Patents must demonstrate industrial applicability and inventive steps to be valid; prior judgments do not bind non-parties.

Azlan Sulaiman JC:

JUDGMENT

(after trial)

A. Introduction

[1]I believe this to be the second case involving the MOPU Sepat.

[2]“MOPU” is an acronym for “Mobile Offshore Production Unit”; Sepat refers to an offshore oil-field situated about 130 miles off the coast of Kuala Terengganu; and the first case occurred a few years ago.

[3]That first case was Kuala Lumpur High Court Civil Suit No: WA-22IP-63-11/2015 (“Petrofac Suit”). The Plaintiff here, Kingtime International Ltd (“Kingtime”), was the 1^st Plaintiff. Kingtime is the owner of Patent No. MY144898-A (“Patent 898”) and Patent No. MY145004-A (“Patent 5004”) (“collectively, “the Patents”). In that first case, Kingtime sued a company called Petrofac Sdn Bhd (“Petrofac”), for infringement of the Patents under s. 59 of the Patents Act, 1983s. 56 of the Act. The subject matter in the Petrofac Suit was the MOPU Sepat, which Petrofac had constructed. The High Court found for Kingtime, allowing its claim for infringement against Petrofac and dismissing Petrofac’s counterclaim for invalidation.

[4]The subject matter of these two Suits is again the MOPU Sepat. This time around, by the first suit, Kuala Lumpur High Court Civil Suit No: WA-22IP-55-11/2018 (“Infringement Suit”), Kingtime alleges that the Defendant, Petronas Carigali Sdn Bhd (“PCSB”) infringes the Patents by having entered into a contract with Petrofac for the MOPU Sepat, for accepting delivery of it and storing it for use, and actually using it.

[5]By the second suit, Kuala Lumpur High Court Civil Suit No: WA-22IP-17-05/2022 (“Invalidation Suit”), PCSB seeks to invalidate the Patents.

[6]The Infringement Suit and the Invalidation Suit were consolidated and tried together. This is the Court’s Judgment on both.

[7]Before going any further, it must be pointed out that, even though Patent 898 has 10 claims in all and Patent 5004 has 39, only Claim 1 of Patent 898 and Claims 1 and 13 of Patent 5004 are relevant to these Suits; those are the Claims that Kingtime alleges have been infringed by PCSB.

[8]It may therefore be convenient to set out all three Claims in this Judgment just once, as I do so in the next paragraph, with only extracts or parts of those Claims that are relevant to each issue of either invalidation or infringement set out again when each issue is discussed. This is to avoid unnecessary repetition of all three Claims each time. That next paragraph would also be useful for viewing all three Claims at once.

[9]Those three Claims as expressed in the Patents are:

Claim 1 (Patent 898)

“A method of installing a wellhead platform (22) for exploring hydrocarbon below sea bed which includes a wellhead deck (24) and sub-sea conductor frame (32) using an offshore unit (10, 60, 62, 64, 58, 70) which includes: a hull (12) and/or a deck frame (52);

a mat (14) attached to at least one connecting leg (16) or a spud can (50) attached to each of at least one connecting leg (16) or a lower hull (18);

wherein method includes the steps of:

(i)transporting the offshore unit to offshore installation site;

(ii)installing the offshore unit;

(iii)deploying a means for exploring hydrocarbon (54) below sea bed supported by the wellhead deck (24) until the means for exploring hydrocarbon (54) below sea bed penetrate through soil layers to target penetration;

(iv)retrieving the means for exploring hydrocarbon (54);

(v)installing at least one conductor (26) through the wellhead deck (24) and sub-sea conductor frame (32) until the at least one conductor (26) penetrate through soil layers to target penetration;

(vi)securing the wellhead deck (24) to the at least one conductor (26); and

wherein the wellhead deck (24) is removeably attached to the hull (12) and/or deck frame (52); and

wherein the sub-sea conductor frame (32) is removeably attached to the mat (14) or to the at least one connecting leg (16), wherein a spud can is attached to each of at least one connecting leg (16), or to the lower hull (18); and

wherein the wellhead deck (24) and sub sea conductor fra