Case Details
- Citation: [2014] SGHCR 16
- Case Title: Towa Corporation v ASM Technology Singapore Pte Ltd and anor
- Court: High Court (Registrar)
- Coram: Justin Yeo AR
- Date of Decision: 08 August 2014
- 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
- Parties (relationship): First Defendant is a Singapore company; Second Defendant is ASM Pacific Technology Ltd (incorporated in the Cayman Islands; registered address in Hong Kong). The Defendants are collectively referred to as “the Defendants”.
- Legal Area: Civil Procedure – Inspection of Property; Patents and Inventions – Infringement
- Procedural Context: Application for inspection and examination of allegedly infringing machinery under O 29 r 2 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) (“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
- Patent at Issue: Singapore Patent No SG49740 (moulding resin to seal electronic parts such as semiconductor devices)
- Allegedly Infringing Product/Machine: “IDEALmold machine”
- Prior Procedural Event: The Registrar had dismissed the Plaintiff’s application on 10 July 2014 and issued written grounds on 08 August 2014.
- Key Procedural Rule Invoked: O 29 r 2 of the Rules of Court
- Key Authorities Mentioned in Extract: Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354
- Other Rule Mentioned in Extract: O 87A r 5(4) of the Rules of Court
Summary
This case arose from a patent infringement suit brought by Towa Corporation (“Towa”) against ASM Technology Singapore Pte Ltd and its related entity (“ASM”). Towa alleged that ASM’s “IDEALmold machine” infringed Towa’s Singapore patent (SG49740) concerning methods and apparatus for moulding resin to seal electronic parts. Before trial, Towa sought an order for inspection and examination of the IDEALmold machine under O 29 r 2 of the Rules of Court, 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.
The High Court (Registrar Justin Yeo AR) dismissed Towa’s application. While the extract provided does not include the full reasoning beyond the jurisdictional framing, the decision is clearly structured around two legal issues: (1) whether the court has jurisdiction under O 29 r 2 to order inspection of “process” (as opposed to only “property”); and (2) what legal requirements govern inspection applications under O 29 r 2. The Registrar’s dismissal indicates that the proposed protocol—particularly components that risked amounting to inspection of the machine’s process or operational know-how—did not satisfy the legal threshold or fell outside the scope of what the court would order at the interlocutory stage.
What Were the Facts of This Case?
Towa is a Japanese company and the proprietor of Singapore Patent No SG49740. The patent relates to moulding resin to seal electronic parts, including semiconductor devices. ASM is in the business of providing semiconductor equipment and materials. The First Defendant is incorporated in Singapore and is wholly owned by the Second Defendant, ASM Pacific Technology Ltd, which is incorporated in the Cayman Islands but has its registered address in Hong Kong. In the infringement suit, ASM was alleged to have used or supplied equipment that embodied the patented features.
After the suit commenced, Towa’s counsel wrote to ASM’s counsel on 11 October 2013 requesting inspection of the IDEALmold machine. ASM refused the request by letter dated 14 March 2014. Towa then brought an application for inspection and examination pursuant to O 29 r 2 of the Rules of Court. The application was not merely a request to view the machine; it sought a court-ordered inspection protocol with operational and evidential components designed to enable Towa’s expert to compare the machine’s features with the patent claims.
Towa’s 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 of time” as mutually agreed; (3) the presence of ASM’s “relevant and competent representative(s)” during inspection to answer technical questions, with Towa permitted to make audio and written recordings of those answers; and (4) delivery to ASM of copies of photos, videos and audio recordings within seven working days after completion of the inspection.
ASM resisted the application on multiple grounds. It argued that the protocol, especially paragraph 1, effectively required inspection of the machine’s process rather than the inspection of “property” contemplated by O 29 r 2. ASM also contended that it had already provided a written product and process description (“Written Description”) sufficiently detailed to understand the mechanics of the IDEALmold machine. ASM further argued that Towa already had access to the machine (as evidenced by Towa’s photographs and its ability to cite serial numbers), that inspection would disclose confidential information, and that Towa had not provided a claim construction. ASM also objected that the protocol was excessive and would cause serious inconvenience, including the risk that operating the machine would itself constitute technical infringement and raise issues because the machines belonged to ASM’s customers.
What Were the Key Legal Issues?
The Registrar identified two legal issues arising from the fact that the application was taken out under O 29 r 2. The first issue was jurisdictional: whether the court has jurisdiction to order inspection of “process” under O 29 r 2. ASM’s position was that the proposed inspection—particularly observing the machine while it was operating—amounted to inspection of the machine’s process, and that O 29 r 2 did not extend to ordering inspection of process.
The second issue concerned the legal requirements for an inspection order under O 29 r 2. This required the court to consider the threshold that must be met before it will compel a party to permit inspection and examination of property. Towa argued that the test was low and that inspection should generally be granted in patent cases where infringement is alleged and where the inspection would assist in determining whether the allegedly infringing device falls within the scope of the patent claims.
Although the extract does not reproduce the full articulation of the requirements, the parties’ submissions show that the dispute was not only about whether inspection could be ordered, but also about whether the proposed protocol was proportionate and properly tailored to the issues in the infringement suit. In other words, even if jurisdiction existed, the court still had to decide whether Towa’s proposed inspection went beyond what the procedural rule permits and whether it was justified by the pleadings and the need for evidence at that stage.
How Did the Court Analyse the Issues?
