Element Six Technologies Ltd v IIa Technologies Pte Ltd

• Jurisdiction: Singapore
• Judge: Justin Yeo AR
• Judgment Date: 19 October 2017
• Neutral Citation: [2017] SGHCR 16
• Court: High Court (Singapore)
• Docket Number: Suit No 26 of 2016 (Summons No 2929 and 2935 of 2017)
• Year: 2017
• Published date: 25 October 2017
• Hearing Date: 21 September 2017,04 August 2017
• Plaintiff Counsel: Mr Melvin Pang and Mr Nicholas Ong (Amica Law LLC)
• Defendant Counsel: Ms Meryl Koh and Mr Javier Yeo (Drew & Napier LLC)
• Subject Matter: Civil Procedure,Pleadings,Further And Better Particulars,Patents and Inventions,Infringement,Novelty
• Citation: [2017] SGHCR 16

Justin Yeo AR:

This judgment relates to two applications for further and better particulars of pleadings in patent proceedings, one by Element Six Technologies Ltd (“the Plaintiff”) and the other by IIa Technologies Pte Ltd (“the Defendant”). It focuses on three specific categories of requests (see [4] below) for which there appears to be a paucity of local case authority.

The applications

Summons No 2929 of 2017 (“SUM 2929”) is the Plaintiff’s application for further and better particulars of the Defence and Counterclaim (Amendment No 3) (“the Defence and Counterclaim”) and the Particulars of Objection (Amendment No 3) (“the Particulars of Objection”). SUM 2929 is made pursuant to O 18 r 12 and O 87A r 3 of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) (“Rules of Court”), and consists of 165 sets of requests (each with numerous sub-requests).

Summons No 2935 of 2017 (“SUM 2935”) is the Defendant’s application for further and better particulars of the Statement of Claim (Amendment No 1) (“the Statement of Claim”), the Particulars of Infringement (Amendment No 1) (“the Particulars of Infringement”) and the Reply and Defence to Counterclaim (Amendment No 2) (“Reply and Defence to Counterclaim”). SUM 2935 is made pursuant to O 18 r 12 and O 87A r 2 of the Rules of Court, and consists of 15 sets of requests (each with numerous sub-requests).

I heard the SUM 2929 and SUM 2935 together on 4 August 2017 and 21 September 2017. Further submissions were tendered to court on 5 October 2017. On 19 October 2017, I rendered oral judgment for both applications, and supplemented the oral judgment with this written judgment in relation to three specific groups of requests. The three groups of requests are: the Plaintiff’s requests, in SUM 2929, for the Defendant to provide particulars of the combinations of prior art and/or user (collectively referred to as “prior art”) relied on to invalidate the patents in question (“the Combination Requests”); the Plaintiff’s requests, in SUM 2929, for the Defendant to provide particulars of specific passages of certain prior art relied on to invalidate the patents in question (“the Passage Requests”); and the Defendant’s requests, in SUM 2935, for the Plaintiff to provide particulars of the alleged commercial success of one of the patents in question (“the Commercial Success Requests”).

Background facts

The Plaintiff is the proprietor of two Singapore Patents, namely Singapore Patent Numbers 115872 (“the ‘872 Patent”) and 110508 (“the ‘508 Patent”). The ‘872 Patent is in respect of an optical quality synthetic single crystal chemical vapour deposition (“CVD”) diamond material and the method for its production. The CVD diamond material produced in relation to the ‘872 Patent allegedly has lower optical birefringence and optical absorption than conventional diamond material, allowing it to be used in a variety of industrial applications and also for lab-grown synthetic diamond gems for the jewellery industry. The ‘508 Patent is in respect of a method of producing CVD diamonds of a desired colour, including the steps of heat treating the diamond under conditions suitable to produce the desired colour. This includes converting the colour of a CVD diamond from an undesirable colour, such as brown, to a near colourless or colourless form.

The Defendant is a company incorporated in Singapore. It deals in the manufacture and growth of CVD diamonds which are used in the mechanical, manufacturing, gems and jewellery industries.

In the following paragraphs, I set out aspects of the various pleadings that are of relevance to the three groups of requests addressed in this judgment.

In the Statement of Claim and Particulars of Infringement, the Plaintiff alleged that the Defendant had infringed 33 claims in the ‘872 Patent and 24 claims in the ‘508 Patent.

In the Defence and Counterclaim, the Defendant averred that its business and acts relating to the manufacture and growth of CVD diamonds do not constitute infringement of the claims in the Patents. The Defendant further counterclaimed to revoke the Patents, on the basis that the inventions disclosed in the Patents lacked novelty, inventive step and/or were insufficiently disclosed in their specifications to be performed by a person skilled in the art.

