Martek Biosciences Corp v Cargill International Trading Pte Ltd

• Jurisdiction: Singapore
• Court: Court of Three Judges (Singapore)
• Judge: Chao Hick Tin JA
• Judgment Date: 28 December 2010
• Neutral Citation: [2010] SGCA 51
• Citation: [2010] SGCA 51
• Published date: 10 January 2011
• Date: 28 December 2010
• Defendant Counsel: Daniel Koh (briefed) (Eldan Law LLP) and Low Wei Ling Wendy (Rajah & Tann LLP)
• Docket Number: Civil Appeal No 55 of 2010
• Plaintiff Counsel: Lai Tze Chang Stanley SC, Vignesh Vaerhn and Lim Ming Hui Eunice (Allen & Gledhill LLP)
• Subject Matter: Civil Procedure
• Hearing Date: 20 August 2010

Chao Hick Tin JA (delivering the judgment of the court): Introduction

This appeal concerns an application by the appellant for leave to adduce further evidence in relation to a pending action in the High Court challenging the decision of the Deputy Registrar of Patents and the Principal Assistant Registrar of Patents (hereafter referred to collectively as “the Tribunal”) to revoke the appellant’s Singapore patent P-No 42669 (“the Patent”). The appellant’s application (“the Interlocutory Application”) was refused by the High Court judge (“the Judge”), which led the appellant to file the present appeal against the Judge’s decision.

Background

The Patent pertains to a method for producing arachidonic acid (“ARA”) in triglyceride form for use in infant formula. One of the claims of the Patent is that “the oil [made using the patented method] comprises at least 50% ARA”¹ [emphasis in bold in original omitted; emphasis added in italics]. The respondent applied to have the Patent revoked on the ground that it lacked novelty or inventiveness, citing ten instances of prior art. Following a four-day hearing before the Tribunal from 9 to 12 February 2009, the Tribunal reserved judgment. On 3 November 2009, the Tribunal released its written decision revoking the Patent for lack of inventiveness (see Cargill International Trading Pte Ltd v Martek Biosciences Corporation [2009] SGIPOS 12 (“the Tribunal’s Judgment”)). The appellant, being dissatisfied with the decision of the Tribunal, appealed to the High Court by way of Originating Summons No 1418 of 2009 (“OS 1418/2009”) filed on 15 December 2009. It was in relation to the appeal in OS 1418/2009 (“the HC Appeal”) that, on 15 January 2010, the appellant filed Summons No 234 of 2010 (ie, the Interlocutory Application) requesting for leave to adduce further evidence pursuant to O 55 r 6(2) and/or O 87A r 13(2) of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) (“the ROC”). The evidence which the appellant wanted to adduce (“the Alleged Further Evidence”) related to a repeat of one of the experiments described in the prior art identified as “D4” (“the Experiment”). (D4 is the original description (in Japanese) of the Experiment, with “D4a” being the English translation thereof. For convenience, we will hereafter refer to this prior art as “D4a”.) On 12 March 2010, the Judge dismissed the Interlocutory Application (see Martek Biosciences Corp v Cargill International Trading Pte Ltd [2010] 3 SLR 927 (“the High Court GD”)).

At this juncture, we ought to explain that D4a is a patent in Japan relating to a skin cosmetic product which also uses ARA. The Experiment purports to set out how to make oil with all the features of the Patent’s claim. Particularly, it is claimed that the oil made from the Experiment comprises 72.9% ARA (for convenience, this claim will hereafter be referred to as “the D4a Claim”), which matches the claim in the Patent that the oil made using the patented method comprises at least 50% ARA. The Tribunal made certain findings on the invalidity of the Patent relying on, inter alia, D4a.

On 19 March 2010, the appellant’s solicitors wrote in to the Judge stating that the appellant had informed them, right after the hearing of the Interlocutory Application on 12 March 2010, that it had already conducted the Experiment and that the results showed that the oil produced from the Experiment had an ARA content of less than 50% and not 72.9% as stated in the D4a Claim. The appellant’s solicitors requested for leave to make further arguments in order to persuade the Judge to reconsider the Interlocutory Application. The Judge declined the request, culminating in the present appeal by the appellant.

