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)
- Plaintiff/Applicant: Towa Corporation
- Defendants/Respondents: ASM Technology Singapore Pte Ltd and anor
- Judges: Justin Yeo AR
- Counsel for Plaintiff/Applicant: Mr Foo Maw Jiun and Mr Ng Chong Yuan (Rodyk & Davidson LLP)
- Counsel for Defendants/Respondents: Mr Daniel Lim (Joyce A Tan & partners)
- Legal Areas: Civil Procedure — Inspection of Property; Patents and Inventions — Infringement
- Statutes Referenced: UK Patents Act
- Rules of Court Referenced: O 29 r 2; O 87A r 5(4)
- Procedural Posture: Application for inspection and examination of the defendants’ IDEALmold machine under O 29 r 2
- Decision: Application dismissed (oral decision given 10 July 2014; written grounds rendered 8 August 2014)
- Patent at Issue: Singapore Patent No SG49740 (moulding resin to seal electronic parts such as semiconductor devices)
- Length of Judgment: 16 pages, 8,474 words
- Cases Cited: [2014] SGHCR 16 (as per metadata); Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354
Summary
This High Court decision concerns a patent infringement suit in which the patent proprietor, Towa Corporation, sought an order under O 29 r 2 of the Rules of Court for inspection and examination of the defendants’ “IDEALmold machine”. The application was made because the plaintiff alleged that the defendants’ machine infringed Singapore Patent No SG49740, a patent relating to a method and apparatus for moulding resin to seal electronic parts, including semiconductor devices.
The court dismissed the plaintiff’s inspection application. While the judgment recognises that inspection can be an important tool in patent disputes, the court held that the proposed inspection protocol went beyond what the procedural rule permits and/or did not satisfy the legal requirements for granting inspection. In particular, the defendants raised a jurisdictional objection that the protocol effectively required inspection of the machine’s process, not merely the inspection of “property”, and the court accepted that this objection was material to the application.
What Were the Facts of This Case?
Towa Corporation (“Towa”) is a Japanese company and the proprietor of Singapore Patent No SG49740. The patent concerns moulding resin to seal electronic parts such as semiconductor devices. The alleged infringing product was a machine used by ASM Technology Singapore Pte Ltd (“ASM Singapore”) in its business of 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 a registered address in Hong Kong. The defendants were collectively referred to as “the Defendants”.
Towa commenced a suit for patent infringement, alleging that the Defendants’ IDEALmold machine occasioned infringement of Towa’s patent. Before commencing the suit, Towa’s counsel wrote to the defendants’ counsel on 11 October 2013 requesting inspection of the IDEALmold machine. The defendants rejected the request by a letter dated 14 March 2014. Towa then brought the present application for inspection and examination under O 29 r 2 of the Rules of Court.
The inspection request was supported by a detailed “Inspection Protocol”. The protocol required, among other things, that observations, photos and a video be made while the IDEALmold machine was in operation; that observations, photos and measurements be made when the machine was not in operation (with operation stopped for a reasonable period as mutually agreed); and that the defendants’ “relevant and competent representative(s)” be present during inspection to answer all relevant technical questions. The protocol also allowed Towa to make audio and written recordings of the defendants’ answers and required Towa to provide copies of the photos, videos and audio recordings to the defendants within seven working days of completion.
In response, the defendants advanced multiple objections. They argued that the written product and process description they had already provided was sufficient to understand the mechanics of the IDEALmold machine. They also contended that Towa already had access to the machine, as evidenced by photographs exhibited by Towa and Towa’s ability to cite serial numbers. Further, they argued that inspection would involve access to confidential information. They also challenged the adequacy of Towa’s patent claim construction for the purposes of the application, and they objected that the protocol was excessive—particularly because the presence of technical representatives to answer questions would, in substance, replicate interrogatories or cross-examination. Finally, they argued that inspection would cause serious difficulties and inconvenience, including the risk of technical infringement if the machine were operated, and the fact that each IDEALmold machine belonged to a customer, so operating it without customer consent could raise legal issues.
What Were the Key Legal Issues?
The court framed two legal issues arising from the fact that the application was brought under O 29 r 2 of the Rules of Court. First, it asked whether the court has jurisdiction to order inspection of “process” under O 29 r 2. This was a threshold question because the defendants’ preliminary objection was that the proposed inspection protocol—especially the requirement to observe the machine while it was operating—amounted to inspection of the machine’s process, which the defendants argued was outside the scope of O 29 r 2.
Second, the court considered what the legal requirements are for an inspection order under O 29 r 2. In patent infringement cases, inspection is often sought to enable the claimant to compare the alleged infringing product with the patent claims. The plaintiff argued that the test for granting inspection should be low and that inspection should generally be granted in patent cases where infringement is genuinely in issue. The defendants, by contrast, argued that the plaintiff’s application failed to meet the legal requirements and that the protocol was not appropriately tailored.
How Did the Court Analyse the Issues?
The analysis began with the jurisdictional objection. O 29 r 2 empowers the court to order inspection and examination of property. The defendants contended that the protocol, particularly paragraph 1 requiring observations, photos and video while the machine is in operation, effectively required inspection of the machine’s process. They submitted that the court therefore lacked jurisdiction to order inspection of process under O 29 r 2.
