Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others

• Jurisdiction: Singapore
• Judge: Justin Yeo AR
• Judgment Date: 04 May 2017
• Neutral Citation: [2017] SGHCR 6
• Court: High Court (Singapore)
• Docket Number: Suit No 1229 of 2016 (Summons No 1221 of 2017)
• Published date: 10 May 2017
• Year: 2017
• Hearing Date: 05 April 2017,04 May 2017
• Plaintiff Counsel: Mr Jevon Louis (Ravindran Associates)
• Defendant Counsel: Ms Leow Jiamin (Rajah & Tann Singapore LLP)
• Subject Matter: Patents and Inventions,Validity,Defence,Groundless Threats,Revocation,Civil Procedure,Pleadings,Striking Out
• Citation: [2017] SGHCR 6

Justin Yeo AR:

This is an application by the plaintiff, Sun Electric Pte Ltd (“the Plaintiff”), under O 18 r 19(1)(a) to (d) of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) (“Rules of Court”), to strike out parts of the Defence and Counterclaim (Amendment No 1) dated 17 February 2017 (“Defence and Counterclaim”) and the Particulars of Objection dated 5 January 2017 (“Particulars of Objection”), on the basis that these purport to put in issue claims in a patent that the Plaintiff has not asserted.

Background facts

The Plaintiff is the registered proprietor of a Singapore patent granted based on Singapore Patent Application No 10201405341Y (“the Patent”). The Patent is in respect of a power grid system and method of determining power consumption at one or more building connections in the power grid system.

The 1st Defendant, Sunseap Group Pte Ltd, is the parent company of a group of related subsidiary companies, which includes the 2nd Defendant, Sunseap Energy Pte Ltd, and the 3rd Defendant, Sunseap Leasing Pte Ltd (collectively, “the Defendants”).

The Plaintiff’s claim against the Defendants in this suit is for alleged infringement of the Patent. The Patent consists of 12 claims. Of these, the Plaintiff alleged that the Defendants have jointly or severally infringed claims 1, 3, 4, 5, 7, 9, 10 and 11 by carrying out a number of alleged acts listed in the Plaintiff’s Particulars of Infringement (Amendment No 1) dated 2 February 2017. The Plaintiff did not allege infringement of the remaining claims in the Patent, ie claims 2, 6, 8 and 12 (“the Unasserted Claims”).

The Defendants have, by way of defence, denied all allegations of infringement of the Patent. The Defendants have also filed a counterclaim against the Plaintiff, of which the following claims are relevant for the purposes of the present application: an order that the Patent be revoked; and remedies for groundless threats under s 77 of the Patents Act (Cap 221, Rev Ed 2005) (“the Patents Act”), namely: a declaration that the Plaintiff has made unjustifiable threats; an injunction against the continuance of the threats; and damages in respect of any loss which the Defendants have sustained by the threats.

Based on the Defence and Counterclaim, the Defendants have put the validity of the entire Patent, including the Unasserted Claims, in issue. These are also found in the Particulars of Objection.

The present application

Section 82(1) of the Patents Act stipulates a list of five categories of proceedings in which the validity of a patent may be put in issue. Beyond this list, the validity of a patent “may not be put in issue in any other proceedings” (s 82(2) of the Patents Act). Section 82 of the Patents Act reads, in relevant part, as follows:

Proceedings in which validity of patent may be put in issue

82.—(1) Subject to this section, the validity of a patent may be put in issue — (a) by way of defence, in proceedings for infringement of the patent under section 67 or proceedings under section 76 for infringement of rights conferred by the publication of an application; (b) in proceedings under section 77; (c) in proceedings in which a declaration in relation to the patent is sought under section 78; (d) in proceedings before the Registrar under section 80 for the revocation of the patent; or (e) in proceedings under section 56 or 58.

(2) The validity of a patent may not be put in issue in any other proceedings and, in particular, no proceedings may be instituted (whether under this Act or otherwise) seeking only a declaration as to the validity or invalidity of a patent.

…

The Plaintiff objects to the Defendants putting the validity of the Unasserted Claims in issue. This is because each claim in a patent stands on its own, and even within a single patent, each individual claim has to be assessed separately (see Astrazeneca AB v Ranbaxy (Malaysia) Sdn Bhd [2012] SGHC 7 at [8] (“Ranbaxy”)). As such, given that the Plaintiff has not relied on the Unasserted Claims, it contends that the Defendants should not be allowed to seek invalidation of the Unasserted Claims.

The Plaintiff therefore brought the present application, seeking a striking out of the following: First, paragraphs 4 and 14 of the Defence and Counterclaim, to the extent that the validity of claims 2, 6, 8 and 12 of the Patent are put in issue. The paragraphs provide as follows: 4. Save that it is admitted that the Singapore Patent Application No.10201405341Y (the “Patent”) was filed on 29 August 2014 and was subsequently granted on 8 June 2016, paragraph 3 of the SOC is denied. The Defendants aver that the Patent is and has at all material times been invalid for the reasons set out in the Defendants’ Particulars of Objection.