The decision below

In the High Court GD, the Judge made the following findings: The nature of an appeal from a decision of the Registrar of Patents (“the Patents Registrar”) to the High Court under O 87A r 13 of the ROC was “akin to that [of an appeal] from the High Court to the Court of Appeal under O 57 [of the] ROC” (see the High Court GD at [69]). Accordingly, the test set out in Ladd v Marshall [1954] 1 WLR 1489 for determining whether leave should be granted for further evidence to be adduced in an appeal before the Court of Appeal (“the Ladd v Marshall test”) should apply to an appeal under O 87A r 13, “albeit with appropriate modifications if the nature of the appeal and the factual matrix of the case so require[d]” (see the High Court GD at [74]). The appellant should have either carried out the Experiment prior to the hearing before the Tribunal, or applied for leave from the Tribunal during the hearing to carry out the Experiment and adduce the results obtained as evidence in the hearing. At the very least, the appellant should have conducted the Experiment during the period between the last day of the hearing before the Tribunal (viz, 12 February 2009) and the date on which the Tribunal’s Judgment was released (viz, 3 November 2009). The appellant’s inaction between 12 February 2009 and 3 November 2009 showed “a lack of due diligence in securing all relevant evidence before the Tribunal” (see the High Court GD at [75]). The evidence of the Experiment which the appellant was seeking leave to adduce (ie, the Alleged Further Evidence) would not have any major or significant bearing on the HC Appeal as the Tribunal had also held the Patent to be invalid in view of prior art other than D4a (see the High Court GD at [78]–[79]). The appellant had not enclosed any report or results of the Experiment (which it claimed it had already carried out) and, hence, the respondent would not be in a position to verify the credibility of the alleged results (see the High Court GD at [78]).

The test to be applied for adducing further evidence under Order 87A rule 13(2) of the ROC Comparison/Analogy with other provisions of the ROC

The legal question which we have to decide in this appeal is: what is the test to be applied in deciding whether to grant leave for further evidence to be adduced pursuant to O 87A r 13(2) of the ROC in an appeal from the Patents Registrar to the High Court? As the Judge noted at [11] of the High Court GD, this question has hitherto never been decided in Singapore as the HC Appeal is the first case involving an application for leave to adduce further evidence in an appeal under O 87A r 13.

The applicable provision in the ROC is O 87A r 13(2), which provides that:

An appeal [under O 87A r 13] shall be by way of rehearing and the evidence used on appeal shall be the same as that used before the [Patents] Registrar and, except with the leave of the Court, no further evidence shall be given.

In the court below, both the parties as well as the Judge, in determining what test should be applied vis-à-vis O 87A r 13(2), drew analogies with other provisions in the ROC which similarly deal with the grant of leave to adduce further evidence in appeals (see [11] of the High Court GD). For ease of reference, tabulated below are the relevant rules in the ROC:

Relevant provision of the ROC	Nature of the appeal	Text of the relevant provision	Test to be applied for determining whether to grant leave for further evidence to be adduced
O 87A r 13(2)	Appeal from a decision of the Patents Registrar to the High Court	“An appeal shall be by way of rehearing and the evidence used on appeal shall be the same as that used before the [Patents] Registrar and, except with the leave of the Court, no further evidence shall be given.”	No previous decision on point in Singapore
O 87 r 4(2)	Appeal from a decision of the Registrar of Trade Marks (“the Trade Marks Registrar”) to the High Court	“An appeal shall be by way of rehearing and the evidence used on appeal shall be the same as that used before the [Trade Marks] Registrar and, except with the leave of the Court, no further evidence shall be given.”	No previous decision on point in Singapore
O 55 rr 2(1) and 6(2)	Appeal from a court (other than a subordinate court under the Subordinate Courts Act (Cap 321, 2007 Rev Ed)), tribunal or person to the High Court	O 55 r 2(1) “An appeal to which this Order applies shall be by way of rehearing …” O 55 r 6(2) “The Court shall have power to require further evidence on questions of fact, and the evidence may be given in such manner as the Court may direct …”	No previous decision on point in Singapore
O 57 r 13(2)	Appeal from the High Court to the Court of Appeal	“The Court of Appeal shall have power to receive further evidence on questions of fact, … but, in the case of an appeal from a judgment after [a] 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 [the] trial or hearing) shall be admitted except on special grounds.”	The applicable test is the Ladd v Marshall test as applied in Su Sh-Hsyu v Wee Yue Chew [[2007] 3 SLR(R) 673. However, in Lassiter Ann Masters v To Keng Lam (alias Toh Jeanette) [[2004] 2 SLR(R) 392 (“Lassiter Ann”), it was held that a judge in chambers hearing an appeal from a registrar’s decision exercised a confirmatory jurisdiction and not an appellate jurisdiction, and thus had the discretion to admit further evidence (see Lassiter Ann at [10]). It was not necessary for the judge to apply the Ladd v Marshall test strictly particularly the first condition thereof, viz, the condition that the further evidence sought to be adduced could not have been obtained with reasonable diligence for use at the trial (see Lassiter Ann at [24]). It was added in WBG Network (S) Pte Ltd v Sunny Daisy Ltd

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