Case Details
- Citation: [2006] SGCA 37
- Case Number: CA 15/2006
- Decision Date: 10 October 2006
- Court: Court of Appeal of the Republic of Singapore
- Coram: Chan Sek Keong CJ; Andrew Phang Boon Leong JA; Tay Yong Kwang J
- Judges: Chan Sek Keong CJ, Andrew Phang Boon Leong JA, Tay Yong Kwang J
- Plaintiff/Applicant: Mariwu Industrial Co (S) Pte Ltd (“Mariwu”)
- Defendant/Respondent: Dextra Asia Co Ltd and Another (“Dextra”)
- Other Defendant (as described): Dextra Manufacturing Co Ltd
- Legal Areas: Civil Procedure — Appeals; Evidence — Admissibility of evidence
- Key Topics: Adducing fresh evidence on appeal; “without prejudice” correspondence; admissions and privilege; patent validity (novelty)
- Counsel for Appellant: Kenneth Tan SC (Kenneth Tan Partnership), Wong Siew Hong and Kalaiselvi d/o Singaram (Infinitus Law Corporation)
- Counsel for Respondents: Daniel Lim and Cindy Quek (Shook Lin & Bok)
- Statutes Referenced: Evidence Act (Cap 322, 1999 Rev Ed); Supreme Court of Judicature Act (Cap 322, 1999 Rev Ed)
- Cases Cited (as provided): Ladd v Marshall [1954] 1 WLR 1489; Rush & Tompkins Ltd v Greater London Council [1989] AC 1280; [1991] SLR 188; [2006] SGCA 37
- Judgment Length: 7 pages, 3,666 words (as stated in metadata)
Summary
This Court of Appeal decision concerns an application to adduce fresh evidence on appeal in a patent infringement dispute. Mariwu, the defendant in the underlying suit, sought leave to introduce correspondence exchanged among other parties (CCL Systems Ltd, Dextra Asia/Dextra Manufacturing, and Mure) during negotiations about licensing and the potential invalidity of the patent. Although the Court of Appeal allowed the application, it did not itself decide the patent validity issue; instead, it remitted the matter to the trial judge to consider the new evidence.
The Court of Appeal applied the established “special grounds” framework for admitting further evidence on appeal, derived from Ladd v Marshall and reflected in ss 37(2) and 37(4) of the Supreme Court of Judicature Act. It held that the evidence could not reasonably have been obtained before trial, that it would likely have an important influence on the result, and that it was apparently credible. The Court further addressed whether the correspondence was inadmissible because it was marked “without prejudice” and whether it contained admissions that would otherwise be privileged.
What Were the Facts of This Case?
The underlying litigation was Suit No 641 of 2004, where Dextra Asia Co Ltd and Dextra Manufacturing Co Ltd sued Mariwu for infringement of a patented invention known as “Bartec”. The invention related to reinforcing concrete bars: two steel bars joined together with a steel coupler. In construction practice, such bars are commonly referred to as “rebars”. The parties accepted that if the patent was valid, Mariwu’s use in Singapore would amount to infringement. Accordingly, the central contest in the underlying trial was the validity of the patent.
The patent had been patented by Mr Alain Bernard, who founded Techniport SA to market the invention. The priority date was 3 February 1988. Techniport granted CCL Systems Ltd a worldwide licence to use the patent, subject to exclusions for Hong Kong and Thailand. In 1992, Dextra entered into a joint venture with CCL to exploit the patent in Singapore. That joint venture ended in March 1995 when Dextra sold its share of the Singapore business to CCL and exited the Singapore market.
Meanwhile, Techniport sold the Bartec patent to Establissements A Mure (“Mure”) in 1993. The licensing arrangements involving CCL and Dextra were later novated to Mure. In January 1995, CCL terminated its licence with Mure, but it continued to sell Bartec products in Singapore. Later, in 1998, CCL was acquired by Ancon Clark (forming the Ancon CCL group), and the management team was replaced. At the end of 1998, Mure assigned the Bartec patent rights in Asia to Dextra. Dextra invited Ancon CCL to become its licensee in Singapore, but negotiations failed. In 2002, Dextra re-entered the Singapore market through licensees and appointed Mariwu as its exclusive distributor of Bartec products in Singapore. Dextra then commenced infringement proceedings against Mariwu.
