KASS began the year 2024 celebrating its win in the Malaysian High Court in a patent invalidation and patent infringement suit for its long-standing client Kendek Products Sdn. Bhd (“Kendek”).
KASS obtained a patent titled “Improvement to Holder of a Former used in Dripped Latex Manufacturing Process” under patent No. MY145342-A. KASS had earlier advised Kendek on the patentability of the improvement, drafted the relevant patent specification and patent claims and later filed and prosecuted the patent to grant. It was this patent that was the subject matter of the dispute.
Kendek instituted a patent infringement suit against Dip Chain Manufacturing Sdn. Bhd. (“Dip Chain”) in Civil Suit No. WA22IP-52-08/2021 in Malaysia.
As expected, Dip Chain denied patent infringement and counter-claimed to invalidate the patent on the grounds that the claimed improvement was not novel, lacked an inventive step and does not comply with certain requirements for registration of a patent as prescribed in the Patent Regulation under The Patents Act 1983. In addition, Dip Chain challenged Kendek’s locus standi to bring patent infringement proceedings against Dip Chain.
The High Court, on the evidence adduced in the trial, held that the assignment of the patent from Kendek Industry Sdn. Bhd to Kendek Products Sdn. Bhd. was in order and was valid. To establish lack of novelty of the patent as at the priority date, Dip Chain adduced contain technical drawings of holder sets produced by a third party and claimed that the said technical drawings destroyed the novelty of the patented invention. The Court again held on to the evidence that the drawings cannot be considered as prior art as the drawings were disclosed resulting from a breach of confidentiality by the third party with the original patentee Kendek Industry Sdn. Bhd. of the subject patent.
On the issue of lack of inventive step in the patent, the Court adopted a purposive approach to the construction of the patent claim as laid out in the landmark British case of Catnic Components Ltd & Anor v Hill & Smith Ltd RPC 183 and in Merck Sharp & Dohme Corp & Anor v Hovid Bhd [2019] 4 MLJ 121.
In assessing obviousness (lack of inventive step), the Court adopted the test laid in Windsurfing International Inc v. Tabur Marine (G.B) Ltd 1985 RPC 59. The Court, after examining the testimonies of the expert witness of Kendek and Dip Chain, concluded that the patent satisfied the inventive step criteria required for patentability.
At the end of the trial, the Court granted all the reliefs Kendek had prayed for including a permanent injunction against Dip Chain and other consequential orders and an order to pay damages, or at the option of Kendek, profits made by Dip Chain after taking an account of profit and costs.
It was a hard-won battle for Kendek, our litigators and for KASS.
This case was another feather in the cap for KASS where in an earlier case in Kingtime International Ltd & Anor v Petrofac E&C Sdn. Bhd. [2018] MLJU 1840 where a patent was drafted and prosecuted by KASS. The defendant in that case denied patent infringement and challenged the validity of the granted patent. The High Court, after a trial with several expert witnesses, held that the patent was valid and infringed. It held that the language of the claims was clear and not ambiguous.
A patent held valid after a challenge in the Court after a trial will naturally increase the monetary valuation of the patent and as a consequence increase the net asset value of the patentee. As at the date of authority in this case note, an appeal was recently filed by Dip Chain, and there the patent attack now continues at the Court of Appeal.
Watch this space for more updates.
If you need any assistance or would like to learn more about IP protection, Franchising and Translation, drop us a line at kass@kass.asia!
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