Ng Kok Cheng v Chua Say Tiong: Patent Infringement & Validity of 'Duro' Lock Patent

In Ng Kok Cheng v Chua Say Tiong, the High Court of Singapore addressed a patent infringement claim by Mr. Ng, the proprietor of Singapore Patent No. 66473 for a lock sold under the brand name 'Duro,' against Mr. Chua, who sold similar locks under the brand name 'Castle.' Mr. Ng alleged that Mr. Chua's 'Castle' locks infringed his patent. Mr. Chua denied the patent's validity and counterclaimed for groundless threat of infringement. The court found the patent valid and that Mr. Chua's 'Castle' lock infringed Mr. Ng's patent, dismissing Mr. Chua's counterclaim.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Claim allowed. The court found in favor of the plaintiff on the issues of validity and infringement, dismissed the counterclaim, declared the patent valid, and found that it had been infringed by the defendant.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

High Court case regarding Ng Kok Cheng's patent infringement claim against Chua Say Tiong's 'Castle' lock, addressing patent validity and infringement.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Ng Kok ChengPlaintiffIndividualClaim AllowedWon
Chua Say TiongDefendantIndividualCounterclaim DismissedLost

3. Judges

Judge NameTitleDelivered Judgment
Judith PrakashJudgeYes

4. Counsels

Counsel NameOrganization
Steven SeahDrew & Napier
Adrian KwongDrew & Napier
Alban KangTan Loh & Wong
Chow Kin WahTan Loh & Wong

4. Facts

  1. Mr. Ng owns Singapore Patent No. 66473 for a lock sold under the brand name 'Duro'.
  2. Mr. Chua sells locks through his business Singlock Trading Agency under the brand name 'Castle'.
  3. Mr. Ng claimed Mr. Chua infringed his patent by selling locks that infringed the patent claims.
  4. Mr. Chua denied the patent's validity and counterclaimed for groundless threat of infringement.
  5. The 'Duro' lock was introduced to the Singapore market in mid-1998 and had encouraging sales figures.
  6. Mr. Chua's 'Castle' lock was considered almost identical to the patented invention by Mr. Ng.
  7. The patent was granted on 22 August 2000.

5. Formal Citations

  1. Ng Kok Cheng v Chua Say Tiong, Suit 783/2000, [2001] SGHC 143

6. Timeline

DateEvent
Mr Ng involved in the development of a lock designed to padlock the gates of HDB flats.
The two-bodied Rigoh lock was introduced to the Singapore market for use on HDB gates.
By late 1995, there were 12 brands of locks used on HDB gates and most of these were of a similar design.
Mr Ng went to Taiwan to meet a lock manufacturer who could put his ideas into effect.
Mr Chiu came to Singapore to have a look at the HDB gates and see for himself how the lock would be used on the gates.
The design of the lock was finalised in late 1997.
Mr Ng asked Mr Chiu if he could file a patent application for Mr Chiu`s lock in the latter`s name in Singapore.
An application to patent the alleged invention was lodged in Mr Chiu`s name.
The first shipment of the lock was sent to Mr Ng sometime in June or July 1998.
The Duro lock was introduced to the Singapore market in mid 1998.
The patent application was assigned to Mr Ng in October 1998.
Mr Chua launched the Castle lock which he openly admitted had been copied from the Duro lock.
Sometime prior to July 2000, Mr Ng noticed Mr Chua`s Castle lock being offered for sale by a number of retailers in the market.
The patent was granted.
Mr Ng asked Mr Chua to cease and desist from manufacturing, selling and/or offering to sell the infringing Castle lock.
This action was commenced by Mr Ng in September 2000.
Mr Chua filed the re-amended particulars of objection.
Decision Date

7. Legal Issues

  1. Patent Infringement
    • Outcome: The court found that the defendant's 'Castle' lock infringed the plaintiff's patent.
    • Category: Substantive
  2. Patent Validity
    • Outcome: The court upheld the validity of the plaintiff's patent.
    • Category: Substantive
  3. Obviousness
    • Outcome: The court determined that the invention was not obvious to a person skilled in the art.
    • Category: Substantive
  4. Enabling Disclosure
    • Outcome: The court found that the patent specification disclosed the invention clearly and completely for it to be performed by a person skilled in the art.
    • Category: Substantive

