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  • Nagasima Electronic Engineering Pte Ltd v APH Trading Pte Ltd[2005] 2 SLR 641; [2005] SGHC 59
    1996 although he was not sure 13 The registered design in my view is identical to the shape and configuration of model NERA 1000B model APH1001B and model NEE CS 2003 All of them pre date the registration date of 2 August 2000 Mr Moo said in evidence that model NERA 1000B was sold in 1996 and model APH1001B was sold in 1997 Mr Ngo himself said that he had already manufactured and sold electrical isolators exactly the same as model NEE CS 2003 in 1995 14 Mr Ngo further admitted that if the jack plug was excluded the registered design would be identical to the prior art The admission of Mr Ngo was recorded in the following cross examination Q Do you agree that the design of the electrical isolator casing and the two ports are identical to those in the NERA 1000B exhibit D2 or even the first defendant s APH1001B D4 and even your CS 2003 exhibit P5 A Yes I agree The applicable law 15 This case is governed by the provisions of the new RDA which replaced the former United Kingdom Designs Protection Act Cap 339 1985 Rev Ed Under para 2 of the Schedule to the RDA the plaintiff s registered design in the UK is deemed to be a registered design for the purposes of the RDA 16 The provisions of the RDA are almost identical to the provisions of the UK Registered Designs Act 1949 c 88 as amended by the UK Copyright Designs and Patents Act 1988 c 48 and set out in Schedule 4 thereof the UK Act Section 1 1 of the UK Act reads as follows In this Act design means features of shape configuration pattern or ornament applied to an article by any industrial process being features which in the finished article appeal to and are judged by the eye but does not include a a method or principle of construction or b features of shape or configuration of an article which i are dictated solely by the function which the article has to perform or ii are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part 17 It is now convenient to set out ss 2 1 and 5 2 of the RDA which read as follows a Section 2 1 design means features of shape configuration pattern or ornament applied to an article by any industrial process but does not include a a method or principle of construction or b features of shape or configuration of an article which i are dictated solely by the function which the article has to perform ii are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part or iii enable the article to be connected to or placed in around or against another article so that either article may perform its function b Section 5 2 A design for which an application for registration is made shall not be regarded as new if it is the same as a design a registered in respect of the same or any other article in pursuance of a prior application or b published in Singapore or elsewhere in respect of the same or any other article before the date of the first mentioned application or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade 18 It is immediately apparent that the definition of design in the RDA is similar to its equivalent in the UK Act save in two respects First the requirement of eye appeal has been removed Second there is an additional exclusion of must fit features in s 2 1 b iii of the RDA absent in the definition in the UK Act The issues Lack of novelty 19 The first issue is whether the design was not registrable as it was not new or it differed from existing designs only in immaterial details or features which are variants commonly used in the trade The resolution of this issue depends on the application of the facts of this case to s 5 2 of the RDA 20 On the evidence I find that the registered design is not novel over the prior art The prior art has been described earlier in this judgment Further there is ample evidence to show that the design of the right angled jack plug is not novel Such right angled connectors were on sale in 1986 They were used in two housing estates in 1995 and 1998 Mr Ngo admitted as much I also take judicial notice of the fact that connectors of all shapes including right angled shapes have been in existence for a very long time not just in the electrical field but in other fields such as plumbing The connectors are right angled to connect two items where a direct or straight connection is not possible 21 Counsel for the plaintiff submitted that the registered design is to be viewed as a whole together with the jack plug He relies on 70 of the judgment of the Court of Appeal in Hunter Manufacturing Pte Ltd v Soundtex Switchgear Engineering Pte Ltd 2000 1 SLR 401 the Hunter case which reads A registered design includes all its features those which are novel and those which are not and must be looked at as a whole and the comparison exercise conducted must have regard to the design as a whole 22 In my view the plaintiff s argument is not tenable The passage quoted is clearer if considered in its context Firstly the Court of Appeal was considering the approach to take when determining the question of infringement The Court of Appeal went on to say this at 70 There will be no infringement if the alleged infringement is substantially different from the

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  • Martek Biosciences Corporation v Cargill International Trading Pte Ltd
    Manufacturing Integration Technology Ltd 2010 2 SLR 724 at 17 Muhlbauer This question is to be approached as at the date of publication of the prior art rather than ex post facto and each prior art document must be construed separately rather than combined into a mosaic to arrive at the invention Muhlbauer at 18 The Inventive Step condition is satisfied if the step is not obvious to a person skilled in the art section 15 31 The Respondent challenges the Patent on the three grounds of Novelty Inventive Step and Sufficiency 32 As stated above I assess these issues based on the Patent as amended by the 1999 Amendments so all my references are to claims in the 1999 Amendments unless otherwise indicated What were the inventive concepts 33 The Applicant s position is that there are two distinct inventions in the Patent both of which aim to provide an infant formula which is simple safe and as effective as human breast milk HBM 34 The first invention is an infant formula supplement which comprised a blend of two microbial oils one containing ARA and the second containing DHA The Applicant claims that the state of the art then was that infant formula supplements should match HBM as closely as possible in both the types and amounts of lcPUFAs present Contrary to this the inventor of the Patent discovered that it was unnecessary to match HBM with respect to all lcPUFAS Rather supplementation with only ARA and DHA was sufficient to produce an infant formula with the beneficial effects of all the lcPUFAs found in HBM Thus the invention was to produce an improved infant formula with a blend of microbial DHA containing oil and microbial ARA containing oil which made it unnecessary to include other lcPUFAs found in HBM the First Invention 35 The second invention involves a blend of fish oil and a microbial oil containing ARA to produce a supplement for adding lcPUFAs to infant formula The Applicant claims that the state of the art then was that supplementing infant formula with fish oil was considered to lead to a decreased weight gain in infants However according to the Applicant the precise cause of this effect was not identified since fish oil contains both DHA and eicosapentaenoic acid EPA The invention was therefore the discovery that the problems of low weight gain associated with fish oil supplemented infant formula could be overcome by the addition of ARA in the form of microbial oil to the formula the Second Invention This stemmed from the discovery that it was an excess of EPA that causes the low weight gain problem by inhibiting the metabolic conversion of linoleic acid LOA to ARA and that this excess could be overcome by adding ARA Findings on the First Invention 36 The Respondent contends that the First Invention is not consistent with the Patent specifications According to the Respondent the claims specified in the Patent are not limited to DHA and ARA only but includes other lcPUFAs The Tribunal agreed finding at 137 that the Patent was directed instead at providing a process of supplementing infant formula such that the supplemented infant formula would contain PUFAs in amounts comparable to those in HBM In particular the Tribunal found that the Patent did not exclude other PUFAs 37 I disagree with the Tribunal on this finding I accept the Applicant s submissions that the Patent discloses the First Invention for the reasons which follow 38 First a particularly striking feature of this case is the extraordinary state of the evidence before me The evidence of the Applicant s expert witnesses was almost completely unchallenged The Respondent chose not to cross examine Dr Lien at all which is extraordinary given that Dr Lien s evidence extensively rebutted the evidence of the Respondent s first expert witness Dr Puah While the Respondent did cross examine Dr Kyle it never challenged Dr Kyle s testimony on the First Invention note 1 The Applicant s expert testimony that the Patent disclosed the First Invention is therefore entirely unrebutted 39 As far as the Respondent s experts testimony goes the Respondent chose to withdraw Dr Puah from cross examination right before Dr Puah was due to take the stand In doing so the Respondent explicitly took the position that Dr Nga s evidence was sufficient for its case note 2 I will deal with Dr Nga s evidence in a while but first I should make it clear that the withdrawal of Dr Puah from cross examination means that his evidence should bear no weight at all O 38 r 1 2 of the Rules of Court Cap 332 R5 2006 Rev Ed Rules of Court makes it clear that a witness s affidavit will not be received in evidence if he is not cross examined except with leave of court Of course O 38 r 1 2 applies to actions commenced by writ not usually to hearings before IPOS However in my view O 38 r 1 2 should apply with equal force here with the witnesses statutory declarations analogous to affidavits in a trial The parties agreed at a Case Management Conference on 6 February 2009 that the Evidence Act would apply to their proceedings note 3 and implicitly the Rules of Court too by virtue of section 137 of the Evidence Act In any case whether in a trial or in IPOS proceedings it would clearly prejudice the Applicant for the Respondent to refuse to present its main witness for cross examination especially at the last minute and still seek to keep that witness s statutory declaration on record note 4 I take cognisance of the Applicant s argument before me that Rule 80 of the Patents Rules leaves open the procedure of revocation proceedings and therefore it is important for this case to clarify the evidential consequences of irregularities such as the one here In my view where parties have clearly agreed to conduct IPOS proceedings like court trials namely applying the Evidence Act and the Rules of Court they must abide by the principles governing court trials 40 The only evidence in favour of the Respondent therefore remains Dr Nga s The problem is that Dr Nga s expertise is not specific to the field involved in this case Dr Nga admitted under cross examination that he had no experience in general nutrition much less paediatric nutrition His expertise pertained to the genetics of micro organisms without possessing specific knowledge of the use of microbial oils in the human diet specifically the diet of infants While his evidence cannot be wholly disregarded as the Applicant urges it cannot be denied that the evidence of the Applicant s witnesses by virtue of their greater expertise in this field would be of greater assistance to this court than Dr Nga s evidence 41 The final picture we have of the evidence before me therefore is quite extraordinary On the one hand the Applicant s evidence as to the First Invention is completely unchallenged by the Respondent s own election and on the other hand the Respondent s evidence is confined to that of one expert without sufficient expertise in the relevant field The Respondent argues of course that the evidence of the Applicant s witnesses must be treated with caution because of their alleged bias In the circumstances of this case I give no weight to this argument In Muhlbauer at 46 47 the Court of Appeal refused to discount the evidence of one witness on the grounds of apparent bias because he was one of the actual inventors of the patented machine The Court of Appeal affirmed that for the purposes of determining whether the evidence of an expert should be discounted the relevant test is one of actual partiality rather than apparent partiality The Respondent did not adduce any evidence of actual partiality here In fact the Respondent did not put any allegation of bias at all to Dr Kyle or Dr Lien on the witness stand Instead it chose to make its allegations of bias by way of legal submissions giving Dr Kyle and Dr Lien no opportunity to respond to the same In any case even if there is an increased likelihood of bias on the part of an allegedly non independent witness it is for the adverse party to challenge his testimony and demonstrate its unreliability Given that the Respondent has chosen not to challenge the testimony of Dr Lien at all and the testimony of Dr Kyle with regard to the Patent disclosing the First Invention it is insufficient for the Respondent to merely allege bias 42 There is the third source of evidence before me i e the Re examination Report which agreed with the Respondent that the Patent did not disclose the First Invention but rather included other lcPUFAs besides ARA and DHA It is common ground that the Re examination Report is not binding on this court Furthermore the Re examination Report was made based on the statutory declarations of the various witnesses taken at face value without taking into account the limitations of Dr Puah s and Dr Nga s evidence as subsequently demonstrated during the proceedings For the reasons I have already analysed above the Re examination Report s value has therefore been greatly diminished 43 I now turn to my second point i e the objective evidence before the court in the form of the text of the Patent specification itself This is the sole basis upon which the Tribunal rejected the Applicant s submission that the Patent disclosed the First Invention despite the unusual state of the evidence that I have already highlighted above If the Tribunal were right in its interpretation of the Patent specification then it would have been right to reject the Applicant s submission notwithstanding the expert evidence a court is always entitled to examine an expert s evidence based on logic and rationality However I could not agree with the Tribunal s interpretation of the text of the Patent specification 44 The Tribunal found that the Patent specification was inconsistent with the Appellant s submission that the inventive concept was that only DHA and ARA were needed based on extracts from the specification such as it is an object of the present invention to provide a PUFA enriched additive the composition of which when added to commercial infant formula will provide desired long chain PUFAs in amounts comparable to the amounts of those PUFAs found in human breast milk Specification Replacement Sheet dated 2 July 1997 page 3 paragraph 2 it is to be understood that the present invention encompasses the use of a single microbial oil containing at least two desirable PUFAs such as ARA and DHA Specification Replacement Sheet dated 2 July 1997 page 5 paragraph 1 the most preferred microbial oils are those rich in an omega 3 or omega 6 PUFA especially DHA GLA and ARA Specification Replacement Sheet dated 2 July 1997 page 5 paragraph 4 Long chain PUFA containing microbial oils from at least two microorganisms can be obtained and blended together to provide the desired composition The blend then can be added to an infant formula Preferably an amount of the blend effective to provide an amount of the desired PUFAs substantially similar to that found in human breast milk will be provided Specification Replacement Sheet dated 2 July 1997 page 7 paragraph 5 line 13 to page 8 paragraph 1 In a preferred embodiment the microbial oils include ARASCO ARA single cell oil and DHASCO DHA single cell oil and EPASCO EPA single cell oil or any combination thereof Specification Replacement Sheet dated 2 July 1997 page 8 paragraph 3 long names added 45 In construing a patent the claims are the principal determinants of the patent the details of the specification may assist but are ultimately secondary s 113 of the Act as interpreted in First Currency Choice Pte Ltd v Main Line Corporate Holdings Ltd and another appeal 2008 1 SLR R 335 at 23 Main Line Furthermore it is trite law that a patent should be construed purposively rather than by a strict literal approach Main Line at 25 46 Claim 1 reads A process for supplementing infant formula with docosahexaenoic acid DHA and arachidonic acid ARA characterized in that it comprises a blending an oil containing DHA and an oil containing ARA wherein at least one oil is a microbial oil and the other oil is selected from a microbial oil a fish oil and a vegetable oil the oils being blended to provide a ratio of about 2 to 12 parts by weight ARA to about 1 to 5 parts by weight DHA and b adding said oil blend to said infant formula in an amount sufficient that the amounts of DHA and ARA in said formula are comparable to the amounts of DHA and ARA in human breast milk 47 Claim 2 reads A process for supplementing infant formula with DHA and ARA which comprises a preparing an oil blend comprising an oil containing DHA and an oil containing ARA wherein at least one of said DHA containing oil and said ARA containing oil is a microbial oil and oils are blended to provide an ARA DHA EPA ratio of from 5 1 1 to 20 10 1 parts by weight and b adding said oil blend to said infant formula in an amount sufficient that the amounts of DHA ARA and EPA in said formula are comparable to the amounts of DHA ARA and EPA in human breast milk 48 It seems clear enough from the text of Claims 1 and 2 at least that the Patent disclosed the First Invention Furthermore Dr Lien testified that a person skilled in the field of infant formula would appreciate from reading the claims and the specification that the preferred oil blend for supplementing infant formula is a blend of only one DHA containing oil and one ARA containing oil The Tribunal appeared to have construed the Patent solely on a piece meal analysis of the text of the specification without addressing the text of the claims themselves or the expert evidence as to what a skilled addressee would understand the claims to convey 49 Furthermore even the parts of the specification cited above at 44 are not as damning to the Applicant s submissions as the Tribunal considered them to be The stated objective of the Patent for example being to provide a PUFA enriched additive the composition of which when added to commercial infant formula will provide desired long chain PUFAs in amounts comparable to the amounts of those PUFAs found in human breast milk emphasis added does not necessarily show that Patent taught the inclusion of as many lcPUFAs present in HBM as possible Dr Lien gave evidence that the word desired indicates that not all lcPUFAs are included in the supplement note 5 The same applies to the fourth passage cited at 44 above 50 The Tribunal seems to have been inconsistent in its understanding as to whether the Patent teaches the use of only two microbial oils At 87 of the Decision it allowed one of the Proposed 2006 Amendments on the ground that Example 5 of the Patent application as originally filed showed that DHA oil and ARA oil are to be the only lcPUFAs required for the oil blend emphasis added This would contradict its finding on the inventive concept of the Patent 51 In conclusion the weight of the evidence shows that the first inventive concept in the Patent was to produce an improved infant formula with a blend of only a microbial DHA containing oil and a microbial ARA containing oil thus making it unnecessary to include as many lcPUFAs present in HBM as possible It is this inventive concept that we must then test against the requirements of Novelty and Inventive Step Findings on the Second Invention 52 With respect to the Second Invention the dispute between the parties is different Whereas the first dispute was over whether the First Invention was a proper characterisation of the inventive concept disclosed by the Patent in this second dispute the Respondent does not challenge the characterisation of the inventive concept Rather the Respondent disagrees with the Applicant as to what the state of the art was then The Respondent contends that the state of the art then already included the knowledge that it was EPA that caused the problem of low weight gain by inhibiting the conversion of linoleic acid LOA to ARA thus rendering the solution provided in the Second Invention obvious This thus goes to the issues of Novelty and Inventive Step Novelty 53 The Tribunal found Claim 1 to be novel like Claim 1 of the Proposed 2006 Amendments on the basis that the relevant prior art D1 only discloses a ratio range for omega 6 omega 3 fatty acids whereas Claim 1 discloses a specific range for ARA DHA note 6 It accordingly found Claim 2 novel too because Claim 2 is similar to Claim 1 except that the second oil stated therein can be selected from any oils instead of from a microbial oil a fish oil or a vegetable oil and the ratio range now includes EPA It presumably found the remaining dependent claims novel 54 While the Tribunal was right to hold that the claims in the Patent are novel I should clarify that it is not the ratio ranges of omega 6 omega 3 fatty acids that should be tested against the requirements of Novelty and Inventive Step but rather the First Invention and Second Invention as characterised above The Court of Appeal emphasised in Muhlbauer at 40 that in assessing the validity of a patent the parties and the court must characterise the invention accurately In Muhlbauer the tribunal below had erroneously based its analysis of Novelty and Inventive Step on the quantity of pick up heads in the machine taught by the patent against the machines taught by the respective prior art publications when the enquiry should be really the overall qualitative difference between the respective machines Similarly in this case the Tribunal s analysis should not therefore have been about ratio ranges disclosed by the Patent against prior publications but whether the First and Second Inventions were novel and contained inventive steps 55 As prior publications cannot be assembled into a mosaic for the purposes of assessing the novelty of an invention we must compare the First and Second Inventions against each individual piece of prior art to see if any of them has anticipated the respective inventions The First Invention did any of the prior art teach the use of only an ARA containing microbial oil and a DHA containing microbial oil D1 56 D1 is an invention directed to a fatty acid mixture to prepare nutritional compositions especially infant formula It is clear that D1 does not anticipate the First Invention While D1 teaches that PUFAs are needed by infants there is no evidence that D1 contemplates that only an ARA containing and a DHA containing microbial oil are sufficient to replicate the benefits of HBM In fact i D1 