As businesses become more IP-aware and increasingly seek protection for ideas/developments even in seemingly ‘low tech’ industry, the prospect of being threatened with patent infringement becomes real. Although this article does not seek to be a comprehensive prescription for defending a patent infringement claim, it is hoped that this article provides some suggestions to a potential defendant when faced with a claim for patent infringement.

Responding to the Cease and Desist Letter

In the case of infringement, the patent owner usually issues a demand letter requiring the trader to stop selling the goods which are said to be infringing the patent; and if the trader does not comply with the demand within a fixed period of time, eg seven days or 14 days, the patent owner will sue in the High Court. In the demand letter, the alleged infringer will be required to sign an undertaking to cease the alleged infringing act; undertake to desist from further infringement; promise to pay damages; disclose documents showing extent of infringement and in some cases, issue a public apology.

When threatened with an infringement action, the potential defendant should immediately consider the following:

1   Does the product fall within the language describing the invention as claimed in the patent specification, ie the claims of the patent?

2    Is there any prior art which will render the patent invalid?

3    Is it worth the while to litigate given the likely return the potential defendant might expect from the product and the defendant’s share of the market for the product?

The most important consideration is whether it is worth fighting the case considering that the legal costs to run a patent litigation are substantially higher than other types of litigation. Patent infringement action has to be filed in the High Court which awards costs on a higher scale than the Subordinate Courts. The reality is that it is usually not possible to make the decision whether to defend or to give in within the deadline given by the patentee. In most cases, the potential defendant would have known from market sources, even before receipt of the demand letter, that the product could infringe another party’s patent. Where an infringement is anticipated, the trader should do preliminary homework on the prior art search if he believes that the rewards are worth the investment to defend the infringement action.

The Prior Art Search

A good knowledge of the relevant prior art is important in challenging the patent on the ground of lack of novelty or lack of inventiveness. The decision whether to give in or to fight usually requires input from a patent attorney who is equipped to search the patent prior art databases for prior art from the major patent databases in Europe, United States and Japan. In addition, the defendant will also have to look to his own industry sources to unearth non-patent prior art such as a disclosure at trade shows or in trade publications. Experts, if retained early, may also be helpful in providing leads on the prior art search such as trade fair encounters and trade publications.

The starting point for a typical prior art search is to inspect the patent office’s file relating to the subject’s patent application at the patent office (in the case of Singapore, Intellectual Property Office of Singapore or ‘IPOS’). The file contains the prior art search and the examination report which provide helpful pointers on the strength of the patent. The examination report usually gives a fairly good idea of the prior art (at least those from the patent databases). It is then for the defendant to look to his own industry publication or historical records of trade activities to unearth the non-patent prior art.

In preparing a counterclaim, defence lawyers should resist the temptation to include the ‘all but the kitchen sink’ approach. They should resist the temptation to cite too many prior art although there is no hard and fast rule on the number that may be cited. Most of the prior art would have been reviewed by the patent examiner when approving the patent; there is a possibility that the judge will be influenced by this when reviewing the patentability issue. The defendant should focus on the strongest prior art rather than spread the judge’s attention thin by citing too many prior art. Where the issue is one of inventiveness, the risk in citing too many prior art (each of which just falling short by one or two differences from the claimed invention) is that the judge might be prompted to ask why no one has arrived at the claimed invention if so many inventors have been researching on the same subject matter (given the numerous prior art cited).

Defendants should, as far as possible, put forward a counterclaim for invalidation on grounds of novelty or obviousness. This is a classic case of employing attack as the best form of defence. An invalidation attack is a good way to prevent the plaintiff from urging the court to give a broad interpretation to the claims so as to include the defendant’s product within the scope of the claimed invention. Also, a counterclaim for invalidation puts pressure on the plaintiff to settle with the defendant, given the prospect of having his patent invalidated if he chooses to be uncompromising and pushes for trial. This is sometimes referred to as the ‘Gillette defence’. The defendant’s argument is that if the plaintiff asserts a broad interpretation for its patent claims so as to read onto the allegedly infringing product, the patentee runs the risks of having its patent anticipated by the prior art. If the claims are interpreted too narrowly to avoid a novelty attack, the alleged infringing product might fall outside the scope of such an interpretation. Either way, the defendant wins if the Gillette defence is effectively deployed.

