Element Six Technologies Ltd v IIa Technologies Pte Ltd [2017] SGHCR 16

This judgment relates to two applications for further and better particulars of pleadings in patent proceedings, one by Element Six Technologies Ltd (“the Plaintiff”) and the other by IIa Technologies Pte Ltd (“the Defendant”). It focuses on three specific categories of requests (see [4] below) for which there appears to be a paucity of local case authority.

The applications

Summons No 2929 of 2017 (“SUM 2929”) is the Plaintiff’s application for further and better particulars of the Defence and Counterclaim (Amendment No 3) (“the Defence and Counterclaim”) and the Particulars of Objection (Amendment No 3) (“the Particulars of Objection”). SUM 2929 is made pursuant to O 18 r 12 and O 87A r 3 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) (“Rules of Court”), and consists of 165 sets of requests (each with numerous sub-requests).

Summons No 2935 of 2017 (“SUM 2935”) is the Defendant’s application for further and better particulars of the Statement of Claim (Amendment No 1) (“the Statement of Claim”), the Particulars of Infringement (Amendment No 1) (“the Particulars of Infringement”) and the Reply and Defence to Counterclaim (Amendment No 2) (“Reply and Defence to Counterclaim”). SUM 2935 is made pursuant to O 18 r 12 and O 87A r 2 of the Rules of Court, and consists of 15 sets of requests (each with numerous sub-requests).

I heard the SUM 2929 and SUM 2935 together on 4 August 2017 and 21 September 2017. Further submissions were tendered to court on 5 October 2017. On 19 October 2017, I rendered oral judgment for both applications, and supplemented the oral judgment with this written judgment in relation to three specific groups of requests. The three groups of requests are:

(a) the Plaintiff’s requests, in SUM 2929, for the Defendant to provide particulars of the combinations of prior art and/or user (collectively referred to as “prior art”) relied on to invalidate the patents in question (“the Combination Requests”);

(b) the Plaintiff’s requests, in SUM 2929, for the Defendant to provide particulars of specific passages of certain prior art relied on to invalidate the patents in question (“the Passage Requests”); and

(c) the Defendant’s requests, in SUM 2935, for the Plaintiff to provide particulars of the alleged commercial success of one of the patents in question (“the Commercial Success Requests”).

Background facts

The Plaintiff is the proprietor of two Singapore Patents, namely Singapore Patent Numbers 115872 (“the ‘872 Patent”) and 110508 (“the ‘508 Patent”).

(a) The ‘872 Patent is in respect of an optical quality synthetic single crystal chemical vapour deposition (“CVD”) diamond material and the method for its production. The CVD diamond material produced in relation to the ‘872 Patent allegedly has lower optical birefringence and optical absorption than conventional diamond material, allowing it to be used in a variety of industrial applications and also for lab-grown synthetic diamond gems for the jewellery industry.

(b) The ‘508 Patent is in respect of a method of producing CVD diamonds of a desired colour, including the steps of heat treating the diamond under conditions suitable to produce the desired colour. This includes converting the colour of a CVD diamond from an undesirable colour, such as brown, to a near colourless or colourless form.

The Defendant is a company incorporated in Singapore. It deals in the manufacture and growth of CVD diamonds which are used in the mechanical, manufacturing, gems and jewellery industries.

In the following paragraphs, I set out aspects of the various pleadings that are of relevance to the three groups of requests addressed in this judgment.

In the Statement of Claim and Particulars of Infringement, the Plaintiff alleged that the Defendant had infringed 33 claims in the ‘872 Patent and 24 claims in the ‘508 Patent.

In the Defence and Counterclaim, the Defendant averred that its business and acts relating to the manufacture and growth of CVD diamonds do not constitute infringement of the claims in the Patents. The Defendant further counterclaimed to revoke the Patents, on the basis that the inventions disclosed in the Patents lacked novelty, inventive step and/or were insufficiently disclosed in their specifications to be performed by a person skilled in the art.

