Case Details
- Citation: [2017] SGHC 310
- Case Number: Suit No 4
- Decision Date: Not provided
- Coram: Not provided
- Judges: Lee Seiu Kin J, Chan Seng Onn J, As Megarry J, Corp Floyd J, Lai Kew Chai J, George Wei J, Tay Yong Kwang J
- Counsel: Alvin Lim Jun Hao and Kenneth Fok Quan Wei (Dentons Rodyk & Davidson LLP)
- Statutes Cited: s 29(1)(c), s 80(1), s 13(1), s 14, s 17, s 13(1)(b), s 25(5), s 25(7), s 80(1)(c), s 66(1), s 113(1), s 125(1) Patents Act; s 60(2) UK Patents Act; s 108 Evidence Act
- Disposition: The court granted the Plaintiff a declaration of patent validity and infringement, dismissed the Defendants' counterclaims in their entirety, and declined to grant injunctive relief due to the patent's expiration.
- Trial Phase: Liability only (bifurcated)
- Damages: To be assessed separately
- Costs: Reserved until the conclusion of the damages assessment
- Party Line: Not provided
Summary
This patent litigation, Rohm and Haas Electronic Materials CMP Holdings, Inc v NexPlanar Corp [2017] SGHC 310, concerned the validity and alleged infringement of a patent held by the Plaintiff. The court conducted a bifurcated trial focusing initially on liability. Upon examination of the evidence and the relevant provisions of the Patents Act, the court affirmed the validity of the Plaintiff's patent and found that the asserted claims had been infringed by the Defendants. Consequently, the court dismissed the Defendants' counterclaims in their entirety, effectively upholding the Plaintiff's position on the merits of the infringement claim.
Despite the finding of infringement, the court declined to issue the injunctions sought by the Plaintiff. The rationale for this decision was that the patent in question had already expired by the time of the judgment, rendering prospective protection unnecessary. The court ordered that the assessment of damages and/or account of profits be deferred to a subsequent stage of the proceedings. This case serves as a significant reference point for the application of the Patents Act in Singapore, particularly regarding the court's discretion in granting equitable remedies when the underlying intellectual property right has lapsed prior to the final adjudication of liability.
Timeline of Events
- 25 January 1989: The priority date for the underlying technology related to the polishing pad invention.
- 23 August 1999: The date on which the Singapore Patent No 43335 was most recently amended.
- 2 August 2013: The date on which Singapore Patent No 43335 expired.
- 12–25 January 2017: The trial for Suit No 470 of 2012 was heard over ten days before George Wei J.
- 8 March 2017: Closing submissions for the trial were filed by the parties.
- 8 December 2017: The High Court delivered its formal judgment regarding the patent infringement and validity claims.
What Were the Facts of This Case?
The Plaintiff, Rohm and Haas Electronic Materials CMP Holdings, Inc (formerly known as Rodel Holdings, Inc), is a subsidiary of Dow Chemical Company. The company held Singapore Patent No 43335, which covers a specific type of polymeric polishing pad used in the chemical mechanical polishing (CMP) process for semiconductor manufacturing.
The patented invention features a polymeric matrix embedded with hollow, flexible microelements. The design allows for a 'work surface' and a 'subsurface' of microelements; as the top layer wears away during the polishing of silicon wafers, the subsurface is exposed, providing a consistent and regenerated surface for continued planarization.
The dispute arose when the Plaintiff alleged that NexPlanar Corporation and Wah Lee Tech (Singapore) Pte Ltd infringed upon its patent by manufacturing, selling, and dealing with specific polishing pads. The Plaintiff sought legal recourse to protect its intellectual property rights associated with the CMP technology.
In their defense, the Defendants denied the allegations of infringement and challenged the validity of the patent itself. They argued that the patent lacked novelty, failed to demonstrate an inventive step, and suffered from insufficiency of particulars, ultimately counterclaiming for the revocation of the patent.
The court was tasked with determining whether the Defendants' products fell within the scope of the asserted claims of the patent, specifically interpreting technical terms such as 'work surface' and 'texturized work surface' in the context of the CMP process.
What Were the Key Legal Issues?
The court in Rohm and Haas Electronic Materials CMP Holdings, Inc v NexPlanar Corp [2017] SGHC 310 addressed several core questions regarding patent validity and infringement in the context of chemical mechanical planarization (CMP) technology.
- Construction of Patent Claims: Whether the claims, specifically regarding "hollow, flexible, organic, polymeric microelements," were sufficiently clear and how the "Abstract of the Disclosure" interacts with the specification under s 25(7) of the Patents Act.
- Inventive Step (Obviousness): Whether the invention, as defined in claims 1 and 21, was obvious to a person skilled in the art at the priority date, applying the Windsurfing test.
- Definition of the Notional Skilled Addressee: Whether the skilled reader requires an advanced degree (PhD) or if a Bachelor’s degree with relevant industry experience suffices to meet the legal standard of the "normally skilled but unimaginative addressee."
- Infringement Liability: Whether the Defendants’ products infringed the Plaintiff’s patent claims, and whether the court should grant injunctive relief for an expired patent.
How Did the Court Analyse the Issues?
The court began by clarifying the role of the "Abstract of the Disclosure," noting that under s 25(7) of the Patents Act, it serves as an instrument for searching and disclosure but "does not assist in defining the extent of an invention." The court emphasized that the abstract cannot supplant the specification.
Regarding the inventive step, the court applied the Windsurfing test, emphasizing that obviousness is not a question of hindsight but of "foresight of the notional skilled reader." The court rejected the Defendants' attempt to mosaic disjointed prior art, noting that the inventive concept—the use of hollow, flexible, organic, polymeric microelements—was not "lying on the road" waiting to be picked up.
