The court has discretionary power to grant Post-Trial Discovery Orders to facilitate informed remedial choices while balancing confidentiality protections through Protective Orders.

Wong Kian Kheong J:

JUDGMENT

(Court enclosure no. 176)

A. Introduction

[1]In this case, after a trial, the following decision (HC’s Decision) is made:

(1)the suit by the first plaintiff company (1st Plaintiff) that the defendant company (Defendant) has infringed two patents nos. MY 144898-A and MY 145004-A registered in favour of the 1st Plaintiff under the Patents Act 1983 is allowed with costs (Patent Infringement); and

(2)the suit filed by the second plaintiff company against the Defendant is dismissed with costs.

- please see the High Court’s Decision at [2018] MLU 1840.

[2]The Defendant has appealed to the Court of Appeal against the High Court’s Decision (Defendant’s Appeal). At the time of the preparation of this judgment, the Defendant’s Appeal is still pending.

[3]Regarding relief for Patent Infringement, the 1st Plaintiff has elected to take an account of all the profits made by the Defendant from the Patent Infringement (Account of Profits).

[4]For the purpose of Account of Profits, the 1st Plaintiff has filed an application (Enc. 176) for the discovery of, among others, the following documents by the Defendant:

(1)contract documents between the Defendant and Petronas Carigali Sdn. Bhd. (Petronas) for the “Mobile Offshore Production Unit” of “Sepat Project” (Project);

(2)documents between the Defendant and its sub-contractors, suppliers and consultants for the Project; and

(3)the Defendant’s income statements and transfer pricing documents regarding the Project.

B. Issues

[5]Enc. 176 raises the following two questions:

(1)after deciding on the liability of parties after a trial, does the court have power under O 24 rr 3(1) and 7(1) of the Rules of Court 2012 (RC)

(2)if the court can grant a Post-Trial Discovery Order in aid of the Account of Profits, whether the court has the power to grant a “Protective Order” or “Sealing Order” to protect confidential information which may be disclosed pursuant to the Post-Trial Discovery Order. I am not able to find a previous Malaysian case which has decided on this issue.

C. Does court have power to grant Post-Trial Discovery Order?

[6]My research has revealed that in the United Kingdom (UK), when the court has decided that a defendant is liable for an infringement of the plaintiff’s Intellectual Property (IP) rights, the plaintiff is entitled to a discovery of the defendant’s documents to make an “informed decision” on whether the plaintiff elects to -

(1) claim for damages from the defendant (Assessment of Damages); or

(b) Account of Profits

- regarding the defendant’s infringement of the plaintiff’s IP rights.

I refer to the following judgment of Lightman J in UK’s High Court case of Island Records Ltd v Tring International Plc

“With a view to the saving of costs, the practice has developed, in particular in intellectual property cases, when this is practicable, to have a ‘split trial’. The action is divided into two stages. The first stage is the trial at which the issue is limited to that of liability, ie whether the plaintiff’s rights have been infringed. The second stage, which is contingent upon liability being established at the first stage, is concerned with the question of assessment of damages and calculation of profits. In this way, the costs of exploring the issue of damages and profits are put off until it is clear that the defendant is liable and the issue really arises and requires determination. As a concomitant with this practice, there has likewise developed the practice of limiting discovery at the first stage to documents relevant to the issue of liability and excluding documents relevant only to the second stage. In this way the burden of discovery at the first stage is reduced, and the invasion of confidence necessarily involved in discovery is postponed and (if liability is not established) entirely obviated (see Baldock v Addison (It may be noted that this practice was in appropriate cases adopted by the courts of equity in the nineteenth century: see Benbow v Low (18