Of particular relevance to the Combination Requests and the Passage Requests is the fact that the Defendant raised separate lists of prior art to challenge each of the asserted claims in the Patents. The lists of prior art were of varying length and composition (comprising 70 pieces of prior art in all), and some of the prior art were of considerable length (with eight pieces of prior art ranging from 22 pages to 248 pages each). As a sample list of prior art cited, the particulars supporting the Defendant’s attack on Claim 19 of the ‘872 Patent are as follows (this sample is subsequently referred to for the purposes of illustrations in [17] and [19(b)(i)] below):

The Plaintiff filed a Reply and Defence to Counterclaim. Of particular relevance to the Commercial Success Requests is the Plaintiff’s averment that the ‘872 Patent’s inventiveness was evidenced, inter alia, by the commercial success of the Plaintiff’s single crystal CVD diamond products. The Plaintiff’s pleading in relation to commercial success is as follows:

Legal principles on pleadings

The key legal principles on pleadings are set out briefly in the following sub-paragraphs.

(a) Each party must plead the “necessary particulars” of any claim, defence or other pleaded matter (O 18 r 12(1) of the Rules of Court). The Court may order a party to serve particulars of any pleading (O 18 r 12(3) of the Rules of Court). As explained in Singapore Civil Procedure 2017 vol 1 (Foo Chee Hock JC gen ed) (Sweet & Maxwell, 2017) (“Singapore Civil Procedure”) at paragraph 18/12/2, the requirement to provide necessary particulars reflects the overriding principle that litigation between the parties should be conducted fairly, openly, without surprises and, as far as possible, to minimise costs. Particulars therefore serve to:

(b) Pleadings should state, and state only, the material facts relied on, and not the evidence by which these facts are to be proved (O 18 r 7 of the Rules of Court; and see Singapore Civil Procedure at paragraph 18/7/1). An important factor that determines whether a request for further and better particulars will be granted is whether the particulars requested relate to material facts or evidence (Sharikat Logistics Pte Ltd v Ong Boon Chuan and others [2011] SGHC 196 (“Sharikat”) at [8]). Material facts are the facts that are necessary for the purpose of formulating a complete cause of action, so that the opposing party is given fair notice of the case to be met and may direct his evidence to the relevant issues (EA Apartments Pte Ltd v Tan Bek [2017] 3 SLR 559 at [21]). In contrast, evidence refers to the “supporting facts” or “subordinate facts” that are means of proving the material facts.

(c) Pleadings are to be drafted succinctly, and should be as brief as the nature of the case permits. However, a lengthy pleading will not be considered unnecessarily prolix if it merely states material facts (Singapore Civil Procedure at paragraph 18/7/6).

In the context of patent proceedings, it is necessary to further consider O 87A of the Rules of Court and other legal principles that apply specifically to this area. I will touch on these as and when they arise for consideration in the course of this judgment.

The Combination Requests

The Combination Requests are the Plaintiff’s requests for the Defendant to specify the combinations of prior art relied on to invalidate the Patents. These requests each relate to specific paragraphs in the Particulars of Objection, and take the following form:

The Combination Requests are premised on the possibility of a defendant combining various pieces of prior art to show that the invention is obvious in the light of the relevant state of the art; and in so doing, to invalidate the patent (see, eg, Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting (trading as Soon Heng Digitax) [2011] 3 SLR 227 (“Dien Ghin”) at [54]). This concept is commonly referred to as “mosaicking” (Mills & Rockley (Electronics) Limited v Technograph Printed Circuits Limited [1971] FSR 188 (“Mills”) at 193). A defendant wishing to rely on a “mosaic” to invalidate a patent must show that the “mosaic” can be put together by an “unimaginative man with no inventive capacity” (Mills at 193).

I note, parenthetically, that some of the Combination Requests related to the Defendant’s attack on “novelty” rather than “obviousness”. Mosaicking is generally permitted only in relation to the latter (see, eg, Dien Ghin at [29] contra [54], and Mills at 193). However, it appears that there may be an exception to this rule under English law (see Terrell on the Law of Patents (Sweet & Maxwell, 18th Ed, 2017) at paragraph 11-63, citing Sharpe & Dohme Inc v Boots Pure Drug Co Ltd (1927) 44 RPC 367; (1928) 45 RPC 153), and in any event, I did not have to deal with this issue because the Defendant did not raise any objection on this ground.

Parties’ arguments

Plaintiff’s counsel argued that the Defendant had to particularise the combinations it intended to rely on so that the Plaintiff would know the case brought against it. Otherwise, the Plaintiff would have to direct its experts to prepare for and respond to a massive number of possible prior art combinations. To illustrate the magnitude of the problem, Plaintiff’s counsel raised the example of the attack on “obviousness” in Claim 19 of the ‘872 Patent (see [9] above). 15 different pieces of prior art were listed in the Defendant’s attack on Claim 19. In the light of the possibility of mosaicking, the number of possible prior art combinations for attacking Claim 19 alone is approximately 33,000; and this is but one of 57 asserted claims, each of which has been attacked with varying lists (and, accordingly, varying possible combinations) of prior art.

