Martek Biosciences Corp v Cargill: Patent Revocation Appeal - Adducing Further Evidence
Martek Biosciences Corporation appealed against the decision of the Tribunal to revoke its Singapore Patent P-No. 42669 concerning arachidonic acid production. Before the appeal hearing, Martek applied for leave to adduce further evidence, specifically to conduct an experiment described in prior art reference D4a. The High Court dismissed Martek's application, finding that Martek had not shown due diligence in securing the evidence earlier and that the statutory framework suggests the Tribunal is the proper forum for taking evidence. The court ordered Martek to pay costs to Cargill International Trading Pte Ltd.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Application dismissed with costs.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Appeal regarding patent revocation for arachidonic acid production. The court denied Martek's application to adduce further evidence.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Martek Biosciences Corp | Applicant, Appellant | Corporation | Application dismissed with costs | Lost | Lai Tze Chang Stanley, Vignesh Vaerhn, Lim Ming Hui Eunice |
| Cargill International Trading Pte Ltd | Respondent | Corporation | Costs awarded | Won | Daniel Koh, Wendy Low Wei Ling |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tay Yong Kwang | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Lai Tze Chang Stanley | Allen & Gledhill LLP |
| Vignesh Vaerhn | Allen & Gledhill LLP |
| Lim Ming Hui Eunice | Allen & Gledhill LLP |
| Daniel Koh | Eldan Law LLP |
| Wendy Low Wei Ling | Rajah & Tann LLP |
4. Facts
- Martek appealed the Tribunal's decision to revoke its patent.
- Martek sought to adduce further evidence by conducting an experiment described in prior art D4a.
- The Tribunal's decision was based on multiple prior art references, including D4a.
- The Applicant had already conducted a repeat of Example 1 in D4.
- The Applicant's findings revealed that the oil produced by following Example 1 in D4 did not meet the requirement of claim 1 of the Patent.
- The Applicant did not file any affidavit relating to the experiment and its outcome to support its application to adduce the fresh evidence.
- The Respondent alleged that the Applicant had not explained how and in what manner the fresh evidence would be relevant or have an important influence on the outcome of the appeal.
5. Formal Citations
- Martek Biosciences Corp v Cargill International Trading Pte Ltd, Originating Summons No 1418 of 2009/E; Summons No 234 of 2010/Q, [2010] SGHC 135
6. Timeline
| Date | Event |
|---|---|
| Pleadings to the revocation proceedings commenced | |
| Revocation hearing conducted before the Tribunal | |
| Revocation hearing conducted before the Tribunal | |
| Tribunal rendered its grounds of decision | |
| Originating Summons filed | |
| Summons No 234 of 2010/Q taken out by the Applicant | |
| Decision Date | |
| Counsel for the Applicant requested further arguments | |
| Respondent objected to the request for further arguments |
7. Legal Issues
- Admissibility of Further Evidence
- Outcome: The court held that the applicant had not shown due diligence in securing all relevant evidence before the Tribunal and dismissed the application to adduce further evidence.
- Category: Procedural
- Sub-Issues:
- Due diligence in securing evidence
- Relevance of evidence
- Prejudice to the other party
- Patent Revocation
- Outcome: The court did not rule on the merits of the patent revocation appeal, as the application to adduce further evidence was dismissed.
