Ship's Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd and others and another suit

Case Details

• Citation: [2015] SGHC 159
• Court: High Court of the Republic of Singapore
• Decision Date: 23 June 2015
• Coram: Lee Seiu Kin J
• Case Number: Suit No 315 of 2010; Suit No 738 of 2011; Summons No 2458 of 2013; Summons No 2455 of 2013
• Claimants / Plaintiffs: Ship's Equipment Centre Bremen GmbH
• Respondent / Defendant: Fuji Trading (Singapore) Pte Ltd and others (S 315/2010); Moby Dick Supplies Pte Ltd and ISS Equipment Pte Ltd (S 738/2011)
• Counsel for Claimants: Low Chai Chong, Lee Ai Ming, Alvin Lim and Vernon Chua (Rodyk & Davidson LLP)
• Counsel for Respondent: Kwek Yiu Wing Kevin and Tan Yiting Gina (Legal Solutions LLC) for the first defendant in S 315/2010
• Practice Areas: Patents and Inventions; Amendment of Patent Specification

Summary

In Ship's Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd and others and another suit [2015] SGHC 159, the High Court of Singapore addressed a critical application by a patent proprietor to amend its patent specifications mid-litigation. The Plaintiff, Ship's Equipment Centre Bremen GmbH ("SEC Bremen"), sought to amend the claims of Singapore Patent SG110370 (the "370 Patent") following the commencement of two infringement suits. These proposed amendments were intended to align the Singapore patent with amendments previously allowed by the Opposition Division of the European Patent Office ("EPO") regarding a corresponding European patent. The dispute centered on container coupling devices, specifically "twistlocks" used to secure shipping containers on vessels.

The judgment is a significant exploration of the limits of the court’s discretion under s 83(1) of the Patents Act (Cap 221, 2005 Rev Ed). The court was tasked with determining whether the proposed amendments complied with the strict prohibitions against disclosing "additional matter" under s 84(3)(a) and extending the scope of protection under s 84(3)(b). Furthermore, the court scrutinized whether the amendments met the requirements of clarity and conciseness under s 25(5). Beyond these technical hurdles, the case turned on the equitable exercise of judicial discretion, particularly regarding the timing of the application and the conduct of the patentee.

Lee Seiu Kin J ultimately dismissed the applications to amend. The court held that several of the proposed amendments failed the substantive requirements of the Patents Act by introducing features not clearly and unambiguously disclosed in the original specification. Crucially, the court found that even if the technical requirements had been met, it would have exercised its discretion to refuse the amendments due to the Plaintiff’s "undue delay" in seeking the changes and an attempt to maintain an unfairly broad monopoly while aware of potential invalidity. This decision reinforces the principle that Singapore courts will not blindly follow EPO outcomes and will strictly police the conduct of patentees who seek to "mend their hand" late in the day.

The doctrinal contribution of this case lies in its detailed application of the Bonzel test within the Singapore context and its robust adoption of the SKF Laboratories guidelines for the exercise of discretion. It serves as a stern warning to practitioners that strategic delays in amending patents—especially while asserting those patents in infringement proceedings—can prove fatal to the validity of the patent as a whole.

