Dextra Asia v Mariwu Industrial: Patent Infringement, Amendment of Defence & Earth Closet Order

Dextra Asia Co Ltd and Dextra Manufacturing Co Ltd sued Mariwu Industrial Co (S) Pte Ltd in the High Court of Singapore for patent infringement. Mariwu Industrial applied to re-amend their amended defence to include further instances of prior art. The Assistant Registrar, Mr. Vincent Leow, granted the amendment and the plaintiffs' request for an Earth Closet/Scott-Paine order, which allows the plaintiffs to discontinue the action, with costs borne by the defendants from the first amendment to the particulars of objection. The court outlined the basis and approach for granting such orders.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Earth Closet/Scott-Paine order granted to the plaintiffs, allowing them to discontinue the action with costs borne by the defendants from the first amendment to the particulars of objection.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Patent infringement case where Dextra Asia sued Mariwu Industrial. The court granted Mariwu's application to re-amend their defence and ordered an Earth Closet order.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Dextra Asia Co LtdPlaintiffCorporationEarth Closet/Scott-Paine order grantedPartial
Dextra Manufacturing Co LtdPlaintiffCorporationEarth Closet/Scott-Paine order grantedPartial
Mariwu Industrial Co (S) Pte LtdDefendantCorporationAmendment of Defence AllowedPartial

3. Judges

Judge NameTitleDelivered Judgment
Vincent LeowAssistant RegistrarYes

4. Counsels

Counsel NameOrganization
Cindy Quek Soon BeeShook Lin and Bok
Kalaiselvi d/o SingaramInfinitus Law Corporation

4. Facts

  1. The plaintiffs sued the defendants for patent infringement.
  2. The defendants applied to re-amend their defence to include further instances of prior art.
  3. The plaintiffs sought an Earth Closet/Scott-Paine order.
  4. The defendants' application to amend was a substantial one, expanding the amended particulars of objection from 5 to 25 instances of prior art.
  5. The defendants had already applied to amend their particulars of objection in January 2005.
  6. The plaintiffs had defended the same patent vigorously and successfully in other jurisdictions.

5. Formal Citations

  1. Dextra Asia Co Ltd and Another v Mariwu Industrial Co (S) Pte Ltd, Suit 641/2004, SIC 1509/2005, [2005] SGHC 85

6. Timeline

DateEvent
Plaintiffs sued the defendants for infringement of the patent.
Defendants filed their defence.
Defendants sought to amend the particulars of objections.
Defendants applied to re-amend the amended particulars of objections.
Trial was fixed for hearing.
Court granted the amendment and vacated the trial dates. Counsel for the plaintiffs then applied for the Earth Closet/Scott-Paine order. Court granted the order sought.

7. Legal Issues

  1. Amendment of Defence
    • Outcome: The court allowed the amendment of the defence to include further instances of prior art.
    • Category: Procedural
    • Sub-Issues:
      • Inclusion of prior art
      • Diligence in discovering prior art
      • Prejudice to patent holder
  2. Earth Closet/Scott-Paine Order
    • Outcome: The court granted the Earth Closet/Scott-Paine order.
    • Category: Procedural
    • Sub-Issues:
      • Wasted costs
      • Diligence of defendant
      • Surprise to patent holder
      • Timing of amendment

