Validity | Novelty | Inventive Step | Infringement | Groundless Threat | Expert Witness | Patent Construction
The judgment in Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2017] SGHC 48 concerned an infringement action and an application for a declaration of infringement brought by Mr. Lee Tat Cheng (“the Plaintiff”), proprietor of Singapore Patent No. 87795. It further related to a counterclaim of revocation/invalidity and groundless threats of infringement proceedings brought by Maka GPS (“the Defendant”).
The patent in suit was for an ‘automotive accident recordal system’, generally comprising a system controller, an optical recorder, a sensor and an ignition monitor. The Plaintiff contended that his patent was infringed under section 66(1) of the Patents Act and that, even after having issued two cease and desist letters, the Defendant still continued to infringe his patent.
In its counterclaim, the Defendant sought to revoke the patent on the ground that the patent was not a patentable invention and also sought a declaration of non-infringement, a declaration that the threats within the cease and desist letters were unjustified, and an injunction to restrain the Plaintiff from continuing to issue such threats.
Patent Construction
The Judge emphasized the importance of claim construction in determining the essential elements of the patent in suit. With regard to Claim 1, the two main points of dispute were the “ignition monitor” and the “signal sent by the ignition monitor”.
Firstly, the Plaintiff argued that an ignition monitor simply monitors the amplitude of the direct current voltage in the ignition system and not the engine or engine ignition activities. The defendant construed the words separately, with reference to standard dictionary definitions, to collectively mean a device that regularly, periodically or continuously examines firing activities of an internal combustion engine. The Judge disagreed with the latter definition and accepted the Plaintiff’s purposive interpretation.
Secondly, the Plaintiff argued that transmission of electrical power is sufficient to constitute a “signal”, whereas the defendant contended that “signal” refers to the conveyance of information about a certain phenomenon. In this instance, the judge favoured the plain and ordinary meaning set out by the defendant.
Expert Witness
In coming to his decision, the Judge dealt with the issue of whether the defendant’s expert witness was a person skilled in the art. The Judge affirmed the Court of Appeal’s observation in Mühlbauer AG v Manufacturing Integration Technology Ltd [2010] 2 SLR 724 that “a person skilled in the art need not be assume knowledge and expertise that goes beyond what a reasonable person skilled in art would possess, and the person does not need to be someone who possesses extraordinary knowledge and expertise.” The Judge was satisfied that the defendant’s expert was able to assist the court in viewing the patent claims through the eyes of a person skilled in the art, given his qualifications, work experience, and common general knowledge of the subject matter of the patent.
Validity
The Defendant cited five prior art documents and contended that Claims 1-8 were not novel and did not involve an inventive step.
The case for lack of novelty was based purely on one prior art document (published as PCT/IB95/00503); the main point of contention was whether this patent implicitly disclosed an “ignition monitor” which provides the means to send a signal to the system controller on detection of ignition voltage. The Judge, having defined the “dual functions” of the term “ignition monitor” using the purposive approach, found that this document did not anticipate Claim 1 of the patent. The Judge further emphasized the two essential steps of disclosure and enablement in reaching his conclusion.
However, with respect to Claims 2-8, the judge stated that “it does not follow that the novelty of subsequent claims must ipso facto stand or fall on the fate of the independent claim (Claim 1).” The judge accordingly found that Claims 2-8, despite containing additional features which were not novel, were so when analysed in light of Claim 1 – the independent claim which they related to.
The case for lack of inventive step, on the other hand, relied upon a ‘mosaic’ of all five prior art documents, as well as ‘common general knowledge’. The Judge, applying the test used in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59, considered that it would not be obvious to try the particular solution devised by using the “ignition monitor” in Claim 1. The Judge ruled that there was an inventive step, and therefore, found that the patent was valid.
Infringement
Three types of devices, the MX5, the MX6, and the QB6, all marketed by the Defendant under the name “RoadCorder”, were alleged to have infringed the patent. For each of MX5, MX6, and QB6, Claims 1, 2, 3, 5, 6, 7 and/or 8 were of concern. In its defence, Maka GPS contended that there was no infringement since the three essential elements of Claim 1 were not found in each of the devices and that Claims 2-8 consequently did not infringe by virtue of dependency to Claim 1. The judge agreed with the Defendant’s position and found that, on all grounds, none of the three devices infringed upon the patent.
Groundless threat
With regard to the counterclaim for groundless threats of infringement proceedings, following a review of Section 77 of the Patents Act, the judge held that the cease and desist letters, which demanded fees and damages in lieu of the Plaintiff’s enforcement of his strict legal rights, constituted threats. On the grant of the reliefs, the judge affirmed the Court of Appeal’s decision in SingSung Pte Ltd v LG Electronics Pte Ltd [2016] 4 SLR 86, albeit in the context of copyright law, but highlighted the prescriptive nature of Section 77(2) of the Patents Act. The judge held that the Defendant was entitled to be granted relief, but was of the view that a declaration that the threats are unjustified was not necessary and, further, declined to make an award of damages. The judge agreed to grant an injunction against the continuance of the threats.
Conclusion
In conclusion, the judge found that the patent was novel and inventive – and, therefore, valid. However, the Plaintiff’s patent was not infringed. The judge also found that there was a groundless threat of infringement proceedings and an injunction against the continuance of the threats was granted to the Defendant.