Peng Lian Trading Co v Contour Optik Inc: Patent Infringement & Inventive Step in Spectacle Frames
In Peng Lian Trading Co v Contour Optik Inc, the Singapore Court of Appeal heard an appeal regarding the alleged infringement of two patents (47151 and 60169) relating to spectacle frames with magnetic auxiliary frames. Peng Lian Trading Co disputed the validity of the patents. The court upheld the trial judge's decision that claim 2 of patent 47151 was valid but reversed the decision regarding claims 3 and 4 of patent 60169, finding them not patentable due to a lack of inventive step. The court ordered the revocation of patent 60169.
1. Case Overview
1.1 Court
Court of Appeal1.2 Outcome
Appeal allowed in part. Claims 3 and 4 of patent 60169 are not patentable and the patent is revoked.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Appeal regarding patent infringement of spectacle frames. The court examined the inventive step and validity of claims related to magnetic attachment.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Peng Lian Trading Co | Appellant | Corporation | Appeal allowed in part | Partial | |
| Contour Optik Inc | Respondent | Corporation | Claims 3 and 4 of patent 60169 revoked | Lost | |
| Dalmink Fashion Products 1989 Pte Ltd | Respondent | Corporation | Claims 3 and 4 of patent 60169 revoked | Lost | |
| Chao Richard Hao-Chih | Respondent | Individual | Claims 3 and 4 of patent 60169 revoked | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chao Hick Tin | Justice of the Court of Appeal | Yes |
| Judith Prakash | Judge | No |
| Yong Pung How | Chief Justice | No |
4. Counsels
4. Facts
- The case concerns alleged infringements of two patents relating to spectacle frames.
- The spectacle frames comprise a primary and an auxiliary frame attached by magnetic means.
- Patent 47151 involves magnets at the temple area, while patent 60169 involves magnets on the bridge.
- Peng Lian Trading Co was alleged to have infringed both patents.
- The trial judge found claim 2 of patent 47151 and claims 3 and 4 of patent 60169 to be valid.
- Peng Lian appealed against the decision that claim 2 of patent 47151 and claims 3 and 4 of patent 60169 are valid.
5. Formal Citations
- Peng Lian Trading Co v Contour Optik Inc and Others, CA 126/2002, [2003] SGCA 25
6. Timeline
| Date | Event |
|---|---|
| Publication of 'Hi-Rise Optical Frame System'. | |
| Publication of PCT/DE90/0009. | |
| Publication of PCT/WO90/09611. | |
| Priority date of patent 47151. | |
| Priority date of patent 60169. | |
| Case filed as CA 126/2002. | |
| Decision date. |
7. Legal Issues
- Inventive Step
- Outcome: The court found that claim 2 of patent 47151 involved an inventive step, but claims 3 and 4 of patent 60169 did not.
- Category: Substantive
- Sub-Issues:
- Obviousness
- New use of old contrivance
- Patent Validity
- Outcome: The court found claim 1 of patent 47151 and claims 1 and 2 of patent 60169 invalid for lack of novelty.
- Category: Substantive
- Sub-Issues:
- Novelty
- Prior art
8. Remedies Sought
- Declaration of Patent Invalidity
- Damages for Patent Infringement
9. Cause of Actions
- Patent Infringement
10. Practice Areas
- Patent Infringement
- Intellectual Property Litigation
11. Industries
- Fashion
- Manufacturing
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Windsurfing International Inc v Tabur Marine (Great Britain) Ltd | English Court of Appeal | Yes | [1985] RPC 59 | England and Wales | Cited for the four-step approach to determine whether something involves an inventive step. |
| Merck & Co Inc v Pharmaforte Singapore Ptd Ltd | Singapore Court of Appeal | Yes | [2000] 3 SLR 717 | Singapore | Cited as a previous case that adopted the four-step approach from Windsurfing. |
| Technograph Printed Circuits Ltd v Mills & Rockley Electronics Ltd | N/A | Yes | [1972] RPC 346 | N/A | Cited to define the 'unimaginative skilled technician' to whom the test of obviousness should be applied. |
| Genetech Inc Patent | N/A | Yes | [1989] RPC 147 | N/A | Cited for the principle that an invention is obvious if the material was 'lying on the road' for the research worker to use. |
| Molnlycke A.B. v Procter & Gamble | English Court of Appeal | Yes | [1994] RPC 49 | England and Wales | Cited for the principle that the court would rely on the evidence of expert witnesses in determining whether an invention involved an inventive step. |
| Non-Drip Measure Co Ltd v Strangers Ltd | N/A | Yes | [1943] 60 RPC 135 | N/A | Cited to caution against ex post facto analysis being unfair to inventors. |
| Killick v Pye | N/A | Yes | [1958] RPC 366 | N/A | Cited for the principle that the validity of a patent may be established even if the inventive step represents a very small advance. |
| Siddell v Vickers & Sons Ltd | N/A | Yes | (1890) 7 RPC 292 | N/A | Cited to highlight the misconception that a simple invention is necessarily obvious. |
| Biogen Inc v Medeva | N/A | Yes | [1997] RPC 1 | N/A | Cited to emphasize the caution an appellate tribunal should exercise in differing from the trial judge’s evaluation of what was obvious. |
| Harwood v Great Northern Rly Co | N/A | Yes | [1864-65] 11 ER 654 | N/A | Cited for the principle that a patent cannot be granted for a well-known mechanical contrivance merely because it is applied in an analogous manner or purpose. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act | Singapore |
| s 13(1) of the Patents Act | Singapore |
| s 15 of the Patents Act | Singapore |
| s 14(2) of the Patents Act | Singapore |
| s 14(3) of the Patents Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Spectacle frames
- Magnetic attachment
- Inventive step
- Obviousness
- Prior art
- Hooking effect
- Magnetizable substance
- Auxiliary frame
- Primary frame
15.2 Keywords
- Patent
- Infringement
- Spectacle Frames
- Magnetic
- Inventive Step
- Singapore
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 95 |
| Appellate Litigation | 50 |
16. Subjects
- Intellectual Property
- Patent Law
- Civil Procedure