Mariwu v Dextra: Admissibility of Fresh Evidence and 'Without Prejudice' Correspondence in Patent Infringement Case

In Mariwu Industrial Co (S) Pte Ltd v Dextra Asia Co Ltd and Dextra Manufacturing Co Ltd, the Singapore Court of Appeal heard an application by Mariwu to adduce new evidence in a patent infringement suit. Dextra sued Mariwu for infringing its 'Bartec' patent. Mariwu challenged the patent's validity based on prior use in France and Hong Kong. The new evidence consisted of correspondence between CCL, Dextra and Mure regarding the patent's validity. The Court of Appeal allowed the application and remitted the case to the trial judge to consider the new evidence.

1. Case Overview

1.1 Court

Court of Appeal

1.2 Outcome

Application allowed, but remitted the case to the trial judge to consider the new evidence.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

The Court of Appeal addressed the admissibility of new evidence and 'without prejudice' correspondence in a patent infringement suit, focusing on prior art and settlement negotiations.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Dextra Asia Co LtdRespondentCorporationRemitted to Trial JudgeNeutral
Dextra Manufacturing Co LtdRespondentCorporationRemitted to Trial JudgeNeutral
Mariwu Industrial Co (S) Pte LtdAppellantCorporationApplication AllowedWon

3. Judges

Judge NameTitleDelivered Judgment
Chan Sek KeongChief JusticeYes
Andrew Phang Boon LeongJustice of the Court of AppealNo
Tay Yong KwangJudgeNo

4. Counsels

Counsel NameOrganization
Daniel LimShook Lin & Bok
Cindy QuekShook Lin & Bok
Wong Siew HongInfinitus Law Corporation
Kenneth TanKenneth Tan Partnership
Kalaiselvi d/o SingaramInfinitus Law Corporation

4. Facts

  1. Dextra sued Mariwu for infringement of the 'Bartec' patent.
  2. Mariwu challenged the patent's validity based on prior use in France and Hong Kong.
  3. The new evidence consisted of correspondence between CCL, Dextra, and Mure regarding the patent's validity.
  4. The correspondence contained statements suggesting potential prior use of the invention.
  5. Dextra's Chief Executive Officer (CEO) had previously asserted he knew of no facts that would invalidate the patent.
  6. The correspondence was marked 'without prejudice'.

5. Formal Citations

  1. Mariwu Industrial Co (S) Pte Ltd v Dextra Asia Co Ltd and Another, CA 15/2006, [2006] SGCA 37

6. Timeline

DateEvent
Priority date of the Bartec patent
Dextra entered into a joint venture with CCL to exploit the patent in Singapore
Techniport sold the Bartec patent to Establissements A Mure
Date of letter from Dr. J.M. Pithon to Mure regarding the potential invalidity of the Bartec patent
CCL terminated its license with Mure
Dextra sold its share of the Singapore business to CCL
CCL was acquired by Ancon Clark to form Ancon CCL group
Mure assigned the Bartec patent rights in Asia to Dextra
Dextra re-entered the Singapore market and operated through licensees
Dextra sued Mariwu for patent infringement in Suit No 641 of 2004
Court of Appeal decision date

7. Legal Issues

  1. Admissibility of Fresh Evidence
    • Outcome: The Court of Appeal allowed the application to adduce new evidence, applying the Ladd v Marshall test.
    • Category: Procedural
    • Related Cases:
      • [1954] 1 WLR 1489
  2. Admissibility of 'Without Prejudice' Correspondence
    • Outcome: The Court held that the correspondence was admissible because it was not made in the context of negotiations to settle a dispute.
    • Category: Evidentiary
    • Related Cases:
      • [1989] AC 1280
      • [1996] PNLR 74
      • [2006] 1 WLR 2066
      • [1991] SLR 188
  3. Patent Validity (Novelty)
    • Outcome: The court did not make a final determination on patent validity, but the new evidence was relevant to the issue of prior use.
    • Category: Substantive

8. Remedies Sought

  1. Injunction
  2. Damages

9. Cause of Actions

  • Patent Infringement

10. Practice Areas

  • Intellectual Property Litigation

11. Industries

  • Construction

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Ladd v MarshallN/AYes[1954] 1 WLR 1489N/ACited for the test to determine whether new evidence should be admitted on appeal.
Rush & Tompkins Ltd v Greater London CouncilHouse of LordsYes[1989] AC 1280England and WalesCited regarding the principle against the admission of 'without prejudice' communications and its applicability to third parties.
Muller v Linsley and MortimerN/AYes[1996] PNLR 74N/ACited for explaining the rationale behind the 'without prejudice' rule.
Bradford & Bingley plc v RashidN/AYes[2006] 1 WLR 2066N/ACited for the principle that the 'without prejudice' privilege does not apply where no dispute exists.
Lim Tjoen Kong v A-B Chew Investments Pte LtdN/AYes[1991] SLR 188SingaporeDiscussed in relation to s 23 of the Evidence Act and the 'without prejudice' rule.
Cutts v HeadN/AYes[1984] Ch 290N/ACited for the desirability of preventing statements or offers made in the course of negotiations for settlement being brought before the court of trial as admissions on the question of liability
Chocoladefabriken Lindt & Sprungli AG v Nestlé Co LtdN/AYes[1978] RPC 287N/ACited for the principle that the 'without prejudice' privilege applies to an attempt to compromise actual or impending litigation

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Section 23 Evidence ActSingapore
Supreme Court of Judicature ActSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • Bartec
  • Patent Infringement
  • Without Prejudice
  • Prior Use
  • Novelty
  • Ladd v Marshall
  • Admissibility of Evidence

15.2 Keywords

  • patent infringement
  • without prejudice
  • fresh evidence
  • Singapore
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Evidence85
Civil Procedure70
Appellate Practice60
Patents50
Contracts30

16. Subjects

  • Intellectual Property
  • Patent Law
  • Civil Procedure
  • Evidence