Defendant’s counsel objected to the Combination Requests on two principal grounds.

(a) First, that the requests were impermissible as they effectively sought expert evidence. In this regard, Defendant’s counsel pointed out that the critical question vis-à-vis the alleged obviousness of an invention requires analysis of how a “notional skilled reader” would assess and combine the prior art in question; and that in determining this question, the court is “often assisted… by experts” (citing Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2017] SGHC 48 at [126]). She further relied on the Canadian case of Jason Swist and Crude Solutions Limited et al v MEG Energy Corp (22 September 2015) (unreported) (“Jason Swist”) for the proposition that matters relating to combinations of prior art are matters of expert evidence. She highlighted, in particular, the following passages in Jason Swist:

Defendant’s counsel argued that the Jason Swist approach was “consistent with” the general proposition, under Singapore law, that expert evidence is usually more suited to a later stage of the proceedings (citing AstraZeneca AB(SE) v Sanofi-Aventis Singapore Pte Ltd [2013] SGHCR 7 (“AstraZeneca”) at [61] and [62]). She therefore submitted that the Combination Requests were better suited to the stage of expert reports.

(b) Second, that the Defendant’s reliance on prior art is a result of the Plaintiff’s own case. As elaborated on in the 16th Affidavit of Mehta Vishal Jatin (14 July 2017):

The “permutations of the asserted claims” referred to in the quote above was presumably a reference to the dependent claims (viz, claims dependent on other claims for validity) asserted by the Plaintiff.

Plaintiff’s counsel counter-argued each of these arguments, as follows:

(a) The first argument (at [18(a)] above) was a mischaracterisation of the Combination Requests. The Combination Requests, properly understood, did not seek expert evidence at all. Also, the decision of Jason Swist should not be relied on for various reasons (see [23] below). Furthermore, it would not be satisfactory to leave the Combination Requests to the stage of expert reports, as these reports do not have the effect of binding the Defendant to its case, thus exposing the Plaintiff to the risk of being taken by surprise at trial.

(b) The second argument (at [18(b)] above) was premised on a misapprehension of the difference between the infringement inquiry and the invalidity inquiry.

(i) In relation to the invalidity inquiry, the possibility of mosaicking prior art results in any possible permutation of the cited prior art being argued at trial. To illustrate, in relation to Claim 19 of the ‘872 Patent (see [9] and [17] above), even if the Court finds that each of the 15 pieces of prior art do not individually render the ‘872 Patent obvious, this is not the end of the inquiry. The court would also have to consider other mosaics comprising, for instance, Prior Art 1 and 5, or Prior Art 2, 6, 8 and 11, and so on.

(ii) In contrast, in relation to the infringement inquiry, even if there are dependent claims, this does not exponentially change the scope of the inquiry. This is because the court does not have to go through every possible permutation to assess infringement, and can instead simply identify and analyse the additional elements in the dependent claim, akin to the approach taken in Ransburg Co v Aerostyle Ltd [1966] FSR 26. For instance, in relation to Claim 18 (which is dependent on Claims 1-3, 5-10 and 12-17) of the ‘508 Patent, the Defendant suggested that there were 468 possible permutations of infringement to be considered by the court, but the actual number of permutations that the court has to consider is only 16. This is as explained in the 6th Affidavit of Susan Fletcher-Watts (17 February 2017):

Decision

The issue before me is whether the Defendant should be ordered to particularise the combinations of prior art.

There is no Singapore case authority relating specifically to whether combinations of prior art must be pleaded. However, the guiding principles would be the same as those set out at [12] above. Parties have additionally cited two Canadian cases dealing specifically with the issue of pleading prior art combinations, and it is to these cases which I now turn.

In the Canadian case of Throttle Control Tech Inc v Precision Drilling Corp (2010) FC 1085 (“Throttle Control”), the court noted that the “generally accepted” approach is for the party seeking to invalidate the patent to “[i]dentify any alleged combination of prior art which, when read together, support an allegation of obviousness” (emphasis added) (Throttle Control at [13(c)]).