Of particular relevance to the Combination Requests and the Passage Requests is the fact that the Defendant raised separate lists of prior art to challenge each of the asserted claims in the Patents. The lists of prior art were of varying length and composition (comprising 70 pieces of prior art in all), and some of the prior art were of considerable length (with eight pieces of prior art ranging from 22 pages to 248 pages each). As a sample list of prior art cited, the particulars supporting the Defendant’s attack on Claim 19 of the ‘872 Patent are as follows (this sample is subsequently referred to for the purposes of illustrations in [17] and [19(b)(i)] below):

Particulars

(a) The alleged invention in Claim 19 of the ‘872 Patent involved no inventive step in that it was obvious to a person skilled in the art, having regard to the matter which formed part of the state of the art before the priority date of the alleged invention in Claim 19 of the ‘872 Patent. Hereunder the Defendant will rely upon the following, including but not limited to: (i) All the documents and prior users referred to in paragraphs 25(a)(i) and 25(a)(ii) above;

[These comprise the following:

(i) Documents published in various scientific publications, journals and patent documents, such as: (A) A paper entitled: ‘Status of the R&Ds on Diamond Particle Detectors’ – Mara Bruzzi; given at the 11th International Workshop on Vertex Detectors at the Ohana Keauhou Beach Resort 78-6740, Alii Drive, Kailua-Kona, Hawaii was presented between the 4 - 8 November 2002; (B) A paper entitled ‘Analysis of Large Single Crystal CVD Diamond’ – J.E. Butler, T.A. Kennedy, J.S. Colton, S. Qadri, R. Linares, P. Doering, M. Newton, C. Glover, H. Smith & A. Collins given at the United States Naval Research Academy was presented on 22 July 2000; (C) JP 07-277890A published on 24 October 1995; (D) US 5,474,021 grant published on 12 December 1995; (E) A paper entitled: ‘High Carrier Mobility in Single-Crystal Plasma-Deposited Diamond’ – Jan Isberg, Johan Hammersberg, Erik Johansson, Tobias Wikström, Daniel J. Twitchen, Andrew J. Whitehead, Steven E. Coe & Geoffrey A. Scarsbrook; Science, Vol. 297, Issue 5587, pp. 1670-1672, 6 September 2002; (F) A paper entitled: ‘Development of large size diamond synthesis process’ by Sumitomo Electric Industrial Co. Ltd., Report on R&D on "Frontier Carbon Technology" (FCT) project by New Energy Development Organisation (NEDO), published in 2000. (G) A chapter in the textbook entitled: ‘Electric Refractory Materials’ edited by Yukinobu Kumashiro, Chapter 15: Synthesis of Diamond from the Gas Phase by Andrzej Badzian, page 347 – 368, published in 2000; (H) WO 01/96634 published on 20 December 2001; (I) WO 01/96633 published on 20 December 2001; and (J) Singapore Patent No. 110506 published on 30 May 2005 claiming a priority date of 20 September 2002; and (ii) The following prior users:

(A) The Plaintiff and/or its related entities, who provided and/or sold diamonds to third parties prior to 21 November 2002, including but not limited to the RD42 Collaboration and/or ABB Group Services Centre.]

(ii) The following further documents: (A) A paper entitled: ‘Diamond windows for IR applications in adverse environments’ – Claude A. Klein, Diamond and Related Materials, Vol. 2, Issues 5-7, pp. 1024-1032, 13th April 1993; (B) A paper entitled: ‘Characterization of single-crystal diamond grown by chemical vapour deposition processes’ – G. Janssen, W.J.P van Enckevort, W. Vollenberg & L.J. Giling, Diamond and Related Materials, Vol. 1, Issue 7, pp. 789-800, 1 May 1992; (C) A paper entitled: ‘Crystalline perfection of high purity synthetic diamond crystal’ – H. Sumiya, N. Toda, Y. Nishibayashi & S. Satoh, Journal of Crystal Growth, Vol. 178, Issue 4, pp. 485-494, 2nd July 1997; (D) US 5,335,245 grant published on 2 August 1994; and (iii) The common general knowledge.

The Plaintiff filed a Reply and Defence to Counterclaim. Of particular relevance to the Commercial Success Requests is the Plaintiff’s averment that the ‘872 Patent’s inventiveness was evidenced, inter alia, by the commercial success of the Plaintiff’s single crystal CVD diamond products. The Plaintiff’s pleading in relation to commercial success is as follows: 42. The Plaintiff avers that the ‘872 Patent’s inventiveness is evidenced, inter alia, by the commercial success of the Plaintiff’s single crystal CVD diamond products which are used in optical and mechanical applications. Such products include, but are not limited to, attenuated total reflection prisms and blanks for high precision cutting applications.

Particulars

a) After the filing of the ‘872 Patent and with the production of the single crystal CVD diamond material made in accordance with the invention disclosed in the ‘872 Patent, the Plaintiff acquired a global market share of greater than 80% for single crystal CVD diamond material for use in optical products. b) The market share for single crystal CVD diamond material for use in optical products sold by the Plaintiff is currently around 50% of total global sales. c) The invention of the ‘872 Patent allowed the production of a single crystal CVD diamond material that had low optical birefringence. This product material was found to be advantageous for optical applications such as etalons and [attenuated total reflection] prisms when compared with prior art single...