Case Details
- Citation: [2007] SGCA 52
- Case Number: CA 19/2007
- Date of Decision: 16 November 2007
- Court: Court of Appeal of the Republic of Singapore
- Coram: Andrew Phang Boon Leong JA; V K Rajah JA
- Plaintiff/Applicant: Seiko Epson Corporation
- Defendant/Respondent: Sepoms Technology Pte Ltd and Another (JAL Technology (S) Pte Ltd)
- Legal Areas: Patents and Inventions — Defence; Patents and Inventions — Infringement; Words and Phrases — “Defence”
- Key Statutory Provision: s 69(1) of the Patents Act (Cap 221, 2005 Rev Ed) (“Restrictions on relief for infringement”)
- Judicial Outcome: Appeal dismissed with costs
- Counsel for Appellant: Kang Choon Hwee Alban, Koh Chia Ling and Arthur Yap (Alban Tay Mahtani & de Silva)
- Counsel for Respondents: Yeong Zee Kin and Lee So Kang (Rajah & Tann)
- Relevant Prior Decision (High Court): Seiko Epson Corp v Sepoms Technology Pte Ltd [2007] 3 SLR 225 (“GD”)
- Patent at Issue: Singapore Patent No SG 46602 (“the Patent”)
- Procedural History (high level): Consent Judgment entered after infringement and validity were declared; dispute later arose over the accounting period for profits
Summary
Seiko Epson Corporation v Sepoms Technology Pte Ltd and Another [2007] SGCA 52 concerned the scope and timing of the “defence of innocent infringement” under s 69(1) of Singapore’s Patents Act. The Court of Appeal addressed whether s 69(1) operates as a substantive defence to liability for patent infringement, or whether it is confined to restricting the relief that may be awarded once infringement has been established.
The Court of Appeal held that, on a true interpretation, s 69(1) is not a defence to liability. Instead, it restricts the relief (in particular, damages and an account of profits) that may be ordered against a defendant who, at the date of infringement, was not aware and had no reasonable grounds for supposing that the patent existed. As a consequence, the respondents were not barred by the doctrine of res judicata from relying on s 69(1) at the account of profits stage, even though liability had been declared in a consent judgment.
What Were the Facts of This Case?
The appellant, Seiko Epson Corporation, is a Japanese company engaged in the development, manufacture and sale of electronic consumer goods, including Epson computer printers and printer cartridges. It was, at all material times, the registered proprietor of Singapore Patent No SG 46602. The patent related to technology used in printer cartridges, and the appellant alleged that the respondents’ products infringed the patent.
The respondents, Sepoms Technology Pte Ltd and JAL Technology (S) Pte Ltd, are Singapore-incorporated companies. Their business involved developing, manufacturing and selling compatible and refillable printer cartridges for, among others, Epson printers. The appellant commenced proceedings on 5 October 2005 seeking, among other relief, declarations of infringement and an account of profits derived by the respondents from the alleged infringement under ss 67(1)(d) and 67(1)(e) of the Singapore Act.
Initially, the respondents denied infringement and advanced multiple grounds in their defence and counterclaim. They also pleaded that, even if infringement were established, s 69(1) provided a protection from claims for damages or an account of profits because they were allegedly not aware of the patent and had no reasonable grounds for supposing that it existed at the relevant time. The respondents’ position therefore engaged both the existence of infringement and the availability of monetary relief.
After interlocutory skirmishes, including an unsuccessful attempt to obtain a preliminary hearing on acquiescence, the parties ultimately consented to judgment. On 2 August 2006, a consent judgment was entered before the High Court. It declared the patent valid and infringed by the respondents, restrained them from dealing with certain cartridges bearing the “SEPOMS” trade mark, and ordered an account of profits. The consent judgment also included interest on the accounted sum, delivery up or destruction of infringing articles, and costs. Importantly, the consent judgment left “liberty to apply” to the parties.
