Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others and another suit [2019] SGHCR 11

This judgment concerns four applications for further and better particulars and the withdrawal of interrogatories, brought in two related patent infringement suits, ie Suit No 1229 of 2016 (“Suit 1229”) and Suit No 190 of 2018 (“Suit 190”). In essence, the alleged patent infringers claim that the patent proprietor had failed to sufficiently particularise certain aspects of its infringement claims; the patent proprietor has denied this and further contended that, in any event, any further and better particulars can only be provided after the alleged infringers have responded to certain interrogatories. This has led to a procedural impasse, resulting in the four applications being taken out.

I heard the four applications together on 19 August 2019 and now render my decision.

Background

Sun Electric Pte Ltd (“the Plaintiff”) is the registered proprietor of two Singapore patents (collectively, “the Patents”), namely:

Sunseap Group Pte Ltd (“the 1st Defendant”), Sunseap Energy Pte Ltd (“the 2nd Defendant”) and Sunseap Leasing Pte Ltd (“the 3rd Defendant”) (collectively, “the Defendants”) offer electricity products via off-site power purchase agreements (“PPA”).

The Plaintiff brought Suit 1229 and Suit 190 against the Defendants for alleged infringement of system and process claims in the 341 Patent and the 883 Patent, respectively. The common subject matter in both suits relates to the PPA between Apple Inc (“Apple”) and the Defendants, pursuant to which the Defendants would generate electricity from various solar-powered generation facilities and supply the electricity to Apple.

In Suit 190, the Defendants applied for further and better particulars of, inter alia, “What each Defendant allegedly relies on that constitutes a ‘consolidation unit’”. This was the subject matter of my earlier decision in Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others [2019] SGHCR 4 (“Sun Electric”). The Plaintiff objected to these requests on the basis that they required the Plaintiff to prematurely construe the term “consolidation unit”, and effectively sought evidence rather than material facts. In response, the Defendants contended that the requests were simply for the Plaintiff to provide at least one instance of each type of infringement alleged, as required by O 87A r 2(2) of the Rules of Court (Cap 322, R 5, Rev Ed 2014). In addition, Defendants’ counsel argued that the Plaintiff ought to further particularise the allegations concerning reliance on a “consolidation unit”, because the term had no obvious meaning in the English language and the Defendants were otherwise unable to identify which of their acts or operations were allegedly infringing in nature. For the reasons elaborated upon in Sun Electric at [17]–[25], I ordered that the Plaintiff provide the further and better particulars referred to at the outset of this paragraph.

The Defendants subsequently sought, by way of a letter, further and better particulars in Suit 1229 that mirrored the particulars ordered in Sun Electric. The Plaintiff provided further particulars in Suit 1229, and filed further particulars in Suit 190 pursuant to the order in Sun Electric. The Plaintiff essentially particularised the Defendants’ alleged reliance on a “consolidation unit” in the following terms:

For certain other particulars, the Plaintiff repeated the above but with an additional sentence, as follows:

In an exchange of letters, the Defendants objected to the sufficiency of the particulars provided, and the Plaintiff indicated a willingness to provide further particulars after the Defendants provide sufficient answers to certain interrogatories that were served without order of court (“the Interrogatories”). The Interrogatories are set out in an annex to this judgment (“the Annex”, which includes blackline edits to reflect the orders made at [34(a)(i)] below).

The Applications

Dissatisfied with these developments, the Defendants filed the four applications that are the subject of the present judgment:

Parties’ arguments

Parties’ arguments in SUM 2901 and SUM 2902

In relation to SUM 2901 and SUM 2902, counsel for the Defendants, Mr Nicholas Lauw (“Mr Lauw”), contended that the particulars provided thus far left the Defendants none the wiser as to what they were using that allegedly constituted reliance on a “consolidation unit”. Given that the Plaintiff had failed to give at least one instance of each type of infringement alleged as required by O 87A r 2(2) of the Rules of Court, the references to “consolidation unit” in the Plaintiff’s pleadings ought to be struck out. In addition, Mr Lauw argued that the Plaintiff’s attempt to defer the provision of further and better particulars until after the Interrogatories were answered sought to “put the cart before the horse”. He emphasised that the Plaintiff ought not to be allowed to interrogate without first furnishing the requisite particulars (citing Wright Norman and anor v Oversea-Chinese Banking Corp Ltd and anor [1992] 2 SLR(R) 452 at [16]–[17], where the Court of Appeal agreed with the High Court that interrogatories could only be raised on specific particulars of negligence).

Counsel for the Plaintiff, Mr Chan Wenqiang (“Mr Chan”), raised two main arguments:

Parties’ arguments in SUM 2921 and SUM 2922

In relation to SUM 2921 and SUM 2922, there was no dispute over the general principles governing interrogatories as set out in Prudential Assurance Co Singapore Pte Ltd v Tan Shou Yi Peter [2018] SGHCR 4 (“Prudential Assurance”). The dispute focused on whether the Interrogatories were relevant and necessary in the present case.

