Trek Technology v FE Global: Patent Infringement, Validity & Misrepresentation

In Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd, the High Court of Singapore heard three consolidated suits concerning the alleged infringement of Trek's patent No 87504 for its ThumbDrive data storage device. Trek sued FE Global, Electec, M-Systems, and Ritronics for infringing acts. M-Systems counterclaimed against Trek for threatened patent infringement. The defendants challenged the validity of Trek's patent, alleging a lack of novelty and inventiveness, and material misrepresentations regarding inventorship and ownership. The court found in favor of Trek, allowing Trek's claims in Suits 609/2002 and 672/2002, dismissing the counterclaim in Suit 609/2002, and dismissing the claim in Suit 604/2002. Damages were ordered to be assessed.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Claims in Suits 609/2002 and 672/2002 allowed. Counterclaim in Suit 609/2002 dismissed. Claim in Suit 604/2002 dismissed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Trek Technology sues FE Global for patent infringement. Court finds patent valid, infringement proven, and rejects misrepresentation claims.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Trek Technology (Singapore) Pte LtdPlaintiff, DefendantCorporationClaims allowedWon
FE Global Electronics Pte LtdDefendantCorporationClaims dismissedLost
Electec Pte LtdDefendantCorporationClaims dismissedLost
M-Systems Flash Disk Pioneers LtdDefendant, PlaintiffCorporationClaims dismissedLost

3. Judges

Judge NameTitleDelivered Judgment
Lai Kew ChaiJudgeYes

4. Counsels

Counsel NameOrganization
Davinder SinghDrew and Napier LLC
Tony YeoDrew and Napier LLC
Joanna KohDrew and Napier LLC
Daryl OngP Sivakumar and Co
P SivakumarP Sivakumar and Co
Jason ChanAllen and Gledhill
Tan Wee MengAllen and Gledhill

4. Facts

  1. Trek invented a portable mass storage device called ThumbDrive.
  2. The ThumbDrive can be inserted into any universal serial bus socket.
  3. Trek filed an application on 21 February 2002 to register a patent in Singapore for its ThumbDrive.
  4. M-Systems manufactures and sells a portable data storage device marketed as DiskOnKey and Diskey.
  5. Electec is the exclusive Singapore importer of Diskey.
  6. FE Global is the exclusive Singapore distributor of Diskey.
  7. Ritronics manufactures and sells the storage devices known as SlimDisk and BioSlimDisk.

5. Formal Citations

  1. Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and Others and Other Suits (No 2), Suit 609/2002, 604/2002, 672/2002, [2005] SGHC 90

6. Timeline

DateEvent
ThumbDrive launched at CeBIT 2000 exhibition in Germany
Trek filed an application to register a patent in Singapore for its ThumbDrive
Trek filed an application for a patent for fingerprint access solution
Patent granted in Trek's name
FE Global and Electec were put on notice of patent infringement
M-Systems were put on notice of patent infringement
Patent obtained for fingerprint access solution
Infringing product purchased by Trek’s representative
Trek's solicitors wrote to Ritronics
Trek became aware of the TDK and Lexar patent references
Trek became aware of the Aladdin and Sony patent references
Webpage printout informed visitors that SDs were being sold by Ritronics
BSDs would debut
WIPO issued an official notification stating that the identity of the inventor had been corrected
Trek applied to amend the New Zealand patent
A copy of the WIPO notification was sent to the Intellectual Property of Singapore
Trek proceeded with the amendment to the Patent
Ritronics’ prior art pleadings were finalized
Trial fixed
Trek applied to amend the Patent
Lloyd Wise sent a letter to IPOS enclosing an application to register the assignment agreement between S-Com and Trek
Parties closed their respective cases
Trek applied to amend its EPO application
Trek applied to amend its UK patent
Trek's Closing Submissions were filed
EPO issued a summons for Trek to attend oral proceedings
Defendants made an application to court by way of SIC 4463/2004/Z for further evidence to be adduced
Judgment reserved

7. Legal Issues

  1. Patent Infringement
    • Outcome: The court found that the defendants had infringed Trek's patent by making, selling, or offering for sale devices that were clones of the ThumbDrive.
    • Category: Substantive
    • Sub-Issues:
      • Offer to dispose
      • Conspiracy to infringe
      • Joint tortfeasorship
      • Innocent infringement
  2. Patent Validity
    • Outcome: The court held that Trek's patent was valid, possessing both novelty and an inventive step.
    • Category: Substantive
    • Sub-Issues:
      • Novelty
      • Inventive step
  3. Misrepresentation
    • Outcome: The court found that Trek had not made any material misrepresentations to the registrar of patents.
    • Category: Substantive
    • Sub-Issues:
      • Ownership of patent
      • Inventorship of patent
      • Materiality of misrepresentation
  4. Groundless Threat
    • Outcome: The court dismissed the defendant's counterclaim for groundless threats of patent infringement.
    • Category: Substantive

