FE Global Electronics v Trek Technology: Patent Infringement, Purposive Claim Construction & Validity

FE Global Electronics Pte Ltd, Electec Pte Ltd, M-Systems Flash Disk Pioneers Ltd, and Ritronics Components (S’pore) Pte Ltd appealed the High Court's decision that they infringed Trek Technology (Singapore) Pte Ltd’s patent for a portable data storage device (ThumbDrive). The Court of Appeal, comprising Chao Hick Tin JA, Tan Lee Meng J, and Yong Pung How CJ, dismissed the appeal, upholding the patent's validity and the finding of infringement. The court affirmed the trial judge’s decision regarding the validity of the patent, the allowance of amendments, and the appellants’ liability for damages.

1. Case Overview

1.1 Court

Court of Appeal of the Republic of Singapore

1.2 Outcome

Appeal Dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

The Court of Appeal upheld the High Court's decision that FE Global Electronics infringed Trek Technology's patent for the ThumbDrive, affirming the patent's validity.

1.7 Decision Date

29 December 2005

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Trek Technology (Singapore) Pte Ltd	Respondent, Plaintiff	Corporation	Judgment for Plaintiff	Won	Davinder Singh of Drew & Napier Jason Chan of Allen & Gledhill Tony Yeo of Drew & Napier Joanna Koh of Drew & Napier
Ritronics Components (S'pore) Pte Ltd	Appellant, Defendant	Corporation	Appeal Dismissed	Lost	Hee Theng Fong of Hee Theng Fong & Co Tan Siew Hong of Hee Theng Fong & Co Sarah Chong of Hee Theng Fong & Co Jeremy Ng of Hee Theng Fong & Co
FE Global Electronics Pte Ltd	Appellant, Defendant	Corporation	Appeal Dismissed	Lost	Ponnampalam Sivakumar of Joseph Lopez & Co
Electec Pte Ltd	Appellant, Defendant	Corporation	Appeal Dismissed	Lost	Ponnampalam Sivakumar of Joseph Lopez & Co
M-Systems Flash Disk Pioneers Ltd	Appellant, Defendant	Corporation	Appeal Dismissed	Lost	Ponnampalam Sivakumar of Joseph Lopez & Co

3. Judges

Judge Name	Title	Delivered Judgment
Tan Lee Meng	Judge	Yes
Chao Hick Tin	Justice of Appeal	No
Yong Pung How	Chief Justice	No

4. Counsels

Counsel Name	Organization
Davinder Singh	Drew & Napier
Jason Chan	Allen & Gledhill
Tony Yeo	Drew & Napier
Joanna Koh	Drew & Napier
Hee Theng Fong	Hee Theng Fong & Co
Tan Siew Hong	Hee Theng Fong & Co
Sarah Chong	Hee Theng Fong & Co
Jeremy Ng	Hee Theng Fong & Co
Ponnampalam Sivakumar	Joseph Lopez & Co

4. Facts

Trek filed a patent application for a portable data storage device on 21 February 2000.
Trek's patented product, ThumbDrive, was unveiled at an international exhibition in Germany shortly after the patent application.
The ThumbDrive device plugs directly into a computer's USB port and functions as a disk drive.
Other companies began producing similar devices, including M-Systems with "DiskOnKey" and Ritronics with "SlimDisk".
Trek filed actions against M-Systems and Ritronics for patent infringement.
M-Systems counterclaimed for revocation of the patent, alleging invalidity.
Trek applied to amend its patent to clarify the definition of its invention.

