Case Details
- Citation: [2014] SGHCR 16
- Title: Towa Corporation v ASM Technology Singapore Pte Ltd and anor
- Court: High Court (Registrar)
- Decision Date: 08 August 2014
- Case Number: Suit No 359 of 2013 (Summons No 1490 of 2014)
- Coram: Justin Yeo AR
- Plaintiff/Applicant: Towa Corporation
- Defendants/Respondents: ASM Technology Singapore Pte Ltd and anor
- Parties (relationship): First Defendant is a Singapore company; Second Defendant is ASM Pacific Technology Ltd (incorporated in the Cayman Islands with registered address in Hong Kong). The Defendants were treated collectively as “the Defendants”.
- Legal Area(s): Civil Procedure – Inspection of Property; Patents and Inventions – Infringement
- Procedural Provision(s): O 29 r 2 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) (“Rules of Court”)
- Other Rules Referenced (in extract): O 87A r 5(4) of the Rules of Court
- 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: 16 pages, 8,602 words
- Disposition: Application dismissed (Registrar’s written grounds for decision after dismissal on 10 July 2014)
Summary
Towa Corporation v ASM Technology Singapore Pte Ltd and anor concerned a patent infringement action in which the patentee sought a court-ordered inspection of the defendants’ “IDEALmold machine”. The plaintiff (a Japanese patent proprietor) alleged that the defendants’ machine infringed Singapore Patent No SG49740, which related to a method and apparatus for moulding resin to seal electronic parts such as semiconductor devices. The plaintiff brought an application under O 29 r 2 of the Rules of Court for inspection and examination of the IDEALmold machine, proposing a detailed inspection protocol that included observing the machine while operating, taking photographs/videos/audio recordings, and having the defendants’ technical representatives present to answer questions.
The High Court (Registrar Justin Yeo AR) dismissed the application. While the extract provided does not reproduce the full reasoning beyond the jurisdiction framing and the early discussion of issues, the decision is clearly anchored in the procedural requirements and limits of O 29 r 2, and in the court’s assessment of whether the proposed inspection was properly within jurisdiction and whether the inspection was justified in the circumstances. The defendants resisted on multiple grounds, including that the protocol effectively sought inspection of process (not merely property), that the plaintiff already had sufficient information, that inspection would expose confidential information, and that the protocol was excessive and would cause practical and legal difficulties.
For practitioners, the case is a useful reminder that inspection orders in patent litigation are not automatic. Even where infringement is alleged, the court will scrutinise (i) the scope of what is sought to be inspected (property versus process), (ii) the necessity and proportionality of the inspection steps, and (iii) whether the requesting party has met the legal requirements under O 29 r 2. The decision also illustrates how confidentiality and operational constraints may influence the court’s willingness to order inspection, particularly where the inspection protocol goes beyond what is strictly necessary to enable claim comparison.
What Were the Facts of This Case?
Towa Corporation (“the Plaintiff”) is incorporated in Japan and is the proprietor of Singapore Patent No SG49740 (“the Patent”). The Patent concerns moulding resin to seal electronic parts, including semiconductor devices. The defendants were ASM Technology Singapore Pte Ltd (“the First Defendant”) and ASM Pacific Technology Ltd (“the Second Defendant”). The First Defendant carries on the business of providing semiconductor equipment and materials and is wholly owned by the Second Defendant. The defendants were collectively referred to as “the Defendants”.
The plaintiff commenced a suit for patent infringement, alleging that the defendants’ “IDEALmold machine” infringed the Patent. 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 a letter 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’s proposed “Inspection Protocol” was detailed. It required: (1) observations, photos and a video of the IDEALmold machine and its components while the machine was in operation; (2) observations, photos and relevant measurements when the machine was not in operation, with operation stopped for a reasonable period mutually agreed; (3) the presence of relevant and competent representatives of the defendants during inspection to answer technical questions, with the plaintiff permitted to make audio and written recordings of answers; and (4) provision of copies of photos, videos and audio recordings to the defendants within seven working days of completion of inspection.