In compliance with the consent judgment, the respondents filed an account of profits for the period from 1 October 2005 to 31 July 2006. In an affidavit of evidence-in-chief, a director deposed that the respondents first acquired knowledge of the patent on 7 October 2005 when they were served with the appellant’s statement of claim. Before that date, they claimed they had not been aware of the patent’s existence or that they were infringing it.
The appellant objected to the account on the basis that it did not cover the entire period of infringement. The appellant’s position was that infringement should be accounted from 20 February 1998, the date of publication of the patent. The appellant also objected to the relevance of the evidence deposed in support of the respondents’ position. The dispute then crystallised into an application for further directions: on 21 November 2006, the appellant sought an order requiring the respondents to file a further account for the period from 20 February 1998 to 30 September 2005.
The respondents resisted the application by relying on s 69(1), arguing that it allowed a restriction of the accounting period. The High Court assistant registrar rejected the appellant’s application, and the High Court judge upheld that decision. The appellant appealed to the Court of Appeal, raising issues of statutory interpretation and the effect of the consent judgment on the ability to rely on s 69(1) at the profits stage.
What Were the Key Legal Issues?
The appeal raised two principal legal issues. First, the Court had to determine whether the “defence of innocent infringement” in s 69(1) operates as a defence to liability for patent infringement, or whether it merely restricts the relief that may be awarded. This required careful attention to the statutory language and the conceptual meaning of “defence” in the patent context.
Second, assuming s 69(1) could be invoked to affect liability or relief, the Court had to consider whether the respondents were estopped from raising s 69(1) at the account of profits hearing because the consent judgment made the issue of liability res judicata. In other words, the Court needed to decide whether the consent judgment foreclosed the respondents from relying on s 69(1) later in the proceedings.
Although the appellant framed the dispute as one about the “accounting period” for profits, the deeper question was doctrinal: whether s 69(1) is a substantive shield against infringement liability, or a remedial limitation that can be assessed after liability has been established.
How Did the Court Analyse the Issues?
The Court of Appeal began by identifying that the decisive issue was the proper interpretation of s 69(1). The Court approached the matter by exploring the “nuances” behind the concept of a “defence to liability” in patent infringement. The Court noted that the parties had not fully analysed the concept of “defence to liability” and that a clear understanding of the term “defence” and its relationship to “liability” was necessary to resolve the statutory interpretation question.
In doing so, the Court examined the theoretical meaning of “defence” in civil litigation. It drew on general legal definitions indicating that a defence may take different forms: it may deny the plaintiff’s claim, or it may confess and avoid by alleging facts that justify or excuse the defendant, or it may raise a point of law that even if the facts are established, they do not disclose a good cause of action. The Court’s point was that “defence” is not a single, monolithic concept; it can operate at different stages and in different senses.
Crucially, the Court emphasised that even if s 69(1) were not construed as a defence to liability, that would not necessarily mean it could not function as a defence in relation to relief. In patent infringement proceedings, it is possible for a defendant to be found liable for infringement yet still be protected from certain remedies if statutory conditions are satisfied. The Court therefore treated the question as one about the statutory allocation of consequences: whether s 69(1) affects the existence of liability or the availability of damages and an account of profits.
Turning to the statutory text, the Court focused on the heading and the operative language of s 69(1): “Restrictions on relief for infringement”. The provision states that damages shall not be awarded and no order shall be made for an account of profits against a defendant who proves that, at the date of infringement, the defendant was not aware and had no reasonable grounds for supposing that the patent existed. The Court reasoned that this language is directed to the remedies (“damages” and “account of profits”), not to the determination of infringement liability itself.
Accordingly, the Court concluded that s 69(1) operates as a restriction on relief awardable rather than a defence to liability. This interpretation aligned with the conceptual framework it had developed: a defendant may “excuse” itself from certain remedial consequences without negating the fact of infringement. The Court’s analysis also addressed the appellant’s attempt to characterise s 69(1) as a liability defence and thereby to treat it as something that should have been conclusively determined at the liability stage.
