Element Six Technologies Ltd v IIa Technologies Pte Ltd: CVD Diamond Patents, Validity, and Infringement

In Element Six Technologies Ltd v IIa Technologies Pte Ltd, the High Court of Singapore addressed a patent infringement suit concerning synthetic diamonds produced using chemical vapor deposition (CVD) techniques. Element Six Technologies Ltd, the plaintiff, alleged that IIa Technologies Pte Ltd, the defendant, infringed Singapore Patent No 115872 (SG 872) and Singapore Patent No 110508 (SG 508). IIa Technologies Pte Ltd counterclaimed, disputing the validity of both patents and seeking their revocation. The court, presided over by Valerie Thean J, ruled that SG 872 was valid and infringed, while SG 508 was invalid and not infringed. The court granted an injunction to restrain the defendant from infringing SG 872 and ordered the revocation of SG 508.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

1.2 Outcome

Judgment for Plaintiff in part; Judgment for Defendant in part

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Element Six sues IIa Technologies for infringing its CVD diamond patents. The court found one patent valid and infringed, and the other invalid.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
IIa Technologies Pte LtdDefendantCorporationJudgment for Defendant in partPartial
Element Six Technologies LtdPlaintiffCorporationJudgment for Plaintiff in partPartial

3. Judges

Judge NameTitleDelivered Judgment
Valerie TheanJudgeYes

4. Counsels

Counsel NameOrganization
Meryl Koh JunningDrew & Napier LLC
Davinder SinghDavinder Singh Chambers LLC
Tony Yeo Soo MongDrew & Napier LLC
Srruthi IlankathirDavinder Singh Chambers LLC
Yeo JavierDrew & Napier LLC
Chiew Jing YiDrew & Napier LLC
Hanspreet SinghDavinder Singh Chambers LLC
Alvin YeoWongPartnership LLC
Daniel ChanWongPartnership LLC
Pang Sze Ray MelvinAmica Law LLC
Ong Eu JinAmica Law LLC
Daryl KwokWongPartnership LLC
Chan Kwok Chuan JasonAmica Law LLC
Nicholas Tong Wei JieAmica Law LLC
Vivian SiahWongPartnership LLC

4. Facts

  1. Element Six specializes in producing synthetic diamond material using chemical vapor deposition (CVD) techniques.
  2. IIa Technologies manufactures CVD diamonds, operating a diamond growing facility in Singapore.
  3. Element Six alleged that IIa Technologies infringed two of its patents: SG 872 and SG 508.
  4. The infringement claim was based on three diamond samples purchased from IIa Technologies or its related entities.
  5. IIa Technologies sought to revoke the two patents, disputing responsibility for the samples and denying infringement.
  6. SG 872 contains both product and process claims, focusing on CVD single crystal diamond material with low optical birefringence.
  7. SG 508 is a process claim related to the controlled conversion of a colored single crystal CVD diamond to another color through heat treatment.

5. Formal Citations

  1. Element Six Technologies Ltd v IIa Technologies Pte Ltd, Suit No 26 of 2016, [2020] SGHC 26

6. Timeline

DateEvent
Sample 2 purchased from Microwave Enterprises Ltd
Sample 3 purchased from Pure Grown Diamonds Inc
Sample 4 purchased directly from IIa Technologies Pte Ltd
Suit commenced
Trial began
Judgment reserved

7. Legal Issues

  1. Patent Validity
    • Outcome: The court held that SG 872 was valid, while SG 508 was not.
    • Category: Substantive
    • Sub-Issues:
      • Novelty
      • Inventiveness
      • Sufficiency of Disclosure
  2. Patent Infringement
    • Outcome: The court held that the defendant infringed SG 872 but not SG 508.
    • Category: Substantive
    • Sub-Issues:
      • Direct Infringement
      • Product-by-Process Claims
      • Chain of Custody

