlapping or duplicative.
A second key issue concerned the plaintiff’s inability (or asserted inability) to produce certain documents. For Categories 2 and 6, the plaintiff’s authorised 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. The court had to consider whether the plaintiff’s explanation was adequate and whether the defendants’ criticisms—such as the absence of detail about document searches and the deponent’s lack of personal knowledge from two decades earlier—justified compelling further discovery.
A third issue related to the discovery of “opinions” and submissions made in foreign proceedings. Category 3 sought disclosure of the plaintiff’s opinions and counter-arguments in other jurisdictions. The defendants relied on authority from Singapore Civil Procedure and an English decision (Vickers plc v Horsell Graphic Industries Ltd) to support the proposition that discovery should include opinions expressed in other jurisdictions disclosing the patentee’s approach to validity attacks and infringement. The court had to determine the correct legal position, including whether later English authority (Glaverbel SA v British Coal Corp (No 2)) qualified or displaced the earlier approach.
How Did the Court Analyse the Issues?
On Category 1, the court rejected the plaintiff’s attempt to narrow the category to documents concerning “challenges” to validity in the sense of prior attacks on the patent. Justin Yeo AR agreed with the defendants that Category 1 was not limited to previous challenges; rather, it sought documents relevant to validity issues (novelty, obviousness, insufficiency). However, the court then confronted a practical difficulty: the requested Category 1 overlapped conceptually with other categories (notably Categories 2, 3, and 6) that also targeted validity-related material.
The court accepted that the defendants’ counsel suggested Category 1 was a “larger circle” and that the other categories were likely overlapping circles. Yet the court was not satisfied that the defendants could identify types of documents that would fall within Category 1 but not within the other categories. The court noted that examples offered by counsel—such as inventors’ notes or internal discussions—were not convincingly different from what was already sought in Categories 2 (research leading to the invention), 3 (opinions expressed in other jurisdictions), and 6 (experimental work up to publication). Because the defendants could not pinpoint non-overlapping document types, the court declined to grant specific discovery of Category 1.
For Categories 2 and 6, the court’s analysis turned on the plaintiff’s evidence regarding possession and control. Mr Ukai confirmed that the relevant research and experimental documents were relevant but no longer in the plaintiff’s possession, custody, or power. He explained that the documents were created around 20 years earlier, at a time when the plaintiff had no internal rules regulating retention periods for research documents, and that the documents were disposed of when the plaintiff shifted operations to another building in 1997. The court accepted that this explanation addressed why the documents could not be produced.
The defendants argued that the explanation was inadequate because Mr Ukai did not state how he attempted to locate the documents and should therefore provide more detail about the basis for his beliefs. The defendants 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 rejected these criticisms. It held that it was neither reasonable nor necessary, for the purposes of disposing fairly of the cause or saving costs, to require the plaintiff to locate employees with personal knowledge from two decades earlier, especially where the authorised deponent had already confirmed the plaintiff’s present position on oath. The court also found no evidence that Mr Ukai’s position and explanations should be disbelieved.
Accordingly, the court did not grant discovery for Categories 2 and 6. This part of the decision demonstrates that in Singapore patent litigation, where discovery is sought for documents created long ago, courts may accept evidence of disposal and the absence of retention practices, provided the explanation is credible and not contradicted by evidence. It also indicates that the court will consider proportionality and cost-saving when deciding whether to require further affidavits or additional search efforts.
Category 3 raised a different doctrinal question: whether discovery should include the patentee’s opinions and submissions in foreign jurisdictions. The defendants argued that the disclosure of opinions and submissions leading up to foreign decisions was “probably more important” than the decisions themselves. They relied on a passage in Singapore Civil Procedure (2015 vol 1) that, in turn, referenced Vickers plc v Horsell Graphic Industries Ltd. The court observed that the Singapore Civil Procedure authors had also noted that the position in Vickers was not followed in the later English case of Glaverbel SA v British Coal Corp (No 2). The excerpted portion indicates that the court was attentive to the evolution of English authority and to the correct formulation of the discovery principle in Singapore practice.
While the remainder of the judgment is truncated in the provided extract, the court’s approach at this stage is clear: it treated the defendants’ reliance on Vickers as incomplete unless it accounted for Glaverbel’s qualification. This reflects a broader judicial method in discovery disputes: courts will not mechanically apply earlier authority where later cases or authoritative secondary sources indicate a different or more limited rule. In patent cases, where foreign proceedings may contain strategic positions, courts must still ensure that discovery requests are grounded in the correct legal framework for what is discoverable and relevant.
What Was the Outcome?
In relation to the defendants’ application, the court declined to order specific discovery for Category 1, because the defendants could not identify document types that would be meaningfully distinct from overlapping categories. The court also declined to order discovery for Categories 2 and 6, accepting the plaintiff’s sworn evidence that the relevant research and experimental documents were no longer in its possession, custody, or power and that it was not reasonable or necessary to require further searches or affidavits from individuals with personal knowledge from 20 years earlier.
As for Category 3, the court’s reasoning in the excerpt indicates that it was prepared to scrutinise the legal basis for ordering discovery of foreign opinions and submissions, particularly in light of the distinction between Vickers and Glaverbel as reflected in Singapore Civil Procedure. The final disposition of Category 3 (and the plaintiff’s own discovery application) would be contained in the remainder of the judgment beyond the truncated extract; however, the portions provided show that the court was willing to refuse discovery where relevance was not sufficiently differentiated, or where the evidential basis for production was not met.
Why Does This Case Matter?
This decision is useful to practitioners because it illustrates how Singapore courts manage discovery in patent infringement proceedings using a structured, category-based approach. It emphasises that discovery orders must be workable and not merely expansive. Where requested categories overlap and the requesting party cannot articulate non-overlapping document types, courts may refuse discovery to avoid duplication and unnecessary cost.
Second, the case highlights evidential expectations when a party asserts that documents are no longer in its possession, custody, or power. The court accepted a credible explanation grounded in historical document creation practices and disposal following a relocation of operations. For litigators, this underscores the importance of providing a clear, coherent affidavit narrative addressing (i) relevance, (ii) the reason for non-production, and (iii) the practical steps (or lack of steps) that are reasonable given the passage of time.
Third, the decision is relevant to the ongoing debate about discovery of foreign proceedings materials, particularly “opinions” and submissions. The court’s attention to the shift from Vickers to Glaverbel, as reflected in Singapore Civil Procedure, signals that Singapore courts will carefully calibrate the scope of discoverable foreign material. For patent owners and defendants alike, this affects how parties should anticipate discovery requests relating to strategy, counter-arguments, and positions taken in other jurisdictions.
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 (Patents-related procedural provisions)
- Patents Act (as referenced through CIPA Guide to the Patents Act)
Cases Cited
- [2014] SGHCR 16
- [2014] SGHCR 18
- [2015] SGHCR 4
- 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.