A patent must be novel and inventive to be valid; prior art can invalidate a patent claim, rendering any infringement claims baseless.

Headnote:(A) Patents Act, 1983 - Sections 11, 14, 15, and 56 - Validity of patent - Claim of infringement of Malaysian Patent No MY-124182-A dismissed as invalid due to lack of novelty, with evidence from prior Japanese patent application - Conditions for patentability not met; therefore, claim of infringement cannot stand. (Paras 94-96)

(B) Infringement claims require specific identification of the part infringing each claim of patent; mere operational manuals or video evidence insufficient to establish infringement. (Paras 54-56)

(C) Assignment of patent rights must be absolute to confer litigation rights upon the assignee; conditional or licensed assignments do not grant the right to institute infringement proceedings. (Paras 86-93)

Facts of the case:
Plaintiff claimed infringement of Malaysian Patent relating to a glove stripping apparatus by defendants; counter-claims disputed validity of the patent, asserting it was anticipated by prior art, specifically a Japanese patent. (Paras 1-2)

Findings of Court:
Malaysian Patent MY-124182-A was deemed invalid for lack of novelty in light of Japanese Patent, and claims of infringement were unsupported by concrete evidence of specific infringing components. (Paras 94-95)

Issues: Whether the Malaysian Patent is valid, whether it possesses inventive steps and novelty, and the validity of the infringement claims raised by the plaintiff. (Paras 39)

Ratio Decidendi: Court emphasized that a valid patent must be both novel and contain an inventive step as defined under the Patents Act; evidence must establish actual infringement distinct from operational descriptors. (Paras 76-80)

Result: Action dismissed with costs awarded to defendants.

Table of Content
1. details of the malaysian patent claims. (Para 11 , 12 , 13 , 14)
2. description of witnesses called during the trial. (Para 15 , 16)
3. plaintiff's case presenting evidence of patent usage. (Para 17 , 18 , 19 , 20 , 21 , 22 , 23)
4. plaintiff's allegations regarding infringement. (Para 24 , 25 , 26)
5. plaintiff's expert witness testimony and analysis. (Para 27 , 28 , 29 , 30)
6. defendants' case and denial of patent infringement. (Para 31 , 32 , 33)
7. experts' evaluations contradicting the plaintiff's claims. (Para 34 , 35 , 36)
8. summary of key issues to be tried. (Para 39)
9. court's observation on infringement and assignment. (Para 40 , 41 , 42)
10. examination of the claims of the malaysian patent. (Para 43 , 45)
11. plaintiff's assertions of infringement by the defendants. (Para 46 , 47 , 48)
12. discussion of defendants' challenge to plaintiff's claims. (Para 49 , 50 , 51)
13. legal principles regarding patent infringement established. (Para 54 , 55)
14. understanding the burden of proof in patent cases. (Para 56 , 57)
15. prior art considerations and importance for patent novelty. (Para 60 , 61 , 62)
16. arguments regarding novelty and differences in claims. (Para 63 , 64 , 65)
17. court's conclusion on patent novelty and validity. (Para 75 , 76)
18. final decisions of the court regarding infringement claims. (Para 94 , 95 , 96 , 97)

[11] It is stated in the "Summary of the Invention", that in order to achieve the above-described objects "the present invention consists of an apparatus for peeling off a thin material to dip a mold into a dipping pool to adhere dipping liquid on the surface of the mold, to solidly the dipping liquid which is adhered to the surface of the mold, and to peel the thin film such as a glove, formed on the surface mold, off the mold, the apparatus comprises: a rolling means to roll the hem end of the mold, to the outside; an unrolling means to unroll the hem end of the thin film material which is rolled by the rolling means; an engaging means which has at least a pair of engaging nails to face each other across the mold, and engages the hem end of the thin film material by the unrolling means; and wherein the engaging means moves to the tip side of the thin film material while moving together with the mold in the state where the engaging means is engaged with the hem of the thin film material, and peels the thin film material off the mold."

[12] It was intended by the inventor that Claims 1, 3 and 4 relate to the horizontal apparatus when the parentheses 300 is used to refer to the apparatus at the beginning of each Claim 1, 2 and 4. It is claimed in Claim 1 that the rolling, unrolling means and engaging nails is to be used in a horizontal apparatus. It is further claimed in Claim 3 that the engaging nails is to be operated in a horizontal apparatus and in Claim 4 that the unrolling is to be operated in a horizontal apparatus.

[13] The next significant claim is the use of a pair of engaging nails which is also referred to as single nails. The use of single nails is referred to in Claim 1 as "at least a pair of engaging nails" and is further illustrated in Figures 18, 19, 20, 21 and 22 of the Malaysian Patent (pp 43-47 Bundle C1).

[14] The Malaysian Patent was granted on 30 June 2006. The application for a grant of patent was filed on 10 January 1998 ("P4").

The Trial

[15] The plaintiff called three witnesses, Liu Then Tui (PW1) the director of the plaintiff company, Ang Lee Leong (PW2) the Director of Yew Lee Pacific Manufacturer Sdn Bhd, Hong Kam Huat (PW3) the Director/Engineer of Green Stocks Sdn Bhd.

[16] The defendants called six witnesses, Wong Thiam Fook (DW1) the director of the 1st defendant company, Koh Chew Liang (SP2) a Factory Manager, Johan bin Sajuri (DW3) a Director and Manufacturing Factory owner, Lee Hon Min (DW4) a Project Manager, and David Alan Wyatt (DW5) a Pattern Attorney and Executive Director, and Naidu a/l Appanan (DW6) a qualified Malaysian Patent Agent.

Plaintiff's Case

Click Here to Read the rest of this document

2014 MarsdenLR 63

HIGH COURT MALAYA SHAH ALAMFUKUYAMA AUTOMATION SDN BHD – AppellantVersusXIN XIN ENGINEERING SDN BHD & ANOR – Respondent[Civil Suit No: 22NCVC-489-04-2012]

A patent must be novel and inventive to be valid; prior art can invalidate a patent claim, rendering any infringement claims baseless.

Cases Referred (2)

HIGH COURT MALAYA SHAH ALAM
FUKUYAMA AUTOMATION SDN BHD – Appellant
Versus
XIN XIN ENGINEERING SDN BHD & ANOR – Respondent
[Civil Suit No: 22NCVC-489-04-2012]