Asia IP

In Suit No. 22NCVC-489-04-2012 between Fukuyama Automation Sdn Bhd (the plaintiff) and Xin Xin Engineering and Trading and Wong Thiam Fook (collectively referred to as the defendants), the High Court of Malaya invalidated the plaintiff’s Malaysian Patent No. MY-124182-A due to lack of novelty in view of the prior disclosure of the Japanese Patent No. 2812353 (JP2812353). Subsequently, the High Court dismissed the infringement case iled by the Plaintiff.

Background

The plaintiff, is a Malaysian company which manufactures, sells and installs glove stripping machines. The Malaysian patent was originally owned by Fukuyama Netukan Co Ltd, which entered into an assignment agreement with the plaintiff.

The defendants, Xin Xin Engineering and Trading, is a company based in Malaysia. Wong Thiam Fook is the sole proprietor thereof.

The plaintiff claimed that the defendants infringed its patent, MY124182A, by manufacturing, supplying and offering an apparatus consisting of features similar to those described in MY124182A.

The defendants denied infringement and counterclaimed that the plaintiff was not the rightful owner of the Malaysian patent, and that MY124182A lacked novelty in view of JP2812353.

The plaintiff claimed that MY124182A relates to a horizontal apparatus for peeling off a thin ilm material, and that said patent is novel over JP2812353 since the horizontal feature of the apparatus is not disclosed in the latter.

The plaintiff presented in court a video clipping of the defendants’ infringing glove stripping machine. The plaintiff claimed that the defendants distributed the operation manual and a certiicate of warranty of its machine to its customers. The plaintiff asserted that it could institute court proceedings against any infringer as it had obtained all the rights to the patent by way of assignment.

The defendants contended that the Malaysian patent is invalid due to lack of novelty and/or inventive step in view of JP28112353 under Section 56(2)(a) of the Malaysian Patents Act 1983.

The defendants argued that the horizontal stripping feature in MY124182A merely adapts the vertical stripping method for stripping glove in the horizontal planes disclosed in JP2812353. Thus, MY124182A is not novel over JP2812353.

The defendants also claimed that the plaintiff failed to identify which parts of the defendants’ machine infringed MY124182A. The defendants added that the plaintiff must bring the actual product into court and must submit an expert opinion regarding the video clipping to prove infringement.

Further, the defendants argued that the plaintiff had no right to institute proceedings in court since it was not the rightful owner of MY124182A. The assignment only gave the plaintiff a license to manufacture.

The High Court Decision

The High Court ruled that MY124182A is not novel over JP2812353. The High Court stated that the plaintiff’s claim of “horizontal apparatus” does not differ from the vertical peeling apparatus disclosed in JP2812353 since the construction of the peeling apparatus in MY124182A is basically the same as the vertical peeling apparatus disclosed in JP2812353, which moves in a horizontal direction. The plaintiff did not show that its glove stripping machine could work either vertically or horizontally. Thus, the plaintiff’s invention did not meet the requirements of Section 14 of the Act in order to be considered novel.

The High Court also said that MY124182A was iled more than one year after the iling date of JP2812353. Hence, MY124182A could not claim priority over JP2812353. Therefore, JP2812353 is considered prior art to MY124182A.

To assess infringement, the High Court said that an actual product must be presented in court. However, the defendants’ machine was not presented to show which parts thereof had infringed the MY124182A patent. The High Court opined that the plaintiff could not merely compare the operational manual, certiicate of warranty and video clipping of the defendants’ machine to prove patent infringement.

The High Court also ruled that the assignment entered into between the plaintiff and Fukuyama Netukan only gave the plaintiff a license to manufacture the machinery within the territory.

The High Court, therefore, invalidated MY124182A due to lack of novelty over JP2812353 and subsequently, dismissed the infringement action iled by the plaintiff.

Conclusion

This decision has highlighted the importance of expert opinion to bolster an argument. Failure to submit an expert opinion on the part of the plaintiff to support its claim of infringement inluenced the outcome of the case. Also, plaintiffs should be certain of its rights over a patent before instituting an infringement action in court. Otherwise, an infringement claim could backire on the plaintiff.

mirandah asia (singapore) pte ltd

formerly known as patrick mirandah co. (s) pte ltd

1 Coleman Street

#07-08 The Adelphi

Singapore 179803

T: +65 6336 9696

F: +65 6338 3739

E: singapore@mirandah.com

W: www.mirandah.com

About the Author

Gladys Mirandah is the director of mirandah asia (singapore), Malaysia, Vietnam, Thailand, Indonesia and Philippines. She has been admitted to practice in Singapore, the UK and Brunei and brings with her more than 35 years of IP experience in Asia. She can be contacted at gladys@mirandah.com.

Rudina Ann Pescante is an IP specialist with mirandah asia (singapore). She is a registered chemist and a registered patent agent in the Philippines with extensive experience in patents, IP consultancy, IP management, and freedom to operate opinions.