Towa Corp v ASM Technology: Specific Discovery in Patent Infringement Suit
In Towa Corp v ASM Technology Singapore Pte Ltd, the Singapore High Court considered applications for specific discovery in a patent infringement suit. Towa Corporation sued ASM Technology Singapore Pte Ltd and ASM Pacific Technology Ltd for infringing its patent for moulding resin. The court dismissed the Defendants' application for specific discovery in its entirety and granted the Plaintiff's application in part, ordering discovery for specific categories of documents related to the manufacture and nameplates of certain machines.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Defendants' application dismissed in its entirety. Plaintiff's application granted in part.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
In a patent infringement suit, the High Court addressed applications for specific discovery, focusing on the validity of a patent for moulding resin.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| ASM Technology Singapore Pte Ltd | Defendant | Corporation | Application dismissed | Dismissed | |
| Towa Corp | Plaintiff | Corporation | Application granted in part | Partial | |
| ASM Pacific Technology Ltd | Defendant | Corporation | Application dismissed | Dismissed |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Justin Yeo | Assistant Registrar | Yes |
4. Counsels
4. Facts
- Towa Corporation sued ASM Technology Singapore Pte Ltd and ASM Pacific Technology Ltd for patent infringement.
- The allegedly infringing machine is known as the IDEALmold machine.
- The Plaintiff is the proprietor of Singapore Patent No SG49740.
- The Defendants applied for specific discovery of 13 categories of documents.
- The Plaintiff applied for specific discovery of eight categories of documents.
- The nameplates on some machines indicated the manufacturer as 'ASM Pacific Technology'.
5. Formal Citations
- Towa Corp v ASM Technology Singapore Pte Ltd and another, Suit No 359 of 2013 (Summons No 4919 of 2014 and Summons No 5125 of 2014), [2015] SGHCR 4
6. Timeline
| Date | Event |
|---|---|
| Suit commenced by Towa Corporation against ASM Technology Singapore Pte Ltd and ASM Pacific Technology Ltd for patent infringement. | |
| Defendants applied for specific discovery of 13 categories of documents. | |
| Plaintiff applied for specific discovery of eight categories of documents. | |
| High Court issued decision on the applications for specific discovery. |
7. Legal Issues
- Specific Discovery
- Outcome: The court dismissed the Defendants' application in its entirety and granted the Plaintiff's application in part, ordering discovery for specific categories of documents.
- Category: Procedural
- Sub-Issues:
- Relevance of documents
- Necessity of discovery
- Adequacy of written description
- Patent Infringement
- Outcome: The court did not make a determination on patent infringement, as the case concerned applications for specific discovery.
- Category: Substantive
- Sub-Issues:
- Validity of patent
- Infringement of patent
8. Remedies Sought
- Discovery of Documents
9. Cause of Actions
- Patent Infringement
10. Practice Areas
- Patent Infringement
- Discovery
11. Industries
- Semiconductor
- Manufacturing
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Towa Corporation v ASM Technology Singapore Pte Ltd | High Court | Yes | [2014] SGHCR 16 | Singapore | Cited for the brief background to the suit. |
| Vickers plc v Horsell Graphic Industries Ltd | Not specified | Yes | [1988] RPC 21 | England | Cited regarding discovery of opinions expressed in other jurisdictions as disclosing the patentee’s approach to attacks on validity and infringement, but ultimately not followed. |
| Glaverbel SA v British Coal Corp (No 2) | Not specified | Yes | [1992] FSR 642 | England | Cited as the leading case for the proposition that a patentee's equivalent foreign specifications cannot assist with construction of a United Kingdom patent and discovery of the same will not be ordered. |
| First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal | Court of Appeal | Yes | [2008] 1 SLR(R) 335 | Singapore | Cited by the defendants for the proposition that it is relevant to review proceedings on comparable patents in other jurisdictions, but the court found that it could not be relied upon to argue that an established line of English authority on discovery in patent applications is not applicable in Singapore. |
| Dyson v Hoover | Not specified | Yes | (2001) RPC 26 | England | Cited for the principle that a court construes a patent objectively. |
| Syntroleum Corp v Neste Oil Singapore Pte Ltd | High Court | Yes | [2014] SGHCR 18 | Singapore | Cited in the context of safeguarding against excessive and unnecessary disclosure of secondary evidence. |
| Qualcomm v Nokia | Not specified | Yes | [2008] EWHC 329 | England | Cited for the exception about technical terms with a special meaning, on which evidence might be admissible. |
| Abbott Laboratories Limited v Medinol Limited | Not specified | Yes | [2010] EWHC 1731 (Pat) | England | Cited for the exception about technical terms with a special meaning, on which evidence might be admissible. |
| Tan Chin Seng v Raffles Town Club | Not specified | Yes | [2002] 2 SLR(R) 465 | Singapore | Cited for the principle that a party should not be allowed to seek discovery on issues that are not pleaded. |
| Dynasty Line Ltd (in liquidation) v Sukamto Sia | Not specified | Yes | [2014] 3 SLR 277 | Singapore | Cited regarding the requirements to invoke the defences of delay, laches and acquiescence. |
| Chiron Corporation v Evans Medical Limited and others (No 2) | Not specified | Yes | [1997] FSR 268 | England | Cited regarding the rules on written descriptions were introduced in the UK because costs for discovery in patent actions have got out of hand. |
| Consafe Engineering (UK) Ltd v Emtunga UK Ltd | Not specified | Yes | [1999] RPC 154 | England | Cited regarding the purpose of providing for written descriptions is to avoid obliging the defendant to give extensive discovery. |
| Mitora Pte Ltd v Agritrade International (Pte) Ltd | Court of Appeal | Yes | [2013] 3 SLR 1179 | Singapore | Cited in the context of using a sledgehammer to crack a walnut. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Rules of Court (Cap 322, R 5, 2006 Rev Ed) | Singapore |
| Patents Act (Cap 221, Rev Ed 2005) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Specific discovery
- Patent infringement
- IDEALmold machine
- Validity of patent
- Obviousness
- Insufficiency
- Moulding unit
- Detachably mountable
- Rules of Court
- Patents Act
15.2 Keywords
- patent
- infringement
- discovery
- IDEALmold
- Towa
- ASM
- Singapore
- intellectual property
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 90 |
| Civil Procedure | 60 |
| Evidence | 50 |
| Commercial Disputes | 40 |
| Contract Law | 30 |
16. Subjects
- Intellectual Property Law
- Patent Litigation
- Civil Procedure