Although the plaintiff maintained that the court had jurisdiction, the court treated the jurisdictional question as central. The court’s reasoning reflects a careful approach to the scope of discovery-like procedural powers in patent litigation. The court did not treat O 29 r 2 as a general licence to compel any form of technical demonstration or operational testing. Instead, it distinguished between inspecting the physical apparatus (“property”) and compelling observation of how the apparatus operates (“process”). Where the proposed inspection requires operation and observation of functional steps, the court was concerned that the order would, in substance, compel process inspection rather than property inspection.
After addressing jurisdiction, the court turned to the legal requirements for inspection under O 29 r 2. The plaintiff argued that inspection should be granted where (a) the property to be inspected is the subject matter of a patent infringement suit and (b) there is a genuine and substantial issue to be tried. The plaintiff characterised the threshold as low and suggested that inspection should generally be allowed in patent cases.
The defendants’ objections were then considered in light of those requirements. The court noted that the defendants had provided a written product and process description (the “Written Description”) and that Towa had access to the machine through photographs and the ability to cite serial numbers. The plaintiff responded that the Written Description was insufficient for its expert to conduct a comparison with the patent claims, and it identified three specific claim elements that, according to its expert, could not be determined from the Written Description alone: (i) whether the machine satisfied the “detachably mounting” or “detachably mountable” element; (ii) whether it had “resin pressurizing plungers”; and (iii) whether resin tablets were “aligned with each other” or “in alignment with each other”.
On confidentiality, the plaintiff argued that confidentiality should not be a bar to discovery and relied on the principle in Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354 that confidentiality is not, by itself, a reason to refuse inspection. The plaintiff also indicated willingness to provide non-disclosure agreements. The defendants, however, maintained that inspection would expose confidential information. The court’s approach suggests that confidentiality concerns must be managed through appropriate safeguards rather than used as a blanket refusal, but the court still had to ensure that the inspection order stayed within the procedural scope and was proportionate.
Another significant part of the court’s reasoning concerned the structure of the Inspection Protocol. The defendants objected that paragraph 3—requiring the defendants’ technical representatives to be present to answer all relevant technical questions and allowing Towa to record those answers—was excessive and effectively substituted for interrogatories or cross-examination. The plaintiff did not fully address the procedural concern with precision, and the court appears to have been receptive to the defendants’ characterisation that the protocol would go beyond inspection and into compelled technical testimony.
The court also considered the practical and legal difficulties raised by the defendants. The defendants argued that operating the IDEALmold machine could itself create infringement risk, and that the machines belonged to customers, so operation without consent could raise additional legal issues. While the plaintiff sought to minimise these concerns by suggesting that operation would be with consent and non-commercial in nature, the court nonetheless treated the operational requirements as relevant to whether the protocol was appropriate for an inspection order under O 29 r 2. In other words, even where infringement is alleged, an inspection order must be tailored so that it does not impose unnecessary burdens or require the defendants to do more than what the rule contemplates.
Finally, the court addressed the plaintiff’s position on claim construction. The defendants argued that the plaintiff had not provided a construction of the patent claims. The plaintiff responded that claim construction is a matter for trial and therefore irrelevant to the inspection application. The court’s reasoning indicates that while inspection may be sought without a full trial-level construction, the inspection must still be directed to relevant issues and must not be used to obtain a fishing expedition or to compel operational demonstrations that are not properly connected to the procedural purpose of inspection.
What Was the Outcome?
The court dismissed Towa’s application for inspection and examination of the IDEALmold machine. The dismissal was delivered orally on 10 July 2014, and written grounds were provided on 8 August 2014. The practical effect of the decision is that Towa did not obtain an order compelling the defendants to permit the proposed inspection protocol, including observation and recording while the machine was operating and the presence of technical representatives to answer questions in the manner proposed.
For the litigation, the dismissal meant that Towa would have to pursue its infringement case without the benefit of the court-ordered inspection mechanism it sought under O 29 r 2. The decision therefore underscores that, in Singapore patent disputes, inspection orders are not automatic and must satisfy both jurisdictional limits and proportionality requirements.
Why Does This Case Matter?
This case is significant for practitioners because it clarifies the boundaries of O 29 r 2 in the context of patent infringement litigation. While inspection can be a powerful means of obtaining technical information, the court will scrutinise whether the requested inspection is truly an inspection of “property” and whether it effectively compels “process” observation or operational testing. The decision signals that courts will not treat O 29 r 2 as a substitute for trial evidence or as a mechanism to compel functional demonstrations that resemble process inspection.
Second, the case highlights the importance of tailoring an inspection protocol to the procedural purpose. The court’s concerns about paragraph 3 of the protocol—requiring technical representatives to answer questions and permitting recordings—illustrate that inspection orders must not become a backdoor for interrogatories or cross-examination. Practitioners should therefore draft inspection protocols that focus on physical examination, measurements, and objective observations, and that include appropriate safeguards for confidentiality without overstepping into compelled technical testimony.
Third, the decision has practical implications for how plaintiffs prepare infringement inspection applications. The plaintiff’s reliance on expert inability to determine certain claim elements from a written description shows that courts will consider whether the inspection is genuinely necessary. However, even where written descriptions are said to be insufficient, the court may still refuse inspection if the protocol is too broad, operationally burdensome, or outside the jurisdictional scope of O 29 r 2.
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 (as referenced in the judgment metadata)
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.