Case Details
- Citation: [2014] SGHCR 16
- Title: Towa Corporation v ASM Technology Singapore Pte Ltd and anor
- Court: High Court of the Republic of Singapore
- Date of Decision: 08 August 2014
- Coram: Justin Yeo AR
- Case Number: Suit No 359 of 2013 (Summons No 1490 of 2014)
- Procedural Posture: Application for inspection and examination of allegedly infringing machine under O 29 r 2 of the Rules of Court
- Plaintiff/Applicant: Towa Corporation
- Defendants/Respondents: ASM Technology Singapore Pte Ltd and anor
- Judgment Length: 16 pages, 8,474 words
- Legal Areas: Civil Procedure — Inspection of Property; Patents and Inventions — Infringement
- 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: UK Patents Act
- Rules of Court Referenced: O 29 r 2; O 87A r 5(4)
- Key Patent: Singapore Patent No SG49740
- Alleged Infringing Product/Machine: “IDEALmold machine”
Summary
Towa Corporation v ASM Technology Singapore Pte Ltd and anor [2014] SGHCR 16 is a High Court decision addressing when, and to what extent, a patent proprietor may obtain an order for inspection and examination of allegedly infringing property under O 29 r 2 of the Rules of Court. The plaintiff, Towa Corporation (“Towa”), sued for patent infringement in relation to ASM’s “IDEALmold machine”, a semiconductor resin moulding apparatus. Towa then applied for court-ordered inspection and examination of the machine, proposing a detailed inspection protocol that included observing the machine while operating, taking photographs and video, and requiring ASM’s technical representatives to be present to answer technical questions during inspection.
The application was dismissed. The court’s reasoning turned on two main themes. First, the court considered whether O 29 r 2 permits inspection orders that effectively require inspection of “process” rather than “property”. Second, even assuming jurisdiction, the court assessed whether the proposed inspection protocol met the legal requirements for inspection, including proportionality and the proper scope of discovery in patent infringement proceedings. The court was concerned that the protocol went beyond inspection of the machine as an object and ventured into compelling technical interrogation and operational testing in a manner that raised jurisdictional and procedural difficulties.
What Were the Facts of This Case?
Towa is a Japanese company and the proprietor of Singapore Patent No SG49740. The patent relates to methods and apparatus for moulding resin to seal electronic parts, including semiconductor devices. ASM Technology Singapore Pte Ltd (“ASM Singapore”) is a Singapore-incorporated company providing semiconductor equipment and materials. ASM Singapore is a wholly owned subsidiary of ASM Pacific Technology Ltd, which is incorporated in the Cayman Islands but has its registered address in Hong Kong. For convenience, the defendants are referred to collectively as “ASM”.
After Towa commenced an infringement suit against ASM, Towa sought to inspect the IDEALmold machine. By a letter dated 11 October 2013, Towa’s counsel requested inspection of the machine. ASM rejected the request by reply dated 14 March 2014. Towa then brought the present application under O 29 r 2 of the Rules of Court for inspection and examination of the IDEALmold machine.
The inspection protocol proposed by Towa was detailed. It required observations, photos, and video while the machine was in operation. It also required observations, photos, and measurements when the machine was not in operation, with operation to be stopped for a “reasonable period” as mutually agreed. Critically, the protocol required ASM’s “relevant and competent representative(s)” to be present during inspection to answer all relevant technical questions. Towa was permitted to make audio and written recordings of answers. Finally, Towa would provide ASM with copies of photos, videos, and audio recordings within seven working days after completion.
ASM opposed the application on multiple grounds. It argued that it had already provided a written product and process description (“Written Description”) sufficient to understand the mechanics of the IDEALmold machine. ASM also contended that Towa already had access to the machine, as evidenced by photographs produced by Towa and Towa’s ability to cite serial numbers. ASM further argued that inspection would involve ASM’s confidential information. It also objected that Towa had not provided a claim construction. ASM criticised the protocol as excessive, particularly the requirement that ASM’s technical representatives be present to answer questions, which ASM characterised as an attempt to substitute for interrogatories or cross-examination. Finally, ASM raised practical and legal concerns: operating the machine could itself infringe the patent, and the machine belonged to ASM’s customers, so operating it without customer consent could create additional legal issues.
What Were the Key Legal Issues?
The High Court identified two legal issues arising from the fact that the application was brought under O 29 r 2 of the Rules of Court. The first issue was jurisdictional: whether the court has jurisdiction to order inspection of “process” under O 29 r 2. ASM argued that paragraphs 1 and 2 of Towa’s inspection protocol, and in particular paragraph 1, effectively required inspection of the machine’s process (ie, how it operates), and that O 29 r 2 did not extend to ordering inspection of process.
The second issue was substantive and procedural: what legal requirements govern an inspection order under O 29 r 2. In other words, even if jurisdiction existed, the court had to determine the threshold for granting inspection, the proper scope of inspection, and the extent to which the proposed protocol was appropriate in a patent infringement context. Towa urged that the threshold was low and that inspection should generally be granted in patent cases where infringement is alleged and the defendant controls the relevant evidence.
How Did the Court Analyse the Issues?
The court began by framing the application within the structure of O 29 r 2. While the extracted text provided is truncated after the start of the “Jurisdiction” analysis, the court’s approach is evident from the issues it identified and the way it treated the parties’ arguments. The court treated the jurisdiction question as a threshold matter: if the protocol required inspection of process in a way not contemplated by O 29 r 2, the court could not grant the order as requested.