…

14. Without prejudice to the generality of the foregoing, the Defendants seek to rely on the invalidity of the Patent as set out in the Particulars of Objection filed herein as a defence to the Plaintiff’s allegations of infringement. Second, paragraph 16 of the Defence and Counterclaim, which provides as follows: 16. The Defendants aver that the Patent has always been invalid for the reasons set out in the Particulars of Objection served herewith. Third, paragraph 1 of the Particulars of Objection, to the extent that the validity of claims 2, 6, 8 and 12 of the Patent are put in issue. The paragraph provides as follows: 1. The alleged invention, which is the subject of the Patent is not a patentable invention, is invalid, and ought to be revoked by reason of Section 80(1)(a) of the Patents Act (Cap 221) on the basis that: a. the alleged invention lacks novelty; … b. the alleged invention of the Patent involves no inventive step. …

The Defendants resisted the application on the basis that they were entitled to put in issue the validity of the entire Patent, including the Unasserted Claims, on each of the grounds stipulated in [11] below.

Issues

The issues before this court are whether the Unasserted Claims are properly put in issue by the Defendants on any of the following grounds: by way of defence against the Plaintiff’s infringement claim, pursuant to s 82(1)(a) of the Patents Act; by way of a counterclaim for groundless threats of infringement proceedings, pursuant to s 82(1)(b) of the Patents Act; and by way of a counterclaim for revocation of the Patent, pursuant to s 80 (read with s 91) and s 82(1)(d) of the Patents Act.

The parties agreed that if any one or more of the above grounds are made out, the present application for striking out will fail. I turn to analyse each of the grounds in turn.

Section 82(1)(a) of the Patents Act – defence against infringement claim

The first issue is whether the Unasserted Claims can be put in issue by way of defence against the Plaintiff’s infringement claim, pursuant to s 82(1)(a) of the Patents Act.

Parties’ arguments

Counsel for the Plaintiff (“Mr Louis”) argued, citing the authority of Ranbaxy, that the Unasserted Claims cannot be put in issue by way of defence.

In Ranbaxy, the defendant applied to the Singapore Health Sciences Authority for the grant of product licences pursuant to the Medicines Act (Cap 176, Rev Ed 1985) (“the Medicines Act”). The plaintiff instituted proceedings against the defendant, seeking a declaration that certain claims (ie claims 1, 2, 3, 11 and 12) of its patent would be infringed by the defendant’s intended acts of infringement. The defendant, in its Defence and Counterclaim and Particulars of Objection, put in issue the validity of other claims (ie claims 4, 5, 6, 7, 8, 9, 10, 17 and 18) that had not been asserted.

The court in Ranbaxy held that the defendant was not entitled to put in issue the validity of claims that had not been asserted by the plaintiff. The reasons were as follows: First, s 82(1)(a) of the Patents Act cannot be read to give the defendant the right to put in issue the validity of a patent, where the plaintiff has only alleged infringement of some (but not all) of the claims in the patent. This is by virtue of claim independence and as a matter of logic – putting a claim in issue does not function as a defence to infringement of another claim. See Ranbaxy at [8]–[9]. Second, the fact that the plaintiff may subsequently assert the other unasserted claims is more properly dealt with by the court as and when the situation arises. The court would, at that time, have to consider inter alia whether the plaintiff’s fresh assertions of the previously unasserted claims should be struck out as an abuse of the court’s process. In particular, the plea of res judicata may apply. See Ranbaxy at [5]–[6] and [10]. Third, there are practical considerations as to why a defendant should not be allowed to put in issue claims that have not been asserted. Allowing a defendant to do so would be “putting the cart before the horse” (Ranbaxy at [29]), and would result in the expending of unnecessary costs and time. While the plaintiff may subsequently attempt to bring infringement proceedings for the previously unasserted claims, this may well be struck out as an abuse of process (see [16(b)] above).

In summary, Ranbaxy stands for the proposition that, for the purposes of s 82(1)(a) of the Patents Act, a defendant can only put in issue claims that have been asserted to be infringed; there is no carte blanche for a defendant to put in issue the validity of the entire patent.

With regard to Ranbaxy, counsel for the Defendants (“Ms Leow”) raised the following three arguments: First, Ranbaxy ought to be distinguished from the present case. Unlike the claim in Ranbaxy, which concerned a declaration of intended infringement under the Medicines Act, the present case relates to infringement proceedings commenced under the Patents Act. Second, the reasoning in Ranbaxy ought to be disregarded, because that...