Lim Choong Huat & Ors V Syntlz Enterprise Sdn Bhd & Ors

Issue

There are two issues that can be observed in the case. They are:

1. Whether the patent that has been registered by the defendant infringes the patent of
Automatic Electronic Baby Cradle (Patent No: MY-106710-A) by the plaintiff.
2. Whether the patent registered by the defendant can be invalidated and expunged.

Material Facts

In this case, Lim Choong Huat & Ors (‘’the plaintiffs’’) had been granted a patent for its product
‘Automatic Electronic Baby Cradle’ (Patent No: MY-106710-A) on 31 July 1995, and they also
alleged that the second defendant had also registered the patent in the United Kingdom. They have
suspected that Syntlz Enterprise Sdn Bhd & Ors (‘’the defendants’’) had infringed their patent, a
clear breach of their Intellectual Property Rights. Not only that, the plaintiffs also made an
allegation where the 2nd defendant was a supplier of key materials of the patented invention and
was the main director of the 1st defendant. Moreover, the plaintiffs alleged that the products made
by the defendants were created with techniques of the said patent to which the defendants have
denied this allegation. Here, the defendants claim that they have registered two patents which is:

1. Patent 1: Patent No. MY-114651-A (for a “Structure of a Synchronous Reciprocation

Tracking Device) and
2. Patent 2: Patent No. My114980-A (for an improved structure of A Hammock Type Infant
cradle)

These patents were registered in the UK and Singapore. Next, the defendants fired back at the
plaintiffs, counterclaiming that their patent does not satisfy the conditions of a patent and its
requirements under Section 11, 12, 14, 15, 16, 23, 29A, 30, and 56(1) of the Patents Act 1983.

The defendants argue that their Patent 1 and 2 are registered and that the plaintiffs were scheming
with intent to destroy the defendant and crush their competitions in the market. They argue that
they were fueled by personal intentions to deviously bring down their competition. The defendants
thought that the plaintiffs are:

i) abusing the process of the court

ii) slandering and defaming the defendants and their patented goods and their title

iii) wrongfully interfering to the defendant’s legitimate trade

iv) unlawfully inducing the breach of contract by the defendant’s customers against the
defendants which causes substantial loss and damages and incurred substantial costs in
defending this action.

Grounds of Judgement

First and foremost, the Court investigated the definition of a patent. Patent is defined to mean a
government authority to an individual or organisation, conferring a right or title, especially the
sole right to make or use or sell some invention. the Concise Oxford Dictionary 8th ed. This must
only be seen to be a general definition as it is subject to many qualifications. [see Indian case of
Hindustan Lever v. Godrej Soaps [1997] PTL 756].

(i) Whether the patent that has been registered by the defendant infringes the patent of
Automatic Electronic Baby Cradle (Patent No: MY-106710-A) by the plaintiff.

The reason for granting a patent can be observed by the court from the Book Patents, trade marks,
copyright and industrial designs (Concise college texts) Hardcover – 1986 by T. A Blanco White
where it is desirable in the public interest that industrial techniques should be improved. Patents
registered may not stand the curial scrutiny of the court to be held in invalidating proceedings.

The Court referred to First Currency Choice Pte Ltd v. Main-Line Corporate Holdings Ltd And
Another Appeal [2007] SGCA 50 VK Rajah JA, in delivering the judgment of the court, said that
To prove that an invention is not novel, the patent examiner must find evidence that others have
already done everything claimed in the patent, a quest known as a “prior art” search.

Moving on, from Narayanan (2009), the Court also noted that if the defendant added added an
improvement of a known product, it may be eligible for patent. However, it must satisfy the
stringent tests set out in Section 12, which is the meaning of an ‘invention’, and other sections of
the Act. Narayanann (2009) observes that a competitor is also forced to design around the patent
to produce an alternative to the patented product or process. This encourages the growth of
technology and enables the public to get substitutes for the patented product which will result in
owner of the patent not to overcharge his product.

(ii) Whether the patent registered by the defendant can be invalidated and expunged.

