THE OFFICIAL REPOSITORY OF
MALAYSIAN JUDGMENTS & RULINGS

[2018] MYCA 29 ENGLISH

Pan Asiatic Technologies Sdn Bhd and Another v Nuctech Company Limited and Another
Suit Number: Rayuan Sivil No. W-02(IPCV)(W)-223-02/2015 

Litigation & court procedure – Leave to adduce further evidence – The Rules of the Court of Appeal 1994 – The Rules of Court 2012 – Inherent jurisdiction of the Court

JUDGMENT

Introduction

[1] On 21 October 2016, we allowed the Appellants’ application in Enclosure 19(a) for leave to adduce further evidence pursuant to Rule 7 of the Rules of the Court of Appeal 1994 (“COAR”), Rule 76 of the same Rules read together with Order 92 Rule 4 of the Rules of Court 2012 and/or pursuant to the inherent jurisdiction of the Court.

[2] By Enclosure 19(a) the Appellants sought to adduce the following:

i. the document dated 25.7.2016 issued by the Malaysian Intellectual Property Office (MyIPO) (Re: Exhibit ‘GCL-2’ of the Affidavit in Support);

ii. the fact that the 1st Respondent failed to disclose to MyIPO that the priority claim in the PCT application was withdrawn by the 1st Respondent;

iii. the fact that the 1st Respondent failed to disclose that the China priority application was subsequently narrowed by 1st Respondent;

iv. the fact that the 1st Respondent failed to disclose to MyIPO at the time when the application for the grant of the relevant patent were being considered by MyIPO.

[3] Enclosure 19(a) is supported by an Affidavit affirmed by the 2nd Appellant. In the aforesaid Affidavit it is averred that the suppression of the material evidence and information were only discovered after the conclusion of the High Court suits. It is further averred in the Affidavit that there was no possibility for the Appellants to have discovered that the 1st Respondent had withheld the material evidence and information during the conduct of the trial in the High Court.

[4] It is the contention of the Appellants that the document entitled “Perakuan Mengenai Maklumat Paten No.: MY-142862” issued on 25.7.2016 was only received by the Appellants sometime in July 2016. The failure by the 1st Respondent to provide full disclosure to MyIPO constitutes a breach of the duty of good faith imposed on the 1st Respondent and that the material fact was also not disclosed to the High Court Judge by the 1st Respondent. The letter would have a significant impact on the granting of 862 Patent and the decision of the High Court Judge.

Brief Background

[5] There were two suits in the High Court that is 22IP-43-11/2013 and 22IP-24-05/2014. The Appellants and the 2nd Respondent challenged the validity of the 1st Respondent’s patent MY-142862-A (“the 862 Patent”). The 2nd Respondent claimed that the Appellants and the 2nd Respondent had infringed the 862 Patent. The High Court allowed the 1st Respondent’s infringement claim against the Appellants and the 2nd Respondent. The learned High Court Judge further decided that the 862 Patent should not be invalidated as the cited prior arts were irrelevant.

Decision

[6] Section 69(2) Court of Judicature Act 1964 (“CJA”) provides in the case of interlocutory applications and in respect of matters which had occurred after the date of decision no leave is required to adduce further evidence. Section 69(3) CJA however, provides as follows:

“(3) Upon appeals from a judgment, after trial or hearing of any cause or matter upon the merits, the further evidence, save as to matters subsequent as aforesaid, shall be admitted on special grounds only, and not without leave of the Court of Appeal.”

[7] Rule 7(3) and Rule 7(3A) COAR spelt out the procedural rules dealing with admission of further evidence at the appeal stage. Rule 7(3A) COAR reads as follows:

“(3A) At the hearing of the appeal further evidence shall not be admitted unless the court is satisfied that:

(a) At the hearing before the High Court of the subordinate court, as the case may be, the new evidence was not available to the party seeking to use it, or that reasonable diligence would not have made it so available; and

(b) The new evidence, if true, would have had or would have been likely to have had a determining influence upon the decision of the High Court or the Subordinate Court, as the case may be."

[8] This Court in Mutual Way Development & Construction Sdn Bhd. Saiseki (M) Sdn Bhd. [2008] 2 CLJ 232 held that leave to admit new evidence may only be allowed if the application had satisfied the stringent requirement as laid down in Ladd v Marshall [1954] 3 All ER 745 and applied by the Federal Court in Lau Foo Sun v Government of Malaysia [1970] 1 LNS 56; [1970] 2 MLJ 70, and as codified under Rule 7(3A) COAR. The three conditions that must be fulfilled to justify reception of further evidence at the appeal stage are as follows:

"(1) It must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial;

(2) The evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive;

(3) The evidence must be such as presumably to be believed, or in other words, it must be apparently creditable, although it need not be incontrovertible.”

[9] In this application before us the Appellants bears the burden of satisfying the court of the following:

(i) at the hearing before the High Court, the new evidence was not available to the Appellants or that reasonable diligence would not have made it so available; and

(ii) the new evidence, if true, would have or would have been likely to have had a determining influence upon the decision of the High Court.

[10] This application was understandably objected to by Counsel for the 1st Respondent who submitted that the said document sought to be adduced was obtained only after the judgment. Furthermore, the same document formed part of the Common Bundle of Documents exchanged for the purposes of the trial but was not raised or relied upon by the Appellants. The information in the said document could be gleaned in the other documents available in the Common Bundle of Documents. Learned counsel for the 1st Respondent further submitted that the document sought to be adduced raises no new or fresh evidence but merely confirms what was at all times readily available.

[11] We are of the view that the objection raised by the learned counsel of the 1st Respondent was as to the relevance and weight, that ought to be attached to the document by the appellate court, should it become material in the consideration of the appeal if at all. We are however of the considered view that the 1st Respondent would still be entitled to put forward their arguments on those aspects relating to the document and would not be precluded from raising any issue as to relevance of the document during the course of the submissions at the hearing of the appeal proper, should the document or its contents be referred to by the Appellants.

[12] Therefore based on the reasons mentioned above we allowed the application in Enclosure 19(a) prayer 1 and 2 with costs in the cause.

Sgd

HASNAH BINTI DATO’ MOHAMMED HASHIM
Judge
Court of Appeal, Malaysia
Putrajaya

Date: 22nd January 2018

COUNSEL

For the Appellants: Datuk Seri Gopal Sri Ram, Dato’ Arief Emran bin Arifin, Chong Tze Lin, David Yii, Messer Wong & Partners Level 21, The Gardens South Tower, Mid Valley City, Lingkaran Syed Putra, Kuala Lumpur 59200

For the 1st Respondent: Ms Kuek Pei Yee, Joshua Teoh Beni Chris, Messer Skrine & Co, Unit No.50-8-1, Tingkat 8, Wisma UOA Damansara, 50 Jalan Dungun, Damansara Heights, 50490 Kuala Lumpur

Legislation referred to:

Court of Judicature Act 1964, Sections 69(2), 69(3)

Rules of Court 2012, Order 92 Rule 4

Rules of the Court of Appeal 1994, Rules 7, 7(3), 7(3A), 76

Judgments referred to:

Ladd v Marshall [1954] 3 All ER 745

Lau Foo Sun v Government of Malaysia [1970] 1 LNS 56; [1970] 2 MLJ 70

Mutual Way Development & Construction Sdn Bhd. v Saiseki (M) Sdn Bhd. [2008] 2 CLJ 232

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