Timeline of Events

1. 22 April 2003: The Plaintiff filed the PCT Application (PCT/EP2003/004162) which eventually led to the grant of the 370 Patent in Singapore.
2. 5 May 2010: The Plaintiff commenced Suit No 315 of 2010 ("S 315/2010") against Fuji Trading (Singapore) Pte Ltd for patent infringement.
3. 10 November 2010: The Opposition Division of the EPO allowed amendments to the corresponding European Patent (EP 1534612 B1).
4. 26 November 2010: The Plaintiff amended its Statement of Claim in S 315/2010 to join Fuji Transport Systems Co Ltd and Taiyo Seiki Iron Works Co Ltd as defendants.
5. 19 October 2011: The Plaintiff commenced Suit No 738 of 2011 ("S 738/2011") against Moby Dick Supplies Pte Ltd and ISS Equipment Pte Ltd.
6. 18 December 2012: The Plaintiff gave notice to the Registrar of Patents of its intention to amend the 370 Patent in the context of S 315/2010.
7. 28 December 2012: The Defendants in S 315/2010 filed a notice of opposition to the proposed amendments.
8. 3 January 2013: The Plaintiff gave notice to the Registrar of its intention to amend the 370 Patent in the context of S 738/2011.
9. 25 January 2013: The Defendants in S 738/2011 filed a notice of opposition to the proposed amendments.
10. 10 May 2013: The Plaintiff filed Summons No 2458 of 2013 and Summons No 2455 of 2013 seeking leave to amend the 370 Patent.
11. 23 June 2015: The High Court delivered its judgment dismissing the applications to amend.

What Were the Facts of This Case?

The Plaintiff, SEC Bremen, is a German company specializing in maritime equipment. It is the registered proprietor of Singapore Patent SG110370 (the "370 Patent"), which was granted on 31 August 2005. The 370 Patent, titled "Coupling piece for freight containers," relates to a semi-automatic twistlock. These devices are essential in the shipping industry for securing containers to each other or to the deck of a ship. The specific invention claimed to improve upon existing twistlocks by providing a mechanism that allowed for easier engagement and disengagement with the corner fittings of containers, particularly during the loading and unloading process where containers might be slightly misaligned.

The 370 Patent was derived from a PCT application filed on 22 April 2003. A parallel European patent (EP 1534612 B1) was also obtained. In 2010 and 2011, the Plaintiff initiated two separate suits in the Singapore High Court alleging infringement of the 370 Patent (and another patent, SG129978, which was not the primary subject of the amendment application). In S 315/2010, the Plaintiff sued Fuji Trading (Singapore) Pte Ltd and later joined Fuji Transport Systems Co Ltd and Taiyo Seiki Iron Works Co Ltd. In S 738/2011, the Plaintiff sued Moby Dick Supplies Pte Ltd and ISS Equipment Pte Ltd. The Defendants in both suits denied infringement and counterclaimed for the revocation of the patents on the grounds of lack of novelty and lack of inventive step.

While the Singapore litigation was ongoing, the corresponding European patent was subject to opposition proceedings before the EPO. On 10 November 2010, the EPO Opposition Division allowed amendments to the European patent claims to overcome prior art objections. Despite this development in Europe, the Plaintiff continued to prosecute its Singapore suits based on the original, broader claims of the 370 Patent for over two years. It was only in late 2012 and early 2013 that the Plaintiff finally moved to amend the Singapore 370 Patent to "correspond to the allowed claims" of the European patent.

The "Proposed Amendments" were extensive. They sought to introduce several specific technical limitations into Claim 1 and other dependent claims. These included:

• The requirement that the locking catch be "arranged laterally" on the coupling projection.
• The addition of a "sloping shoulder" on the top side of the locking catch.
• Specific dimensional constraints, such as the length of the coupling projection being "slightly shorter" than the length of the elongated hole in the corner fitting, and the maximum width of the locking catch being "slightly less" than the width of the elongated hole.
• A functional description of the coupling piece shifting laterally to disengage when the upper container is lifted.

The Defendants opposed these amendments on multiple fronts. Substantively, they argued that the terms "sloping shoulder" and "arranged laterally" were not found in the original specification and thus constituted "additional matter." They also contended that the use of relative terms like "slightly shorter" and "slightly less" rendered the claims unclear and lacked support in the description. Procedurally, the Defendants argued that the Plaintiff had been guilty of "undue delay" by waiting from November 2010 to May 2013 to formalize the amendment application in court, all while asserting the original (and likely invalid) claims against the Defendants. They further alleged that the Plaintiff had acted with "lack of good faith" by attempting to maintain a broad monopoly for as long as possible.

