Singapore Challenges ‘Actavis’ Doctrine of Equivalents

by mirandah

Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] SGCA 18

Introduction

In the recent decision of Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] SGCA 18, the Singapore Court of Appeal (the “Court”) reaffirmed the law on patent construction in Singapore and clarified the Singapore position in relation to the UK Supreme Court’s decision in Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48 (“Actavis”).

The Court also clarified the approach in granting of relief in the context of groundless threats of patent infringement proceedings.

Background

Lee Tat Cheng (the “Appellant”) is the proprietor of Singapore Patent No 87795 (the “Patent”). The Patent concerns an “automotive accident recordal system and process.” The Appellant commenced a patent infringement action against Maka GPS Technologies Pte Ltd (the “Respondent”), who distributes and offers in-vehicle cameras (“the Devices”) for sale.

The Respondent, in turn, denied the claim and contended that the Patent was invalid and counterclaimed against the Appellant for making groundless threats of infringement.

The High Court found, inter alia, that the Patent was valid, but had not been infringed (reported in Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2017] SGHC 48).

Appeal

On Question of Infringement

The Court analysed whether the Patent had been infringed firstly by determining the scope of the monopoly conferred by the Patent, and secondly, whether the Devices disclosed all three disputed essential features of Claim 1 of the patent, which was the relevant claim in this appeal.

With regard to the scope of monopoly, the Appellant contended that the decision in Actavis, which imported the “doctrine of equivalents” with regard to patent construction into UK law, ought to be applied in this case.  The Court, in order to address the applicability of the doctrine of equivalents in Singapore, traced the development of patent construction pre-Actavis before considering whether the Singapore court should adopt the same position as the UK Supreme Court.

Specifically, the Court identified that the law on patent construction and the determination of patent infringement in the UK pre- Actavis is largely governed by:

  • (a) the House of Lords’ decision in Catnic Components Limited and another v Hill & Smith Limited [1982] RPC 183 (“Catnic”);
  • (b) the UK Patents Court’s decision in Improver Corporation and others v Remington Consumer Products Limited and others [1990] FSR 181 (“Improver”); and
  • (c) the House of Lords’ decision in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 (“Kirin-Amgen”).

Patent construction in Singapore has been aligned with these precedent-setting decisions prior to Actavis.

The Court then considered the decision in Actavis and the reasons by which the Supreme Court for the very first time imported the “doctrine of equivalents” in UK. It was stated that the rationale behind the UK Supreme Court’s adoption of the “doctrine of equivalents” was primarily to give precedence to Article 2 of the Protocol on the Interpretation of Article 69 of the European Patent Convention on the Grant of European Patents in governing the interpretation of s 125(1) of the UK Patents Act 1977. Although s 113 of the Singapore Patents Act mirrors s 125 of the UK Act, it is not the standard position of Singapore to follow legal compromises made by the UK to EU law.

With that backdrop, the Court ruled that Actavis should not be applied in Singapore for the following reasons:

  • The approach set out in Actavis is inconsistent with s 113 of the Singapore Patents Act as it extends the protection conferred by a patent to go beyond the scope of the claims in the patent, purposively construed.
  • The purposive approach strikes the right balance between the need to afford fair protection to the patentee and the need to provide a reasonable degree of certainty to third parties. Applying Actavis, and thereby extending scope of protection, would shift this balance too far in favour of the patentee.
  • Applying Actavis in Singapore may give rise to undue uncertainty, specifically through the ex post facto analysis that would be necessary to focus on how the patented invention works in practice, at the date of the alleged patent infringement, rather than focusing purely on what the patentee’s intended scope of monopoly was at the time of the patent application.

In summary, the Court concluded that the correct approach to determine the scope of the protection conferred by a patent remains the purposive construction of the claims – what would the words used in the patent claims convey to the notional skilled person at the date of the patent application?

 

Analysis of the Judge’s finding of non-infringement 

The three disputed features of Claim 1 of the patent were: (i) the “ignition monitor”, (ii) the “means to send a signal”, and (iii) the “means to switch off at least one optical recorder after a fixed interval”.

With regard to feature (i), two main issues were considered: (a) what constituted part of the ignition system; and (b) whether Claim 1 required the ignition monitor to be directly wired to the primary circuit of the vehicle’s ignition system. The Court affirmed the High Court’s findings and rejected the Appellant’s case on the first disputed essential feature for the following reasons:

  • The notional skilled person would not understand the ignition system described in Claim 1 to include the vehicle’s battery by reading the Patent’s specification. The construction of Claim 1 also suggests that the term “ignition monitor” would not include DC voltage from or produced by the vehicle’s battery;
  • Claim 1 requires the ignition monitor to be directly connected to the ignition system of the vehicle, and not indirectly connected through the vehicle’s battery; and
  • As opposed to the invention in the Patent, the current sensors in the Devices are not monitoring “ignition voltage”.

In reference to feature (ii), the Court considered whether, on a purposive construction of Claim 1, the mere supply of voltage or electrical power can constitute a “signal.” The Court again found that the High Court Judge’s interpretation was correct and rejected the Appellant’s case for the following reasons:

  • The notional skilled person would construe the term “signal” to be the conveyance of information or data;
  • The Patent specification expressly distinguished between a “signal” and mere “power supply”.
  • A finding that the transmission of voltage or electrical power itself is the “signal” would cast doubt on the validity of the Patent.

Lastly, with regard to feature (iii), the Court considered how the notional skilled person would construe the term “optical recorder” in the context of Claim 1 before construing how the term “switch off” would be understood. The Court construed the term “optical recorder” borne out by the other claims and the specification of the Patent to mean an optical capture device, such as a camera or camcorder. Given this construction of the term “optical recorder”, it follows that to switch off the optical recorder cannot refer to the locking of the storage medium, but must instead refer to the switching off of the optical capture device.

The Court upheld the High Court Judge’s finding of non-infringement in relation to the three disputed essential features of Claim 1 and dismissed the appeal.

 

On Granting Relief under s 77 of the Patents Act

The Appellant contended that the High Court Judge erred in granting injunctive relief to the Respondent in respect of the finding of the Appellant’s groundless threats of infringement proceedings.

Following a review of s 77 of the Patents Act and s 200 of the Copyright Act, the Court disagreed with the High Court Judge’s finding that the grant of relief is mandatory once a claim for groundless threats of infringement proceedings has been made out. Instead, the Court clarified that the grant of relief in respect of groundless threats is ultimately discretionary, involving a fact-sensitive inquiry as to whether the action was warranted and whether any relief was required.

The Court held that it was inappropriate to enforce an injunction against the Appellant and thus allowed the appeal in this respect.

 

Conclusion

After a detailed and elaborate analysis of the law on patent construction in the UK and Singapore, the Court has decided not to adopt the Actavis decision for the reasons stated above. The Court, by using purposive construction of the claims, also affirmed the Judgment of the High Court.

The Court’s rationale in overturning the High Court’s grant of an injunction as relief for groundless threats of infringement affirms the fact that the scope of this area of intellectual property law requires further clarification in Singapore.