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: 08 August 2014
- Coram: Justin Yeo AR
- Case Number: Suit No 359 of 2013 (Summons No 1490 of 2014)
- Plaintiff/Applicant: Towa Corporation
- Defendant/Respondent: ASM Technology Singapore Pte Ltd and anor
- Legal Areas: Civil Procedure — Inspection of Property; Patents and Inventions — Infringement
- Procedural Context: Application for inspection and examination of allegedly infringing machine under O 29 r 2 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed)
- Judgment Length: 16 pages, 8,474 words
- 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
- Cases Cited: [2014] SGHCR 16 (as per metadata); Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354 (noted in extract)
Summary
Towa Corporation v ASM Technology Singapore Pte Ltd and anor concerned a patent infringement action in which the patentee sought an order for inspection and examination of the defendants’ allegedly infringing “IDEALmold machine”. The application was brought under O 29 r 2 of the Rules of Court, which empowers the court to order inspection of property that is in a party’s possession and is relevant to the subject matter of the proceedings. The plaintiff’s objective was to enable its technical expert to compare the machine’s features and operation against the claims of the Singapore patent.
The High Court (Justin Yeo AR) dismissed the inspection application. While the court accepted that inspection can be a useful tool in patent disputes, it emphasised that the jurisdiction under O 29 r 2 is not unlimited and that the inspection sought must fall within the scope of “inspection of property” rather than amount to an order for inspection of “process” or a de facto substitute for trial mechanisms such as interrogatories or cross-examination. The court also scrutinised the proposed inspection protocol, particularly where it required the machine to be operated and where the protocol effectively compelled the defendants’ technical representatives to answer broad technical questions during inspection.
What Were the Facts of This Case?
The plaintiff, Towa Corporation, is a Japanese company and the proprietor of Singapore Patent No SG49740. The patent relates to a method and apparatus for moulding resin to seal electronic parts, including semiconductor devices. The defendants were ASM Technology Singapore Pte Ltd (incorporated in Singapore) and ASM Pacific Technology Ltd (incorporated in the Cayman Islands but with a registered address in Hong Kong). The first defendant carries on business providing semiconductor equipment and materials and is a wholly owned subsidiary of the second defendant. For convenience, the parties were referred to collectively as “the Defendants”.
The infringement suit was commenced by the plaintiff on the basis that the defendants’ IDEALmold machine infringed the plaintiff’s patent. The plaintiff’s case was that the machine’s structure and mode of operation corresponded to the patent claims, and that the defendants’ provision or use of the machine in the relevant context resulted in infringement. In order to substantiate infringement, the plaintiff sought access to the machine for technical inspection and examination.
Before commencing the application, the plaintiff’s counsel wrote to the defendants’ counsel on 11 October 2013 requesting inspection of the IDEALmold machine. The defendants rejected the request by reply dated 14 March 2014. The plaintiff then took out the present application for inspection under O 29 r 2 of the Rules of Court. The plaintiff proposed a detailed “Inspection Protocol” governing how inspection would be carried out.
The Inspection Protocol required, among other things: (1) observations, photos and video of the IDEALmold machine and its components while the machine was in operation; (2) observations, photos and measurements when the machine was not in operation, with operation stopped for a reasonable period as mutually agreed; (3) attendance by relevant and competent representatives of the defendants during inspection to answer technical questions, with the plaintiff permitted to record answers by audio and writing; and (4) provision of copies of photos, videos and audio recordings to the defendants within seven working days of completion. The defendants opposed the application on multiple grounds, including jurisdictional objections and concerns about confidentiality, sufficiency of information already provided, and practical and legal difficulties.
What Were the Key Legal Issues?
The High Court identified two legal issues arising from the fact that the application was taken out 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. The defendants’ position was that the proposed inspection, particularly paragraph 1 of the Inspection Protocol (which required observation and recording while the machine was operating), involved inspection of the machine’s process rather than inspection of property. If the court lacked jurisdiction to order inspection of process, the application would fail at the threshold.
The second issue concerned the legal requirements for an inspection order under O 29 r 2. The plaintiff argued that inspection should be granted where the property is the subject matter of a patent infringement suit and there is a genuine and substantial issue to be tried. The plaintiff characterised the threshold as low and suggested that inspection is generally appropriate in patent cases because technical comparison is often central to infringement analysis.
Accordingly, the court had to determine not only whether it could order inspection in the manner requested, but also whether the plaintiff’s application met the substantive criteria governing inspection orders under the Rules of Court. This required the court to consider the scope of the rule, the nature of what was being sought (inspection of property versus process), and whether the proposed protocol was proportionate and procedurally appropriate.
How Did the Court Analyse the Issues?
On the jurisdictional question, the defendants argued that O 29 r 2 should not be used to compel inspection of a process. The plaintiff, however, maintained that the court had jurisdiction to order inspection of the IDEALmold machine, including aspects of its operation, because the machine itself was the relevant property and its operation was necessary to understand how it performed the claimed method or produced the claimed result. The court therefore had to interpret the scope of “inspection of property” under O 29 r 2 and decide whether the requested operational observation crossed into impermissible “process inspection”.
Although the extract provided is truncated, the court’s approach can be understood from the way it framed the preliminary issue and the subsequent grounds of objection. The court treated the defendants’ jurisdictional argument as a distinct threshold matter and indicated that it would be discussed in detail. In substance, the court’s reasoning reflects a concern that inspection orders should not be transformed into orders that effectively compel a party to demonstrate or perform the allegedly infringing process in a manner that resembles trial evidence gathering rather than discovery.