Mr Chan submitted that the Interrogatories were relevant and necessary, given that they were specifically targeted towards parts of the relevant patent specifications (citing Rockwell International Corporation and another v Serck Industries Limited [1988] FSR 187 at 205, which states that a plaintiff “may administer interrogatories framed on parts of the specification and ask the defendant whether he used the processes described therein and forming part of his invention, taking them step by step”). He emphasised that the Plaintiff had identified how each interrogatory correlated to a specified feature of the “consolidation unit”, and that the answers given would provide useful confirmation as to whether the Defendants had performed these functions by “manual” or “automated” means, in “hardware” or “software” format.

Mr Lauw argued that the Interrogatories ought to be withdrawn, for three reasons:

Decision

The four applications call for a determination of two broad issues:

Whether the particulars provided were sufficient

The general principles regarding the provision of particulars in a patent infringement claim are well established. In gist, a plaintiff does not generally have to construe the terms and claims of his patent at an early stage of infringement proceedings, but is obliged to inform the defendant of sufficient particulars to enable the defendant to know the case to be met (see Sun Electric at [17]–[21], and AstraZeneca AB (SE) v Sanofi-Aventis Singapore Pte Ltd [2013] SGHCR 7 (“AstraZeneca”) at [17]–[48], [58] and [61]). It is insufficient for a plaintiff to simply state that the defendant has infringed the claims of his patent; instead, the plaintiff ought to “condescend to describe the manner in which the acts which he alleges to be infringement were carried out” (see AstraZeneca at [21]). The precise level and nature of detail that must be pleaded depends, of course, on the circumstances of each case.

In relation to the present case, I have already determined in Sun Electric that the Plaintiff ought to provide further and better particulars in Suit 190, in relation to what the Plaintiff says the Defendants rely on that constitutes a “consolidation unit”. From this decision there has been no appeal. The particulars sought in Suit 1229 by way of SUM 2901 are similar to those ordered in Sun Electric. In this regard, the Plaintiff has already provided particulars in Suit 1229 without an order of court to this effect, thus implicitly acknowledging that such particulars ought to be provided in the light of Sun Electric.

The question before me is whether the particulars provided thus far are sufficient. In my view, they are not. The particulars are furnished in the form of open-ended formulations that add little, if any, clarity to the understanding of the alleged “consolidation unit”. Indeed, the responses appear to introduce further ambiguity because the “device(s)” referred to in one set of particulars (see [7] above) may potentially be different from the “device(s)” referred to in another set of particulars (see [8] above). Overall, the particulars do not sufficiently particularise the manner in which the Defendants allegedly rely on a “consolidation unit”.

I disagree with Mr Chan’s contention that with the help of experts, the Defendants would be in a position to identify how they (ie the Defendants) may have relied on a “consolidation unit”. Quite clearly, the particulars are intended to facilitate an understanding of the Plaintiff’s claim; the Defendants’ interpretation of the Plaintiff’s claim is not of direct relevance. Even if the Defendants were to engage experts to determine what aspects of their acts and operations may possibly constitute reliance on a “consolidation unit”, this would not be conclusive of what the Plaintiff’s claim really is. As observed in Sun Electric (at [23]), albeit in a slightly different context, the Defendants’ experts may well be labouring under the impression that a “consolidation unit” comprises components A, B and C, while the Plaintiff may be proceeding with components X, Y and Z in mind. As such, there does not appear to be any useful purpose in requiring the Defendants or their experts to second-guess the ambit of the Plaintiff’s claim.

I therefore find that the particulars provided by the Plaintiff thus far are insufficient, and that further and better particulars are necessary.

Whether particulars should be deferred pending the responses to the Interrogatories

I turn now to consider whether the Plaintiff’s provision of further and better particulars should be deferred pending the Defendants’ responses to the Interrogatories.

Legal principles

It is trite that a plaintiff should have adequate knowledge of his case before commencing a suit, and must plead his claim with sufficient particularity. His pleading should inform the defendant of the nature of the case to be met and enable the defendant to properly prepare for trial. A plaintiff should not usually be allowed to put forward vague and sweeping claims in the hope of particularising and substantiating his allegations through discovery or interrogatories (see, eg, Thomas & Betts at [23]).

