Bean Innovations Pte Ltd and Another v Flexon (Pte) Ltd

• Jurisdiction: Singapore
• Court: Court of Three Judges (Singapore)
• Judge: Chao Hick Tin JA
• Judgment Date: 26 May 2001
• Neutral Citation: [2001] SGCA 42
• Citation: [2001] SGCA 42
• Defendant Counsel: Jupiter Kong and Paul Teo (Drew & Napier)
• Date: 26 May 2001
• Published date: 19 September 2003
• Plaintiff Counsel: Wong Siew Hong and Ivy Tan (Infinitus Law Corporation)
• Docket Number: Civil Appeal No 78 of 2000
• Subject Matter: Proprietor and exclusive licensees of patent alleging infringement,Infringement,s 77(4) Patents Act (Cap 221, 1995 Ed),Groundless threat,s 77 Patents Act (Cap 221, 1995 Ed),Product patent,Patents and Inventions,Respondents making and supplying product,Respondents claiming groundless threat,Whether all essential integers of claim present in respondents' product,'Making or importing a product for disposal',Whether claim ought to be given wholly purposive construction,Construction of claim,Principles of construction,Whether threats fall within exemption relating to certain types of infringing acts,Words and Phrases,Whether infringement established,Exclusive licensees of patent threatening legal proceedings for infringement

JUDGMENT:

Cur Vult Adv

The facts

1. This appeal concerns a Singapore Patent No. 52288 for a device described as a mail box assembly with lockable delivery flaps. The patent was first registered in the United Kingdom as No GB 2 289 500. It was subsequently registered in Singapore and the certificate of registration was issued on 16 November 1998. The mailbox assembly was designed by the second appellant, Tan Mui Teck (Mr Tan). He is therefore the proprietor of the patent, and the first appellant, Bean Innovations Pte Ltd (Bean Innovations), in which Mr Tan is the managing director, is the exclusive licensee of the patent in Singapore. The mailbox assembly as designed by Mr Tan has a device of central locking system for individual mailboxes, which serves to prevent junk mails from being delivered into the individual mailboxes. For convenience, we shall refer to Mr Tans patent as the appellants patent, and the device or invention designed by him as the appellants device or invention.

2. The appellants device or invention has the following main features. Each of the mail box in the assembly has a delivery flap, called the postmans trap door, through which the mails are delivered, and a collection door for collecting the mails. The top edge of each postmans trap door is pivotally connected to a bar and the lower outer edge abuts against a portion of a stopper, called the trap door stopper. This assembly of mailboxes has a device of a central locking system for individual mailboxes, and the device operates in this way. In the interior of the mailboxes, there is a matrix of orthogonal bars comprising: (i) a universal biasing bar at the top running along the width of the assembly; (ii) a pair of vertical supporting bars, one on each side, connected to both ends of the biasing bar at the top; and (iii) a plurality of horizontal bars, called the anti-junk mail bars, which are positioned behind the postmans trap doors extending between the two vertical support bars and connected to them. Thus, all the bars within this matrix are connected. This matrix of bars is movable vertically. When the matrix is lowered, the horizontal anti-junk mail bars block the postmans trap doors, thus preventing them from being opened, and when the matrix is raised the anti-junk mail bars in turn are raised, thus allowing the postmans trap doors to be opened and mails to be delivered into the mailboxes. This movement of the matrix is operated by a master lock located at the upper front panel of the mailbox assembly but just below the biasing bar so that when the lock is turned or unlocked, it raises the matrix of bars within the mailbox assembly, and when it is locked, it lowers the matrix. Such device serves to prevent junk mails from being delivered into the individual mailboxes.

3. The respondents, Flexon Pte Ltd (Flexon), were incorporated in 1975, and have since been involved in the manufacture of fabricated metal products. They have designed a mail box assembly, which also has a device of central locking system for individual mailboxes, and they call it Master Door Letter Box with Aperture Central Locking. We shall refer to this invention of Flexon as the Flexon device or invention.

4. The Flexon invention has the following main features. It is an assembly of mailboxes and each mailbox has a delivery flap through which the mails are delivered, and a collection door immediately below the flap. The lower edge of the flap abuts against the upper edge of the collection door, which acts as a stopper for the flap. The mailbox central locking system operates in this way. In the interior of the mailboxes are the stopper screws at one side which are located immediately behind the flaps but do not extend across the flaps. They are screwed onto a vertical bar at the side The vertical side bar is connected to a lever at the top and this lever raises and lowers the side bar vertically. When the side bar is lowered, the stopper screws are in turn lowered and block the flaps, thus preventing them from being opened. When the side bar is raised, the stopper screws in turn are raised, thus allowing the flaps to be opened. The movement of the side bar vertically is operated by a master lock located at the upper front panel but slotted into the lever inside. When the lock is in a locked position, it lowers the vertical bar which in turn lowers the stopper screws to a position just behind the flap thus preventing the flaps from being opened. When the master lock is turned and unlocked, the lever raises the side bar, which in turn raises the stopper screws, thus allowing the flaps to be opened and mails to be delivered. This device is also designed to prevent junk mails from being delivered into the mailboxes.

5. Admittedly, there is a demand for mailbox assemblies with a central locking system for individual mailboxes. Such mailboxes have postmans doors which are closed and can be opened manually by using a central locking key when the mail is delivered. After delivery, the mailboxes are centrally locked by a device which keep the postmans doors closed, thus preventing junk mails from being inserted into the postmans slots in the mailboxes. Such mailboxes are now commonly seen in condominiums and Housing Development Board (HDB) housing estates. The market for such a product appears to be huge.

6. In September 1999 or thereabouts, Mr Tan discovered that Flexon had supplied and installed their mailboxes with lockable delivery flaps in a couple of HDB housing estates. Following such discovery, on 28 September 1999, Bean Innovations, through their solicitors, sent a letter to Flexon, claiming that they were the exclusive licensees of the Singapore patent and that Flexon had infringed their patent, and demanding, inter alia, that Flexon immediately cease to manufacture and supply such mailboxes which infringed their patent, and threatening to take legal action against Flexon, should their demands be not complied with.

7. In response, Flexon through their solicitors on 15 October 1999 wrote to the solicitors for Bean Innovations, denying any infringement and demanding that the latter retract and withdraw their allegations. There was a further exchange of correspondence between the two firms of solicitors. Following legal advice, Flexon instituted legal proceedings against Bean Innovations and Mr Tan (jointly referred to as the appellants) under s 77 of the Patents Act, seeking a declaration to the effect that the appellants threats of proceedings for infringement were unjustifiable, an injunction against further threats, and damages. In their statement of claim Flexon admitted to having made prototypes of, manufactured, supplied and sold mailboxes with lockable delivery flaps to a certain construction company and certain HDB housing estates, but they denied that their mailboxes infringed the patent. In the alternative, they pleaded that they were not aware of the existence of the patent and had no reasonable grounds for supposing its existence, and invoked the defence under s 69(1) Patents Act. The appellants in their defence disputed the validity of Flexons claim and pleaded that Flexon were not entitled to bring proceedings against the appellants on the ground that the alleged threats, if any, fell within the scope of s 77(4) of the Patents Act. The appellants counter-claimed against Flexon damages for infringement of the patent and an injunction.

8. The case was tried before Rubin J, and at the conclusion he held that the threats made by the appellants were actionable under s 77(1) and (2) of the Patents Act, and that Flexon were the aggrieved party and were entitled to bring the action. He further held that there was no infringement by Flexon of the patent, and in consequence he...