V-Pile Technology (Luxembourg) SA and Others v Peck Brothers Construction Pte Ltd

• Jurisdiction: Singapore
• Judgment Date: 03 December 1997
• Date: 03 December 1997
• Docket Number: Suit No 1740 of 1995
• Court: High Court (Singapore)

V-Pile Technology (Luxembourg) SA and others

Plaintiff

and

Peck Brothers Construction Pte Ltd

Defendant

[1997] SGHC 322

MPH Rubin J

Suit No 1740 of 1995

High Court

Patents and Inventions–Infringement–Construction of patent specification–Purposive approach–Section 113 (1) Patents Act (Cap 221, 1995 Rev Ed)–Patents and Inventions–Infringement–Whether material differences in essential features between defendant's machine and plaintiffs' invention–Whether variant of invention had material effect on the way invention worked–Patents and Inventions–Revocation–Validity of patent–Test of novelty–Test of inventive step–Whether patent for new use of known device valid

The plaintiffs were the registered proprietors of a patent (“the patent”) for their “V-pile jacking machine”, a pile driving apparatus used, in particular, in a jack piling system. The patent was granted in the UK and subsequently re-registered in Singapore in 1993.

The defendant was in the construction business and specialised in piling works. In mid-1993, the plaintiffs engaged the defendant as a subcontractor for piling works at various projects in Singapore. For the purpose of such works, the defendant hired the V-pile jacking machine from the plaintiffs. The defendant, however, encountered frequent pile breakages during the use of the plaintiffs' machine thereby causing it losses in time and opportunity costs. This, coupled with other increased costs, strained the relationship between the parties. Thereafter, the defendant decided to provide jack-in piling services without the use of the plaintiffs' V-pile jacking machine. The defendant designed its own machine which was developed to overcome the problems it had encountered with the plaintiffs' machine. In late January 1994, the defendant started using its own machine in a jack-in piling job.

After the plaintiffs discovered the defendant was using its new equipment, they commenced the present action on the ground that the defendant had infringed their patent, in particular, claims 1, 2, 4, 5, 6, 8 and 9 of the patent. It was claimed that the defendant's machine was fabricated by essentially copying the plaintiffs' machine. The defendant denied infringement and contended that its machine was not a variant of the plaintiffs'. Even if its machine was a variant, there was no infringement since there were differences between them which had a material effect on the way each machine worked. In its counterclaim, the defendant argued that the plaintiffs' patent was invalid and should be revoked on the basis that it lacked novelty and did not involve an inventive step. The plaintiffs' response was to rely on the commercial success of their invention, both in Singapore and elsewhere, to evidence the fact that the patent had overcome defects in the prior art.

Held, dismissing the claim and the counterclaim:

(1) Section 113 (1) of the Patents Act and relevant judicial comments supported a purposive rather than a purely literal construction of a patent specification. Thus, the description and drawings which accompanied a specification could be used to interpret the claims: at [60] to [63].

(2) There were material differences in the essential features between the defendant's equipment and the plaintiffs' invention. First, the defendant's equipment did not possess the element of indirect jacking, a much-vaunted feature of the plaintiffs' invention. Second, the jack means was placed on only one side of the plaintiffs' invention while the defendant used twin jacks on either side of the pile. Third, there were fundamental engineering differences in how the plaintiffs' invention used the jack-push method whereas the defendant's equipment used the jack-pull method. Fourth, the defendant's equipment did not have the so-called “transmission means” that was present in the plaintiffs' invention. Lastly, the reaction means in the two machines were configured very differently. The plaintiffs' invention had a H-profiled column as an essential feature while the defendant's equipment used a columnless design instead. In view of all the evidence, claim 1 of the plaintiffs' patent was not infringed by the defendant. As the remaining claims were dependent upon claim 1, they consequently failed as well. In any event, the evidence showed that the defendant did not infringe the other claims: at [73] to [82].

(3) Even if the defendant's machine were to be regarded as a variant of the plaintiffs' invention, there would be no infringement as the defendant's variant had a material effect on the way the machine worked: at [94].

(4) The plaintiffs' patent was valid and should not be revoked as there were sufficient differences between the plaintiffs' invention and the prior art in mechanical engineering details. A patent for a new use of a known device was good and could be supported if the new use involved practical difficulties which the patentee had been the first to see and to overcome by his own ingenuity: at [108].