teaches the use of at least 4 and preferably 6 fatty acids ii D1 does not refer to or teach microbial oils and iii D1 teaches the matching of as many of the lcPUFAs found in HBM as possible All these three points were conceded by Dr Nga in cross examination D2 57 D2 relates to the development of commercial sources for purified omega 3 lcPUFAs in the free acid or methyl ester to replace the use of fish oil for pharmaceutical uses The Tribunal read D2 as disclosing microorganisms as potential sources of PUFAs note 7 and the Respondent submits that D2 teaches a commercial microbial source of DHA and a commercial microbial source of ARA Insofar as the Respondent submits that D2 teaches a source of ARA however this is wrong As the Applicant pointed out at the hearing before me D2 is explicitly concerned with alternative sources of only omega 3 fatty acids which includes EPA and DHA but not ARA which is an omega 6 fatty acid On that ground alone D2 clearly does not anticipate the First Invention not to mention the fact that D2 does not refer to infant formula supplements at all nor even considers whether the use of the microorganisms listed is safe in a food application D3 58 D3 clearly does not anticipate the First Invention The fatty mixture taught in D3 can be obtained by a number of sources including fish oils egg oil cows and pigs liver and kidney fat and vegetable oils rather than specifically microbial oils as taught in the Patent The only basis on which the Respondent argues that D3 teaches the use of microbial oils is the reference to algae oils on page 4 note 8 but the Applicant points out that the algae listed are all seaweeds and would not be considered sources of microbial oil note 9 This is buttressed by the fact that Dr Nga also conceded that D3 does not teach the use of microbial oils note 10 In fact Dr Nga also conceded that D3 teaches that lcPUFAs other than ARA and DHA are required This being the case D3 clearly did not teach the use of only an ARA containing and a DHA containing microbial oil for the purpose of replicating the benefits of HBM in an infant formula supplement 59 It follows that the First Invention is not anticipated by any prior art and is novel The Second Invention did any of the prior art teach that it is an excess of EPA that causes the problem of low weight gain problem associated with fish oil supplemented infant formula and that this can be overcome by the addition of ARA in the form of microbial oil to the formula D27 60 D27 is central to the dispute over whether the Second Invention was already part of the state of the art Also known as the Carlson Study D27 states at p306 that DHA EPA supplemented infants weighed less from 48 n 60 through 92 weeks n 30 PCA Omega 3 supplementation during infancy appeared to result in the accumulation of less body fat 61 The Respondent contends that the Carlson Study therefore already observed the problem that fish oil led to lower weight gain and the Second Invention is therefore not novel However two points can be made first the Carlson Study did not identify whether it is the DHA or the EPA in fish oil that causes the lower weight gain second even if we assume that it did identify the problem nowhere does it identify the solution to this problem It is these two aspects that are the essence of the Second Invention Furthermore as the Applicant argues there is no indication in the first place that the Carlson Study considered this lower weight gain to be a problem that had to be addressed before fish oil could continue to be fed to infants D27 therefore does not anticipate the Second Invention D34 62 D34 is a report on a test comparing a linseed oil supplement with a MaxEPA supplement on adults where MaxEPA contains EPA and DHA The Respondent argues that D34 discloses that EPA inhibits the metabolic conversion of LOA to ARA in that it states The proportion of arachidonic acid 20 4w3 was substantially decreased by the MaxEPA supplement but not by the linseed oil supplement page 91 column 1 paragraph 3 lines 5 8 The lower proportion of AA and 22 4w6 imply that their synthesis from linoleic acid 18 2w6 was decreased page 96 column 1 paragraph 1 lines 21 23 63 The Applicant contends that D34 does not even pertain to the effects of MaxEPA on infants rather than adults Even if we assume for the sake of argument that the effects of MaxEPA on adults and infants are identical D34 like D27 does not identify whether it is the EPA or the DHA that is responsible for this effect This is something Dr Nga again conceded in cross examination Furthermore as highlighted by Dr Lien and unrebutted by the Respondent D34 does not draw any causal link between the inhibited production of ARA and reduced weight gain 64 Therefore the Second Invention is also not anticipated by any prior art and is novel Inventive Step 65 The burden of proof is on the party attacking the validity of a patent to show that no inventive step was involved The Court of Appeal in Muhlbauer at 19 affirmed that the primary evidence with regard to this element will be that of properly qualified expert witnesses who will say whether or not in their opinion the relevant step would have been obvious to a skilled man having regard to the state of the art Once again the Respondent never challenged this aspect of Dr Kyle s and Dr Lien s evidence Its own expert evidence is confined to Dr Nga s who is not an expert in the relevant field The Respondent has clearly failed to discharge its burden of showing that the First and Second Inventions were obvious to a person skilled in the art 66 In any case the First Invention falls within the clear case of non obviousness i e when the invention goes against conventional wisdom As articulated by the English Court of Appeal in Pozzoli SpA v BDMO SA 2007 FSR 37 at 27 A patentee who contributes something new by showing that contrary to the mistaken prejudice the idea will work or is practical has shown something new He has shown that an apparent lion in the path is merely a paper tiger Then his contribution is novel and non obvious and he deserves his patent The First Invention showed that supplemented infant formula need not include as many lcPUFAs found in HBM as possible to replicate the benefits of HBM 67 This also applies to the Second Invention insofar as the expert evidence is that conventional wisdom held fish oil to be beneficial for infants without identifying the need to solve the problem of lower weight gain As established at 61 above even D27 the prior publication closest to the Second Invention does not identify the phenomenon of lower weight gain as a problem that had to be addressed before fish oil could continue to be fed to infants as a supplement In fact the preferred examples disclosed in D1 which teaches a fatty acid mixture to prepare nutritional compositions especially for infant formulas contain much higher levels of EPA than HBM note 11 This demonstrates that the state of the art did not see fish oil as problematic for infant consumption and the Respondent has adduced no prior art that teaches to the contrary Even if the state of art had identified lower weight gain as a problem that needed to be solved the essence of the Second Invention was to single out EPA rather than DHA as the source of the problem The Respondent has not been able to point to any prior art that suggests any attempt to isolate which component of fish oil it was that caused lower weight gain The Patent s identification of EPA as the source and going one step further to provide the solution is therefore non obvious 68 Additionally the Applicant submits that the commercial success of the Patent illustrates that the inventions were non obvious It is true that commercial success may play a role in establishing non obviousness albeit not conclusively Ng Loy Wee Loon Law of Intellectual Property of Singapore Sweet Maxwell Asia Rev Ed 2009 at paragraph 30 1 52 Law of IP in Singapore However I would not accord too much weight to this factor here The commercial success referred to by the Applicant is Dr Kyle s evidence that the only sources currently used in infant formula are the designer oils DHA and ARA designer oils or a combination of the fish oil with the ARA designer oil This is despite the fact that D1 has long been revoked and is therefore free for everyone to use While this may well be true in my view this evidence is not specific enough to establish the Patent s commercial success It was only mentioned in passing during the oral examination of Dr Kyle unlike in Muhlbauer where evidence was specifically submitted that more than 100 of the patentee s machines had been sold as compared to only four units of the machine taught in a prior publication The evidence is certainly insufficient to prove that the alleged commercial success was due to the invention itself rather than extrinsic factors such as successful marketing Law of IP in Singapore at paragraph 30 1 52 In any case this does not affect the outcome of this case I have found above that both the First and Second Inventions did contain inventive steps Sufficiency 69 The Respondent further contends that the Patent should be revoked under s 80 1 c for lack of sufficiency i e the specification of the patent does not disclose the invention clearly and completely for it to be performed by a person skilled in the art It challenges the sufficiency of claims in the 1999 Amendments the Proposed 2006 Amendments and the 2008 Amendments respectively The Tribunal found that all claims in the respective Amendments were sufficient I reiterate that I only examine the validity of the Patent based on the 1999 Amendments Therefore I turn to the Respondent s submissions that the claims in the 1999 Amendments are insufficient 70 The Respondent submits that three parts of the 1999 amended claims in particular are insufficient i The phrase comparable to in human breast milk in Claims 1 2 21 and 22 ii The phrase substantially free of EPA in Claims 3 8 and 16 and iii Claims 7 20 and 26 where the Patent does not disclose products that are not directly obtainable from the claimed processes 71 With regard to i and ii above the Respondent s objection is one of lack of clarity The phrase in i allegedly lacks clarity because the lcPUFA content of HBM varies according to factors such as the ethnicity of the mother The phrase in ii does not specify a quantitative limit on the amount of EPA 72 However to revoke a patent on the grounds of insufficiency it is not enough for the Respondent to highlight ambiguities in the plain language of the claims As the court in Rediffusion Simulation v Link Miles 1993 FSR 369 at 388 affirmed T here is seldom a case where a person who is asked to look at every word of a specification to try and destroy it cannot make out a case of potential ambiguity That is not the correct approach The specification should be read through the eyes of the skilled addressee attempting to give it practical meaning and endeavouring to ascertain the intention of the draftsmen emphasis added 73 The Respondent has adduced no expert testimony to prove that the above phrases would render the invention unworkable from the point of view of a skilled addressee In contrast Dr Lien at pages 3 to 8 of his Statutory Declaration explained how a skilled addressee would understand how to work the invention In particular Dr Lien explained at pages 11 to 13 how the phrase in i would be clear to the person skilled in the field of infant formula and this evidence has remained unrebutted by the Respondent 74 As for iii the Respondent merely alludes to the fact that these claims are product by process claims I do not see how this is an objection based on sufficiency note 12 75 I therefore find that the claims in the 1999 Amendments meet the requirement of sufficiency Status of corresponding patents in other jurisdictions 76 It only remains for me to address one final point Both in the proceedings below and before me the Respondent highlighted the status of the Applicant s various foreign patents that allegedly correspond to this Patent In particular the Respondent stressed foreign proceedings where the Appellant was either unsuccessful in obtaining a patent or unsuccessful in defending its granted patents in opposition proceedings I appreciate the Respondent s efforts in highlighting the similarities between the Patent and each foreign patent individually Unfortunately however this does not really aid in either proving or disproving the validity of this Patent In my view the Tribunal was correct to rely on the Court of Appeal s judgment in Main Line at 2 that Ultimately it must also be acknowledged that an adjudication on patent rights is predicated upon not only the applicable regulatory framework and practices but also the evidence presented as well as the submissions made to the tribunal concerned Care must therefore be taken by counsel when referring to and or relying on another apparently similar decision on the same issue from another jurisdiction emphasis added 77 While it is true that the court in Main Line did contemplate at 58 that the decision of the New Zealand patent office could be of some penumbral assistance in that case that was because the court found that there was some consistency between the statutory matrices of Singapore and New Zealand The Respondent has made no such submissions here Conclusion on the Validity Issue 78 For the above reasons I find that the Patent fulfilled the requirements of Novelty Inventive Step and Sufficiency I therefore dismiss the Revocation Proceedings The Amendments Issue 79 I turn next to the issue of whether the Appellant s amendments to the Patent should be allowed As established above the Appellant filed four set of amendments in total The 1997 Amendments were never challenged and the Respondent has discontinued its appeal with regard to the 1999 Amendments Only the Proposed 2006 Amendments and the Proposed 2008 Amendments therefore remain in dispute Insofar as the Applicant appeals against the Tribunal s decision to disallow claim 30 of the 1999 Amendments Claim 30 Claim 30 also remains in issue 80 I note that the Respondent does not resurrect its argument below that the Proposed 2008 Amendments are prohibited because section 80 of the Act affords patentees only one opportunity to amend a patent during revocation proceedings As the Tribunal pointed out at 115 116 of the Decision there is no statutory basis for this contention The law 81 Section 84 3 of the Act provides that no amendment will be allowed if it a results in the specification disclosing additional matter or b extends the protection granted by the patent With regard to section 84 3 a the subject matter will be considered additional matter if it is not clearly and unambiguously disclosed either implicitly or explicitly in the application as originally filed Bonzel v Intervention Ltd 1991 RPC 553 at 574 With regard to section 84 3 b it is to be noted that the scope of an individual claim may be extended so long as it does not extend the overall monopoly of the patent Siegfried Demel v Jefferson 1999 RPC 155 The 1999 Amendments Claim 30 82 Claim 30 discloses that the microbial oil containing DHA and or the microbial oil containing ARA are in triglyceride form The only basis of this claim in the original Patent specification is Example 1 on page 12 where it states The second fraction was predominantly phospholipids whereas the first fraction contained a mixture of phospholipids and triglycerides The combined fractions produced an oil containing about 30 35 arachidonic acid and no detectable EPA 83 The Re Examiner took this to indicate that during production of the microbial oils it

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  • Muhlbauer AG v Manufacturing Integration Technology Ltd[2009] SGHC 45
    in the plaintiff s patent regarding the dimensions of the flipper heads or of the gap The inventive concept asserted is therefore inspection on the fly 13 The defendant submits that Claims 1 and 7 are anticipated by the ASA patent which also has two flipper heads and are therefore not novel Claim 7 is also anticipated by the AFC 800 In addition the defendant argues that there is no inventive step in the plaintiff s patent because the invention described there is obvious to a person skilled in the art given the state of the prior art The defendant also relies on the Matsushita Patent and the National Semiconductor Patent for the issues of novelty and inventive step and on the Shinkawa Patent for the issue of inventive step 14 Although the ASA patent was published on 21 June 2004 and granted in September 2005 for the purpose of the issue of novelty the material date is its priority date and that is 7 January 2002 a date earlier than the plaintiff s priority date of 16 February 2004 In any event if publication date is the key which the defendant denies the international publication date of the contents of the ASA patent PCT application is 17 July 2003 The decision of the court 15 Section 14 1 and 2 of the Patents Act Cap 221 2005 Rev Ed set out the test for the issue of novelty An invention shall be taken to be new if it does not form part of the state of the art The state of the art comprises all matter which has at any time before the priority date of the invention in issue been made available to the public whether in Singapore or elsewhere by written or oral description by use or in any other way 16 In deciding the issue of novelty Lai Kew Chai J in Trek Technology Singapore Pte Ltd v FE Global Electronics Pte Ltd No 2 2005 3 SLR 389 set out the following guiding principles a the issue is determined by asking whether an invention forms part of the state of the art b the prior art must in order to invalidate the patent be such that a person of ordinary skill and knowledge of the subject would at once perceive and understand and be able to practically apply the discovery without the necessity of making further experiments c the prior art documents must be construed as at the date of publication and it is not permissible to perform an ex post facto analysis d each prior art document has to be considered separately and not combined into a mosaic to arrive at the invention e the person skilled in the art is an unimaginative person of competent but average technical skill f the prior art document must contain clear directions to do what the patent claims to have invented 17 The fundamental features of Claim 1 of the plaintiff s patent are the two pick up heads placed opposite each other on a pivoting part with one pick up head facing the substrate for pick up of a single electronic component and holding the component during rotation through 180 and the through opening between the pick up heads arranged in such a way that the through opening faces the substrate when the flipper heads rotate through 90 or 270 The inventors state that the motivation for the invention was the reduction of the time required to check and to rotate the flip chip components resulting in cost savings They also assert that in prior art inspection pick up and rotation of the flip chip device must be done sequentially or in successive steps as the pick up head would block the optical connection line between the camera and the flip chip The plaintiff s patent allows the optical connection line to be established between the camera and the substrate during rotation of the pivoting part through 90 or 270 18 The defendant s expert witness is John Briar who has 20 years experience in electronics and manufacturing and who was involved in research and development of various machines used in the semi conductor industry in the course of his employment including flip chip machines and multi chip module assembly He is the inventor co inventor of several patents related to various types of integrated circuit package assembly He has extensive experience in flip chip packaging technology and equipment development for use in the semi conductor industry I find him to be a very competent expert in this field and accept his expert opinion which covers all the prior art stated in 9 above although the defendant s representative at trial was content to confine the attack against the plaintiff s patent on the basis of the ASA Patent 19 Having done a thorough review of the plaintiff s patent and completed extensive research and obtained information from public sources and other industry related publications and documents he produced an expert report In this expert report he opines that the plaintiff s patent is not new or novel because the invention disclosed in Claims 1 and 7 have been clearly anticipated by the ASA Patent AFC 800 the flip chip die bonder machine which incorporates the ASA Patent also clearly anticipates Claim 7 and its dependent claims 20 In the ASA Patent there is clear disclosure of two pick up heads for flip chips arranged opposite each other at a pivot point one element facing the substrate or wafer during rotation of 180 rotary motion to invert flip chip the use of optical detection of the flip chip prior to its pick up optical detection at the target placement site and optical detection and corrective movement of the flip chip after placement It would be clear to a person skilled in the art that an image of a flip chip could be detected during rotation of the pivoting part through 90 or 270 21 The defendant s expert is also of the view that Claim 1 was anticipated by the Matsushita Patent and that Claims 1 and 7 were anticipated by the National Semiconductor Patent Based on his interpretation of these two patents he opines that they disclosed in their text and in the illustrations a space and or opening through the pick up heads that permits vision system access during rotation of a pick up element through 90 or 270 22 The defendant s expert explained that some of the key challenges were the speed and accuracy of alignment of the flip chip integrated circuit devices and mechanical flipping or reversing orientation of the integrated circuit Since flip chips are normally attached in a face down manner the inter connects are hidden from direct view during placement Vision inspection system concepts had to be modified so that they could inspect the integrated circuit prior to placement in a carrier or on a substrate The time needed to complete the vision inspection process on flip chip equipment had to be balanced with the subsequent mechanical flipping and placement procedures carried out on the equipment 23 The challenges related to the use of vision inspection systems were overcome by using and expanding on concepts developed on standard face up die attach equipment and applying them to flip chip placement equipment Several prior inventions claimed speed improvement by the utilisation of vision inspection processes concurrently with the rotary inverting of the flip chip device after removal from the wafer frames Most of them used optical detection and corrective alignment something well understood as an integral function for flip chip die pick and place systems since the 1990s This kind of optical alignment was commonplace and is clearly documented in prior art well before the plaintiff s patent s priority date 24 The ASA Patent describes and illustrates the use of multiple flip chip pick up heads situated opposite one another in reference to a pivoting point at the centre The pick up heads are said to be used for changing the orientation of flip chips after they are picked up from a wafer In the illustrations only four pick up heads are shown but there are several references in the text where a plurality of heads is discussed In the defendant s expert s opinion this confirms that a fixed number of pick up heads is not important in the