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2012 MarsdenLR 504
HIGH COURT MALAYA KUALA LUMPUR
BT ENGINEERING SDN BHD – Appellant
Versus
TEAM UNITED RESOURCES SDN BHD & ANOR – Respondent
[Civil Suit No: D-22IP-48-2010]
A patent may be invalidated on grounds of lack of novelty if prior art is proven, but infringement occurs if essential features of the invention are utilized. Copyright infringement validated through substantial similarity in reproductions. Breach of confidentiality established upon unauthorized use of protected information.
Headnote:(A) Patents Act - Sections 14 and 15 - Copyright Act - Section 36 - Breach of confidentiality - Plaintiff claims patent and copyright infringement - Defendants counter with invalidity of the patent for lack of novelty and breach of confidentiality claims - Court proceeds ex-parte against first defendant due to failure to appoint solicitors - Validity of the plaintiff's patent and alleged infringement by defendants addressed - Essential features of plaintiff's patented invention focused on inventive combination of adjustable hinges and rollers leading to enhanced performance - Defendants failed to demonstrate novelty of their claims and did not rebut infringement claims. (Paras 1, 10-33, 41-50, 85-87)
(B) Requirements for breach of confidence - Criteria established for successful claims - Implied duty of good faith post-employment outlined - 2nd defendant's actions reviewed against established criteria - Court finds actionable breach of confidentiality established. (Paras 66-84)
| Table of Content |
|---|
| 1. factual background of the case. (Para 1 , 4 , 5 , 6) |
| 2. defendants' denial of allegations and challenges. (Para 2 , 3) |
| 3. factors determining patent infringement. (Para 10 , 22 , 23 , 24 , 30 , 34) |
| 4. description of patented improvements. (Para 11 , 12 , 13 , 16 , 18 , 21) |
| 5. test for patent infringement. (Para 26 , 32) |
| 6. challenge to patent's novelty. (Para 41 , 42 , 45) |
| 7. copyright infringement claims assessment. (Para 51 , 52 , 53) |
| 8. copyright infringement established. (Para 56) |
| 9. allegation of breach of confidence. (Para 63 , 64 , 67) |
| 10. conclusion and judgment outcome. (Para 85) |
[1] The plaintiff alleged that the 1st defendant, Team United Resources Sdn Bhd and Oui Kee Lai who is the director of the 1st defendant infringed the patent and copyright. The plaintiff also claim that the 2nd defendant was in breach of confidentially.
[2] The plaintiff's claim is denied by the defendants. The defendants in its defence and counterclaim contended that the plaintiff's patent is invalid and sought an order that the patent be revoked for lack of novelty and inventiveness on the ground that the alleged invention is not new and it has been anticipated by prior arts.
[3] In relation to the plaintiff's claim for breach of confidentiality against the 2nd defendant, his defence stated that he had relevant industry experience prior to joining the plaintiff company and he denies that the information in question is of a confidential nature.
[4] The plaintiff, BT Engineering Sdn Bhd is in the business of manufacturing and distributing automatic folding gates is the registered proprietor of Patent No. MY-11435-A (the patent).
[5] The 1st defendant offers automatic gates for sale.
[6] The 2nd defendant is a former employee of the plaintiff, formerly serving as a consultant. He then left the plaintiff to join the 1st defendant as a director and shareholder.
Preliminary Issues
[7] The 1st defendant was not represented at the trial. It had discharged its solicitors, Messrs Vijay Edward & Co, on 5 December 2011, at the eve of the trial, by way of a statutory declaration affirmed by one of its directors, Mr Oui Kee Lai (who is also 2nd defendant).
[8]Order 5 r 6(2) of the Rules of the High 1980 prohibits a body corporate from carrying on proceedings in the High Court otherwise than by a solicitor.
[9] In relation to this, this Court had highlighted this to the 2nd defendant as a director of the 1st defendant prior to the commencement of the trial on 6 December 2011. However, as the 1st defendant had not appointed new solicitors, the trial proceeded ex-parte as against the 1st defendant.
Issues
[10] Based on the facts of this case, the main issues to be considered by the Court are as follows:
(i) Whether Malaysian Patent No. MY-114345-4 entitled Automatic Folding Gate is valid.
(ii) If Malaysian Patent No. MY-114345-4 is valid, whether the defendants have infringed the said patent.
(iii) If copyright subsists in the said drawings, whether the defendants infringed the said copyright.
(iv) Whether the 2nd defendant has breached the confidential information relating to the plaintiff's business.
The Plaintiff's Patent
[11] Before proceeding, it would be helpful to set out the invention patented by the plaintiff.
[12] The plaintiff is the registered proprietor of Malaysian Patent No 114345- 4, for improvements to automatic folding gates. (The patent specification is at Bundle B, pp 1-15).
[13] According to Lee Choon Hoong (PW1), the improvements address the following problems inherent in the state of the art of automatic folding gates at the material time. Automatic gates are heavy. Its hinges enable the gates to open and close, whether by a swinging or folding motion. These hinges bear the weight of the gate as it moves to open and close. However, frequent movement of the gate and the excessive weight of the gate cause the hinges to break down over time.
[14] According to PW1, when the hinge is dislodged from its original position, this also affects the alignme