- Category: Substantive
- Sub-Issues:
- Inventive step
- Novelty
- Prior art
8. Remedies Sought
- Reversal of Tribunal's decision
- Admittance of further evidence
9. Cause of Actions
- Patent Revocation
10. Practice Areas
- Patent Litigation
- Appeals
11. Industries
- Food and Beverage
- Biotechnology
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Ladd v Marshall | Court of Appeal | Yes | [1954] 1 WLR 1489 | England and Wales | Cited for the principles governing the granting of leave to adduce further evidence before the Court of Appeal. |
| Teo Chee Yeow Aloysius and another v Tan Harry and another | Court of Appeal | Yes | [2004] 3 SLR(R) 588 | Singapore | Cited to distinguish between an appeal from a Registrar to a judge in chambers and an appeal from a decision of the High Court to the Court of Appeal. |
| The Vishva Apurva | High Court | Yes | [1992] 1 SLR(R) 912 | Singapore | Cited regarding the circumstances under which the Court of Appeal could upset a decision of the High Court. |
| ELLE Trade Marks | High Court | Yes | [1997] FSR 529 | England and Wales | Cited for the proposition that the rule in Ladd v Marshall applies only to an appeal from the High Court to the Court of Appeal but not to an appeal from the Registrar of Trade Marks to the High Court. |
| Julian Higgins’ Trade Mark Application | High Court | Yes | [2000] RPC 321 | England and Wales | Cited to support the position that the principles in Ladd v Marshall were not thought to be of any assistance in an appeal under the Trade Marks Act. |
| Club Europe Trade Mark | High Court | Yes | [2000] RPC 329 | England and Wales | Cited to emphasize that Ladd v Marshall principles only applied to appeals to the Court of Appeal. |
| Hunt-Wesson Inc’s Trade Mark Application | High Court | Yes | [1996] RPC 233 | England and Wales | Cited for the factors to consider when determining whether to exercise discretion in relation to the adduction of fresh evidence in the Appeal. |
| Future Enterprises Pte Ltd v McDonald’s Corp | Court of Appeal | Yes | [2007] 2 SLR(R) 845 | Singapore | Cited to allude to the general reluctance on the part of the appellate court in disturbing a finding made by the Registrar of Trade Marks. |
| S C Prodal 94 SRL v Spiritis International NV | High Court | Yes | [2003] EWHC 2756 (Ch) | England and Wales | Cited regarding the duty of the court to overturn a decision of the Trade Mark Registry. |
| Ozone Community Corp v Advance Magazine Publishers Inc | High Court | Yes | [2010] SGHC 16 | Singapore | Cited for noting that Future Enterprises did not consider the effect of Order 87 rule 4 of the Rules of Court. |
| MediaCorp News Pte Ltd v Astro All Asia Networks Plc | High Court | Yes | [2009] 4 SLR(R) 496 | Singapore | Cited for considering the standard of review applicable to the proceedings and noting that the earlier Court of Appeal case of Future Enterprises did not consider the effect of what “rehearing” entailed under Order 87 rule 4 of the Rules of Court. |
| Valentino Globe BV v Pacific Rim Industries Inc | High Court | Yes | [2009] 4 SLR(R) 577 | Singapore | Cited for reviewing the effect of Order 87 rule 4(2) of the Rules of Court. |
| Golden Shore Transportation Pte Ltd v UCO Bank | High Court | Yes | [2004] 1 SLR(R) 6 | Singapore | Cited regarding the Court of Appeal's reluctance to upset an exercise of discretion by the trial judge. |
| Seah Ting Soon v Indonesian Tractors Co Pte Ltd | High Court | Yes | [2001] 1 SLR(R) 53 | Singapore | Cited regarding the Court of Appeal's general reluctance to interfere with a finding of facts. |
| Ho Soo Fong v Standard Chartered Bank | High Court | Yes | [2007] 2 SLR(R) 181 | Singapore | Cited regarding an appellate court being in as good a position as the trial court to make an evaluation from primary facts. |