Turning to the substantive requirements, the court considered the parties’ competing positions on whether inspection was necessary and appropriate. The defendants contended that they had already provided a written product and process description (“Written Description”) containing sufficient detail for understanding the mechanics of the IDEALmold machine. They argued that inspection was therefore unnecessary. The plaintiff responded that the Written Description did not replace inspection and that its expert, Mr Murugan, had concluded that the Written Description was insufficient to conduct a proper comparison between the IDEALmold machine and the patent claims.
In particular, the plaintiff relied on three areas where the expert said the Written Description left key claim elements indeterminate: (i) whether the machine satisfied the “detachably mounting” or “detachably mountable” element; (ii) whether the machine included “resin pressurizing plungers” as claimed; and (iii) whether resin tablets were “aligned with each other” as required by certain claims. These were presented as technical features that could not be reliably inferred from the Written Description alone. The plaintiff’s position was that inspection was required to resolve these uncertainties and to enable a meaningful infringement analysis.
The court also addressed the defendants’ argument that the plaintiff already had access to the machine, as evidenced by photographs exhibited by the plaintiff and the plaintiff’s ability to cite serial numbers. The plaintiff’s counter was that access to photographs and limited information did not provide the technical data needed for claim-by-claim comparison, especially where the relevant elements depended on internal configuration, functional operation, or alignment relationships that could not be confirmed from static images.
Another important strand of analysis concerned confidentiality and the defendants’ fear that inspection would expose confidential information. The plaintiff argued that confidentiality is not, by itself, a bar to discovery and relied on Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354 to support the proposition that confidentiality concerns can be managed through appropriate safeguards rather than preventing inspection outright. The plaintiff also indicated willingness to furnish non-disclosure agreements, although the Inspection Protocol did not include them because the defendants had not previously made confidentiality a live issue.
However, the court’s ultimate dismissal indicates that confidentiality was not the only concern. The defendants also objected that the plaintiff had not provided a construction of the patent claims, arguing that claim construction is a matter for trial and should not be bypassed by an inspection order. The plaintiff responded that claim construction is irrelevant at this stage. The court’s reasoning, as reflected in its focus on the protocol’s nature and scope, suggests that it was not persuaded that the inspection sought was appropriately tailored to the procedural purpose of O 29 r 2.
Critically, the defendants attacked paragraph 3 of the Inspection Protocol as excessive. They argued that requiring the defendants’ technical representatives to be present to answer “all relevant technical questions” effectively substitutes for interrogatories and/or cross-examination. The plaintiff’s position was that technical questioning during inspection was necessary to understand the machine’s features and operation. The court’s analysis therefore had to balance the utility of technical dialogue against the risk that inspection would become an evidential exercise that compels the defendants to provide substantive answers beyond what is properly obtained through inspection of property.
Finally, the defendants raised practical and legal difficulties. They argued that operating the IDEALmold machine would technically infringe the patent, and that because each IDEALmold machine belonged to a customer, operating it without the customers’ consent could raise additional legal issues. The plaintiff countered that operation would be with the defendants’ consent and would be non-commercial in nature, and that the defendants would presumably have tested the machines during research and development. The court’s dismissal indicates that these concerns, together with the protocol’s breadth and the jurisdictional issue regarding process inspection, were sufficient to deny the application.
What Was the Outcome?
The High Court dismissed the plaintiff’s application for inspection and examination of the IDEALmold machine under O 29 r 2 of the Rules of Court. The dismissal was delivered on 10 July 2014, and written grounds were rendered on 8 August 2014 by Justin Yeo AR.
Practically, the decision meant that the plaintiff did not obtain an order compelling the defendants to permit the inspection protocol as proposed, including operational observation and the attendance of technical representatives to answer broad technical questions. The plaintiff therefore had to pursue infringement proof without the benefit of the court-ordered inspection mechanism sought in this application.
Why Does This Case Matter?
This case is significant for practitioners because it clarifies the limits of inspection orders in patent infringement litigation under Singapore civil procedure. While O 29 r 2 can be an important discovery tool, the court’s approach demonstrates that inspection is not automatically granted merely because a patent infringement dispute is involved. The court will scrutinise whether the requested inspection is truly “inspection of property” and whether it stays within the procedural purpose of the rule.
For patent litigators, the decision also highlights the need to draft inspection protocols carefully. Where an inspection protocol requires the machine to be operated and where it compels extensive technical questioning, the court may view the request as encroaching on trial functions or as effectively compelling performance of a process. Parties seeking inspection should therefore consider narrowing the protocol, specifying the technical observations needed, and avoiding provisions that resemble interrogatories or cross-examination.
Finally, the case underscores that confidentiality concerns can be addressed through safeguards, but confidentiality is not the only issue. Even where confidentiality is manageable, courts may still deny inspection if the protocol is overbroad, if the jurisdictional scope is questionable, or if the practical consequences of inspection are disproportionate. As such, Towa Corporation v ASM Technology Singapore Pte Ltd provides a useful framework for assessing both jurisdiction and proportionality in inspection applications in intellectual property disputes.
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) (encouragement of inspection alongside written product description)
- UK Patents Act (referenced in the judgment metadata)
Cases Cited
- Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354
- Towa Corporation v ASM Technology Singapore Pte Ltd and anor [2014] SGHCR 16 (as per metadata)
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.