Element Six Technologies Ltd v IIa Technologies Pte Ltd

• Jurisdiction: Singapore
• Judge: Valerie Thean J
• Judgment Date: 07 February 2020
• Neutral Citation: [2020] SGHC 26
• Court: High Court (Singapore)
• Docket Number: Suit No 26 of 2016
• Published date: 12 February 2020
• Year: 2020
• Hearing Date: 19 March 2019,24 July 2019,06 August 2019,07 August 2019,07 November 2019,05 April 2019,08 August 2019,28 March 2019,26 July 2019,22 July 2019,05 August 2019,31 July 2019,26 March 2019,02 August 2019,22 March 2019,27 March 2019,19 July 2019,30 July 2019,18 July 2019,01 August 2019,20 March 2019,29 July 2019,02 April 2019,21 March 2019,03 April 2019,25 July 2019,08 July 2019
• Plaintiff Counsel: Alvin Yeo SC, Daniel Chan, Vivian Siah, Daryl Kwok (WongPartnership LLC) (instructed counsel), Chan Kwok Chuan Jason, Pang Sze Ray Melvin, Nicholas Tong Wei Jie, Ong Eu Jin (Amica Law LLC)
• Defendant Counsel: Davinder Singh SC, Srruthi Ilankathir, Hanspreet Singh (Davinder Singh Chambers LLC) (instructed counsel), Tony Yeo Soo Mong, Meryl Koh Junning, Yeo Javier and Chiew Jing Yi (Drew & Napier LLC)
• Subject Matter: Patents and Inventions,Validity,Infringement
• Citation: [2020] SGHC 26

Valerie Thean J: Introduction

The plaintiff, a company incorporated in the United Kingdom, is part of the Element Six Group, which designs, develops and produces synthetic diamonds. In particular, the plaintiff specialises in the production of synthetic diamond material using chemical vapour deposition (“CVD”) techniques for technical applications in various industries, including optics, semiconductors and sensors. It is part of the De Beers Group, which is in turn a subsidiary of Anglo American PLC. The defendant, a company incorporated in Singapore, is a major manufacturer of CVD diamonds and has its diamond growing facility in Singapore. CVD refers to a process by which diamonds are grown from a substrate (ie, a diamond seed) by placing the substrate in a CVD reactor containing a mixture of gases and bombarding it with atoms.¹

In this suit, the plaintiff contends that the defendant has infringed two of its patents registered in Singapore, Singapore Patent No 115872 (“SG 872”) and Singapore Patent No 110508 (“SG 508”). It relies on three samples of diamonds purchased, it contends, from the defendant or the defendant’s related entities or distributors. The defendant seeks to revoke the two patents. It also contends that the diamonds in question are not its responsibility and, in any event, do not infringe the patents.

Facts The patents SG 872

SG 872 contains both product and process claims. The key product claim is Claim 1, which describes a CVD single crystal diamond material of a specified thickness of at least 0.5mm with certain characteristics. In particular, the diamond material has low optical birefringence, which is indicative of low strain, in the range of values stated in the claims (for convenience, I will refer to this range of values as the “SG 872 Range”). Birefringence refers to an optical property which is used to determine a diamond’s suitability for high-end optical applications.²

The key process claim in SG 872 is Claim 62. It describes a method of producing the CVD diamond material which comprises, among other things, substrate preparation and the deliberate adding of nitrogen to the synthesis process. The level of nitrogen concentration (300ppb to 5ppm) is selected to be sufficient to prevent or reduce the formation of local strain generating defects, while also being low enough to prevent or reduce deleterious absorptions and crystal quality degradations.³

SG 508

SG 508 is a process claim in respect of the controlled conversion of a coloured single crystal CVD diamond to another colour under suitable and controlled heat treatment conditions, also referred to as annealing. The colours which may be produced include those in the pink-green range.

The samples

The plaintiff’s case on infringement is premised on three samples which were purchased by the plaintiff and/or its agents between 2014 and 2015, prior to the commencement of the suit on 12 January 2016 (“Sample 2”, “Sample 3”, and “Sample 4”, collectively the “Samples”). The Samples were purchased either from the defendant directly (in the case of Sample 4) or from entities that are allegedly related to the defendant (in the case of Samples 2 and 3). Sample 2 is an optical grade single crystal CVD diamond plate with product code “2PCVD303004N”. Sample 2 was purchased by Dr Andrey Jarmola on behalf of the plaintiff from Microwave Enterprises Ltd (“MWE”), under instructions from Dr Daniel James Twitchen on or around 12 May 2014.⁴ Sample 3 is a single crystal CVD diamond gemstone with product code “LG10225420”. Sample 3 was purchased by Dr Simon Lawson on behalf of the plaintiff from Pure Grown Diamonds Inc (“PGD”) on or around 27 October 2015.⁵ Sample 4 is an optical grade single crystal CVD diamond plate with product code “2PCVD505005N”. Sample 4 was purchased by Mr Pascal Pierra on behalf of the plaintiff directly from the defendant in Singapore in or around October 2015.⁶

Summation of parties’ positions and issues

The defendant by counterclaim disputes the validity of SG 872 and SG 508 and seeks their revocation. In its defence, the defendant denies responsibility for the Samples and contends that, in any event, the Samples fail to show any infringement of the patents.