The Court referred to Section 12, where the invalidation can only be done on specific grounds.
Section 12 in almost all cases when litigated cannot be considered in isolation without considering
other section such as 11, 14 etc. There is no ground for the patent to be invalidated on the grounds
of false suggestion, lack of utility, ambiguity or lack of fair basis.

It must be emphasised that a patent is usually granted ex parte and being a monopoly it becomes
important for the patentee to disclose his invention in his patent document in full compliance with
the safeguards provided under PA 1983 and PR 1986. Failing which, it can be in invalidated
pursuant to Section where an aggrieved person can apply this issue to the court.

In the case of General Tire, it was decided that a patent must be considered not new/not novelty if
- (i) what the patentee claims as his invention is the same as the prior art; or (ii) if the prior art
were to be carried out, it would infringe on the patentee’s claim. In both instances, the patentee’s
patent would have been anticipated by prior art.

The Court also referred to Section 58 also defines the meaning of infringement. It also observed
the case of Rodi & Wienenberger AG v. Henry Showell Ltd [1969] 12 RPC 367, the House of
Lords opined that: In considering the claim the court must ascertain what are the essential integers
of the claim; this remains a question of construction and no general principles can be laid down
(see my observations in Van der Lely v. Bamfords [1961] RPC 296 at 313 approved on appeal to
this House).

Judgement

The High Court Malaya, Kuala Lumpur held that the plaintiff’s claims were dismissed and the
defendant’s counterclaim with each party bearing their own costs were also dismissed. The Court
will only observe the patents if the invention is new and industrially applied. It must have novelty
and be the inventor’s own discovery. Under Section 15, the inventive step must not be obvious to
a person having ordinary skill in the art. The Patent will be invalidated if it is anticipated by prior
art and if the inventive step would have been obvious to the skilled person.

Under Section 17, improvements to a product does not deserve a patent protection. The test of
obviousness is stipulated in the Act, a nexus to the novelty test. If the prior invention contains a
clear description or instruction, it lacks novelty and is anticipated.

Other than that, the parties also did not fulfil elements of patents under Section 14 and Section 12.
The plaintiffs thought that if they made an automatic cradle, sales will be better. The defendants
only made use of modern technology and created the same automatic means for economic gain.
No inventive step has been found in this technical advance that made it not obvious to a skilled
person in the art. It does not contain an inventiveness needed to be patented.

An essential integer is the substantive detail in a patent claim. A court will often determine what
the essential integers are during a patent infringement dispute. (https://legalvision.com.au/q-and-
a/what-is-an-essential-integer-for-patents/) The Court held that the infringement tests require one
to consider three factors:

1. determine the essential integers of the plaintiff's patent;

2. once the essential integers are determined, one must then consider whether 'each' and
'every' 'essential' integer is taken by the defendant; and

3. determine whether each of the defendant's integers 'works' the 'same way' as claimed by
the plaintiff in their patent.

Regarding the word ‘’shall’’, the justice of the case did not require both the plaintiff and
defendant’s patends to be invalidated even though Section 56(2) enshrines that the court ‘’shall’’
invalidated. It is not considered mandatory for the court to invalidate their patents if justice
required no interference from the courts. With judicial review, the court can choose not to
invalidate their patents in an invalidation proceeding. Additionally, the plaintiffs of defendants
must be an aggrieved person for this provision to apply, both of which they are not. The Court will
remain fair for both with their discretions.

Thus, plaintiff’s claim and the defendant’s counterclaim were dismissed, while both their patents
still remained valid.
 Comments

Although the case deals with the issue of patent invalidating proceedings, it can be concluded that
registered patents may not be subjected to heavy curial inspection from the court, meaning to say
that the court will have the discretion not to interfere in invalidating an already registered patent
especially in real-life events.

It serves as a justification for patent protection for the defendant. This is because it fosters
inventive activities in Malaysia. The case of Lim Choong Huat v Syntlz Enterprise sets out an
example that the Patent Act permits the granting of a patent to encourage and develop new
technology by granting monopoly for a limited time, without this the owner of the patent can abuse
it by over-charging their products. It is a fair and just for the court to not invalidate both patents,
leaving it just as it is.