1. Billion Prima Sdn Bhd 2. Pan Asiatic Technologies Sdn Bhd 1. Nuctech Company Limited 2. Tsinghua University

1. Billion Prima Sdn Bhd 2. Pan Asiatic Technologies Sdn Bhd 1. Nuctech Company Limited 2. Tsinghua University

Post-trial discovery was necessary to enable the defendants to make an informed election between assessment of damages and an account of profits; plaintiffs failed to substantiate public interest immunity as to the financial and commercial documents sought; confidentiality, if any, can be managed by protective measures; accordingly limited discovery (number of machines, revenue received/receivable, costs or estimated costs related to the BBScan system) was ordered with fixed deadlines and the defendants ordered to elect by a specified date.

Citation
22IP-50-09/2015 (Mahkamah Tinggi)
Parties
Plaintiff (original Action); Defendant (counterclaim): BILLION PRIMA SDN BHD; Plaintiff (original Action); Defendant (counterclaim): PAN ASIATIC TECHNOLOGIES SDN BHD; Defendant (original Action); Plaintiff (counterclaim): NUCTECH COMPANY LIMITED; Defendant (original Action); Plaintiff (counterclaim): TSINGHUA UNIVERSITY; Defendant (counterclaim): DIRECTOR GENERAL OF CUSTOMS AND EXCISE; Defendant (counterclaim): THE GOVERNMENT OF MALAYSIA
Court
High Court
Jurisdiction
Malaysia
Judgment Date
21 October 2019
Case Number
22IP-50-09/2015 (Mahkamah Tinggi)
Procedural Posture
Patent Infringement; Declaration Under Patent Act / Post Trial Split Trial: Second Stage (assessment of Damages or Account of Profits)
Outcome
Post-trial discovery application allowed in part; specific categories of documents ordered to be disclosed and timetable imposed; defendants to elect remedy by deadline
Legal Topics
Patent Infringement, Account of Profits, Assessment of Damages, Post Trial Discovery, Protective Order, Public Interest Immunity
Source Language
Malay/English
Intellectual Property Civil Procedure Evidence Public Law (public Interest Immunity) Patent Infringement Account of Profits Assessment of Damages Post Trial Discovery +2 more

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Parties

BILLION PRIMA SDN BHD

Plaintiff (original Action); Defendant (counterclaim)

PAN ASIATIC TECHNOLOGIES SDN BHD

Plaintiff (original Action); Defendant (counterclaim)

NUCTECH COMPANY LIMITED

Defendant (original Action); Plaintiff (counterclaim)

TSINGHUA UNIVERSITY

Defendant (original Action); Plaintiff (counterclaim)

DIRECTOR GENERAL OF CUSTOMS AND EXCISE

Defendant (counterclaim)

THE GOVERNMENT OF MALAYSIA

Defendant (counterclaim)

Procedural Posture

Patent Infringement; Declaration Under Patent Act / Post Trial Split Trial: Second Stage (assessment of Damages or Account of Profits)

Legal Issues

  1. 1 Whether post-trial discovery may be ordered before the successful party elects between damages and an account of profits
  2. 2 Whether the documents sought are necessary for a fair election or for saving costs
  3. 3 Whether the plaintiffs established public interest immunity to resist disclosure

Ratio Decidendi

Post-trial discovery was necessary to enable the defendants to make an informed election between assessment of damages and an account of profits; plaintiffs failed to substantiate public interest immunity as to the financial and commercial documents sought; confidentiality, if any, can be managed by protective measures; accordingly limited discovery (number of machines, revenue received/receivable, costs or estimated costs related to the BBScan system) was ordered with fixed deadlines and the defendants ordered to elect by a specified date.

Court Disposition

Post-trial discovery application allowed in part; specific categories of documents ordered to be disclosed and timetable imposed; defendants to elect remedy by deadline

Orders

  • Plaintiffs and 3rd and 4th defendants in the counterclaim to file and serve by 9 December 2019 documents and information relating to: (i) total number of BBScan Portal X-Ray Screening Machines (and equivalent machines by other names); (ii) revenue received or receivable in connection with those machines; (iii) costs...
  • Defendants to make an election between assessment of damages and an account of profits by 8 January 2020