The case, therefore, may be analysed by reference to these issues: Validity of SG 872 and SG 508; Whether the defendants are responsible for the Samples; and Whether the Samples infringe SG 872 and SG 508.

Decision

As I explain below, I hold that SG 872 is valid, while SG 508 is not. Samples 2, 3 and 4 originate from the defendant, and infringe SG 872 but not SG 508.

Validity of SG 872 And 508

As stated by the Court of Appeal in Mühlbauer AG v Manufacturing Integration Technology Ltd [2010] 2 SLR 724 (“Mühlbauer”) at [15], in order for an invention to be patentable, it must satisfy the three conditions set out in s 13(1) of the Patents Act (Cap 221, 2005 Rev Ed) (“Patents Act”). These are that: the invention is new (ie, the novelty requirement); it involves an inventive step (ie, the inventiveness or non-obviousness requirement); and it is capable of industrial application.

Requirement (c) is not in dispute in the present case for either of the patents.

Claim construction

Claim construction is integral to understanding whether claims are novel and inventive, and I therefore deal with this issue first. The claims of a patent provide the patentee with the monopoly which it is entitled to: First Currency Choice v Main-Line Corporate Holdings Ltd and another appeal [2008] 1 SLR(R) 335 (“First Currency Choice”) at [23]. In Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] 1 SLR 856 (“Lee Tat Cheng”), the Court of Appeal reaffirmed the following key principles of claim construction at [41]: (a) In ascertaining the true construction of a patent specification, the claims themselves are the principal determinant. What is not claimed is deemed to be disclaimed. (b) The description and other parts of the patent specification form the context for, and may assist in, the construction of the claims. (c) The claims are to be construed purposively, and not literally. This would give the patentee the full extent, but no more than the full extent, of the monopoly which a person skilled in the art, reading the claims in context, would think the patentee was intending to claim. In this regard, the starting point is to ask the threshold question: What would the notional skilled person have understood the patentee to mean by the use of the language of the claims? The Improver questions (see [30] above), which were derived from Catnic ([26] supra), have also been used as guidance in construing patent claims. (d) As a general rule, the notional skilled person should be taken to be a workman or technician who is aware of everything encompassed in the state of the art and who has the skill to make routine workshop developments, but not to exercise inventive ingenuity or think laterally. (e) Purposive construction does not entitle the court to disregard clear and unambiguous words in a patent claim, and the court is not entitled to rewrite or amend the claim under the guise of construction. In construing a claim purposively, the language that the patentee has adopted is more often than not of utmost importance. It is not permissible to put a gloss on or expand a claim by relying on a statement in the patent specification. (f) If an allegedly infringing article falls within the words of one of the claims of a patent properly construed, the patent would have been infringed. To constitute infringement, the article concerned must usurp each and every one of the essential elements of the claim in question.

The “notional skilled person” referred to by the Court of Appeal in Lee Tat Cheng is referred to by parties in this case, as is common, as a person skilled in the art (“PSA”).

In the present case the defendant’s PSA is a composite person having a Master’s degree in mechanical or chemical engineering and having a doctorate in applied physics, electrical engineering, optical engineering or a closely related field, aided by an engineer/technician with skills in mechanical polishing, laser cutting and correlated measurements. The plaintiff disputes this, and contends that the PSA is a team of people collectively having a Bachelor of Science in physics, chemistry or material sciences, and knowledge of diamond properties in all its forms at the material time (natural, high-pressure high-temperature (“HPHT”) and CVD diamonds) as well as working knowledge of CVD diamond synthesis and commercial production.⁷ This disagreement has no practical significance, as no finding in the case turns upon this fine distinction. The present case would require consideration of a team of persons working in the field of growing CVD diamonds. In my judgment, the relevant PSA in such a field would include a team of individuals with expertise in diamonds and science generally, with access to individuals possessing doctorate qualifications. This is evidenced by the composition of the relevant teams on both sides in the present case. The plaintiff’s team included scientists such as Dr Phillip Martineau (who has a doctorate in solid state physics)⁸ and Dr Geoffrey Scarsbrook (who has a doctorate in material physics).⁹ As for the defendant, while the composition of its team is less clear, the defendant’s chief scientist, Dr Devi Misra, has a doctorate qualification as well.¹⁰

Claims in dispute

For SG 872, arguments centred on Claim 1, a product claim, and Claim 62, a process claim. For SG 508, arguments focused on Claim 1. I deal with these in turn.

Validity of SG 872 Claim 1 The Claim 1 invention

Claim 1 and in particular 1(ii) and 1(iii) are the focus of the dispute between parties:¹¹ 1. A CVD single crystal diamond material which shows at least one of the following characteristics, when measured at room temperature...