Martek Biosciences Corp v Cargill International Trading Pte Ltd

• Court: High Court (Singapore)
• Judge: Tay Yong Kwang J
• Judgment Date: 03 May 2010
• Neutral Citation: [2010] SGHC 135
• Citation: [2010] SGHC 135
• Defendant Counsel: Daniel Koh (briefed) (Eldan Law LLP) and Wendy Low Wei Ling (Rajah & Tann LLP)
• Published date: 03 August 2010
• Plaintiff Counsel: Lai Tze Chang Stanley SC, Vignesh Vaerhn and Lim Ming Hui Eunice (Allen & Gledhill LLP)
• Hearing Date: 12 March 2010
• Docket Number: Originating Summons No 1418 of 2009/E; Summons No 234 of 2010/Q
• Date: 03 May 2010
• Subject Matter: Leave,Civil Procedure,Admission of Further Evidence,Appeal

Tay Yong Kwang J: Background Facts

Both Martek Biosciences Corporation (the “Applicant”) and Cargill International Trading Pte Ltd (the “Respondent”) are in the infant formula business. The Respondent commenced proceedings to revoke the Applicant’s Singapore Patent P-No. 42669 (“the Patent”) under section 80(1)(a) and (c) of the Patents Act (Cap 221, 2005 Rev Ed). After a four-day hearing, Deputy Registrar of Patents Danielle Yeow and Principal Assistant Registrar of Patents Isabel Chng (“the Tribunal”) in Cargill International Trading Pte Ltd v Martek Biosciences Corporation SGIPOS 12 (the “grounds of decision”) granted the Respondent’s application to revoke the Applicant’s patent. In this Originating Summons (“the Appeal”), the Applicant is appealing against the decision of the Tribunal. The Appeal has not been heard yet. What is presently in issue is an interlocutory application by the Applicant for leave to adduce further evidence at the Appeal.

The Patent was entitled “Arachidonic Acid and Methods for the production and use thereof” and the published abstract reads as follow:

The present invention relates to processes for the production of arachidonic acid containing oils, which preferably are free of eicosapentaneoic acid. This invention also relates to compositions containing oils of very high amounts of arachidonic acid in triglyceride form, and to uses of such oils. In a preferred embodiment, Mortierella alpina is cultivated using conditions which yield triglyceride oil having particularly high levels of arachidonic acid residues, biomass is harvested and the oil is extracted, recovered, and used as an additive for infant formula.

The Patent further explained the nature and functions of arachidonic acid: that it serves a primary role as a structural lipid and acts as the direct precursor for a number of circulating eicosenoids [eg, Prostaglandin E2 (PGE2), prostacyclin I2 (PGI2), thromboxane A2 (TxA2), leukotrienes B4 (LTB4) and leukotrienes C4 (LTC4)] which exhibit regulatory effects on lipoprotein metabolism, blood theology, vascular tone, leucocyte function and platelet activation.

Despite its importance to human metabolism, arachidonic acid cannot be synthesized in humans de novo. Thus, it must be provided in the diet and this is especially important during times of very rapid body growth such as infancy. Human breast milk contains high levels of arachidonic acid. However, many mothers do not breast feed their infants or do not breast feed for the entire period of rapid infant growth, choosing instead to utilize an infant formula.

The Patent stated that no commercial infant formula known to the Applicant contained arachidonic acid in triglyceride form and it also cited some unsuccessful attempts made in the quest for obtaining arachidonic acid.

The Respondent, in its application to revoke the Patent, cited ten prior art enumerated D1 to D10 respectively. The Respondent alleged that the Applicant’s patent claims were not patentable and that the patent specification did not disclose the invention clearly and completely for it to be performed by a person skilled in the art.

Pleadings to the revocation proceedings commenced on 20 January 2006. The revocation hearing was conducted before the Tribunal from 9 to 12 February 2009. The Tribunal rendered its grounds of decision on 3 November 2009.

In the Appeal, the Applicant will be contending that the Tribunal erred in law and in fact in finding, inter alia, that: (a) Claim 1 was not inventive over D4a read with either D7 or D10; (b) Claim 2 was not inventive over D4a read with either D5a or D7; (c) The dependent claims 3-11, 26-34 and 36-44 lacked an inventive step on the basis that the independent claims 1 and 2 lacked an inventive step; (d) Claims 3, 26 and 36 were not novel and/or inventive over D1, D2 and D4a; (e) Claims 4, 27 and 37 were not novel and/or not inventive over D4a and D7; (f) Claim 13 was not novel over D4a; (g) Claim 24 was not novel and/or inventive over D4a or D7; and (h) Claim 35 was not inventive over D4a read with D5a or D4a read with D7.

Pending the hearing of the Appeal, the Applicant took out Summons No 234 of 2010/Q (“the application”) pursuant to Order 55 rule 6(2) and/or Order 87A rule 13(2) of the Rules of Court (Cap 322, R 5, 2006 Rev. Ed.) (“ROC”) to apply for leave to conduct the experiment described in prior art reference D4a and to adduce evidence of and relating to the same (“the fresh evidence”).

