FACTS OF THE CASE
Name of the Case: Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others [2017] SGHC 232
Tribunal/forum: High Court
PARTIES
- Sun Electric Pte Ltd (Plaintiff):
Singapore-incorporated company which retails solar energy to consumers in Singapore. It is the registered proprietor of Singapore Patent Application No. 10201405341Y (“the Patent”), which is in respect of a power grid system and a method of determining power consumption at building connections in the system.
- Sunseap Group Pte Ltd (1st Defendant)
Parent and holding company of 2nd and 3rd Defendants.
- Sunseap Energy Pte Ltd (2nd Defendant)
Licensed electricity retailer
- Sunseap Leasing Pte Ltd (3rd Defendant)
Develops and manages rooftop solar photovoltaic systems
What actually happened?
The Plaintiff brought a suit against the Defendants for alleged infringement of the Patent. Out of the twelve claims subsisting in the Patent, the Plaintiff asserted that the Defendants jointly or severally infringed eight of the claims (“the asserted claims”).
The Defendants denied all allegations of infringement and counterclaimed for, inter alia:
(a) A declaration that all of the twelve claims in the Patent, including the four unasserted claims were invalid;
(b) An order that the Patent be revoked; and
(c) Remedies under Section 77 of the Patents Act for groundless threats made by the Plaintiff.
The Defendants filed the Particulars of Objection setting out its grounds for the attack on validity. The objections were made in respect of all the claims of the Patent and not just the asserted claims.
The Controversy:
The Plaintiff in response, took the view that the Defendants had improperly put the unasserted claims and revocation of the Patent in issue, whether by way of a defence or a counterclaim. The Plaintiff hence filed an application to strike out relevant paragraphs of the Defendant’s Defence and Counterclaim and the Particulars of Objection.
Procedural History (What events within the court system led to the present case):
At the hearing before the Assistant Registrar (“AR”), the Plaintiff asserted that the Defendants could not put into issue any claims in the Patent by way of a counterclaim for revocation. The Plaintiff’s case was that the right to institute revocation proceedings is confined to proceedings by way of an application to the Registrar of Patents (“the Registrar”), and the Defendants could not commence revocation proceedings in the High Court, not even by way of a counterclaim.
Judgment (Tribunal):
The AR held that unasserted claims could not be put in issue by the Defendants by way of a defence against the Plaintiff’s infringement claim pursuant to Section 82(1)(a) of the Patents Act. A defendant may only challenge claims that have been asserted by the plaintiff to have been infringed (Astrazeneca AB v Ranbaxy (Malaysia) Sdn Bhd [2012] SGHC 7 at [8]-[9]). The AR ordered the Defendants to amend its Defence and Counterclaim accordingly.
The AR held that unasserted claims could not be put in issue by way of counterclaim for groundless threats of infringement proceedings under Section 82(1)(b) of the Patents Act. Section 77(2)(b) was read to limit an aggrieved party to putting only asserted claims in issue, especially considering that it would be futile for that party to assert the invalidity of unasserted claims in groundless threat proceedings.
The AR however, found it proper for the Defendants to have commenced revocation proceedings in the High Court at first instance. It opined that revocation proceedings may be brought by way of a counterclaim where infringement proceedings were already before the High Court.
The Plaintiff appealed against the AR’s decision.
ISSUES (what is in dispute):
Can patent revocation proceedings be properly brought before the High Court at first instance, by way of a counterclaim in infringement proceedings before the Court?
HOLDING (the applied rule of law):
The High Court does not have the jurisdiction to hear revocation proceedings or to grant an order for revocation by counterclaim.
The Plaintiff’s appeal was allowed.
RATIONALE (reasons for the holding):
A large number of cases cited by the Defendant in support of its proposition that patent revocation proceedings can be brought in the High Court by way of a counterclaim in infringement proceedings were distinguishable from the present case on the facts. In any case, the issue in question was never directly raised, contested or ruled upon in any of the cases. Accordingly, the High Court held that these cases could not be treated as precedents to determine the question of law at hand.
The case ASM Assembly Automation Pte Ltd v Aurigin Technology Pte Ltd and others [2010] 1 SLR 1 had facts closest to those in the present case. In that case, a revocation order was made by Tan J in respect of the whole patent, when only some of the patent claims had been asserted in the infringement action. However, there was nothing in the reported judgment which indicates that the court’s jurisdiction or power to revoke the patent was contested.
Academic texts cited by the Defendant in support of its proposition did not delve much further to consider the precise jurisdictional basis upon which the court’s purported original jurisdiction over revocation proceedings is founded. The learned commentators’ observations may simply be declaratory of the existing practice, in light of the judicial decisions granting or upholding revocation orders made by the High Court. In any case, the “practice” appears to be for standalone revocation proceedings, i.e. revocation not brought by way of a counterclaim in infringement proceedings, to be commenced at the Registry rather than the High Court.
Despite the prevalence of cases which have accepted without adverse comment the right of a defendant in infringement proceedings to bring a revocation counterclaim, the fact that there is a practice does not provide a basis to establish jurisdiction as a matter of law. Nor can practice trump law. Jurisdiction is a question of law to be determined by reference to the relevant legislation.
The Defendant’s stated concerns about costs and parallel proceedings was overstated. Even if a finding of invalidity has already been made by the court, the filing of an additional application for revocation with the Registrar cannot be deemed unnecessary or costly. While some additional costs will arise, the Registrar hearing the revocation application may rely on or at least refer to the findings on invalidity made by the court in respect of the asserted claims.
The Parliamentary Debates do not shed much light on the issue in question. General statements made by Prof Jayakumar at the second reading of the Patents Bill cannot be taken to be indicative of the issue at hand, as he did not have the specific issue in mind when making those statements.
On a literal and black-letter interpretation of Section 80(1) of the Patents Act, it only provides that the Registrar may revoke a patent. It is entirely silent on whether the court may do so. However, as it may nevertheless still be argued that Section 80(1) does not necessarily exclude the High Court from granting revocation orders on the basis of invalidity, other provisions of the Patents Act were considered to aid in determining whether the High Court has jurisdiction to hear revocation proceedings.
Section 82(7) of the Patents Act essentially provides that where there are already infringement proceedings before the court, leave of court is required before revocation proceedings can be commenced before the Registrar in respect of the same patent. The High Court disagreed with the AR’s view that Section 82(7) suggests that where revocation proceedings have been brought as a counterclaim, they should ordinarily be heard by the High Court unless for some reason the court finds it appropriate that leave should be granted for the Registrar to hear the matter instead. The High Court elucidated that Section 82(7) merely serves as a housekeeping provision, to prevent or control “duplicative” proceedings. It does not unequivocally suggest that Parliament had envisioned that both the court and the Registrar should have original jurisdiction over revocation proceedings.
Our Patents Act does not contain any provisions akin to Section 72(7) of the UK Patents Act, which provides that a party may not make a court application when there are pending revocation proceedings before the comptroller (Registrar). Section 72(7) may be seen as counterpart to Section 82(7) of our Patents Act, except that it covers situations where proceedings are first commenced before the comptroller rather than the court, and applies only to revocation proceedings. Viewed this way, the inclusion of Section 82(7) in our Patents Act, while omitting any provision similar to Section 72(7) of the UK Patents Act, makes it likely that Parliament did not intend to vest the court with original jurisdiction to hear and determine revocation applications.
The Defendant’s concern that a party may be potentially left without a remedy if the court cannot hear revocation applications and yet denies leave under Section 82(7) is unfounded. Section 82(7) only applies when proceedings are pending before the court. It will not prevent a party from pursuing revocation in proceeding before the Registrar once the court proceedings are over. Moreover, a party who succeeds in obtaining a declaration of invalidity has to apply to register that order in the patent register to give public notice of the court’s decision. This would greatly reduce any mischief arising from the court not having jurisdiction or power to revoke a patent.
Section 82(7) of the Patents Act is not conclusive on the question of jurisdiction. Nonetheless, when read in light of the other provisions touching on invalidity as a defence to infringement proceedings, including the absence of any provision equivalent of Section 72(6)-(7) of the UK Patents Act, it suggests that the court was not intended to and does not enjoy original jurisdiction to hear revocation applications.
No powers of the Registrar in respect of application for patent revocation under Section 80 are vested in the court by virtue of Section 91(1) of the Patents Act. Section 91(1) does not confer original jurisdiction upon the court to hear revocation proceedings. Based on Section 16 of the Supreme Court of Judicature Act (“SCJA”), the High Court has jurisdiction to hear actions in personam, e.g. an action for infringement. However, an order that a patent is to be revoked is clearly one that is made in rem and good against the world. That being so, jurisdiction in rem is necessary. The fact that the High Court has jurisdiction to hear a claim concerning infringement does not necessarily mean that it has original jurisdiction or power to hear all proceedings, disputes and issues arising under the Patents Act, including those which seek the revocation of the patent. Also, having an appellate jurisdiction does not mean that the High Court enjoys original jurisdiction to hear revocation applications.