The court was presented with expert evidence from both sides. The Defendants relied on Erik Elof Mellberg, while the Plaintiff relied on Johan Marinus Huisman. Their testimony focused on how a "person skilled in the art" would interpret the original specification and whether the proposed amendments could be "directly and unambiguously" derived from the initial disclosure.

What Were the Key Legal Issues?

The resolution of the Summonses required the court to address four primary legal issues, framed by the requirements of the Patents Act and the court's inherent discretionary powers:

• Issue 1: Disclosure of Additional Matter (s 84(3)(a)): Did the Proposed Amendments disclose matter which extended beyond that disclosed in the application for the patent as filed? This involved the application of the Bonzel test to determine if the new features (e.g., "sloping shoulder") were "clearly and unambiguously" disclosed in the original text.
• Issue 2: Extension of Protection (s 84(3)(b)): Did the Proposed Amendments extend the protection conferred by the patent? The court had to ensure that while narrowing the claims to avoid prior art, the Plaintiff did not inadvertently or strategically broaden other aspects of the monopoly.
• Issue 3: Clarity, Conciseness, and Support (s 25(5)(b) and (c)): Were the amended claims clear, concise, and supported by the description? Specifically, did the use of relative terms like "slightly shorter" meet the standard of precision required for a patent claim?
• Issue 4: Exercise of Judicial Discretion (s 83(1)): Even if the statutory requirements were met, should the court exercise its discretion to refuse the amendments? This required an analysis of the SKF Laboratories factors, including:
  • Whether the patentee had made a full disclosure of all relevant facts.
  • Whether there was "undue delay" in seeking the amendment.
  • Whether the patentee sought to obtain an "unfair advantage" by maintaining broad claims known to be invalid.

How Did the Court Analyse the Issues?

The Substantive Requirements: Section 84 and the Bonzel Test

The court began its analysis by emphasizing that the burden of proof lies on the patentee to show that the proposed amendments are permissible. Lee Seiu Kin J applied the well-established Bonzel test to determine the issue of "additional matter" under s 84(3)(a). As noted at [22], the test involves:

(a) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the newly published prior document; (b) To do the same in respect of the patent as granted; (c) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by way of addition or omission.

The court highlighted that the relevant comparison is between the application as filed and the specification as amended. The standard is one of "strictness"—the amendment must be "directly and unambiguously" derivable from the original disclosure. The court rejected a "purposive construction" in the context of s 84(3), noting that while construction of claims for infringement is purposive, the test for additional matter is more literal and rigorous to prevent patentees from improving their position after the priority date.

The "Sloping Shoulder" and "Arranged Laterally"

The Plaintiff sought to add a "sloping shoulder" to the locking catch. However, the court found that this specific phrase did not appear in the original specification. While the drawings showed a curved or slanted surface, the court held that a "sloping shoulder" was a specific technical term that was not clearly disclosed. Similarly, the requirement that the locking catch be "arranged laterally" was found to be problematic. The court observed that the original disclosure described the catch as being on the "longitudinal side," and "laterally" could imply a different orientation or a specific offset not supported by the original text. At [52], the court noted that the expert evidence was conflicting, but ultimately the court must decide the issue of construction itself.

Dimensional Constraints: "Slightly Shorter" and "Slightly Less"

The court was particularly critical of the Plaintiff's attempt to introduce the terms "slightly shorter" and "slightly less" into the claims. Under s 25(5)(b) of the Patents Act, claims must be clear and concise. Lee Seiu Kin J agreed with the observations in Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GmbH [2014] RPC 6 that the requirement for clarity is "to ensure that the public is able to determine the boundary of the monopoly."

The court found that "slightly" is a relative term that lacks a precise technical meaning in the context of the 370 Patent. There was no guidance in the description as to what percentage or absolute measurement would constitute "slightly." Consequently, the court held that these amendments failed for lack of clarity and were not supported by the description, as the original application did not quantify these relationships.

