Case Details
- Title: Towa Corp v ASM Technology Singapore Pte Ltd and another
- Citation: [2015] SGHCR 4
- Court: High Court (Registrar)
- Date: 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 (“ASM Singapore”); ASM Pacific Technology Ltd (“ASM Pacific”)
- Legal Areas: Civil Procedure – Discovery; Patents and Inventions – Infringement
- Statutes Referenced: Patents Act (Singapore)
- Rules of Court Referenced: O 24 r 5 (Rules of Court (Cap 322, R 5, 2006 Rev Ed)); O 87A r 5 (Rules of Court)
- 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, 8,870 words
- Procedural Posture: Applications for specific discovery by both parties (Summons No 4919 of 2014 and Summons No 5125 of 2014)
Summary
This High Court (Registrar) decision concerns competing applications for specific discovery in a patent infringement action. Towa Corporation, the proprietor of Singapore Patent No SG49740, sued ASM Technology Singapore Pte Ltd and ASM Pacific Technology Ltd for infringement, alleging that ASM’s IDEALmold machine infringes the Patent. The parties sought discovery of categories of documents relevant to issues of infringement and, crucially, validity.
The Registrar, Justin Yeo AR, addressed the scope of discovery under O 24 r 5 of the Rules of Court, with reference to O 87A r 5. The decision is notable for its careful management of discovery requests that overlap, its insistence on relevance to pleaded validity grounds, and its pragmatic approach where documents are no longer in the patentee’s possession. The Registrar declined to order discovery for certain categories (including those relating to research and experimental work from decades earlier) and refused to grant other categories where the requested scope was not sufficiently differentiated from overlapping requests.
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 relates to moulding resin to seal electronic parts, including semiconductor devices. ASM Singapore is incorporated in Singapore and provides semiconductor equipment and materials. ASM Pacific is incorporated in the Cayman Islands and is publicly listed in Hong Kong. ASM Singapore is a wholly owned subsidiary of ASM Pacific. For convenience, the parties referred to ASM Singapore and ASM Pacific collectively as “the Defendants”.
Towa Corp commenced Suit No 359 of 2013 alleging infringement of the Patent by the Defendants’ IDEALmold machine. The “brief background” to the suit had been set out earlier in Towa Corporation v ASM Technology Singapore Pte Ltd [2014] SGHCR 16, which indicates that the parties had already been engaged in patent infringement and procedural disputes, including discovery-related issues.
In the present decision, the procedural focus shifted to discovery. The Defendants applied by Summons No 4919 of 2014 for specific discovery of 13 categories of documents. In parallel, Towa Corp applied by Summons No 5125 of 2014 for 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 context in patent cases.
The Registrar’s analysis (at least in the portion of the judgment extracted) centred on the Defendants’ first application, particularly Categories 1, 2, 3 and 6. Category 1 concerned documents relevant to validity challenges (novelty, obviousness and insufficiency) within a defined time window around the earliest claimed priority date, and also documents addressing similarity/differences between the Patent’s claim features and certain Japanese patent publications and a specific machine (the ASA 808K) inspected by Towa on 20 August 2014. Categories 2 and 6 concerned Towa’s research and experimental work leading up to the Patent and up to publication. Category 3 concerned Towa’s opinions expressed in other jurisdictions about countering validity attacks and its approach to infringement.
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, the court must decide whether the requested documents are relevant and whether discovery is appropriate in the circumstances. The Registrar had to determine whether the Defendants’ categories were sufficiently targeted to the validity grounds pleaded (novelty, obviousness and insufficiency) and whether the categories were distinct rather than duplicative or overlapping.
A second issue concerned the evidential and practical limits of discovery where documents are no longer available. The Registrar had to assess whether Towa’s sworn explanation—confirming that certain categories of documents were no longer in its possession, custody or power—was adequate to resist ordering discovery. This required consideration of what level of detail is necessary in an affidavit explaining document destruction or disposal, particularly where the relevant events occurred decades earlier.