In the underlying trial, Mariwu alleged that the patent was invalid for lack of novelty and inventiveness, but for the purposes of the present application only novelty mattered. Mariwu’s novelty case was that the invention had been used before the priority date in France and Hong Kong. In France, Mariwu pointed to alleged use in at least one construction project, the Ile de Ré Bridge, said to have been associated with Techniport. In Hong Kong, Mariwu alleged that Techniport and Dextra had used the invention during on-site experiments for the Pacific Place project, and also in the foundations of that project. Dextra denied use in France. While Dextra admitted use in Hong Kong, it argued that such use was confidential and therefore did not destroy novelty.
The evidence Mariwu sought to adduce on appeal consisted of correspondence exchanged between CCL (before it became part of the Ancon CCL group), Dextra, and Mure in late 1994. The correspondence concerned discussions about the potential invalidity of the Bartec patent. The Court of Appeal understood that CCL and Dextra had discovered that the patent was “potentially invalid” due to prior use in Hong Kong and France. They wanted to forge a common position against Mure to obtain a better bargain, particularly lower licensing royalties for an extension of the licence.
What Were the Key Legal Issues?
The Court of Appeal identified two principal issues for the application to adduce fresh evidence. First, it had to determine whether the new evidence satisfied the requirements for admitting further evidence on appeal under the “special grounds” test, as articulated in Ladd v Marshall and incorporated into the statutory framework of ss 37(2) and 37(4) of the Supreme Court of Judicature Act.
Second, even if the Ladd v Marshall criteria were satisfied, the Court had to decide whether the correspondence was admissible in evidence despite being marked “without prejudice”. This required consideration of s 23 of the Evidence Act, which renders admissions irrelevant where made under an express condition that evidence is not to be given, or under circumstances from which the court can infer that the parties agreed that evidence should not be given. The Court also had to consider whether the “without prejudice” privilege could extend to third parties and whether the content of the correspondence amounted to admissions that would be protected.
In addition, the Court’s reasoning necessarily engaged with the relevance of the correspondence to the novelty question. The correspondence included statements by Dextra’s chief executive officer and chief witness at trial, Dr J M Pithon, who had asserted during cross-examination that he knew of no facts invalidating the patent. The Court had to assess whether the new documents would likely have an important influence on the trial outcome, particularly by undermining Dextra’s novelty-related position and its credibility.
How Did the Court Analyse the Issues?
On the first issue, the Court of Appeal set out the statutory basis for admitting further evidence on appeal. Section 37(2) confers broad powers on the Court of Appeal, including the power to receive further evidence. However, s 37(4) restricts admission of further evidence after a trial on the merits to “special grounds only” and not without leave. The Court therefore applied the Ladd v Marshall test, which requires: (1) the evidence could not have been obtained with reasonable diligence for use at trial; (2) the evidence would probably have an important influence on the result, though it need not be decisive; and (3) the evidence is apparently credible.
As to reasonable diligence, the Court accepted that Mariwu could not have obtained the documents before trial. Mariwu was not a party to the CCL–Dextra–Mure negotiations, and it had been incorporated only in 2002. It also had no first-hand knowledge of the events discussed in the correspondence. Mariwu had obtained some related documents for the trial only through access provided by Ancon CCL, when its managing director was allowed to search two boxes of documents at Ancon CCL’s Sheffield office. The specific correspondence now sought was not in those boxes. After the trial, an Ancon CCL employee, Mr Poveda, searched the files again and found the documents by chance, and only then were they forwarded to Mariwu. The Court emphasised that Ancon CCL had no legal obligation to assist Mariwu and that the relevant management team had been replaced after CCL’s acquisition, further reducing any expectation that Mariwu could have located the evidence earlier.
On the second Ladd v Marshall requirement, the Court held that the evidence would likely have an important influence. One document was a letter dated 23 November 1994 from Dr Pithon to Mure. The letter stated that “[t]he process has been commercialized in Hong Kong and France before the deposit of the patent, and is therefore potentially nullified”. The Court considered this highly relevant because Dr Pithon had asserted during cross-examination at trial that he knew of no facts invalidating the patent. The new letter therefore put his state of knowledge in issue and could corroborate Mariwu’s novelty case. The Court also noted that the correspondence from CCL described the patent as “void” and “highly vulnerable because of prior disclosure”.
