SUN ELECTRIC PTE. LTD. v SUNSEAP GROUP PTE. LTD. & 2 Ors

Parties

Procedural Posture

Patent Infringement; Counterclaims for Revocation and Groundless Threats / Strike Out Application Under O 18 R 19(1)(a) (d) of the Rules of Court

Legal Issues

1. 1 Whether unasserted patent claims can be put in issue by way of defence under s 82(1)(a) of the Patents Act
2. 2 Whether unasserted patent claims can be put in issue in groundless threats proceedings under s 82(1)(b) of the Patents Act
3. 3 Whether unasserted patent claims can be put in issue by way of a counterclaim for revocation under s 80 read with s 91 and s 82(1)(d) of the Patents Act

Ratio Decidendi

Defendants may not put unasserted claims in issue by way of defence to infringement (s 82(1)(a)) or in groundless threats proceedings (s 82(1)(b)); however revocation proceedings properly brought as a counterclaim under s 80 (and s 91) before the High Court fall within s 82(1)(d) and may put all claims including unasserted claims in issue; accordingly the strike-out application was refused and defendants permitted to pursue revocation while the defence must be amended to limit invalidity pleas to the asserted claims.

Court Disposition

Application to strike out refused in part; defendants ordered to amend defence to specify asserted claims for defence purposes but allowed to pursue revocation counterclaim challenging all claims

Orders

• Defendants to amend paragraphs 4, 14 and 16 of the Defence and Counterclaim to specify that invalidity relied on as a defence relates to claims 1,3,4,5,7,9,10 and 11 and that paragraph 16 states all claims are averred invalid for revocation purposes
• If no appeal within time limited under O 56 r 1(3) of the Rules of Court, amendments to be made within 7 days after the time limited for appeal and leave granted for consequential amendments to Reply and Defence to Counterclaim within 7 days thereafter