Platts-Mills v Trek Technology: Ad Hoc Admission of Queen's Counsel for Patent Infringement Appeal
In Re Platts-Mills, Mark Fortescue QC, the Singapore High Court considered an application by Mr. Mark Fortescue Platts-Mills QC for ad hoc admission to the Singapore Bar to represent the appellants, F E Global Electronics Pte Ltd, Electec Pte Ltd and M-Systems Flash Disk Pioneers Ltd, in a patent infringement appeal against Trek Technology (Singapore) Pte Ltd. The court, presided over by Judith Prakash J, granted the application, finding that the case involved sufficiently complex issues of law and fact, including patent claim construction, amendment of patents, and liability for foreign manufacturers in patent infringement actions. The court also considered the applicant's familiarity with the related UK patent litigation and the benefit to the court of having counsel conversant with the complex technology involved.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Application Granted
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Singapore High Court allows ad hoc admission of Queen's Counsel for a complex patent infringement appeal involving claim construction and amendment.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Attorney-General | Other | Government Agency | No Specific Outcome | Neutral | Dominic Zou of Attorney-General’s Chambers |
| Law Society of Singapore | Other | Statutory Board | No Specific Outcome | Neutral | |
| Trek Technology (Singapore) Pte Ltd | Respondent | Corporation | Appeal against Decision | Lost | |
| Electec Pte Ltd | Appellant | Corporation | Appeal Heard | Neutral | |
| M-Systems Flash Disk Pioneers Ltd | Appellant | Corporation | Appeal Heard | Neutral | |
| Mark Fortescue Platts-Mills QC | Applicant | Individual | Application Granted | Won | |
| F E Global Electronics Pte Ltd | Appellant | Corporation | Appeal Heard | Neutral |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Judith Prakash | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Dominic Zou | Attorney-General’s Chambers |
| Laurence Goh | Laurence Goh Eng Yau and Co |
| Tony Yeo | Drew and Napier LLC |
| Joanna Koh | Drew and Napier LLC |
| Ponnampalam Sivakumar | Joseph Lopez and Co |
4. Facts
- Mr. Platts-Mills applied to be admitted as an advocate and solicitor of the Singapore Bar.
- The application was for the purpose of appearing as counsel on behalf of the appellants in Civil Appeal No 70 of 2005 and Civil Appeal No 127 of 2004.
- The appeals arose from a consolidated action regarding alleged groundless threats of patent infringement and the validity of a Singapore patent.
- The respondent's patent related to a portable computer data storage device.
- The appellants were manufacturers and distributors of a similar device.
- The applicant had represented the third appellant in contested proceedings to revoke the respondent’s UK patent.
- The UK patent was derived from the same patent application as the respondent’s patent.
5. Formal Citations
- Re Platts-Mills, Mark Fortescue QC, OM 31/2005, [2005] SGHC 191
6. Timeline
| Date | Event |
|---|---|
| High Court Suit No 604 of 2002 commenced by F E Global Electronics Pte Ltd, Electec Pte Ltd and M-Systems Flash Disk Pioneers Ltd against Trek Technology (Singapore) Pte Ltd. | |
| Suit No 604 of 2002 was consolidated with Suit No 609 of 2002. | |
| Trial began before Lai Kew Chai J. | |
| Trial concluded before Lai Kew Chai J. | |
| Appellants appealed against the judge’s decision to refuse the admission of further evidence. | |
| Judgment rendered in favour of the respondent. | |
| Application by Mr Mark Fortescue Platts-Mills QC allowed by Judith Prakash J. |
7. Legal Issues
- Ad Hoc Admission of Queen's Counsel
- Outcome: The court granted the application for ad hoc admission.
- Category: Procedural
- Sub-Issues:
- Complexity of legal issues
- Circumstances warranting admission
- Suitability of applicant
- Patent Claim Construction
- Outcome: The court considered the difficulties in reconciling prior Singapore decisions with guidance from the House of Lords.
- Category: Substantive
- Amendment of Patents
- Outcome: The court considered the factors to be taken into account when deciding whether to allow a patent to be amended after it had been granted.
- Category: Substantive
- Patent Infringement by Foreign Manufacturer
- Outcome: The court considered whether a foreign manufacturer could be liable for patent infringement in Singapore as a joint tortfeasor.
- Category: Substantive
- Groundless Threat of Patent Infringement
- Outcome: The court considered how to interpret s 77 of the Patents Act in respect of an action for a groundless threat of patent infringement.
- Category: Substantive
8. Remedies Sought
- Admission to the Singapore Bar
- Declaration that the respondent’s patent was invalid
- Relief in respect of groundless threats of infringement proceedings
9. Cause of Actions
- Patent Infringement
- Groundless Threat of Patent Infringement
10. Practice Areas
- Intellectual Property Litigation
- Patent Litigation
- Admissions to the Bar
11. Industries
- Technology
- Manufacturing
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Price Arthur Leolin v AG | High Court | Yes | [1992] 2 SLR 972 | Singapore | Cited for the three-stage test for admission as an advocate and solicitor. |
| Re Beloff Michael Jacob QC | High Court | Yes | [2000] 2 SLR 782 | Singapore | Cited for the three-stage test for admission as an advocate and solicitor. |
| Kirin-Amgen Inc v Hoechst Marion Roussel Ltd | House of Lords | Yes | [2005] RPC 9 | England and Wales | Cited for guidance on how the claims of the respondent’s patent should be construed. |
| Bean Innovations Pte Ltd v Flexon (Pte) Ltd | Court of Appeal | Yes | [2001] 3 SLR 121 | Singapore | Cited in relation to the issues of claim construction and the construction of a patent. |
| Genelabs Diagnostics Pte Ltd v Institut Pasteur | High Court | Yes | [2001] 1 SLR 121 | Singapore | Cited in relation to the issues of claim construction and the construction of a patent. |
| Catnic Components Limited v Hill & Smith Limited | Court of Appeal | Yes | [1982] RPC 183 | England and Wales | Cited as the bedrock of patent construction, universally applicable. |
| Improver Corporation v Remington Consumer Products Limited | High Court | Yes | [1990] FSR 181 | England and Wales | Cited in relation to the 'Protocol questions' enunciated. |
| Re Flint Charles John Raffles QC | High Court | Yes | [2001] 2 SLR 276 | Singapore | Cited to show that the local Bar has matured and is acquitting itself commendably. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Legal Profession Act (Cap 161, 2001 Rev Ed) s 21 | Singapore |
| Patents Act (Cap 221, 2002 Rev Ed) s 66 | Singapore |
| Patents Act (Cap 221, 2002 Rev Ed) s 77 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Queen's Counsel
- Ad Hoc Admission
- Patent Infringement
- Groundless Threat
- Patent Construction
- Amendment of Patent
- Joint Tortfeasor
- Hyperlink
- Offer to Dispose
- Prior Art
15.2 Keywords
- Queen's Counsel
- Ad Hoc Admission
- Patent Infringement
- Singapore
- Intellectual Property
- Patent Law
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Ad Hoc Admission | 100 |
| Patent Amendments | 90 |
| Legal Profession Act | 90 |
| Patents | 80 |
| Trademark Infringement | 40 |
| Contract Law | 30 |
| Litigation | 20 |
| Evidence Law | 20 |
16. Subjects
- Legal Profession
- Intellectual Property
- Patent Law
- Civil Procedure