8. Remedies Sought

  1. Injunction
  2. Damages
  3. Account of Profits
  4. Revocation of Patent

9. Cause of Actions

  • Patent Infringement
  • Patent Revocation

10. Practice Areas

  • Patent Litigation
  • Commercial Litigation

11. Industries

  • Technology
  • Manufacturing
  • Materials Science
  • Gemstone

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Mühlbauer AG v Manufacturing Integration Technology LtdCourt of AppealYes[2010] 2 SLR 724SingaporeCited for the conditions an invention must satisfy to be patentable under s 13(1) of the Patents Act.
First Currency Choice v Main-Line Corporate Holdings Ltd and another appealCourt of AppealYes[2008] 1 SLR(R) 335SingaporeCited for the principle that the claims of a patent provide the patentee with the monopoly which it is entitled to.
Lee Tat Cheng v Maka GPS Technologies Pte LtdCourt of AppealYes[2018] 1 SLR 856SingaporeCited for the key principles of claim construction.
Unwired Planet International Ltd v Huawei Technologies Co Ltd and othersEnglish Court of AppealYes[2017] Bus LR 1971EnglandCited for the structured approach in considering questions of entitlement to priority under s 17(2) of the Patents Act.
The General Tire & Rubber Company v The Firestone Tyre and Rubber Company LimitedEnglish Court of AppealYes[1972] RPC 457EnglandCited for the test for anticipation, requiring the prior inventor to have 'planted his flag at the precise destination before the patentee.'
Genelabs Diagnostics Pte Ltd v Institut Pasteur and anotherCourt of AppealYes[2000] 3 SLR(R) 530SingaporeCited for the principle that prior art must constitute an enabling disclosure.
Research in Motion v InproN/AYes[2006] RPC 20N/ACited for the principle that prior art can have implicit disclosure.
Merrell Dow Pharmaceuticals Inc v HN Norton & Co LtdHouse of LordsYes[1996] RPC 76EnglandCited for the principle of inherent disclosure, where following directions in prior art inevitably results in the invention.
Fomento v MentmoreN/AYes[1956] RPC 87N/ACited for the principle that inevitability must be assessed in a practical manner.
ASM Technology Singapore Pte Ltd v Towa CorpCourt of AppealYes[2018] 1 SLR 211SingaporeCited for the principle that prior art must be considered separately and the court is not to combine or 'mosaic' disparate pieces of prior art.
Institut Pasteur and Another v Genelabs Diagnostics Pte Ltd and AnotherHigh CourtYes[2000] SGHC 53SingaporeCited for the principle that prior art must have been 'made available to the public' to satisfy the novelty requirement.
Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting (trading as Soon Heng Digitax)N/AYes[2011] 3 SLR 227N/ACited for the principle that the novelty requirement will still be satisfied even if no one has inspected the prior art.
Lux Traffic Controls Limited v Pike Signals LimitedN/AYes[1993] RPC 107N/ACited for the principle that the novelty requirement will still be satisfied even if no one has inspected the prior art.
Smith & Nephew Plc v Convatec Technologies IncN/AYes[2013] RPC 181N/ACited for the principle that material post-dating the date of priority could be used to establish a scientific fact.
SmithKline Beecham plc and others v Apotex Europe Ltd and othersN/AYes[2005] FSR 23N/ACited for the principle that a party attacking the validity of a patent is free to choose his weapons of attack.
Raychem Corp’s PatentsN/AYes[1998] RPC 31N/ACited for the principle that parametritis does not constitute an independent ground for invalidating a patent.
Windsurfing International Inc v Tabur Marine (Great Britain) LtdN/AYes[1985] RPC 59N/ACited for the four-step analysis for assessing inventiveness.
Rohm & Haas Electronic Materials CMP Holdings, Inc (formerly known as Rodel Holdings, Inc) v NexPlanar Corp and anotherHigh CourtYes[2018] 5 SLR 180SingaporeCited for the principle that the skilled reader has the ability to evaluate and assess the relevance and weight of the disclosures.
Pozzoli SpA v BDMO SAN/AYes[2007] FSR 37N/ACited for the principle that a patent may be inventive if it overcomes existing prejudices held by the PSA.
Merck & Co Inc v Pharmaforte Singapore Pte LtdCourt of AppealYes[2000] 2 SLR(R) 708SingaporeCited for the principle that the simplicity of the invention does not mean that the invention is obvious.
Kirin-Amgen Inc v Hoechst Marion Roussel LtdN/AYes[2005] RPC 9N/ACited for the two-step test to determine whether the specification of a patent was sufficient.
Jushi Group Co Ltd v OCV Intellectual Capital LLCN/AYes[2019] RPC 1N/ACited for the principle that it is possible for specific examples in a prior patent to anticipate a later invention.
Liqwd Inc & Anor v L’Oreal (UK) Ltd & AnorN/AYes[2018] EWHC 1394N/ACited for the principle that it is possible for specific examples in a prior patent to anticipate a later invention.
Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly and Co LtdN/AYes[2010] RPC 9N/ACited for the principle that a broad generic disclosure in the prior art does not take away the novelty of a claimed more specific one.
H Lundbeck A/S v Norpharma SpAN/AYes[2011] RPC 23N/ACited for the principle that if no specific individual value is disclosed, there would be no clear directions to use a value within the narrower range.
Synthon BV v Smithkline Beecham plcN/AYes[2006] RPC 10N/ACited for the conventional approach to novelty.
Sunseap Group Pte Ltd and others v Sun Electric Pte LtdCourt of AppealYes[2019] 1 SLR 645SingaporeCited for the principle that if the court finds that the independent claims are invalid, it follows that the dependent claims must also fall.
Lee Tat Cheng v Maka GPS Technologies Pte LtdHigh CourtYes[2018] 3 SLR 1334SingaporeCited for the principle that features in a subsequent claim, taken together with the invention as set out in a preceding claim, could meet the requirements of novelty.
Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and othersN/AYes[2005] RPC 169N/ACited for the principle that patentees may choose to amend their proposed patents even if they disagree as to the merits of the patent examiner’s objection.
Actavis UK Limited and others v Eli Lilly and CompanySupreme CourtYes[2017] UKSC 48United KingdomCited for the principle that the doctrine of equivalents does not apply in Singapore.
Britestone Pte Ltd v Smith & Associates Far East, LtdCourt of AppealYes[2007] 4 SLR(R) 855SingaporeCited for the principles on the burden of proof.
Tang Yoke Kheng (trading as Niklex Supply Co) v Lek Benedict and othersCourt of AppealYes[2005] 3 SLR(R) 265SingaporeCited for the principle that the law requires compelling evidence where serious allegations such as evidence tampering and witness collusion are made.
Alliance Management SA v Pendleton Lane P and another and another suitN/AYes[2008] 4 SLR(R) 1N/ACited for the principle that the provenance of evidence must be made out.
Kalzip Asia Pte Ltd v BFG International LtdHigh CourtYes[2018] SGHC 152SingaporeCited for the principle that the provenance of evidence must be made out.
Contour Optik Inc and others v Pearl’s Optical Co Pte Ltd and anotherHigh CourtYes[2002] SGHC 238SingaporeCited for the principle that the chain of evidence must be established.
Ecooils Sdn Bhd v Raghunath Ramaiah KandikeriN/AYes[2014] 7 MLJ 44N/ACited for the principle that the chain of custody must be established.
Exim & Manufacturing Holdings Pte Ltd v Fintex Industries Pte LtdHigh CourtYes[2007] SGHC 220SingaporeCited for the principle that the chain of custody must be established.
Mohamed Affandi bin Rosli v Public Prosecutor and another appealCourt of AppealYes[2019] 1 SLR 440SingaporeCited for the principle that the chain of custody must be established.
Lee Tat Cheng v Maka GPS Technologies Pte LtdHigh CourtYes[2018] 3 SLR 1334SingaporeCited for the principle that the doctrine of equivalents does not apply in Singapore.
Magnesium Elektron Limited v Neo Chemicals & Oxides (Europe) LimitedN/AYes[2017] EWHC 2957N/ACited for the principle that the court places weight on actual experiments conducted.
Electrolux Northern Ltd v Black & DeckerN/AYes[1996] FSR 595N/ACited for the consequences of a failure to comply with O 87A r 6 of the Rules of Court.
Clark Jonathan Michael v Lee Khee ChungHigh CourtYes[2010] 1 SLR 209SingaporeCited for the principle that internet articles are inadmissible hearsay evidence.
Goh Guan Sin (by her litigation representative Chiam Yu Zhu) v Yeo Tseng Tsai and anotherHigh CourtYes[2019] SGHC 274SingaporeCited for the principle that factual witnesses with the requisite experience and knowledge may be able to give relevant expert evidence.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Patents Act (Cap 221, 2005 Rev Ed)Singapore
Evidence Act (Cap 97, 1997 Rev Ed)Singapore
Rules of Court (Cap 322, R 5, 2014 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Chemical Vapor Deposition (CVD)
  • Single Crystal Diamond
  • Optical Birefringence
  • Strain
  • Annealing
  • Priority Date
  • Person Skilled in the Art (PSA)
  • Metripol
  • Dislocation Density
  • Raman FWHM
  • Charge Collection Efficiency (CCE)
  • Etalons
  • Anvils
  • Detectors

15.2 Keywords

  • patent
  • infringement
  • CVD diamond
  • chemical vapor deposition
  • birefringence
  • validity
  • synthetic diamond
  • Singapore
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Patents95
Inventions90
Corporate Litigation20
Commercial Disputes15
Contract Law10

16. Subjects

  • Patent Law
  • Intellectual Property
  • Synthetic Diamonds
  • Chemical Vapor Deposition
  • Patent Infringement
  • Patent Validity