IIa Technologies Pte Ltd v Element Six Technologies Ltd

• Jurisdiction: Singapore
• Judge: Sundaresh Menon CJ
• Judgment Date: 17 February 2023
• Neutral Citation: [2023] SGCA 5
• Court: Court of Appeal (Singapore)
• Docket Number: Civil Appeal No 41 of 2020
• Hearing Date: 02 August 2021,03 August 2021,04 August 2021,20 January 2022,24 January 2022,25 January 2022
• Citation: [2023] SGCA 5
• Year: 2023
• Plaintiff Counsel: Davinder Singh SC, Srruthi Ilankathir and Hanspreet Singh (Davinder Singh Chambers LLC) (instructed), Tony Yeo Soo Mong, Meryl Koh Junning, Javier Yeo, Loo Fang Hui, Justin Lai Wen-Jin and Derrick Ng (Drew & Napier LLC)
• Defendant Counsel: Alvin Yeo SC, Daniel Chan, Daryl Kwok and Yu Zhengyi Victoria (WongPartnership LLP) (instructed), Jason Chan, Melvin Pang and Ong Eu Jin (Amica Law LLC)
• Subject Matter: Intellectual Property,Patents and Inventions,Claim Construction,Invalidity,Insufficiency,Patent specification,Revocation
• Published date: 02 March 2023

Sundaresh Menon CJ (delivering the judgment of the court):

The parties are competitors in the production of synthetic diamonds grown using chemical vapour deposition (“CVD”). At its simplest, under this process, a substrate (which is also known as a diamond seed) is placed in a reactor containing a mixture of gases, including methane (CH4) and hydrogen (H2). Upon exposure to high energy, the gaseous molecules break up into plasma containing carbon (or “C”) atoms. The C atoms are then deposited on the substrate, growing the synthetic diamond layer by layer.¹

The appellant, a company incorporated in Singapore, claims to be a major manufacturer of CVD diamonds and has a diamond-growing facility in Singapore.² The respondent, a company incorporated in the United Kingdom, is part of the Element Six Group. The Element Six Group is a member of the De Beers Group, which is itself a subsidiary of the Anglo American PLC.³ The De Beers Group is an international diamond business and a diamond producer, while the Anglo American PLC is a global mining company. According to the respondent, the Element Six Group is a global leader in the design, development and production of “synthetic diamond supermaterials”.⁴ The respondent claims that its CVD diamonds have potential technical applications in various industries, including optics, semiconductors and sensors.⁵

In HC/S 26/2016 (“Suit 26”), the respondent claimed that the appellant had infringed two of its patents registered in Singapore, Singapore Patent No 115872 (“SG 872”) and Singapore Patent No 110508 (“SG 508”). To prove infringement, the respondent relied on three samples of diamonds, which were labelled Sample 2, Sample 3 and Sample 4 (collectively, the “Samples”), allegedly purchased from the appellant or the appellant’s related entities or distributors. It claimed that the Samples were made from CVD diamond material synthesised by the appellant and that the appellant must have used the method of growth taught in Claims 62 to 71 of SG 872.⁶ In its defence, the appellant denied infringing the patents and, in any case, disputed their validity.⁷ The appellant also sought the revocation of both patents by way of a counterclaim.⁸ On 7 February 2020, the trial judge (the “Judge”) declared that SG 508 was invalid and revoked it on the basis that it was neither novel nor inventive (Element Six Technologies Ltd v IIa Technologies Pte Ltd [2020] SGHC 26 (“Judgment”) at [291] and [478(d)]–[478(e)]). This was a complete defence to the respondent’s claim for infringement in so far as SG 508 was concerned (Judgment at [416]). However, the Judge found that SG 872 was valid and declined to revoke it. She further found that the appellant had infringed specific claims in SG 872. In this appeal, although both parties proceeded on the basis that Claims 1ii), 1iii), 57, 58 and 62 of SG 872 were infringed,⁹ it is not entirely clear whether the Judge confined her finding of infringement to specific limbs of Claim 1 (Judgment at [9], [416], [443], [454], [456] and [478(a)]). But this difficulty need not detain us. Even taking Claims 1ii) and 1iii) as the point of departure for our analysis on invalidity, our conclusions affect the entirety of Claim 1 and the outcome of the appeal will not change even if the Judge had found the whole of Claim 1 to be infringed.

On 6 March 2020, the appellant filed CA/CA 41/2020 (“CA 41”) appealing against the Judge’s rejection of its defence that SG 872 is invalid and its counterclaim to revoke the entirety of SG 872. It also challenged the Judge’s finding that Claims 1ii), 1iii), 57, 58 and 62 in SG 872 had been infringed.¹⁰ The respondent has not cross-appealed against the Judge’s findings in respect of SG 508.

The Judge delivered her decision on costs (the “Judge’s Costs Decision”) on 30 March 2020, holding that the respondent was entitled to the costs of Suit 26 on a standard basis as well as costs of $3,000 (all in) for the costs hearing which took place on 30 March 2020. On 25 June 2020, the appellant filed CA/CA 96/2020 (“CA 96”) appealing against the entirety of the Judge’s Costs Decision.

