Case Details
- Citation: [2020] SGHC 26
- Court: High Court of the Republic of Singapore
- Date: 7 February 2020
- Case Title: ELEMENT SIX TECHNOLOGIES LIMITED v IIa TECHNOLOGIES PTE. LTD.
- Suit No: Suit No 26 of 2016
- Judge: Valerie Thean J
- Hearing Dates: 19–22, 26–28 March, 2–3, 5 April, 8, 18–19, 22, 24–26, 29–31 July, 1–2, 5–8 August 2019; 7 November 2019
- Plaintiff/Applicant: Element Six Technologies Ltd (UK)
- Defendant/Respondent: IIa Technologies Pte Ltd (Singapore)
- Legal Areas: Patents and Inventions (Validity; Infringement)
- Statutes Referenced: Patents Act (Cap 221, 2005 Rev Ed)
- Patents in Suit: Singapore Patent No 115872 (“SG 872”); Singapore Patent No 110508 (“SG 508”)
- Key Claims Discussed: SG 872 Claim 1 (product claim); SG 872 Claim 62 (process claim); SG 508 Claim 1 (process claim)
- Samples Relied Upon: Sample 2 (“2PCVD303004N”); Sample 3 (“LG10225420”); Sample 4 (“2PCVD505005N”)
- Core Procedural Posture: Plaintiff sued for infringement; defendant counterclaimed for revocation and denied responsibility/infringement
- Judgment Length: 206 pages; 60,605 words
- Result (as stated in the extract): SG 872 held valid; SG 508 held invalid. Samples 2, 3 and 4 originate from the defendant and infringe SG 872 but not SG 508.
Summary
In Element Six Technologies Ltd v IIa Technologies Pte Ltd ([2020] SGHC 26), the High Court considered both the validity and infringement of two Singapore patents relating to synthetic diamonds produced by chemical vapour deposition (“CVD”). The plaintiff, part of the Element Six group, alleged that the defendant’s CVD diamond products infringed Singapore Patent No 115872 (“SG 872”) and Singapore Patent No 110508 (“SG 508”). The defendant counterclaimed for revocation and also disputed responsibility for the relevant diamonds.
The court held that SG 872 was valid and that the three samples relied upon by the plaintiff (Samples 2, 3 and 4) originated from the defendant and infringed SG 872. However, the court found SG 508 to be invalid. The decision therefore provides a detailed treatment of claim construction, novelty and inventiveness (including the interaction between novelty and inventiveness), sufficiency, and the evidential requirements for proving provenance and chain of custody in patent infringement proceedings.
What Were the Facts of This Case?
The plaintiff, Element Six Technologies Ltd, is incorporated in the United Kingdom and specialises in producing synthetic diamond material using CVD techniques for technical applications such as optics, semiconductors and sensors. The defendant, IIa Technologies Pte Ltd, is incorporated in Singapore and operates a diamond growing facility in Singapore. CVD diamond growth involves placing a diamond seed (substrate) into a CVD reactor containing a mixture of gases and bombarding it with atoms to grow a diamond crystal layer by layer.
The dispute centred on two Singapore patents. SG 872 contains both product and process claims. The key product claim is Claim 1, which describes a CVD single crystal diamond material of a specified thickness (at least 0.5mm) having low optical birefringence, which is treated as an indicator of low strain. The claim also specifies that birefringence falls within a defined numerical range (referred to in the judgment as the “SG 872 Range”). SG 872 also includes a process claim (Claim 62) concerning a method of producing the CVD diamond material, including substrate preparation and the deliberate addition of nitrogen to the synthesis process. The nitrogen concentration is selected within a range (300ppb to 5ppm) to reduce strain-generating defects while avoiding deleterious absorptions and crystal quality degradation.
SG 508 is a process claim relating to controlled conversion of a coloured single crystal CVD diamond to another colour through suitable and controlled heat treatment conditions (annealing). The claimed colour outcomes include colours in the pink-green range. The plaintiff’s infringement case for SG 508 therefore depended on showing that the defendant’s diamonds were subjected to the claimed controlled annealing process to achieve the specified colour conversion.