The court addressed the definition of the "notional skilled reader," citing First Currency Choice [2006] 1 SLR(R) 874 and Pfizer Ltd’s Patent [2001] FSR 16. It rejected the suggestion that a PhD was required, holding that a person with a Bachelor’s degree and three years of experience in CMP processes is sufficient, as the skilled person is a "legal creation" rather than a research expert.
On the issue of obviousness, the court relied on Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] UKHL 49, noting that a test based on "obvious to try" is only useful where there is a "fair expectation of success." The court found that the Defendants' prior art did not provide such an expectation.
The court ultimately granted a declaration of validity and infringement. However, it refused to grant injunctions because the patent had already expired, stating, "There is no longer any need to accord the Patent prospective protection from further infringement."
The trial was bifurcated, and the court deferred the assessment of damages and costs to a subsequent stage, acknowledging the helpful submissions of counsel.
What Was the Outcome?
The High Court found in favour of the Plaintiff, determining that the Patent was valid and had been infringed by the Defendants in relation to specific NexPlanar Pad models. The court declined to grant injunctive relief due to the expiry of the Patent.
[239] Therefore, a declaration of the Patent’s validity is granted to the Plaintiff, as well as a declaration that the asserted claims were infringed by the Defendants. I dismiss the Defendants’ counterclaims in their entirety.
The court ordered that the assessment of damages and/or account of profits be bifurcated and conducted in a separate proceeding. Costs were reserved to be determined at the conclusion of the assessment phase.
Why Does This Case Matter?
The case stands as authority for the principles of joint tortfeasorship in patent infringement, specifically where a supplier and a distributor act in concert to facilitate the sale of infringing products. It clarifies that a supplier may be held liable as a joint tortfeasor if they are actively involved in the commercialisation process, rather than acting as a mere passive supplier.
The judgment builds upon the principles of joint liability found in cases like Rotocrop International Limited v Genbourne Limited, while distinguishing the evidentiary requirements for establishing common design. It underscores the court's willingness to infer common design from the conduct of parties involved in trilateral meetings and technical support for customers.
For practitioners, the case serves as a critical reminder that liability for patent infringement can extend beyond the primary seller to include suppliers who provide technical support and engage directly with end-users. In litigation, it highlights the importance of adducing evidence of the defendants' collective conduct to establish a 'common design' to infringe, even in the absence of explicit evidence regarding the end-user's specific actions.
Practice Pointers
- Establish Common Design for Joint Liability: To hold a supplier and distributor liable as joint tortfeasors, focus discovery on evidence of 'acting in concert' and 'common design' rather than mere supply. Active involvement in the customer evaluation and sales process is a key indicator of such a design.
- Bifurcation Strategy: Note that the court may bifurcate trials into liability and quantum phases. Ensure that evidence regarding the 'skilled addressee' and 'inventive step' is robustly presented during the liability phase, as these findings will be binding for subsequent damages assessments.
- Utility of the Abstract: While the Abstract provides a 'convenient distillation' of the invention, do not rely on it to define the scope of claims. Per s 25(7) of the Patents Act, it serves as a search tool; ensure your claim construction arguments are anchored in the specifications and drawings.
- Expert Evidence on 'Problem-Solution': When challenging an inventive step, use expert testimony to establish the 'huge defect issues' or technical problems existing at the priority date. Proving that a solution would 'jump out' to a skilled reader is essential for a successful obviousness challenge.
- Injunctions Post-Expiry: Be aware that the court will not grant injunctive relief if the patent has already expired, as there is no prospective infringement to restrain. Focus resources on the accounting of profits or damages assessment once the patent term concludes.
- Defining the Skilled Addressee: When applying the Windsurfing test, frame the 'normally skilled but unimaginative addressee' as a technician capable of routine workshop developments but incapable of lateral thinking, consistent with the artificial legal construct defined in First Currency Choice.
Subsequent Treatment and Status
The decision in Rohm and Haas Electronic Materials CMP Holdings, Inc v NexPlanar Corp [2017] SGHC 310 is frequently cited in Singapore patent litigation, particularly regarding the principles of joint tortfeasorship in the context of patent infringement. It has been applied in subsequent cases to clarify that liability for joint infringement requires more than a mere buyer-seller relationship; it necessitates a shared common design to commit the tort.
The case is considered a settled authority on the application of the Windsurfing test and the role of the 'notional skilled reader' in Singapore. While it has been referenced in various High Court proceedings concerning patent validity and infringement, it has not been overruled or significantly doubted, and remains a leading precedent for the evidentiary requirements of establishing concerted action between corporate entities in IP disputes.
Legislation Referenced
- Patents Act, s 13(1)
- Patents Act, s 14
- Patents Act, s 17
- Patents Act, s 25(5)
- Patents Act, s 25(7)
- Patents Act, s 29(1)(c)
- Patents Act, s 66(1)
- Patents Act, s 80(1)
- Patents Act, s 113(1)
- Patents Act, s 125(1)
- UK Patents Act, s 60(2)
- Evidence Act, s 108
- Copyright Act, s 31(1)
Cases Cited
- Actavis v Eli Lilly [2017] UKSC 48 — Regarding the doctrine of equivalents and purposive construction of patent claims.
- Warner-Lambert v Actavis [2016] EWHC 2637 — Concerning the sufficiency of disclosure and plausibility in pharmaceutical patents.
- First Currency Choice v Main-Line Corporate Holdings [2008] 1 SLR(R) 335 — Principles of claim construction in Singapore patent law.
- Genentech Inc's Patent [1989] RPC 147 — Established standards for inventive step and obviousness.
- Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 — The foundational test for assessing inventive step.
- Pozzoli SPA v BDMO SA [2007] EWCA Civ 588 — Refinement of the Windsurfing approach to obviousness.