invention It is also stated in the ASA Patent that different die sizes and throughput requirements may need a design with more than four heads There is also mention that two pick up heads mounted opposite each other may be deployed 25 In the ASA Patent the explanation for the use of four instead of two pick up heads is that it shortens the travelling distance of the die from the pick up location to the transfer point and allows increased throughput Concurrent motion of many of the components is also described as improving throughput It is obvious from the patent that in order to have the increased throughput the concurrent action of optical detectors pick up heads fluxing heads and transfer heads would need to be maintained In the case of the pick up turret assembly the vision inspection system for aligning the die on the wafer mount would need to be taking an image after pick up of the flip chip die and during rotation of the turret 26 The use of vision was so well established by this time that the ASA Patent need not disclose full details of its vision system The patent states that the optically assisted pick and place system would be known to one skilled in the art and elaboration is therefore not provided in the patent By the time of the filing of the ASA Patent the vision inspection system for the wafer input area could be said to be an integral part of pick and place equipment in the market and would be obvious to a person skilled in the art of semiconductor assembly operations Based on the defendant s expert s understanding of the vision inspection system as deployed on the AFC 800 an image of the flip chip device on the movable wafer mount could be detected during the rotation of the pivoting part through 90 or 270 27 The ASA Patent therefore has anticipated all of the key concepts in the plaintiff s patent They include the pivoting part having two pick up heads placed opposite each other with one pick up head facing the substrate for pick up of a single electronic component and holding it during rotation through 180 the rotary motion to invert the flip chip the use of a vision inspection system to inspect the flip chip prior to its being picked up in that the image would be detected during rotation of the pivoting part through 90 or 270 optical detection at the target placement site and optical detection and corrective movement of the flip chip after placement Accordingly the ASA Patent clearly anticipates Claims 1 and 7 of the plaintiff s patent It also anticipates all the other dependent claims 28 The defendant s expert has personal knowledge and experience of what the state of the art was at the material time i e the plaintiff s patent s priority date of 16 February 2004 By late 2001 2002 ASA had produced a prototype AFC 800 flip chip die bonder This was confirmed by one of the five inventors of the ASA Patent Eddy Lim who also testified at the trial In about August 2001 the defendant s expert was hired as President of Advanpack Solutions Pte Ltd a subsidiary of ASA Advanpack Solutions Pte Ltd and its parent company were involved in joint development and marketing activities and worked closely with each other to produce and to advertise AFC 800 In May 2002 the AFC 800 was shown to many potential customers during a public event called Semicon Singapore Another of the co inventors of the ASA Patent made a presentation during this conference A video recording of the AFC 800 in operation was also displayed on a monitor and CD ROMs thereof were handed out to the public The AFC 800 was also featured in the September 2003 issue of Advanced Packaging magazine 29 The optical components used in the AFC 800 are the camera and the beam splitter a prism used to redirect the optical path 90 so that the camera can see the flip chips on the wafer In order for the camera to obtain an image of the die on the wafer there must be a through opening in the pivoting device permitting the camera to recognize the image projected first onto the beam splitter and then from there to the camera While an image cannot be captured during rotation of the part exactly at 90 it can be clearly captured at any time when one of the four through openings is facing the wafer The AFC 800 therefore anticipates Claim 7 of the plaintiff s patent The other dependent claims of Claim 7 are likewise anticipated by the AFC 800 30 The Matsushita Patent describes a device for picking up and placing flip chips There are three pick up heads arranged around a pivoting rod at the centre each 120 apart There are through openings between the pick up heads There is a camera for vision inspection placed above the pick up station used for observing and detecting defects as well as the position of the flip chip before the nozzle picks it up and rotates horizontally to transfer it to a transferring head 31 The defendant s expert states that it is reasonable to assume that the vision inspection process takes place during the time when the pick up head is rotated out of the field of view of the camera The through openings are large enough for inspection to occur at a range of angles of rotation of the pick up heads Notwithstanding the fact that the three pick up heads in the Matsushita Patent are placed 120 apart this patent demonstrates pick up heads in relation to the pivotal point such that one pick up head is facing the substrate for each rotation and that a through opening is arranged between the pick up heads such that the through opening faces the substrate during rotation of the pivoting part through 90 and 270 Again although the plane of rotation in the Matsushita Patent is along the horizontal axis while that in the plaintiff s patent is along the vertical axis this is not a material difference so long as an optical connection line can be maintained between the camera and the flip chip Accordingly Claim 1 of the plaintiff s patent is anticipated by the Matsushita Patent too 32 The National Semiconductor Patent describes a prior art example that uses a flipper arm with two heads opposite each other in relation to the pivot point The pick up heads are located at the ends of the flipper arm and are used to pick up a flip chip with bumps facing upwards from a loader arm The flipper arm is then rotated 180 and the flipped die is then placed on a platform Two cameras are used for vision inspection One camera looks downward at the wafer frame to ensure that the correct die is being picked up while the second one looks downwards at the tape and reel cavity to ensure that the die is positioned in the cavity properly 33 The National Semiconductor Patent also describes the use of a rotary wheel or rotary flipper to replace the two element flipper arms described in the prior art The change from two to multiple pick up heads is to achieve a more balanced speed or throughput Any number of pick up heads may be used depending on the size of the wheel with examples of two eight and even 64 described The illustration shows a rotary pick up head for picking flip chips from a wafer and a vision apparatus used to determine that the correct die is being picked up The camera is placed opposite the pick up head and would need to look through an opening in the rotary transfer head in order to establish an optical connection line with the flip chips on the wafer Although this patent is very limited in text description the illustration shows the concept of a vision inspection system looking through an opening in the pick up tool attached to the rotary pick up head It follows that Claims 1 and 7 are anticipated also by the National Semiconductor Patent 34 In respect of inventive step s 15 of the Patents Act provides An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art having regard to any matter which forms part of the state of the art by virtue only of section 14 2 and without having regard to section 14 3 On this aspect our Court of Appeal in First Currency Choice Pte Ltd v Main Line Corporate Holdings Ltd 2008 1 SLR 335 has again adopted the oft cited four step test laid down by the English Court of Appeal in Windsurfing International Inc v Tabur Marine Great Britain Ltd 1985 RPC 59 at 73 74 see 41 and 44 of our Court of Appeal s judgment 35 On this issue of inventive step the defendant s expert notes that the plaintiff s patent states that in the prior art inspection pick up and rotation of the flip chip device had to be done sequentially or in successive steps since the pick up head would block the optical connection line between the camera and the flip chips The plaintiff s patent explains that the through opening in the pivoting part allows for such optical connection during rotation of the

    Original URL path: http://www.singaporelaw.sg/sglaw/laws-of-singapore/case-law/free-law/high-court-judgments/13633-muhlbauer-ag-v-manufacturing-integration-technology-ltd-2009-sghc-45 (2016-01-30)
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  • Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting (trading as Soon Heng Digitax)
    b contains an inventive step and c is capable of industrial application In this case only limbs a and b of s 13 are in dispute I will therefore deal with the issues of whether the defendant s invention is new and inventive in turn Legal Principles Novelty 29 In relation to novelty ss 14 1 to 3 of the Act provide that Novelty 14 1 An invention shall be taken to be new if it does not form part of the state of the art 2 The state of the art in the case of an invention shall be taken to comprise all matter whether a product a process information about either or anything else which has at any time before the priority date of that invention been made available to the public whether in Singapore or elsewhere by written or oral description by use or in any other way 3 The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention if the following conditions are satisfied a that matter was contained in the application for that other patent both as filed and as published and b the priority date of that matter is earlier than that of the invention The state of the art is defined in s 14 2 of the Act as any matter that has at the priority date of an invention been made available to the public anywhere in the world The requirement that disclosure must have been made to the public is satisfied if it has been made available in the public domain even if no one has inspected the prior publication Institut Pasteur v Genelabs Diagnostics Pte Ltd 2000 SGHC 53 Genelabs HC at 188 upheld on appeal in Genelabs CA above at 15 and First Currency Choice above at 15 at 38 Thus the main and only consideration in whether the invention in question is new or novel is whether it is or is not already found in the state of the art as defined in s 14 2 No mosaicking of the different prior art is allowed when determining the factual question whether or not the invention is already found to be part of the state of the art If it is then it is not new or novel If it is not then it is to be regarded as new or novel 30 I note however that the case authorities have formulated a guide to aid in establishing whether an invention is new or novel This is often referred to as the reverse infringement test which helps to determine whether the invention in the patent claim has already been anticipated by prior art in which case it should not be considered as new or novel This reverse infringement test was set out as follows by Sachs LJ in The General Tire Rubber Company v The Firestone Tyre and Rubber Company Limited 1972 RPC 457 General Tire Rubber at p 485 486 parts of which were recently cited with approval by the Court of Appeal in Mühlbauer AG v Manufacturing Integration Technology Ltd 2010 2 SLR 733 Mühlbauer AG at 17 the question whether the patentee s claim is new for the purposes of section 32 1 e falls to be decided as a question of fact If the prior inventor s publication contains a clear description of or clear instructions to do or make something that would infringe the patentee s claim if carried out after the grant of the patentee s patent the patentee s claim will have been shown to lack the necessary novelty that is to say it will have been anticipated The prior inventor however and the patentee may have approached the same device from different starting points and may for this reason or it may be for other reasons have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device but if carrying out the directions contained in the prior inventor s publication will inevitably result in something being made or done which if the patentee s patent were valid would constitute an infringement of the patentee s claim this circumstance demonstrates that the patentee s claim has in fact been anticipated If on the other hand the prior publication contains a direction which is capable of being carried out in a manner would infringe the patentee s claim but would be at least as likely to be carried out in a way which would not do so the patentee s claim will not have been anticipated although it may fail on the ground of obviousness To anticipate the patentee s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented A signpost however clear upon the road to the patentee s invention will not suffice The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee For this purpose it is not permissible to combine earlier unconnected publications to show anticipation for if combination of earlier unconnected publications is necessary to assemble all the elements of the invention said to have been anticipated it follows that no one man has previously made the invention and that the combination is novel emphasis added The distinction between the requirement of novelty and the requirement that a patented invention contains an inventive step has been stated succinctly by Lord Hoffman in Synthon BV v SmithKline Beecham Plc Paroxetine 2006 RPC 10 at 25 it is this requirement that performance of an invention disclosed in the prior art must necessarily infringe the patent which distinguishes novelty from obviousness If performance of an invention disclosed by the prior art would not infringe the patent but the prior art would make it obvious to a skilled person how he might make adaptations which resulted in an infringing invention then the patent may be invalid for lack of an inventive step but not for lack of novelty 31 Thus a prior art publication which has anticipated the patentee s patented invention must contain clear and unmistakeable instructions or descriptions which if followed would allow a person skilled in the art to obtain a product or process which would infringe the patent assuming that the patent is valid see also Merck Co Inc v Pharmaforte Singapore Pte Ltd 2000 2 SLR R 703 at 37 and Genelabs CA above at 15 at 24 A patentee s claim may also be anticipated by a prior art publication which teaches the achievement of a particular end by several alternative methods as long as the prior art publication contains clear and unmistakable directions as to the performance of at least one method of achieving that particular end which constitutes a flag planted at the precise destination before the patentee see Ranbaxy UK Ltd v Warner Lambert Co 2006 FSR 14 at 52 upheld by the English Court of Appeal in Ranbaxy UK Ltd v Warner Lambert Co 2007 RPC 4 at 40 and Laboratorios Almirall SA v Boehringer Ingelheim International Gmbh 2009 FSR 12 at 212 214 However if the instructions or teachings at a particular intermediate step are unclear and admit of various possibilities of doing or taking that step which could eventually lead to different end results one of which may be the patentee s invention as claimed but not the others then I would regard that more as a signpost along the road that may or may not lead to the patentee s invention As such it may not enable the prior inventor to plant his flag inevitably at precisely the same destination before the patentee in which case the patentee s claim cannot be said to have been anticipated by that prior art publication 32 It bears emphasis that the inquiry into whether an invention has been anticipated by prior art is an inquiry which is conducted through the perspective of a person skilled in the art who is a workman or technician aware of everything encompassed in the state of the art and who has the skill to make routine workshop developments but not to exercise inventive ingenuity or think laterally per Laddie J in Pfizer Ltd s Patent 2001 FSR 16 at 62 63 cited with approval in First Currency Choice above at 15 at 28 33 Prior art publications must be construed in the light of the state of knowledge known to readers skilled in the art as at the date of the publication of the prior art and the court must eschew ex post facto analysis of prior art publications in the light of information that had subsequently been made available to the public Trek Technology Singapore Pte Ltd v FE Global Electronics Pte Ltd 2005 3 SLR R 389 per Lai Kew Chai J at 87 affirmed on appeal in FE Global Electronics Pte Ltd v Trek Technology Singapore Pte Ltd 2006 1 SLR R 874 The court should also consider prior art publications separately for the purpose of determining the question of novelty and not mosaic or combine disparate pieces of prior art in order to arrive at the invention which is the subject matter of the disputed patent ibid The construction of the prior art in the light of common general knowledge known at the time of the publication of the prior art to an unimaginative person skilled in the art does not amount to mosaicking of different prior art publications Therefore if a prior art document teaches the making of a chair with four legs by attaching each leg onto a corner of the base of the seat but does not state what materials should be used in the making of the chair the person skilled in the art may properly interpret the prior art document as teaching the making of a chair with four legs using the materials generally known to be available at the time of publication of the prior art document for making furniture This does not at law constitute mosaicking two prior art publications because the knowledge that furniture may be made with wood forms part of the common general knowledge of persons skilled in that art at that time However if the four legs and the seat of the chair are specified in the invention to be made of a special carbon fibre material in order to make the whole chair especially light and especially strong to withstand the weight of a very heavy person then I may regard that invention as new or novel and not part of the state of the art because the use of such a special material is not part of the common knowledge at that time of publication of the prior art of making a chair with four legs 34 I would add a further observation In my view the application of the reverse infringement test is straightforward where the prior art publication and the patent claims are pitched at the same level of abstraction It is more complicated when the two are pitched at different levels of abstraction The case of Mühlbauer AG above at 30 illustrates this In that case the appellant s claimed invention related to a machine for the simultaneous inspection picking up and placing of electronic components onto printed circuit boards or tape and reel packaging within a single 180 degree rotation of a two headed pivoting part of the device The invention allowed inspection to be conducted by means of a camera mounted on top of a through opening located transversely between the two pickup heads In the respondent s earlier version of this product inspection and picking up was not done simultaneously and the rotating devices used would typically have more rotating heads one of which was used to mount the camera The Court of Appeal stated that The present appeal illustrates the very important general point to the effect that no area of the law including that relating to patents is exempt from the general principles of logic and rational argument Indeed this point is so obvious that it is often taken for granted In this appeal it is illustrated by the argument by counsel for the Respondent that because the use of pick up heads was nothing new and more importantly because his client s patents had in fact more pick up heads the Appellant s claim that the Patent was novel and embodied an inventive step must fail Such an argument is at first blush admittedly persuasive However it is our view that the respondent s counsel albeit unintentionally has pitched the argument on behalf of his client at too high a level of abstraction Put simply whilst the proposition advanced is not factually incorrect it does not include that degree of specificity which is required under the particular principles embodied in the current law Indeed if the argument of the Respondent s counsel is correct any novelty and or further inventive step would literally be virtually if not wholly impossible A moment s reflection would reveal that this is incorrect simply because it is always possible for there to be novelty and or a further inventive step particularly if we view the inquiry from a qualitative point of view Everything would depend in the final analysis on the particular facts and more importantly the impact if any that the patent concerned has on the existing state of the art in that particular sphere Indeed one of the Respondent s arguments as we have just seen centred really on the quantity of pick up heads rather than as we think ought to be the case the overall qualitative difference if any between the Patent on the one hand and the patents relied on by the Respondent on the other emphasis in original In Mühlbauer AG above at 30 the patent specifications had described the patent in a very specific manner and had explained how the invention had achieved the result of reducing the time necessary for the pick up and inspection of the printed circuit boards The respondent s counsel had sought to interpret the description of the invention in the most abstract manner possible because at a higher level of abstraction it was more likely to have been anticipated by the prior art This was held impermissible because at a high level of abstraction prior art would easily have anticipated the invention A fortiori where the patent document has been pitched at a high level of abstraction by the patent drafters themselves the court is faced with the task of determining whether the specific in the prior art has anticipated the general in the patent claims In so doing the court ought to interpret the prior art at the same level of abstraction expressed by the patent claims in order for a meaningful comparison between the patent claims and the prior art to be conducted The result of such a comparison would as a matter of practice likely result in the invention being held to have been anticipated by the prior art This is so regardless of whether the patentee in fact manufactures for sale a much more complex and sophisticated product than the invention claimed in the patent specification 35 The following hypothetical illustrates the point made in the preceding paragraph Assume that the state of the art consists of publications which teach in detail the making of hybrid cars which are cars which use two or more power sources to move the vehicle Subsequently someone applies to register a patent over a car which is connected to an engine and four wheels Assume for the moment that the patent for a car with an engine and four wheels is accepted for registration because the hybrid car was not the subject of a pre existing patent Subsequently a hybrid car maker then commences proceedings for the invalidation of the patent on the ground of lack of novelty In such a situation the patent