For infringement, the plaintiff relied on three diamond samples purchased between 2014 and 2015, before the suit commenced on 12 January 2016. Sample 2 was an optical grade single crystal CVD diamond plate with product code “2PCVD303004N”, purchased on or around 12 May 2014 by Dr Andrey Jarmola on the plaintiff’s behalf from Microwave Enterprises Ltd (“MWE”), under instructions from Dr Daniel James Twitchen. Sample 3 was a single crystal CVD diamond gemstone with product code “LG10225420”, purchased on or around 27 October 2015 by Dr Simon Lawson on the plaintiff’s behalf from Pure Grown Diamonds Inc (“PGD”). Sample 4 was an optical grade single crystal CVD diamond plate with product code “2PCVD505005N”, purchased on or around October 2015 directly from the defendant in Singapore by Mr Pascal Pierra on the plaintiff’s behalf.
What Were the Key Legal Issues?
The court identified three main issues: (a) the validity of SG 872 and SG 508; (b) whether the defendant was responsible for the samples; and (c) whether the samples infringed SG 872 and SG 508. These issues were intertwined in practice because validity affected the scope of enforceable rights, while infringement depended on both claim interpretation and factual proof that the relevant diamonds fell within the claimed subject matter.
On validity, the court applied the statutory requirements for patentability under s 13(1) of the Patents Act (Cap 221, 2005 Rev Ed): novelty, inventive step (non-obviousness), and industrial applicability. Industrial applicability was not in dispute. The contested questions were therefore primarily novelty and inventiveness, as well as sufficiency (whether the patent specification adequately discloses the invention so that a person skilled in the art can perform it).
On infringement, the court had to determine whether the samples met the technical limitations of the relevant claims. For SG 872, the key focus included whether the diamonds had birefringence within the SG 872 Range and whether the nitrogen-related process features (in Claim 62) were implicated. For SG 508, the court had to consider whether the defendant’s process for controlled colour conversion and annealing fell within the claimed parameters. Additionally, the court had to address evidential challenges concerning provenance and chain of custody, including whether the plaintiff could rely on technical experiments and materials not contained in a notice of experiment.
How Did the Court Analyse the Issues?
Claim construction as the foundation for validity and infringement. The court emphasised that claim construction is integral to assessing both novelty and inventiveness. It reiterated that the claims are the principal determinant of the scope of the monopoly, and that what is not claimed is treated as disclaimed. The court also applied purposive construction, using the description and other parts of the specification as context. This approach is consistent with Singapore appellate authority, including First Currency Choice v Main-Line Corporate Holdings Ltd and Lee Tat Cheng v Maka GPS Technologies Pte Ltd, which the court cited for the governing principles.
Validity of SG 872: novelty, inventiveness, and sufficiency. The court held SG 872 to be valid. In doing so, it undertook a structured analysis of novelty and inventiveness. The judgment’s extract indicates that the court dealt extensively with prior art references and the question whether the claimed product features (including low birefringence and thickness) were disclosed in a single prior art reference or were otherwise anticipated. The court also addressed how the defendant approached novelty, including whether the prior art disclosed a “distinct type” of diamond and whether alleged correlations between measurable properties (such as dislocation density, breakdown electric field, Raman full width at half maximum, and charge collection efficiency) were sufficient to anticipate the claimed birefringence range.
On inventiveness, the court addressed the risk of conflating novelty and inventiveness inquiries. The judgment references the “Windsurfing approach”, a well-known framework for assessing obviousness/non-obviousness in patent law. The court considered whether the claimed improvements were obvious in light of the prior art, including combinations of documents and whether the claimed step involved a real inventive contribution. The extract also suggests that the court considered factors such as improving substrate quality and, in some contexts, commercial success, as part of the overall inventiveness assessment.
Sufficiency and technical enablement. The court also analysed sufficiency in relation to SG 872. The extract indicates that sufficiency issues included whether a parameter (referred to as “delta”) did not exceed a specified threshold (delta not exceeding π/2), and whether other technical features were consistent with the disclosure and the evidence. The court considered expert evidence on whether dislocations spread outward as the diamond grows thicker, whether one expert contradicted another, and whether the direction the sample is cut was material. The court’s approach reflects a careful evaluation of whether the patent specification teaches the skilled person how to achieve the claimed low-birefringence diamond material and the claimed process outcomes.
Validity of SG 508: failure of validity. While the extract does not provide the full reasoning for SG 508, it states the court’s conclusion that SG 508 is not valid. The judgment’s structure indicates that the court addressed claim construction for SG 508, then novelty and inventiveness, and sufficiency. The extract shows that prior art documents such as WO 406, EP 482, US 430, and Schmetzer were relevant to the novelty and inventiveness analysis, and that combinations of prior art were considered. The court ultimately found that SG 508 did not meet the patentability requirements.