Extension of Protection: Section 84(3)(b)

The court also found that some amendments violated s 84(3)(b). Specifically, in some proposed claims, the Plaintiff had omitted certain features that were present in the original independent claims. By removing these limitations, the Plaintiff was effectively broadening the scope of the patent in those specific areas, even if the overall amendment was intended to narrow the patent to avoid prior art. The court held that any extension of protection, however small or incidental, is prohibited post-grant.

The Independent Role of the Singapore Court

A significant portion of the Plaintiff's argument rested on the fact that the EPO had allowed these exact amendments. The court firmly rejected the notion that it was bound by the EPO's decision. Citing Main-Line Corporate Holdings Ltd v DBS Bank Ltd [2012] 4 SLR 147 at [52], the court stated at [17]:

... not being party to the European Patent Convention (“EPC”), our courts, unlike the English courts, are not bound to give consideration to EPO decisions. At best, the reasons of the EPO for coming to a particular conclusion may only be said to be of persuasive value to our courts.

The court noted that the EPO's standards for "clarity" and "additional matter" might differ in application, and the Singapore court must apply the Patents Act independently. The fact that the EPO allowed the amendments did not absolve the Plaintiff from meeting the Singapore statutory requirements.

The Exercise of Discretion: Undue Delay and Unfair Advantage

Perhaps the most critical part of the judgment for practitioners is the court's analysis of judicial discretion under s 83(1). The court adopted the guidelines from the English case of Smith Kline and French Laboratories Limited v Evans Medical Limited [1989] FSR 561 ("SKF Laboratories").

Undue Delay

The court found that the Plaintiff had been aware of the need to amend since at least November 2010, when the EPO Opposition Division gave its decision. However, the Plaintiff did not file the summonses to amend in the Singapore High Court until May 2013—a delay of approximately 30 months. The Plaintiff argued that it was waiting for the final outcome of the EPO proceedings (including potential appeals). The court rejected this excuse, holding that once a patentee recognizes that its claims are likely invalid or in need of amendment, it must act with reasonable celerity, especially if it is concurrently suing third parties for infringement.

Unfair Advantage

The court found that the Plaintiff had sought to obtain an "unfair advantage" by maintaining the broad, unamended claims in the Singapore litigation for over two years after the EPO decision. By doing so, the Plaintiff kept the "threat" of the broader claims hanging over the Defendants and the industry. The court noted that the purpose of the discretion is to "protect the public against abuse of monopoly" (citing Kimberly-Clark Worldwide Inc v Procter & Gamble Limited [2000] FSR 235). At [142], the court concluded:

The Plaintiff had known of the prior art and the need to amend the 370 Patent since November 2010. Yet it chose to maintain the 370 Patent in its unamended form for more than two years... This is a classic case of a patentee seeking to have its cake and eat it.

The court held that the Plaintiff’s conduct in "covetously" maintaining broad claims while aware of their vulnerability was a heavy factor against granting the amendment.

What Was the Outcome?

The High Court dismissed the Plaintiff’s applications to amend the 370 Patent in both Suit No 315 of 2010 and Suit No 738 of 2011. The court's order was concise and definitive:

"I dismiss the plaintiff’s applications to amend the patents." (at [2])

The consequences of this dismissal were severe for the Plaintiff. Because the amendments were refused, the 370 Patent remained in its original form for the remainder of the litigation. Given that the Plaintiff itself had effectively admitted (by seeking the amendments) that the original claims were likely invalid in light of the prior art cited in the EPO proceedings, the refusal to amend almost certainly doomed the Plaintiff's infringement claims and paved the way for the Defendants' counterclaims for revocation to succeed.

