Dien Ghin v Khek Tai Ting: Patent Revocation for Lack of Novelty & Inventive Step

Dien Ghin Electronic (S) Pte Ltd sued Khek Tai Ting, trading as Soon Heng Digitax, in the High Court of Singapore, seeking revocation of Singapore Patent No 89534 and a declaration of non-infringement. Khek Tai Ting counterclaimed for patent infringement. The court, presided over by Chan Seng Onn J, ruled in favor of Dien Ghin, revoking the patent and dismissing the counterclaim, finding the patent lacked novelty and an inventive step.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Singapore Patent No 89534 be revoked, and that the defendant’s counterclaim against the plaintiff for infringement of the same patent be dismissed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Dien Ghin sued Khek Tai Ting for patent revocation. The court revoked Khek Tai Ting's patent due to lack of novelty and inventive step.

1.7 Decision Date

20 February 2011

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Dien Ghin Electronic (S) Pte Ltd	Plaintiff	Corporation	Judgment for Plaintiff	Won	Ravindran s/o Muthucumarasamy of Ravindran Associates Justin Blaze George of Ravindran Associates Heng Su Lin @ Xing Suling of Ravindran Associates
Khek Tai Ting	Defendant	Individual	Counterclaim Dismissed	Lost	Yip Keng Fook Victor of Angela Wong & Co Tan Kim Chiang of Angela Wong & Co

3. Judges

Judge Name	Title	Delivered Judgment
Chan Seng Onn	Judge	Yes

4. Counsels

Counsel Name	Organization
Ravindran s/o Muthucumarasamy	Ravindran Associates
Justin Blaze George	Ravindran Associates
Heng Su Lin @ Xing Suling	Ravindran Associates
Yip Keng Fook Victor	Angela Wong & Co
Tan Kim Chiang	Angela Wong & Co

4. Facts

The defendant was granted Singapore Patent No 89534 for a 'transportation status display system'.
The plaintiff began manufacturing taximeters in 2003 and later imported systems for displaying messages on panels of multicoloured LEDs.
The defendant alleged that the plaintiff's product infringed the defendant's patent.
The plaintiff sought a declaration that it had not infringed the defendant's patent and an order that the patent be revoked.
The defendant's patent specification claimed a system for displaying information with a multicoloured display, display controller, logic controller, communication means, and a remote control centre.
The plaintiff's product displayed messages on a panel of multicoloured LEDs but was not connected to a remote control centre.
Prior art, including the VICOS LIO document, disclosed systems for transport fleet management with remote control centres and external displays.

5. Formal Citations

Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting (trading as Soon Heng Digitax), Suit No 779 of 2009, [2011] SGHC 36

6. Timeline

Date	Event
2000-09-01	Soon Heng Digitax set up by the defendant.
2000-10-04	Patent application submitted by the defendant.
2004-04-30	Singapore Patent No 89534 granted to the defendant.
2006-01-16	Defendant's patent agent sent a letter to the plaintiff regarding potential infringement.
2008-11-28	Plaintiff's solicitors wrote to the defendant's patent agent seeking acknowledgement of non-infringement.
2009-03-13	Plaintiff's solicitors sent a follow-up letter to the defendant's patent agent.
2009-03-19	Defendant's patent agent requested correspondence be directed to their solicitors.
2009-01-01	Plaintiff brought suit for declaration of non-infringement and patent revocation.
2010-08-10	Defendant filed answers to interrogatories.
2010-06-16	Defendant filed Particulars of Patent Infringements (Amendment No 2).
2011-02-21	Judgment reserved.

7. Legal Issues

Patent Revocation
- Outcome: The court ordered the revocation of the patent.
- Category: Substantive
- Sub-Issues:
  - Lack of novelty
  - Lack of inventive step
  - Insufficient disclosure
Patent Infringement
- Outcome: The court dismissed the counterclaim for patent infringement.
- Category: Substantive

8. Remedies Sought

Revocation of Patent
Declaration of Non-Infringement
Injunction against Infringement
Monetary Damages