However, a court may allow a plaintiff to seek discovery or interrogatories before particularising his claims in certain circumstances (see, eg, Prima Bulkship at [34]–[47], where the court considered numerous English and Australian case authorities on this point). In particular, a plaintiff may seek discovery or interrogatories before particularising his claim where:

Application to the present case

In the present case, the requirements set out at [24(a)] and [24(c)] above are met. In relation to the former, there is affidavit evidence that the Plaintiff has provided the best particulars available to it, and that it is unable to provide any additional particulars pending the provision of sufficient answers to the Interrogatories. In relation to the latter, there is a “substantial foundation” for the Plaintiff’s claim: to elaborate, the Plaintiff has affirmed on affidavit that it would be “commercially unrealistic” and “extremely laborious” for the Defendants to have manually acquired, recorded and processed the electrical metering data in their possession without the aid of some automated or semi-automated process as well as hardware and/or software modules configured for such purposes. For instance, the Defendants would otherwise have had to perform the “highly impractical” tasks of sending employees or agents to various rooftop solar systems at more than 150 distinct locations to take manual meter readings, and to manually calculate or consolidate the electrical energy consumed by Apple and the electrical energy generated from the facilities at those locations.

However, a complication arises in relation to the requirement that “the material facts in question are entirely within the knowledge of the defendant” (see [24(b)] above). On the one hand, the Plaintiff has stated on affidavit that further information relating to the Defendants’ reliance on a “consolidation unit” would be solely within the Defendants’ knowledge. This is not altogether unexpected or surprising, given that such information relates to the processes and systems used by the Defendants in relation to the electrical metering data. On the other hand, while such information may well be entirely within the Defendants’ knowledge, the Defendants themselves do not know what aspects of their operations are alleged to amount to reliance on a “consolidation unit”; indeed, it is precisely in relation to this issue that further and better particulars were ordered in Sun Electric. As such, the Defendants contended that unless the Plaintiff first particularises its reference to a “consolidation unit”, the Defendants are “in no position” to answer the Interrogatories because the Defendants would otherwise be forced to “describe every computer, device, computer program or ‘any other means’ used by the Defendants”.

The complication just mentioned is perhaps unavoidable in certain patent disputes, particularly because the construction of patent claims is a matter to be left for determination at trial. This means that even though a defendant’s processes are entirely within his knowledge, he may not be in a position to provide the requisite information in the absence of sufficient particulars of the claim against him. At the same time, the plaintiff may well be unable to further particularise his claim, precisely because he does not have sufficient knowledge of the defendant’s processes.

A simple illustration may be useful. Party X (the patent proprietor) claims that Party Y (the alleged infringer) has infringed a claim in Party X’s patent. Party Y seeks further and better particulars of the asserted patent claim. Party X contends that he is unable to provide further particulars pending interrogatories, because he is otherwise unaware of the details relating to Party Y’s processes (which are entirely within Party Y’s own knowledge). Party Y argues that while he does have knowledge of his own processes, he is unaware of the ambit of the claim that Party X has brought against him, and therefore is unable to answer interrogatories relating to the claim. This results in an apparent impasse somewhat akin to the proverbial “chicken and egg” dilemma: with both parties operating under informational deficiencies, neither party unilaterally has all the information required to move the matter forward in a manner that will ensure the fair and effective resolution of the dispute.

The approach I have just outlined is directly applicable to the present case. Here, because the Plaintiff has already served the Interrogatories, the court is in a position to make a holistic assessment of whether it would be appropriate to order that further and better particulars be deferred pending the responses to the Interrogatories.

I turn now to assess the Interrogatories themselves. The parts of the Interrogatories seeking information on whether various tasks are performed by “manual” or “automated” means, whether certain parameters are captured in a “Unit” (which is defined to include “system / apparatus / device / module / computer program / any other means”), and whether any such “Unit” exists in a “hardware” or “software” format, are relevant and necessary for moving the matter forward. However, some of the interrogatories have open-ended aspects (ie requests for the “manner or mode by which [a certain process is done]”, to “give a description of the said Unit(s), such as its technical attributes…”, or to “state exactly how and where…”), while others are not directly related to the features of a “consolidation unit” (ie requests to “state where the said Unit(s) is located / situated / stored”). These aspects ought to be circumscribed or withdrawn, as marked in the blackline version in the Annex. In their modified form, the Interrogatories would pass muster based on the guidelines in [30] above.

Finally, I recognise that interrogatories 2(a), 3(a) and 3(b) in Suit 190 were not requested for the purpose of enabling the Plaintiff to provide the further and better particulars sought. Instead, they were intended to give the Plaintiff notice of the Defendants’ position in relation to certain material facts. Having considered the arguments on both sides, I allow these interrogatories to stand, for the following reasons:

Conclusion

In view of the foregoing, my orders are as follows:

Annex

The interrogatories served in Suit 1229, and which are the subject matter of SUM 2922, are set out below with blackline edits made as ordered in [34(a)(i)] of the judgment:

The interrogatories served in Suit 190, and which are the subject matter of SUM 2921, are set out below with blackline edits made as ordered in [34(a)(i)] of the judgment: