Syntroleum Corp v Neste Oil Singapore Pte Ltd

• Jurisdiction: Singapore
• Judge: Yeong Zee Kin SAR
• Judgment Date: 30 September 2014
• Neutral Citation: [2014] SGHCR 18
• Court: High Court (Singapore)
• Hearing Date: 25 July 2014,14 August 2014,30 September 2014,06 August 2014
• Docket Number: Suit No 120 & 510 of 2013, Summons No 537 & 538 of 2014
• Plaintiff Counsel: Vignesh Vaerhn with Keefe-Martin Han Wang Zhou (Allen & Gledhill LLP)
• Defendant Counsel: Ms Indulekshmi Rajeswari with Koh Teck Hock Gerald (Drew & Napier LLC)
• Subject Matter: Civil Procedure,Discovery & Inspection,Disclosure of inventor's notes,Disclosure of experimentation results,Order 87A,Rule 6,Notice of experiment
• Published date: 30 September 2014

Yeong Zee Kin SAR:

This is a set of applications for the disclosure of three categories of documents. The first category is inventor’s notes in relation to the patents in issue, namely Singapore patents numbered 172045 and 169053 (“the 045 patent” and “the 053 patent” respectively, or “the Plaintiff’s Patents” collectively). The next two categories are the experimentation results obtained by the plaintiff in tests that it performed on the defendant’s product and on the output obtained from following the instructions in US Patent No 5,705,722 (“the US 722 patent”).

Parties came before me on two occasions – 25 July and 6 August 2014 – for submissions. At the hearing of 6 August 2014, the plaintiff tendered amended prayers for these applications (and also withdrew the last prayer in Summons No 538 of 2014). At the hearing on 14 August 2014, I gave my decision to dismiss the applications and also ordered that the time for any appeal shall commence from the date of these detailed grounds of decision.

Defendant’s application

The defendant filed two summons applications, one each into the two related suits. Summons No 537 of 2014 was filed in Suit 120 of 2013; and Summons No 538 of 2014 was filed in Suit 510 of 2013. The issues in both suits are substantially similar, differing only in that there are two patents in issue. The categories of documents sought in both summonses are also substantially similar. Apart from the complexity arising from the subject matter involved, these are straight forward claims by the plaintiff that the defendant had infringed its petrochemical patents. The defendant denies infringement and counterclaims by alleging that the patents are invalid by reason, inter alia, of the defendant’s prior sale of its NExBTL product and for insufficient disclosure.

The defendant seeks the disclosure of a category of documents that can be referred to in short hand as inventor’s notes. The initial scope of discovery was for all invention filings, internal reviews of prior art and correspondence between the inventors in relation to the Plaintiff’s Patents. In the amended prayers tendered at the second hearing, the period for disclosure was limited to a four-year period commencing on 10 December 2006 for Summons No 537 of 2014 and 21 August 2006 for Summons No 538 of 2014. Disclosure of this category was also restricted to claims 22 to 27 of the 045 patent and claim 1 of the 053 patent. The request for disclosure was further limited to the issue of novelty and inventive steps.

The second category of documents sought by the defendant are the plaintiff’s experimentation results obtained from tests conducted on the defendant’s NExBTL products. These are products that the defendant had been selling before the priority date of the Plaintiff’s Patents.

The third category of documents sought by the defendant is similar to the second, except that this relates to experimentation results obtained by the plaintiff in its tests conducted in accordance to the instructions set forth in the US 722 patent. These are restricted to experiments conducted in 2 years, namely 2006 and 2012. For Summons No 537 of 2014, the amended prayer restricts the request to the experimentation results relating to analysis of the weight percentage of even-carbon number paraffins contained in the output from the process set forth in the US 722 patent. For Summons No 538 of 2014, the amended prayer restricts the request to the experimentation results that anticipate the combination or incorporation of features of Claim 1(d) and (e) of the 053 patent with the process described in the US 722 patent.

