Martek Biosciences Corporation v Cargill International Trading Pte Ltd

• Jurisdiction: Singapore
• Judgment Date: 16 February 2012
• Date: 16 February 2012
• Docket Number: Originating Summons No 1418 of 2009
• Court: High Court (Singapore)

Martek Biosciences Corp

Plaintiff

and

Cargill International Trading Pte Ltd

Defendant

[2012] SGHC 35

Tay Yong Kwang J

Originating Summons No 1418 of 2009

High Court

Evidence—Proof of evidence—Onus of proof—Whether respondent bore onus of adducing evidence to refute novelty of claim

Evidence—Witnesses—Respondent seeking to revoke patent—Whether actual partiality rather than apparent partiality was test for purposes of determining whether expert evidence should be discounted

Patents and Inventions—Inventive step—Respondent seeking to revoke patent—Whether court would substitute own judgment in complete absence of evidence as to whether something would or would not be obvious to skilled reader

Patents and Inventions—Inventive step—Respondent seeking to revoke patent—Whether hindsight had to be avoided in assessing whether invention involved inventive step

Patents and Inventions—Inventive step—Respondent seeking to revoke patent—Whether mosaicing allowed in assessing if there was inventive step—Whether mosaicing permitted in obviousness inquiry if it would not be obvious to skilled addressee to mosaic different pieces of prior art

Patents and Inventions—Novelty—Respondent seeking to revoke patent—Whether guideline in European Patent Office Guidelines for Examiners was correct test for novelty

The applicant (‘Martek’) was the proprietor of the Singapore Patent No 42669 (‘the Patent’), which was granted by IPOS on 30 March 1999. On 20 January 2006, the respondent (‘Cargill’) filed an application to revoke the Patent on the ground that the invention was not a patentable invention under the Patent Act (Cap 221, 2005 Rev Ed) (‘the Act’), and on the ground of insufficiency. Martek filed an application to amend the claims of the Patent on 6 September 2006, and the amendments were advertised and no opposition was received by the Intellectual Property Office of Singapore (‘IPOS’) during the period open to opposition.

From 9 to 12 February 2009, the application for revocation was heard before the Deputy Registrar of Patents and the Principal Assistant Registrar of Patents (‘the Tribunal’). There were two expert witnesses for Martek, Dr Barclay and Dr Kyle, and two expert witnesses for Cargill, Dr Puah and Dr Nga. The Tribunal decided that Cargill succeeded in its application to revoke the Patent. The Tribunal concluded that all four claims were novel over the prior art cited, but held that each of them respectively lacked the element of inventive step because it would have been obvious to a skilled person to combine the teachings in the relevant prior art to reach the claims in the Patent. In its decision, it also held that it treaded with caution in relying on Dr Nga's evidence given that he had admitted during crossexamination that his views were made with the benefit of hindsight. The Tribunal also drew little assistance from Dr Phua's evidence as he did not appear to possess the relevant expertise to assist the Tribunal in the hearing. The Tribunal also held that although the Respondent initially pleaded the issue of insufficiency, it was subsequently not pursued before it.

Held, allowing the applicant's appeal and dismissing the respondent's appeal:

(1) Whether the patent disclosed the invention clearly and completely for it to be performed by a person skilled in the art as required by s 80 (1) (c)of the Act (‘the insufficiency issue’) had to be answered from the point of view of the person skilled in the art. Accordingly, Cargill had failed to show how it could canvass the insufficiency issue without having led evidence from its own expert witnesses during the hearing before the Tribunal as to the sufficiency of the Patent: at [35].

(2) When a party challenged the validity of a patent, the onus was on that party to adduce evidence to refute the novelty of the claims. Here, Cargill had not discharged its burden of proof: at [44] and [45].

(3) A correct test for novelty was set out in para 4.13 of the European Patent Office Guidelines for Examiners, C-III, where it stated that ‘if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty’: at [44].

(4) For the purposes of determining whether the evidence of an expert should be discounted, the relevant test was one of actual partiality rather than apparent partiality. Here, though Cargill challenged the reliability of Martek's witnesses on the basis of their lack of objectivity, Cargill did not adduce any evidence of actual partiality: at [46] and [55].

(5) If only a limited number of experts were available due to the specific nature of the technology or due to the expertise involved, it should not come as a surprise if these pre-eminent experts had certain work experience which might at first sight have appeared to threaten their independence: at [46].

(6) When assessing whether an invention involved an inventive step, it was trite law that hindsight had to be avoided. Here, Dr Nga's evidence was based on hindsight and this was fatal to his evidence as to the inventiveness of the Patent: at [53].