The subsequent Canadian decision of Jason Swist appeared to depart from the position in Throttle Control (see [18(a)] above). Unfortunately, the version of the Jason Swist decision tendered to me was an unreported record (akin to notes of hearings issued by the Singapore courts), and neither set of counsel could locate the decision in any established legal database. In the circumstances, I decline to rely on Jason Swist, for the following reasons:

(a) First, the unreported record did not provide sufficient detail on the plaintiff’s requests for particulars and the context in that case. What appears from a plain reading of the unreported decision is that there had been multiple earlier exchanges between the parties involving identification of combinations of prior art, and some mosaics had indeed earlier been identified. The court described the requests at hand as being related to the “manner in which various combinations [of prior art] can operate” (emphasis added). As such, the requests might well have been for something more than merely identifying the combinations relied upon; indeed, the word “manner” may even suggest that the particulars sought related to how each mosaic anticipated the claim in question. Without clarity on the requests made and the context in that case, it is difficult to determine why the court had decided to reject the requests.

(b) Second, there was no elaboration on the legal principles involved in determining if a party has to plead combinations of prior art. Indeed, given that Throttle Control was cited to the court in Jason Swist, it appears unlikely that the court in Jason Swist would have applied a different approach to pleading combinations of prior art, without providing some explanation for its approach. Furthermore, the court in Jason Swist appeared to have dismissed the requests on the basis that they amounted to requests for expert evidence – a matter which turns very much on the precise nature of the request at hand (see [26] below). As such, the outcome in Jason Swist may well have depended the specific facts of the case, but the unreported record does not provide sufficient detail for drawing conclusions for the purposes of this judgment.

Extending the mosaicking metaphor may provide a useful illustration of this point. A mosaic, in its literal sense, is a piece of decorative art made by assembling small pieces of material such as beads, glass, stone, shells and tiles. Imagine a situation where there are many different boxes of material, each box containing many different types of material in many different sizes and quantities. At trial, the defendant will try to prove, often with the aid of expert evidence, that an unimaginative person will pick certain specific pieces from certain specific boxes and combine them in certain specific ways, so as to form an image that is similar to that claimed by the patent. The defendant does not have to provide particulars to prove all of these at the pleadings stage. However, he has to do more than simply listing the boxes and asserting that an unimaginative person assembling certain unspecified combinations of certain unspecified pieces from certain unspecified boxes will somehow form the image in question. Otherwise, the plaintiff will potentially have to engage experts to pore over all the pieces in all the boxes, coming up with all possible combinations that might be relied on at trial, so as to determine how and whether he will contest each unique combination. This would likely be a massively expensive and time-consuming process. As such, at the pleadings stage, a defendant should minimally provide an indication of the combinations he intends to rely on, so that the plaintiff has a broad idea of the issues that he will have to deal with at trial and be able to direct his preparations accordingly.

I acknowledge that particularising the combinations relied upon may require the help of experts. However, not every involvement of an expert renders the issue at hand a matter of expert evidence, which is to be reserved for expert reports or for trial. Like factual witnesses, expert witnesses may be, and often are, involved both at the early stage of formulating the pleadings, and the subsequent stage of providing evidence for trial. Involvement at various stages is unsurprising, because both material facts and evidence are by their very nature facts, the difference being their materiality to the issues at hand (see [12(b)] above). It is therefore not possible to make a determination on whether a request is a request for expert evidence, simply by asking whether experts must be involved in answering the requests. What is required is, instead, a careful perusal of precisely what particulars are sought by the requests, and whether these are requests for material facts (which is permitted) or for expert evidence (which is not).

In my view, the Combination Requests are requests for material facts. The requests are framed so as to require the Defendant to identify the various combinations of prior art it intends to rely on to invalidate each claim in the Patents. The requests do not seek information on how each mosaic will be proven, or how a notional skilled person would mosaic the prior art. Given the large number of prior art cited, without the particulars sought, the Plaintiff would not know the case it has to meet on each of the claims that the Defendant sought to invalidate. The Plaintiff would conceivably be put through immense expense in responding to the numerous possible combinations.

