IIa Technologies Pte Ltd v Element Six Technologies Ltd
| Jurisdiction | Singapore |
| Judge | Sundaresh Menon CJ,Judith Prakash JA,Steven Chong JA |
| Judgment Date | 17 February 2023 |
| Docket Number | Civil Appeal No 41 of 2020 |
| Court | Court of Appeal (Singapore) |
[2023] SGCA 5
Sundaresh Menon CJ, Judith Prakash JA and Steven Chong JA
Civil Appeal No 41 of 2020
Court of Appeal
Intellectual Property — Patents and inventions — Claim construction — Whether product claims in patent covered single product or class of products
Intellectual Property — Patents and inventions — Invalidity — Insufficiency — Classical insufficiency — Patent containing product and process claims — Patent containing examples of how to work invention — Whether claim had to enable invention to be performed across full breadth of monopoly asserted in claim — Whether person skilled in the art faced with undue burden to work invention across entire breadth of monopoly in claim
Intellectual Property — Patents and inventions — Invalidity — Insufficiency — Uncertainty — Patent containing product and process claims — Whether claim had to enable invention to be performed across full breadth of monopoly asserted in claim — Whether person skilled in the art could determine if product or process was within scope of invention in patent claim
Intellectual Property — Patents and inventions — Patent specification — Whether description of invention and examples in patent specification enabled invention to be performed across full breadth of monopoly in claim without undue burden — Whether patent specification enabled person skilled in the art to determine if product or process was within scope of invention in patent claim
Intellectual Property — Patents and Inventions — Revocation
Held, allowing the appeal:
Foundational principles
(1) When undertaking the sufficiency inquiry and construing patent claims, the court donned the mantle of the PSA. Among other characteristics, the PSA possessed common general knowledge in the art. In respect of SG 872, the art related to the growth of CVD diamonds and methods of measuring the physical properties of CVD diamonds grown. The PSA was a reasonably intelligent but unimaginative workman or technician. In this case, the PSA was a notional team of persons working in the field of growing CVD diamonds, with expertise in diamonds and the sciences: at [63], [67], [70], [71] and [75].
(2) The PSA drew on common general knowledge to understand a patent and in his attempts to carry it into effect. Common general knowledge was information which, at the relevant date, was common knowledge in the art to which the alleged invention related, so as to be known to duly qualified persons engaged in that art: at [73].
Patent construction
(3) If the patent claim was to a single product, then it was sufficient if it enabled the making of that one product. If, on the other hand, the claim was to a class of products, that class of products was sufficiently enabled only if the PSA could work the invention in respect of all members of the class. Whether the patent claimed a single product or a range of products was a question of construction of the claim(s) in the patent: at [52] and [77].
(4) Each product claim asserted a monopoly over a class of single crystal CVD diamond materials: at [83].
(5) Claim 1 could be infringed by various types of single crystal CVD diamond materials, each with a different combination of the physical properties defined in the limbs of Claim 1: at [84] and [85].
(6) Subsequent product claims likewise covered a range of diamonds because all of them incorporated Claim 1, albeit in different ways. Once a subsequent product claim incorporated Claim 1, it asserted a monopoly over a range of products. This was because any diamond within the class of products in Claim 1, which also fulfilled the additional parameter expressed in the subsequent claim, fell within that subsequent claim: at [87] to [89].
Law of insufficiency
(7) The sufficiency requirement was found in ss 25(4) and 80(1)(c) of the Patents Act (2005 Rev Ed). Section 25(4) required the patent specification to disclose the invention in a manner which was clear and complete, failing which the patent might be revoked under s 80(1)(c). Absolute clarity and completeness were not required, so long as the patent specification was sufficiently clear for the invention to be performed by a PSA. The patent “specification” comprised the description of the invention, drawings, examples illustrating how to carry out the invention and the claims. The claims delimited the monopoly asserted: at [80], [95], [96] and [100].
(8) The assessment of sufficiency proceeded in two steps. The first involved identifying the invention and deciding what it claimed to enable the PSA to do. The second step asked whether the specification enabled him to do it. Where the invention was a process, enablement required that process to be carried out by the PSA; where the invention was a product, enablement required the PSA to be able to make that product: at [105] and [107].
