Lee Tat Cheng (Lee) sued Maka GPS Technologies (Maka) for infringement of Singapore Patent no. 87795 (the Patent). In response to this, Maka counter claimed that the Patent was invalid and/or not infringed by the sale of its in-vehicle camera devices. Maka also counter claimed for groundless threat of infringement. Justice Wei held the Patent to be valid but not infringed by the Maka devices.

Of interest, Justice Wei explored the law around reliance on evidence from expert witnesses and accepted that patent attorneys can act as expert witnesses.

Validity of the Patent

In accordance with S. 13(1) of the Singapore Patents Act, a patentable invention is one that satisfies the following conditions:

(a) the invention is new; (b) it involves an inventive step; and (c) it is capable of industrial application.

With reference to Figure 1 below, claim 1 of the patent reads:

  1. A recording system, for installation in or on a vehicle, comprising:

(a) a system controller (1), (b) at least one optical recorder (5), (c) at least one sensor (3) and (d) an ignition monitor (2), the ignition monitor (2) providing means to send a signal (7) to the system controller (1) on detection of an ignition voltage (6), the system controller (1) bring connected to the at least one optical recorder (5) to switch on operation thereof on receiving said ignition monitor signal (7), wherein the at least one sensor (3) is provided to send a signal (8) to the system controller (1) on detection of a deceleration or impact, the system controller (1) providing means to switch off the at least one optical recorder (5) after a fixed interval after receiving the sensor signal.

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Is the invention novel?

The judge held that the ignition monitor (2) was not a commonly known feature. From a purposive reading of the specification, the Judge concluded that it referred to a device which monitors the amplitude and duration of the DC voltage (10-15 volts longer than 5 seconds) of the ignition system, in order to turn the in-vehicle camera on and off. The signal (information, output, 7) sent by the ignition monitor is also distinct from the ignition voltage (input, 6).

Given the above considerations, the judge held that the prior art did not disclose the dual function of signal and voltage of the ignition monitor. As such, he held claim 1 and all the claims that depend from it, to be novel.

Did the invention involve an inventive step?

In assessing whether the invention involves an inventive step, the judge confirmed that the question to ask is whether the invention is obvious to the skilled person. In particular, the judge confirmed that if many paths can be taken which can lead to the solution, a decision to try a particular path with no fair expectation that it will lead to success, is inventive. The particular path taken in the present invention is an ignition monitor with a dual function and a five second offset. This is not suggested in the prior art and thus the patent was found to be inventive.

Infringement

In accordance with S. 66(1)(a) of the Singapore Patents Act, a person infringes a patent if, while the patent is in force and without the consent of the proprietor, the person makes, disposes, offers to dispose, uses or imports, or keeps the invented product in Singapore.

As the Patent was found to be valid by offering to dispose (selling) the in-vehicle camera devices, Maka would infringe if the devices fall within the scope of the patent. Justice Wei identified a number of differences between the claimed invention and Maka's devices, including:

(a) Maka's devices can draw power by being connected with the car's battery through the car cigarette lighter socket and not from the ignition system; (b) the ignition monitor is absent in Maka's devices; and (c) the method of operation of Maka's optical recorder is different.

As such, it was held that the Maka's devices did not fall within the scope of the Patent and hence did not infringe.

Groundless Threats

In addition to a finding of non-infringement, to successfully apply for relief under S. 77(2) of the Singapore Patents Act, Justice Wei considered whether:

  1. threats of infringement were made by Lee; and
  2. Maka was aggrieved by those threats.

Justice Wei noted that when considering whether "a person is aggrieved by the threats", it is irrelevant to consider:

(a) the technical competency of the plaintiff's legal representatives; (b) if the requested sum of damages and/or licence fees is unjustified; and (c) if the commencement of proceedings is delayed.

Justice Wei also mentioned that to obtain an award of damages, Maka must prove a loss arising from the threat, either to its business or its reputation. As Maka did not adequately provide evidence of these losses, only an injunction was awarded against the continuance of threat by Lee.

Expert Evidence: Expert Witness as Person Skilled in the Art

In obiter, Justice Wei highlighted that questions of law are for the Court alone to decide, and the expert's role is to assist the Court in its task of viewing the patent claims through the eyes of the person skilled in the art, at the time the patent was applied for. A distinction between the expert and the person skilled in the art was made; the expert need not himself be skilled in the art in question, although he usually is. In line with this view, Justice Wei accepted that patent attorneys can be expert witness, when their opinion may be appropriate, by considering the following:

  1. the experience of the patent attorney in working in the relevant field of art and his qualifications; and
  2. the ability to assist the Court on the technical language used in the specifications and claims, the prior art, the workings of the claimed invention and the alleged infringing Devices.