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 (Summons No 4919 of 2014 and Summons No 5125 of 2014)
- 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
- Procedural Context: Applications for specific discovery under O 24 r 5 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed), with reference to O 87A r 5
- Patent at Issue: Singapore Patent No SG49740 (“the Patent”)
- Allegedly Infringing Product/Machine: IDEALmold machine
- Earlier Related Decision: 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
Summary
This High Court decision concerns 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, alleging that the defendants’ IDEALmold machine infringes the patent. After an earlier decision setting out the background, the parties returned to court with competing applications for specific discovery of categories of documents relevant to issues of infringement and, crucially, the validity of the patent.
The court (Justin Yeo AR) addressed the defendants’ application for discovery of 13 categories and the plaintiff’s application for discovery of eight categories. The decision is particularly instructive on how Singapore courts approach the scope of specific discovery in patent cases, especially where the requested documents relate to validity (novelty, obviousness, insufficiency) and where the requested categories overlap or are difficult to delineate. The court also considered whether and to what extent foreign proceedings and the patentee’s opinions in other jurisdictions should be disclosed.
Ultimately, the court declined to order discovery for certain categories where the requests were either not sufficiently distinct from other categories or where the evidence did not justify the order. The decision also reflects a pragmatic approach to discovery in complex patent litigation: the court requires a clear connection between the requested documents and the pleaded issues, while balancing cost and proportionality concerns inherent in discovery applications.
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. ASM Technology Singapore Pte Ltd is incorporated in Singapore and provides semiconductor equipment and materials. It is a wholly owned subsidiary of ASM Pacific Technology Ltd, a Cayman Islands company publicly listed in Hong Kong. The defendants were collectively referred to as “the Defendants”.
The infringement suit was commenced in 2013. The allegedly infringing machine is known as the IDEALmold machine. The plaintiff’s case is that the IDEALmold machine infringes the Singapore patent. The defendants, as is typical in patent litigation, sought to challenge the patent’s validity and to obtain discovery that would support their defences and counterarguments.
After the suit commenced, the defendants filed Summons No 4919 of 2014 seeking specific discovery of 13 categories of documents. In parallel, the plaintiff filed Summons No 5125 of 2014 seeking specific discovery of eight categories. Both applications were brought under O 24 r 5 of the Rules of Court, with reference to O 87A r 5, which is relevant to discovery in patent proceedings. The applications required the court to decide what categories of documents were sufficiently relevant and properly targeted at the issues in dispute.
In the defendants’ application, the court focused on categories that related to validity and the patentee’s internal and external materials. Category 1 concerned documents relevant to validity grounds (novelty, obviousness, insufficiency) within a defined time window around the patent’s priority dates, and also required mapping between claim language and features disclosed in specified prior art and an identified machine (the ASA 808K inspected by the plaintiff in August 2014). Categories 2 and 6 concerned, respectively, the plaintiff’s research leading to the invention and experimental work up to the patent’s publication date, again tied to the same claim features and specified prior art. Category 3 concerned the plaintiff’s opinions expressed in other jurisdictions regarding foreign patents equivalent to the Singapore patent, including the patentee’s approach to infringement and its counter to validity attacks.
What Were the Key Legal Issues?
The central legal issue was the proper scope of specific discovery in a patent infringement action under O 24 r 5 and the patent-specific discovery framework under O 87A r 5. The court had to determine whether the requested categories of documents were relevant to the issues in the suit, particularly validity issues (novelty, obviousness, insufficiency) and infringement-related matters.
A second issue was whether the defendants’ categories were sufficiently precise and non-overlapping. The court was concerned that some categories might be “overlapping circles” and that the defendants had not pinpointed document types that would fall within one category but not within others. This raised the question of whether the court should order discovery where the boundaries between categories are unclear, potentially leading to excessive or duplicative disclosure.
A third issue concerned foreign proceedings and foreign opinions. The defendants sought discovery of the plaintiff’s opinions expressed in other jurisdictions, relying on commentary in Singapore Civil Procedure and an English authority (Vickers). The court had to consider whether the approach in Vickers remained persuasive in light of later English authority (notably Glaverbel) and how Singapore courts should treat discovery requests relating to equivalent foreign patent litigation.
How Did the Court Analyse the Issues?
The court began by addressing Category 1. The defendants sought documents relevant to validity grounds within a time period beginning two years before the earliest claimed priority date and ending two years after that date. Category 1 also required attention to specific claim phrases and to similarities/differences between those claim features and features disclosed in specified Japanese patent publications (Hitachi and NEC Kyushu) and the ASA 808K machine inspected by the plaintiff. The plaintiff resisted, arguing that no documents fell within the category because the patent had never been challenged prior to the suit.
Justin Yeo AR disagreed with the plaintiff’s narrow reading. While the plaintiff’s argument was “plausible at first blush,” the court accepted the defendants’ position that Category 1 was not limited to prior challenges to the patent. Instead, it was directed to documents relevant to validity issues themselves—novelty, obviousness, and insufficiency—regardless of whether there had been earlier formal challenges. This reflects a broader principle: discovery in patent cases is not confined to documents created in response to litigation; it can extend to internal materials relevant to the validity questions raised in the pleadings.