8. Remedies Sought

  1. Declaration that the patent is invalid
  2. Cessation of manufacturing, selling, and/or offering to sell the infringing lock
  3. Damages

9. Cause of Actions

  • Patent Infringement

10. Practice Areas

  • Patent Litigation
  • Intellectual Property Litigation

11. Industries

  • Manufacturing

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
M"lnlycke AB v Procter & GambleEnglish Court of AppealYes[1994] RPC 49England and WalesCited for its discussion on the ideas of obviousness and inventive concept in relation to patent law, particularly concerning the objective criterion for deciding whether a claimed invention involves an inventive step.
Siddell v Vickers & Sons LtdN/AYes[1890] 15 App Cas 496N/ACited to define obviousness as something that would at once occur to a person skilled in the art who was desirous of accomplishing the end.
Savage v Harris & SonsN/AYes[1896] 13 RPC 364N/ACited to define obviousness as not being the obvious or natural suggestion of what was previously known.
Windsurfing International v Tabur MarineN/AYes[1985] RPC 59N/ACited for its four-step analysis to determine whether there is an inventive step.
McGhan Medical UK v NagorHigh CourtYesN/AUnited KingdomCited for shedding light on the qualities of the skilled person in the art, including possessing common general knowledge, having a practical interest in the subject matter, and being reasonably intelligent.
Windsurfing International Inc v Tabur Marine (Great Britain)N/AYes[1985] RPC 59N/ACited for the four questions posed by Oliver LJ to determine whether there is an inventive step.
Minnesota Mining & Manufacturing Co v Plastus KreativN/AYes[1997] RPC 737N/ACited for the observation that words are to be construed having regard to the inventor's purpose as set out in the rest of his patent.
Rediffusion Simulation v Link-MilesN/AYes[1993] FSR 369N/ACited for the directive that the reader must attempt to give the specification a practical meaning.
Alsop Flour Process v Flour Oxidizing CoEnglish Court of AppealYes[1908] 25 RPC 477England and WalesCited where the English Court of Appeal refused to entertain an objection that was not mentioned in the particulars of objection.
British United Shoe Machinery Co v A Fussell & SonsN/AYes[1908] 25 RPC 631N/ACited where the court refused to admit evidence on matters which the defendant had not set forward as an objection in the particulars.
Genentech Inc`s PatentN/AYes[1989] RPC 147N/ACited for the principle that non-compliance with s 25(5) is a ground for rejection of the patent application but not a ground for revoking the patent once granted.
Biogen Inc v Medeva plcN/AYes[1997] RPC 1N/ACited to uphold the finding in Genentech`s case that non-compliance with s 25(5) is not a ground for revocation of a patent.
Catnic Components v Hill & SmithN/AYes[1982] RPC 183N/ACited for the principle that a patent specification should be given a purposive construction rather than a purely literal one.
Catnic Components v Hill & SmithN/AYes[1981] FSR 60N/ACited for the principle that a patent specification should be given a purposive construction rather than a purely literal one.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Patents Act (Cap 221, 1995 Ed)Singapore
Patents Act (Cap 221, 1995 Ed) s 15Singapore
s 25(5) Patents Act (Cap 221, 1995 Ed)Singapore
ss 25(4), 80(1)(c) Patents Act (Cap 221, 1995 Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Patent
  • Infringement
  • Validity
  • Obviousness
  • Inventive Step
  • Enabling Disclosure
  • Lock
  • Shackle Bar
  • Auxiliary Body
  • Main Body
  • Prior Art

15.2 Keywords

  • patent infringement
  • patent validity
  • lock
  • Singapore
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Patents95
Patent Infringement90
Patent Validity85
Patent Specification70
Intellectual Property Law60

16. Subjects

  • Patent Law
  • Intellectual Property
  • Commercial Law