Seiko Epson Corp v Sepoms Technology Pte Ltd and Another

• Jurisdiction: Singapore
• Judge: Lai Siu Chiu J
• Judgment Date: 25 May 2007
• Neutral Citation: [2007] SGHC 81
• Subject Matter: Liability to account for profits,Section 69(1) Patents Act (Cap 221, 2005 Rev Ed),Whether infringing party should be ordered to furnish accounts for period of infringement asserted by party alleging infringement,Patents and Inventions,Infringement,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
• Date: 2007
• Published date: 29 May 2007
• Defendant Counsel: Yeong Zee Kin (Rajah & Tann)
• Court: High Court (Singapore)
• Plaintiff Counsel: Koh Chia Ling with Ang Kai Hsiang (Alban Tay Mahtani & De Silva)

25 May 2007

Lai Siu Chiu J:

1 Seiko Epson Corporation, the plaintiff, filed Registrar’s Appeal No. 375 of 2006 (“the Appeal”) against the decision of the Assistant Registrar in Summons No. 5337 of 2006 (“the Application”) in refusing to order Sepoms Technology Pte Ltd and JAL Technology (S) Pte Ltd, the first and second defendants respectively, to file a further account for the period 20 February 1998 to 30 September 2005.

2 The Appeal came on for hearing before me. I dismissed the Appeal and the plaintiff has now filed a notice of appeal (in Civil Appeal No. 19 of 2007) against my decision.

The facts

3 The plaintiff is inter alia a manufacturer of ink jet printers. The defendants manufacture and offer for sale compatible and refillable ink cartridges, which can 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 own patents relating to ink cartridges.

4 The plaintiff commenced this suit on 5 October 2005 against the defendants for patent infringement of Singapore Patent No. SG46602 (“the Patent”). In their defence and counterclaim, the defendants denied their acts were infringing and if their acts infringed, the defendants averred that they did not know nor had reasonable grounds to believe that the Patent existed. The defendants further challenged the validity of the Patent in their counterclaim.

5 On 2 August 2006, the parties reached a consent judgment in the following terms before Tan Lee Meng J:

(a) the Patent was valid and had been infringed by the defendants.

(b) the defendants, whether by themselves, their directors, officers, servants, agents or any of them or otherwise howsoever were restrained from making, disposing of, offering to dispose of, keeping for disposal or otherwise, using and/or importing, ink cartridges under the trademark SEPOMS with 43 model numbers (which were set out) and were restrained from directing, procuring, instigating, causing, enabling or assisting others to do so.

(c) there would be an account of profits by the defendants.

(d) the defendants would pay the plaintiff interest at the rate of 6% per annum on the accounted sum from the date of the writ of summons to the date of judgment.

(e) the defendants were to deliver up forthwith to the plaintiff (or destroy such destruction to be verified on oath) all articles in relation to which the Patent had been infringed.

(f) the defendants would pay the plaintiff the costs of this suit to be taxed if not agreed.

(g) the counterclaim was withdrawn with costs to be paid by the defendants to the plaintiff to be agreed or taxed.

(h) parties were given liberty to apply.

6 In compliance with prayer (c) in the consent judgment, for the purpose of the forthcoming inquiry, the defendants filed (separately) in court on 30 October 2006, their accounts commencing from the date of the writ (5 October 2005) to 31 July 2006 (“the accounted period”). The defendants’ director Chou Khow Shing (“Chou”) followed by filing his Affidavit of Evidence-in-Chief on 27 November 2006, wherein he deposed that the defendants first acquired knowledge of the Patent on 7 October 2005 when they were served with the statement of claim in this 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, he was of the view that the defendants were only liable to account to the plaintiff from 7 October 2005 to 2 August 2006.

7 Chou explained that the accounts for the period 1 October 2005 to 30 April 2006 were prepared based on the defendants’ audited accounts for the financial year ending 30 April 2006. For the next period 1 May 2006 to 31 July 2006, the accounts were prepared based on the defendants’ existing accounts.

8 Chou deposed that the defendants had no reasonable grounds for supposing that the Patent existed, for a number of reasons which he detailed in his affidavit. He added that the defendants agreed to the consent judgment for “commercial practicality”.

9 The plaintiff was dissatisfied with the defendants’ accounts as filed and filed an objection on 13 November 2006 against both set of 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 Chou’s affidavit, taking issue with those paragraphs where Chou had related the events from which the defendants acquired the requisite knowledge of the Patent.

10 The plaintiff followed up by filing the Application. The Assistant Registrar dismissed the Application with costs to the defendants, accepting...