Table of Content
1. court decision on patent infringement and relief. (Para 1 , 2 , 3 , 4)
2. court's power to order discovery post-trial. (Para 5)

[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 (encl 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] Enclosure 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 2012 (RC) to order discovery of documents in aid of the Account of Profits (Post-Trial Discovery Order)?; and

(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

(2) Account of Profits

- regarding the defendant's infringement of the plaintiffs' 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 [1995] 3 All ER 444, at pp 446-448:

"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 [1995] 3 All ER 437, [1995] 1 WLR 158). (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 (1880) 16 Ch D 93 at 98 and Fennessy v. Clark (1887) 37 Ch D 184)

The price at which this cost and time saving is achieved is that the plaintiff will not before judgment at the first stage on the issue of liability have the benefit by means of discovery or

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