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

• Judge: MPH Rubin J
• Judgment Date: 31 October 2000
• Neutral Citation: [2000] SGHC 219
• Citation: [2000] SGHC 219
• Defendant Counsel: Wong Siew Hong and Michelle Tan (Yeo Wong & Thian)
• Published date: 19 September 2003
• Plaintiff Counsel: Jupiter Kong and Penny Leng (Drew & Napier)
• Date: 31 October 2000
• Docket Number: Suit No 1549 of 1999
• Court: High Court (Singapore)
• Subject Matter: Whether defendants had defence under s 77(4),Claim for relief,Patents and Inventions,Construction of claims in specification of defendants' patent,Whether plaintiffs' device infringed defendants' patent,Infringement,Groundless threat,ss 77(1) & 77(4) Patents Act (Cap 221)

: The dispute in this action revolves around two letterbox mechanisms or devices, one belonging to the first defendants through an exclusive licence granted to them by their present managing director, the second defendant and the other belonging to the plaintiffs. The second defendant`s device is patented (Singapore Patent No 52288) (`the said patent`) and is called the `Mailbox Assembly with Lockable Delivery Flaps`. The plaintiffs` mechanism (referred to as the `Flexon system`) is described by them as `Master Door Letter Box with Aperture Central Locking`. Admittedly, there is a good market in Singapore particularly in the Housing & Development Board estates for such contraptions and consequently the plaintiffs and the defendants are locking horns over their respective devices.

The first defendants by virtue of the said patent threatened the plaintiffs with infringement proceedings. In the result, the plaintiffs commenced the present action against the first defendants for making groundless threats of infringement proceedings contrary to s 77 of the Patents Act (Cap 221) (`the Act`). The defendants for their part counterclaimed against the plaintiffs for the infringement of the said patent.

It is not in dispute that the second defendant is the registered proprietor of the said patent, registered in Singapore on 16 November 1998. The second defendant also has a corresponding United Kingdom Patent No GB 2, 289,500 for his invention. The invention, the court was told, is an apparatus for securing mailboxes against unwanted or junk mail and for preventing theft of legitimate mail.

Schematic drawings of the patented apparatus taken from figures 1 and 2 of the said patent appear in App 1 hereto.

For comparison, schematic drawings of the plaintiffs` Flexon system are reproduced in Appendix 2 hereto. [The Appendixes are not reproduced in this report - Ed.]

It is perhaps appropriate at this juncture to highlight the chief segments as well as the averments in the parties` respective pleadings.

In their statement of claim, the plaintiffs alleged that the defendants have by circulars, advertisements or otherwise threatened, inter alia, the plaintiffs with proceedings for infringement of a patent. The background and the particulars of threats furnished by the plaintiffs read as follows:

Paragraphs 2(1), (2) and (3) of the statement of claim:

(1) By a letter dated 28 September 1999, the defendants` solicitors M/s Yeo Wong & Thian wrote a letter to the plaintiffs, claiming that the defendants are the exclusive licensees of Singapore Patent No 52288. In the said letter, the defendants` solicitors threatened that the defendants would commence legal proceedings against the plaintiffs unless certain conditions were met, including payment of damages and costs to the defendants.

(2) By a letter of reply dated 15 October 1999, the plaintiffs` solicitors M/s Drew & Napier informed the defendants` solicitors that the plaintiffs` mailbox system does not infringe Singapore Patent No 52288. The defendants were asked to retract and withdraw the allegations made in their letter dated 28 September 1999.

(3) In a letter dated 18 October 1999 from the defendants` solicitors to the plaintiffs` solicitors, the defendants` solicitors repeated their earlier demands made in their letter of 28 September 1999, and again threatened infringement proceedings.

Alleging that they have suffered loss and damage as a result of the foregoing threats, the plaintiffs filed their present claim against the defendants, for a declaration that the threats of proceedings by the defendants were unjustifiable and for an injunction to restrain the defendants from issuing such threats.

The defendants by their defence disputed the validity of the plaintiffs` allegations and averred that the plaintiffs were not entitled to bring proceedings against the defendants since the alleged threats by the defendants, if any, fell within the scope of s 77(4) of the Act. In addition, the defendants by their counterclaim alleged that the plaintiffs had infringed their patent and prayed for an injunction and damages against the plaintiffs.

The defendants` version of the (plaintiffs`) alleged infringement require reproduction and they are as follows:

Paragraphs 6.1 and 6.2 of the amended counterclaim

6.1 Subsequent to the publication of the application in the United Kingdom on 22 November 1995, and also subsequent to the issue of the Certificate of Registration in Singapore on 16 November 1998 for the Singapore Patent, the plaintiffs have infringed the Singapore Patent and in particular, Claims 1, 3, 6 and 8 in the Specification of the Singapore Patent (`the Specification`).