The defendants opposed the inspection on several grounds. First, they argued that the plaintiff had already provided a written product and process description (“Written Description”) containing sufficient detail to understand the machine’s mechanics. Second, they contended 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. Third, they argued that inspection would involve the inspection of confidential information. Fourth, they submitted that the plaintiff had not provided a construction of the Patent, which they treated as relevant to the inspection. Fifth, they argued that the inspection protocol—particularly the requirement for technical representatives to answer all relevant technical questions—was excessive and effectively substituted for interrogatories or cross-examination. Sixth, they raised practical and legal difficulties: operating the machine could technically infringe the Patent, and because each IDEALmold machine belonged to a customer, operating it without customer consent could raise additional legal issues.
What Were the Key Legal Issues?
Because the application was brought under O 29 r 2 of the Rules of Court, the Registrar identified two legal issues. The first was jurisdictional: whether the court had jurisdiction to order inspection of “process” under O 29 r 2. The defendants’ position was that paragraphs 1 and 2 of the Inspection Protocol—especially paragraph 1, which required observation while the machine was operating—amounted to inspection of process rather than property. The plaintiff maintained that the court had jurisdiction to order inspection in the manner proposed.
The second issue was substantive: what legal requirements must be satisfied for an inspection order under O 29 r 2. The plaintiff argued that the test was of a low threshold and that inspection should generally be granted in patent cases, particularly where there is a genuine and substantial issue to be tried. The plaintiff’s position was that inspection should be allowed 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.
In addition to these two issues, the parties’ arguments raised practical considerations that often intersect with the O 29 r 2 analysis: whether existing information makes inspection unnecessary; whether confidentiality can be managed; whether claim construction is required at the inspection stage; and whether the proposed inspection protocol is proportionate and appropriately tailored to the purpose of enabling a fair comparison between the patent claims and the accused machine.
How Did the Court Analyse the Issues?
The Registrar’s analysis began with the jurisdiction question. The defendants submitted that O 29 r 2 should not be used to order inspection of process. In their view, the plaintiff’s protocol required the machine to be operated and observed, which would necessarily involve observing how the machine works in practice—ie, the process. They argued that the court therefore lacked jurisdiction to order inspection of process under the rule.
The plaintiff, by contrast, argued that O 29 r 2 provided jurisdiction to order inspection of “any property” in the possession of a party to the cause or matter, and which is the subject matter of the cause or matter. The plaintiff treated the IDEALmold machine as property and contended that observing it while operating was simply part of inspecting the machine and its components. In patent infringement litigation, the technical operation of a machine can be central to determining whether the machine embodies the claimed features; accordingly, the plaintiff framed the inspection as necessary to enable a meaningful comparison between the Patent’s claims and the accused apparatus.
Although the extract does not include the full jurisdiction holding, the Registrar’s decision to dismiss the application indicates that the court was not persuaded that the proposed protocol fell squarely within the permissible scope of O 29 r 2, or that the protocol’s breadth (including operation while running and extensive technical questioning) exceeded what the rule is designed to achieve. The defendants’ jurisdiction argument was therefore not merely a technicality; it went to the heart of whether the inspection request was properly characterised as inspection of property rather than process.
Turning to the substantive requirements, the plaintiff argued for a low threshold and emphasised that inspection is often appropriate in patent cases. The plaintiff’s rationale was that its expert, Mr Selvarajan Murugan (“Mr Murugan”), had reviewed the Written Description and concluded it was insufficient to conduct a comparison between the IDEALmold machine and the claims. Mr Murugan identified three specific areas where the Written Description allegedly failed to allow determination of whether the IDEALmold machine satisfied claim elements: (i) “detachably mounting” or “detachably mountable” features; (ii) “resin pressurizing plungers”; and (iii) alignment of resin tablets “being aligned with each other” or “in alignment with each other”.