8. Remedies Sought

  1. Injunction against patent infringement
  2. Damages for patent infringement
  3. Account of profits

9. Cause of Actions

  • Patent Infringement
  • Groundless Threat of Patent Infringement

10. Practice Areas

  • Patent Litigation
  • Intellectual Property Litigation

11. Industries

  • Technology
  • Electronics

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Euromarket Designs Inc v PetersN/AYes[2001] FSR 20N/ACited for the practical approach to determining whether an offer to dispose of a product was made in a particular jurisdiction.
Electro Cad Australia Pty Ltd v Mejati RCS Sdn BhdN/AYes[1998] 3 MLJ 422N/ACited for the principle that a party will only be liable for conspiracy to infringe where it actually induces the infringement or there is evidence of an agreement or understanding to carry out acts of infringement.
Ong & Co Pte Ltd v Quah Kay TeeN/AYes[1996] 2 SLR 553N/ACited for the principle that a party will only be liable for conspiracy to infringe where it actually induces the infringement or there is evidence of an agreement or understanding to carry out acts of infringement.
CBS Songs v AmstradN/ANo[1988] RPC 567N/ACited for the principle that a party who sells or offers to sell or dispose of an article knowing that it is going to be used to infringe may assist infringement, but cannot be said to have induced it for the purpose of establishing a conspiracy.
Morton-Norwich Products Inc v Intercen LimitedN/AYes[1978] RPC 501N/ACited for the elaboration on the concept of common design in joint tortfeasorship.
Unilever Plc v Gillette (UK) LimitedN/AYes[1989] RPC 583N/ACited for the principle that for parties to operate in furtherance of a common design, it is not necessary for them to have mapped out a plan; tacit agreement will also suffice.
Gerber Garment Technology Inc v Lectra Systems LtdN/AYes[1995] RPC 383N/ACited for the principle that early advertisements can be infringements.
Bonzel v Intervention Limited (No 3)N/AYes[1991] RPC 553N/ACited for the three-step test to determine whether any additional matter is disclosed by an amendment.
Smith Kline & French Laboratories v Evans Medical LimitedN/AYes[1989] FSR 561N/ACited for the factors the court considers when a patentee applies to court to amend its patent specifications.
Instance v CCL Label IncN/AYes[2002] FSR 27N/ACited for the view that the approach taken by the courts in Smith Kline was anachronistic and out of step with a modern law of patents.
Mabbuchi Motor KK’s PatentsN/AYes[1996] RPC 387N/ACited for the principle that the overriding principle upon which the court acts is whether there was grave misconduct by the patentee or bad faith and whether that has an effect on the public.
Oxford Gene Technology v Affymetrix Inc (No 2)N/AYes[2001] RPC 18N/ACited for the scope and extent of the duty of disclosure when a patentee seeks amendment.
Hills v EvansN/AYes4 De G F & J 288N/ACited for the principle that the antecedent statement must be such that a person of ordinary skill and knowledge of the subject would at once perceive and understand and be able to practically apply the discovery without the necessity of making further experiments.
General Tire & Rubber Company v The Firestone Tyre and Rubber Company LimitedN/AYes[1972] RPC 457N/ACited for the principles that apply to determining anticipation.
Minnesota Mining & Manufacturing Co v Bondina LtdN/AYes[1973] RPC 491N/ACited for the principles that apply to determining anticipation.
Windsurfing International Inc v Tabur Marine (Great Britain) LtdN/AYes[1985] RPC 59N/ACited for the test for obviousness.
Samuel Parkes & Co Ltd v Cocker Brothers LtdN/AYes(1929) 46 RPC 241N/ACited for the credit that should be accorded to the commercial success of an invention.
Intalite International NV v Cellular Ceilings Ltd (No. 2)N/AYes[1987] RPC 532N/ACited for the principle that a misrepresentation must be material so as to revoke a patent.
Prestige Group (Australia) Pty Ltd v Dart Industries IncN/AYes19 IPR 275N/ACited for the test for material misrepresentation.
Speedy Gantry Hire Pty Ltd v Preston Erection Pte LtdN/AYes40 IPR 543N/ACited for the principle that even if the patent applicant’s statement alleging an assignment was false, such false suggestion or representation would not have contributed materially to the commissioner’s decision to grant the patent.
Coflexip Stena Offshore Limited’s patentN/AYes[1997] RPC 179N/ACited for the principle that from the public point of view, what really matters is that the register should show who the proprietor is and how he came to be the proprietor is of no or little importance.
Vernon v Bosley (No 2)N/AYes[1997] All ER 614N/ACited for the test for further evidence to be adduced.
Flexible Directional Indicators Ltd’s ApplicationN/ANo[1994] RPC 207N/ACited regarding the use of a broad class of elements, a specific element within that class cannot be claimed.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Patents Act (Cap 221, 2002 Rev Ed)Singapore
Section 43 Patents Act (Cap 221, 2002 Rev Ed)Singapore
Section 75 Patents Act (Cap 221, 2002 Rev Ed)Singapore
Section 66(1) Patents Act (Cap 221, 2002 Rev Ed)Singapore
Section 69(1) Patents Act (Cap 221, 2002 Rev Ed)Singapore
Section 80(1)(f)(ii) Patents Act (Cap 221, 2002 Rev Ed)Singapore
Section 113(1) Patents Act (Cap 221, 2002 Rev Ed)Singapore
Section 83 of the Patents ActSingapore
Section 84(3) of the Patents ActSingapore
Section 25(5) of the Patents ActSingapore
Section 14 of the Patents ActSingapore
Section 15 of the Patents ActSingapore
Section 80(1)(g) of the Patents ActSingapore
Section 19(2) of the Patents ActSingapore
Section 19(3) of the Patents ActSingapore
Section 77 of the Patents ActSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • ThumbDrive
  • DiskOnKey
  • Diskey
  • SlimDisk
  • BioSlimDisk
  • Patent
  • USB
  • Integrated plug
  • Portable data storage device
  • Prior art
  • Inventive step
  • Misrepresentation

15.2 Keywords

  • Patent
  • Infringement
  • ThumbDrive
  • USB
  • Validity
  • Misrepresentation
  • Invention

17. Areas of Law

Area NameRelevance Score
Patents95
Patent Infringement90
Intellectual Property Law80
Patent Validity75
Groundless threat of infringement proceedings60
Patent Amendment50
Commercial Disputes30
Contract Law20
Breach of Contract20

16. Subjects

  • Patent Law
  • Intellectual Property
  • Technology