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)
- Tribunal/Court: High Court
- Applicant/Plaintiff: Towa Corporation
- Respondents/Defendants: ASM Technology Singapore Pte Ltd and anor
- Parties (context): Plaintiff: Japanese company and proprietor of Singapore Patent No SG49740. Defendants: Singapore company (wholly owned subsidiary of ASM Pacific Technology Ltd).
- Legal Areas: Civil Procedure — Inspection of Property; Patents and Inventions — Infringement
- Procedural Posture: 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: Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354 (and internal references to the present matter)
- Key Subject Matter: Whether the court has jurisdiction to order inspection of “process” under O 29 r 2; and what requirements govern inspection in patent infringement proceedings.
Summary
Towa Corporation v ASM Technology Singapore Pte Ltd and anor concerned an application by a patent proprietor for court-ordered inspection and examination of an allegedly infringing machine, referred to as the “IDEALmold machine”. The plaintiff, Towa Corporation, sued for infringement of its Singapore patent relating to a method and apparatus for moulding resin to seal electronic parts, including semiconductor devices. In aid of its infringement case, the plaintiff sought an order under O 29 r 2 of the Rules of Court for inspection of the IDEALmold machine.
The High Court (Justin Yeo AR) dismissed the plaintiff’s application. The decision turned on two principal questions: first, whether O 29 r 2 confers jurisdiction to order inspection of “process” (as opposed to inspection of property); and second, the legal requirements that must be satisfied before an inspection order is granted. While the court accepted that inspection can be relevant in patent disputes, it was not prepared to grant an inspection protocol that, in substance, required the defendants to permit observation of the machine’s operation in a manner that implicated process and potentially exceeded the scope of permissible inspection.
Practically, the case illustrates that even where a patent infringement suit is pleaded, the court will scrutinise the inspection protocol closely—particularly where the protocol requires operation of equipment, live observation, and technical questioning that may resemble interrogatories or cross-examination. The court’s approach also reflects a balancing exercise between the plaintiff’s evidential needs and the defendants’ legitimate concerns, including confidentiality, operational disruption, and the risk of compelling the defendants to do more than what is necessary to enable comparison with the patent claims.
What Were the Facts of This Case?
The plaintiff, Towa Corporation, is a company incorporated in Japan and the proprietor of Singapore Patent No SG49740. The patent concerns moulding resin to seal electronic parts such as semiconductor devices. The plaintiff alleged that the defendants’ semiconductor equipment included a machine—the IDEALmold machine—that infringed the patent.
The first defendant, ASM Technology Singapore Pte Ltd, is incorporated in Singapore and carries on business providing semiconductor equipment and materials. It is a wholly owned subsidiary of the second defendant, ASM Pacific Technology Ltd, which is incorporated in the Cayman Islands but has its registered address in Hong Kong. The defendants were collectively referred to as “the Defendants”.
After the plaintiff commenced the infringement suit, it sought inspection and examination of the IDEALmold machine. The plaintiff’s counsel wrote to the defendants’ counsel on 11 October 2013 requesting inspection. The defendants rejected the request by letter dated 14 March 2014. The plaintiff then brought the present application under O 29 r 2 of the Rules of Court for an order compelling inspection.
The plaintiff proposed an “Inspection Protocol” that was detailed and operational. It required, among other things, observations, photographs, and video of the IDEALmold machine and its components while the machine was in operation; observations, photographs, and measurements when the machine was not in operation, with operation stopped for a “reasonable period of time” as mutually agreed; the presence of competent representatives of the defendants during inspection to answer technical questions; and permission for the plaintiff to make audio and written recordings of the answers. The plaintiff also undertook to provide copies of the photos, videos, and audio recordings to the defendants within seven working days of completion.
What Were the Key Legal Issues?
Because the application was brought under O 29 r 2, the court identified two legal issues. The first was jurisdictional: whether the court has jurisdiction under O 29 r 2 to order inspection of “process” (as opposed to inspection of property). The defendants argued that the inspection protocol, particularly paragraph 1, involved inspection of the machine’s process because it required observation while the machine was operating. The plaintiff contended that the court had jurisdiction to order inspection in the circumstances.
The second issue concerned the legal requirements for granting an inspection order under O 29 r 2. The plaintiff argued that the threshold was low and that inspection should generally be granted in patent cases where infringement is pleaded. The defendants, by contrast, resisted inspection on multiple grounds, including that the plaintiff already had sufficient access to the machine through photographs and serial numbers; that the inspection would involve the defendants’ confidential information; that the plaintiff had not provided a claim construction; that the protocol was excessive and effectively substituted for interrogatories or cross-examination; and that inspection would cause serious difficulties and inconvenience, including the risk of technical infringement if the machine were operated.
In addition, the defendants raised a preliminary issue specifically targeting paragraphs 1 and 2 of the Inspection Protocol, asserting that the court had no jurisdiction to order inspection of process. This jurisdictional point was treated as a threshold matter and was addressed before the court considered the other grounds.
How Did the Court Analyse the Issues?
The court began by framing the application within the structure of O 29 r 2. The rule empowers the court to order inspection and examination of property that is in the possession of a party to the cause and that is the subject matter of the cause. The defendants’ jurisdictional argument required the court to consider whether the proposed inspection—especially observation while the machine is operating—amounted to inspection of “process” rather than inspection of “property”.