ought to be invalidated because although the performance of the prior art publication will result in a hybrid car which is strictly speaking not identical to the simpler invention claimed in the patent document the hybrid car would have infringed the patent assuming that the patent is valid because it consists of the essential integers of the exterior of the car an engine and four wheels Thus the proper approach is in my view to notionally perform the prior art from the perspective of a person skilled in the art and then to reduce the notional end product to the same level of abstraction as the patent claims for the purpose of determining the question of anticipation 36 Suppose however that the same patentee although having chosen to register a patent in such vague terms actually manufactures a product which is much more sophisticated than a mere car with an engine and four wheels The patentee s manufactured product is in fact a hybrid sports car with an extremely efficient engine which can travel by electrical propulsion at times Due to the high speed which may be attained by the patentee s hybrid sports car its product is distinguishable from normal pre existing hybrid cars However this does not mean that the patent is therefore a valid one A patentee in order to avoid or minimise the risk of invalidation of its patent due to anticipation by prior art ought to claim no more than a monopoly over what was actually invented The patentee should have registered his patent specifically only for his special high speed and efficient engine and not widen the scope of the claim to such a general level as a car with merely an engine and four wheels In determining the question of whether the invention claimed in a patent specification has been anticipated by the prior art the court focuses on the invention claimed in the document and not on the actual product manufactured by the patentee Otherwise the law would provide a carte blanche for inventors to register all manner of patents which claim a wide monopoly over all and sundry to stifle competition As mentioned in the first paragraph of this judgment the infringement validity dichotomy helps to ensure that the scope of the patent is no wider than what has been actually invented Courts should therefore be critical of attempts by patentees to limit ex post facto the scope of their patent claims by conflating their actual manufactured products with their patent claims in order to avoid invalidation on the ground of anticipation by the prior art Whether the defendant s product is new 37 I turn now to the facts of the present case bearing in mind that according to the Act one of the prerequisites for patentability is whether the invention in question is in fact new or in other words whether the invention is novel The touchstone of newness or novelty is ultimately an intensely factual inquiry of whether a purported invention has been anticipated by a prior enabling disclosure which renders the purported invention no longer new or novel Hence one should not be over formalistic and rigidly adhere to the reverse infringement test as a substitute for the question of newness or novelty 38 The plaintiff submits that the defendant s alleged invention is not new because it had already been anticipated by each of the four pieces of prior art which had already been in existence prior to the priority date of the defendant s patent 4 October 2000 In particular the prior art relied upon individually are a the Automatic Vehicle Location and Control System AVLC which has a model name VICOS LIO 500 as described in the VICOS LIO 500 Specification for release 5 version 2 0 published sometime in November 1999 VICOS LIO document which describes a public transport fleet monitoring system b the Verband Deutscher Verkehrsunternehmen 300 Recomendations 300 published sometime in January 1992 for an Integrated On board Information System English version which sets out standards developed by the German Federation of Public Transportation Operators to standardise the implementation of computers on vehicles which control various devices on trains trams and buses and the interaction of these on board computers with a control centre VDV 300 document c the guidelines for implementing Real Time Information Projects for City wide Public Transport on the provision of real time information services to passengers published in June 2000 found on the European Commission s Community Research and Development Information Service s CORDIS website cordis europa eu which is the European Commission s website for research and development RTI document d the flip dot cum LED display system used by TIBS Taxis Pte Ltd Mercedes Benz taxis TIBS flip dot cum LED system shortly prior to the year 2000 and an internal document of TIBS Taxis Pte Ltd prepared by one Trevor Rogers from a company known as Signalling Technology Pte Ltd for use in the testing process of the TIBS flip dot cum LEDs mounted on top of Mercedes Benz taxis belonging to TIBS Taxis Pte Ltd TIBS flip dot cum LED document The plaintiff s submission is that the VICOS LIO document the VDV 300 document the RTI document and the TIBS flip dot cum LED system used by TIBs Mercedes Benz taxis each constitute prior art which contain enabling disclosures of systems for transport fleet management from a remote control centre and which also comprise external displays which are capable of displaying information input by the driver of the transportation means or sent by the control centre In particular the plaintiff alleges that with the multicoloured displays being common general knowledge prior to the year 2000 the four prior art publications when abstracted to the same level of generality as the claims in the defendant s patent each disclose or teach the following five essential integers of the defendant s alleged invention ie a a multicoloured display mountable on a transportation means for displaying visual information b a display controller for controlling the multicoloured display c a logic controller for providing logic control in relation to the display of multicoloured visual information d a communication means for communication information between the logic controller and a remote information source and e a remote control centre for monitoring and controlling the movement of transportation means The defendant submits that the VICOS LIO document VDV 300 document and RTI document do not contain sufficient disclosure such as to allow a person skilled in the art to arrive at the invention described in the defendant s patent In particular the defendant submits that the VICOS LIO document and the VDV 300 document do not teach that the integer of a multicoloured display mountable on the top of a transportation means may take the form of a display using a panel of multicoloured LED lights Similarly the defendant submits that the RTI documents do not anticipate the defendant s invention because although the RTI document expressly teaches that information may be displayed on stationary LED or liquid crystal display LCD terminals there is no express reference in the RTI document to multicoloured LED displays In addition all three prior art documents disclose systems for transport fleet control and management and do not specifically teach that LED display panels may be mounted on taxis as opposed to other transportation means such as buses to inform commuters of the availability of taxis for hire The defendant further submits that the TIBS flip dot cum LED document was not a document which has been made available to the public and therefore does not amount to prior art within the meaning of s 14 2 39 I will first deal with the preliminary issue of whether the TIBS flip dot cum LED document forms part of the state of the art as defined by s 14 2 of the Act as at the priority date of the defendant s patent The TIBS flip dot cum LED document describes the manner of connection of a rooftop display to another component known as the mobile display terminal ie through which ports and cables are to be used for establishing the connection It also discloses the operating software used for communication of output to the rooftop sign and the computing protocol used In addition it also discloses that a mobile display terminal should be installed in the taxi to display information to and receive input from the driver This mobile display terminal then sends a signal to the rooftop sign to change the message displayed according to the driver s input This document was adduced through Mr Chong Sin Keong who had been an employee of TIBS Motors Pte Ltd from November 1991 to 2001 After the company merged with SMRT Corporation Ltd in 2001 Mr Chong worked in the merged entity until April 2008 The TIBS flip dot cum LED document was prepared in November 1997 by one Mr Trevor Rodgers of an entity known as Sigtec Pty Ltd and an IT executive from TIBs Taxis Pte Ltd as a checklist for the testing of the system during its installation phase 40 Mr Chong explained that the TIBS flip dot cum LED document described the system used by TIBs in 1997 where the flip dot cum LED displays were installed on the rooftops of a fleet of Mercedes taxis It was an improvement from an existing system implemented in 1995 on other TIBs taxis which had the following function when a taxi was on call the remote control centre would manipulate the rooftop display sign to display the message ON CALL Otherwise the driver s action of starting and stopping the taximeter on the taxi would manipulate the rooftop sign to display the words HIRED or TAXI accordingly Prior to 1997 the displays used were a panel consisting of regular arrangement of multiple flip dots which were approximately 45 degrees from a light source at the side of the panel These flip dots reflected light from the light source and sunlight if available to enable commuters to see the display In 1997 these flip dots were modified and LEDs embedded within each dot were made forward facing so that the light emitted from the LED in each flip dot would lead to increased visibility of the LED display itself during the night Mr Chong avers that the modification was done to the system as a result of this change and the TIBS flip dot cum LED document was created as a result of this process as a checklist for testing of this new system 41 In my view the TIBS flip dot cum LED document is not part of the state of the art because it had never been made publicly available Mr Chong was in charge of using the document for the purpose of testing the system At the trial he stated that the TIBS flip dot cum LED document was an internal document accessible by TIBS staff and not the public generally Therefore this document did not constitute prior art which this court may have cognizance of However I am of the view that the actual physical product interpreted in the light of what was commonly known to the general public and the users of the TIBS product ie the taxi drivers was part of the prior art which this court may have cognizance of This is not to say that common general knowledge is limited to only knowledge known to members of the public because common general knowledge refers to knowledge known to a notional person skilled in the art which includes knowledge which may be unavailable to the general public First Currency Choice above at 15 at 38 In the light of the evidence given by Mr Chong I am of the view that the public or at least taxi drivers probably constituting a fairly large section of the public operating the TIBs flip dot cum LED system and all the more so the person skilled in the art would know quite generally that the taximeter is connected to the rooftop display which displays different messages depending on the input of the driver of the taxi and that a control centre may manipulate the rooftop display to show the ON CALL sign only when a call has been accepted by a taxi driver While it is doubtful whether the TIBS physical exhibit ie the panel of flip dot cum LEDs adduced during the trial also gives sufficient disclosure of the detailed internal working and the detailed electrical and electronic circuitry as would allow a person skilled in the art to create a system identical to the TIBS flip dot cum LED display the level of disclosure given at the fairly general level based on the manner of use of the system as generally known to the taxi drivers operating the system is to my mind at about the same level of disclosure as what has been given by the defendant s very own patent I have assumed for the purposes of this discussion that such a level of disclosure is sufficiently enabling Nevertheless I am of the view that the TIBS flip dot cum LED system had not anticipated the defendant s invention The TIBS product uses only a monochrome LED display and does not teach like the defendant s patent that the display ought to take the form of a multicoloured display Since an essential integer the multicoloured display of the defendant s invention has not been taught by the TIBs prior art a person skilled in the art performing the TIBs prior art in the light of the common general knowledge at the material time would not arrive at a product which would have infringed the defendant s patent assuming that it was validly granted The person skilled in the art performing the TIBs prior art would still have arrived at a taxi rooftop LED display that was monochrome as the TIBs prior art specifically and explicitly teaches that a monochrome display is to be used and not otherwise although it may already be common knowledge at that time that multicoloured LED displays are generally available for use as electronic displays 42 I now consider the VICOS LIO document which describes a system developed by the Siemens group of companies the Siemens system and which was prepared for the purpose of sending to customers of Siemens which utilise the system and to potential customers The Siemens system was developed for public transportation such as buses and trams to facilitate the collection and dissemination of information for the benefit of drivers transport service providers and the general public The VICOS LIO document states that the Siemens system consists of the following components a a central control centre which can monitor the location of individual buses using automatic vehicle location technology and send to and receive from individual buses information in relation to the location of the bus and instructions on whether to slow down or increase speed b an external electronic display without specifying whether it is to be a monochrome or multicoloured display on the front and side on the bus as well as an electronic display installed at individual bus stops which display information such as route number and details or other information to passengers sent by the remote control centre c an on board display which exhibits messages sent to the driver and a device within the bus which receives input from the driver and communicates that information as well as information in relation to its location and expected time of arrival at a certain bus stop to the remote control centre and d communication means which transmits data using radio data to computers installed on board the individual buses which in turn control the displays on the buses 43 The VICOS LIO document does not expressly state that electronic displays mounted on the exterior of buses are connected to display and logic controllers which control the turning on and off of individual LED lights in the panel of numerous multicoloured individual LED lights 44 However according to the plaintiff relying on its expert Mr Brian Higbee s testimony the teaching in the VICOS LIO document is that the display could be any form of electronic display and as multicoloured LED displays were already commonly available in the market at that time the VICOS LIO prior art clearly entails an instruction that the electronic display panel used may be made up of a multitude of individual LED lights in different colours Furthermore since it was common general knowledge among engineers who utilise such display panels that the LED display panel whether monochrome or multi coloured cannot work unless it is connected to display and logic controllers it goes without saying that display and logic controllers must necessarily be utilised as components of such systems Thus according to the plaintiff persons skilled in the art reading the VICOS LIO document in the light of the common general knowledge at that time would inevitably arrive at the defendant s invention expressed at the high level of generality as described in the defendant s patent I agree with the plaintiff s expert on this issue Where it is already common knowledge at the date of publication of the prior art that electronic displays for the purpose of displaying visual information to be read or seen can be either monochrome or multicoloured and when the prior art description does not specify that the electronic display must be monochrome or must be multicoloured but merely stipulates as one of the integers that an electronic display is to be used I would construe the scope of the prior art to cover both monochrome and multi coloured electronic displays within that integer The drafter of the VICOS LIO document must have intended to cover unambiguously both alternatives and not merely the use of a monochrome electronic display to the exclusion of the multicoloured or the use of a multicoloured electronic display to the exclusion of the monochrome in his inventive concept Consequently the VICOS LIO document must have anticipated the use of the either the monochrome or multicoloured electronic display as one of the integers Thus to my mind the VICOS LIO document discloses a system for displaying information on top of a transportation means using monochrome or multicoloured electronic displays Therefore it does not constitute a vague disclosure which permits the prior art publication to be performed in other imaginable ways of which one would but others would not infringe the defendant s patent assuming that the patent was valid 45 Thus to my mind in applying the reverse infringement test to the facts of this case it would be inappropriate to apply the following portion of Sach J s pronouncement in General Tire Rubber above at 30 which I set out again in full for convenience If on the other hand the prior publication contains a direction which is capable of being carried out in a manner would infringe the patentee s claim but would be at least as likely to be carried out in a way which would not do so the patentee s claim will not have been anticipated although it may fail on the ground of obviousness The above pronouncement is applicable where the disclosure made by a prior art publication is vague as to or fails to disclose instructions with respect to a particular step or stage of the process of arriving at an invention Such vagueness or silence would require a person skilled in the art performing the invention to perform the direction by a method

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  • FE Global Electronics Pte Ltd and Others v Trek Technology (Singapore) Pte Ltd and Another Appeal[2006] 1 SLR 874; [2005] SGCA 55
    the ThumbDrive device 13 It should be borne in mind that when Trek applied for the patent on 21 February 2000 it had already invented the ThumbDrive device which was unveiled at an international exhibition one week later Trek s counsel Mr Davinder Singh SC thus pointed out that it is most unlikely that having invented the ThumbDrive device Trek would fail to describe its essential features in a patent application that was intended to protect its rights in relation to this device 14 The language of a patent is deemed to have been addressed by the inventor not to a panel of equity draftsmen but to the man skilled in the art per Dillon LJ in Strix Limited v Otter Controls Limited 1991 FSR 354 at 357 Indeed in Catnic Components Limited v Hill Smith Limited 1982 RPC 183 at 243 Lord Diplock aptly observed that the words of a patent should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge We agree that the purposive approach is preferred as it balances the rights of the patentee and those of third parties More recently in Kirin Amgen Inc v Hoechst Marion Roussel Ltd 2005 RPC 9 at 48 the House of Lords endorsed the Catnic purposive approach as consonant with the Protocol on the Interpretation of Art 69 of the European Patent Convention which provides inter alia that a patent should be interpreted as defining a position which combines a fair protection for the patentee with a reasonable degree of certainty for third parties 15 The original claims by Trek under its patent which are to be purposively interpreted are as follows Claim 1 A portable data storage device comprising a coupling device for coupling to a computer serial bus an interface device coupled to the coupling device a memory control device and a non volatile solid state memory device the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device Claim 2 A device according to claim 1 wherein the non volatile solid state memory device is a read write memory device Claim 3 A device according to claim 2 wherein the read write memory device is a flash memory device Claim 4 A device according to claim 2 or claim 3 wherein the memory control device controls the flow of data to and from the memory device Claim 5 A device according to any of claims 2 to 4 further comprising a manually operated switch movable between a first position in which writing of data to the memory device is enabled and a second position in which writing of data to the memory device is prevented Claim 6 A device according to any of the preceding claims wherein the memory control device comprises a micro controller Claim 7 A device according to any of the preceding claims wherein the coupling device comprises a universal serial bus coupling device and the interface device comprises a USB driver Claim 8 A device according to any of the preceding claims wherein the coupling device comprises an IEEE 1394 Firewire protocol coupling device and the interface device is a Firewire protocol driver 16 It is evident that the features of the ThumbDrive device are adequately covered in the claims For a start the patent teaches the concept of a portable data storage device which functions as an alternative to a conventional magnetic disc or a CD ROM but is more convenient because it is more compact than the alternative mediums of storage of data The patent outlines the disadvantages of the conventional prior art as follows Conventional data storage devices generally fall into two categories The first is electronic solid state memory devices such as read only memory ROM and random access memory RAM These memory devices are generally fitted within the computer They are not intended to be removable or portable so that they may be used on different computers for example to permit the transfer of data from one computer to another computer The second type of device is surface based data storage devices in which data is stored typically on the surface of a disk or tape Examples of surface storage devices are magnetic disks and CD ROMs Such data storage devices require a mechanical drive mechanism to be installed in or coupled to the computer to permit the data on the storage device to be read by the computer In addition such memory devices are limited by the surface area of the storage device and the combination of the storage device and the drive mechanism for reading data from the storage device is generally bulky and or delicate due to the moving parts that are required within the drive mechanism and or storage device emphasis