Mariwu Industrial Co (S) Pte Ltd v Dextra Asia Co Ltd and Another

• Jurisdiction: Singapore
• Judge: Chan Sek Keong CJ
• Judgment Date: 10 October 2006
• Neutral Citation: [2006] SGCA 37
• Docket Number: Civil Appeal No 15 of 2006
• Date: 10 October 2006
• Year: 2006
• Published date: 11 October 2006
• Plaintiff Counsel: Kenneth Tan SC (Kenneth Tan Partnership), Wong Siew Hong and Kalaiselvi d/o Singaram (Infinitus Law Corporation)
• Citation: [2006] SGCA 37
• Defendant Counsel: Daniel Lim and Cindy Quek (Shook Lin & Bok)
• Court: Court of Appeal (Singapore)
• Subject Matter: Admissibility of evidence,Adducing fresh evidence,Appeals,Section 23 Evidence Act (Cap 322, 1999 Rev Ed),Civil Procedure,Whether correspondence made in context of negotiations to settle dispute,Whether statements in correspondence amounting to admissions and therefore privileged,Whether special grounds existing for allowing fresh evidence to be adduced at appeal,Evidence,Applicable principles,Whether correspondence marked "without prejudice" admissible as evidence

10 October 2006

Chan Sek Keong CJ (delivering grounds of decision of the court):

Introduction

1 This was an application by the appellant, Mariwu Industrial Co (S) Pte Ltd (“Mariwu”), for leave to adduce new evidence during Civil Appeal No 15 of 2006. We allowed the application, but remitted the case to the trial judge to consider the new evidence.

2 The facts of the appeal are as follows. In Suit No 641 of 2004, Dextra Asia Co Ltd and Dextra Manufacturing Co Ltd (collectively “Dextra”) sued Mariwu for infringement of the patented invention, called “Bartec”, comprising two steel bars joined together with a steel coupler. The Bartec invention is a type of bar used in reinforcing concrete in building construction, and is also known as a “rebar.”

3 The Bartec invention was patented by Mr Alain Bernard, who founded Techniport SA (“Techniport”) to market his invention. The priority date of the patent was 3 February 1988 (“the Priority Date”). Techniport granted CCL Systems Ltd (“CCL”) a worldwide licence to use the patent, except in Hong Kong and Thailand.

4 In 1992, Dextra entered into a joint venture with CCL to exploit the patent in Singapore. This ended in March 1995 when Dextra sold its share of the Singapore business to CCL and left the Singapore market.

5 In the meantime, Techniport sold the Bartec patent to Establissements A Mure (“Mure”) in 1993. Techniport’s deals with CCL and Dextra were subsequently novated to Mure. But in January 1995, CCL terminated its licence with Mure. Still, it continued to sell Bartec products in Singapore.

6 In 1998, CCL was acquired by Ancon Clark, a UK company, to form Ancon CCL group (“Ancon CCL”). The old CCL management was replaced.

7 At the end of 1998, Mure assigned the Bartec patent rights in Asia to Dextra. Dextra invited Ancon CCL to become its licensee in Singapore, but negotiations fell through. In 2002, Dextra re-entered the Singapore market and operated through licensees. Ancon CCL appointed Mariwu as its exclusive distributor of Bartec products in Singapore. Dextra later took action against Mariwu for infringing the patent.

8 It was conceded that if the patent was valid, Mariwu would have infringed it by use in Singapore. The main challenge was therefore to the patent’s validity. Mariwu alleged that the patent was invalid for lack of both novelty and inventiveness. Only the novelty point is relevant to this application.

9 Mariwu alleged, inter alia, that the patent was not novel because there had been prior use of the Bartec invention in France and Hong Kong before the Priority Date. In France, Mariwu claimed that the invention was used in at least one construction project, namely the Ile de Ré Bridge by Techniport. In Hong Kong, it was alleged that Techniport and Dextra itself had used the Bartec invention during on-site experiments for the Pacific Place project, as well as in the foundations of the project itself.

10 Dextra denied that there was any use of the invention in France, and while admitting that the invention was used in Hong Kong, claimed that such use was confidential and thus not novelty-destroying.