6.2 Claims 1, 3, 6 and 8 of the Singapore Patent are as follows:

Claim 1

In a multiple slot mailbox having a plurality of individual mailboxes, said individual mailboxes each having at least one postman`s trap door on at least one open panel, said individual mailboxes each further having at least one User`s trap door on at least one open panel, an apparatus for preventing the unauthorized access of the postman`s trap doors, said apparatus comprising:

a trap door stopper along the lower edge of each said postman`s trap doors for minimising the gap between the trap door stopper and the lower edge of said postman`s trap door, said trap door stopper further having a stopper portion for wedging the lower and outer edge of said trap door;

a matrix of orthogonal bars being placed in the interior of said mailbox and directly behind the postman`s trap door for wedging the lower and inner edge of said postman`s trap door against the inner surface of said stopper portion when said matrix of orthogonal bars is lowered, said matrix of orthogonal bars having at its top member at least one universal biasing bar running along the width of said multiple slot mailbox, said matrix of orthogonal bars further having as its horizontal members a plurality of parallel anti-junk mail bars, said matrix of orthogonal bars further having at its vertical members of plurality of parallel bars, said vertical bars having its upper end coupled to said universal biasing bar; and

at least one master lock being disposed on the upper front panel and below said universal biasing bar for raising and lowering said matrix of orthogonal bars,

whereby the postman`s trap doors can be released or closed simultaneously.

Claim 3

The apparatus in claim 1 wherein said vertical members of said matrix of orthogonal bars have equally spaced horizontal bores for allowing the said anti-junk mail bars to be coupled in substantially right angle with said vertical members of said matrix of orthogonal bars.

Clain 6

The apparatus in claim 1 wherein said master lock has at least one cam for raising the underside of universal biasing bar when said master lock is opened.

Claim 8

An apparatus for securing mailboxes substantially as hereinbefore described with reference to or as shown in the accompanying drawings.

Further details provided by the defendants read as follows:

Paragraphs 6.3 and 6.4 of the amended countercaim:

Claim 1
6.3	(i)	By making prototypes of, manufacturing, supplying, delivering installing, selling and/or offering for sale mail boxes with lockable delivery flaps containing the essential features of Claim 1 to Lip Guan Construction Pte Ltd; and/or
	(ii)	By delivering and installing or threatening to deliver and/or install mail boxes with lockable delivery flaps containing the essential features of Claim 1 in the following areas:
		(a)	Ang Mo Kio Avenue 4, Blk 170 to 176; and
		(b)	Yishun Ring Road, Blk 731 to 736.
Claim 3
	(i)	By making prototypes of, manufacturing, supplying, delivering, installing, selling and/or offering for sale mail boxes with lockable delivery flaps containing the essential features of Claim 3 to Lip Guan Construction Pte Ltd; and/or
	(ii)	By delivering and installing or threatening to deliver and/or install mail boxes with lockable delivery flaps containing the essential features of Claim 8 in the following areas:
		(a)	Ang Mo Kio Avenue 4, Blk 170 to 176; and
		(b)	Yishun Ring Road, Blk 731 to 736.
6.4	The plaintiffs well knew at all material times and further or in the alternative the defendants will say it was obvious to a reasonable person in the circumstances that the making of prototypes of manufacturing, supplying, delivering, installing, selling and/or offering for sale of the aforesaid mail boxes with lockable delivery flaps in Singapore without the defendants` consent would be an infringement of the Singapore Patent.
	Particulars of knowledge
	(a)	The second defendant had in or around September 1994 displayed and demonstrated a prototype of the Invention to the Tanjong Pagar Town Council.
	(b)	Since mid-1995, approximately 8,000 mail boxes which are reproductions of the Invention have been installed in seven upgrading projects.
	(c)	The said mail boxes contained `Patent-pending` or `Patented` stickers.
	(d)	On or about 1 September 1996 and 25 August 1997, the second defendant appeared in television programmes entitled `Hey Singapore` and `Stroke of Genius` respectively, giving a demonstration of the way the invention worked.
	(e)	The first defendants have, through their solicitors` letter dated 28 September 1999, informed the plaintiffs of their proprietary rights in the Singapore Patent and the invention.
	(f)	Prior to discovery and/or interrogatories herein, the defendants rely on the particulars of knowledge set out herein. The defendants shall seek to rely on other matters discovered during discovery and/or interrogatories.

In their amended reply and defence to counterclaim, the plaintiffs whilst maintaining their averments in their statement of claim, stated that the defendants` solicitors` letter...