Regarding costs, although the judgment does not detail a specific quantum, the standard rule that costs follow the event would apply, meaning the Plaintiff would be liable for the Defendants' costs of the amendment applications. The court's refusal to exercise discretion was a direct result of the Plaintiff's tactical choices, reinforcing that the "price" of undue delay in patent litigation is the loss of the opportunity to save a flawed patent.

Why Does This Case Matter?

This case is a landmark for Singapore patent practice, particularly regarding the intersection of international patent prosecution and domestic litigation. It establishes several critical precedents:

1. Singapore's Independent Patent Jurisprudence: The judgment reaffirms that Singapore is not a "rubber stamp" for EPO decisions. While EPO outcomes are persuasive, the Singapore High Court will conduct its own rigorous analysis of the Patents Act. Practitioners cannot assume that an amendment allowed in Munich or London will be automatically accepted in Singapore. This is especially true for "clarity" and "additional matter" objections, where the Singapore court may apply a stricter literal standard than the EPO's "essentiality" or "novelty" based approaches.

2. The Rigor of the Bonzel Test: The case provides a masterclass in the application of the Bonzel test. It clarifies that "implicit disclosure" does not mean "what a skilled person would think is a good idea" or "what is shown in a drawing but not described." It means what is necessarily and unambiguously present in the original disclosure. The rejection of the "sloping shoulder" and "arranged laterally" features shows that the court will not allow patentees to use synonyms or technical elaborations that were not in the original text.

3. The Death of "Slightly": The court's rejection of relative terms like "slightly shorter" is a significant warning for claim drafters. It establishes that if a claim relies on a dimensional relationship to distinguish itself from prior art, that relationship must be defined with precision. Vague qualifiers will fail the clarity test under s 25(5), rendering the amendment unallowable.

4. The Duty of Celerity: This is perhaps the most impactful aspect of the case for litigators. The court has made it clear that the "wait and see" approach to EPO appeals is highly risky if there is concurrent Singapore litigation. A patentee who knows their claim is likely invalid has a duty to the public and the court to seek an amendment immediately. A delay of two years is "undue" and can lead to the loss of the patent, even if the amendment is technically sound. This aligns Singapore with a "pro-public" and "pro-competitor" stance, preventing patentees from using "zombie" claims to stifle competition.

5. Protection Against Abuse of Monopoly: The judgment places the "public interest" at the heart of the court's discretion. By refusing the amendment due to the Plaintiff's attempt to gain an "unfair advantage," the court signaled that it will not tolerate tactical maneuvering that exploits the slow pace of litigation to maintain an unjustified monopoly. This serves as a powerful deterrent against "covetous" claiming.

In the broader landscape of Singapore law, SEC Bremen sits alongside cases like Mühlbauer AG v Manufacturing Integration Technology Ltd [2010] 2 SLR 724, emphasizing that patent law is a balance between rewarding inventors and protecting the public from unjustified monopolies. It reinforces the High Court's role as a vigilant gatekeeper of the patent register.

Practice Pointers

• Do Not Wait for EPO Finality: If a patent is being litigated in Singapore and the patentee becomes aware of prior art or EPO findings that necessitate amendment, file the Singapore amendment application immediately. Waiting for the outcome of EPO appeals (which can take years) will likely be deemed "undue delay."
• Strict Adherence to Original Language: When drafting amendments, stick as closely as possible to the verbatim language of the original specification. Avoid introducing new technical terms (like "sloping shoulder") even if they seem to describe what is in the drawings, unless they are explicitly named in the text.
• Avoid Relative Terms: Never use terms like "slightly," "substantially," or "approximately" in an amendment to define a critical distinction over prior art unless the specification provides a clear, objective metric for those terms.
• Full Disclosure is Mandatory: When applying for leave to amend under s 83, ensure the supporting affidavit makes a "full and frank disclosure" of all reasons for the amendment and the timing of the discovery of the need to amend. Any perceived "hiding" of facts will trigger the court's discretion to refuse.
• Check for Extension of Protection: Carefully review amended independent claims to ensure no features from the original claim have been omitted. Even if the amendment adds new limitations, the removal of an old limitation can constitute an "extension of protection" under s 84(3)(b).
• Independent Expert Evidence: Ensure that expert witnesses addressing the Bonzel test focus strictly on what the "skilled addressee" would have understood at the date of filing, not with the benefit of hindsight or knowledge of the infringing product.