11 The evidence which Mariwu is now seeking to adduce consists of correspondence from CCL (before it became Ancon CCL) and Dextra to each other, and to Mure sometime in late 1994. The correspondence concerned discussions with Mure on the question of the invalidity of the Bartec patent. At the time, both CCL and Dextra were still licensees of the patent from Mure. Apparently, CCL and Dextra had discovered that the patent was “potentially invalid” because of prior use in Hong Kong and France. CCL and Dextra wanted to forge a common position against Mure to use this information to extract a better bargain from Mure in the form of lower licensing royalties for the extension of the licence to use the patent.

Admissibility of new evidence

12 To determine whether the new evidence should be admitted, the questions before the court were as follows:

(a) Did the new evidence fulfil the requirements of Ladd v Marshall [1954] 1 WLR 1489?

(b) If so, were the documents admissible in evidence as they were all marked “without prejudice”?

The Ladd v Marshall requirements

13 Sections 37(2) and 37(4) of the Supreme Court of Judicature Act (Cap 322, 1999 Rev Ed) state:

(2) In relation to such appeals, the Court of Appeal shall have all the powers and duties as to amendment or otherwise, of the High Court, together with full discretionary power to receive further evidence by oral examination in court, by affidavit, or by deposition taken before an examiner or a commissioner.

(4) Upon appeals from a judgment, after trial or hearing of any cause or matter upon the merits, such further evidence, except as to matters subsequent as specified in subsection (3), shall be admitted on special grounds only, and not without leave of the Court of Appeal.

14 In deciding whether such “special grounds” exist, the court will apply the test in Ladd v Marshall (at 1491):

[F]irst, it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial; secondly, the evidence must be such that, if given, it would probably have an important influence on the result of the case, though it need not be decisive; thirdly, the evidence must be such as is presumably to be believed, or in other words, it must be apparently credible, though it need not be incontrovertible.

15 As to the first requirement, the documents were made were available to Mariwu only after the High Court trial. Mariwu was not a party to the CCL-Dextra-Mure negotiations, having been incorporated only in 2002, nor did it have any first-hand knowledge of the events discussed in the documents. It had obtained some other documents pertaining to CCL’s dealings with Mure for the purposes of the trial only through Ancon CCL, when Mariwu’s managing director, Mr Tan Tiong Hwa, was allowed to search through two boxes of documents provided by Ancon CCL at its Sheffield office. Subsequent to the judgment against Mariwu, Ancon CCL’s employee, Mr Herve Marie Poveda, went through Ancon CCL’s files again and found the present documents, which were not in the two boxes. The documents were then forwarded to Mariwu.

16 Ancon CCL was under no legal obligation to provide assistance to Mariwu and did so out of goodwill. Other than the two boxes provided to Mr Tan, there was no evidence that Mr Tan was given free rein to search for documents in Ancon CCL’s offices. Ancon CCL itself knew nothing of the existence of the evidence. The management team which was involved in the CCL-Dextra-Mure negotiations was completely replaced after CCL’s acquisition. The evidence was only found by chance through Mr Poveda’s efforts after the trial. On the evidence before us, we were of the view that the evidence could not have been obtained through reasonable diligence before trial.

17 The second requirement that the evidence would have an important, but not necessarily decisive, influence on the result of the case is also satisfied. One of the documents was a letter dated 23 November 1994 from Dr J M Pithon, Chief Executive Officer of Dextra and chief witness for Dextra, to Mure. The letter contained a statement that “[t]he process has been commercialized in Hong Kong and France before the deposit of the patent, and is therefore potentially nullified”. The other documents from CCL refer to the patent being “void” and “highly vulnerable because of prior disclosure”.

18 The statements from Dr Pithon are particularly relevant because he had asserted during cross-examination at the trial that he knew of no facts which would invalidate the patent. His reply put his state of knowledge in issue. Furthermore, Dextra’s position on appeal was that while there was use in the Pacific Place project, such use was confidential. The statements may show that Dr Pithon considered whatever use there was in Hong Kong to be such as could, in his own words, “potentially nullify” the patent. We express no view on what Dr Pithon meant by using that phrase.

19 The letter could also show that there was commercialisation of the invention in France, and that Dextra appeared to have knowledge of it, despite asserting that there was no prior use at all in that...