Ng Kok Cheng v Chua Say Tiong

• Jurisdiction: Singapore
• Judge: Judith Prakash J
• Judgment Date: 22 June 2001
• Neutral Citation: [2001] SGHC 143
• Date: 22 June 2001
• Subject Matter: Whether commercial success indicates non-obvious of patented product,Infringement,Test of obviousness,Whether defendant's product infringes plaintiff's patent,Patents and Inventions,Enabling disclosure,Commercial success of patented product,Whether invention obvious to person skilled in the art,Patent specification,Revocation,s 25(5) Patents Act (Cap 221, 1995 Ed),Whether non-compliance with s 25(5) Patents Act ground for revocation of patent,Patents Act (Cap 221, 1995 Ed) s 15,Inventive step,ss 25(4), 80(1)(c) Patents Act (Cap 221, 1995 Ed),Validity,Whether sufficient enabling disclosure by patent specification
• Docket Number: Originating Summons No 783 of 2000
• Published date: 11 November 2003
• Defendant Counsel: Alban Kang and Chow Kin Wah (instructed by Tan Loh & Wong)
• Court: High Court (Singapore)
• Plaintiff Counsel: Steven Seah and Adrian Kwong (Drew & Napier)

:

Introduction

This action involves the validity of a patent in respect of a lock. The plaintiff, Mr Ng Kok Cheng, is the proprietor of Singapore Patent No 66473 (`the patent`), the patent in question. He manufactures and sells locks using the brand name `Duro`. These Duro locks are said to be the embodiment of the patent.

The defendant, Mr Chua Say Tiong, also deals in locks through his business Singlock Trading Agency. Mr Ng`s claim is that Mr Chua has infringed the patent by disposing of or offering to dispose of locks that infringe the claims of the patent. Mr Chua denies that the patent is valid and that his Castle locks infringe it. He has counterclaimed for a declaration that the patent is invalid and for other remedies on the basis of groundless threat of infringement.

The basis of Mr Chua`s assertion that the patent is invalid and unenforceable is as stated in the re-amended particulars of objection which he filed on 16 February 2001. Three objections are stated. They are:

(1) that the specification of the patent does not disclose the invention/ clearly and completely for it to be performed by a person skilled in the art (and particulars of the objection are given);

(2) the alleged invention the subject of the patent is not a patentable invention in that it is not new, the subject matter thereof having formed part of the state of the art as of the date of filing of application for the patent (details of the prior art relied on are set out in the particulars); and

(3) the alleged invention is not a patentable invention in that it involves no inventive step, the subject matter thereof being obvious to a person skilled in the art having regard to the following matter which formed part of the state of the art as at the date of filing of application for the patent.

Background

The genesis of the patent was Mr Ng`s involvement in the early 1990s in the development of a lock designed to padlock the gates of HDB flats. These initial efforts were unsuccessful but subsequently one of Mr Ng`s friends produced a new padlock which he sold under the brand name `Rigoh`. This was a successful design and was copied by various manufacturers. By late 1995, there were 12 brands of locks used on HDB gates and most of these were of a similar design. The way in which these locks differed from previous padlocks was each had a main body and an auxiliary body which were attached at the time the locks were mounted onto the gates.

In Mr Ng`s opinion, the Rigoh lock and its lookalikes suffered from three disadvantages:

(1) the lock was not very secure as the auxiliary body could be easily detached from the main body;

(2) once mounted on the gate, it could not be re-used on another gate without removing and thereby damaging the plugs which were used to cover the screws or bolt attaching the auxiliary body to the main body; and

(3) the lock could only be mounted on the horizontal bar of the gate as opposed to at a height convenient to the user.

He therefore spent some time considering how these disadvantages could be overcome.

Apparently, Singapore does not manufacture locks. Many locks sold here are made in Taiwan which has a great deal of lock manufacturing expertise. Thus, in October 1995, Mr Ng went to Taiwan to meet a lock manufacturer who could put his ideas into effect. He met Mr Chiu Chen Hsiung, the president of a lock making company called F16 Manufacturing Co Ltd and explained to him the nature of the Rigoh type lock and his ideas for an improved version. Mr Chiu went to work and came up with a prototype lock for Mr Ng`s approval. Mr Ng then invited Mr Chiu to come to Singapore to have a look at the HDB gates and see for himself how the lock would be used on the gates. Mr Chiu came here in May 1996 and thereafter improved his design. The design of the lock was finalised in late 1997.

In May 1998, Mr Ng asked Mr Chiu if he could file a patent application for Mr Chiu`s lock in the latter`s name in Singapore. Mr Ng also asked Mr Chiu to assign the patent application to him. Mr Chiu agreed on both counts. On 29 May 1998, an application to patent the alleged invention was lodged in Mr Chiu`s name and this application was assigned to Mr Ng in October 1998.