Subsequent Treatment

The decision in SEC Bremen has become a standard citation in Singapore for the principles governing the amendment of patent specifications. It is frequently cited for its adoption of the SKF Laboratories guidelines and its strict application of the Bonzel test. Later cases have followed its lead in emphasizing that the court's discretion is a powerful tool to prevent the abuse of patent monopolies through tactical delays. The case is often contrasted with instances where amendments were allowed because the patentee acted promptly upon discovering the invalidating prior art.

Legislation Referenced

• Patents Act (Cap 221, 2005 Rev Ed), ss 25(5)(b), 25(5)(c), 83, 83(1), 84, 84(3), 84(3)(a), 84(3)(b), 113(1)
• Rules of Court (Cap 332, R 5, 2006 Rev Ed)
• Patents Act 1977 (UK)
• Patents Act 2004

Cases Cited

Applied / Followed

• Main-Line Corporate Holdings Ltd v DBS Bank Ltd [2012] 4 SLR 147
• Bonzel (T) v Intervention Limited (No 3) [1991] RPC 553
• Smith Kline and French Laboratories Limited v Evans Medical Limited [1989] FSR 561
• FE Global Electronics Pte Ltd and others v Trek Technology (Singapore) Pte Ltd and another appeal [2006] 1 SLR(R) 874

Considered / Referred to

• Contour Optik Inc and others v Pearl’s Optical Co Pte Ltd and another [2002] SGHC 238
• Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal [2008] 1 SLR(R) 335
• Martek Biosciences Corp v Cargill International Trading Pte Ltd [2011] 4 SLR 429
• Novartis AG and another v Ranbaxy (Malaysia) Sdn Bhd [2013] 2 SLR 117
• Fuji Trading (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and others and other suits [2005] 3 SLR(R) 389
• Bean Innovations Pte Ltd v Flexon (Pte) Ltd [2001] 2 SLR(R) 116
• Admiralty Pile Technology (Luxembourg) SA and others v Peck Brothers Construction Pte Ltd [1997] 3 SLR(R) 981
• Ng Kok Cheng v Chua Say Tiong [2001] 2 SLR(R) 326
• Mühlbauer AG v Manufacturing Integration Technology Ltd [2010] 2 SLR 724
• European Central Bank v Document Security Systems Incorporated [2007] EWHC 600
• Siegfried Demel v Jefferson [1999] FSR 204
• Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GmbH [2014] RPC 6
• Catnic Components Limited and another v Hill and Smith Limited [1982] RPC 183
• Merck & Co Inc v Generics (UK) Ltd [2004] RPC 31
• Rosedale Associated Manufacturers Ld v Carlton Tyre Saving Coy Ld [1960] RPC 59
• Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9
• Virgin v Premium Aircraft Interiors [2010] RPC 8
• B & R Relays Ltd’s Application [1985] RPC 1
• Raychem Ltd’s Application [1986] RPC 547
• Strix Ltd v Otter Controls Ltd [1995] RPC 607
• Matbro Limited v Michigan (Great Britain) Limited [1973] RPC 823
• Instance v CCL Label Inc [2002] FSR 27
• Autoliv Development AB’s Patent [1988] RPC 425
• Kimberly-Clark Worldwide Inc v Procter & Gamble Limited and another [2000] FSR 235
• Zipher Ltd v Markem Systems Ltd [2009] FSR 1
• Electric & Musical Industries Ld v Lissen Ld (1938) 56 RPC 23

Source Documents

• Original Judgment PDF (CDN)
• eLitigation Case Link