Proving Prior Art

Having found relevant prior art, the next thing to consider is proving it in court. In most cases, the prior art would be from some trade magazine or brochure and will prima facie run into the hearsay problem when it comes to proving the fact of publication and its date. In a matter handled by the author, an application was made to depose a newspaper publisher in Japan to prove the publication of a ‘knock out’ prior art in Japan at a certain date. A knock out prior art refers to one that fully anticipates the patent and therefore, render it not novel. This happened when the plaintiff/patentee refused to admit to the publication of the prior art and the Japanese publisher was reluctant to testify before the Singapore court. The patentee eventually but reluctantly admitted to the publication as it would have to pay the cost of the trip to Japan even if the patentee prevails in the action because it was served with a Notice to Admit Facts. The deposition under O 39 of the Rules of Court is a handy procedure to keep in mind should it become necessary to prove overseas prior art. This, coupled with the Notice to Admit, is useful in getting the opponent to be reasonable in admitting to relatively important prior art. At the very least, it puts the defendant in a stronger bargaining position in getting the plaintiff/patentee to admit to the prior art.

The Notice to Admit Facts under O 27 of the Rules of Court is a frequently deployed procedure. The effect of a Notice to Admit is to warn the opponent that he would have to pay the costs of proving the fact (stated in the Notice to Admit) whether or not the opponent wins the case. In the deposition (to be taken place in Japan), the patentee eventually agreed to the admission of the publication, given the prospects of paying the legal costs for this expensive exercise even if the patentee/plaintiff eventually prevails in the infringement.

Presenting the Prior Art and Expert Evidence

Prior art can be specific – such as those discussed above or common general knowledge known to the man skilled in the art. In either case, the prior art evidence is usually presented through the expert’s report explaining its relevance to the invention claimed in the patent. The expert may also assist the court in interpreting certain words in the claim if such words have acquired a secondary meaning in the relevant field. Where the patent is challenged on the ground of insufficient disclosure, an expert will need to explain that notwithstanding the background common general knowledge at the relevant time, the patent specification still does not disclose enough for him to work the invention.

Choice of Expert

Effective use of expert evidence from persons qualified in the relevant discipline is key in intellectual property litigation. Experts help to educate the court on the state of the art or public knowledge at the date of the patent, how the invention is understood to work, the essential features (versus the non-essential features) of the invention as claimed, similarities and differences between the plaintiff’s invention and the alleged infringing product. It has been common in Singapore to use academics from local polytechnics and universities to assume the mantle of the person skilled in the art. Technicians who have actively engaged in the relevant field are preferred over academics. University professors are often unbiased; however, they may lack practical experience. Quite often, persons who fit the bill of an ideal expert are reluctant to offer their services because they are in the same industry as the patentee and fear that their participation may antagonise the patentee. This may explain why academics are commonly engaged in patent litigation in Singapore. The search for the right expert needs to commence early.

It is permissible for experts in patent cases to testify as to the following:

1    the state of the prior art;

2    what the prior art references (including prior patents) revealed to the expert;

3    the state of knowledge in the field to which the patent specification is directed;

4    what a person skilled in the art would have understood from reading the patent at the relevant time;

5    whether an ordinary skilled workman in the relevant art, at the relevant date, would, in trying to solve a problem, have found precisely what he needed in a particular prior publication and usage;

6    whether in the light of the common knowledge and the ‘prior art’, an ordinary, skilled and uninventive workman would, in trying to resolve a particular problem, have easily and readily come to the same solution found by the ‘inventor’ of the patent (obviousness); and

7    explain technical terms, words and phrases.