Brugger v Medic-Aid Ltd (No 2) [1996] RPC 635 (refd)

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

Gadd and Mason v Manchester Corp (1892) 9 RPC 516 (folld)

General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 (refd)

Improver Corp v Remington Consumer Products Ltd [1990] FSR 181 (folld)

Improver Corp v Raymond Industrial Ltd [1990] 2 HKC 28; [1991] FSR 233, CA (refd)

Rosedale Associated Manufacturers Ld v Carlton Tyre Saving Co Ld [1960] RPC 59 (refd)

Van der Lely NV v Bamfords Limited [1963] RPC 61 (refd)

Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (folld)

Patents Act (Cap 221,1995 Rev Ed)s 113 (1) (consd);ss 13,14 (1),14 (2), 15,80 (1) (a)

Registration of UK Patents Act (Cap 271, 1985 Rev Ed)

Patents Act 1977 (c 37) (UK)s 125 (1)

Morris John and S Sivananthan (Drew & Napier) for the plaintiffs

Toh Kok Seng and Mark Lim (Lee & Lee) for the defendant.

Judgment reserved.

MPH Rubin J

Background

1 The dispute in this suit revolves around the plaintiffs' patented piling apparatus known in the market as the “V-pile jacking machine” and the defendants' piling machine known as the “Peck's pull-in Pile Installation machine”. The plaintiffs allege that the defendants' machine infringes their patent whereas the defendants contend that their machine is different in all essential integers from the plaintiffs' apparatus. They further claim that the plaintiffs' patent is not valid as it is not novel and does not possess any inventive step and therefore should be revoked.

2 The first plaintiffs are the registered proprietors of United Kingdom Patent No 2217366 which was registered in Singapore on 29 September 1993 as Patent No 979 of 1993 (“the patent”) and it relates to a pile driving apparatus, in particular to a jack piling system. The second plaintiffs are the first plaintiffs' worldwide licencees and the third plaintiffs, their Singapore licencees.

3 In order for the reader to visualise the piling apparatus thus developed and employed by the plaintiffs, a photograph as well as a schematic drawing of the apparatus provided by the plaintiffs to the court appear respectively herein as annexures 1 and 2.

4 According to a brochure provided by the plaintiffs (PB-236 to PB-249), their apparatus utilises a “unique indirect hydraulic jacking technology”. It states that “indirect hydraulic jacking” is a patented method of driving piles, comprising a hydraulic ram and a special linkage mechanism mounted parallel to the pile being jacked. The ram applies a downward thrust to the pile via the patented linkage connected to a thrust plate at the top of the pile. The system drives piles quietly and continuously without hammering and vibration, effectively pressing the piles into the ground. As the pile driving load is applied continuously, all piles can be load-tested to at least twice the required working load as part of the installation procedure. The system is mounted on a two-directional mechanism that allows precise positioning of piles and facilitates rapid group piling. Jacking reaction is provided by ballasting the deck with kentledge (in this case apparently heavy cement boulders) to the required pile loadings (PB-237).

Pleadings

5 The plaintiffs allege in their statement of claim that the defendants have infringed their patent in the manner appearing in the particulars of infringement and as a result pray for an injunction and damages against the defendants.

6 The particulars of infringement provided by the plaintiffs read as follows:

1. 1 Subsequent to the registration in Singapore of the patent referred to in the statement of claim and prior to the issue of the writ of summons in this action, the defendants have infringed the patent, and in particular claims 1, 2, 4, 5, 6, 8 and 9 in the specification thereof.

2. 2 Claims 1, 2, 4, 5, 6, 8 and 9 of the patent are as follows:

   Claim 1

   A pile driving apparatus for driving piles into the ground comprising:

   Jack means for exerting a pile driving force in one direction onto a pile to be driven via transmission means; and reaction means for providing a reaction force to the pile driving force; wherein the longitudinal axis of the pile lies substantially parallel to but spaced apart from the one direction, and the transmission means is configured to transmit the driving force from the one direction to the top of the pile throughout the pile driving operation thereby enabling at least a part of the jack means to extend alongside the pile.

   Claim 2

   A pile driving apparatus according to claim 1, including a column for receiving the pile along its length on one side thereof, the length of the pile substantially corresponding to the length of the column.

   Claim 4

   A pile driving apparatus according to claim 2 or 3, wherein the transmission means comprises a first thrust member for receiving a piston of the jack means, a...