The defendant’s submissions for the disclosure of inventor’s notes and experimentation results are premised on authorities from Howaldt Ltd v Condrup Ltd (1936) 54 RPC 121, Lightning Fastener v Colonial Fastener (1934) 51 RPC 349, Halcon International Inc v Shell Transport (Discovery No 2) [1979] RPC 459 to SKM v Wagner Spraytech [1982] RPC 497. The defendant argues that inventor’s notes are relevant as evidence of what the state of the art was at the time of invention and whether the steps taken by the inventor was obvious to the ordinary man skilled in the art. The defendant seeks to adduce such inventor’s notes as secondary evidence. The defendant also seeks to admit inventor’s notes as evidence of his subjective views on the authority of Vickers plc v Horsell Graphic Industries Ltd [1988] RPC 421, particularly where he had expressed inconsistent views during the prosecution of his patent in different jurisdictions. The defendant’s main submission for the disclosure of the experimentation results obtained by the plaintiff from tests conducted on the defendant’s NExBTL product and the US 722 patent is that these will go to show that the plaintiff’s patents were anticipated by the prior art.

Plaintiff’s objections

The plaintiff takes objections to the disclosure of inventor’s notes and experimentation results on the ground that reliance should be placed on more recent authorities in Glaverbel SA v British Coal (No 2) [1993] RPC 90, Mölnlycke AB v Procter & Gamble Ltd [1994] RPC 49 and Nichia Corp v Argos Ltd [2007] FSR 38. The plaintiff argues that with the adoption of the objective standards in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59, the subjective knowledge and intentions of inventors are no longer relevant and should therefore be excluded. During oral submissions, counsel for plaintiff sought to persuade me that this exclusion should be complete and urged that I follow the dissenting opinion of Jacob LJ in Nichia Corp.

The plaintiff also raised objections based on Order 87A, rule 5(2)(b), which limits disclosure of “documents relating to any ground on which the validity of a patent is put in issue” to a period of four years on either side of the earliest claimed priority date. It should be noted that at the adjourned hearing on 6 August 2014, the defendant had amended its prayers in relation to the disclosure of inventor’s notes to confine its request within these limits.

The plaintiff also objects to the disclosure of inventor’s notes and experimentation results on the ground that these were private documents that do not form part of the publicly available state of the art. The plaintiff argued that subjective intentions of the inventor and state of his subjective knowledge no longer have any relevance post-Windsurfing. For these reasons, the plaintiff submits that they are irrelevant to establishing what the state of the art was at the time of the invention as the court is constrained to make this determination based on documents that are publicly available. Additionally, the plaintiff’s position in relation to the experimentation results obtained from tests conducted on the defendant’s NExBTL product is that they had never carried out any such tests and therefore, there is nothing to disclose.

Inventor’s notes

I turn first to consider the request for discovery of inventor’s notes. The initially overly broad request was, at the penultimate hearing, narrowed significantly. However, I nevertheless dismissed the application and give my reasons for doing so in this section. Before delving into the case law, I should state that narrowing of the scope of the request could not have saved the application for the reason that the revised scope was significantly different from that which was initially requested. Parties had spent a considerable amount of time preparing for the hearing of these applications and filed a number of affidavits on the basis of the scope of discovery sought in the original request. The issues that were canvassed through the affidavits and during submissions in an application for the disclosure of all inventor’s notes are significantly different to those that would have been canvassed when disclosure is confined to a two-year period commencing from 10 December 2006, restricted to the issues of novelty and inventive steps and further limited to specific claims in the Plaintiff’s Patents. Had the request been made with this degree of specificity, the plaintiff’s position would have been very different and the arguments that were put forward during the hearing of the application would have also taken a very different path. As it were, most of the affidavits and submissions focused on the issue of whether inventor’s notes ought to be discoverable, instead of dwelling on the specific issues of novelty and inventive step that the inventor’s notes would have been used to prove or disprove. These particulars only emerged when the amended prayers were tendered at the second hearing. It was therefore unsurprising that the plaintiff’s counsel had intimated that if the application were to proceed on the amended prayers, fresh instructions would have to be taken. In the end, I thought that it is better for the application to be dismissed and for the defendant to make a separate application, after taking further instructions and considering the issues that I will now traverse.

Whether inventor’s notes are discoverable

Plaintiff’s counsel sought to persuade me that, on principle and as a general rule, inventor’s notes are not discoverable. The thrust of the arguments is that since the adoption of the objective standard for assessing obviousness and inventive step, the analysis should be conducted in reliance on publicly available documents. Inventor’s notes are not publicly available and thus not accessible to the hypothetical reasonably skilled person in the art. Reliance was place on Glaverbel SA v British Coal Corp (No 2) [1993] RPC 90 for the proposition that inventor’s notes are irrelevant and should therefore not be discoverable. Plaintiff’s counsel also argued that a distinction should be drawn between cases allowing the disclosure of inventor’s notes that were decided before the adoption of the objective standard in the decision in ...