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2022 MarsdenLR 2145
HIGH COURT (KUALA LUMPUR)
AZLAN SULAIMAN, JC
Industrial Hardware Supply Sdn Bhd – Plaintiff
Versus
Sinowaja (Malaysia) Sdn Bhd – Defendant
CIVIL SUIT NO WA-22IP-58-09 OF 2019
Jonathan Gerard (with Chua Yee Song) (Ken St James) for the plaintiff.
Indran Shanmuganathan (with Michell Loi and Yap Khai Jean) (Shearn Delamore & Co) for the defendant.
Important Points
Subject
Intellectual Property - Patents and Utility Innovations
Act Referred
Evidence Act, 1950: S.45(1)(2), S.114(g)
Patents Regulations 1986: R.5, R.12, R.13
Patents Regulations 1983: R.12, R.13
Headnote
(B) Utility Innovation - A utility innovation is an exclusive right granted for a minor invention that falls short of the inventive step and novelty bars required for patent protection. (Para 10)
(C) Person Ordinarily Skilled in the Art (POSITA) - The function of an expert is to educate the court in technology; they act as teachers to provide the mantle for the court to don. An expert witness is not required to approximate the notional skilled person, as the reasons for the expert's opinion are what matter. (Paras 13, 20)
(D) Novelty - For a utility innovation to be invalidated for lack of novelty, all integers in the claim must be directly and clearly disclosed by a single piece of prior art. If any one of the essential integers is not anticipated by the prior art, the innovation is novel. (Paras 31, 37) (E) Industrial Applicability - A utility innovation is industrially applicable if it can be made or used in any kind of industry, a term construed broadly to include all manufacturing, extracting, and processing activities carried out continuously and independently for commercial gain. (Paras 50-52) (F) Sufficient Disclosure - The test for sufficiency of disclosure is whether the specification as a whole discloses the innovation in a manner sufficiently clear and complete for a person ordinarily skilled in the art to make the product without undue burden. (Para 64) (G) Infringement - The "Essential Integers Test" is applied to determine infringement of utility innovations. To constitute infringement, the alleged infringing article must take each and every one of the essential integers of the claim. If the article has all the features of the claim, it infringes even if it incorporates additional features. (Paras 74-75)
Facts of the case:
The registered owner of a utility innovation for a torque shear tamper-resistant nut sued a distributor for infringing the innovation by supplying a similar anti-theft nut to a client. The defendant counterclaimed to invalidate the utility innovation on the grounds that it lacked novelty, was not industrially applicable, and lacked sufficient disclosure.
Findings of Court:
The court found the utility innovation novel as several essential integers were not present in the cited prior art. It was held to be industrially applicable based on evidence of successful manufacturing and sales. The specification was found to be sufficiently clear for a person skilled in the art to replicate the product. The defendant's product was found to embody all five essential integers of the claim, thereby constituting infringement.
Issues: Whether the utility innovation was invalid due to lack of novelty, industrial applicability, or sufficient disclosure, and whether the defendant's product infringed the utility innovation.
Ratio Decidendi: The court ruled that the absence of even one essential integer in prior art preserves novelty. For infringement, the court applied the "Essential Integers Test," holding that an article infringes if it possesses all essential integers of the claim, regardless of whether it includes additional features or is used differently.
Result: Plaintiff’s claim allowed and Defendant’s counterclaim dismissed.
Legal Category Hierarchy
Azlan Sulaiman JC:
JUDGMENT
[AFTER TRIAL]
Introduction
[1] After a full trial of the action. I allowed the Plaintiff’s claim and dismissed the Defendant’s counterclaim. This is my Judgment for doing so.
The claim, the counterclaim, and the order for deciding them
[2] The Plaintiff is the registered owner of Utility Innovation No. MY-165197-A for a “Torque Shear Tamper Resistant Nut” (“the Plaintiffs Ul”). The Certificate for Utility Innovation issued for the Plaintiff’s Ul is dated 28.2.2018.
[3] The Plaintiff claims that an anti-theft nut manufactured by a company in China named Hebei Xinde Power Fittings Co. Ltd (“Hebei”), distributed in Malaysia by the Defendant as Hebei’s sole distributor, and supplied by the Defendant to Sarawak Energy Berhad (“SEB”) for use in SEB’s transmission line projects, infringed the Plaintiff’s Nut. For convenience I will refer to that anti-theft nut as “the ATN”.
[4] The Plaintiff therefore seeks the following relief against the Defendant:
“(1) an injunction be granted to restrain the Defendant, whether acting by itself, its officers, servants or agents or any of them or otherwise howsoever from doing the following acts or any of them, that is to say:
(a) infringing, or causing, enabling or assisting others to infringe Utility Innovation No. MY-165197-A (“Plaintiffs Ul”) in Malaysia;
(b) manufacturing, causing others to manufacture, importing, supplying, distributing, offering to sell, selling, using or stocking any torque shear tamper-resistant nut and any shear-off type anti-theft locknut that are functionally identical, or similar to the Plaintiff’s Ul or that have the same function or solves the same theft or vandalism problems as the Plaintiff’s Ul (“Infringing Products”) without the license, consent or permission from the Plaintiff;
(2) the Defendant is to deliver up for destruction on oath, all Infringing Products within 14 days from the date of this Judgment, irrespective of the formal service of the sealed Judgment on the Defendant;
(3) an order for the assessment of damages;
(4) at the option of the Plaintiff, an order for an account of the profits made by the Defendants from the importation, supply, distribution, offer to sell, sale, use or stock of any Infringing Products;
(5) interest at the rate of 5% per annum be chargeable on the amount of damages assessed or profits accounted for that is payable by the Defendant from the date of this Judgment to the date of full and final payment;
(6) costs on an indemnity or solicitor-client basis; and
(7) such further or other reliefs as this Honourable Court deems fit and just.”
[5] In response, apart from denying that the ATN infringes the Plaintiffs Ul, the Defendant further counterclaims to invalidate the Plaintiff’s Ul as a utility innovation. In brief, the Defendant essentially contends that the registration of the Plaintiff’s Ul as a utility invention should be invalidated because it lacks novelty, is not industrially applicable, and lacks sufficient disclosure.
[6] Consequently, the Defendant therefore counterclaims for the following relief:
A.A declaration that the Plaintiff’s Ul is and always has been invalid and unenforceable;
B.A declaration that the manufacture, import, offer for sale, sale, use and/or stocking of the ATN for the purpose of offering for sale, selling or using the ATN, do not constitute an infringement of the 197 Ul;
C.An order that the Plaintiff’s Ul be revoked and invalidated and that upon the Order (if granted) being served on the Registrar of Patents, the Registrar of Patents may take such action as may be necessary to revoke and remove from the Register of Patents under serial no.: MY-165197-A including the publication of such revocation in the relevant Government Gazette;
D.Costs of this action; and
E.Such further and other orders or reliefs as this Honourable Court deems fit.
[7] If I allow the Defendant’s counterclaim, the Plaintiff’s Ul would be invalidated as a utility innovation, and there would obviously be no issue of infringe