added 17 The patent next describes the inside of the device referred to as device 10 as follows An advantage of the device 10 is that it provides a portable data storage device for a computer which does not require a mechanical operated reading writing device In addition the device 10 has no moving parts This enables the data storage device 10 to be more compact than conventional portable data storage devices emphasis added 18 Thus far the patent has described what the ThumbDrive device is capable of doing Realising that the ThumbDrive device scores highly because it may be directly plugged to and unplugged from a USB socket in the computer the appellants tried to distance the patent from this device by claiming that the patent does not disclose such direct plugging and unplugging They suggested that a skilled reader of the patent would assume that a cable would be required to connect the patented device to the computer In view of this whether the patent discloses a device that requires a captive or detached cable became an important issue 19 The appellants expert witness Mr Shimon Shmueli acknowledged that the patent disclosed a storage device with a USB coupling device and driver but he asserted that the coupling device in the patent was not in the form of an integrated USB A plug without an intervening cable His rationale for this was that USB specifications refer to only two types of connections namely a captive or a detachable cable and as such the patent must be taken to have disclosed either a captive or detachable cable This is incorrect because by the time Trek applied for its patent there was a device in the market known as Aladdin a security key for the protection of confidential data stored in a computer which is connected to a USB socket without a captive or detachable cable 20 Trek s expert witness Mr John Hyde testified that a skilled person will understand that Trek s patent discloses a portable memory device having an integrated USB plug for direct connection to the USB socket on a computer without an intervening cable He added that as the patent also highlights the portability compactness and durability of the device the attributes of the ThumbDrive device have been clearly disclosed in the patent 21 It is rather telling that the appellants expert witness Mr Shmueli conceded during cross examination as follows Q Show us where in the specifications or claim any reference to a cable between D12 and the connector let alone a captive cable Show us A There is not in the claim Q Is there in the specifications A No Q Is there anything in the patent which says that the connector is a cable A No 22 Admittedly when construing a patent the court determines what a skilled reader would think and not what the expert thinks This is not to say that an expert s view on what a skilled reader would think is totally irrelevant In our view the trial judge bore this in mind and rightly accepted that the patent discloses a unitary data storage device with an integrated USB plug to enable direct connection to the USB points of computers without the need for a captive or detachable cable That being the case the appellants argument that the ThumbDrive is not a device protected by the patent is clearly unacceptable Whether the application to amend the patent should have been allowed 23 The appellants assertion that Trek should not have been allowed to amend its patent during the trial will next be considered Section 83 of the Patents Act allows for the amendment of a patent during infringement proceedings However s 84 3 adds that no amendment shall be allowed under s 83 if it results in the specification disclosing any additional matter or extending the protection conferred by the patent 24 In Bonzel T v Intervention Limited No 3 1991 RPC 553 at 574 Aldous J adopted the following helpful test to determine whether there is any disclosure of additional matter The task of the court is threefold 1 To ascertain through the eyes of the skilled addressee what is disclosed both explicitly or implicitly in the application 2 To do the same in respect of the patent as granted 3 To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly emphasis added 25 The appellants contended that the amendments added subject matter On the other hand Trek contended that its proposed amendments which concerned Claims 1 and 8 were properly allowed because they fell within the four corners of the patent 26 The original Claims 1 and 8 have been set out earlier on The amended Claims 1 and 8 with additions in italics and the new Claim 1A are as follows Claim 1 A portable data storage device which can be directly plugged into a USB socket of a computer and which is operative to function as an alternative to a magnetic disk or CD ROM and which is capable of storing software for installation to the computer or of receiving and storing user s data present in the computer and which comprises a USB plug for coupling directly to a USB socket on a computer an interface device coupled to the USB plug a memory control device and a non volatile solid state memory device the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the USB plug Claim 1A A portable data storage device according to claim 1 that is more compact than a conventional magnetic disc or CD ROM storage device Claim 8 A device according to any of the preceding claims wherein the USB plug and USB socket are replaced by an IEEE 1394 Firewire protocol plug and a Firewire protocol compatible socket respectively and the interface device is a Firewire protocol driver 27 Some consequential amendments which need not be discussed here were also included 28 Trek explained that the amendments were required to place the invention in its proper perspective having regard to the matters disclosed in the prior art and the specifications to limit the invention in Claim 1 in order to distinguish the invention claimed therein from matters disclosed in the prior art and the specifications and to insert a further dependent Claim 1A to refer specifically to the compactness of the device It submitted that none of the amendments sought disclosed any additional matter or extended the protection conferred by the patent We agreed that this was the case Exercise of discretion 29 In Smith Kline French Laboratories Limited v Evans Medical Limited 1989 FSR 561 Smith Kline at 569 the factors to be taken into account by a judge when exercising the discretion to allow or disallow a proposed amendment of a patent were outlined by Aldous J as follows a whether the patentee has disclosed all the relevant information with regard to the amendments b whether the amendments are permitted in accordance with the statutory requirements c whether the patentee delayed in seeking the amendments and if so whether there were reasonable grounds for such delay d whether the patentee had sought to obtain an unfair advantage from the patent and e whether the conduct of the patentee discourages the amendment of the patent 30 Whether the position stated in Smith Kline should be reviewed in view of the system employed nowadays for the registration of patents was considered in Instance v CCL Label Inc 2002 FSR 27 at 39 by Pumfrey J who said I have to admit that I do not find the reasoning which underpins this approach entirely satisfactory In the days before claims it was understandable The patent was either valid or invalid and to identify the need to disclaim part of the invention was to admit invalidity To sue on a patent known to be invalid was seen to be wrong and unfair When an application to disclaim was made the patentee was put on terms that it would not start further infringement proceedings until the application to disclaim had been disposed of With the advent of claims and later provision for relief for infringement of a patent only partially valid albeit on terms which would normally include amendment and on condition that the specification had been framed in good faith and with reasonable skill and knowledge the rationale for this approach becomes less clear 31 We agree that the modern context in which patents are registered must be taken into account when considering whether amendments should be allowed The present practice in Singapore is that skilled examiners examine and scrutinise patent applications and if there is a negative patent examination report it is in the patent file at the Intellectual Property Office of Singapore and is open for public inspection Lai J was thus entitled to say at 67 of his judgment that as examination reports are available for public inspection adverse parties are able to evaluate the validity and strength of patents which have been filed and they are less likely to be surprised and consequently prejudiced by subsequent amendments which may be sought by the patentee even if this takes place in the course of patent litigation As there is little scope for abuse when patent applications for patents are filed nowadays we agree that a more lenient approach towards amendments is now called for 32 We noted that the appellants complained that the amendments were not clear More specifically they thought the phrase more compact than a conventional magnetic disk or CD ROM storage device was not concise enough In the context in which these words appear there is no doubt as to what they mean After all as the trial judge pointed out the appellants expert Mr Shmueli had no difficulty using the words compact and conventional in relation to the appellants devices The appellants other complaint was that Claim 1A was ambiguous but the evidence suggests that Claim 1A is dependent on Claim 1 and is thus supported by the patent 33 As for the argument that there was undue delay in applying for an amendment of a patent this was not substantiated Lai J pointed out that the appellants had continued to introduce more and more prior art into the litigation and by doing so they had shifted the targets constantly There had been no bad faith or reprehensible conduct on Trek s part As such the question of barring the amendments on the ground of Trek s delay did not arise 34 Finally there were sufficient references in the existing specification to support the amendments These references are set out at 57 of the trial judge s judgment 35 In our view Lai J s decision to allow the amendments cannot be faulted Whether the patent was infringed 36 As for whether the appellants infringed the patent the trial judge dealt with this question at length and concluded that the allegation of infringement was proved We saw no reason to interfere with his decision on the issue of infringement and will proceed to consider the appellants defences The appellants defences 37 Section 13 1 of the Patents Act provides that a patentable invention is one that is new involves an inventive step and is capable of industrial application As has been mentioned the appellants asserted that Trek s patent is invalid because it is not new or novel and not inventive Novelty 38 Section 14 of the Patents Act provides that an invention shall be taken to be new if it does not form part of the state of the art The state of the art comprises all matter whether a product a process information about either or anything else which has at any time before the priority date of that invention been made available to the public whether in Singapore or elsewhere by written or oral description by use or in any way Needless to say disparate pieces of prior art cannot be combined unless a document directs the reader to do so In considering what a person of competent but average technical skill and who lacks imagination would make out of the prior art the oft cited words of Sachs LJ in The General Tire Rubber Company v The Firestone Tyre and Rubber Company Limited 1972 RPC 457 at 486 are worth reiterating To anticipate the patentee s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented A signpost however clear upon the road to the patentee s invention will not suffice The prior inventor must be clearly shown to have planted his

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  • Ng Kok Cheng v Chua Say Tiong[2001] 3 SLR 487; [2001] SGHC 143
    periphery groove and an extended aperture receiving a first stud and a second stud in series 6 A door lock as claimed in claim 1 wherein the lock mechanism comprises an upper cylinder and a lower cylinder disposed in the main body in series a coiled spring and a drive key disposed in the through hole a compression spring and a driven key disposed in the through aperture a helical spring and a push key disposed in the recess hole a block blocking the push key the upper cylinder having a hollow interior and a semicircular protrusion having an insertion channel the lower cylinder having a semicircular lobe a reinforced casing enclosing the semicircular protrusion and a dust proof device having a flexible plate and two elastic elements inserted in the hollow interior of the upper cylinder and an outer cover covering the upper cylinder 31 Mr Kang spent a lot of time criticising the drafting of the claims and indeed I agree that they could have been better drafted so as to indicate not only the mechanical parts of the lock but also how these parts worked in conjunction with each other For the purpose of interpreting the claims to find the inventive step however it does not matter if the wording of the claim is slightly lacking as long as one can by reference to the description and the drawings work out what the claim means In this case having heard the evidence and read the patent I agree with the submissions of Mr Seah in relation to the inventive steps disclosed by claims 1 2 3 and 5 32 The next issue is what the state of the art was as at 29 May 1998 the date on which the patent application was filed For this one must go back to the early 1990s and the account that follows is based on the evidence of both Mr Ng himself and Mr Tan the defendant s expert At that time locks or padlocks used in the Singapore market were made with one body The evidence was that a lock with one body is safer than one that has two bodies The disadvantage of the one body padlock however is that it cannot be affixed permanently to a metal gate and therefore unlocking it requires the use of two hands A two bodied lock can when disassembled be affixed to the gate and assembled on the gate so that it remains there permanently whether locked or unlocked and can be unlocked by the use of one hand alone For such a lock to be marketable however the gates have to be of a standard shape and size Since most households in Singapore are HDB flats with gates following standard dimensions set by the HDB Mr Ng and his friends realised that there was a demand that justified the development of a two bodied lock 33 The two bodied Rigoh lock was introduced to the Singapore market for use on HDB gates in 1993 The two parts of the lock were held together by means of a bolt which could be accessed externally The Rigoh lock was well received and other brands adopting its design followed such as Crown and Armstrong The only difference was that in the Rigoh lock the head of the bolt was broken after the lock was mounted on the gate so that it was not possible to extract the bolt thereafter without breaking the lock Whilst locks of these other brands used screws which could be disengaged instead of bolts such disengagement also involved breaking the locks Plugs were used to cover the bolt and screws The Rigoh lock and its followers were specifically made for the Singapore market since their dimensions fit only gates which have the same specifications as the HDB gates Outside Singapore it would be difficult to market such locks since they cannot be used on gates with different dimensions 34 The situation as at May 1998 was therefore that there were two types of locks which could be used as padlocks On the one hand there were the Singapore specific two bodied padlocks which had the features described above On the other there were the conventional one bodied padlocks which were found not only in the Singapore market but all over the world Mr Kang when referring to the prior art referred both to the two bodied locks and to one specific model of the one bodied padlock the Abloy PL 260 This lock is obviously different from the Duro lock in that it is a one bodied lock Thus the features of outer casings and lateral covers for the main body and the auxiliary body are missing as necessarily is the feature of a rod disposed between the two bodies The similarity between it and the Duro lock if any is in the use of an internal screw for the purpose of attaching the lock mechanism to the body In the Duro lock screws in series are used to jam the rod within the auxiliary body 35 The third question I have to answer is in what respects do the inventive steps in the Duro lock go beyond or differ from the state of the art as found above 36 The Duro lock has features which were not found in the previous two bodied locks It has an outer casing and lateral cover for the main body an outer casing and lateral cover for the auxiliary body and a rod disposed between the main body and the auxiliary body It also has a shackle bar passing through the auxiliary body and into the main body and two screws inside the auxiliary body which screw into the rod disposed between the main body and the auxiliary body so that the two are held together Access to these screws is through a hole in the auxiliary body When the shackle bar is in the locked position it covers the hole in the auxiliary body and it is impossible to access the screws in order to unscrew them and free the rod 37 The only features which are shared by the prior Rigoh type locks and the Duro lock are the two bodies and the shackle bar that passes through the auxiliary body into the main body and the lock mechanisms disposed in the main body and operated by a key The Duro lock differs from the prior art in the way that the auxiliary body is attached to the main body the addition of features to protect the rod the disposal of screws in series within the auxiliary body in order to create a jamming effect and the use of the shackle bar to protect access to these screws It differs from the Abloy lock in that it has two bodies it has a rod it has the lateral covers and outer casing and it has two screws in series rather than only one screw for the purpose of holding the rod inside the auxiliary body 38 The next issue is whether having regard to the development or differences pointed out whether the taking of these steps would be obvious to the skilled man As stated a padlock is usually made with only one body and the prior locks sold in the Singapore market were the only ones made with two bodies Mr Ng thought that the prior locks were not secure as one could remove the plugs by a hand held drill in five minutes thereby exposing the bolt or screws Mr Tan agreed that removal took five minutes though he testified that no one in the trade thought this was a weakness Perhaps as a locksmith he found it useful that removing the plugs was not unduly difficult to do Mr Ng however considered the existing method of attachment a weakness and was motivated to find a solution to it The solution was the Duro lock with the features as claimed The Duro lock did fulfil Mr Ng s security concerns Although Mr Tan asserted in court that he had easily broken into the Duro lock when he was asked to demonstrate it took him more than 20 minutes of drilling with an electric drill and several changes of drill bit to drill through the lock and open it It was also a noisy process and not one that would recommend itself to a thief trying to obtain stealthy access to a locked flat for nefarious purposes 39 Nothing in the prior art suggested using a rod to attach the two bodies to each other nor that the rod should be protected inside the main body and auxiliary body by way of an outer casing and a lateral cover The original Rigoh lock had used a bolt to attach the two bodies together and the imitators had replaced the bolt with screws Both implements were however accessible from the outside since they were only covered by plugs and neither had the additional protection of an outer casing or a lateral cover The common knowledge on two bodied locks was evidenced by this prior art and I agree with Mr Seah s submission that there was nothing in this common knowledge to direct the unimaginative person skilled in the art to the rod and the features for protecting it I further agree that until one had decided on the use of a rod as the attaching implement one would not be likely to think of the other features in claims 2 3 and 5 and that these features were therefore not obvious 40 Mr Kang submitted that there was no invention in having a rod disposed between the two bodies He referred to the evidence of Dr Khong who stated that he did not find any inventive step when he read claim 1 alone Dr Khong did however identify the invention as being the mechanism of joining connecting and securing the main body and the auxiliary body through the rod and the method of protecting the rod In any case the inventive step in claim 1 can be discerned when the claim is read in the light of the description and the drawings and I do not accept that if you cannot find an inventive concept by reading a claim on its own the patent is bad Section 113 of the Act is opposed to such an exclusive reading Mr Kang also argued that it did not take Mr Chiu very long to come up with the ideas embodied in the Duro lock and therefore they could not have been inventive steps and were probably simply mechanical contrivances I do not think degree of inventiveness is to be measured by the time taken to come up with a new concept Sometimes this takes a while and at other times one can have a flash of inspiration and come up with a new idea in a jiffy 41 It is also my opinion that the Abloy lock would not have directed an unimaginative person to the features found in the Duro lock As a one bodied padlock the Abloy lock would not be secured to a gate in the same way as the patented lock Like other padlocks it would have to be used on loops found on the gate and could not be attached directly to it Hence the development of a two bodied lock would not be obvious to a skilled person who was looking at the Abloy padlock According to the evidence a European patent has been applied for in respect of this model of Abloy lock and the purported inventiveness in the lock lies in having a lateral cover that shields the key cylinder from access This is not a feature found in the Duro lock Further the Abloy lock was not developed to solve the weaknesses in the Rigoh type locks Thus it would not have been obvious to a person looking at that lock to develop the features that are found in the Duro lock I note also that the patent for this Abloy lock was one of the prior art cited to and distinguished by the examiner when the plaintiff s patent was applied for 42 As an additional ground for refuting the defence of obviousness Mr Ng relies on the commercial success of his lock He proudly claims that he achieved sales of more than 1m during the 15 month period between July 1998 and October 2000 Mr Ng also gave evidence that he had himself carried out informal surveys of some HDB blocks and that the last of these in the first half of 2000 showed that his lock had captured 40 of the market Further after he launched Duro some of the other brands gradually disappeared from the market for example Crown and Armstrong and this was despite the fact that the Duro sold for double or more than double the price of the Crown or Armstrong lock Then in April 2000 Mr Chua launched the Castle lock which he openly admitted had been copied from the Duro