The Defendant has not provided any particularisation whatsoever of the combinations it intends to rely on, and has instead merely stated that it will rely on “any and all combinations of the prior art”, because the Plaintiff is asserting all permutations of the Plaintiff’s infringement claims (see [18(b)] above). This argument appears to be an objection to the Combination Requests on the basis that the Plaintiff’s own infringement claims raise the possibility of a large number of permutations. I would first observe that if the parties were to proceed on the understanding set out at [19(b)(ii)] above, the number of permutations of infringement to be considered may not be as large as the Defendant has projected. In any event, the number of permutations of infringement is not a valid basis for resisting the Combination Requests. If the Defendant’s objection is that the Plaintiff’s claims are excessive or oppressive, the Defendant ought to consider the appropriate application to right any such alleged wrong. Such an application is not before me, and cannot be dealt with by way of SUM 2929, which is the Plaintiff’s application for further and better particulars.

Although providing the particulars requested may substantially lengthen the pleadings, this is not a valid basis for denying the Combination Requests, given that they relate to material facts (see [12(c)] above). It of course remains possible that when made to particularise its pleadings, the Defendant may choose to plead every possible combination of prior art. Whether this is permissible or otherwise is, again, not an issue before me. I would only observe for now that pleadings are to be limited to material facts; and if the Defendant is of the view that every possible combination is material for trial, it is open to the Defendant to so plead. If the Plaintiff is of the view that the Defendant does not legitimately intend to rely on all the pleaded combinations, it may then consider taking any appropriate further action.

I therefore allow the Combination Requests. In the light of the large number of possible combinations of prior art, and having heard parties’ views on the reasonable amount of time to be allowed for this exercise, I grant the Defendant eight weeks from the date of this judgment to provide the necessary particulars.

The Passage Requests

The Passage Requests are the Plaintiff’s requests for the Defendant to pinpoint specific passages of certain prior art relied on by the Defendant. These requests each relate to specific paragraphs in the Particulars of Objection, and take the following form:

Parties’ arguments

Plaintiff’s counsel contended that sufficient information must be given to identify the part of the prior art which is relied on (citing Singapore Civil Procedure at paragraph 87A/3/5). Particularly in the case of complicated prior art, it may be necessary for the defendant to specify the pages and lines relied on (citing Fowler v Gaul (1886) 3 RPC 247 (“Fowler”) and Heathfield v Greenway (1894) 11 RPC 17 (“Heathfield”)).

Defendant’s counsel objected to the requests. She argued that O 87A r 3(3) of the Rules of Court only required the Defendant to provide particulars relating to the “manner, time and place” of every prior publication relied on, and that the Defendant had already provided these particulars. She further argued that a request to identify the page and line references in a piece of prior art should not be allowed (citing Sidebottom v Fielden [1891] RPC 266 (“Sidebottom”) and Holliday v Heppenstall [1889] RPC 320 (“Holliday”)).

Decision

O 87A r 3(3) of the Rules of Court provides that all prior art relied on must be particularised, and for prior publications, the particulars must state the “manner, time and place” of the publication in question. However, O 87A r 3(3) of the Rules of Court is not phrased in a manner intended to be exhaustive of all the particulars that must be pleaded in relation to prior publications. It must be read in light of O 87A rr 3(1) and 3(2) of the Rules of Court, which require a party who challenges the validity of a patent to provide particulars that “will clearly define every issue which it is intended to raise”.

Of particular relevance to the Passage Requests is the observation in Singapore Civil Procedure at paragraph 87A/3/5 that:

This proposition mirrors that in Supreme Court Practice 1999 vol 1 (Vice-Chancellor Sir Richard Scott gen ed) (Sweet & Maxwell, 1998) (“UK Supreme Court Practice 1999”) at paragraph 104/6/7, and is well supported by the two English decisions cited by Plaintiff’s counsel, viz, Fowler and Heathfield.

In Fowler, the defendant alleged that the patent in question was invalid for lack of novelty, citing two prior patents and two prior provisional patents. The plaintiff sought particulars of the parts of the prior art relied upon. The defendant argued that it was sufficient to state the time and place of the prior publication. The court ordered the defendant to specify the diagram(s), paragraph(s) or line(s) relied on, and held that (Fowler at 250):

In Heathfield, the plaintiff sought particulars of prior art relied upon in the form of “pages and lines”. Defendant’s counsel objected on the basis that “the whole [of the previous specifications] is material” (Heathfield at 19, line 19). The court expressed disbelief that the entirety of the prior art cited were all anticipations, and held that it is “… very common form… to require further particulars describing the particular parts which are relied on as anticipations” (Heathfield at 19, lines 25-26). The court further observed that whether an application for particularisation of passages relied on would “depend a great deal on the nature of the particular [specification]”; for instance, an application might not succeed if the specification referred to “was a small matter of half a page” (Heathfield at 19, lines 26-31). The court did not accept the argument that the plaintiff could simply determine which part of the prior publications were relevant by reading them, opining that even if the prior publication “may not cover many sheets of paper”, it remains “a very heavy thing to have to analyse and deal with” (Heathfield at 19, lines 48-50).