(7)‘Mosaicing’ of prior art might well have been allowed in assessing whether or not there was an inventive step. However, this would not be so in the obviousness inquiry if it would not have been obvious to the skilled addressee to ‘mosaic’ the different pieces of prior art. Here, Cargill proffered no basis on which to conclude that it would have been obvious to the skilled reader to ‘mosaic’ the relevant teachings: at [55].

(8) In determining issues of patentability, the court was always entitled to examine an expert's evidence based on logic and rationality. However, the tribunal or court would not simply substitute its own judgment in the complete absence of any evidence as to whether something would or would not have been obvious to the skilled reader: at [56], [64], [72]and [76].

Genelabs Diagnostics Pte Ltd v Institut Pasteur [2000] 3 SLR (R) 530; [2001] 1 SLR 121 (folld)

Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] 1 All ER 667 (folld)

Martek Biosciences Corp v Cargill International Trading Pte Ltd [2011] 4 SLR 429 (folld)

Mölnlycke AB v Procter & Gamble Ltd [1994] RPC 49 (folld)

Mühlbauer AG v Manufacturing Integration Technology Ltd [2010] 2 SLR 724 (folld)

Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd [2005] 3 SLR (R) 389; [2005] 3 SLR 389 (folld)

Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (folld)

Evidence Act (Cap 97, 1997 Rev Ed)

Patents Act (Cap 221, 2005 Rev Ed) ss 13 (1) , 14 (1) , 15, 80 (1) (a) (consd) ; ss 80 (1) (c) , 80 (2)

Rules of Court (Cap 322, R 5, 2006 Rev Ed)

Stanley Lai SC and Vignesh Vaerhn (Allen & Gledhill LLP) for the applicant

Daniel Koh (Eldan Law LLP), Wendy Low Wei Ling (Rajah & Tann LLP) for the respondent.

Judgment reserved.

Tay Yong Kwang J

Introduction

1 This is an appeal by the applicant (‘the Applicant’) against the decision (‘the Decision’) of the Deputy Registrar of Patents and the Principal Assistant Registrar of Patents (‘the Tribunal’) dated 3 November 2009, holding that the respondent (‘the Respondent’) succeeded in its application to revoke the Applicant's Singapore Patent No 42669 (‘the Patent’). This is the second appeal by the Applicant from a decision of a tribunal of the Intellectual Property Office of Singapore (‘IPOS’). The first concerned another patent, Singapore Patent P-No 49307, which the respondent had similarly applied to revoke and in respect of which I delivered judgment in Martek Biosciences Corp v Cargill International Trading Pte Ltd [2011] 4 SLR 429 (‘Martek v Cargill (No 1)’).

2 For the reasons which follow, I allow the Applicant's appeal against the Decision here and dismiss the Respondent's appeal in so far as it relates to certain aspects of the Decision.

3 Unless otherwise indicated, all references to statutory sections below are to the Patents Act (Cap 221, 2005 Rev Ed) (‘the Act’).

The facts

4 The parties are the same as in Martek v Cargill (No 1). The Applicant is Martek Biosciences Corporation, a company incorporated under the laws of the State of Delaware of the United States of America. The Respondent is Cargill International Trading Pte Ltd, a company incorporated in Singapore.

5 The Applicant is the proprietor of the Patent, which is entitled ‘Arachidonic Acid and Methods for the Production and Use Thereof’. The Patent was granted by IPOS on 30 March 1999.

6 On 20 January 2006, the Respondent filed an application to revoke the Patent on the following grounds:

(a) that the invention was not a patentable invention under s 80 (1) (a) of the Act;

(b) insufficiency, ie, that the specifications of the Patent did not disclose the invention clearly and completely for it to be performed by a person skilled in the art as required by s 80 (1) (c)of the Act.

7 The Applicant filed an application to amend the claims of the Patent on 6 September 2006. The amendments were advertised in the Patents Journal on 30 October 2006 and no opposition was received by IPOS within the period during which they were open for opposition. The allowability of these amendments is not in issue. They were not challenged by the Respondent. The Tribunal held that the amendments were allowable as they did not result in the specifications disclosing any additional matter nor extending the protection conferred by the Patent. The proceedings before IPOS and before me therefore proceeded on the basis of the claims as amended.

8 At a Case Management Conference on 28 April 2008, IPOS Hearing Officers informed the parties of their intention to cause the Patent to be re-examined under s 80 (2) of the Act. The Respondent followed by filing the request for re-examination and the Patent was subsequently re-examined by an examiner from the Australian...