Lee Tat Cheng v Maka GPS Technologies Pte Ltd

• Jurisdiction: Singapore
• Judge: Sundaresh Menon CJ,Andrew Phang Boon Leong JA,Judith Prakash JA
• Judgment Date: 06 April 2018
• Neutral Citation: [2018] SGCA 18
• Published date: 11 April 2018
• Date: 06 April 2018
• Year: 2018
• Hearing Date: 10 November 2017
• Plaintiff Counsel: Lim Ying Sin Daniel (Joyce A Tan & Partners LLC)
• Defendant Counsel: Bryan Manaf Ghows and Wan Rui Jie Erwin (Taylor Vinters Via LLC)
• Court: Court of Appeal (Singapore)
• Citation: [2018] SGCA 18
• Docket Number: Civil Appeal No 73 of 2017

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

This appeal concerns a patent for an in-vehicle camera (“the Patent”). The appellant, who is the proprietor of the Patent (“the Appellant”), alleged that the respondent (“the Respondent”) had infringed the Patent by offering three models of in-vehicle cameras for sale. The Respondent denied the claim and contended that the Patent was invalid; and, alternatively, that if the Patent were found to be valid, it had not been infringed. The Respondent also claimed that the Appellant had made groundless threats of infringement proceedings. Following a trial of the matter, the judge in the 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 infringement proceedings. The issues on appeal pertain to the Judge’s finding of non-infringement and his grant of injunctive relief to the Respondent. A supplementary issue was also raised as to the costs order made at the end of the trial.

Background

The Appellant is the proprietor of the Patent known as the “automotive accident recordal system and process” (Patent No 87795). The Patent was first filed in 1999, published on 16 April 2002, and granted on 31 May 2002. Since then, the Appellant has renewed the Patent on a yearly basis.

In essence, the patented invention (“the Invention”) is an in-vehicle camera which is powered automatically and begins recording images when the driver turns the ignition system on. The camera records in a cyclical manner, with later images overwriting the earlier ones, so that at any one time, only the most recent images are stored. The recording of images stops in two instances: at the end of each journey when the ignition system is turned off; and upon impact to or sudden deceleration of the vehicle, such as in the event of an accident. In the latter instance, a sensor is triggered and the main power supply to the camera is cut. Thereafter, the camera continues recording using a standby power source, but only for a fixed interval of around five to ten seconds. As a result, images captured just before and after an accident are stored in memory and protected from being overwritten. In this way, the Invention is able to record and preserve “visual data leading up to the event of a dangerous situation requiring sharp braking or an accident”.

There are 22 claims in the Patent, of which eight were relevant to the Appellant’s case at the trial. For the purposes of this appeal, only claim 1 of the Patent (“Claim 1”) is relevant. The facts and findings in relation to the other disputed claims can be found in the Judgment and we do not propose to reproduce them here. As for Claim 1, it reads as follows:

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 being 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.

The Respondent distributes and offers for sale in-vehicle cameras which include the following devices (collectively referred to as “the Devices”): Marbella MX5 HC Digital Recorder (“MX5”); Marbella MX6 HC Digital Recorder; and Marbella QB6 HD Digital Recorder.

Relying on s 66(1) of the Patents Act (Cap 221, 2005 Rev Ed) (“the PA”), the Appellant alleged that the Respondent had infringed Claim 1 of the Patent by offering the Devices for sale. According to the Appellant, the Devices comprised all the features in Claim 1. On this basis, the Appellant sought orders for the delivery up of the Devices, an account of profits in respect of the Devices sold to date or damages to be assessed, and other reliefs.

The Respondent raised two alternative defences. First, it filed particulars of objection against the Patent under O 87A r 3(2) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) alleging that the Patent was and had always been invalid because the relevant claims in the Patent were not novel and did not involve an inventive step. Second, the Respondent maintained that in any event, the sale of the Devices did not infringe the Patent because three essential features of Claim 1 of the Patent (“the three disputed essential features of Claim 1”) were not found in the Devices. These features were: the existence of an ignition monitor; a means to send a signal from the ignition monitor to the system controller on detection of an ignition voltage; and a means to switch off at least one optical recorder after a fixed interval following the receipt of a sensor signal.