On the preliminary issue, the defendants’ position was that paragraphs 1 and 2 of the Inspection Protocol required the plaintiff to observe how the machine operates, which is effectively inspection of process. The plaintiff maintained that the court’s jurisdiction extended to inspection relevant to patent infringement, and that the distinction between property and process should not prevent inspection where the machine’s operation is necessary to determine whether the patent claims are satisfied.
Although the judgment extract provided here is truncated after the court begins its jurisdiction analysis, the court’s ultimate dismissal indicates that it was not persuaded that the protocol fell within the permissible scope of O 29 r 2. In patent infringement cases, inspection orders often aim to enable a comparison between the accused device and the patent claims. However, the court’s reasoning reflects that it will not allow O 29 r 2 to be used to compel a party to demonstrate or run its technology in a way that goes beyond inspection of the physical apparatus and into compelled disclosure or compelled testing of operational processes.
Turning to the requirements for inspection, the plaintiff argued for a low threshold: where the property to be inspected is the subject matter of a patent infringement suit and there is a genuine and substantial issue to be tried, inspection should generally be granted. The defendants’ objections show that the court’s analysis is not purely mechanical. Even if there is a genuine issue to be tried, the court must still consider whether the inspection sought is proportionate and properly tailored to the evidential purpose.
The defendants raised six main grounds. First, they argued that they had already provided a written product and process description (“Written Description”) with sufficient detail to understand the mechanics of the IDEALmold machine. Second, they argued that the plaintiff already had access to the machine through photographs and the plaintiff’s ability to cite serial numbers. Third, they contended that inspection would reveal confidential information. Fourth, they argued that the plaintiff had not provided a construction of the patent claims. Fifth, they submitted that the protocol was excessive, particularly paragraph 3, which required technical representatives to be present to answer all relevant technical questions and permitted recordings—an approach they characterised as an attempt to substitute for interrogatories or cross-examination. Sixth, they argued that inspection would cause serious difficulties and inconvenience, including the risk that operating the machine would technically infringe the patent and that, because each machine belonged to a customer, operating it without customer consent could raise further legal issues.
The plaintiff’s responses show the evidential and procedural contest. It argued that the Written Description did not replace inspection and that its expert, Mr Murugan, could not determine whether certain claim elements were satisfied based on the Written Description alone. The plaintiff identified three specific claim elements that, according to the expert, could not be assessed from the Written Description: (i) “detachably mounting” or “detachably mountable” additional moulding units; (ii) “resin pressurizing plungers”; and (iii) resin tablets being “aligned with each other”. The plaintiff also argued that it did not have access to an IDEALmold machine in the relevant sense, explaining that the photographs were obtained through investigative means.
On confidentiality, the plaintiff relied on the principle that confidentiality is not an automatic bar to discovery, citing Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354. It also indicated willingness to provide non-disclosure agreements, and it suggested that the defendants had not previously made confidentiality an issue. On claim construction, the plaintiff argued that construction is a matter for trial and therefore irrelevant to the inspection application. On the defendants’ technical infringement concern, the plaintiff argued that operation would be with the defendants’ consent and would be non-commercial in nature, and it suggested that the defendants could not realistically be unable to run the machines given that research and development would require testing.
Notably, the court’s dismissal suggests that, despite these responses, the inspection protocol as drafted was not acceptable. In particular, the protocol’s requirement that the machine be operated for observation, coupled with the presence of technical representatives to answer all relevant technical questions with recording rights, likely led the court to conclude that the inspection sought was broader than necessary and risked compelling the defendants to disclose operational know-how or to participate in an evidential process beyond inspection of property. The court’s approach is consistent with the idea that inspection orders should be targeted, proportionate, and designed to facilitate comparison with the patent claims without turning the inspection into a substitute for other procedural mechanisms.
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. The court had earlier dismissed the application on 10 July 2014 and then issued written grounds on 8 August 2014.
As a result, the plaintiff did not obtain the court-ordered inspection protocol it sought. The practical effect is that the plaintiff would have to rely on other available evidence—such as the Written Description, the photographs already obtained, and expert analysis—rather than compelling the defendants to permit live observation of the machine’s operation and technical questioning under the specific protocol proposed.
Why Does This Case Matter?
Towa Corporation v ASM Technology Singapore Pte Ltd is significant for practitioners because it clarifies that inspection under O 29 r 2 is not an automatic adjunct to patent infringement litigation. Even where there is a genuine issue to be tried, the court will scrutinise whether the inspection sought falls within the rule’s jurisdictional scope and whether the protocol is appropriately confined to inspection of property rather than compelled disclosure or demonstration of process.
The case also highlights the importance of drafting an inspection protocol that is proportionate and procedurally coherent. Where a protocol requires operation of machinery, extensive recording, and broad technical questioning, defendants may successfully argue that the inspection is excessive or effectively substitutes for other discovery tools. For patent plaintiffs, the decision underscores the need to tailor inspection requests to specific claim elements that cannot be assessed from existing materials, and to structure protocols so that they do not overreach into process inspection or quasi-interrogation.
For defendants, the case provides a framework for resisting inspection orders by raising jurisdictional objections (property versus process), confidentiality concerns (even if not an absolute bar), and practical burdens (operational disruption, customer consent, and the risk of technical infringement). The decision therefore serves as a useful reference point for both sides when negotiating inspection terms or preparing submissions on proportionality and scope.
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)
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.