Towa Corp v ASM Tech: Patent Infringement & Inspection of IDEALmold Machine
Towa Corporation, a Japanese company, sued ASM Technology Singapore Pte Ltd and ASM Pacific Technology Ltd in the Singapore High Court for patent infringement related to ASM's IDEALmold machine. Towa sought inspection and examination of the machine under Order 29 Rule 2 of the Rules of Court. The court, presided over by Justin Yeo AR, dismissed Towa's application, finding that the court lacked jurisdiction to order inspection of a process under the specified rule and that Towa had not established a prima facie case of infringement to justify inspection of the product.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Plaintiff's application dismissed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Towa Corp sues ASM Tech for patent infringement. The court denies Towa's application for inspection of ASM's IDEALmold machine.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| TOWA Corporation | Plaintiff | Corporation | Application Dismissed | Lost | |
| ASM Technology Singapore Pte Ltd | Defendant | Corporation | Application Dismissed | Won | |
| ASM Pacific Technology Ltd | Defendant | Corporation | Application Dismissed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Justin Yeo | Assistant Registrar | Yes |
4. Counsels
4. Facts
- Plaintiff, Towa Corporation, owns Singapore Patent No SG49740 for moulding resin to seal electronic parts.
- Defendants, ASM Technology Singapore Pte Ltd and ASM Pacific Technology Ltd, manufacture and sell the IDEALmold machine.
- Plaintiff alleges the IDEALmold machine infringes its patent.
- Plaintiff sought inspection of the IDEALmold machine under O 29 r 2 of the Rules of Court.
- Defendants provided a written product and process description of the IDEALmold machine.
- Plaintiff's expert claimed the written description was insufficient to determine if the IDEALmold machine infringed the patent.
- The IDEALmold machine is owned by the Defendants' customers.
5. Formal Citations
- Towa Corporation v ASM Technology Singapore Pte Ltd and anor, Suit No 359 of 2013 (Summons No 1490 of 2014), [2014] SGHCR 16
6. Timeline
| Date | Event |
|---|---|
| Plaintiff's counsel requested inspection of the IDEALmold machine. | |
| Defendants rejected the inspection request. | |
| Plaintiff's application was dismissed. | |
| Written grounds for decision rendered. | |
| Plaintiff commenced suit against the Defendants. |
7. Legal Issues
- Patent Infringement
- Outcome: The court did not rule on whether patent infringement occurred, as the application concerned inspection, not the substantive infringement claim.
- Category: Substantive
- Inspection of Property
- Outcome: The court held that it lacked jurisdiction under O 29 r 2 of the Rules of Court to order inspection of a process. The court also found that the Plaintiff had not established a prima facie case of infringement to justify inspection of the product.
- Category: Procedural
8. Remedies Sought
- Inspection of IDEALmold machine
9. Cause of Actions
- Patent Infringement
10. Practice Areas
- Patent Infringement
- Commercial Litigation
11. Industries
- Semiconductor
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Warner-Lambert Co v Glaxo Laboratories Limited | Not Available | Yes | [1975] RPC 354 | United Kingdom | Cited to support the principle that confidentiality is not a bar to discovery. |
| Tudor Accumulator Co Limited v China Mutual Steam Navigation Co Limited | UK Court of Appeal | No | [1930] WN 200 | United Kingdom | Cited for the holding that a manufacturing process is not 'property' within the meaning of the UK Rules of the Supreme Court. |
| Unilever plc v Pearce | Not Available | No | [1985] FSR 475 | United Kingdom | Cited for the principle that an order for inspection of a process could only be made under Order 104 r 10(2) of the UK Rules of the Supreme Court, and not under Order 29. |
| British Xylonite Ltd. v. Fibrenyle Ltd. | Not Available | No | [1959] R.P.C. 252 | United Kingdom | Cited regarding the court's power to order inspection of a party's process of manufacture and to order a reconstruction of a discontinued process for the purpose of such inspection. |
| Dow Chemical Co. v. Monsanto Chemicals Ltd. | Not Available | No | [1969] F.S.R. 504 | United Kingdom | Cited regarding the court's power to order inspection of a party's process of manufacture and to order a reconstruction of a discontinued process for the purpose of such inspection. |
| Wahl v. Bahler-Miag (England) Ltd. | Not Available | No | [1979] F.S.R. 183 | United Kingdom | Cited regarding the principle that evidence of a mere belief or suspicion that a process infringes is not normally sufficient for the court to order inspection. |
| American Chain & Cable Co Inc v Hall’s Barton Ropery Co Limited | UK High Court | No | (1938) 55 RPC 287 | United Kingdom | Cited for the principle that inspection should never be ordered on a mere 'fishing' application. |
| British Xylonite Co Limited v Fibrenyle Limited | UK Court of Appeal | No | [1959] RPC 252 | United Kingdom | Cited for the principle that inspection should never be ordered on a mere 'fishing' application and for establishing the 'prima facie case' test for inspection. |
| British Thomson-Houston Company Ld v Duram Ld (No 2) | UK High Court | No | (1920) 37 RPC 121 | United Kingdom | Cited for the 'prima facie case' test, where inspection is granted almost as a matter of course if the plaintiff makes out a prima facie case of infringement and inspection is necessary to prove it at trial. |
| Germ Milling Co v Robinson and Robinson | Not Available | No | (1884) 1 RPC 217 | United Kingdom | Cited for the principle that mere suspicion on the part of a plaintiff that the defendant may be infringing the plaintiff’s patent is not a ground for granting an order for inspection. |
| Wahl and Simon-Solitec Limited v Buhler-Miag (England) Limited and Others | Not Available | No | [1979] FSR 183 | United Kingdom | Cited for the principle that mere suspicion on the part of a plaintiff that the defendant may be infringing the plaintiff’s patent is not a ground for granting an order for inspection. |
| Evans Deakin P/L v Orekinetics P/L & Ors | Supreme Court of Queensland | No | [2002] QSC 42 | Australia | Cited for the principle that the rule exists to promote the efficient and economical conduct of litigation. |
| Black v Sumitomo Corp | Not Available | No | [2002] 1 WLR 1562 | United Kingdom | Cited as authority for the position that the court has to decide whether to exercise its discretion to make an order for inspection. |
| Red Spider Technology v Omega | Not Available | No | [2010] FSR 6 | United Kingdom | Cited as authority for the position that the court has to decide whether to exercise its discretion to make an order for inspection. |
13. Applicable Rules
| Rule Name |
|---|
| Order 29 Rule 2 of the Rules of Court |
| Order 87A r 5 of the Rules of Court |
| O 34A r 1 of the Rules of Court |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Rules of Court (Cap 322, R 5, 2006 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Patent
- Infringement
- IDEALmold machine
- Inspection
- Rules of Court
- Moulding resin
- Electronic parts
- Detachably mounting
- Resin pressurizing plungers
- Resin tablets
15.2 Keywords
- patent infringement
- inspection
- IDEALmold machine
- Singapore
- Rules of Court
- Towa Corporation
- ASM Technology
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 90 |
| Civil Procedure | 60 |
| Commercial Disputes | 40 |
| Contract Law | 30 |
16. Subjects
- Intellectual Property
- Patents
- Civil Procedure