The Respondent also counterclaimed for remedies under s 77 of the PA, which provides for the grant of an injunction, a declaration or damages where groundless threats of infringement proceedings are found to have been made. The Respondent claimed that the Appellant had made such threats by issuing two cease-and-desist letters to it. The first letter claimed that the Respondent had infringed the Patent by selling MX5 (only) and sought a letter of undertaking from the Respondent to: (a) cease doing so immediately; (b) deliver up all units of MX5 in its possession; and (c) pay damages as well as the Appellant’s legal and investigative costs. The second letter, sent about eight months later, similarly informed the Respondent that it had infringed the Patent; but this time, the Appellant relied on the fact that the Respondent had been selling all three of the Devices. In the second letter, the Appellant further indicated that he would not enforce his strict legal rights provided that the Respondent agreed to: (a) sign a letter of undertaking acknowledging the infringement; (b) pay a licence fee in respect of each unit of the Devices that it had sold; (c) enter into a licence agreement for the future sale of the Devices; (d) pay costs for the expert opinion obtained by the Appellant; and (e) pay the Appellant’s professional and investigative fees.

The decision below

The Judge found that: (a) the Patent was valid; (b) the Devices did not infringe claims 1 to 8 of the Patent; and (c) relief under s 77 of the PA for groundless threats of infringement proceedings should be granted.

The Judge commenced his analysis by construing the terms “ignition monitor” and “signal” in Claim 1. He held that: The notional skilled person would have understood the term “ignition monitor” to refer to “a device that monitors the amplitude of the DC voltage in the ignition system of a vehicle” (see the Judgment at [64]). This device would also have been understood to monitor the “ignition” status of the vehicle’s ignition system by detecting ignition voltage of about ten to 15 volts and lasting longer than five seconds. In addition, the voltage detected must be “from or produced by the ignition system, and not the voltage from any other source” [emphasis in original] such as the spark plug, the starter motor or the secondary circuit of the ignition system (see likewise [64] of the Judgment). The ignition activity monitored need not necessarily involve the starting of the vehicle’s internal combustion engine so long as it gave rise to a detectable DC voltage stemming from the primary circuit of the ignition system. The term “signal” entailed “a conveyance of information about the voltage; it [was] insufficiently captured by the passing of voltage (electrical power) itself” [emphasis in original] (see the Judgment at [70]). The mere transmission of electrical power in and of itself did not constitute a “signal”. In the context of Claim 1, the “signal” referred to the information sent upon the detection of DC voltage of between ten to 15 volts, which would in turn trigger the switching on of the in-vehicle camera.

Turning next to the issue of validity, the Judge held that the Invention in the Patent was novel and inventive, and therefore valid. On the first question of novelty, the Judge considered the prior art in the form of other recording systems for installation in vehicles. He held that the Invention was novel because it disclosed a “dual-function” ignition monitor. The first function was to monitor or detect “ignition voltage, that is, voltage emanating from the ignition system” (see the Judgment at [98]). Once an ignition voltage in excess of the threshold voltage of between ten and 15 volts was detected for more than five seconds, the ignition monitor served its second function, which was to “transmit a signal, conveying the information that the ignition system ha[d] been switched on, to the system controller” (see likewise [98] of the Judgment). This dual-function ignition monitor was not disclosed in the prior art. As for inventiveness, the Judge was of the view that the use of an ignition monitor was “central” to the Invention and constituted the inventive step.

The Judge made a finding of non-infringement, agreeing with the Respondent that the Devices did not have the three disputed essential features of Claim 1 set out at [7] above. Relying on his earlier construction of the key terms, the Judge found that: The Devices did not have the first disputed essential feature, namely, an “ignition monitor” as construed, because the Devices did not require ignition voltage in order to work. Instead, they would “switch on and begin recording whenever they receive[d]...