A patent can be invalidated if it lacks novelty or an inventive step when compared to prior art, necessitating assessment of each claim individually under patent law.

Introduction

[1] This is the appellant's/plaintiff's appeal against the whole of the decision of the Court of Appeal in allowing the respondents'/defendants' appeal against the decision of the High Court of Kuala Lumpur. It was the finding of the Court of Appeal that the appellant's Malaysian Patent No: My-128431-A ["Patent 431"] was invalid and that the appellant's claim against the respondents for infringement of the appellant's patent was therefore unsustainable. In consequence thereof, the Court of Appeal reversed the decision of the High Court in allowing the claim against the respondents for infringement of the appellant's patent.

[2] The questions of law upon which leave as obtained read as follows:

"(1) Where a patent comprises multiple claims, whether, in invalidating a patent for lacking novelty and/or inventive step, the Court must make a determination on each and every claim.

(2) Where a patent comprises multiple claims, some of which are independent, and other claims which are dependent on the independent claims:

(i) whether having determined that an independent claim of a patent lacks novelty and/or inventive step, the Court is required to assess the claim dependent from the said independent claims before invalidating a patent; and

(ii) whether having only determined that one or more claims of a patent lack novelty and/or inventive step, the Court should invalidate those claims whilst preserving the patent in respect of the valid dependent claims.

(3) Where there is no dispute that the appellant's /plaintiff's product is an embodiment of the claims of the appellant's patent, whether, in assessing Prior Art to determine if the appellant's patent is anticipated by or is inventive over the Prior Art, it is permissible to compare features of the appellant's product to the features of the Prior Art.

(4) Whether, on a true construction of the case of The General Tire & Rubber Co v. The Firestone Tyre & Rubber Co Ltd & Ors [1972] RPC 457, in particular the passage of Sachs LJ that was cited by the Court of Appeal, when the English Court of Appeal referred to: "... To determine whether a patentee's claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee's claim ... If the earlier publication so construed discloses the same device as the device which the patentee by his claim, so construed, asserts that he has invented, the patentee's claim has been anticipated, but not otherwise. In such circumstances the patentee is not the true and first inventor of the device and his claimed invention is not new ...", a comparison between a device that is disclosed by the claims of a patent with a device that is disclosed by an earlier publication (or Prior Art) is permitted.

(5) In the event the answers to Questions 3 and 4 above are in the negative, whether, having determined that the Prior Art must be compared to the Patent Claims in assessing if the appellant's patent is anticipated by or is inventive over the Prior Art, it is open to the Court of Appeal to construe the Patent Claims without the assistance of persons skilled in the art.

(6) Upon finding that the expert witnesses could hardly be described as "the unimaginative skilled addressee" in determining if there is an inventive step in the appellant's invention or otherwise, whether it is permissible for the Court to refer to the evidence of such experts to make a finding that the concept embodied in the appellant's patent is a common general knowledge in the field of mechanical engineering which would be obvious to a normally skilled but unimaginative addressee in t