lock This lock is also being sold at a price well above the prices of the Crown or Armstrong locks though its price is somewhat lower than the Duro lock s 43 Mr Kang does not accept the evidence of commercial success put forward on behalf of Mr Ng He pointed out that the sales figures were based on an audit done by the firm of Sim Teo Associates He considered the audit report to be suspect since it was signed by one Ms Sim who did not come forward to testify as to the accuracy of the report One Ms Chua testified that she had done the audit work and confirmed that contents of the report were true She had not signed the report however presumably because Ms Sim was the partner and not Ms Chua Mr Kang did not think that Ms Chua could be regarded as a truthful witness because she said that there had been no prior relationship between her firm and Mr Ng s companies before the preparation of the report Subsequently she was confronted with a search from the Registries of Companies showing that Sim Teo Associates was the auditor of a company called Duro International Pte Ltd owned by Mr Ng Mr Kang found Ms Chua s response that her previous answer had been true because no audit had yet been performed for Duro International Pte Ltd to be unconvincing I am not convinced that Ms Chua is a liar simply because of this at the most technical untruth Ms Chua did the audit She was not shaken on her mode of audit or on its results and I consider those results to have been proved 44 Even if the plaintiff s evidence regarding his market share is self serving and unsubstantiated since he did not produce any records of his surveys if he had Mr Kang might have insinuated that he had made them up the figures as shown in Ms Chua s audit established that despite its higher price the Duro lock has been reasonably successful in the market Some of this may be due to the advertising gimmicks which Mr Ng frankly admitted he had adopted in order to build up brand awareness and market share In my judgment however the sales figures of the Duro lock cannot be credited to clever advertising alone especially since the product advertised cost much more than the competing and well established products already in the market Whilst commercial success is not conclusive of the non obviousness of the invention the success of the Duro brand to the extent that it has replaced some of the brands of prior art does as submitted by Mr Seah go some way towards establishing the invention is not obvious 45 On this issue I conclude in favour of the plaintiff Has there been an enabling disclosure Law 46 Section 25 4 of the Act states that The specification of an application for a patent shall disclose the invention in a manner which is clear and complete for the invention to be performed by a person skilled in the art This is reinforced by s 80 1 c which allows a registrar to revoke a patent for invention on the ground that its specification does not disclose the invention clearly and completely for it to be performed by a person skilled in the art Under s 82 1 and 3 the validity of a patent may be put in issue by way of defence in proceedings for infringement of the patent and the only grounds on which this can be done are the grounds specified in s 80 1 for the revocation of the patent 47 Several cases have discussed the approach to be taken by the court in determining the sufficiency of the specification Relevant passages from two are cited in the following paragraphs of 7 48 of Terrell The general principles by which the sufficiency of the specification should be determined were stated by Lindley L J in Edison and Swan Electric Co v Holland in the following way in describing in what manner the invention is to be performed the patentee does all that is necessary if he makes it plain to persons having reasonable skill in doing such things as have to be done in order to work the patent what they are to do in order to perform his invention If they are to do something the like of which has never been done before he must tell them how to do it if a reasonably competent workman would not himself see how to do it on reading the specification As Lloyd L J said in Mentor Corp v Hollister Inc The question for decision in the present case is whether the specification discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art This obviously involves a question of degree Disclosure of an invention does not have to be complete in every detail so that anyone whether skilled or not can perform it Since the specification is addressed to the skilled man it is sufficient if the addressee can understand the invention as described and can then perform it In performing the invention the skilled man does not have to be told what is self evident or what is part of common general knowledge that is to say what is known to persons versed in the art But the difficulty How much else may the skilled man be expected to do for himself 48 Terrell advises in 6 31 that the construction of the specification is for the court alone when properly instructed as a notional skilled addressee The court is not obliged to accept the construction placed on the claims by either of the parties Further the observation of Jacob J in Minnesota Mining Manufacturing Co v Plastus Kreativ 1997 RPC 737 at 743 that the words are to be construed having regard to the inventor s purpose as set out in the rest of his patent must be remembered This is reinforced by Aldous J s directive that the reader must attempt to give the specification a practical meaning as contained in the following passage from Rediffusion Simulation v Link Miles 1993 FSR 369 at 388 There is seldom a case where a person who is asked to look at every word of a specification to try to destroy it cannot make out a case of potential ambiguity That is not the correct approach The specification should be read through the eyes of the skilled addressee attempting to give it practical meaning and endeavouring to ascertain the intention of the draftsman I believe that the defendant s reluctance to accept the word centre is clear and means the physical centre has been the result of an attempt to take the specification apart word for word and destroy it rather than trying to give it a practical meaning It must also be remembered that the burden of proving insufficiency rests on the defendant since he is challenging the validity of a registered patent 49 There is one small point here which I should dispose of before dealing with the defendant s submissions on the merits This relates to what level of description is required under ss 25 4 and 80 1 c The wording requires the specification to disclose the invention clearly and completely for it to be performed The equivalent English wording is clearly and completely enough Mr Kang submitted that the requirement of the UK Act is more lax and that the Singapore requirement is stricter so that the specification must be clear and complete I do not agree Although the word enough does not appear in the Singapore provisions the phrase clear and complete is not an unqualified one in either of those sections Instead it is followed by the words for it to be performed by a person skilled in the art This is a clear qualification implying that as long as a person skilled in the art would find the wording of the specification sufficient to enable him to make the invention it does not matter that the specification does not state every single step that has to be followed in order to make the invention Thus the clear meaning of the legislation taken as a whole is that it is sufficient if the specification is clear enough and complete enough and absolute clarity and completeness are not required Defendant s submissions 50 Mr Kang submitted that the patent specification did not disclose the invention sufficiently and completely enough for it to be performed by a person skilled in the art as required by s 25 4 The defence case on this point is that the specification failed at two levels a first that the single embodiment described in the specification is not clear and complete to enable a skilled person to work the invention and b assuming that the single embodiment is sufficiently described the specification also fails because the disclosure of the single embodiment in the description does not sufficiently enable a skilled person to perform the invention as defined in the claims First ground of insufficiency i Disengagement of the two bodies 51 On the first point the submissions for the defence went as follows First the invention relates to a lock that can be taken apart and reassembled and the inventive step lies in how the stud holding the auxiliary body is protected when the shackle bar is in the locked position It is only when the shackle bar is in the locked position and the screws are protected that the stated object of the invention is achieved protecting the auxiliary body when the door lock is locked 52 The physical example of the Duro lock produced in court showed that the two bodies can be detached so as to be able to mount the lock onto the gate The problem with the patent specification however is that its teaching is that of a lock which cannot be taken apart The patent specification does not describe the function of how the screws 23 and 24 in the patent these are called studs in the auxiliary body are protected by the shackle bar In fact it suggests that the two bodies of the lock cannot be detached further suggesting that the two bodies are permanently assembled and cannot be taken apart by the user This understanding of the patent specification is derived from the statement The first stud 24 and the second stud 23 cannot be detached from the outside which appears at the last line of the fourth page of the patent Mr Kang submitted that if screws 23 and 24 cannot be detached from the outside the logical assumption is that it would not be possible to detach the two bodies from each other in order to mount the lock onto the gate He also relied on Mr Tan s evidence on how he interpreted that sentence in the patent 53 Mr Kang also submitted that the description in the specification read together with the drawings would lead a person skilled in the art to conclude that the bodies could not be taken apart In this respect he relied on a passage from the re examination of Mr Chiu where Mr Chiu had apparently admitted that there was nothing in the diagram to teach one how to make the lock and that he had had difficulty understanding the drawings This passage was however quoted out of context The difficulty that Mr Chiu expressed was in relation to the Abloy lock and diagrams for it and not in relation to the Duro lock In that passage of the re examination Mr Chiu was being asked about the Abloy lock alone He was not commenting in any way on the diagrams relating to the Duro lock 54 The invention was intended to allow the user to detach the two bodies and mount them on the gate Mr Kang s submission was that the specification read with the drawings gives the opposite impression ie that the two bodies cannot be taken apart Therefore the description is not clear and complete for a person skilled in the art to perform the alleged invention 55 The above argument was somewhat different from that pleaded The pleaded particulars of insufficiency read The alleged invention relates to a door lock which can protect an auxiliary body from detaching while the door is locked It is not possible to perform the alleged invention to achieve the stated objective in that there is no disclosure in the body of specification how the auxiliary body can be protected from detaching while the door is locked Further or alternatively it is not disclosed clearly and completely in the specification of the Patent to show how the alleged invention is performed to achieve this stated objective From the above it can be seen that the argument on insufficiency related only to the stated objective of preventing the auxiliary body from being detached from the main body while the lock was in the locked position The particulars said that it was not possible to perform the alleged invention to achieve this objective of preventing detachment because the specification did not disclose how the auxiliary body was to be protected from detachment The particulars did not specify that the specification was inadequate because the description did not show how the two bodies were to be disengaged in order to achieve the mounting of the lock onto a gate nor did they allege that the description in fact gave the opposite impression ie that disengagement was not possible since the two screws could not be accessed from the outside 56 Mr Seah submitted that since the particulars of the objections did not expressly or even implicitly allude to the alleged difficulty in disengaging the auxiliary body from the main body I should disregard that objection He quoted Alsop Flour Process v Flour Oxidizing Co 1908 25 RPC 477 where the English Court of Appeal refused to entertain an objection that was not mentioned in the particulars of objection and British United Shoe Machinery Co v A Fussell Sons 1908 25 RPC 631 where the court refused to admit evidence on matters which the defendant had not set forward as an objection in the particulars 57 In his reply to the above point Mr Kang shifted ground He said that the patentee had stated the objective as being to protect an auxiliary body from detaching while the door lock is locked The defendant s position was that the specification did not teach how one achieved the stated objective The physical product Duro lock shows that this is achieved by using a shackle bar to protect screws 23 and 24 and that aperture 103 had to be aligned with through aperture 25 ie in the unlocked position before screws 23 and 24 could be detached None of that was disclosed in the patent specification and the defendant s pleaded objection that the specification did not disclose how the auxiliary body could be protected from detaching while the door is locked clearly encompassed the objection 58 Mr Kang went on to contend that a the specification is silent on whether the main body and the auxiliary body can be detached b the specification is silent on how this detachment if possible and reattachment can be achieved c there is a clear direction that screws 23 and 24 cannot be detached from the outside and d fig 6 shows the cross sectional view of the lock and this is the only longitudinal cross sectional view showing all through holes that are present in the lock Aperture 103 is not indicated at all or as a through hole The submission was that the above afforded a very reasonable basis for the defendant s contention that it was not clear how the invention was to be performed to achieve the stated objective the use of the shackle bar to block access to the internal studs and permitting access only when in the unlocked position How could the specification be clear he asked when the plaintiff could not explain why the statement stud 23 and stud 24 cannot be detached from the outside is included in the specification 59 Thus at the end of the day the objection relating to the statement regarding screws 23 and 24 was subsumed in the main objection relating to the stated objective of the lock which was to protect the auxiliary body from detaching while the door lock is locked It was not put forward as a separate objection relating to the inability to mount the lock on the gate As such I will deal with it in relation to the main objection I will not deal with it in relation to the assertion that a skilled person would not know how to achieve the invention in that he would be misled by the statement on the two screws into thinking that the two parts could not be detached from each other and therefore would not be able to work out how the mounting would take place As regards that assertion it is not pleaded as such and therefore cannot form part of the defendant s case How is the stated objective achieved 60 I now go back to the defendant s first ground on insufficiency viz that the specification describing the single embodiment of the invention is not clear and complete to enable the skilled person to work the invention in that it does not show how the auxiliary body is protected from detachment when the lock is in the locked position The plaintiff s response to this objection is that achieving the stated objective would be evident to a skilled person from the description and drawings Such a skilled person would have within his knowledge the following a the prior Rigoh Crown and Armstrong locks b the use of an Allen key to disengage screws and c at least according to the defendant the use of an internal screw to hold part of a lock 61 Construing the description and the drawings in order to ascertain the inventor s purpose with the view to giving the patent a practical meaning and not destroying it it is clear from the description and the drawings that the objective of the patent as stated above is achieved by having a rod in place of the screws or bolts found in the prior art The rod is disposed between the main body and the auxiliary body in the manner shown in figs 3 and 6 The rod is attached to the main body by means of a stud at pinhole 18 and to the auxiliary body by means of a screw 24 engaging groove 202 To detach the auxiliary body from the main body one has to disengage screw 24 This means also disengaging screw 23 which lies immediately above screw 24 in the auxiliary body Both screws are inserted into the auxiliary body through hole 25 and when the padlock is in the locked position hole 25 is blocked by the shackle bar and the auxiliary body cannot be detached since the shackle bar makes it impossible for anyone to access screws 23 and 24 62 Mr Tan testified that he was able to understand from the specification how the objective is achieved but only after he saw the Duro lock as the physical embodiment of the specification and the instructions given for the use of the Duro lock Mr Tan did not however identify what it was that he saw in the Duro lock and the Duro instructions that he could not find in the specification Further Mr Tan s evidence that he could not understand from the specification alone how the objective was achieved does not undermine the plaintiff s case in view of my finding that Mr Tan is not a person who is skilled in the art of lock making 63 As Mr Seah submitted when the Duro lock is compared with the specification it is clear that the Duro lock is the physical embodiment of the lock illustrated in the drawings In fact the drawings show more than could be seen from an examination of the physical lock alone as many of them give exploded perspectives of the parts of the lock and fig 3 gives an exploded perspective view of the entire lock The Duro instructions are meant for customers not the skilled person The skilled person needs less explicit instructions since he can be expected to do some trial and error in the workshop while trying to perform the invention Even so if the Duro instructions are compared with the specification the only thing that is shown in the instructions that is not found in the specification is the use of the Allen key This however is a matter within the common general knowledge of lock makers and need not be stated in the specification 64 The physical embodiment in the shape of the Duro lock and the Duro instructions may make it easier for even an unskilled person to understand the specification but the issue is whether it would require any invention on the part of the skilled person to perform the invention without the physical embodiment and the accompanying instructions No evidence was adduced by the defendant to establish that the skilled person would need to exhibit any inventive ingenuity in order to perform the invention 65 The invention is a simple mechanical device A person skilled in the art of making locks should be able to work out the invention even though not everything is stated in the specification Looking at the defendant s criticisms detailed in 58 above it seems to me irrelevant that the specification does not say expressly that the main body and the auxiliary body can be detached from each other or explain how the detachment and reattachment can be achieved The skilled person would start from the premise based on the prior art that the invention is a two bodied lock He would know from the drawings that the lock was constructed with separate bodies and that these would have to be attached to each other in some way If he worked his way through the description with the aid of the drawings he would be able to work out how the attachment takes place and that this attachment is not a permanent attachment no welding is required to effect it and that the method of attachment would in reverse be the manner of detachment 66 The third point mentioned was the statement in the specification that the first stud 23 and the second stud 24 cannot

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  • First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and Another Appeal[2008] 1 SLR 335; [2007] SGCA 50
