Peng Lian Trading Co v Contour Optik Inc and Others

• Jurisdiction: Singapore
• Judge: Chao Hick Tin JA
• Judgment Date: 24 June 2003
• Neutral Citation: [2003] SGCA 25
• Docket Number: Civil Appeal No 126 of 2002
• Date: 24 June 2003
• Published date: 17 December 2003
• Year: 2003
• Plaintiff Counsel: Alban Kang, Ms Karol Goh, Koh Chia Ling (Alban Kang Mahtani & de Silva)
• Citation: [2003] SGCA 25
• Defendant Counsel: Respondent (in person - absent)
• Court: Court of Appeal (Singapore)
• Subject Matter: Whether invention amounts to new use of old contrivance,Whether court entitled to scrutinise expert evidence,Patents and Inventions,Finding of inventive role,Inventive step,Role of appellate court,Finding of inventive step

Delivered by Chao Hick Tin JA

1 This appeal concerns the alleged infringements of two patents relating to spectacle frames, each comprising a primary and an auxiliary frame in which the auxiliary frame is attached to the primary frame by magnetic means. The primary frame is for housing prescription lenses while the auxiliary frame is for tinted lenses.

2 The two patents are numbered 47151 and 60169, with priority dates of 10 June 1996 and 13 December 1996 respectively. The owners of the said patents are the third respondent and the first respondent respectively, with the second respondent, a Singapore company, being the exclusive licensee of the patents. The third respondent was also the inventor of the patents. Two claims were made in respect of patent 47151 and four in respect of patent 60169.

3 The material difference between the two patents lies in the positioning of the magnets. In the first patent, a pair of magnets is mounted at the temple area of the primary frame (one at each arm), near the hinge, and a second pair of magnets is mounted in the corresponding locations on the arms of the auxiliary frame. In the second patent, one or two magnets are mounted on the bridge of the primary frame and the corresponding number of magnets are mounted on the bridge of the auxiliary frame.

4 Two actions were instituted by the respondents (who were the plaintiffs in the actions and will hereinafter be referred to as “the plaintiffs”) for alleged infringements of the two patents. In one action the defendants were Peng Lian Trading Co (“Peng Lian”) and another party. In another action, the defendants were two other entities. Peng Lian was alleged to have infringed both patents. All the defendants disputed that the patents were valid; they also denied any infringement.

5 In relation to patent 47151, the trial judge found that while claim 1 thereof was not valid for lack of novelty, claim 2 was a patentable invention. As regards patent 60169, the judge found that the first two claims were not valid for lack of novelty but claims 3 and 4 were patentable inventions. However, the judge also found that the plaintiffs had not proven that Peng Lian had infringed the patents. For completeness, we should add that the plaintiffs’ actions against all the other defendants for infringements had also failed. The present appeal by Peng Lian is against that part of the decision below which held that claim 2 of patent 47151 and claims 3 and 4 of patent 60169 are valid.

Claims in the patents

6 In order to better appreciate the issues in this appeal, it is necessary that we set out what inventive concepts were alleged to have been incorporated in the claims made in the two patents. For patent 47151, three inventive concepts were claimed:

(i) top-down attachment of the magnets at the temporal position of the frames;

(ii) use of separate projections for housing the magnets, which were welded to both arms of the frame;

(iii) positioning each projection lower than the upper side of each arm of the auxiliary frame, such that the projection would extend downwards to the arms or magnetic member of the primary frame, thereby creating a hooking effect.

Whereas claim 1 of the patent incorporated only the first two concepts, claim 2 encompassed all three concepts.

7 For claim 1, the judge found that it lacked novelty because of prior art as depicted in a photograph of the Pentax Twincome (“Twincome”) published in the Nihon Kogyo Shimbun. The question which confronted the court below was whether the projection for housing the magnet (“the housing”) was die cast together with each arm of the spectacle frame or whether it was welded onto the arm. While on a visual examination of the photograph the position was not entirely clear, the judge having heard the evidence of the experts from both sides found that the housing, as depicted in the photograph, was probably welded onto the arm of the spectacle. In coming to this view, he took into account the fact that the plaintiffs’ expert, Mr Dirk Michielsen, accepted that it was common general knowledge that a cheaper method of manufacture was to weld, rather than cast, the housing onto each arm of the frame.