This judgment deals only with CA 41.

Background Procedural history and case management on appeal

On 17 August 2020, the appellant filed CA/SUM 87/2020 (“SUM 87”), seeking leave to admit further evidence from Dr Werner Kaminsky (“Dr Kaminsky”, the appellant’s expert) for the purpose of challenging the evidence of Dr Anthony Michael Glazer (“Dr Glazer”, the respondent’s expert) on his gap theory (“Gap Theory”) (see [36] below for relevance of the Gap Theory in this appeal). We dismissed SUM 87 on 16 September 2020.

As appears below, the technical background to SG 872 – including the physical properties of diamonds, how SG 872 seeks to enhance the quality of CVD diamonds grown and the measurement or evaluation of the improvement brought about by SG 872 – is highly complex. The following steps greatly assisted us in coming to grips with the difficult material: On 19 April 2021, we directed the parties to prepare a “Primer” (with a 50-page limit) setting out their points of agreement and divergence on topics including the common general knowledge (such as different methods of growing diamonds and types of defects in diamonds), the state of the art (including other patents) and the inventive concept of SG 872. We also convened a “Technology Tutorial” that was conducted on 2, 3 and 4 August 2021. Each party was allowed to nominate up to two presenters from among their expert witnesses to address these topics as well as provide an introduction to SG 872 and the Metripol system.¹¹ The parties filed and exchanged Powerpoint slide decks prepared by their presenters seven days before the Technology Tutorial. In the section that follows, we outline the salient aspects of the background to SG 872 as presented in the Primer and Technical Tutorial, which will set the context for our analysis of its validity.

Following the Technology Tutorial, CA 41 was heard over three half-day hearings on 20, 24 and 25 January 2022.

Subsequently, on 14 September 2022, we wrote to the parties to clarify whether each product claim in SG 872 covers a class of products as opposed to an individual product. The significance of this point, as well as of the parties’ responses on 21 September 2022, will become clear when we analyse whether SG 872 should be revoked in its entirety.

Technical background

We first set out the technical background to SG 872. As we later elaborate, SG 872 discloses a new single crystal CVD diamond material, at least 0.5mm in thickness, which possesses one or more properties stated in the patent. One such property is low “optical birefringence” (henceforth referred to as “birefringence”). It is the respondent’s case that without the new CVD growth process taught within SG 872, the single crystal CVD diamond material manufactured would not display the properties defined in the product claims of SG 872. It is said that these properties are indicative of a high-quality diamond.¹²

Synthetic diamonds and CVD

Diamonds are a form of solid C (meaning carbon) in which each C atom is bonded to four neighbouring C atoms to form a tetrahedral structure. Many of these tetrahedral structures come together to form a diamond lattice. A “single crystal” diamond, which is claimed in SG 872, is one in which the crystal lattice of the entire sample is continuous and unbroken. In contrast, a polycrystalline diamond consists of many single crystals.¹³

Diamonds may form naturally within the Earth’s crust or be manufactured in a laboratory.¹⁴ CVD is one of the main ways of manufacturing diamonds, the other of which involves applying high-pressure-high-temperature (“HPHT”) on a C source mixed with a catalyst.¹⁵

Impurities, defects and strain in diamonds

In reality, no diamond (natural or man-made) is an array of equally spaced atoms which are purely C. Diamonds will contain impurities and defects. We make this point to provide context to what the respondent/patentee sought to achieve through the new growth processes taught in SG 872. As will become clear, the type and extent of defects in a diamond bear on its physical properties, such as its strength,¹⁶ and hence its potential industrial use(s) and application(s). The respondent sought to produce CVD single crystal diamonds with certain qualities which were required for specific industrial applications. Allegedly, such diamonds could only be produced using the processes claimed in SG 872. What follows elaborates on the nature of defects or impurities arising in diamonds and the relationship between these imperfections and a diamond’s physical properties.

Impurities refer to non-C atoms bonded into the diamond’s lattice structure. Common impurities include nitrogen (N2) and boron. The concentration of nitrogen and boron is expressed in parts per million (“ppm”) or parts per billion (“ppb”). ¹⁷ Based on its purity, a diamond can be categorised into two main types: Type I and Type II. These can be further sub-divided into Types Ia, Ib, IIa and IIb. Type I diamonds contain relatively large amounts of nitrogen – up to 0.3% (5ppm to ~ 3000ppm). Most of the nitrogen atoms in Type Ia diamonds are found in clusters, but this is not the case in Type Ib diamonds.¹⁸ Type II diamonds contain nitrogen below 5ppm. The only impurity in Type IIa diamonds is nitrogen, whereas impurities in Type IIb diamonds consist of nitrogen and boron.¹⁹

When impurities (meaning non-C atoms) enter the diamond’s structure, a point defect is created in the lattice structure.²⁰ Extended defects, on the other hand, are structural defects caused by disruptions to the diamond lattice that extend across the crystal.²¹ One example of an extended defect is a stacking fault, which occurs where the relative positioning of two adjacent layers (or planes) of crystal structure does not conform with the rest of the...