Ship's Equipment Centre Bremen Gmb H v Fuji Trading (Singapore) Pte Ltd

• Jurisdiction: Singapore
• Judgment Date: 23 June 2015
• Date: 23 June 2015
• Docket Number: Suit No 315 of 2010 (Summons No 2458 of 2013) and Suit No 738 of 2011 (Summons No 2455 of 2013)
• Court: High Court (Singapore)

Ship's Equipment Centre Bremen Gmb H

Plaintiff

and

Fuji Trading (Singapore) Pte Ltd and others and another suit

Defendant

[2015] SGHC 159

Lee Seiu Kin J

Suit No 315 of 2010 (Summons No 2458 of 2013) and Suit No 738 of 2011 (Summons No 2455 of 2013)

High Court

Patents and Inventions—Subject matter—Amendment of patent specification—Whether amendment of patent specification should be allowed—Sections 25 (5) and 84 (3) Patents Act (Cap 221, 2005 Rev Ed)

The plaintiff was the proprietor of, inter alia, a Singapore patent (‘the 370 Patent’) and a European patent (‘the European Patent’) for a coupling device used to secure shipping containers and commonly known as a twistlock.

The plaintiff amended the European Patent in the course of opposition hearing before the Opposition Division of the European Patent Office (‘EPO’) on 10 November 2010. The Opposition Division of the EPO found the European Patent to be invalid on 25 November 2010. The decision was upheld by the Appeal Board of the EPO on 26 November 2014.

On 5 May 2010 and 19 October 2011, the plaintiff commenced two separate suits for patent infringement. The defendants denied that there was any infringement and challenged the validity of the 370 Patent. The plaintiff then gave notice to the Registrar of Patents of its intention to amend the 370 Patent in the two suits on 18 December 2012 and 3 January 2013. The proposed amendments for the 370 Patent (which comprised of proposed amended claims 1 to 9) were identical to the amendments allowed by the Opposition Division of the EPO. Some of the defendants opposed the proposed amendments. The plaintiff applied for leave to amend the 370 Patent.

Held, dismissing the applications:

(1) The validity of a Singapore patent was a question for the Singapore courts to decide, although the EPO decision has persuasive value. The EPO found that the European Patent was invalid notwithstanding the amendments, but that did not mean that the 370 Patent would similarly be invalid. To contend that proposed amended claim 1 should be rejected because the 370 Patent would still be invalid would require the court to decide on the validity of the 370 Patent first. Such an approach should not be accepted in the present case where the issue of validity was scheduled to be heard after the applications for amendment had been decided: at [16] and [19] .

(2) Under the Patents Act (Cap 221, 2005 Rev Ed), the amendment of the specification of a patent would not be allowed if it disclosed additional matter, extended the protection conferred by the patent or did not meet the base-line criteria that the claim or claims had to be clear and concise and supported by the description. In the present case, proposed amended claims 4 to 9 did not meet the requirements under the Patents Act: at [22] , [24] , [25] , [82] , [83] , [86] , [87] , [90] , [100] , [103] , [105] , [108] , [118] , [122] and [124] .

(3) The power of the court to amend the specification of a patent was discretionary. In the present case, even if the requirements under the Patents Act were met, the court would have exercised the discretion to refuse the amendments in light of the undue delay and unfair advantage: at [125] , [147] , [149] and [153] to [156] .

Autoliv Development AB's Patent [1988] RPC 425 (refd)

B & R Relays Ltd's Application [1985] RPC 1 (refd)

Bean Innovations Pte Ltd v Flexon (Pte) Ltd [2001] 2 SLR (R) 116; [2001] 3 SLR 121 (refd)

Bonzel (T) v Intervention Limited (No 3) [1991] RPC 553 (refd)

Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (refd)

Clear Focus Imaging Inc v Contra Vision Ltd (10 April 2003) (UK) (refd)

Contour Optik Inc v Pearl's Optical Co Pte Ltd [2002] SGHC 238 (refd)

European Central Bank v Document Security Systems Inc [2007] EWHC 600 (Pat) (refd)

FE Global Electronics Pte Ltd v Trek Technology (Singapore) Pte Ltd [2006] 1 SLR (R) 874; [2006] 1 SLR 874 (refd)

First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR (R) 335; [2008] 1 SLR 335 (refd)

Instance v CCL Label Inc [2002] FSR 27 (refd)

Kimberly-Clark Worldwide Inc v Procter & Gamble Ltd [2000] FSR 235 (refd)

Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 (refd)

Main-Line Corporate Holdings Ltd v DBS Bank Ltd [2012] 4 SLR 147 (refd)

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

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

Ng Kok Cheng v Chua Say Tiong [2001] 2 SLR (R) 326; [2001] 3 SLR 487 (refd)

Novartis AG v Ranbaxy (Malaysia) Sdn Bhd [2013] 2 SLR 117 (refd)

Raychem Ltd's Applications [1986] RPC 547 (refd)

Siegfried Demel v Jefferson [1999] FSR 204 (refd)

Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] FSR 561 (refd)