8 The defendants accepted that because of the hooking effect, claim 2 satisfied the requirement of novelty. The judge also held that it satisfied the requirement of an inventive step. As this aspect is the subject of Peng Lian’s appeal, more will be said about it later.

9 As regards patent 60169, the following were the inventive concepts which were alleged to have been incorporated:-

(i) an eye-glass device where the auxiliary frame can be attached to the primary frame with only one hand by means of magnetic members secured at the bridges of the frames, the bridge of the auxiliary frame extending over and engaging with the bridge of the primary frame.

(ii) An eye-glass device with the above features and where the members of only one of the bridges of the primary and auxiliary frames need to be magnets and the other bridge needs only to be of magnetizable substance.

Whereas claims 1 and 2 incorporated only concept (i), claims 3 and 4 incorporated both the concepts.

10 The judge found that claims 1 and 2 were anticipated by a Miki design which was filed some ten days before the priority date claimed for patent 60169. In the Miki design, the magnetic contact was on the vertical plane of the bridge. While the plaintiffs said that the magnetic attachment in patent 60169 was on the horizontal plane, i.e., in a top-down fashion, this was not stated in claims 1 and 2. The plaintiffs instead wanted the court to read such a restriction into those claims when it was not so spelt out. Indeed, in a drawing accompanying the invention filed with the Patent Office, the magnetic contact was shown to be on a vertical plane. In view of the fact that claims 1 and 2 did not limit the monopoly claimed to only top down attachment, the trial judge held that the invention was anticipated by the Miki design and was not new.

11 While the judge found claims 1 and 2 to be invalid for lack of novelty, being anticipated by the Miki design, he found claims 3 and 4 to be patentable inventions. However, he also found that the plaintiffs had obtained the patent by a misrepresentation, namely, by stating that the corresponding US patent was the same or substantially the same invention as that in patent 60169 when it was not so. Accordingly, he held that the plaintiffs were not entitled to the priority date claimed, the date on which the US patent was filed.

12 At this juncture, we ought to add that the plaintiffs had, in fact, filed a notice of appeal against all the findings of the trial judge, in so far as the findings were not in their favour. However, several days before the date fixed for the hearing of their appeal, the plaintiffs indicated a change of mind and, through their counsel, withdrew their appeal on the scheduled hearing day.

13 However, even though the trial judge did not find any of the defendants liable to the plaintiffs for patent infringement, Peng Lian has appealed against that part of the judge’s decision as indicated in ¶5 above. Peng Lian asserts that those claims are not valid for lack of an inventive step. This is the issue which will be examined subsequently in this judgment.

14 In accordance with the plaintiffs/respondents’ instructions, their counsel obtained leave of court to discharge himself from further acting for them, and thus he took no part in the hearing of Peng Lian’s appeal.

Inventive step: the law

15 An invention, to be patentable must, in accordance with s 13(1) of the Patents Act, satisfy the following three conditions:-

(i) the invention is new;

(ii) it involves an inventive step; and

(iii) it is capable of industrial application.

Only condition (ii) is relevant to this appeal.

16 What would constitute an inventive step is set out in s 15 of the Patents Act which reads:-

“An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of s 14(2) and without having regard to s 14(3).”

17 In the often quoted case of Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 at 73, the English Court of Appeal expounded a four-step approach to determine whether something involves an inventive step:-

(i) identify the inventive concept embodied in the patent;

(ii) assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and impute to him what was, at that date, the common general knowledge in the art in question;

(iii) identify what, if any, differences exist between the cited prior act and the alleged invention;

(iv) ask whether viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.

This court had in previous...