However, the court then identified a practical difficulty: it was not clear how Category 1 differed from other categories (notably Categories 2, 3, and 6). The defendants suggested that Category 1 was a “larger circle” and that some documents, such as inventors’ notes or internal discussions, might fall within Category 1 without overlapping the other categories. The court was not convinced that such examples were sufficiently distinct. Categories 2 and 6 already targeted research and experimental work tied to the same claim features and prior art. Category 3 targeted opinions expressed in other jurisdictions. Because the defendants could not identify document types that would not already be captured by the other categories, the court declined to order discovery for Category 1.
Turning to Categories 2 and 6, the court dealt with them together. Category 2 sought documents relating to the plaintiff’s research leading to the invention, relevant to obviousness or insufficiency, and again tied to specific claim phrases and specified prior art. Category 6 sought documents relating to experimental work up to the date of publication of the patent, also tied to the same claim phrases. The plaintiff’s witness, Mr 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 there were no internal rules regulating retention, and that they were disposed of when the plaintiff shifted operations in 1997.
The defendants argued that the explanation was inadequate because Mr Ukai did not detail how he attempted to locate the documents. They also argued that Mr Ukai should not be the deponent because he lacked personal knowledge of events 20 years ago, and that someone with personal knowledge should depose an affidavit. The court rejected these objections. It accepted that Mr Ukai was authorised to file the affidavits and that, although he did not have personal knowledge from two decades earlier, he had stated on oath that the facts were derived from his personal knowledge or based on instructions or documents accessible to him. The court also emphasised that it was neither reasonable nor necessary, for the purposes of disposing fairly of the cause or saving costs, to require the company to locate employees with personal knowledge of events from 20 years ago, particularly where the authorised deponent had already confirmed the plaintiff’s current position on oath. In the absence of evidence to disbelieve Mr Ukai’s explanation, the court did not grant discovery for Categories 2 and 6.
Finally, the court addressed Category 3. The defendants sought documents relating to the plaintiff’s opinions expressed in other jurisdictions, including counterarguments to validity attacks and the plaintiff’s approach to infringement. This request was made against the backdrop that the plaintiff’s foreign patents (equivalent to the Singapore patent) had been challenged in other jurisdictions on similar validity and infringement issues. The plaintiff had agreed to disclose the foreign judgments, but disclosure was delayed due to translation requirements.
Defendants argued that the patentee’s opinions and submissions leading up to those decisions were more important than the decisions themselves. They relied on commentary in Singapore Civil Procedure, which in turn referred to Vickers plc v Horsell Graphic Industries Ltd. However, the court noted 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). The court’s analysis indicates that it would be cautious about ordering discovery of foreign opinions merely because they were relevant; it must consider the controlling or persuasive authority and the proper limits of discovery in patent cases, including whether foreign litigation materials should be treated differently from domestic materials.
What Was the Outcome?
The court declined to grant discovery for Category 1 because the defendants did not sufficiently demonstrate how the category was distinct from other categories and therefore risked duplicative or unclear disclosure. It also declined to grant discovery for Categories 2 and 6 because the plaintiff had explained on oath that the relevant documents no longer existed and the court accepted that explanation as adequate in the circumstances.
For Category 3, the court’s reasoning (as reflected in the extract) shows that it was prepared to scrutinise the legal basis for ordering discovery of foreign opinions, particularly in light of the tension between Vickers and Glaverbel as discussed in Singapore Civil Procedure. While the provided extract is truncated, the decision’s overall thrust is clear: discovery orders in patent cases must be targeted, proportionate, and grounded in persuasive authority on what is discoverable.
Why Does This Case Matter?
This decision is significant for practitioners because it provides concrete guidance on how Singapore courts manage discovery requests in patent infringement litigation. First, it demonstrates that relevance alone is not enough; the court expects categories to be sufficiently delineated. Where requested categories overlap and the requesting party cannot identify document types that fall exclusively within one category, the court may refuse discovery to avoid duplication and unnecessary cost.
Second, the case illustrates the evidential and practical approach to document retention and unavailability. The court accepted an affidavit explanation that documents were disposed of decades earlier due to the absence of retention rules and a later operational move. This is useful for defendants and plaintiffs alike: where documents are genuinely no longer in possession, custody, or power, the court may accept a reasonable explanation without requiring the impossible task of locating historical employees with personal knowledge from many years ago.
Third, the decision highlights the careful treatment of foreign litigation materials. Patent disputes often involve parallel proceedings in multiple jurisdictions. Parties may seek discovery of the patentee’s foreign submissions and opinions, arguing that they reveal the patentee’s understanding of validity and infringement. Towa Corp v ASM Technology Singapore indicates that Singapore courts will consider the persuasive weight of English authorities and the commentary in local practice guides, rather than automatically ordering discovery of foreign opinions simply because they are arguably relevant.
Legislation Referenced
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), O 24 r 5
- Rules of Court (Cap 322, R 5, 2006 Rev Ed), O 87A r 5
- Patents Act (as referenced via the CIPA Guide to the Patents Act)
Cases Cited
- Towa Corporation v ASM Technology Singapore Pte Ltd [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.