9. Cause of Actions

Patent Revocation
Patent Infringement

10. Practice Areas

Patent Litigation
Intellectual Property Litigation

11. Industries

Electronics
Transportation

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc	N/A	Yes	[2008] RPC 1	N/A	Cited to define an 'inventor' as the 'actual deviser of the invention'.
University of Southampton's Application	N/A	Yes	[2005] RPC 11	N/A	Cited to define an 'actual' inventor as the natural person who came up with the inventive concept.
Henry Brothers (Magherafelt) Limited v Ministry of Defence	N/A	No	[1997] RPC 693	N/A	Cited to support the principle that contributing to claims does not necessarily make one an inventor.
Henry Brothers (Magherafelt) Limited v Ministry of Defence	N/A	No	[1999] RPC 442	N/A	Cited to support the principle that contributing to claims does not necessarily make one an inventor.
Ng Kok Cheng v Chua Say Tiong	N/A	Yes	[2001] 2 SLR(R) 326	N/A	Cited for the principle that a patent specification need only be sufficiently clear and complete to enable a person skilled in the art to arrive at the invention.
Kirin-Amgen Inc v Hoechst Marion Roussel Ltd	N/A	Yes	[2005] RPC 9	N/A	Cited for the two-step test for assessing whether sufficient disclosure has been made by a patent specification.
First Currency Choice Pte Ltd v Main Line Corporate Holdings Ltd and anor appeal	N/A	Yes	[2008] 1 SLR(R) 335	N/A	Cited for the two-step test for sufficiency of disclosure and guidance on assessing patent specifications.
Mentor Corp v Hollister Inc	N/A	Yes	[1993] RPC 7	N/A	Cited for the principle that whether a patent specification contains sufficient disclosure depends on the facts of each case.
Genelabs Diagnostics Pte Ltd v Institut Pasteur and anor	N/A	Yes	[2000] 3 SLR(R) 530	N/A	Cited for the principle that whether a patent specification contains sufficient disclosure depends on the facts of each case.
Merck & Co Inc v Generics (UK) Ltd	N/A	Yes	[2004] RPC 31	N/A	Cited for the principle that the purpose of a patent is to convey what the patentee considers to be his invention and what monopoly he has chosen to obtain.
Bean Innovations Pte Ltd v Flexon (Pte) Ltd	N/A	No	[2001] 2 SLR(R) 116	N/A	Cited for the principle that claims in a patent specification can be interpreted with the aid of the description and any drawings contained in the specification.
The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited	N/A	Yes	[1972] RPC 457	N/A	Cited for the 'reverse infringement test' to determine whether an invention has been anticipated by prior art.
Mühlbauer AG v Manufacturing Integration Technology Ltd	N/A	Yes	[2010] 2 SLR 733	N/A	Cited for the 'reverse infringement test' to determine whether an invention has been anticipated by prior art.
Synthon BV v SmithKline Beecham Plc (Paroxetine)	N/A	No	[2006] RPC 10	N/A	Cited for the distinction between novelty and obviousness in patent law.
Merck & Co Inc v Pharmaforte Singapore Pte Ltd	N/A	Yes	[2000] 2 SLR(R) 703	N/A	Cited for the principle that a prior art publication must contain clear and unmistakable instructions to allow a person skilled in the art to obtain a product or process that would infringe the patent.
Ranbaxy UK Ltd v Warner-Lambert Co	N/A	Yes	[2006] FSR 14	N/A	Cited for the principle that a patentee’s claim may be anticipated by a prior art publication which teaches the achievement of a particular end by several alternative methods.
Ranbaxy UK Ltd v Warner-Lambert Co	N/A	Yes	[2007] RPC 4	N/A	Cited for the principle that a patentee’s claim may be anticipated by a prior art publication which teaches the achievement of a particular end by several alternative methods.
Laboratorios Almirall SA v Boehringer Ingelheim International Gmbh	N/A	Yes	[2009] FSR 12	N/A	Cited for the principle that a patentee’s claim may be anticipated by a prior art publication which teaches the achievement of a particular end by several alternative methods.
Pfizer Ltd's Patent	N/A	Yes	[2001] FSR 16	N/A	Cited for the perspective of a person skilled in the art when inquiring into whether an invention has been anticipated by prior art.
Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd	N/A	No	[2005] 3 SLR(R) 389	N/A	Cited for the principle that prior art publications must be construed in light of the state of knowledge known to readers skilled in the art at the date of publication.
FE Global Electronics Pte Ltd v Trek Technology (Singapore) Pte Ltd	N/A	Yes	[2006] 1 SLR(R) 874	N/A	Cited for the principle that prior art publications must be construed in light of the state of knowledge known to readers skilled in the art at the date of publication.
Institut Pasteur v Genelabs Diagnostics Pte Ltd	High Court of Singapore	Yes	[2000] SGHC 53	Singapore	Cited for the principle that the requirement that disclosure must have been made to the public is satisfied if it has been made available in the public domain.
Windsurfing International Inc v Tabur Marine (Great Britain) Ltd	N/A	Yes	[1985] RPC 59	N/A	Cited for the four-step test for what at law constitutes an inventive step.
Vickers, Sons And Co, Limited v Siddell	N/A	Yes	[1890] 7 RPC 292	N/A	Cited for the test that an invention lacked an inventive step if what was claimed was so obvious that it would at once occur to anyone acquainted with the subject.
Mölnlycke AB v Procter & Gamble	N/A	Yes	[1994] RPC 49	N/A	Cited for the principle that the court must make a finding of fact as to what was included in the state of the art and whether the inventive step would be obvious to a person skilled in the art.
Rodi & Wienenberger AG v Henry Showell Ltd	N/A	Yes	[1969] RPC 367	N/A	Cited for the approach taken by the courts in comparing infringing articles with patent claims.
Birmingham Sound Reproducers Ltd. v. Collaro Ltd.	N/A	Yes	[1956] R.P.C. 232	N/A	Cited for the principle that the essence of the invention resides wholly in the selection and arrangement of the parts and the manner in which they interact when arranged in accordance with the invention.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act (Cap 221, 2005 Rev Ed) s 80(1)	Singapore
Patents Act (Cap 221, 2005 Rev Ed) s 113(1)	Singapore
Patents Act (Cap 221, 2005 Rev Ed) s 13(1)	Singapore
Patents Act (Cap 221, 2005 Rev Ed) s 14(1)	Singapore
Patents Act (Cap 221, 2005 Rev Ed) s 14(2)	Singapore
Patents Act (Cap 221, 2005 Rev Ed) s 14(3)	Singapore
Patents Act (Cap 221, 2005 Rev Ed) s 15	Singapore
Patents Act (Cap 221, 2005 Rev Ed) s 66(1)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Patent
Infringement
Revocation
Novelty
Inventive Step
Disclosure
Multicoloured LED Display
Remote Control Centre
Transportation Status Display System
Prior Art
VICOS LIO
Reverse Infringement Test

15.2 Keywords

Patent
Revocation
Infringement
LED Display
Taxi
Singapore

17. Areas of Law

Area Name	Relevance Score
Patent Amendments	90
Intellectual Property Law	70

16. Subjects

Patent Law
Intellectual Property
Technology Law