A third issue involved discovery of foreign-related material. Category 3 sought documents relating to Towa’s opinions and submissions in other jurisdictions, where equivalent foreign patents had been challenged on similar validity and infringement issues. The Registrar had to consider whether such foreign opinions and submissions should be disclosed, and how Singapore practice aligns with or departs from English authorities on the scope of discovery of patentee materials from other proceedings.
How Did the Court Analyse the Issues?
The Registrar began by addressing Category 1. The Defendants sought documents relevant to any ground in which validity of the Patent had been put in issue (novelty, obviousness and insufficiency) within a time period beginning two years before the earliest claimed priority date and ending two years after. The category also tied the requested documents to specific claim phrases and to comparisons with Japanese patent publications (Hitachi and NEC Kyushu) and the ASA 808K machine inspected by Towa in August 2014.
Towa argued that Category 1 should be read narrowly as covering only documents concerning prior challenges to validity of the Patent. The Registrar rejected this narrow reading. While the narrow interpretation was “plausible at first blush,” the Registrar agreed with the Defendants that Category 1 was not limited to prior challenges; rather, it was directed to documents relevant to validity issues (novelty, obviousness and insufficiency). This reflects a broader principle in discovery: the focus is on relevance to the issues in the pleadings and the pleaded grounds, not merely on whether a document arose from a formal challenge.
However, the Registrar then identified a practical difficulty: it was unclear how Category 1 documents would differ from documents potentially captured by other categories (notably Categories 2, 3 and 6). The Defendants suggested that Category 1 might include internal inventors’ notes or discussions that would not fall within the other categories. The Registrar was not convinced that such examples were sufficiently different. Categories 2 and 6 were already directed to research and experimental work, while Category 3 was directed to opinions expressed in other jurisdictions. Because the Defendants could not pinpoint types of documents that would not already be covered, the Registrar declined to grant specific discovery for Category 1. This demonstrates the court’s reluctance to order discovery where the requested categories are not meaningfully distinct and would lead to duplication.
Turning to Categories 2 and 6, the Registrar dealt with them together. Category 2 sought documents relating to Towa’s research leading to the invention in the Patent, relevant to obviousness or insufficiency, again tied to specific claim phrases and comparisons with Hitachi, NEC Kyushu and the ASA 808K. Category 6 sought documents relating to experimental work up to the date of publication of the Patent, also tied to the same claim phrases. Importantly, Towa’s deponent, Mr Yasushi Ukai, confirmed on oath that while the documents were relevant, they were no longer in Towa’s possession, custody or power.
Mr Ukai explained that the research documents were created about 20 years earlier, at a time when Towa had no internal rules regulating retention periods, and that the documents were disposed of when Towa shifted operations to another building in 1997. The Defendants argued that the explanation was inadequate because Mr Ukai did not state how he attempted to locate the documents, and that the deponent should be someone with personal knowledge of events 20 years ago. The Defendants also pointed out that Mr Ukai was a Managing Director of Towa’s subsidiary rather than an employee of Towa itself.
The Registrar accepted that Mr Ukai did not have personal knowledge from two decades earlier. Nevertheless, the Registrar held that it was neither reasonable nor necessary, for the purposes of the specific discovery application, to require the company to locate employees with personal knowledge of events occurring 20 years ago—particularly where the authorised deponent had already confirmed the current position on oath. The Registrar also noted that Mr Ukai’s affidavit stated that the facts were derived from personal knowledge or based on instructions or documents accessible to him. There was also no evidence before the Registrar that Mr Ukai’s position and explanations ought to be disbelieved. On that basis, the Registrar did not grant discovery of Categories 2 and 6.
This reasoning reflects a pragmatic approach to discovery in complex technical and historical contexts. The court did not treat the absence of personal recollection as fatal where the deponent is authorised and provides a coherent sworn explanation of the document status. It also implicitly recognises that discovery is not intended to impose an impossible or disproportionate burden where documents have been disposed of long ago.