However, experts are not permitted to answer the ultimate question of whether the patent is infringed. They should avoid offering an opinion as to infringement. It has been common for parties to file reports by patent attorneys giving opinion of infringement. Such affidavits should, strictly speaking, be excluded.

Does the Product Infringe the Patent?

In order to determine if the product falls within the claims of the patent, it is necessary to first break the claim down into elements and consider if all the features are found on the alleged infringing product. It is only when any one or more feature of the claim is not found on the product in question, that the plaintiff will try to argue for the purposive approach to be applied, ie that the court should ‘widen’ the language of the claim beyond the dictionary meaning so as to read onto the alleged infringing product.

The file of the patent application maintained with IPOS may shed some light on the width of protection. Although file estoppel wrapper defence is not available in Singapore, it may still have some influence on a judge where the interpretation of the word can go either way.

A common technique is to create a two-column table: the left column containing words or phrases from the patent claim and the right column, an explanation of what these terms mean to a skilled reader of the patent as of the relevant date. A second table is then created which correlates certain claim terms (or their explanations) with elements of the allegedly infringing device. This is usually presented as part of the expert’s report.

Interlocutory Injunction

This is still not commonly sought for in Singapore patent litigation although the author believes that patentees should consider seeking this interim relief. From the plaintiff’s point of view, this is a quick and effective way to get the infringement out of the way rather than to wait for the final judgment at the trial – bearing in mind that a damages award would never make good all the losses suffered by the patentee.

There are some recent English decisions which may point to the increased use of interlocutory injunction. The cases are SmithKline Beecham plc v Generics UK Limited (Patents Court) [2002] 25(1) IPD 25005 and SmithKline Beecham plc v Apotex Europe Limited ((Patents Court) (2003) 26 IPD 26005 and (Court of Appeal) (2003) 26 IPD 26020). The rationale for the court’s granting of the injunction can be drawn from the following statement of Justice Jacob in his judgment in SmithKline Beecham plc v Apotex Europe Limited (2003) 26 IPD 26005:

I remain of the same opinion as I was in the Generics case. Where litigation is bound to ensue if the defendant introduces his product, he can avoid all the problems of an interlocutory injunction if he clears the way first. That is what the procedures for revocation and declaration for non-infringement are for.

Justice Jacob acknowledged that damages would not be an adequate remedy for both plaintiff (damages for the infringement) and defendant (where the interlocutory injunction turns out to be wrongfully granted). However, he concluded that ‘as between the two, 
I will put it this way, the claimant’s damage is more unquantifiable than that of the defendant’s, but both are unquantifiable. There are degrees of unquantifiability, just as there are degrees of infinity’ (SmithKline Beecham plc v Generics UK Limited). Should the Singapore courts choose to follow the reasoning in these cases, it may be difficult to resist an interlocutory injunction although circumstances in each individual case may warrant different considerations.

A defendant should be prepared for the fact that he may be restrained by an interlocutory injunction. In such an event, he should proceed to seek direction for early trial and push for strict compliance of this direction should the plaintiff try to delay proceedings after getting an interlocutory injunction. The defendant should, therefore, be ready with its prior art, infringement analysis and expert reports as soon as it makes a decision to defend the infringement even before a demand is served on him. The defendant’s will to fight is likely to wear out if the case is not resolved within three to four months since the defendant may find it harder to see any incentive in carrying on when he is restrained from selling during the suit and a win may not necessarily bring him that ‘pot of gold’, considering that there are likely to be other competitors sitting on the sideline awaiting the outcome of the fight. In a lot of situations, the defendant enjoys a monopoly as he sells under the cover of the plaintiff’s patent whilst the law suit is pending. Other competitors may enter the market, eroding prices should the defendant succeed in invalidating the patent. This may be incentive to allow the opponent’s patent to continue, and reason to reach a settlement with the plaintiff if he is willing to talk to the defendant.

It is hoped that this article will give some useful suggestions to a potential defendant in a patent infringement claim.

Chow Kin Wah

Intelleigen Legal LLC

E-mail: kwchow@intelleigen.com