On jurisdiction, ASM’s position was that Towa’s protocol was not merely an inspection of property (the machine itself), but an inspection of the machine’s operational process. Paragraph 1 of the protocol required observation, photos, and video while the machine was in operation. ASM argued that this was effectively an order compelling process inspection. Towa countered that the court had jurisdiction and that the machine’s operation was part of what needed to be inspected to compare the machine with the patent claims. The court therefore had to decide whether “inspection of property” under O 29 r 2 can include inspection of the way the property operates, or whether it is limited to the physical characteristics of the property as an object.
In addressing the second issue—requirements for inspection—the court considered the practical and legal concerns raised by ASM and the adequacy of alternative information. ASM argued that the Written Description provided sufficient detail for understanding the machine’s mechanics, and that Towa already had access to the machine through photographs and serial numbers. Towa responded that its expert had reviewed the Written Description and concluded it was insufficient to conduct a proper comparison with the patent claims. Towa highlighted specific claim elements that, according to its expert, could not be verified from the Written Description: (i) whether the machine had “detachably mounting” or “detachably mountable” additional moulding units; (ii) whether the machine used “resin pressurizing plungers”; and (iii) whether resin tablets were “aligned with each other” in the manner required by the claims.
The court also had to assess the scope and proportionality of the inspection protocol. ASM’s criticism that paragraph 3 was excessive is particularly important. Paragraph 3 required ASM’s technical representatives to be present to answer “all relevant technical questions” and allowed Towa to record those answers. ASM characterised this as an attempt to replicate interrogatories and/or cross-examination through the inspection process. Towa’s position was that the presence of technical representatives was necessary to enable meaningful inspection and to clarify technical aspects relevant to claim comparison. The court’s analysis, as reflected in the issues it identified, indicates that it was attentive to the boundary between permissible inspection and impermissible procedural substitution—ensuring that inspection does not become a mechanism to compel discovery beyond what the rules contemplate.
Further, the court considered confidentiality and access. Towa argued that confidentiality is not, by itself, a bar to discovery, citing Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354. Towa also stated it was willing to provide non-disclosure agreements. ASM’s counter was that inspection would necessarily involve confidential information. The court’s reasoning likely weighed the availability of safeguards (such as NDAs) against the breadth of the protocol and the practical burden on ASM.
Finally, the court considered the “technical infringement” and inconvenience concerns. ASM argued that if it operated the IDEALmold machine during inspection, it would technically infringe the patent. ASM also argued that because each IDEALmold machine belonged to a customer, operating it without customer consent could raise additional legal issues. Towa responded that operation would be with ASM’s consent and non-commercial in nature, and that in the ordinary course of research and development the machines would have to be tested anyway. The court’s dismissal suggests that, even if these concerns were not decisive in isolation, they contributed to the overall assessment that the proposed protocol was not appropriate in the form sought.
What Was the Outcome?
The High Court dismissed Towa’s application for inspection and examination of the IDEALmold machine. The court had earlier dismissed the application orally on 10 July 2014 and then issued written grounds on 8 August 2014.
Practically, the decision means that Towa did not obtain the court-ordered inspection on the terms of its proposed Inspection Protocol. The dismissal underscores that, in Singapore patent infringement litigation, inspection orders under O 29 r 2 are not automatic and must fit within the jurisdictional and procedural boundaries of the rule, including the proper scope of what can be inspected and how discovery-like mechanisms should be handled.
Why Does This Case Matter?
Towa v ASM is significant for practitioners because it clarifies the limits of inspection as a discovery tool in patent infringement proceedings. While patent plaintiffs often seek inspection to obtain evidence that is uniquely within the defendant’s control, the court’s approach demonstrates that inspection is not a substitute for other procedural mechanisms (such as interrogatories, requests for further and better particulars, or trial evidence). The decision also highlights that inspection protocols must be carefully drafted to focus on inspection of property rather than compelling operational testing or process interrogation beyond what the rules permit.
From a litigation strategy perspective, the case is a reminder that courts will scrutinise the proportionality and intrusiveness of inspection protocols. Even where a plaintiff can articulate why written descriptions are insufficient, the court may still refuse inspection if the protocol is overly broad, requires operational steps that raise legal complications, or effectively compels the defendant to provide discovery through technical questioning and recording. For defendants, the case supports the argument that inspection should be bounded and that concerns about confidentiality, operational burden, and procedural fairness can be relevant to the court’s discretion.
For law students and researchers, the decision is also useful as an example of how Singapore courts approach the intersection of civil procedure and intellectual property disputes. It illustrates the court’s willingness to engage with jurisdictional questions under the Rules of Court and to apply a structured analysis to the requirements for inspection. The case therefore serves as a reference point when advising on whether to seek inspection, how to frame the inspection request, and what safeguards and limitations may be necessary to obtain court approval.
Legislation Referenced
- Rules of Court (Cap 322, R 5, 2006 Rev Ed): O 29 r 2
- Rules of Court (Cap 322, R 5, 2006 Rev Ed): O 87A r 5(4)
- UK Patents Act (referenced in the judgment)
Cases Cited
- Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354
Source Documents
This article analyses [2014] SGHCR 16 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.