Facts

Lee Tat Cheng (the "Appellant") is the proprietor of a patent in respect of an inautomotive accident recordal system. In the High Court in Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2017] SGHC 48, the Appellant alleged that three devices offered for sale by Maka GPS Technologies Pte Ltd (the "Respondent") infringed his patent. The High Court held that the Appellant's patent is valid but not infringed, and granted injunctive relief for groundless threats of infringement proceedings against the Respondent. The present case concerns the Appellant's appeal against the High Court's decision.

Decision

The Court of Appeal dismissed the appeal in relation to non-infringement, but heard the appeal on the finding of groundless threats of infringement proceedings. First, the Court considered whether the approach to patent claim construction outlined in the recent UK case of Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48 ("Actavis") should be applied in Singapore. The Court found that the "doctrine of equivalents" approach taken in Actavis was inconsistent with the Singapore Patents Act (Cap 221) ("PA"), and confirmed that the purposive approach to patent claim construction remains the law in Singapore. 

Second, the Court held that relief for groundless threats of infringement under section 77 of the PA was ultimately discretionary, and would turn on whether the Court is satisfied that the claimant is aggrieved by the threats. Notwithstanding the difference in statutory language between section 77 of the PA and the equivalent provision in the Copyright Act, the approach to be taken is similar. The Court found there was no evidence that the Appellant would make further threats of infringement proceedings and injunctive relief was therefore held to be inappropriate. Accordingly, the Court allowed the Appellant's appeal and reversed the High Court's decision to grant injunctive relief.

Comments

The Court of Appeal's decision is significant as it clarifies that Singapore Courts will continue to apply the purposive approach to patent claim construction. For new patent applications to be filed in Singapore, applicants should continue to ensure that claims are drafted so as to sufficiently cover infringement when purposively construed. The Court of Appeal's decision also confirms that counterclaims for groundless threats of infringement will not immediately be made out where a patent owner fails in patent infringement proceedings. Instead, the Court of Appeal helpfully clarified that the relief for groundless threats should only be granted if the Court is satisfied it is appropriate in all the circumstances.