8. Remedies Sought

  1. Injunction
  2. Damages

9. Cause of Actions

  • Patent Infringement

10. Practice Areas

  • Intellectual Property Litigation
  • Patent Infringement

11. Industries

  • Construction

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Edison Telephone Company v India Rubber CompanyEnglish Court of AppealYes(1881) 17 Ch.D. 137EnglandMentioned the form of the Earth Closet order.
Helbert William Wilson and Wilson Brothers Bobbin Company Ld v Wilson & Co (Barnsley) LdEnglish Court of AppealYes(1899) 16 RPC 315EnglandModified the Earth Closet order regarding costs entitlement.
Strachan and Henshaw, Ld v Pakcel, Ld (No 3)UnknownYes[1949] RPC 49EnglandDiscussed the modification to the Earth Closet order regarding costs entitlement.
See v Scott-PaineUnknownYes(1933) 50 RPC 56EnglandGave rise to the Scott-Paine variation of the Earth Closet order, addressing costs for counterclaiming defendants.
Enrlich v IhleeUnknownYes(1887) 4 RPC 115EnglandExplained the basis of the Earth Closet/Scott-Paine order.
Williamson v Moldline Ltd and OthersUnknownYes[1986] 21 RPC 556EnglandExplained that preparation of patent actions for trial is very likely to be expensive because of the need for experimentation and the employment of independent experts to give evidence.
Photax (London) Ltd v Lustro Distributors Ltd.UnknownYes[1951] 68 RPC 176EnglandThe Earth Closet/Scott-Paine order requires the patent holder to consider the attacks that could be made on his patent and to consider with reasonable haste whether or not the attacks on the validity of his patent will succeed.
GEC Alsthom Limited’s PatentPatents CourtYes[1996] FSR 415EnglandReversed the practice of making Earth Closet/Scott-Paine orders as a matter of course.
CIL International Ltd v. Vitrashop LtdUnknownYes[2002] F.S.R. 4EnglandFollowed the decision in GEC Alsthom Limited’s Patent.
Monitoring Technologies Limited v. Bell Group PlcUnknownYes[2003] EWHC 3136EnglandFollowed the decision in GEC Alsthom Limited’s Patent.
Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands LtdFederal Court of AustraliaYes[1999] FCA 421AustraliaStated that the Earth Closet/Scott-Paine order is not made as of course.
A'Van Campers Pty Ltd v Camoflag PtyFederal Court of AustraliaYes[2003] FCA 353AustraliaStated that the Earth Closet/Scott-Paine order is not made as of course.
Re Wing Yick Bamboo Scaffolders LtdUnknownYes[2003] HKEC 985Hong KongNoted that the current judicial trend recognizes that costs is a matter of discretion and See v Scott-Paine orders should only be imposed in appropriate case.
Gill v ChipmanUnknownYes[1987] RPC 209EnglandThe patent holder has no obligation to scan through the existing prior art in an attempt to determine whether his patent is invalid.
CQR Security System Ltd’s PatentUnknownYes[1992] FSR 303EnglandThe defendant does not have to plead the entire spectrum of prior art in anticipation of any possible amendments by the patent holder.
Helitune Ltd v. Stewart Hughes LtdUnknownYes[1994] F.S.R. 422EnglandIf the amendment was sought earlier, the patent holder would have been put on notice far much earlier which as a matter of common sense would have allowed them to elect whether to proceed far much earlier and thereby lead to a saving of costs.
Behr-Thomson Controls LtdUnknownYes[1990] RPC 569EnglandThe purpose of the Earth Closet/Scott-Paine order is not to penalise the defendants, but rather to incentivize them to carry out their searches and amendment of their pleadings with due haste.
Brivis Australia Pty Ltd v Seeley International Pty LtdFederal Court of AustraliaYes[2002] FCA 843AustraliaThe court before relying upon this factor has to find that the delay was unacceptable in that a reasonable lawyer with possession of the materials would have taken out an earlier application to amend the particulars of objections.
La Baigue Magiglo v Multiglow FiresUnknownYes[1994] RPC 295EnglandNeither does it prejudice defendants when they stumble across some prior art through an adventitious or extemporaneous incident.
Morris Wilson & Co v Coventry Machinists CompanyUnknownYes[1891] 3 Ch 418EnglandThe Earth Closet/Scott-Paine order has been expanded to registered design cases.
Rose & Hubble Ltd v L. Hart (Stockport) LtdUnknownYes[1965] FSR 412EnglandThe Earth Closet/Scott-Paine order has been expanded to registered design cases.

13. Applicable Rules

Rule Name
Order 20 rule 5(1)
Order 18 of the Rules of Court
Order 19

14. Applicable Statutes

Statute NameJurisdiction
Patent Act (Cap 221) 2002 Rev. Ed.Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Patent
  • Prior art
  • Earth Closet order
  • Scott-Paine order
  • Particulars of objection
  • Amendment of defence
  • Infringement
  • Validity
  • Costs

15.2 Keywords

  • patent infringement
  • amendment of defence
  • earth closet order
  • scott-paine order
  • prior art
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Patents90
Patent Infringement85
Prior Art75
Costs60
Amendment of Pleadings50
Civil Litigation40

16. Subjects

  • Intellectual Property
  • Patents
  • Civil Procedure
  • Costs