    override the claims when the latter s ordinary and natural meaning is otherwise clear In this case it was stated in the description of the Patent that the purpose of the Patent was to provide a M ethod and system for determining the currency of a cardholder at the point of sale automatically using only a payment card s details Preferably the steps of the method of the invention would be performed substantially in an automatic fashion without input from the terminal operator emphasis added 34 Thus while the claims in the Patent Specification did not expressly allude to an automatic currency conversion system any ambiguity in this area was resolved by the accompanying description Accordingly on a fair reading the Patent covered a method and system for automatic currency detection at the point of sale by first obtaining the PAN of the payment card second extracting an identifier code from the PAN and third ascertaining the operating currency of the payment card by comparing the identifier code with the BRT 35 Having established the identity of the notional skilled person possessing the common general knowledge at the priority date and the scope of the claims in the Patent Specification based on a purposive construction the substance of the appellants contentions ie that the Patent was invalid on the grounds of obviousness and insufficient disclosure of the Invention will now be addressed Obviousness 36 In reviewing the validity of a patent apropos of its obviousness it is necessary to bear in mind the rationale underpinning the requirement of obviousness According to Millett LJ as he then was in PLG Research Ltd v Ardon International Ltd 1995 RPC 287 PLG Research at 313 314 T he public should not be prevented from doing anything which was merely an obvious extension or workshop variation of what was already known at the priority date There are many cases in which obviousness has been held not to have been established even though the prior art relied upon was very close Where the prior art yields many possible starting points for further development it may not be obvious without hindsight to select a particular one of them for the development which leads to the invention claimed If the patentee has come up with a solution to his problem which is no more than an obvious extension or workshop variation to some piece of the prior art he cannot have a monopoly for his solution whether or not the skilled man would be likely to have known of the prior art in question On the other hand if it is found that even if he had known of it the skilled man would not have regarded it as the obvious starting point for the solution of the problem with which he was confronted this will usually demonstrate that his discovery was not an obvious extension or mere workshop variation of that prior art 37 Section 15 of the Act provides that an invention must involve an inventive step An inventive step is in turn defined as one which is N ot obvious to a person skilled in the art having regard to any matter which forms part of the state of the art by virtue only of section 14 2 and without having regard to section 14 3 According to s 14 2 of the Act the state of the art refers to matters made available to the public whether in Singapore or elsewhere at any time before the priority date of the invention in question see also 58 below The requirement of obviousness is separate and distinct from that of novelty An invention is not novel if it is shown that the patent claimed included within its scope something which already formed part of the state of the art see Terrell 22 supra at para 7 06 38 At first blush there does not appear to be a clear distinction between the requirements of novelty and obviousness because both the question of whether an invention is novel and that of whether it involves an inventive step appear to be determined by the state of the art at the priority date This can be rather confusing because it is well established that the test for obviousness is significantly narrower than that for novelty It is also trite law that the state of the art as contemplated by s 15 of the Act ought to be viewed in relation to the common general knowledge of the notional skilled person as opposed to that of the public see s 14 2 This would exclude knowledge which is not available to the public While this genre of knowledge ie knowledge which is not available to the public is excluded from the common general knowledge which the notional skilled person is deemed to possess for the purpose of assessing obviousness such knowledge is nonetheless taken into account in assessing whether an invention is novel under s 14 of the Act As explained by Aldous J as he then was in Lux Traffic Controls Limited v Pike Signals Limited 1993 RPC 107 at 133 the requirement of novelty entails that A n anticipating description in a book will invalidate a patent if the book is on a shelf of a library open to the public whether or not anybody read the book and whether or not it was situated in a dark and dusty corner of the library 39 This conundrum was observed by Lord Reid in Technograph Printed Circuits Limited v Mills Rockley Electronics Limited 1972 RPC 346 Mills Rockley Electronics Limited where he stated that it was doubtful whether the words having regard to what was known or used which appeared in both sub ss e and f of s 32 1 of the Patents Act 1949 c 87 UK the 1949 English Act the then statutory equivalents of ss 14 and 15 of the Act were intended to bear the same meaning in each case He justified his views as follows at 355 If they were intended to mean the same thing there would now be little if any difference between novelty and obviousness Obviousness would cover practically every case of lack of novelty In head e which deals with novelty these words are used in an artificial sense and are held to include matter which in fact no one in the United Kingdom ever knew or was likely to know such as the contents of some foreign specification which no one had ever looked at and which the most diligent searcher would probably miss I think that in head f which deals with obviousness the words should have the more natural meaning of what was or ought to have been known to a diligent searcher 40 However Lord Reid s approach was seriously queried in the same case by Lord Diplock who proposed that the phrase what was known or used should not be treated differently under the two subsections This has led some academics to question the suitability of using the concept of common general knowledge to test whether an alleged invention involves an inventive step see inter alia Lorraine Keenan Time to Put Windsurfing to Bed Intellectual Property IT Law 31 January 2002 Interestingly in Australia in an attempt to resolve this dilemma the Patents Act 1990 Cth the Australian Act encapsulated the concept of common general knowledge in a statutory form Section 7 2 of the Australian Act which deals with the concept of inventive step states that For the purposes of this Act an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim 41 In any event the English courts have remained fixated with the use of the notional skilled person s common general knowledge in the test for obviousness despite the above criticisms There are admittedly inherent difficulties in defining both common general knowledge and state of the art Nevertheless the explanation proffered by Lord Reid in Mills Rockley Electronics Limited 39 supra appears to be the preferable approach as it injects substance into the legislative intent underlying s 15 of the Act The reliance on common general knowledge in the test for obviousness is also embodied in the oft cited four step Windsurfing test laid down by the English Court of Appeal in Windsurfing International Inc v Tabur Marine Great Britain Ltd 1985 RPC 59 Windsurfing at 73 74 and adopted by this court in Merck Co Inc v Pharmaforte Singapore Pte Ltd 2000 3 SLR 717 at 50 There are we think four steps which require to be taken in answering the jury question The first is to identify the inventive concept embodied in the patent in the suit Thereafter the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was at that date common general knowledge in the art in question The third step is to identify what if any differences exist between the matter cited as being known or used and the alleged invention Finally the court has to ask itself whether viewed without any knowledge of the alleged invention those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention 42 An appraisal of the relevant English and Singapore decisions dealing with the issue of obviousness suggests that the courts often refer to the first three questions in the Windsurfing test see 41 above in a matter of fact way before proceeding almost immediately to deal with the fourth and final question Is the alleged invention obvious Some critics have gone further to say that the courts are often merely paying lip service to the Windsurfing test 43 In this respect t he Windsurfing test 41 above has been criticised for over elaborating the statutory definition of inventive step without reducing the confusion and uncertainty that has long been associated with it David I Bainbridge in Intellectual Property Pearson 6th Ed 2007 at p 400 contends that the first three steps of the Windsurfing test are in reality redundant He notes that s 3 of the Patents Act 1977 c 37 UK the 1977 English Act which is equivalent to s 15 of the Act seems straightforward and requires a one step test only namely whether the alleged invention is not obvious to a person skilled in the art The Windsurfing test in Bainbridge s view does not provide any intrinsic guidance on the statutory provision itself but merely affords a structured method of assessing whether the requirement of inventive step has been satisfied see Intellectual Property at p 400 Bainbridge further cautions that in breaking down the test in s 3 of the 1977 English Act there is a latent danger that artificiality will be introduced which might distort the test He persuasively suggests ibid that a simpler formulation is to ask W hether from the point of view of a person who had total knowledge of the state of the art the invention was obvious at the priority date It goes without saying that the person concerned cannot be endowed with inventive faculties It is also pertinent to note that the European Patent Office does not appear to have adopted a structured approach along the lines of the Windsurfing test in determining whether an invention involves an inventive step 44 Nonetheless the Windsurfing test 41 above appears to be here to stay I t was astutely observed by the English Court of Appeal in Wheatley v Drillsafe Ltd 2001 RPC 7 at 45 that the failure to follow the structured Windsurfing approach led the trial judge in that case to apply ex post facto reasoning erroneously resulting in a failure to distinguish what was actually known from what was common general knowledge When all is said and done the Windsurfing approach has its advantages The first three steps of this test lay the ground work for the final question which is ultimately the only critical question namely Is the alleged invention obvious See Terrell 22 supra at para 7 53 As aptly pointed out by Neuberger J in DSM NV s Patent 2001 RPC 35 at 58 By adopting the structured approach one ensures that there is a measure of discipline reasoning and method in one s approach Indeed it helps to ensure that there is consistency of approach in different cases involving the issue of obviousness 45 Be that as it may simplicity is certainly to be appreciated and in assessing the obviousness of an alleged invention it may sometimes suffice in straightforward cases to refer to the test formulated by Lord Herschell in Vickers Sons And Co Limited v Siddell 1890 7 RPC 292 where he stated at 304 that an invention lacked an inventive step if what was claimed was so obvious that it would at once occur to anyone acquainted with the subject and desirous of accomplishing the end Quite often it is difficult in practice to break down the Windsurfing test 41 above into its component parts Thus while the Windsurfing test remains a useful guide it is no more than that Above all it should be borne in mind that the Windsurfing test is merely a manifestation of judicial inventiveness on how best to pragmatically interpret and elucidate the requirements of s 15 of the Act What was the inventive step in the Invention 46 The appellants did not accept that the inventive step in the Invention as identified by the trial judge was the automatic detection or recognition of a payment card s operating currency which was made possible by means of the BRT constructed specially by the respondent from information gleaned from various sources see 69 of the Judgment The appellants contended that the trial judge had erred in law in misidentifying the concept of the Invention They took the view that the inventive step was neither the creation and use of the BRT nor the automation of the currency detection process Rather the inventive step was the concept of using a logical structure for bank code comparison and currency association 47 The foundation for the appellants arguments was the assertion that the portion of the PAN stored in the BRT was essentially the BIN It was undisputed that the use of BINs to identify the issuer of the payment card was part of the state of the art at the priority date see 10 above and hence formed part of the common general knowledge of the notional skilled person Following from that premise the appellants argued that there was no difference between the Invention and the state of the art and hence no inventive step This was because so the appellants explained the issuer code field in the BRT was essentially the BIN field Since as at the priority date the BIN was already being used for bank code comparison and manual currency association it would have been obvious to the notional skilled person that one could likewise determine the operating currency of a payment card by relying on its BIN 48 The appellants relied inter alia on Patent No WO 95 12169 the Visa Levine Patent in support of their argument that the alleged inventive step was already part of the state of the art The application for the Visa Levine Patent was initially filed in the US on 25 October 1993 Subsequently an application for an international patent was filed with the International Bureau of the World Intellectual Property Organization pursuant to the Patent Cooperation Treaty 19 June 1970 on 14 October 1994 The Visa Levine Patent concerned a process which provided electronic access to pre paid funds for use as cash or in paying for goods and services It was limited to the making of withdrawals from an automated teller machine ATM which would dispense money in the currency of its location The Visa Levine Patent relied on the concept of using the BIN for bank code comparison and currency association albeit in the context of ATM transactions carried out with a foreign payment card as opposed to the present context namely payment transactions between merchants and cardholders at points of sale The appellants acknowledged that the Visa Levine Patent concerned a different process but argued that the idea behind it was nevertheless similar to the Invention 49 With respect that could not be the case Just because two patents may contain one or even some common element s does not mean that the two patents are therefore identical or even similar Millett LJ s statement in PLG Research 36 supra at 314 on this point is most instructive In considering whether the claims in the present case contained any inventive step it is important to appreciate that i the inventive concept consisted of the selection and combination of a number of features ii there was a multiplicity of possible starting points in the prior art each of which differed from the patented invention but in a different way and iii the relevant features of the prior art were interdependent so that changing one of the features invalidate d the teaching of the prior art in respect to others 50 Further it has been authoritatively declared by the English Court of Appeal in The General Tire Rubber Company v The Firestone Tyre And Rubber Company Limited 1972 RPC 457 General Tire Rubber Co at 482 that individual patent specifications and their contents do not normally form part of the notional skilled person s common general knowledge although there may be specifications which are so well known amongst those versed in the art that upon proof of that state of affairs they form part of such knowledge In the present case the appellants were unable to establish any factual basis for asserting that the Visa Levine Patent s specifications were part of the common general knowledge We agreed with the trial judge that clear and satisfactory evidence see 55 of the Judgment was necessary to establish a claim of prior user or for that matter prior art so as to prove in turn the relevant general knowledge see Innovative Scuba Concepts Inc v Feder Industries Inc 26 F 3d 1112 Fed Cir 1994 at 1115 Without clear evidence it would not be appropriate in the circumstances of this case to find that the respondent knew or ought to have known of the Visa Levine Patent and or hold that this patent fell within the scope of the common general knowledge which formed part of the then prevailing state of the art Was the inventive step obvious 51 This final component of the Windsurfing test see 41 above formed the crux of the present appeals It is up to the court to decide the question which is a kind of jury question Windsurfing 41 supra at 71 Is the invention in question obvious The importance of striking the apposite balance between encouraging and stifling innovation has been succinctly summarised in Glaxo Group Ltd s Patent 2004 RPC 43 at 41 as follows It is a question of fact in every case Both the Scylla of considering nothing obvious except that to which the skilled man is driven and the Charybdis of considering every invention obvious that can be decomposed into a sequence of obvious steps must be avoided The former is unfair to industry because it stifles natural development The latter is unfair to investors and not countenanced by English patent law Furthermore in assessing the obviousness of an alleged invention it must always be remembered that simplicity is not equivalent to obviousness 52 The appellants submitted that on a true construction of the claims in the Patent Specification the issuer code was the BIN As such the use of the BIN for bank code comparison and currency association was no different from the use to which it ie the BIN was already being put or for which it was already known as at the priority date Further it was argued that even if the trial judge s construction of the issuer code as consisting of the BIN plus a portion of the PAN was right the use of the issuer code for currency identification would still have been obvious to the skilled person since the underlying task was to obtain bank code entries that were distinct from one another In contrast the respondent took the position that the automatic detection of a payment card s operating currency at the point of sale represented a clear advance on the state of the art at the priority date which at that time only comprised systems that required manual currency selection According to the respondent a step must have been employed to effect that automation and it was self evident that this had to be a new technical step 53 During cross examination one of the appellants key witnesses Mr Chandrakant Agnihotri Mr Agnihotri the head of technology and service systems in FCC reluctantly acknowledged that t he whole idea behind the BIN was for the purposes of routing authorisation and settlement at the end of the day and that the concept of BINs had not been established by the card schemes for the purposes of enabling the merchant to undertake identification of the cardholder s currency at the point of sale Thus the essence of the contention of the appellants in relation to BINs was ironically undermined by their very own evidence The judge quite rightly took this into account see the passage from the Judgment quoted in 15 above 54 The crucial point was that at the material time no other party had introduced an automatic system to implement the process of deciphering a payment card s operating currency Although the step might have seemed when all was said and done Lilliputian it was no less significant a step forward a step which nobody else had taken before see Peng Lian Trading Co v Contour Optik Inc 2003 2 SLR 560 Peng Lian Trading at 31 A helpful analogy can be drawn with the decision in FE Global Electronics 26 supra In that case it was held that the patentee had an inventive concept for a new type of data storage device that was quite different from and more convenient to use than the conventional data storage devices This court went on further to say that admittedly all the elements required for that invention were available to those skilled in the art Yet before the patentee applied for the patent in question no one else had thought of combining those elements together to form a new type of data storage device Although some might have viewed the invention as a simple one this court noted that simplicity in itself had never been a bar to inventiveness and reiterated that ex post facto analysis could often be unfair to inventors FE Global Electronics at 45 46 Peng Lian Trading at 29 Indeed it cannot be gainsaid that the hallmark of many truly remarkable inventions is precisely their simplicity 55 In the present appeals the Patent revolved around a concept for a new type of dynamic currency conversion system namely an automatic system of currency conversion which was more convenient to use than the manual system of currency conversion The inventive concept was not the BRT alone In any event although BINs and BIN tables had been used in the field of payment systems prior to the Invention no one had apparently previously thought of employing the BIN to identify the operating currency of a payment card The Invention counsel for the respondent Mr Wong Siew Hong submitted represented a genuine advance from the then available state of the art We concurred with this submission Thus we were unable to agree with the appellants contention that the Invention was obvious and therefore upheld the trial judge s finding that an inventive step was involved 56 We noted that an application for a patent for the Invention was also filed in New Zealand on 1 September 1999 That application was accepted and published in the Intellectual Property Office of New Zealand IPONZ Subsequently a notice of opposition was filed on 24 October 2004 by Multi Currency Management Services Limited MCMS However the Assistant Commissioner of Patents of IPONZ in a decision dated 13 March 2006 found that the grounds of opposition one of which was obviousness had not been made out by MCMS He held at 34 of his decision that T he opponent ie MCMS has shown systems systems that have not been known in New Zealand at the priority date as far as I can see where the cardholder is prompted to pay in the home currency of the card but the opponent has not shown a system where the home currency is obtained automatically by way of an identifying number on a card with the amount of the transaction in the currency of the card also being automatically calculated without any further input from the merchant or cardholder and presented at the time of the transaction to the cardholder for payment in that currency 57 The corresponding New Zealand provision on the test for obviousness is s 21 1 e of the Patents Act 1953 NZ the New Zealand Patents Act which states that a grant of a patent may be opposed on the ground that T he invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step having regard to the matter published as mentioned in paragraph b of this subsection or having regard to what was used in New Zealand before the priority date of the applicant s claim The matter published is described in s 21 1 b of the New Zealand Patents Act as follows That the invention so far as claimed in any claim of the complete specification has been published in New Zealand before the priority date of the claim i In any specification filed in pursuance of an application for a patent made in New Zealand and dated within 50 years next before the date of filing of the applicant s complete specification ii In any other document not being a document of any class described in subsection 1 of section 59 of this Act In his further submissions Mr Kang argued in relation to the above decision by IPONZ that the statutory provisions in that case were quite different as s 21 1 of the New Zealand Patents Act required prior use or publication in New Zealand 58 The relevant Singapore provision which sets out the role of the state of the art in determining whether an invention is obvious is s 15 of the Act The state of the art is itself defined in s 14 2 of the Act as A ll matter whether a product a process information about either or anything else which has at any time before the priority date of that invention been made available to the public whether in Singapore or elsewhere by written or oral description by use or in any other way This definition of state of the art plainly extends to include prior use or publication We also noted that IPONZ relied on the Windsurfing test see 41 above in arriving at its decision While the statutory matrix in New Zealand is indeed not identical to that in Singapore it cannot be gainsaid that there is some degree of consistency in the common sense approach to this issue that is apparent in both regimes The decision by IPONZ can be said to be at the very least of some penumbral assistance to us in this respect Was the Patent invalid on the grounds of insufficient disclosure of the Invention 59 In the alternative the appellants strenuously argued that the Patent was invalid as the Patent Specification was not sufficiently clear and complete for the Invention to be performed by a notional skilled person 60 Section 80 1 c of the Act states that a patent may be revoked if its specification does not disclose the invention clearly and completely for it to be performed