The defendants’ response to the substantive need for inspection was multi-layered. They argued that the plaintiff already had access to the machine and that the plaintiff’s own photographs and ability to cite serial numbers suggested sufficient familiarity. They also argued that confidentiality would be compromised. The plaintiff countered that confidentiality is “never a bar to discovery” and relied on Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354 (“Warner-Lambert”), while also indicating willingness to provide non-disclosure agreements. The plaintiff further argued that the defendants had not made confidentiality an issue earlier, and that the absence of non-disclosure agreements from the protocol was not because confidentiality was irrelevant, but because the defendants had not insisted on it.
On claim construction, the defendants argued that the plaintiff had not provided a construction of the Patent. The plaintiff’s position was that claim construction is a matter for trial and therefore irrelevant to the inspection application. This reflects a common tension in patent procedure: whether early claim construction is necessary to tailor inspection, or whether inspection can proceed based on the pleaded claims and the alleged insufficiency of information. The Registrar’s dismissal suggests that, even if claim construction is not strictly required at this stage, the court still expects the inspection request to be properly focused and justified, rather than broad and exploratory.
Another significant part of the analysis concerned the scope and proportionality of the Inspection Protocol. The defendants argued that paragraph 3—requiring the presence of competent technical representatives to answer all relevant technical questions, with the plaintiff permitted to record answers—was excessive and effectively substituted for interrogatories or cross-examination. The plaintiff did not cite authority for the practice of requiring technical representatives to be present, but argued that it had knowledge of a case where a court had granted an inspection protocol requiring technical representatives to be present. The Registrar’s decision to dismiss indicates that the court was not satisfied that this level of questioning and recording was appropriate for an O 29 r 2 inspection order.
Finally, the defendants raised practical and legal difficulties. They argued that operating the IDEALmold machine would technically infringe the Patent, and that because the machines belonged to customers, operating them without customer consent could raise further legal issues. The plaintiff responded that operation would be with the defendants’ consent and non-commercial in nature, and therefore would not constitute infringement. The plaintiff also suggested that it was implausible that the defendants could not run the machines, given that research and development would normally require testing. The Registrar’s dismissal suggests that these concerns were not dismissed as irrelevant; rather, they likely contributed to the court’s overall assessment of whether the inspection protocol was workable, proportionate, and within the intended scope of O 29 r 2.
What Was the Outcome?
The Registrar dismissed the plaintiff’s application for inspection and examination of the IDEALmold machine under O 29 r 2 of the Rules of Court. The decision was rendered after the Registrar had already dismissed the application on 10 July 2014 and then provided written grounds on 8 August 2014.
Practically, the dismissal meant that the plaintiff did not obtain a court-ordered inspection on the terms set out in its Inspection Protocol, including observation while the machine was operating and the presence of technical representatives to answer questions with recording rights. The plaintiff would therefore have to pursue infringement proof without the benefit of the ordered inspection, relying instead on existing information (such as the Written Description and any other evidence already obtained) and whatever further procedural steps were available in the suit.
Why Does This Case Matter?
This case matters because it demonstrates that inspection orders in patent infringement proceedings are subject to careful judicial control. Even where a patentee alleges infringement and argues that inspection is necessary to compare the accused apparatus with the patent claims, the court will scrutinise the legal basis and the scope of the inspection. Towa Corporation v ASM Technology Singapore Pte Ltd underscores that O 29 r 2 is not a general discovery tool that can be used to conduct an open-ended technical investigation.
From a precedent and practice perspective, the decision is particularly relevant to disputes over the boundary between inspection of “property” and inspection of “process”. Where an inspection protocol requires the machine to be operated, the court may treat that as involving process and may be reluctant to order it unless the request is properly framed and justified within the rule’s jurisdictional limits. Practitioners should therefore draft inspection protocols narrowly, focusing on what is necessary to identify whether claimed features are present, and avoiding steps that resemble interrogatories, cross-examination, or exploratory testing.
The case also highlights how confidentiality and operational constraints can affect inspection outcomes. While confidentiality is not automatically a bar to discovery, the court may still consider whether adequate safeguards exist and whether the inspection request is proportionate. Additionally, where operating the accused machine could raise infringement or third-party consent issues, the court may factor those difficulties into whether the inspection should be ordered at all, or whether it should be limited in 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)
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.