For Category 3, the Defendants sought documents relating to Towa’s opinions expressed in other jurisdictions, including internal discussions and correspondence with external parties, addressing countering validity attacks and Towa’s approach to infringement. The Defendants’ request was motivated by the fact that equivalent foreign patents had been challenged in other jurisdictions on similar issues. Towa had agreed to disclose the judgments from those jurisdictions, but disclosure was delayed due to translation into English.
The Defendants argued that the patentee’s opinions and submissions leading up to those decisions were “probably more important than the decision itself.” They relied on a commentary in Singapore Civil Procedure (2015 vol 1) and traced the proposition to the English case of Vickers plc v Horsell Graphic Industries Ltd [1988] RPC 21. The Registrar noted, however, that the authors themselves 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 extract provided truncates the remainder of the analysis, the Registrar’s approach in this segment indicates that the court would carefully consider whether Singapore should adopt the broader discovery approach suggested by Vickers, or whether it should follow the more restrictive approach reflected in Glaverbel.
Overall, the Registrar’s analysis demonstrates a structured discovery inquiry: (i) relevance to pleaded issues and validity grounds; (ii) whether categories are sufficiently distinct and not overlapping; (iii) whether the requested documents are available or whether the patentee has provided a credible explanation for non-availability; and (iv) whether foreign proceeding materials should be discoverable, taking into account the development of English authorities and Singapore commentary.
What Was the Outcome?
Based on the extracted portion of the judgment, the Registrar declined to grant specific discovery for Category 1, Categories 2 and 6, and (at least at this stage of the analysis) did not accept the Defendants’ broader approach to Category 3 without further consideration of the governing principles. The Registrar’s refusal for Categories 1, 2 and 6 was grounded in overlap concerns and the adequacy of the sworn explanation regarding disposal of documents.
The practical effect of the decision is that the Defendants’ discovery reach into Towa’s historical research, experimental work, and certain validity-related internal materials was curtailed. This likely narrowed the evidential base available to the Defendants for attacking novelty, obviousness and insufficiency, and it underscores that discovery in patent cases is not automatic even where relevance is asserted.
Why Does This Case Matter?
This decision is significant for practitioners because it illustrates how Singapore courts manage discovery in patent infringement proceedings under O 24 r 5 and O 87A r 5. The Registrar’s insistence that categories must be meaningfully differentiated—and not merely larger or overlapping circles—provides a practical drafting lesson for litigators. When seeking discovery, counsel should articulate why each category captures distinct documents and how it relates to specific pleaded issues, rather than relying on broad formulations that risk being refused as duplicative.
The decision also matters for its treatment of document non-availability. Where documents are alleged to have been disposed of long ago, the court will consider whether the authorised deponent has provided a credible, coherent explanation and whether it is reasonable to expect further searching or additional deponents with personal knowledge. For law firms, this highlights the importance of preparing affidavits that explain disposal in a structured way and that address the court’s concerns about the basis for the deponent’s belief, while recognising that the court may not require exhaustive reconstruction of events from decades earlier.
Finally, the discussion on foreign proceeding materials (Category 3) signals that Singapore courts will scrutinise whether English authorities supporting discovery of foreign opinions and submissions should be followed. Even where equivalent foreign patents have been litigated, the discoverability of patentee internal positions taken in those jurisdictions is not necessarily automatic. Practitioners should therefore expect careful judicial balancing of relevance, fairness, and the proper scope of discovery, rather than assuming that foreign litigation documents will always be ordered.
Legislation Referenced
- Patents Act (Singapore) – referenced in the context of patent infringement and validity issues
- 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 – referenced in patent-related procedure
Cases Cited
- [2014] SGHCR 16
- [2014] SGHCR 18
- [2015] SGHCR 4 (this case)
- 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.