FE Global Electronics Pte Ltd and Others v Trek Technology (Singapore) Pte Ltd and Another Appeal

• Jurisdiction: Singapore
• Judgment Date: 30 December 2005
• Date: 30 December 2005
• Docket Number: Civil Appeals Nos 69 and 70
• Court: Court of Appeal (Singapore)

FE Global Electronics Pte Ltd and others

Plaintiff

and

Trek Technology (Singapore) Pte Ltd and another appeal

Defendant

[2005] SGCA 55

Yong Pung How CJ

,

Chao Hick Tin JA

and

Tan Lee Meng J

Civil Appeals Nos 69 and 70 of 2005

Court of Appeal

Patents and Inventions–Infringement–Appropriate approach in construing patent claims–Whether purposive approach to be preferred–Patents and Inventions–Subject matter–Whether amendments to patent disclosing additional matter–Whether court correctly exercising discretion to allow amendments–Patents and Inventions–Validity–Whether combination of prior art amounting to inventive step–Whether patent anticipated by prior art–Whether patent invalid for lack of inventiveness and novelty

The respondent (“Trek”) commenced various patent infringement actions against the appellants in Civil Appeal No 70 of 2005 (“M-Systems et al”) and the appellant in Civil Appeal No 69 of 2005 (“Ritronics”).

Trek claimed that the patent protected its Thumbdrive device, and that M-Systems et al and Ritronics had infringed its patent by selling storage devices similar to the Thumbdrive device. Before the hearing of the action, Trek applied to amend its patent to clarify the definition of its invention. In addition to ruling in favour of Trek, the judge allowed Trek's application to amend the patent.

The issues before the Court of Appeal were: (a) whether the Thumbdrive device was within the ambit of the patent; (b) whether the amendments proposed by Trek were properly allowed; and (c) whether Trek's patent was invalid for lack of novelty and inventiveness.

Held, dismissing the appeal:

(1) The language of a patent was deemed to have been addressed by the inventor not to a panel of equity draftsmen but to the man skilled in the art. In construing the words of a patent, the purposive approach was preferred as it balanced the rights of the patentee and those of third parties. From a purposive interpretation of the patent claims, it was evident that the features of the Thumbdrive device were adequately covered: at [14] and [16].

(2) No amendment should be allowed if it resulted in the specification disclosing any additional matter or extending the protection conferred by the patent. To determine whether there was disclosure of any additional matter, the court's task was threefold: (a) to ascertain through the eyes of the skilled addressee what was disclosed in the application; (b) to do the same in respect of the patent; and (c) to compare the two disclosures and decide whether any subject matter relevant to the invention had been added whether by deletion or addition. The comparison was strict such that subject matter would be added unless such matter was clearly and unambiguously disclosed in the application either explicitly or implicitly. In the circumstances, none of the amendments sought disclosed any additional matter or extended the protection conferred by the patent: at [23], [24] and [28].

(3) In exercising the discretion to allow amendments, the judge had to take into account various factors such as whether the patentee had disclosed all the relevant information with regard to the amendments, whether the patentee delayed seeking the amendments, and whether the patentee's conduct discouraged the grant of the amendments. The modern context in which patents were registered should also be taken into account when considering whether amendments should be allowed. As examination reports were available for public inspection, adverse parties could evaluate the validity and strength of patents and were less likely to be surprised and consequently prejudiced by subsequent amendments even if this took place in the course of patent litigation. There being little scope for abuse, a more lenient approach towards amendments was appropriate. In the present instance, the decision to allow the amendments could not be faulted: at [29], [30], [31] and [35].

(4) An invention was new if it did not form part of the state of the art. Disparate pieces of prior art could not be combined unless a document directed a reader to do so. To anticipate the patentee's claim, the prior publication should contain clear and unmistakable directions to do what the patentee claimed to have invented. In the circumstances, the prior art neither disclosed a device with an integrated plug nor had anything to do with mass storage data, such that there was no anticipation of the patent: at [38], [40] and [41].

(5) Trek also had an inventive concept for a new type of data storage device that was quite different from and more convenient to use than conventional data storage devices. It was not obvious to proceed from a two-piece cable-connected prior art to the neat cableless solution presented by the Thumbdrive device. When considering the inventiveness of a new product, the commercial success of the product might also be taken into account: at [45] and [47].

Bonzel (T) v Intervention Limited (No 3) [1991] RPC 553 (folld)

Catnic Components Limited v Hill & Smith Limited [1982] RPC 183 (folld)

General Tire & Rubber Company, The v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 (folld)

Instance v CCL Label Inc [2002] FSR 27 (refd)

Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 (refd)

Peng Lian Trading Co v Contour Optik Inc [2003] 2 SLR (R) 560; [2003] 2 SLR 560 (refd)

Samuel Parkes & Co Ld v Cocker Brothers Ld (1929) 46 RPC 241 (folld)

Smith Kline & French Laboratories Limited v Evans Medical Limited [1989] FSR 561 (refd)

Strix Limited v Otter Controls Limited [1991] FSR 354 (folld)

Patents Act (Cap 221, 2002 Rev Ed) ss 13 (1), 14, 15, 83, 84 (3)

Ponnampalam Sivakumar (Joseph Lopez & Co) for the appellants in CA 70/2005

Hee Theng Fong, Tan Siew Hong, Sarah Chong and Jeremy Ng (Hee Theng Fong & Co) for the appellant in CA 69/2005

Davinder Singh SC, Tony Yeo and Joanna Koh (Drew & Napier) for the respondent in CA 70/2005

Davinder Singh SC (counsel) and Jason Chan (Allen & Gledhill) for the respondent in CA 69/2005.

Tan Lee Meng J

(delivering the judgment of the court):

1 The appellants in Civil Appeal No 70 of 2005, FE Global Electronics Pte Ltd (“Global”), Electec Pte Ltd (“Electec”) and M-Systems Flash Disk Pioneers Ltd (“M-Systems”) and the appellant in Civil Appeal No 69 of 2005, Ritronics Components (S'pore) Pte Ltd (“Ritronics”), appealed against Lai Kew Chai J's decision (reported at Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd [2005] 3 SLR 389) that they had infringed Singapore patent No 87504 (WO 01/61692), which was granted to the respondent, Trek Technology (Singapore) Pte Ltd (“Trek”), and were therefore liable in damages for the infringement. We dismissed the appeal and now give the reasons for our decision.

Background

2 On 21 February 2000, Trek filed an application for a Singapore patent (the “patent”) with respect to a portable data storage device. Trek claimed that the patent protected its product, “ThumbDrive”, which was unveiled at an international exhibition in Germany a week after the application for the patent was submitted in Singapore. The ThumbDrive device took the computer world by storm. Only about the size of a human thumb, it can be plugged directly into any universal serial bus (“USB”) of a personal computer. With no moving parts, it functions as a disk drive and has a capacity exceeding that of other mass storage devices.

3 The patent was granted on 16 April 2002. Since then, patents have been granted in, inter alia, the UK, New Zealand and South Africa.

4 Before long, other companies started to produce devices that were similar to the ThumbDrive device. An Israeli company, M-Systems, sold such devices under the names “DiskOnKey” and “Diskey”. Electec is the exclusive Singapore importer of Diskey while Global is the exclusive Singapore distributor of the said product.

5 Another company, Ritronics, also started to manufacture and sell storage devices...