The central legal point established is that a patent licensee may not independently claim for patent infringement unless specific conditions regarding the patent owner's action are met.

[1] This case concerns "Mobile Offshore Production Unit" (MOPU). A MOPU is a physical structure which, among others, is installed in an offshore oil field and used for early production of oil.

[2] The first plaintiff company (1st Plaintiff) is incorporated under the laws of the British Virgin Islands. The second plaintiff company (2nd Plaintiff) is incorporated under our previous Companies Act 1965 (CA).

[3] After this suit has been filed by the 1st and 2nd Plaintiffs (Plaintiffs), the 2nd Plaintiff has been wound up. The Official Receiver has however sanctioned the prosecution of this action by the 2nd Plaintiff.

[4] The defendant company (Defendant) is incorporated under CA and is a member of the Petrofac group of companies (Petrofac Group).

[5] The 1st Plaintiff has registered the following two patents (2 Patents) under the Patents Act 1983 ( PA ):

(1) Patent No. MY 144898-A (Patent 898); and

(2) Patent No. MY 145004-A (Patent 5004).

[6] The 1st Plaintiff has granted a license to the 2nd Plaintiff regarding the 2 Patents.

[7] In this case:-

(1) the Plaintiffs claimed that the Defendant (Original Action):-

(a) has infringed Claim 1 of Patent 5004 [Claim 1 (Patent 5004)] by making, offering for sale, selling and using a MOPU in an oil field in Sepat off the coast of Terengganu (Sepat MOPU); and

(b) has infringed Claim 13 of Patent 5004 [Claim 13 (Patent 5004)] and Claim 1 of Patent 898 [Claim 1 (Patent 898)] by using a method to install Sepat MOPU.

In this judgment, Claim 1 (Patent 5004), Claim 13 (Patent 5004) and Claim 1 (Patent 898) shall be referred together as the "3 Claims";

(2) the Defendant has applied to invalidate the 3 Claims (Counterclaim); and

(3) the Plaintiffs have obtained a Court order for a "split trial", namely the Court shall first decide whether the Defendant is liable for an infringement of the 3 Claims under s 58 read with s 36(1)(a), (2), (3)(a)(i) and (b)(i) PA (Patent Infringement Issue) before hearing the issue of what is the appropriate remedy, if any, for the Plaintiffs in this case.

B. Issues

[8] The following questions arise in this case:

(1) whether the 2nd Plaintiff (a licensee of the 2 Patents) has a right under ss 43(1), 59(1), 61(1)(a), (2), (3) and (4) PA to claim for an infringement of the 3 Claims;

(2) who is the notional person ordinarily skilled in the art (POSITA) regarding the 2 Patents? In this regard:-

(a) whether the Defendant's expert, Mr David J Bignold (SD1), has a duty under O 40A rr 2(1), (2) and 3(2)(h) of the Rules of 2012 (RC) to disclose to Court any matter which impugns or is likely to impugn SD1's independence as an expert. This is a novel question in this country; and

(b) if:-

(i) SD1 is not independent or is seen to be not independent; or

(ii) SD1 has failed to disclose a matter which impugns or is likely to impugn SD1's independence as an expert - how should the Court deal with SD1's expert opinion in terms of its admissibility and weight?;

(3) what was the common general knowledge (CGK) possessed by POSITA on 14 May 2008, the priority date of the 2 Patents (Priority Date)?;

(4) what is the scope of the 3 Claims? In construing the words "removeably attached" in 3 Claims, whether the Court can refer to:-

(a) the other specifications in the 2 Patents;

(b) the dictionary meaning of those words;

(c) five patents granted in the United States of America (5 US Patents) which contain those words; and

(d) the judgment of US Court of Appeal in Dorel Juvenile Group Inc v. Graco Children's Products Inc No. 5-2016 (Dorel's Case);

(5) whether the 3 Claims can be invalidated on the following grounds:-

(a) are the inventions in the 3 Claims "new" within the meaning of ss 11 and 14(1)