Having reached the conclusion that s 69(1) is not a defence to liability, the Court then addressed the second issue concerning res judicata and estoppel. The appellant argued that because the consent judgment declared infringement and validity, the respondents should be treated as having finally determined liability, and therefore should not be able to raise s 69(1) later at the account of profits hearing.
The Court rejected this argument. Since s 69(1) restricts relief rather than liability, it was not inconsistent with the consent judgment’s declaration of infringement for the respondents to rely on s 69(1) when determining the appropriate accounting period and the extent of profits to be ordered. The consent judgment ordered an account of profits, but it did not—and could not—remove the statutory discretion or restriction created by s 69(1). The “liberty to apply” in the consent judgment further supported the view that consequential matters, including the scope of relief, could remain open for determination.
In practical terms, the Court treated the account of profits hearing as the stage at which the statutory conditions for restricting relief must be assessed. The respondents’ evidence that they first became aware of the patent on 7 October 2005 was therefore relevant to the extent of the account of profits, not to whether infringement had occurred.
Finally, the Court’s reasoning reflected a policy balance inherent in the statutory scheme. Innocent infringement provisions recognise that a defendant who genuinely had no knowledge of a patent should not be exposed to the full remedial consequences that would ordinarily follow from infringement. The Court’s interpretation ensured that the remedial limitation could be applied at the appropriate time without undermining the finality of liability determinations.
What Was the Outcome?
The Court of Appeal unanimously dismissed the appeal with costs. The effect of the decision was to uphold the High Court’s rejection of the appellant’s application for a further account of profits covering the earlier period from 20 February 1998 to 30 September 2005.
More broadly, the Court confirmed that s 69(1) is concerned with restricting relief, meaning that even where infringement liability has been declared (including by consent), a defendant may still rely on s 69(1) at the relief stage to limit damages and/or an account of profits, provided the statutory conditions are proved.
Why Does This Case Matter?
This decision is significant for patent litigation strategy in Singapore because it clarifies the legal nature of the “defence of innocent infringement” under s 69(1). Practitioners often treat “defence” as a single concept, but the Court of Appeal’s analysis demonstrates that in patent cases, “defence” may operate differently depending on whether the issue concerns liability or the availability of remedies. By holding that s 69(1) restricts relief rather than liability, the Court provides a clear doctrinal framework for structuring pleadings and evidence.
For plaintiffs, the case underscores that consent judgments declaring infringement do not automatically entitle the patentee to the full remedial consequences for the entire infringement period. Plaintiffs must anticipate that defendants may seek to limit profits or damages by proving innocence under s 69(1), and that the accounting period may be contested at the relief stage.
For defendants, the case provides reassurance that res judicata principles tied to liability determinations will not necessarily prevent reliance on s 69(1) later. However, the decision also highlights the importance of evidential preparation: the defendant must prove lack of awareness and absence of reasonable grounds for supposing the patent existed at the date of infringement. The timing of knowledge becomes central to the scope of the account of profits.
From a broader perspective, the Court’s approach supports a coherent statutory interpretation that respects both finality in liability and fairness in remedies. The decision therefore serves as a key authority on how Singapore courts interpret and apply innocent infringement provisions in patent infringement proceedings.
Legislation Referenced
- Patents Act (Cap 221, 2005 Rev Ed) — s 69(1) (“Restrictions on relief for infringement”)
- Patents Act 1949
- Patents Act 1977
- Patents Act 1994
- Patents and Designs Act
- Limitation Act 1980 — “A of the Limitation Act 1980” (as referenced in the case metadata)
Cases Cited
- [2000] SGHC 53
- [2007] SGCA 50
- [2007] SGCA 52
- Emjay Enterprises Pte Ltd v Skylift Consolidator (Pte) Ltd [2006] 2 SLR 268
- Seiko Epson Corp v Sepoms Technology Pte Ltd [2007] 3 SLR 225
Source Documents
This article analyses [2007] SGCA 52 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.