Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting (trading as Soon Heng Digitax)

• Jurisdiction: Singapore
• Judge: Chan Seng Onn J
• Judgment Date: 21 February 2011
• Neutral Citation: [2011] SGHC 36
• Date: 21 February 2011
• Docket Number: Suit No 779 of 2009
• Published date: 04 April 2011
• Plaintiff Counsel: Ravindran s/o Muthucumarasamy, Heng Su Lin @ Xing Suling and Justin Blaze George (Ravindran Associates)
• Hearing Date: 23 August 2010,19 August 2010,17 August 2010,20 August 2010,04 October 2010,18 August 2010,16 August 2010
• Defendant Counsel: Tan Kim Chiang (instructed) and Yip Keng Fook Victor (Angela Wong & Co)
• Court: High Court (Singapore)
• Subject Matter: Patents and Inventions

Chan Seng Onn J: Introduction

This case illustrates how the “infringement-validity dichotomy” provides an incentive to patentees to make claims for no more than monopolies over more than what was actually invented. I find the following passage in Bently and Sherman, Intellectual Property Law (Oxford University Press, 3rd ed, 2009) (“Bently and Sherman”) useful in explaining this dichotomy (at p 360):

As the scope of the monopoly is determined by what is claimed in the patent, the applicants may be tempted to claim more than they perhaps ought. At the same time, however, applicants need to be mindful of the fact that, if they draft claims too broadly, this increases the chance of the patent being declared invalid (primarily for lack of novelty). As matters of infringement and validity are heard in the same tribunal, the infringement-validity dichotomy helps to ensure that the scope of the patent monopoly corresponds to what was actually invented.

Where the scope of a claimed invention fails to correspond to what was actually invented, in that the patent claim is far broader than that which has actually been invented, the patentee runs the risk of its patent being the subject of invalidation proceedings. In invalidation proceedings, courts should be mindful of attempts on the part of patentees to restrict the width of their patent claims by focusing the court’s attention on the actual invented product after realising that their patent claims had been drafted far too broadly. Background facts

The plaintiff, Dien Ghin Electronics (S) Pte Ltd, brings this suit against the defendant, Mr Khek Tai Ting (trading as Soon Heng Digitax) for the revocation of a registered patent granted to the defendant, Singapore Patent No 89534, and a declaration that the plaintiff has not infringed the defendant’s patent. The defendant counterclaims against the plaintiff for the infringement of the defendant’s patent.

Between 1968 to sometime in 1974, the defendant was employed as an employee in a company involved in the “taxi business”. Sometime in 1974, the defendant worked for his brother-in-law in Soon Heng Taximeters, which manufactured taximeters. The defendant avers that prior to 2000, taxi drivers had to manually control the taxi rooftop displays and that sometime in the year of 2000, he had thought of the idea of displaying the hiring status of a taxi by way of a display panel mounted on top of a taxi which was controllable from within the taxi. He avers that he had also thought of the idea of using a panel comprising many multicoloured Light Emitting Diodes (“LEDs”) mounted on the rooftop of taxis to give a distinct display signal which is visible both in the day and at night. The defendant was of the view that a panel of multicoloured LEDs would allow passengers to see the messages displayed, in relation to whether the taxi was available for hire, with much greater clarity. The defendant decided to patent his invention. On 1 September 2000, the defendant set up his own sole proprietorship, known as Soon Heng Digitax. On 4 October 2000, the defendant, with the help of patent agents, submitted an application for patent registration. On 30 April 2004, Singapore Patent No 89534 was granted to the defendant. The patent relates to a “transportation status display system”.

Sometime in 2003, the plaintiff began manufacturing taximeters, and has since then been manufacturing taximeters for sale to three taxi fleet operators, namely, Premier Taxis, SMART Taxis and Prime Taxis. The plaintiff avers that it was only sometime in 2007 that the plaintiff also imported and supplied systems for displaying messages on panels of multicoloured LEDs mounted on the rooftop of taxis to the same three taxi fleet operators. The defendant was unable to controvert this averment, or state when he had begun to notice that the plaintiff’s product had been marketed in Singapore.

However, as early as 16 January 2006, the defendant’s patent agent, Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd sent a letter to the plaintiff on the defendant’s behalf stating that:

...

