In a recent patent invalidation suit IEV International Pty Ltd v Sadacharamani a/l Govindasamy [2008] 2 MLJ 754, at the High Court of Malaya in Kuala Lumpur, validity of two Malaysian patents was put on test and the Court found that both patents are invalid for lack of novelty and an inventive step.
The Plaintiff had filed an application to revoke the Defendant’s Malaysian Patents No. MY-119064-A and MY-119147-A as the inventions described in the ‘064 and the ‘147 Patents lack novelty and an inventive step.
The Plaintiff has alleged that the Defendant was a Manager of the Plaintiff’s Malaysian Office between January 1991 and December 1992 and had access to a wide range of confidential information and documents relating to the Plaintiff’s products and their patent documents. Shortly after the Defendant resigned from the Plaintiff, the Defendant had filed two patent applications in Malaysia on 1 September 1993 (which subsequently has been granted as the ‘147 Patent on 30 April 2005) and on 3 September 1993 (which subsequently has been granted as the ‘064 Patent on 31 March 2005).
The Plaintiff has argued that the inventions as described and claimed in the ‘064 and ‘147 Patents are not novel at the time of the filing dates of both the ‘064 and ‘147 Patents. The Plaintiff has submitted evidence of prior publication such as drawings dated between June 1989 to June 1992 belonging to the Plaintiff were disclosed to the public in Malaysia, articles were published in various countries relating to the invention which was patented in the Plaintiff’s own Malaysian Patent No. MY-103283-A, evidence confirming that there were users before the priority dates of 1 September 1993 and 3 September 1993 and also by the of the grant of the ‘283 Patent and all other corresponding foreign patents.
The Plaintiff has also argued that the ‘064 and ‘147 Patents do not involve an inventive step at the time of the filing dates of both the ‘064 and ‘147 Patents as the inventions are obvious to persons having ordinary skill in the art; they offers no technical advancement or improvement; the Plaintiff used cleaning blades of a variety of rollers; adjustable slots to accommodate varying thickness in the Plaintiff’s marine growth preventers since 1987 but the Plaintiff discontinued use and the ‘064 Patent exactly same as the ‘283 Patent save for cup with fin and gives no technical advantage.
In reply the Defendant argued that the inventions and drawings filed in the ‘064 and ‘147 Patents were different from the ‘283 Patent. For an example, the Defendant has pointed out that the Plaintiff uses floating ring and submerged rings with cleaning members with the semicircular head which does not resemble the Defendant’s rubber roller assembly and further uses the scraper blades on the linkages whereas the Defendant has claimed the use of impact rubber roller constructed in the manner set out in his claims of the ‘064 and ‘147 Patents. The Defendant has also alleged that the Plaintiff’s brush assembly is different from the Defendant’s rubber roller assembly and likewise the linkage restrainers used in the ‘064 and ‘147 Patents are not found in the Plaintiff’s product which uses disk brushers as described in the ‘283 Patent. The Defendant has also alleged that even though the cup fin has been briefly described in the specification of the ‘283 Patent, the cup fin was never claimed. The Defendant has also alleged that the design of the cup fin in the ‘283 Patent is totally different from his design.
Furthermore, the Defendant has also pointed that the inventions as described and claimed in the ‘064 and ‘147 Patents are different from the one belonging to the Plaintiff as they are equipped with rubber rollers not only hammer but also wipe of the calcarious organisms from the structures by both rotational movements and lateral movements along the shaft. He has argued that the Plaintiff’s product utilizes scraping action using the scraper blades and wire brushes. Further the Defendant’s designs allow the WDI to be installed onto structures which are not vertical and cup fins cause it to have negative lift so as to drive deeper.
The Defendant argued that with such a vast difference between the ‘283 and ‘064 Patents and the ‘147 Patent, there can be no infringement of the ‘283 Patent and accordingly the ‘064 Patent and the ‘147 Patent cannot be invalidated.
In the judgment, the Court first touched on whether the Plaintiff can be considered as “an aggrieved person” under Section 33C of the Act. Section 33 requires that an application to revoke a patent can only be filed by “an aggrieved person” without any further definition. In the judgment, the Court elaborated the meaning of ‘aggrieved person’ in the judgment and stated that the words had no special technical meaning and should be liberally construed.
The Court held that the Plaintiff had clearly satisfied the above requirement and therefore qualified as an aggrieved person and therefore entitled to file the application to revoke the ‘064 and ‘147 Patents.
The Court has accepted the evidence adduced by the Plaintiff in the form of articles published between December 1990 and May 1991 by the Plaintiff in various countries, including Malaysia, setting the role of the Plaintiff in inventing, developing and manufacturing the device or the products in question in relation to novelty and decided in favour of the Plaintiff. The Court also took into account the dates of use of the said products by the Plaintiff as opposed to those of the Defendant.
The Court has also taken in consideration that the application of the Plaintiff is supported by two expert witnesses from UK and a Malaysian patent practitioner. All of three of the witnesses have indicated that the ‘064 and ‘147 Patents lack novelty in view of the ‘283 Patent and all other documents as submitted by the Plaintiff. The Defendant has not given any expert evidence to show the validity of the ‘064 and ‘147 Patents or to contradict what the Plaintiff’s expert witnesses have reported. In such a situation, the Court has accepted the expert witnesses’ argument and in fact has acknowledged that they have given guidance to the Court in matters which involve some technicalities.
With regards to the inventive step, the Court was satisfied that the alleged inventions as described and claimed in the ‘064 and ‘147 Patents would be obvious to a person having ordinary skill in the art taking into account the disclosure by the Plaintiff, the articles published by the Plaintiff and the use of the product in various parts of the world even before the ‘064 and ‘147 Patents were granted. The Court went on further to observe that the ‘064 and ‘147 Patents did not portray any technical advancement or improvement and it is obvious that the alleged inventions as described and claimed in the ‘064 and ‘147 Patents were mere workshop changes or superficial changes made to the Plaintiff’s product.
Based on the findings of the Court, it appears that the Court has relied upon established precedents of Malaysian and UK courts before arriving to this decision.
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