The court affirmed the validity of the Plaintiff's utility innovation and established infringement based on the purposive interpretation of patent claims, dismissing the Defendant's invalidation claims.

JUDGMENT

Lim Chong Fong J:

Introduction

[1] This is a case on invalidation and infringement of a utility innovation in respect of a notepad protective sleeve.

[2] The Plaintiff is a private limited company involved in the business of design, manufacture and trade of IT solutions and related hardware for a variety of industries such as banking, telecommunications, aviation, insurance and logistics.

[3] The Plaintiff is the owner of the certificate for a Utility Innovation No: MY-163605A (Application No: UI 20170000783) for a utility innovation consisting of a protective sleeve ("UI"). The application was filed by the Plaintiff in the Intellectual Property Corporation of Malaysia ("MyIPO") and the UI registration was granted on 3 October 2017.

[4] The essential features, integers and particulars as seen in the claim ("Claim") and abstract of the UI are as follows respectively:

"A protective sleeve (1) for an electronic device (3) comprises: a body (2) having a recess for accommodating the electronic device (3); a circuit board (8) embedded in the body (2), having one or more input and/or output ports; a connector tab extended to the recess for contacting with a connector tab extended to the recess for contacting with a socket connector of the electronic device (3); and means (4) for retrieving information of a person; and a card reader to retrieve information stored in a card; wherein the biometric information retrieval means (4) and the connector tab are connected to the input and output ports of the circuit board (8) for establishing a communication link between the biometric information retrieval means (4) and the electronic device (3) when the electronic device (3) is attached to the connector tab and seated in the recess; characterized in that the retrieved biometric information is compared with those stored in the card to authenticate and/or verify the person."

ABSTRACT

A PROTECTIVE SLEEVE

The present invention discloses a protective sleeve (1) for an electronic device (3) comprises: a body (2) having a recess for accommodating the electronic device (3); a circuit board (8) embedded in the body (2), having one or more input and/or output ports; a connector tab extended to the recess for contacting with a socket connector of the electronic device (3); and means (4) for retrieving biometric information of a person; wherein the biometric information retrieval means (4) and the connector tab are connected to the input and/or output ports of the circuit board (8) for establishing a communication link between the biometric information retrieval means (4) and the electronic device (3) when the electronic device (3) is attached to the connector tab and seated in the recess.

[5] The Defendant is also a private limited company involved in similar business to the Plaintiff.

Preliminary

[6] The Plaintiff in this Suit sued the Defendant for infringement of the UI and claimed for the following prayers:

(1) A declaration that the Defendant's Infringing Product has infringed the Plaintiff's Certificate for a Utility Innovation No: MY-163605-A (Application No: UI 2017000783 ("Plaintiff' Certificate for a Utility Innovation");

(2) A permanent/final injunction be and is hereby granted restraining the Defendant, whether acting by themselves and/or any of its directors, partners, employees, officers, servants, successors in title, principals or agents thereof or any other person, whether jointly or severally or any of them or otherwise howsoever, from infringing the Plaintiff's Certificate for a Utility Innovation (particulars of which are set out in Schedule "1" hereof), including without limitation by the making, importing, distributing, offering for sale, selling or using of the Defendant's Infringing Product (representations and particulars of which are set out in Schedule '2" hereof) and/or stocking such products for the purposes of offering for sale, selling or using.

(3) An injunction be and is hereby granted to restrain the Defendant whether acting by