Parliament was clearly cognizant of the need to demarcate and set out the roles of the Registrar and High Court in respect of the different issues, disputes and proceedings which can arise under the Patents Act. Section 80 of the Patents Act was framed to cover revocation proceedings by way of application to the Registrar. The statutory provisions and procedure on revocation are directed towards the Registrar. These include important provisions on re-examination by patent examiners. The application is to the Registrar and must be in the prescribed form. There is no prescribed form covering an application to the court. The Registrar also has an independent power (not dependent on any application) under Section 81 of the Patents Act to revoke a granted patent. These provisions do not sit comfortably with the assertion that the court may order revocation simply on the back of a plea of invalidity in the counterclaim.
Dicta (commentary about the decision that was not the basis for the decision)
The High Court looked beyond the patent system to draw some comparisons between the Patents Act and legislation protecting other intellectual property rights such as registered designs and trade marks.
Section 27(2) of the Registered Designs Act provides some support of the decision that the High Court does not have original jurisdiction under the Patents Act to hear revocation applications or make an order for revocation, given the absence of equivalent provisions in the Patents Act. Section 27(2) of the Registered Designs Act makes it expressly clear that revocation applications may be brought before “the Registrar or the Court”, unlike Section 80(1) of the Patents Act.
Similarly, Sections 22(5) and 23(5) of the Trade Marks Act expressly provide that applications for declaration of invalidity and for revocation may be made “either to the Registrar or to the Court”. There is no equivalent provision in the Patents Act.
Party’s Arguments (each party’s opposing argument concerning the ultimate issue)
The Plaintiff’s arguments
The Plaintiff argued that the AR had erred in finding that revocation proceedings may be commenced in the High Court at first instance.
The Plaintiff contended that Parliament had intended to restrict revocation proceedings to the Registrar only, as Section 80(1) of the Patents Act omitted any reference to the court, as opposed to Section 72(1) of the UK Patents Act 1977, which Section 80(1) of the Patents Act was based on.
The Plaintiff further submitted that the aforesaid omission in Section 80(1) of the Patents Act was deliberate and not accidental, in view of Section 82(1)(d) of the Patents Act which also omitted reference to the court, as opposed to Section 74(1)(d) of the UK Patents Act, its sister provision. It also submitted that Section 80 of the Patents Act contains no equivalent provisions to Section 72(6)-(7) of the UK Patents Act (which makes various references to court proceedings), hence augmenting its argument that Parliament deliberately omitted such reference to restrict revocation proceedings to the Registrar only.
The Plaintiff submitted that Section 91(1) only grants the High Court the power and not the jurisdiction that the Registrar has under the Patents Act.
The Plaintiff submitted that the AR could not rely on Section 82(7) of the Patents Act, which is simply a “house-keeping provision” and cannot be taken to grant jurisdiction to the High Court. Otherwise, this would run into conflict with the plain meaning of Section 80(1), which is the sole provision in the Patents Act granting jurisdiction for revocation proceedings in Singapore.
The Defendant’s arguments
The Defendant argued that revocation proceedings may be brought by way of a counterclaim in infringement proceedings commenced in the High Court, even in respect of unasserted claims.
The Defendant contended that Section 80(1) must be read with Sections 82(7) and 91 of the Patents Act. Section 82(7) provides that where patent proceedings in which validity has been put in issue are pending before the court, leave of court is required before any proceedings under Section 80 may be instituted before the Registrar. The Defendant’s position was that Section 82(7) shows that Parliament intended for both the High Court and the Registrar to hear revocation proceedings. The Defendant further raised the concern that a party may be potentially left without a remedy if the court cannot hear revocation applications and yet denies leave under Section 82(7), such that the said party cannot make a revocation application to the Registrar either. The Defendant additionally argued that the High Court has identical powers as the Registrar pursuant to Section 91 of the Patents Act, which confers upon the High Court the right to make any order or exercise any power which the Registrar enjoys in determining a question in the exercise of its original or appellate jurisdiction.
The Defendants argued that such an interpretation of the relevant provisions of the Patents Act would give effect to the legislative intention of reducing costs in patent litigation. Allowing revocation of claims to be heard by the Court by way of counterclaim would reduce the risk of inconsistent decisions and unnecessary costs if revocation of claims were to be heard by the Registrar instead.
The Defendants also cited cases in which patent revocation proceedings were brought in the High Court by counterclaim, together with academic opinion in support of its proposition.
The Defendants further submitted that the Patents Act contains no restrictions preventing unasserted claims from being put in issue in revocation proceedings under Section 80(1), hence no distinction should be made between asserted and unasserted claims.
Comments (personal commentary)
In view of the above decision, a challenger of a patent should be prudent to initiate revocation proceedings at the patent office, even if a finding of invalidity has already been made by the court. An additional application for revocation will have to be made.
For more information, please contact:
Renee Xavier
Alpha & Omega Law Corporation
www.alphaandomega.com.sg
Email: [email protected]
Tel: +65 6472 5502