Infringement: provenance, chain of custody, and technical proof. For infringement of SG 872, the court had to be satisfied that the samples were indeed connected to the defendant’s production. The judgment therefore devoted substantial attention to provenance and chain of custody. The extract indicates that the court considered contemporaneous business records, the relationship between the defendant and an entity described as “MWE”, the dimensions of the diamond plates, and the defendant’s decision not to inspect and examine the samples. It also addressed the chain of custody through fingerprinting techniques, including DiamondView images and cross-polar images, and the weight and dimensions of the samples.
The court evaluated the veracity of the fingerprints and drew conclusions on Samples 2 and 4, while also considering testing by “Warwick and LZH” for Sample 3. It further addressed traceability system issues, including alleged tampering of evidence, discrepancies in delivery/dispatch documentation (“DCLs”), and the timing of screenshots on the plaintiff’s internal drive. These evidential matters were crucial because infringement in patent cases often turns on whether the accused product is the product tested and analysed in court.
Admissibility and reliance on experiments. The extract also points to preliminary issues regarding admissibility of “Technical Notes” and whether the plaintiff could rely on experiments not contained in a notice of experiment. The court also considered the defendant’s decision not to conduct experiments or request repeat experiments. This indicates that the court’s infringement analysis was not purely technical; it also involved procedural fairness and evidential reliability.
Infringement findings for SG 872 and SG 508. The court found that Samples 2, 3 and 4 infringed Claim 1 of SG 872. It also addressed infringement of Claim 62 of SG 872, including the disclosure of a confidential process and the range of nitrogen used in that process (between 300ppb and 500ppm). For SG 508, the court concluded that the samples did not infringe. The judgment’s structure indicates that it considered infringement of SG 508 in relation to substrate and plasma etching and the controlled conversion/annealing process, but the final outcome was non-infringement.
What Was the Outcome?
The court held that SG 872 was valid and enforceable. It further held that Samples 2, 3 and 4 originated from the defendant and infringed SG 872 (including Claim 1, and on the extract, also Claim 62). In practical terms, this meant that the defendant’s CVD diamond products, as represented by the samples, fell within the scope of the patent monopoly for the low-birefringence CVD diamond material and the nitrogen-influenced process features.
Conversely, the court held that SG 508 was not valid. Even though the plaintiff alleged infringement of SG 508, the court found no infringement on the facts and, in any event, the patent’s invalidity meant that the plaintiff could not rely on SG 508 for enforceable rights. The overall result therefore favoured the plaintiff on SG 872 but defeated the plaintiff’s SG 508 claims.
Why Does This Case Matter?
This decision is significant for practitioners because it demonstrates how Singapore courts approach the full lifecycle of patent disputes: claim construction, validity (novelty, inventiveness, sufficiency), and infringement (including evidential proof of provenance). The judgment’s detailed treatment of claim construction reinforces the centrality of the claims as the “principal determinant” of scope, while also showing how context from the specification can influence interpretation.
From a validity perspective, the case illustrates the court’s careful separation of novelty and inventiveness inquiries. It also shows that arguments based on correlations between technical properties and claimed ranges will be scrutinised for whether they amount to true disclosure/anticipation of the claimed subject matter, rather than merely suggesting that the skilled person might infer a relationship. For sufficiency, the court’s engagement with expert evidence underscores that enablement and technical consistency are assessed in a concrete, evidence-driven manner.
From an infringement perspective, the provenance and chain of custody analysis is particularly instructive. The court’s willingness to examine business records, relationships between entities, and forensic-style fingerprinting evidence (including DiamondView and cross-polar images) highlights the importance of maintaining reliable evidence trails when samples are purchased from third parties. For defendants, the case also underscores the strategic importance of procedural choices—such as whether to inspect samples, conduct confirmatory experiments, or request repeats—because these can affect how the court evaluates evidential gaps.
Legislation Referenced
- Patents Act (Cap 221, 2005 Rev Ed), in particular s 13(1) (novelty, inventive step, industrial applicability)
Cases Cited
- [2000] SGHC 53
- [2020] SGHC 26
- Mühlbauer AG v Manufacturing Integration Technology Ltd [2010] 2 SLR 724
- First Currency Choice v Main-Line Corporate Holdings Ltd [2008] 1 SLR(R) 335
- Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] 1 SLR 856
Source Documents
This article analyses [2020] SGHC 26 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.