In the meantime, Mr Chiu had manufactured the lock in bulk and the first shipment was sent to Mr Ng sometime in June or July 1998. The Duro lock was introduced to the Singapore market in mid 1998 and its sales figures were encouraging. According to Mr Ng, during the 15 months between July 1998 and October 2000 the sales of the lock had exceeded $1m. Mr Ng considered the Duro lock to be a commercial success.

Sometime prior to July 2000, Mr Ng noticed Mr Chua`s Castle lock being offered for sale by a number of retailers in the market. Having examined the Castle lock, he considered that it was almost identical to the invention which he had patented.

The patent was granted on 22 August 2000 and on 18 September 2000, through his solicitors, Mr Ng asked Mr Chua to cease and desist from manufacturing, selling and/or offering to sell the infringing Castle lock. Mr Chua did not respond to that request and this action was accordingly commenced by Mr Ng in September 2000.

Details of the patent

The invention patented by Mr Chiu is, according to the patent, a door lock and more particularly `a door lock which can protect an auxiliary body from detaching while the door lock is locked`. Mr Ng contends that the meaning of this statement or the object of the invention becomes clear when one reads the description of the prior art in the specification. In that description, the Rigoh type lock is described as a `conventional door lock`.

This description reads:

Referring to FIG. 1, a conventional door lock has a main body 8, an auxiliary body 81 coupling with the main body 8, a shackle bar 80 passing through the main body 8 and the auxiliary body 81, a cylinder 82 disposed in the main body 8, and two bolts 83 fastening the auxiliary body 81 and the main body 8 together. Since the heads of the bolts 83 are disposed on the auxiliary body 81 outward, the bolts 83 can be detached easily. After the bolts 83 are detached, the auxiliary body 81 can be detached also.

A clearly stated defect or weakness in the prior art is that the auxiliary body can be detached easily.

The detailed description of the invention reads:

Referring to FIGS. 2 to 7A, a door lock comprises a main body 1, an auxiliary body 2 coupling with the main body 1, a shackle bar 10 passing through the main body 1 and the auxiliary body 2, and a lock mechanism 3 disposed in the main body 1. A lateral cover 51 covers a lateral of the main body 1. An outer casing 5 encloses the main body 1. A side cover 61 covers a side of the auxiliary body 2. An outer housing 6 encloses the auxiliary body 2. A rod 20 is disposed between the main body 1 and the auxiliary body 2.

The shackle bar 10 has a distal end 101, an annular recess 102, and a round aperture 103.

The rod 20 has a pin hole 201 and a groove 202.

The main body 1 has a recess hole 11 receiving the shackle bar 10, a blind hole 12 receiving the rod 20, a periphery recess 13, a threaded hole 14 receiving an extended stud 17, a pin hole 16 receiving a pin 18, a through aperture 15, and a through hole 19.

The lateral cover 15 [ sic] has two lateral frames 511. The side cover 61 has a circular hole 612 and two side frames 611.

The outer casing 5 has a round hole 501. The outer housing 6 has a circular aperture 601.

The auxiliary body 2 has an upper hole 21, a lower hole 22, a periphery groove 26, and an extended aperture 25 receiving a first stud 24 and a second stud 23 in series.

The lock mechanism 3 comprises an upper cylinder 30 and a lower cylinder 30 disposed in the main body 1 in series, a coiled spring 312 and a drive key 31 disposed in the through hole 19, a compression spring 322 and a driven key 32 disposed in the through aperture 15, a helical spring 331 and a push key 33 disposed in the recess hole 11, a block 34 blocking the push key 33, the upper cylinder 30 having a hollow interior 41 and a semicircular protrusion 301 having an insertion channel 302, the lower cylinder 30 having a semicircular lobe 301, a reinforced casing 303 enclosing the semicircular protrusion 301, and a dustproof device 4 having a flexible plate 42 and two elastic elements 43 inserted in the hollow interior 41 of the upper cylinder 30, and an outer cover 40 covering the upper cylinder 30. The outer cover 40 has an insertion slot 401. The flexible plate 42 has a notch 421. The drive key 31 has a block end 311. The driven key 32 has a slant groove 321.

The outer cover 40 can protect the upper cylinder 30 against dusts [ sic].

The outer casing 5 can protect the main body 1 against bumping.

The outer housing 6 can protect the auxiliary body 2 against bumping.

The first stud 24 and the second stud 23 cannot be detached from outside.

Referring to FIG 8, two door plates 71 and 72 are disposed on two door posts 7. Each of the door plates 71 and 72 is connected to a plurality of door rails 70. The door lock hooks two door rails 70. The shackle bar 10 is inserted in the recess hole 11 of the main body 1. Therefore, the door lock of the present invention is locked.

Referring to FIG 9, the shackle bar 10 disengages from the recess hole 11 of the main body 1. The door lock can be removed from the door rails 70. Therefore, the door plates 71 and 72 can be opened.

The invention is not limited to the above embodiment but various modifications thereof may be made. Further, various changes in form and detail may be made without departing from the scope of the invention.

It is difficult to understand the above description without reference to the drawings. The drawings, fig 1 to fig 9, are therefore set out in App 1 to this judgment. For further clarity,...