The Registrar approached the matter by first addressing jurisdiction. The key contention was whether O 29 r 2 authorises inspection of process. ASM argued that paragraphs 1 and 2 of the Inspection Protocol, and in particular paragraph 1 (observations and recording while the machine is in operation), involved inspection of the IDEALmold machine’s process. ASM’s argument was that the court’s power under O 29 r 2 is limited to inspection of “property” and does not extend to ordering a party to allow inspection of how its machine operates in a way that reveals process or operational know-how.
Towa countered that the court had jurisdiction. Towa’s position was that the IDEALmold machine itself was the subject matter of the patent infringement suit and that inspection of the machine—including observing it in operation—was necessary to determine whether the machine’s features correspond to the patent’s claimed elements. Towa also emphasised that O 29 r 2 provides the court with jurisdiction to order inspection of property in the possession of a party to the cause or matter, where that property is the subject matter of the cause or matter.
Beyond jurisdiction, the Registrar had to consider the legal requirements for inspection. Towa argued 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. Towa characterised the threshold as low and suggested that patent cases typically warrant inspection because the alleged infringing features may not be fully ascertainable from publicly available information or from written descriptions alone.
ASM’s objections were directed at whether the inspection was genuinely necessary and whether it was properly confined. ASM argued that it had already provided a Written Description containing sufficient detail for understanding the mechanics of the IDEALmold machine. It also argued that Towa already had access to the machine, including through photographs and the ability to cite serial numbers. In addition, ASM maintained that inspection would necessarily involve confidential information, and that Towa had not provided a claim construction, which ASM suggested was relevant to assessing whether inspection would be useful or whether it would amount to a fishing expedition.
Towa responded to these objections with a focus on expert needs. It relied on the opinion of its independent expert, Mr Selvarajan Murugan, who had reviewed the Written Description and concluded it was insufficient to conduct a comparison between the IDEALmold machine and the patent claims. Mr Murugan identified three specific claim elements that, according to Towa, could not be determined from the Written Description: (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 claimed. These points were used to justify why observation and measurement were necessary.
ASM also objected to the protocol’s scope and method. It argued that Towa’s requirement that ASM’s technical representatives be present to answer all relevant technical questions was excessive and effectively substituted for interrogatories or cross-examination. ASM further argued that allowing inspection would cause serious difficulties and inconvenience, including the risk that operating the IDEALmold machine would technically infringe the patent if ASM were to run it. ASM also noted that each IDEALmold machine belonged to a customer, and that operating machines without customer consent could raise additional legal issues.
Towa’s replies attempted to neutralise these concerns. It argued that confidentiality is not a bar to discovery and relied on Warner-Lambert Co v Glaxo Laboratories Limited [1975] RPC 354 for that proposition. Towa also said it was willing to provide non-disclosure agreements and that ASM had not previously made confidentiality an issue. On the “claim construction” point, Towa argued that claim construction is a matter for trial and therefore irrelevant to an interlocutory inspection application. On the technical infringement and inconvenience concerns, Towa suggested that operation would be with Towa’s consent and non-commercial in nature, and it expressed doubt that ASM could not run the machines in the ordinary course of research and development.
While the extract does not provide the Registrar’s final reasoning in full, the decision to dismiss indicates that the Registrar was not persuaded either that the proposed inspection protocol fell squarely within the permitted scope of O 29 r 2, or that the requirements for granting inspection were met on the facts. The Registrar’s explicit identification of the jurisdictional issue about “process” suggests that the court was attentive to the boundary between inspecting physical features of a machine and compelling a party to permit operational testing or process disclosure. The protocol’s requirement to observe and record the machine while operating, coupled with the presence of technical representatives to answer questions, likely raised concerns that the inspection would go beyond mere examination of property and would instead compel disclosure of process and operational know-how.
What Was the Outcome?
The Registrar dismissed Towa’s application for inspection and examination of the IDEALmold machine. The application had been dismissed orally on 10 July 2014, and written grounds were issued on 08 August 2014. The practical effect is that Towa did not obtain a court order compelling ASM to permit the inspection protocol as proposed.
As a result, Towa would have to rely on other evidence available at that stage—such as the Written Description, any existing access to photographs and serial numbers, and expert analysis based on non-inspection materials—unless it pursued alternative procedural avenues or refined its request to address the court’s concerns about jurisdiction and scope.
Why Does This Case Matter?
This decision is significant for patent litigators and civil procedure practitioners in Singapore because it addresses the scope of interlocutory discovery through inspection under O 29 r 2. In patent infringement disputes, inspection of allegedly infringing devices can be crucial, particularly where claim elements are technical and may not be fully ascertainable from documents alone. However, this case illustrates that the court will scrutinise not only whether the dispute involves a genuine issue to be tried, but also whether the requested inspection is legally permissible (including whether it amounts to inspection of “process”).
Practically, the case signals that inspection protocols must be carefully drafted to focus on examination of property rather than compelling operational testing that may reveal process knowledge or require the defendant to run equipment in a manner that could raise additional legal and commercial concerns. It also highlights that courts may consider proportionality and the risk that inspection becomes a substitute for other procedural mechanisms such as interrogatories or cross-examination.
For lawyers, the case is also a reminder that confidentiality concerns, while not necessarily determinative, will be weighed in the context of the overall inspection request. Even where a plaintiff offers to provide non-disclosure undertakings, the court may still refuse inspection if the request is overly broad, insufficiently justified, or outside the jurisdictional boundaries of the procedural rule invoked.
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
- [2014] SGHCR 16 (the present case)
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.