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Singapore High Court Affirms It Own Decision

Dextra Asia Co Ltd and Dextra Manufacturing Co Ltd (collectively referred to as “Dextra”), the owners of rights in Asia to “Bartec”, a patented invention used in reinforcing concrete in the construction of buildings sued Mariwu Industrial Co (S) Pte Ltd in 2006 for alleged infringement of their Singapore patent.

The trial judge, Tan Lee Meng J held the plaintiffs were entitled to damages from the defendant and it was reported in Dextra Asia Co Ltd v Mariwu Industrial CO (S) Pte Ltd [2006] 2 SLR 154.

The defendant then filed an appeal at the Court of Appeal and the Court of Appeal allowed the admission of further evidence in which the defendant had contended that the patent was not novel because there had been prior use of the patent in France and Hong Kong 1994 i.e. before the priority date of the patent which will therefore render the patent invalid for lack of novelty.

As a background to this case, in 1994, the plaintiffs had not yet acquired the rights in Asia to the Bartec patent and they were then licensees of the patent, paying royalties at the rate of 5% to Establissements A Mure which had acquired the ownership of the patent from the original owner, Techniport S.A. The plaintiffs allegedly collaborated with their fellow licensee CCL Systems Limited to pressure Mure from not selling the Bartec patent to Erico, a competitor of theirs and to reduce the royalties payable by them from 5% to a lower figure.

The Court of Appeal was of the view that the new evidence ought to be considered because it revealed that the plaintiffs’ own main witness at the trial, Mr. J M Pithon, had actually questioned the validity of the patent in 1994 because of the fact that the Bartec invention had been commercialised in France and Hong Kong before the priority date. The case was then remitted back to the trial judge to hear the further evidence.

The plaintiffs denied that there had been any use of the Bartec invention in France before the priority date. However, whilst they admit that the invention had been used in Hong Kong, the use was confidential and there it should not be considered as novelty destroying.

During the hearing, Dr Pithon had actually denied that he had any real evidence to show that the patent was invalid and that his claim in his letter of 3 November 2004 that the patent had been commercialised in France and Hong Kong before the priority date was “an exaggerated bluff” to pressurise Mure to reduce the royalty payment.

Furthermore, a director of CCL, Mr. Robert J Copping who was involved in the negotiations with Mure, admitted that CCL also had no evidence to prove that the patent was invalid. Mr. Copping had admitted this is a strategy applied by them to threaten Mure so that Mure will agree to reduce the royalty payment to 2.5% from 5% previously.

The Court held that both Dextra and CCL were using the alleged invalidity of the Bartec patent as a bargaining tool against Mure, and that Dr. Pithon had no real evidence that that the patent was invalid.

The defendant submitted further evidence that Mure had admitted of the invalidity of the patent at a meeting between the representatives of Mure, Dextra and CCL on 3 November 1994 in Lyon. The further evidence is a summary of the meeting as prepared by Mr. J R Brett, now deceased, which was circulated to the Board of CCL I which it was stated that, inter alia,

(a) Mure agreed that the product was in the public domain before the patent was applied for;

(b) Mure first knew of this shortly after acquiring Techniport;

(c) Mure had not told CCL and Dextra because it thought it was evident; and

(d) Mure accepts that of the information was made public, the patent would be rendered invalid.

Mr. Copping during cross-examination said that Mure had not admitted that the patent was invalid but merely making a reservation that the patent might be vulnerable. He said “I believe they [Mure] probably were making a reservation because until it was tested, it would not be proven’.

The Court held that the assertion by Mure that the patent was invalid was not proven.

The defendant also alleged that the inventor of Bartec, Mr. Alain Bernard has told CCL that the patent was invalid. However, he was unable to attest to this because he was working for Mure.

The Court held that this is pure hearsay and stated that a court could only make a decision on its validity on the basis of the evidence available before it. In this regard, it had referred to Soon Peck Wah v Woon Che Chye [1998] 1 SLR 234, wherein Yong Pung How CJ said that the rationale for the hearsay principle is that the witness cannot verify the truth of the facts of which he has no personal knowledge. As the person who does not have personal knowledge of the facts is not in court, the accuracy of his perception and his veracity cannot be assessed and tested in cross-examination. Such evidence is unreliable and should be excluded from consideration.

The Court affirms its own decision and found that the patent is valid and therefore the plaintiffs were entitled to damages from the defendant.

The defendant has appealed against this decision and the hearing started in the week beginning 1 October 2007.

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