5. Formal Citations

FE Global Electronics Pte Ltd and Others v Trek Technology (Singapore) Pte Ltd and Another Appeal, CA 69/2005, 70/2005, [2005] SGCA 55
FE Global Electronics Pte Ltd and Others v Trek Technology (Singapore) Pte Ltd and Another Appeal, , [2005] 3 SLR 389

6. Timeline

Date	Event
2000-02-21	Trek filed a Singapore patent application for a portable data storage device.
2002-04-16	The patent was granted.
2002-07-01	Ritronics' devices were launched or made available in Singapore.
2002-01-01	M-Systems instituted Suit No 604 of 2002 against Trek for threatened patent infringement.
2002-10-14	Trek’s two actions against M-Systems and Ritronics and M-System’s suit against Trek were consolidated.
2005-05-12	Lai J held that Trek’s patent was valid and that M-Systems and Ritronics infringed the patent.
2005-12-30	The Court of Appeal dismissed the appeal.

7. Legal Issues

Patent Infringement
- Outcome: The Court of Appeal upheld the High Court's decision that the appellants had infringed Trek's patent.
- Category: Substantive
- Sub-Issues:
  - Construction of patent claims
  - Infringement of claims 1, 5 and 7
- Related Cases:
  - [2005] SGCA 55
Patent Validity
- Outcome: The Court of Appeal upheld the High Court's decision that Trek's patent was valid.
- Category: Substantive
- Sub-Issues:
  - Novelty
  - Inventiveness
  - Obviousness
Amendment of Patent
- Outcome: The Court of Appeal upheld the High Court's decision to allow Trek to amend its patent.
- Category: Procedural
- Sub-Issues:
  - Disclosure of additional matter
  - Extension of protection conferred by the patent

8. Remedies Sought

Damages for patent infringement
Injunction to stop the appellants from making, selling, or disposing of infringing products

9. Cause of Actions

Patent Infringement

10. Practice Areas

Patent Infringement Litigation
Intellectual Property Litigation

11. Industries

Electronics
Technology

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Strix Limited v Otter Controls Limited	N/A	Yes	[1991] FSR 354	N/A	Cited for the principle that the language of a patent is addressed to a person skilled in the art.
Catnic Components Limited v Hill & Smith Limited	N/A	Yes	[1982] RPC 183	N/A	Cited for the purposive construction of patent claims rather than a purely literal one.
Kirin-Amgen Inc v Hoechst Marion Roussel Ltd	House of Lords	Yes	[2005] RPC 9	United Kingdom	Endorsed the Catnic purposive approach to patent interpretation.
Bonzel (T) v Intervention Limited (No 3)	N/A	Yes	[1991] RPC 553	N/A	Cited for the test to determine whether an amendment to a patent discloses additional matter.
Smith Kline & French Laboratories Limited v Evans Medical Limited	N/A	Yes	[1989] FSR 561	N/A	Cited for the factors to be taken into account when exercising discretion to allow or disallow a proposed amendment of a patent.
Instance v CCL Label Inc	N/A	Yes	[2002] FSR 27	N/A	Considered whether the position stated in Smith Kline should be reviewed in view of the system employed nowadays for the registration of patents
The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited	N/A	Yes	[1972] RPC 457	N/A	Cited for the principle that a prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented to anticipate the patentee’s claim.
Samuel Parkes & Co Ld v Cocker Brothers Ld	N/A	Yes	(1929) 46 RPC 241	N/A	Cited for the principle that simplicity is not a bar to inventiveness.
Peng Lian Trading Co v Contour Optik Inc	Court of Appeal	Yes	[2003] 2 SLR 560	Singapore	Cited for the principle that ex post facto analysis can often be unfair to inventors.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act (Cap 221, 2002 Rev Ed)	Singapore
Patents Act s 13(1)	Singapore
Patents Act s 14	Singapore
Patents Act s 15	Singapore

15. Key Terms and Keywords

15.1 Key Terms

ThumbDrive
Patent
Infringement
Novelty
Inventiveness
Purposive construction
USB
Portable data storage device
Prior art
Amendment of patent

15.2 Keywords

patent infringement
patent validity
ThumbDrive
portable data storage device
Singapore
intellectual property

17. Areas of Law

Area Name	Relevance Score
Patents	95
Intellectual Property Law	75
Commercial Disputes	30
Breach of Contract	20

16. Subjects

Patent Law
Intellectual Property
Technology