The court ruled that patent infringement requires proof that the alleged product falls within the patent claims, emphasizing the necessity of independent expert testimony in such cases.

Azlan Sulaiman J:

Introduction

[1] This action involves claims by Plaintiff against both Defendants for infringement of its Malaysian Patent No: MY-138580-A ("Patent 580") and for copyright infringement, and against the 2nd Defendant alone for breach of contract.

The Parties

[2] The Plaintiff is principally engaged in the business of designing, installing, building and constructing retaining walls.

[3] The 1st Defendant was incorporated on 5 November 2020 and its nature of business is "Construction of buildings N.E.C; specialized design activities N.E.C.; wholesale of a variety of goods without any particular specialization N. E. C."

[4] The 2nd Defendant had previously been employed by the Plaintiff and its associated companies, from October 2005 to December 2018. On 12 October 2005, he joined the Plaintiff as a Senior Geotechnical Engineer, and on 1 April 2005 he was promoted to General Manager of Nehemiah Prestress Sdn Bhd and then Nehemiah Toowong Bridgetech Sdn Bhd, eventually resigning from the latter on 11 December 2008.

Patent 580

[5] Patent 580 is a product patent with a filing date of 1 June 2005, which means that by s 35(1) of the Patents Act 1983 ("Patents Act") it has a duration that expires soon on 30 May 2025.

[6] Patent 580 is entitled "Improvements to Structural Connecting Means Used In Earth Retaining Wall Structure", and has 20 claims

[7] Claims 1, 7 and 20 of Patent 580 are independent claims They define the broadest scope of the monopoly that Patent 580 seeks, and are each an amalgamation of the dependent claims associated with it.

[8] The other 17 Claims are dependent claims in that they define a narrower scope of the monopoly sought. This is because they include all of the features of one or more and other claims and state the additional features claimed.

[9] It is the claims of a patent which define its monopoly. In Kirin-Amgen v. Hoechst [2005] 1 All ER 677, Lord Hoffmann quoted with approval the definition of claim by Lord Russell of Killowen in Electric & Musical Industries v. Lissen Ltd [1938] 4 All ER 224:

"The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers. Their primary object is to limit, and not to extend, the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document, and not as a separate document. Nevertheless, the forbidden field must be found in the language of the claims, and not elsewhere."

"The need to set clear limits upon the monopoly is not only, as Lord Russell emphasized, the interests of others who need to know the area 'within which they will be trespassers' but also in the interests of the patentee, who needs to be able to make it clear that he lays no claim to prior art or insufficiently enabled products or processes which would invalidate the patent."

Patent Infringement

[10] The Plaintiff alleges that Patent 580 is being infringed by a product known as "RSEG WALL". Of Patent 580's twenty claims, it alleges that RSEG WALL infringes Claims 1, 2, 3, 7, 10, 11, 12, 13, 14 and 20.

[11] Section 36 of the Patents Act provides:

"(1) Subject and without prejudice to the other provisions of this Part, the owner of a patent shall have the following exclusive rights in relation to the patent:

(a) to exploit the patented invention;

(b) to assign or transmit the patent;

(c) to conclude licence contracts; and

(d) to deal with the patent as the subject of a security interest.

(2) No person shall do any of the acts referred to in subsection (1) without the consent of the owner of the patent.

(3) For the purpose of this Part, "exploitation" of a patented invention means any of the following acts in relation to a patent:

(a) when the patent has been granted in respect of a product:

(i) making, importing, offering for sale, selling or using the product;

(ii) stocking such product for the purpose of offering for sale, selling o