Patent law requires specific pleading of prior art to challenge validity; copyright originality does not depend on novelty and relates to effort expended in its creation.

Azahar Mohamed CJM:

Introduction

[1] This is an appeal against the decision of the Court of Appeal which reversed the High Court's decision that allowed the appellant's claim for patent and copyright infringements against the respondents.

[2] The appellant's claims revolve around its Malaysian Patent No: MY139512-A relating to a machine used in the oil palm industry known as the 'Fruit Bunch Splitter' ("Fruit Bunch Splitter") ("the appellant's Patent") and the design drawings relating to the Fruit Bunch Splitter and its component parts ("Design Drawings").

[3] The appellant sued both the respondents at the High Court for infringement of the appellant's Patent and infringement of copyright subsisting in the Design Drawings of the Fruit Bunch Splitter.

[4] The High Court found in favour of the appellant and held that the respondents had infringed the appellant's Patent and the copyright subsisting in the Design Drawings of the Fruit Bunch Splitter.

[5] The Court of Appeal took a diametrically opposite view. The Court of Appeal in effect found that the appellant's Patent was invalid, copyright did not subsist in the Design Drawing of the Fruit Bunch Splitter, and that in any event, there was no infringement of copyright.

[6] After hearing the parties, we adjourned the matter for our deliberation. We now give our decision and the grounds for the same. I will only deal with the questions relating to patent law. The question concerning copyright law will be dealt with in this judgment by our learned sister, Rohana Yusuf PCA.

The Parties

[7] The appellant is a company incorporated in Malaysia and is in the business of designing and manufacturing specialized machinery and equipment for palm oil processing. The appellant is the registered proprietor of the appellant's Patent which was filed on 12 January 2006 and subsequently granted on 30 October 2009. The appellant's Patent has been duly renewed and is therefore valid and subsisting at all material times.

[8] The 1st respondent is a company incorporated in Malaysia and is in the business of operating a palm oil factory including processing fresh fruit bunches ("FFB") of palm oil. The 1st respondent has been in the palm oil milling business since 1994.

[9] The 2nd respondent is a company incorporated in Malaysia and is in the business of manufacturing, servicing and trouble-shooting technical and other related issues concerning machineries in plant construction for palm oil mills, wood and pulp processing and industrial plants and companies since 1988.

The Patent

[10] The Invention relates to a machine that reduces the size of palm oil FFB by splitting them into smaller pieces.

[11] In the 'Background of the Invention', the appellant's Patent describes the prior art of the comprising apparatus or machines where the palm oil FFB are either wholly inserted into the sterilizing process or manually cut into smaller pieces. This apparently increased the cooking time or slowed down the processing whilst the manual cutting required a large amount of labour. The Invention is said to address this problem by providing a machine that can reduce the size of the FFB before they are sterilized. The Invention also apparently provides a convenient means of collecting the FFB after the splitting.

[12] In the 'Abstract', the subject matter of the appellant's Patent is stated as an apparatus for splitting palm oil and other fruit bunches comprising two parallel, inward and oppositely revolving drums which are fitted with sharp spikes in order to split large fruit bunches, wherein the drums are rotated by a high torque motor and are capable of splitting fruit bunches upwards of 60kg and where the split fruit bunches fall to a collecting receptacle on the underside of the splitter housing.

[13] There are 12 Claims in the Patent, of which Claim 1 is independent whilst the remaining eleven claims (Claims 2-12) are ultimately dependent on Claim 1.

Factual Background

[14] On or about 15 April 2009, the appellant approa