Our client understands that your company makes or imports for disposal a product, which is highly likely to fall within the scope of the inventions claimed in the [defendant’s patent].

Our client requests that you refrain from further making or importing for disposal of the [p]roducts within Singapore and, within 10 days from the date of this letter, undertake that in future you will not make or import for disposal any product falling within the claims of the [p]atent in Singapore.

On 28 November 2008, the plaintiff’s solicitors wrote to the defendant’s patent agent, stating that:

...

Among other things, our client’s products do not comprise of “a communication means for communicating information regarding the status of the transportation means between the logic controller and the remote information source; wherein the remote information source is a central center [sic] for monitoring and controlling the movement of transportation means” in Claim 1 of the [p]atent.

Our client therefore seeks acknowledgement from your clients that the manufacture, disposal or offer to dispose of, importation, use or keeping of any of its products does not infringe any claim or claims of the Patent. Our client requires this acknowledgement by close of business on Wednesday, 3 December 2008, failing which it shall apply to the High Court for a declaration to this effect.

In that event, our client also reserves its right to apply to invalidate and/or revoke the Patent.

[emphasis in original]

When the plaintiff’s solicitors received no response to this letter, the plaintiff’s solicitors wrote a further letter to the defendant’s patent agent on 13 March 2009, requesting for a response by 17 March 2009. The defendant’s patent agent then responded on 19 March 2009, requesting that correspondence relating to contentious matters be directed to Messrs Jacob Mansur & Pillai, the defendant’s solicitors, which the plaintiff wrote to on 19 March 2009. Several letters were exchanged between the plaintiff’s solicitors and the defendant’s solicitors thereafter. The plaintiff, failing to obtain the confirmation which it had sought in these letters, brought the present suit for first, a declaration that it had not infringed the defendant’s patent, and secondly, an order that the defendant’s patent be revoked. The patent claims and description

The defendant’s patent specification contains a brief summary of the problem which the defendant’s patented invention was intended to solve, and it reads as follows:

Presently, passengers who wish to hail taxis from a distance and in daylight are not able to tell whether the taxis have been hired or are available for hire until the taxis approach or become closer to the passengers. This situation, however, does not pose a problem for passengers at night since the passengers can determine whether the taxis are available for hire by looking at, for example, the lighted display panels mounted on the rooftops of the taxis. The rooftop lighted display panels are usually visible to the passengers from a distance in the dark, as opposed to being less visible in daylight due to poorer contrast conditions. Moreover, the rooftop lighted display panels are usually changed manually for displaying different signs for reflecting the different hiring status of the taxis. Therefore, taxi drivers are usually required to carry different exchangeable rooftop display panels in the taxis and to stop driving, therefore halting operations, when exchanging the rooftop display panels.

Hence, there is a need for a system for displaying information indicating the hiring status of a taxi, or the status of other similar transportation means, in which such displayed information is visible from a distance both in daylight and in the dark, and variable according to the hiring status of the taxi.

[emphasis added]

The defendant in its patent claims a monopoly in relation to both a product and a process which goes beyond solving the existing problem of poor visibility of rooftop display signs as stated in the defendant’s patented invention. Two independent claims of the defendant’s patent specification read as follows: 1. A system for displaying information in relation to the status of the transportation means, comprising:

a multi-colored [sic] display mountable on a transportation means for displaying multi-colored[sic] visual information;

a display controller for controlling the multi-colored[sic] display;

a logic controller for providing logic control in relation to the display of multi-colored [sic] visual information dependent on the information regarding the status of the transportation means;

a communication means for communicating information regarding the status of the transportation means between the logic controller and a remote information source;

wherein the remote information source is a central center [sic] for monitoring and controlling the movement of transportation means.

...

13. A method for displaying information in relation to the status of the transportation means, comprising the steps of:

a multi-colored [sic] display mountable on a transportation means for displaying multi-colored [sic] visual information;

a display controller for controlling the multi-colored [sic]display;

a logic controller for providing logic control in relation to the display of multi-colored [sic] visual information dependent on the information regarding the status of the transportation means;

a communication means for communicating information regarding the status of the transportation means between the logic controller and a remote information source;

wherein the remote information source is a central center [sic] for monitoring and controlling the movement of transportation means.

…

Both parties agree that...