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
• Plaintiff Counsel: Ismail bin Atan and Koh Kai Ling Angeline (Salem Ibrahim LLC)
• Date: 13 March 2017
• Docket Number: Suit No 228 of 2015
• Hearing Date: 30 September 2016,04 August 2016,02 August 2016,05 August 2016,03 August 2016
• Subject Matter: Groundless threat,Novelty,Validity,Infringement,Inventive step,Patents and Inventions
• Published date: 14 April 2018
• Defendant Counsel: Bryan Manaf Ghows and Khadijah binte Yasin (Via Law Corporation)
• Court: High Court (Singapore)
• Citation: [2017] SGHC 48
• Year: 2017

George Wei J: Introduction

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 facts

The 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:

Claim	Description
1	A recording system, for installation in or on a vehicle, comprising a system controller, at least one optical recorder, at least one sensor and an ignition monitor, the ignition monitor providing means to send a signal to the system controller on detection of an ignition voltage, the system controller bring connected to the at least one optical recorder to switch on operation thereof on receiving said ignition monitor signal, wherein the at least one sensor is provided to send a signal to the system controller on detection of a deceleration or impact, the system controller providing means to switch off the at least one optical recorder after a fixed interval after receiving the sensor signal.
2	A recording system as claimed in Claim 1 further comprising a standby power supply and a timer switch connected to the at least one sensor, the standby power supply being connectable to the at least one optical recorder on operation of the timer switch.
3	A recording system as claimed in Claim 1 or Claim 2 wherein the at least one optical recorder is provided with an internal memory store.
4	A recording system as claimed in Claim 1 or Claim 2 wherein the at least one optical recorder is connected to a separate memory store.
5	A recording system as claimed in any preceding claim wherein the at least one sensor is an accelerometer.
6	A recording system as claimed in any one of Claims 1 to 4 wherein the at least one sensor is an impact detector.
7	A recording system as claimed in any preceding claim wherein the at least one optical recorder is a digital camera.
8	A recording device as claimed in any of Claims 1 to 6 wherein the at least one optical recorder is a digital camcorder.

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 (ie, those just before and after the accident) are stored in memory.

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 Marbella MX5 HD Digital Recorder (“MX5”); Marbella MX6 HD Digital Recorder (“MX6”); and Marbella QB6 HD Digital Recorder (“QB6”). (Collectively, “the Devices”)

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 letters

It 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 MX5 (only), the Defendant had infringed the Patent in Suit. The Plaintiff demanded that the Defendant execute a Letter of Undertaking to cease selling the MX5 immediately and to, within seven days of the Letter of Undertaking:⁹ deliver up all units of the MX5 in its possession; pay the sum of $50,000 as damages allegedly suffered by the Plaintiff; and pay the sum of $2,000 for the Plaintiff’s legal and investigative costs.

Some eight months later, in the second letter dated 28 October 2014 (“the 28 October 2014 letter”), the Plaintiff claimed that all the three Devices had infringed the Patent in Suit. The letter stated that the Plaintiff was minded not to enforce its strict legal rights, provided that the Defendant, within seven days of the 28 October 2014 letter:¹⁰ Signed a Letter of Undertaking, acknowledging that it had infringed the Patent in Suit and agreeing to the terms detailed in (b)–(e) below; Accounted to the Plaintiff the number of units of each product sold, and paid the sum of $12 per unit sold as a license fee; Entered into a Licence Agreement for the future sale of the Devices; Paid costs of $3,750 for the expert opinion obtained to confirm that the Devices infringed the Patent in Suit; and Paid costs of $7,500 for the investigation fees and professional fees incurred with regards to the infringement of the Patent in Suit by the Devices.

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 case

On 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

Product	Infringing particulars
MX5	MX5 comprises all the features of Claim 1 of the Patent in Suit;
MX5 comprises all the features of Claims 2, 3, 5, 6, 7 and/or 8 of the Patent in Suit.
MX6	MX6 comprises all the features of Claim 1 of the Patent in Suit; MX6 comprises all the features of Claims 2, 3, 5, 6, 7 and/or 8 of the Patent in Suit.
QB6	QB6 comprises all the features of Claim 1 of the Patent in Suit; QB6 comprises all the features of Claims 2, 3, 4, 5, 6, 7 and/or 8 of the Patent in Suit.
MX5, MX6 and/or QB6	Claim 4 of the Patent in Suit is infringed when:
	an external (and separate) memory store is offered to the customers, for free, at the same time when these customers purchase MX5, MX6 and/or QB6, for use with MX5, MX6 and/or QB6; and/or the Devices’ optical recorder is connected to a separate (and external) memory store (in the form of a memory card.

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 Invalidity

The 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:

Prior Art	Document
D1

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