As mentioned at [33] above, Defendant’s counsel cited Holliday and Sidebottom as counter-authorities. However, on closer reading, these cases in fact take similar positions to those taken in Fowler and Heathfield.

In Holliday, the court emphasised that the law on particularisation was intended to avoid a situation where a plaintiff is taken by surprise or put to enormous expense in preparation to meet all possible arguments in relation to prior art (Holliday at 327, lines 15-26). On the facts, the court refused to require the defendants to state specific pages relied upon, for fear that this may unnecessarily burden and bind them in the event of omissions in the particularisation. However, it is pertinent to note the court’s observation that a defendant would have provided sufficient particulars by “[stating] the nature of the anticipation they rely on, or what part of the [prior patent] they rely on as an anticipation, … unless there is something more… [that makes what] they intend to rely upon doubtful” (emphasis added) (Holliday at 327, lines 44-48). As such, read holistically, the court appears to have agreed that the touchstone in each case is whether the particularisation provided was sufficient to allow the plaintiff to know what the alleged anticipations were, and that while there may not be a need to descend into particular pages, it is nonetheless necessary for the defendant to specify the “part” of the prior art relied upon.

In Sidebottom, the court dismissed the plaintiff’s request for specifying passages, it held that at a preliminary stage, the court ought not “prevent the [defendant] trying his case in such a way as he is advised and believes and think that he ought to have his case put before the Court” (Sidebottom at 272, lines 6-10); and that it was neither “necessary” nor “right” to request “a division by line or page” (Sidebottom at 270, lines 39-43). However, the decision must be read in context, taking into consideration the two points below:

(a) First, the court had distinguished the case at hand from the decisions of Fowler and Holliday, because the defendant in Sidebottom did not “[throw] at the head” of the plaintiff a large number of specifications without providing any detail (Sidebottom at 270, lines 21-25). Indeed, in Sidebottom, the defendant had specified “line to line and page to page the particular passages on which he relies” (Sidebottom at 270, lines 27-29) for many pieces of prior art relied upon. In relation to the four pieces of prior art for which particulars were sought, two pieces were “reasonably short” such that it “could not [cause] any reasonable difficulty in the mind of any person conversant with matters of that kind”; indeed, one of the pieces was “only one page”, and “so short that it speaks for itself” (Sidebottom at 270, lines 33-42). While the remaining two pieces were more complicated, there was no evidence that the plaintiff had any difficulty in understanding them; on the contrary, there was evidence that it would cause great embarrassment to the defendant if the defendant were made to particularise further (Sidebottom at 270-272).

(b) Second, the court found that the defendant had carefully considered the asserted prior art and decided that it truly intended to rely on the whole piece of prior art, viz, that “it may be essential… to go through every line, and rely upon every line of those [specifications]” (Sidebottom at 272, lines 16-21).

As such, neither Holliday nor Sidebottom detract from the general approach suggested in Fowler and Heathfield.

For completeness, the approach taken in Canada appears to be similar to that taken in the UK. In Canada, it is “generally accepted” that a defendant must “[i]dentify the portions of the prior art, especially where the invention is complex” (Throttle Control at [13(b)]).

I turn now to the Passage Requests. These requests are limited to particulars of specific passages relied on in eight pieces of prior art, each of which exceeded 22 pages in length (see [10] above). In the light of the principles espoused above, the Passage Requests are reasonable and ought to be granted. It is insufficient for the Defendant to merely list these lengthy pieces of prior art, without further specificity on the parts thereof relied on. I therefore allow the Passage Requests.

