Seiko Epson Corporation v Sepoms Technology Pte Ltd

• Jurisdiction: Singapore
• Judgment Date: 25 May 2007
• Date: 25 May 2007
• Docket Number: Suit No 699 of 2005 (Registrar's
• Court: High Court (Singapore)

Seiko Epson Corp

Plaintiff

and

Sepoms Technology Pte Ltd and another

Defendant

[2007] SGHC 81

Lai Siu Chiu J

Suit No 699 of 2005 (Registrar's Appeal No 375 of 2006)

High Court

Patents and Inventions–Infringement–Liability to account for profits–Whether lack of requisite knowledge of patent may be pleaded by infringing party after consent judgment reached to limit period of infringement for accounting purposes–Whether infringing party should be ordered to furnish accounts for period of infringement asserted by party alleging infringement–Section 69 (1) Patents Act (Cap 221, 2005 Rev Ed)

The plaintiff was, inter alia, a manufacturer of ink jet printers. The defendants manufactured and offered for sale compatible and refillable ink cartridges, which could be used to replace ink cartridges produced by the manufacturers of printers such as those manufactured by the plaintiff. The plaintiff and the defendants both owned patents relating to ink cartridges.

The plaintiff commenced a suit on 5 October 2005 against the defendants for patent infringement of Singapore Patent No SG46602 (“the Patent”) (“the Suit”). On 2 August 2006, the parties reached a consent judgment in which the defendants admitted liability for the infringement of the Patent. The terms of the consent judgment included an account of profits by the defendants. In compliance with that term, on 30 October 2006, the defendants filed in court their accounts commencing from the date of the writ (5 October 2005) to 31 July 2006 (“the accounting period”). The defendants' director deposed that the defendants first acquired knowledge of the Patent on 7 October 2005 when they were served with the statement of claim in the Suit. Prior thereto, the defendants did not receive any “cease and desist” letter from the plaintiff nor were the defendants informed orally or in writing by the plaintiff of the existence of the Patent or of the defendants' infringement. Consequently, the defendants' director was of the view that the defendants were only liable to account to the plaintiff from 7 October 2005 to 2 August 2006.

The plaintiff was dissatisfied with the defendants' accounts as filed, and filed an objection on 13 November 2006 against the accounts, pointing out that the accounted period differed from the period of infringement which it contended was from the date of publication (20 February 1998) of the Patent until the date of the consent judgment. The plaintiff also objected to the affidavit of the defendants' director, taking issue with those paragraphs where the latter had related the events from which the defendants acquired the requisite knowledge of the Patent.

The plaintiff followed up on its objections by filing Summons No 5337 of 2006 (“the Application”) requiring the defendants to file a further set of accounts for the period 20 February 1998 to 30 September 2005. The assistant registrar dismissed the Application with costs to the defendants, accepting the submission of counsel for the defendants that a summons hearing was not an appropriate forum for a determination of the date when the account of profits by the defendants should commence. That was best left to the determination of the Registrar conducting the inquiry as to the appropriate amount of damages to be paid by the defendants to the plaintiff under the consent judgment. The plaintiff appealed against the assistant registrar's decision.

Held, dismissing the appeal:

(1) Section 69 (1) of the Patents Act (Cap 221, 2005 Rev Ed) limited the defendants' liability for damages for infringement and/or account of profits to the period when they knew or had reasonable grounds for supposing that the infringed patent existed. It was therefore well within the rights of the defendants to assert and subsequently prove at the inquiry that they had no knowledge of the existence of the Patent until they were served with the writ in the Suit. Equally, the defendants were entitled to rely on the second limb of s 69 (1) to limit their liability to account to the plaintiff for profits: at [16].

(2) The consent judgment was final only on the issue of liability for patent infringement by the defendants. The consent judgment was very similar to an interlocutory judgment, with damages to be assessed, because the issue of profits due to the plaintiff resulting from the infringing acts of the defendants had to be resolved later at an inquiry to be conducted by the Registrar. Just like a hearing before the Registrar for assessment of damages pursuant to an interlocutory judgment, evidence would have to be led at the inquiry and witnesses would have to testify on the issue of when the defendants acquired knowledge of the Patent. It was therefore premature of the plaintiff to raise objections at this stage on the accounts filed by the defendants: at [17] and [18].

(3) The court would be imposing on...