| Allen & Hanburys Limited’s (Salbutamol) Patent | Patents Court | Yes | [1987] RPC 327 | United Kingdom | Cited for holding that an appeal to the Patents Court from the Comptroller was “by way of a rehearing” pursuant to Order 104 rule 14(14) UK Rules of the Supreme Court. |
| Gebhardt’s Patent | Patents Court | Yes | [1992] RPC 1 | United Kingdom | Cited for confirming the application of Ladd v Marshall principles to the adduction of new evidence in an appeal to the Patents Court. |
| Oxon Italia SPA’s Trade Mark Application | Unknown | Yes | [1981] FSR 408 | United Kingdom | Cited as an example of the general practice of the court on applications to admit new evidence being the same as in the Court of Appeal. |
| Imperial Chemical Industries v Montedison (UK) Ltd & Anor | Unknown | Yes | [1995] RPC 449 | United Kingdom | Cited as a UK case dealing with admission of fresh evidence in an appeal hearing before the UK Patents Court. |
| Etat Francaise Representee par la Ministere de L’Agriculture de la Foret v Bernard Matthews plc | High Court | Yes | [2002] EWHC 868 | England and Wales | Cited as a UK trade marks appeal proceeding. |
| WBG Network (S) Pte Ltd v Sunny Daisy Ltd | Court of Appeal | Yes | [2007] 1 SLR(R) 1133 | Singapore | Cited for clarifying its earlier decision in Lassiter Ann Masters v To Keng Lam. |
| Lassiter Ann Masters v To Keng Lam | Court of Appeal | Yes | [2004] 2 SLR(R) 392 | Singapore | Cited for distinguishing between the standard to be applied in appeals where there were the characteristics of a full trial or where oral evidence had been recorded and those that were interlocutory in nature. |
| Ang Leng Hock v Leo Ee Ah | High Court | Yes | [2004] 2 SLR(R) 361 | Singapore | Cited for reasoning that there is a distinction to be drawn between the adduction of further evidence before the judge in chambers on an appeal from the registrar against a decision on an interlocutory application and one that is against a final decision. |
| Wunderkind Trade Mark | High Court | Yes | [2002] RPC 45 | England and Wales | Cited for factors assisting the court in determining whether it should exercise its discretion in relation to the adduction of fresh evidence in the Appeal. |
| DU PONT Trade Mark | High Court | Yes | [2004] FSR 15 | England and Wales | Cited for approving the factors enumerated in Wunderkind Trade Mark. |
| E I Dupont v S T Dupont | Court of Appeal | Yes | [2006] 1 WLR 2793 | England and Wales | Cited for approving the passage in Wunderkind Trade Mark. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| Patents Act (Cap 221, 2005 Rev Ed) section 80(1)(a) | Singapore |
| Patents Act (Cap 221, 2005 Rev Ed) section 80(1)(c) | Singapore |
| Rules of Court (Cap 322, R 5, 2006 Rev. Ed.) | Singapore |
| Rules of Court (Cap 322, R 5, 2006 Rev. Ed.) Order 55 rule 6(2) | Singapore |
| Rules of Court (Cap 322, R 5, 2006 Rev. Ed.) Order 87A rule 13(2) | Singapore |
| Rules of Court (Cap 322, R 5, 2006 Rev. Ed.) Order 55 rule 2 | Singapore |
| Rules of Court (Cap 322, R 5, 2006 Rev. Ed.) Order 57 rule 13(2) | Singapore |
| Supreme Court of Judicature Act (Cap 322, 2007 Rev. Ed.) | Singapore |
| Supreme Court of Judicature Act (Cap 322, 2007 Rev. Ed.) s 37(3) | Singapore |
| Supreme Court of Judicature Act (Cap 322, 2007 Rev. Ed.) s 34(1)(c) | Singapore |
| Rules of Court (Cap 322, R 5, 2006 Rev. Ed.) Order 87 rule 4 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Arachidonic acid
- Patent revocation
- Further evidence
- Tribunal
- Prior art
- Inventive step
- Rules of Court
- Rehearing
- Ladd v Marshall
- Due diligence
15.2 Keywords
- Patent
- Revocation
- Appeal
- Evidence
- Arachidonic Acid
- Infant Formula
- Singapore
16. Subjects
- Intellectual Property
- Patents
- Civil Procedure
17. Areas of Law
- Patent Law
- Civil Procedure
- Intellectual Property Law