The Commercial Success Requests

The Commercial Success Requests are the Defendant’s requests for the Plaintiff to provide particulars of the alleged commercial success of the ‘872 patent. The Defendant sought the following particulars:

Parties’ arguments

Defendant’s counsel cited O 87A r 3(5) of the Rules of Court as the justification for the Commercial Success Requests. O 87A r 3(5) of the Rules of Court provides as follows:

She argued that the Commercial Success Requests fell within the ambit of the “grounds” referred to in O 87A r 3(5) of the Rules of Court, and are the “bare minimum particulars” that must be provided in order to fully plead such “grounds”. She cited the following authorities to buttress her argument:

(a) First, Singapore Court Practice 2017 (Jeffrey Pinsler gen ed) (LexisNexis, 2017) (“Singapore Court Practice”) at paragraph 87A/3/2:

(b) Second, the English decision of John Deks Limited v Aztec Washer Company [1989] RPC 413 (“John Deks”). Defendant’s counsel contended that the particulars ordered in John Deks were no different from the particulars sought in the Commercial Success Requests, and indeed, the court in John Deks went even further to order particulars despite the plaintiff having already provided a schedule of the sales of the plaintiff’s patented product. Defendant’s counsel also cited Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA 819 (“Schlumberger”), where the English Court of Appeal set out a detailed and non-exhaustive list of matters that are relevant to a commercial success claim. These related to defects in prior art and long-felt want (Schlumberger at [80]). Although Schlumberger was not concerned with what “grounds” ought to be pleaded, Defendant’s counsel submitted that the fact that these matters are necessary for succeeding in a claim of commercial success, must mean that they are material facts which must be pleaded.

(c) Third, the relevant pleading precedent in Bullen & Leake & Jacob’s Singapore Precedents of Pleadings (Jeffrey Pinsler SC gen ed) (Sweet & Maxwell, 2016) (“Singapore Precedents of Pleadings”). Defendant’s counsel submitted that the Commercial Success Requests should be allowed as they mirrored the first four sets of particulars in the relevant precedent (Singapore Precedents of Pleadings at 995):

Plaintiff’s counsel objected to the Commercial Success Requests on the basis that these requests sought information that was, pursuant to the Rules of Court, properly intended for the discovery stage. He pointed out that the Commercial Success Requests sought precisely the same information required in the schedule mentioned in O 87A r 5(3) of the Rules of Court (“the O 87A r 5(3) schedule”). As such, allowing the requests would render O 87A r 5(3) of the Rules of Court nugatory. He also emphasised that, in any event, the Plaintiff had already provided the Defendant with the O 87A r 5(3) schedule, and therefore that the Defendant already had the necessary information on hand.

Defendant’s counsel counter-argued that there was a functional difference between discovery and particulars. Specifically, the latter would tie the hands of the pleading party and prevent him from going into matters not pleaded. As such, despite the fact that the O 87A r 5(3) schedule had already been provided, this did not absolve the Plaintiff of the need to provide the information by way of particulars. Defendant’s counsel further submitted that the Commercial Success Requests should be granted, in view that the Plaintiff’s O 87A r 5(3) schedule was insufficient (for failing to show the sales of the Plaintiff’s products prior to 2005 and the money spent on advertising the Plaintiff’s products).

Decision

In determining whether the Commercial Success Requests should be ordered, it is necessary to consider the scheme relating to the provision of information on commercial success, as envisaged in O 87A rr 3(5) and 5 of the Rules of Court.

I first briefly sketch the discovery regime established by O 87A r 5 of the Rules of Court (“the Commercial Success Discovery Regime”). In essence, documents relating to commercial success are exempted from the usual general discovery process (O 87A r 5(1) and (2) of the Rules of Court). Instead, such documents only have to be stated in the O 87A r 5(3) schedule. The relevant provisions are as follows:

I next turn to consider the ambit of the “grounds” referred to in O 87A r 3(5) of the Rules of Court. The Rules of Court do not elaborate on what the required “grounds” are, and there is no Singapore case authority on this point. The only case authority submitted to me was that of John Deks, which has also been cited in Singapore Court Practice (see [48(a)] above). John Deks is prima facie of persuasive value, given that the decision was premised on the English precursor to O 87A r 3(5) of the Rules of Court (viz, O 104 r 6(5) of the UK Rules of the Supreme Court (“UK RSC”)).

