Lee Tat Cheng v Maka GPS Technologies Pte Ltd
Jurisdiction | Singapore |
Judge | George Wei J |
Judgment Date | 13 March 2017 |
Neutral Citation | [2017] SGHC 48 |
Published date | 14 April 2018 |
Date | 13 March 2017 |
Year | 2017 |
Hearing Date | 30 September 2016,04 August 2016,02 August 2016,05 August 2016,03 August 2016 |
Plaintiff Counsel | Ismail bin Atan and Koh Kai Ling Angeline (Salem Ibrahim LLC) |
Defendant Counsel | Bryan Manaf Ghows and Khadijah binte Yasin (Via Law Corporation) |
Court | High Court (Singapore) |
Citation | [2017] SGHC 48 |
Docket Number | Suit No 228 of 2015 |
This suit revolves around a patent for an in-vehicle camera that can be used to record events before, during and after an accident. The plaintiff commenced the action claiming that the defendant’s offering of three of its devices for sale constitutes an infringement of the plaintiff’s patent. The defendant alleges that the plaintiff’s patent is invalid, and if valid, is not infringed. It counterclaims for groundless threats of proceedings.
The trial of this suit was heard over four days in August 2016, with closing submissions filed on 30 September 2016. I now deliver my judgment.
Background factsThe plaintiff, Mr Lee Tat Cheng (“the Plaintiff”), is the proprietor of a patent known as an “automotive accident recordal system” (Patent No 87795) (“the Patent in Suit”). The patent specification states that the invention relates to “a system which may be installed in a vehicle, in particular, an automobile, to record visual data leading up to the event of a dangerous situation requiring sharp braking or an accident”.1
The Patent in Suit was filed on 1 April 1999, published on 16 April 2002 and granted on 31 May 2002.2 Since then, the Plaintiff has renewed the Patent in Suit on a yearly basis, most recently on 26 January 2015. The Patent in Suit consists of 22 claims, of which only Claims 1 to 8 are in issue in this case. For convenience, these are set out in the table below:
| |
| |
| |
| |
| |
| |
| |
| |
| |
It is undisputed that Claims 2 to 8 relate back to Claim 1.3
The mechanics or the working of the invention protected by the Patent in Suit will be expanded on later in the judgment. For now, it suffices to note that the invention essentially relates to an in-vehicle camera which turns on automatically and begins recording images when the driver turns the ignition key of the vehicle. The camera records in a cyclical fashion. Later pictures override earlier recorded images such that only the most recent images are stored. Upon impact or sudden deceleration, such as in the event of an accident, the main power supply to the camera turns off. The camera instead receives alternative power from a “standby power supply” and will continue recording for a fixed interval of five to ten seconds after the main power supply has been terminated. Thereafter, the standby power supply switches off and the recording of images stops. The most recently recorded images (
The defendant, Maka GPS Technologies Pte Ltd (“the Defendant”), is a company incorporated in Singapore having its registered office address at 2 Alexandra Road, #02-03, Singapore 159919. It carries on the business of a wholesaler and retailer of telecommunication equipment and car accessories parts and services. It is the exclusive distributor of the following devices in Singapore:4
The Devices are marketed under the name “RoadCorder”, and are on-board cameras for automobiles which continuously record the road ahead while the vehicle is in motion.5 It was undisputed that the technical specifications and mode of operation of each of the Devices are similar.6 The differences between the Devices can be summarised as follows: MX5 is the most basic model of the three. MX6 is an improved version of MX5 and produces recordings of a higher resolution and clarity. QB6 is a further improvement on MX6, and is designed to record the view from both the front and rear of the automobile in high-definition resolution.7 These differences, however, are not relevant for the purposes of the present suit.
Mr Huang Shih Chia @ Johnny Huang (“Mr Huang”) is the managing director of the Defendant.8
The cease and desist lettersIt is undisputed that prior to the commencement of the present Suit No 228 of 2015 (“the present suit”), the Plaintiff’s solicitors sent two cease and desist letters to the Defendant.
In the first letter dated 13 February 2014 (“the 13 February 2014 letter”), the Plaintiff claimed that by selling the
Some eight months later, in the second letter dated 28 October 2014 (“the 28 October 2014 letter”), the Plaintiff claimed that
It appears that the Defendant did not comply with the Plaintiff’s demands in both the 13 February 2014 letter and the 28 October 2014 letter (collectively, “the cease and desist letters”).
The Plaintiff’s pleaded caseOn 10 March 2015, the Plaintiff commenced the present suit against the Defendant, alleging that “by offering the [Devices] for sale in Singapore and/or an external memory store for use with the [Devices] without obtaining the Plaintiff’s consent, the Defendant has infringed the Plaintiff’s Patent” under s 66(1) of the Patents Act (Cap 221, 2005 Rev Ed).11 The particulars of the alleged infringement are as follows:12
| | |
| | |
| ||
| | |
| | |
| | |
| | |
|
The Plaintiff claims the 28 October 2014 letter made known to the Defendant that he was infringing the Plaintiff’s patent. The Defendant however continued to offer the Devices for sale, and failed, refused and/or neglected to pay the Plaintiff any license fees.13
The Plaintiff thus claimed a delivery up of the Devices, an account of profits for the sale of the Devices or damages to be assessed, interest and costs.14
The Defence and counterclaim InvalidityThe Defendant’s defence is two-fold. First, the Defendant alleges that the Patent in Suit is and has always been invalid.15 In this respect, the Defendant filed particulars of objection against the Patent in Suit pursuant to O 87A r 3(2) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed).
The Defendant alleges that the Patent in Suit is not a patentable invention because it is not novel and does not involve an inventive step,16 citing the following documents as prior art:
| |
|
To continue reading
Request your trial-
IIa Technologies Pte Ltd v Element Six Technologies Ltd
...RPC 3 (refd) Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] 1 SLR 856, CA (folld) Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] 3 SLR 1334, HC (folld) LG Philips LCD v Tatung (UK) [2007] RPC 21 (refd) Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd [2007] 1 SLR(R) 1......
-
IIa Technologies Pte Ltd v Element Six Technologies Ltd
...towards interpreting the patent claims and working the invention disclosed therein (see Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] 3 SLR 1334 (“Lee Tat Cheng (HC)”) at [54]; Genelabs Diagnostics Pte Ltd v Institut Pasteur and another [2000] 3 SLR(R) 530 (“Genelabs (CA)”) at [61]–[......
-
Lee Tat Cheng v Maka GPS Technologies Pte Ltd
...court below (“the Judge”) found that the Patent was valid, but had not been infringed (see Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2017] SGHC 48 (“the Judgment”)). He also granted the Respondent injunctive relief in respect of what he found were the Appellant’s groundless threats of ......
-
Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others
...for revocation was only brought in respect of the asserted claims (see [6]-[7]). Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2017] SGHC 48 (“Lee Tat Cheng”), a case this court recently decided, was similarly one in which the counterclaim for revocation was only in respect of those assert......
-
Intellectual Property Law
...at [94]. 197 National University Hospital (Singapore) Pte Ltd v Cicada Cube Pte Ltd [2017] SGHC 53 at [99]. 198 [2017] 3 SLR 771. 199 [2018] 3 SLR 1334. 200 Towa Corp v ASM Technology Singapore Pte Ltd [2017] 3 SLR 771 at [22]. 201 Towa Corp v ASM Technology Singapore Pte Ltd [2017] 3 SLR 7......