Invenpro (M) Sdn Bhd v JCS Automation Pte Ltd and another

• Jurisdiction: Singapore
• Judge: Kevin Tan Eu Shan AR
• Judgment Date: 12 December 2012
• Neutral Citation: [2012] SGHCR 19
• Court: High Court (Singapore)
• Docket Number: Suit No 525 of 2009 (Summons No 5379 of 2012)
• Published date: 04 January 2013
• Year: 2012
• Hearing Date: 31 October 2012,09 November 2012
• Plaintiff Counsel: Low Wei Ling and Kelly Chan (Rajah & Tann LLP)
• Defendant Counsel: Low Chai Chong, Alvin Lim, Sandeep Menon and Vernon Chua (Rodyk & Davidson LLP)
• Subject Matter: Civil Procedure,Discovery of documents,Electronic discovery
• Citation: [2012] SGHCR 19

Kevin Tan Eu Shan AR: Introduction

This is an application by the Plaintiff, Invenpro (M) Sdn Bhd, for electronic discovery (“e-discovery”) under Part IVA of the Supreme Court Practice Directions (“the e-discovery PD”). The application was opposed by the Defendants, JCS Automation Pte Ltd and JCS-Echigo Pte Ltd.

Facts relevant to the application Background facts

The Plaintiff, a Malaysian company, manufactures batch scrubber machines that clean hard disk platters (“Invenpro Batch Scrubbers”). The Defendants are Singapore companies that are in direct competition with the Plaintiff.

On 1 January 2003, the Plaintiff entered into a Non-Disclosure Agreement (“the NDA”) with Komag USA (M) Sdn Bhd, which was subsequently acquired by Western Digital Corporation (“WDC”). Under the NDA, the Plaintiff agreed to supply the Invenpro Batch Scrubbers to WDC. The NDA provided for mutual obligations of confidentiality in exchange for the passing of technology and designs between the parties.

The Plaintiff’s case is that on or about October 2008, the 1st and/or the 2nd Defendants obtained confidential information from WDC relating to the design and manufacture of the Invenpro Batch Scrubbers (“the confidential information”). It alleges that the Defendants used some or all of the confidential information in designing and manufacturing their own batch scrubbers, which were sold to WDC. The Plaintiff also alleges that the Defendants used the confidential information to make presentations to Seagate Technology International and/or its associated companies (collectively “Seagate”). Allegedly infringing batch scrubbers were sold by the Defendants to Seagate as well.

The Defendants’ position is that they have neither received the confidential information from WDC nor utilised the said information for the purpose of manufacturing their own batch scrubbers.

History of proceedings relevant to the present application

On 21 February 2012 and 22 March 2012, the Plaintiff obtained certain discovery orders from an Assistant Registrar and a Judge respectively. These orders were related to Development and Operating documents of the Defendants’ batch scrubber machines that were sold to and/or delivered to WDC and Seagate (“the Discovery Orders”). In the Discovery Orders, the definitions of the documents were as follows:

“Development Documents” shall mean all correspondence, emails, internal memos, sketches, design drawings publications, manuals (external or otherwise), photographs, blue prints, or evidence thereof related to, relied upon, referred to, and/or used in, the design, development, and/or manufacture of the batch scrubber machines or devices or modules (where applicable);

“Operating Documents” shall mean all records and documents related to the product history of the batch scrubber machines or devices or modules (where applicable) which would show inter alia all upgrades, retrofits, software changes, hardware changes, mechanical changes, functionality changes etc. These said records and documents would include without limitation, the product manuals (provided at about the time of manufacture/delivery), service and maintenance records, upgrade reports (collectively “the Operating Documents”).

In compliance with the Discovery Orders, the Defendant filed their supplementary list of documents on 12 April 2012.

The Plaintiff asserted that the documents disclosed by the Defendants in their supplementary list of documents appeared to be sales documents, which do not fall within the ambit of the Discovery Orders. In view of the Defendants’ purported non-compliance with the Discovery Orders, the Plaintiff took out the present application for e-discovery on 18 October 2012. This involves, inter alia, running a search of 75 keywords through the electronic databases of at least 14 of the Defendants’ employees.

Issue in the application

At the hearing before me, the Plaintiff’s counsel, Ms Low Wei Ling, confirmed that she had taken out this application in order to obtain what had already been ordered in the Discovery Orders. Thus, the issue is whether I should allow the Plaintiff’s application for e-discovery for the sole purpose of enforcing the Discovery Orders.

Submissions of parties

The Plaintiff asserts that e-discovery can be used to enforce non-compliance with the Discovery Orders. It relies on O 24 r 16(1) of the Rules of Court (Cap 224, R 5, 2006 Rev Ed) (“Rules”), which provides as follows:

If any party who is required by any Rule in this Order, or by any order made thereunder, to make discovery of documents or to produce any document for the purpose of inspection or any other purpose, fails to comply with any provision of the Rules in this Order, or with any order made thereunder, or both, as the case may be, then, without prejudice to Rule 11 (1), in the case of a failure to comply with any such provision, the Court may make such order as it thinks just including, in particular, an order that the action be dismissed or, as the case may be, an order that the defence be struck out and judgment be entered accordingly.

[emphasis added]

It submits that as the Defendants have not fully disclosed their Development and Operating documents, an e-discovery order to enable it to obtain the said documents would be “just” in the circumstances.

The Defendants argue that while a literal reading of O 24 r 16 suggests that the court has broad powers to make orders regarding non-compliance of one’s discovery obligations, e-discovery should be used only when it is proportionate and economical to do so and not as a method of enforcing compliance with discovery orders.

My decision

Admittedly, O 24 r 16 confers a wide discretion on the court to make any order that is “just” if a party defaults in its discovery obligations. However, there is no justification for the court to use e-discovery purely as an enforcement mechanism when there is an allegation that a discovery order has not been complied with.

The raison d’être of e-discovery is to provide an efficient and cost-effective method of conducting discovery, particularly where documents are voluminous and in electronic form. In Sanae Achar v Sci-Gen Ltd [2011] 3 SLR 967, Lee Seiu Kin J observed (at...