D4 (D4a being the English translation of D4, the original Japanese text) was a document cited by the Respondent as one of the prior art references before the Tribunal. During cross-examination before the Tribunal, it transpired that the Respondent’s witness, Dr. William R. Barclay (“Dr. Barclay”), had not personally conducted the experiment described in D4a.

The adduction of further evidence

As this was the first case in Singapore which involved an application to adduce further evidence for a patents revocation appeal against a Tribunal’s decision, counsels for the Applicant and the Respondent sought to draw analogies with adduction of further evidence: (a) In an appeal from a lower court, tribunal or person to the High Court pursuant to O 55 r 6(2) ROC; (b) In an appeal from the High Court to the Court of Appeal pursuant to O 57 r 13(2) ROC and s 37(3) Supreme Court of Judicature Act (Cap 322, 2007 Rev. Ed.) (“SCJA”); (c) In an appeal from the Registrar of Trade Marks to the High Court pursuant to O 87 r 4(2) ROC; (d) In a trade marks or patents appeal in the UK.

The principles governing the adduction of further evidence appear to differ according to the nature of appeal from a lower adjudicating body to an appellate body. Hence, an analysis of the nature of an appeal from the Registrar of Patents (ie, the Tribunal) to the High Court is useful.

Nature of Appeal

O 87A r 13(2) ROC which governs the nature of an appeal from a decision of the Registrar of Patents (ie, the Tribunal) to the High Court applies to the present application:

Order 87A rule 13

13. – (2) An Appeal shall be by way of rehearing and the evidence used on appeal shall be the same as that used before the Registrar and, except with the leave of the Court, no further evidence shall be given. (emphasis added) An Appeal from a Lower Court, Tribunal or Person to the High Court

The wording of O 87A r 13(2) ROC should be compared and contrasted with O 55 r 2(1) ROC:

Order 55 rule 2

2. – (1) An Appeal to which this Order applies shall be by way of rehearing and must be brought by originating summons (emphasis added)

The High Court hearing an appeal from a lower court, tribunal or person is vested with powers to require further evidence on questions of fact and the evidence may be given in such manner as the Court may direct, either by oral examination in Court, by affidavit, by deposition taken before an examiner or in some other manner (see O 55 r 6(2) ROC).

An Appeal from the High Court to the Court of Appeal

O 57 r 13(2) ROC stipulates that the Court of Appeal has the power to receive further evidence on questions of fact by oral examination in court, by affidavit, or by deposition taken before an examiner. However, in the case of an appeal from a judgment after trial or hearing of any cause or matter on the merits, no such further evidence (other than evidence as to matters which have occurred after the date of trial or hearing) shall be admitted except on special grounds. Appeals to the Court of Appeal shall be by way of rehearing (see s 37(1) SCJA).

The principles governing the granting of leave to adduce further evidence before the Court of Appeal were stated in Ladd v Marshall [1954] 1 WLR 1489 (“Ladd v Marshall”), which has been applied in Singapore: (a) Evidence could not have been obtained with reasonable diligence for use at the trial; (b) Evidence is such that, if given, it would probably have an important influence on the result of the case, though it need not be decisive; and (c) Evidence must be apparently credible, though it need not be incontrovertible.

An Appeal from the Registrar of Trade Marks to the High Court

O 87 r 4(2) ROC which governs the nature of appeal from the Registrar of Trade Marks to the High Court states as follows:

Order 87 rule 4

4. – (2) An Appeal shall be by way of rehearing and the evidence used on appeal shall be the same as that used before the Registrar, except with leave of the Court, no further evidence shall be given. (emphasis added)

The Singapore Court Practice 2009, in commenting on O 87A r 13(2) ROC, states that the term “rehearing” in relation to O 87 ROC concerning trade marks was not to be understood as referring to a full de novo rehearing of evidence and that the court does not hear the case again from the start but merely reviews the decision under appeal under its supervisory jurisdiction; it further suggests that the same approach be adopted for O 87A r 13(2) ROC.

Applicant’s case

The Applicant submitted that it should be granted leave to adduce the fresh evidence for the following reasons: (a) The principles in Ladd v Marshall did not apply to the application; (b) No prejudice to the Respondent would be occasioned by the admission of the fresh evidence.

Nature of appeal under O 87A is akin to that under O 55 ROC

The Applicant submitted that in “rehearing” the Appeal, this court is entitled to revisit the totality of the evidence tendered before the Tribunal below. In other words, the Applicant pitched its case as such: an appeal from the Patents Registrars to the High Court under O 87A r 13(2) ROC is analogous to that of an appeal from a tribunal to the High Court under O 55 r 2(1) ROC.

Following this logic, when hearing the Appeal, this court is not fettered by any principle limiting its discretion and is free to come to...