In John Deks, the defendants requested for particulars of the plaintiff’s commercial success claim. The plaintiff provided a schedule of the “best record of such sales at present available to the plaintiffs and examples of the plaintiffs’ said products are available for inspection…” (John Deks at 414). Dissatisfied with this, the defendant sought further and better particulars relating to alleged defects in the prior art, as well as the plaintiff’s claim that a long-felt want had been answered by the plaintiff’s products. The requests made were as follows:

The court allowed these requests and ordered the plaintiff to furnish the relevant particulars. In arriving at its decision, the court stated that a commercial success pleading required “more than just setting out the sales and identifying the products”; specifically, the pleading should identify the patentee’s case (John Deks at 416):

On its face, the decision of John Deks appears to suggest that identification of products and setting out sales and expenditure on advertising should generally be granted, or, as Defendant’s counsel put it, a “bare minimum” (see [48] above). Indeed, the court had gone further, to require particularisation of any alleged defects in the prior art and any claim relating to a long-felt want being answered by the plaintiff’s products.

However, the analysis is not quite as straightforward. At the time John Deks was decided (ie 12 December 1988), the English precursor to Singapore’s Commercial Success Discovery Regime had not yet been introduced.

It was only subsequent to the decision in John Deks, on 1 October 1995, that the UK RSC was amended to introduce the Commercial Success Discovery Regime (ie O 104 rr 11(2)(c) and 11(3) of the UK RSC, which are the English precursors to O 87A rr 5(2)(c) and 5(3) of the Rules of Court). The Regime was introduced to address the problem of potentially prolix discovery in relation to commercial success, which is brought about by the fact that virtually every commercial document produced relating to a product or process may be relevant to the success of that product or process (see Civil Procedure 2016 at paragraph 2F-10.4; for an illustration of voluminous discovery potentially required in relation to commercial success prior to the introduction of the Commercial Success Discovery Regime see, eg, Molnycke A B and Another v Procter & Gamble Ltd and another [1990] RPC 498). Limiting discovery to the matters specified in the schedule would save considerable time and expense (see, eg, Lilly Icos Limited v Pfizer Limited [2002] EWCA at [14]). Today, a similar Commercial Success Discovery Regime continues to apply under the UK Civil Procedure Rules (Practice Direction 63 paragraphs 6.1(3) and 6.3).

The Commercial Success Discovery Regime has been described by commentators as envisaging a framework within which there is distinct and detailed particularisation of issues relating to commercial success, but limited discovery of material relevant hereto (see, eg, UK Supreme Court Practice 1999 at paragraphs 104/6/10 (“in many cases… [discovery will] be replaced by much more detailed pleadings”) and 104/11/1 (“[discovery as to commercial success] will not be given, but instead detailed particulars must be given by the party alleging it”).

However, the question that remains is this: what is the ambit of “grounds” in O 87A r 3(5) of the Rules of Court, subsequent to the introduction of the Commercial Success Discovery Regime?

To the extent that the court in John Deks could be understood as having accepted that product identification and setting out the number of sales should be particularised (although this was not actually in issue before the court, given that those information had already been provided by the plaintiff – see [54] above), this proposition must now be considered in the light of the Commercial Success Discovery Regime.

As a matter of logic and statutory interpretation, the “grounds” in O 87A r 3(5) of the Rules of Court should not be interpreted to require information that is identical to the information required in the O 87A r 5(3) schedule; otherwise, O 87A r 5(3) of the Rules of Court would be rendered otiose. Instead, the “grounds” referred to in O 87A r 3(5) of the Rules of Court should be interpreted to relate to other important matters that ought to be pleaded in relation to a commercial success claim, including, for instance, particulars relating to defects in prior art and long-felt want. These were, indeed, the precise particulars that the court in John Deks was concerned with. The factors enumerated in Schlumberger also related to defects in prior art and long-felt want (Schlumberger at [80]). Such particulars are also captured at paragraphs 5 and 6 of the relevant pleading precedent in Singapore Precedents of Pleadings (see [48(c)] above).

In view that the Commercial Success Requests are targeted entirely at material properly reserved for discovery pursuant to O 87A r 3(5) of the Rules of Court, I disallow the Commercial Success Requests. For completeness, I will also address Defendant’s counsel’s submission that the Plaintiff’s O 87A r 5(3) schedule did not provide sufficient information (see [50] above). The sufficiency of the Plaintiff’s O 87A r 5(3) schedule is not before me, as SUM 2935 relates to the Defendant’s application for further and better particulars. The provision of particulars is not an appropriate avenue for supplementing or supplanting allegedly defective discovery.

Conclusion

For the foregoing reasons, I allow the Combination Requests and the Passage Requests, and disallow the Commercial Success Requests.