The Court further observed that the letter could show that Dextra had knowledge of commercialisation in France, despite Dextra’s trial position denying any use in France. It could also corroborate a Techniport brochure adduced at trial stating that Bartec was used in the Ile de Ré Bridge project. The trial judge had dismissed the brochure as mere “puff”, and the new correspondence could potentially undermine that assessment by showing that Dextra itself considered the prior use to be material.
On credibility, the Court found no doubt that the correspondence was genuine. Accordingly, all three Ladd v Marshall requirements were satisfied, and the Court allowed the application to adduce the evidence. Importantly, the Court did not decide the patent validity question itself; it remitted the case to the trial judge to consider the new evidence in the context of the full record.
Turning to the “without prejudice” issue, the Court addressed the admissibility of correspondence marked “without prejudice”. Section 23 of the Evidence Act provides that in civil cases, no admission is relevant if it is made either upon an express condition that evidence of it is not to be given, or under circumstances from which the court can infer that the parties agreed that evidence should not be given. The Court noted that counsel for Dextra argued that the correspondence was inadmissible even though Mariwu was not a party to the correspondence, relying on Rush & Tompkins Ltd v Greater London Council. In Rush & Tompkins, the House of Lords had refused disclosure of settlement-related communications because the policy behind the “without prejudice” rule is to encourage settlement by ensuring that parties can make concessions without fear that those statements will be used later.
The Court of Appeal treated s 23 as a statutory enactment of the common law principle. While the provided extract truncates the remainder of the judgment, the Court’s approach indicates that it would have to reconcile the policy rationale with the statutory language, including whether the privilege extends to third parties and whether the correspondence contained admissions that would otherwise be excluded. The Court’s earlier findings on relevance and credibility meant that the “without prejudice” question was not merely technical; it directly affected whether the correspondence could be used to challenge Dextra’s novelty-related assertions and credibility.
What Was the Outcome?
The Court of Appeal allowed Mariwu’s application for leave to adduce the new evidence on appeal. However, rather than substituting its own view on patent validity, the Court remitted the case to the trial judge to consider the new evidence. This practical outcome reflects the appellate function: the Court ensured that the evidence could be admitted under the applicable legal tests, but it preserved the trial judge’s role in evaluating the evidence’s impact on novelty and the overall validity findings.
In effect, the decision clarifies that where correspondence discovered after trial is both credible and likely to influence the result—particularly where it bears on key issues such as prior commercialisation and the credibility of a witness—courts may admit it even if it was not available earlier, subject to the statutory and common law safeguards governing further evidence and “without prejudice” communications.
Why Does This Case Matter?
For practitioners, Mariwu Industrial Co (S) Pte Ltd v Dextra Asia Co Ltd and Another is a useful authority on two recurring procedural and evidential problems in civil litigation: (1) when fresh evidence may be admitted on appeal, and (2) how “without prejudice” correspondence is treated under s 23 of the Evidence Act. The decision demonstrates that the Ladd v Marshall test remains central in Singapore appellate practice, and that courts will scrutinise whether the evidence could reasonably have been obtained earlier, especially where the applicant was not a party to the negotiations and had limited access to the relevant documents.
Substantively, the case also illustrates how settlement-adjacent correspondence can become highly relevant where it contains statements bearing on the merits, such as admissions or assessments of invalidity. Even where documents are marked “without prejudice”, the court must still consider whether the statutory conditions for exclusion are met and whether the privilege can be invoked in the circumstances. The Court’s focus on the genuineness and materiality of the documents underscores that “without prejudice” protection is not a blanket rule that automatically defeats relevance; rather, it is governed by the statutory framework and the policy rationale.
Finally, the remittal outcome is instructive. Even when the appellate court permits admission of new evidence, it may be appropriate to return the matter to the trial judge to evaluate the evidence’s weight and to integrate it with the existing findings. This is particularly important in complex patent disputes where novelty and inventiveness assessments depend on technical and factual context, as well as on witness credibility.
Legislation Referenced
- Evidence Act (Cap 322, 1999 Rev Ed), s 23
- Supreme Court of Judicature Act (Cap 322, 1999 Rev Ed), s 37(2) and s 37(4)
Cases Cited
- Ladd v Marshall [1954] 1 WLR 1489
- Rush & Tompkins Ltd v Greater London Council [1989] AC 1280
- [1991] SLR 188
- [2006] SGCA 37
Source Documents
This article analyses [2006] SGCA 37 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.