Strix Ltd v Otter Controls Ltd [1995] RPC 607 (refd)

Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) Gmb H [2014] RPC 6 (refd)

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

V-Pile Technology (Luxembourg) SA v Peck Brothers Construction Pte Ltd [1997] 3 SLR (R) 981; [2000] 3 SLR 358 (refd)

Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2010] RPC 8 (refd)

Zipher Ltd v Markem Systems Ltd [2009] FSR 1 (refd)

Patents Act (Cap 221, 2005 Rev Ed) ss 25 (5) (b) , 25 (5) (c) , 84 (3) , 84 (3) (a) , 84 (3) (b) (consd) ;ss 83, 83 (1) , 113 (1)

Rules of Court (Cap 322, R 5, 2006 Rev Ed) O 87 A r 11

Low Chai Chong, Lee Ai Ming, Alvin Lim and Vernon Chua (Rodyk & Davidson LLP) for the plaintiff

Kwek Yiu Wing Kevin and Tan Yiting Gina (Legal Solutions LLC) for thefirstdefendant in S 315/2010

Jevon Louis (instructed), Lau Kok Keng and Wendy Low (Rajah & Tann Singapore LLP) for the second and third defendants in S 315/2010 and the defendants in S 738/2011.

Judgment reserved.

Lee Seiu Kin J

Introduction

1 This case concerns patents for a coupling device used to secure shipping containers and commonly known as a twistlock. In Suit No 315 of 2010 (‘S 315/2010’) and Suit No 738 of 2011 (‘S 738/2011’), the plaintiff commenced proceedings against two sets of defendants for alleged infringement of the patents. The defendants denied any infringement of the patents and counterclaimed to invalidate them for lack of novelty. Subsequently, the plaintiff applied under s 83 (1) of the Patents Act (Cap 221, 2005 Rev Ed) for leave to amend the claims of the patents. The issue before me is whether the plaintiff should be allowed to amend the patents.

2 For the reasons set out in this judgment, I dismiss the plaintiff's applications to amend the patents.

Facts

The plaintiff and its patents

3 The plaintiff, Ship's Equipment Centre Bremen Gmb H (‘the Plaintiff’), is the proprietor of two Singapore patents (collectively referred to as ‘the Plaintiff's Patents’):

(a) Singapore Patent SG 110370 (‘the 370 Patent’); and

(b) Singapore Patent SG 129978 (‘the 978 Patent’).

4 The Plaintiff obtained the 370 Patent pursuant to the Singapore patent application number 200500741-4 (‘the 370 Patent Application’), which was based on PCT application number PCT/EP 2003/004162 filed on 22 April 2003 (‘the PCT Application). The Plaintiff also filed the European patent application EP 03727334.9 (‘the European Patent Application’) based on the PCT Application. The European Patent Application was subsequently granted as European Patent EP 1534612 B 1 (‘the European Patent’).

Suit No 315 of 2010

5 On 5 May 2010, the Plaintiff commenced S 315/2010 against Fuji Trading (Singapore) Pte Ltd for infringing the Plaintiff's Patents by an offer of sale of a freight container coupling device known as FA-8. On 26 November 2010, the Plaintiff amended its statement of claim and joined Fuji Transport Systems Co Ltd and Taiyo Seiki Iron Works Co Ltd, as the second and third defendants in S 315/2010. It was alleged that the defendants in S 315/2010 had acted with a common design to infringe the Plaintiff's Patents. The second and third defendants denied the allegation of infringement. Among other things, they challenged the validity of the Plaintiff's Patents.

Suit No 738 of 2011

6 On 19 October 2011, the Plaintiff commenced S 738/2011 against Moby Dick Supplies Pte Ltd and ISS Equipment Pte Ltd for infringing the Plaintiff's Patents. Like the second and third defendants in S 315/2010, the defendants in S 738/2011 also challenged the validity of the Plaintiff's Patents.

Amendment of the 370 Patent

7 On 18 December 2012, the Plaintiff gave notice to the Registrar of Patents of its intention to amend the 370 Patent in S 315/2010. On 3 January 2013, the Plaintiff gave notice to the Registrar of Patents of its intention to amend the 370 Patent in S 738/2011. On 28 December 2012 and 30 January 2013, the Registrar of Patents published the advertisement for the Plaintiff's proposed amendments to the 370 Patent in the Patents Journal.

8 The proposed amendments to the 370 Patent, marked up against the claims of the patent as granted, are as follows:

1. A coupling piece for joining connecting two containers (35, 36) that are stacked one atop on top of the other, particularly on board ships, at their said corner fittings, comprising having a stop plate (21) and a coupling projection (22, 23) on each side of the said stop plate (21), of which the first said coupling projection (22) can be placed on the corner fitting of one said container (36) and the other second said coupling projection (23) is provided with a locking catch (28, 46, 54) for locking inside a corner fitting of the said other container (35), wherein the locking catch (28, 46, 54), when viewed in the longitudinal direction of the said containers (35, 36), is arranged laterally on the second said other coupling projection (23), characterized in that the locking catch (28, 54) has a sloping shoulder (34) on its top...