by a person skilled in the art The phrase clearly and completely contemplates that the patent specification need not set out every detail necessary for the performance of the invention but can leave the skilled man to use his skill to perform the invention see Mentor Corporation v Hollister Incorporated 1993 RPC 7 Mentor Corp The English Court of Appeal in Mentor Corp held at 10 that whether the specification of a patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art is a question of degree It would not be desirable and indeed probably quite impossible to lay down any hard and fast rule In each case the question of the sufficiency of the disclosure would be a matter of fact depending on the nature of the invention and the other circumstances of the case see Genelabs Diagnostics 19 supra at 60 Mentor Corp at 11 Kirin Amgen 25 supra at 103 104 William Cornish and David Llewelyn Intellectual Property Patents Copyright Trade Marks and Allied Rights Sweet Maxwell 6th Ed 2007 Cornish and Llewelyn at para 5 87 The breadth of the claims set out in the patent specification also has a role to play If the invention discloses a principle capable of general application the claims may be in correspondingly general terms Kirin Amgen at 111 Biogen Inc v Medeva plc 1997 RPC 1 at 48 61 A two step test was postulated by Lord Hoffman in Kirin Amgen 25 supra at 102 104 to determine whether the specification of a patent was sufficient T he disclosure must enable the invention to be performed to the full extent of the monopoly claimed see Biogen Inc v Medeva plc 1997 RPC 1 at 48 Whether the specification is sufficient or not is highly sensitive to the nature of the invention The first step is to identify the invention and decide what it claims to enable the skilled man to do Then one can ask whether the specification enables him to do it It seems to me that a good deal of the argument in this case about sufficiency like the argument about infringement really turns on a dispute over exactly what the invention is But in order to decide whether the invention has been fully enabled you first have to decide what the invention is 62 The two stage test as laid out above can be supplemented by two further considerations First the specification of the patent must embrace an embodiment of the invention asserted in each of the claims with sufficient particularity to enable the invention to be understood and carried into effect by those in the industry without making further inventions or prolonged study of the matter The specification must be set out clearly and fairly so that any individual desirous of carrying out the invention may obtain full knowledge of its practical aspects But it is not necessary that the specification be so detailed that this notional individual can perform the invention without any trial or experiment at all Second the description of the invention should not be unnecessarily difficult to follow and must not contain any traps or seriously misleading statements which the reader cannot correct see Halsbury s Laws of Singapore vol 13 3 LexisNexis 2007 at para 160 367 63 The appellants maintained that if the Invention involved an inventive step on the premise that the identifier code comprised a portion of the PAN and was not confined to the BIN then the Patent Specification was insufficient as it did not disclose the portion of the PAN which was required and how it could be obtained The appellants further contended that the notional skilled person would not read the identifier code as consisting of anything other than the BIN The appellants described various permutations which were not contained in the description of the Invention and argued that the Patent Specification did not adequately provide for such scenarios 64 On the other hand the respondent referred to the finding by the trial judge that practically all the appellants witnesses had little difficulty in reading and understanding the Patent Specification and the claims therein despite there being some ambiguity alleged by the appellants regarding the use of the terms identifier code issuer code and issuer identifier code in the specification see 16 above For example it was readily apparent from the cross examination of Mr Agnihotri that he understood with ease the intended workings of the Patent Q Right Mr Agnihotri can I just put my case to you I would put to you that the P atent is clear on its face there are no ambiguities it covers a system for card currency identification do you agree A Yes Q And the card currency identification is done by taking an identifier code which is a portion of the PAN 16 numbers and matching that against a country code in your case a currency code A Currency Q And the identifier code is matched against a corresponding currency code and the currency to be associated with the particular card for the transaction is then set would you agree You agree that after having taken a portion of the PAN and using that as an identifier code the operating currency is determined by comparing this portion this identifier code the six numbers which you have which FCC uses against a corresponding currency code A Yes Q The currency is then set and a multicurrency rate table is looked up the foreign exchange equivalent for the transaction is then presented to the cardholder A Correct 65 The appellants assertions were largely predicated upon a parochial interpretation of certain parts of the claims in isolation However it is trite law that one must look at the claims in their totality In this respect it appeared to us from a reading of the Patent Specification that it described a principle of general application Biogen Inc v Medeva plc 60 supra at 48 As stated in Monsanto Co v Merck Co Inc 2000 RPC 709 at 738 It has never been the law that the claim must be co extensive with the embodiments specifically disclosed by the patentee in his specification Protection limited in this way would in all probability be illusory In Dyson v Hoover 28 supra the defendant alleged that the patent specification was insufficient in not describing how to build a more complicated embodiment which corresponded to the alleged infringing device It was held at 194 that the patent specification was sufficient because the relevant claim had defined with sufficient precision a class of vacuum cleaning appliance sharing a common mode of operation namely that earlier defined as representing the inventive concept Dyson v Hoover at 28 of the claim Thus the patentee need not foresee every possible future way of implementing the invention As Lord Hoffman pointed out in Kirin Amgen 25 supra at 112 a claim is sufficiently enabled if one can reasonably expect the invention to work with anything which falls within the general term see also Kirin Amgen at 113 It is unnecessary for the patentee to describe every possible embodiment of the invention 66 In the present case it was especially telling that the appellants were unable to suggest a solution when we queried how the Patent Specification could or should be improved on The appellants argued that the specification did not provide for all possible situations and

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  • Merck & Co, Inc v Pharmaforte Singapore Pte Ltd[2000] 3 SLR 717; [2000] SGCA 39
    was not as the presence of impurities was not realized 26 In Joseph Lucas Batteries Ltd v Gaedor Ltd 1978 RPC 297 which was concerned with a patent in relation to cases for the storage batteries of the kind suitable for use in moving vehicles eg cars and lorries the prior art had cases for the storage of batteries with walls and bottom of average thickness in excess of 0 2 inch The patentee invented a case with side walls bottom and partitions of a thickness not in excess of 0 1 inch and the case having a cover in the form of a single moulded polypropylene unit Both the objections of lack of novelty and lack of an inventive step were raised and both failed The court recognised that the invention was an improvement over previous batteries cases which had a wall thickness averaging about 0 2 of an inch Although there were prior battery cases made of polystyrene which had walls of 0 12 and 0 13 inch thickness that did not preclude the patentee s patent from being novel In response to the point that the reduction of the thickness was something obvious and that there was no inventive step Whitford J said I confess quite freely that when this case was opened to me I felt the gravest doubts as to whether a claim to this dimensional limitation could possibly stand good What was done in practice by so many experts on the evidence before me has indeed convinced me that the step taken leading to a battery with walls as thin as 0 10 or less was not an obvious one 27 The respondents sought to argue that Joseph Lucas involved a reduction in the thickness of battery cell walls leading to recognised commercial benefits In contrast in our case the dimeric impurity is a harmless substance and its reduction would not change the compound s therapeutic properties Still we do not see how a purer form of Lovastatin can be anything other than commercially more desirable Even Dr Barrett the appellants expert a professor in Chemistry from Imperial College London said in his affidavit of evidence in chief that lactone containing higher levels of impurities is clearly much less desirable for use in medicines as antihypercholesterolemic agents 28 Counsel for the appellants also drew our attention to a US case and a European Patent office EPO case which held that a purer form of a known substance could be patentable The US case is Application of Sune Bergstrom and Jan Sjovall 1970 427 F 2d 1394 where the US Court of Customs and Patent Appeals held though the purer form was not of therapeutic advantage We need not decide the merits of that matter for the fundamental error in the board s position as we see it is the analysis and answer it gave to the sole issue it accurately posed whether the claimed pure materials are novel as compared with the less pure materials of the reference It seems to us that the answer to that question is self evident by definition pure materials necessarily differ from less pure or impure materials and if the latter are the only ones existing and available as a standard of reference as seems to be the situation here perforce the pure materials are new with respect to them Moreover whether the claimed pure materials have the same usefulness or assortment of properties as the impure materials of the prior art as the board here found is a question having no bearing on the factual and legal matter whether pure materials are new vis à vis impure materials within the meaning of s 101 although it is but one of the factors to be considered in determining their obviousness under 35 USC 103 In that case the court left open the question if such a new compound was unpatentable for lack of inventive step ie obviousness 29 The EPO s case is Toshiba Thickness of Magnetic Layers 1990 EPOR 267 There there was already a recording medium with a recording layer of a thickness from 0 1 UM to 3 UM The Technical Board of Appeal allowed a claim where the thickness of the magnetic recording layer was in the range between 0 05 UM and 0 1 UM It stated In the present case therefore there exists in the prior art a reasoned statement clearly dissuading the person skilled in the art from using in a double layer medium a thickness of the recording layer below 0 1 UM In the light of the reasoning set out above the Board is of the opinion that the range of thickness values below 0 1 UM and in particular the range 0 05 0 1 UM has to be regarded as novel 30 The above cases illustrate that a purer form of a known compound or a dimensional limitation of a known product could be novel and patentable But really like the first issue of utility we do not think it is a profitable exercise to inquire whether a purer form of a known compound or a dimensional limitation of a known product is per se patentable Firstly we do not think we should generalise bearing in mind that there are so many kinds or types of invention and their circumstances are different Second in the light of the modern law as set out in the UK 1977 Act and our 1994 Act where for the first time the statute prescribes the criteria for patentability this issue should not be considered in isolation but in the context of whether the invention has been anticipated by prior art or lacks an inventive step This latter point is really the question to pursue Existing state of this art 31 We now turn to the point about novelty where the learned trial judge found that the invention had been anticipated by prior disclosure Sections 14 1 and 2 of our Act provides as follows 1 An invention shall be taken to be new if it does not form part of the state of the art 2 The state of the art in the case of an invention shall be taken to comprise all matter whether a product a process information about either or anything else which has at any time before the priority date of that invention been made available to the public whether in Singapore or elsewhere by written or oral description by use or in any other way 32 Thus prior disclosures would render an invention non patentable The state of the art as on the priority date is therefore crucial On this question the respondents relied upon two Canadian patents issued to the appellants before the priority date First is patent No 1 199 322 CP 322 issued to the appellants on 14 January 1986 and entitled Antchypercholesterolemic Compounds and which described a process of purification which the appellants had followed after lactonization It referred to the use of decolourizing charcoal activated carbon to the crude solid It did not specify the amount of charcoal to be used but suggested that 1 2 by weight of decolouring charcoal to the crude solid would be sufficient Neither did it specify the amount of time necessary for the solution to be filtered through the charcoal Second is patent No 1 161 380 CP 380 filed on 11 June 1980 and issued on 1 January 1986 where the appellants disclosed how they were able to separate the hydroxy acid from Lovastatin through the use of the APLC technique 33 Based on the teachings set out in CP 322 Dr Sailer the Chemistry Lab Leader and a Downstream Process Scientist at Apotex Inc Canada conducted various experiments In his report Dr Sailer stated that two of the four activated carbons experimented Darco G 60 and Calgon F 400 reduced the dimer impurity level of the compound from 0 27 to 0 05 and 0 16 respectively Darco G 60 had been available for over 30 years and Calgon F 400 since 1974 34 The appellants challenged the veracity of these experiments and pointed out three aspects to show that Dr Sailer did not quite follow the teachings in CP 322 First contrary to the teachings in CP 322 Dr Sailer had used an unusually large quantity of charcoal 50 by weight of charcoal to the crude solid when the common practice and that specified in the teachings was only 1 2 Because of the use of a much greater amount of charcoal more Lovastatin was absorbed leading to results which appeared to show that the dimer impurity had been substantially reduced Second there is a flaw in the results of Dr Sailer s experiments in that the figures obtained by Dr Sailer were by measuring the ratio of the dimer to the Lovastatin as opposed to calculating the absolute values of the dimer Third Dr Sailer agitated the solution with the charcoal for one hour which was not a procedure suggested in CP 322 35 Dr Sailer also carried out another experiment following the teachings of CP 322 this time using crude Lovastatin with a dimer content of 0 54 and where he dissolved the crude Lovastatin in hot ethyl acetate and treated it with Calgon F 400 for two hours After filtration and concentration Lovastatin was crystallised from the concentrated ethyl acetate solution After one carbon treatment of the hot acethyl solution the concentration of Lovastatin dimer was reduced from 0 54 to 0 3 A single recrystallization from acethyl acetate further reduced the Lovastatin dimer from 0 3 to 0 17 The appellants contended that this said single recrystallization technique used by Dr Sailer was an exact replication of the process covered by the patent in suit But Dr Sailer said that he simply followed the instructions laid down in CP 322 and obtained a dimer level of 0 17 36 As regards CP 380 Dr McClelland a professor in Chemistry at the University of Toronto and an expert called by the respondents said that by the use of the HPLC method which is a method available from the early 1970s one would be able to separate the dimer from the crude Lovastatin While the appellants accepted that the HPLC method was available as from early eighties not seventies they contended that it could not be used in large scale preparations of organic pharmaceuticals since that method could only yield minute quantities of pure compound at any one time In short one cannot use HPLC as a method to manufacture the pure form of Lovastatin on a large commercial scale 37 In General Tire Rubber Co v Firestone Tyre Rubber Co Ltd 1972 RPC 457 the Court of Appeal set out the approach a court should take when considering the issue of prior disclosure by publication in these terms at p 485 When the prior inventor s publication and the patentee s claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters the meaning of words and expressions used in the art and so forth the question whether the patentee s claim is new for the purposes of section 32 1 e falls to be decided as a question of fact If the prior inventor s publication contains a clear description of or clear instructions to do or make something that would infringe the patentee s claim if carried out after the grant of the patentee s patent the patentee s claim will have been shown to lack the necessary novelty that is to say it will have been anticipated The prior inventor however and the patentee may have approached the same device from different starting points and may for this reason or it may be for other reasons have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device but if carrying out the directions contained in the prior inventor s publication will inevitably result in something being made or done which if the patentee s patent were valid would constitute an infringement of the patentee s claim this circumstance demonstrates that the patentee s claim has in fact been anticipated If on the other hand the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee s claim but would be at least as likely to be carried out in a way which would not do so the patentee s claim will not have been anticipated although it may fail on the ground of obviousness To anticipate the patentee s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented Flour Oxidizing Co Ltd v Carr Co Ltd 1908 25 RPC 428 at 457 line 34 approved in BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd 1928 45 RPC 1 at 24 line 1 A signpost however clear upon the road to the patentee s invention will not suffice The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee emphasis added 38 In Merrell Dow supra a similar point came up for consideration by the House of Lords There the plaintiffs discovered an anti histamine drug called terfenadine for use by people who suffered from hay fever and similar allergies Unlike other similar drugs this drug did not have the side effect of making the person drowsy The plaintiffs exclusive right to terfenadine expired in December 1992 Other drug manufacturers thus embarked on making and marketing terfenadine However the plaintiffs claimed that their monopoly in terfenadine continued because of a later patent This later patent came about because their research showed that terfenadine was absorbed in the small intestines and was then 99 5 metabolised in the liver This was why it had no side effects They analysed the chemical composition of the acid metabolite formed in the liver No one had identified that compound before So they patented the acid metabolite The plaintiffs claim to a later patent was in respect of acid metabolite as a product The defendants contended that while acid metabolite as a chemical compound had not been previously identified its manufacture in the body by the ingestion of terfenadine was nevertheless part of the state of the art This submission was upheld by the House which essentially approved the approach taken in General Tire Lord Hoffmann who delivered the only judgment of the House said Anticipation by disclosure on the other hand relies upon the communication to the public of information which enables it to do an act having the inevitable consequence of making the acid metabolite The terfenadine specification teaches that the ingestion of terfenadine will produce a chemical reaction in the body and for the purpose of working the invention in this form this is a sufficient description of the making of the acid metabolite Under the description the acid metabolite was part of the state of the art 39 Adopting the test laid down in General Tire and Merrell Dow it seems to us that for CP 322 and CP 380 to have anticipated the patent in suit it must be established that by following the teachings in those two patents it would inevitably lead to the production of Lovastatin with less than 0 2 demeric impurity As mentioned above Dr Sailer in carrying out the experiments had used a much larger quantity of charcoal and had agitated the solution instead of just filtering it In short he did not exactly follow the teachings He modified the experimental environment Thus the experiments of Dr Sailer cannot be relied upon to show that following the teachings of CP 322 would inevitably have the consequence of producing Lovastatin with a dimer impurity of less than 0 2 because he had made modifications 40 As regards CP 380 all that the respondents were able to tender to court was an opinion of Dr McClelland There was no cogent evidence that Lovastatin with a dimer impurity of less than 0 2 would inevitably be produced upon employing the HPLC technique Dr McClelland did not carry out any specific experiment using the HPLC technique He admitted as much that his conclusion was extrapolated from the prior art documents and was therefore in a sense speculative Although there is a HPLC chromatogram prepared by the appellants on 16 March 1986 which shows that the appellants were able to separate the dimer from the hydroxy acid and other contaminants it nowhere shows that the Lovastatin produced would be a compound with less than 0 2 of dimeric impurity 41 In the light of the foregoing we do not think that the test as to prior art is satisfied in this instance The respondents upon whom the burden rest had failed to discharge it Thus it is our opinion that Lovastatin with a dimer level of less than 0 2 had not been anticipated by the two Canadian patents or any other prior art 42 We recognise that there are some apparent similarities between Merrell Dow and the present case First in Merrell Dow the argument taken was that no information had been made available to the public about the metabolite before the priority date very similar to the position taken here by the appellants that they had kept the existence of the dimer confidential before the priority date Second in Merrell Dow it was also alleged that no one was aware that the product was being made similar to that asserted here by the appellants that the respondents did not know about the dimer But these are not the crucial factors which differentiate the present case from those of Merrell where the House of Lords held that there

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