(9) Regardless of the nature of the invention, the patent specification had to enable the invention to be performed by the PSA over the full breadth of the monopoly claimed for the purposes of the sufficiency requirement in ss 25(4) and 80(1)(c) of the Patents Act (2005 Rev Ed). Where a claim was to a class of products, it would be enabled only if the PSA could work the invention in respect of all members of the class. The specification could show that this was empirically demonstrated or disclose a principle which could reasonably be expected to apply across the class: at [108] and [109].
(10) There were distinct ways in which a patent might be insufficient within the meaning of s 80(1)(c) of the Patents Act (2005 Rev Ed): at [113].
(11) The patent might be insufficient where the patent specification was not clear and complete enough to enable the PSA to perform the invention across the whole breadth of the claim(s) without an undue burden (otherwise termed classical insufficiency). The PSA would be saddled with an undue burden if he was unable to work the invention without prolonged research, enquiry and experiment. However, the patent did not need to set out every detail necessary and could leave the PSA to employ his skill and common general knowledge to work out what needed to be done. In all of this, the examples in the patent specification were relevant to determining whether sufficiency was met: at [110], [114] and [134] to [136].
(12) A patent might also be insufficient if it was “uncertain”, which was a distinct objection from classical insufficiency. The latter was concerned with whether the patent specification sufficiently taught the PSA the steps to obtain the product or work the process that was the subject of the claim, while the former was concerned with whether the PSA knew how to determine whether a particular product or process was within the scope of the claimed invention even after employing his common general knowledge and the normal claim construction process: at [119] and [124].
Classical insufficiency
Claim 62
(13) Claim 62 imposed an undue burden on the PSA for four reasons: at [137].
(14) First, the Other Growth Conditions affected the quality of the CVD diamond produced. It was therefore necessary for the PSA to determine the precise values of the Other Growth Conditions to use in order to grow a CVD diamond of a particular quality: at [140] and [143].
(15) Second, the specification of SG 872 merely provided a starting point for an onerous research programme. This did not satisfy the sufficiency requirement. None of the process claims provided directions on the precise values the PSA should use for the Other Growth Conditions, so as to produce diamonds with particular characteristics satisfying one or more of the product claims. This was so even after the process claims were read in the context of the rest of the patent specification, including the examples: at [145], [158] and [159].
(16) The examples only identified one main set of specific values for the Other Growth Conditions in Example 1. The same values were used in the other 14 examples, subject to modifications to the gas pressure in Examples 9 and 14 and the concentration of methane in Example 14. But the examples only taught the production of five variants of an SG 872 Diamond, which were differentiated by the growth conditions used to produce them. This did not enable the PSA to know what values of the Other Growth Conditions to use to produce diamonds falling within all of the 68 product claims in SG 872: at [147] to [150], [152] and [154].
(17) Crucially, the determination of the specific values of the Other Growth Conditions to use in order to produce a diamond of a particular quality was a complex process. Several of the Other Growth Conditions affected the appropriate concentration of nitrogen to be used. The PSA had to undertake extensive research to uncover the relationships between the variables in the growth process depending on the physical properties sought in the diamond grown: at [155].
(18) To compound matters, the entire growth process and the resultant diamond material were sensitive to changes in any of the Other Growth Conditions: at [156].
(19) As a result, the PSA was unduly burdened with an onerous research programme because there were many values for each variable to experiment with, all while balancing the (undefined) relationships between the Other Growth Conditions and appropriate nitrogen concentration. Without any adequate teaching of a principle of general application or unifying characteristic that enabled the PSA to: (a) understand the relationship between the Other Growth Conditions and nitrogen concentration; and (b) determine how to calibrate the Other Growth Conditions to grow a diamond of a specific quality, the PSA had to resort to a prolonged trial and error experiment: at [157] and [181].
(20) Third, even without experimental data, it was clear that the patent told the PSA nothing about how to obtain the appropriate...
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