Dextra v Mariwu: Patent Infringement & Validity - Novelty & Inventiveness in Rebar Manufacturing
Dextra Asia Co Ltd and Dextra Manufacturing Co Ltd sued Mariwu Industrial Co (S) Pte Ltd in the High Court of Singapore, alleging patent infringement of Singapore patent No 21011 related to a manufacturing process for rebar connections. Mariwu counterclaimed for groundless threat of infringement and revocation of the patent, arguing lack of novelty and inventiveness. Tan Lee Meng J. found the patent valid, granting an injunction against Mariwu and ordering an inquiry into damages suffered by Dextra.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Judgment for the Plaintiffs
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Dextra sued Mariwu for patent infringement. Mariwu counterclaimed for revocation, alleging lack of novelty and inventiveness. The court found the patent valid and granted an injunction.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Dextra Asia Co Ltd | Plaintiff | Corporation | Judgment for the Plaintiff | Won | |
| Dextra Manufacturing Co Ltd | Plaintiff | Corporation | Judgment for the Plaintiff | Won | |
| Mariwu Industrial Co (S) Pte Ltd | Defendant | Corporation | Judgment Against | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tan Lee Meng | Judge | Yes |
4. Counsels
4. Facts
- Dextra sued Mariwu for infringing Singapore patent No 21011.
- The patent relates to a manufacturing process for mechanical connections for joining reinforcement bars (rebars).
- Mariwu admitted its system is technically identical to the process and product claims in the patent.
- Mariwu counterclaimed for revocation of the patent, alleging lack of novelty and inventiveness.
- The Bartec process involves cold forging of rebars, building a parallel thread on a cold-forged end, and splicing them with a mechanical coupler.
- Techniport, a French company, originally filed for a European patent for the Bartec process.
- Dextra acquired the patent for the Bartec process in Asia from Mure in 1998.
5. Formal Citations
- Dextra Asia Co Ltd and Another v Mariwu Industrial Co (S) Pte Ltd and Another, Suit 641/2004, 339/2005, [2006] SGHC 7
6. Timeline
| Date | Event |
|---|---|
| Techniport SA filed an application for a European patent. | |
| The European patent was registered in the UK. | |
| Dextra entered into a joint venture agreement with CCL with respect to the introduction and exploitation of Bartec products in Singapore. | |
| The Techinport-CCL licence was novated by Techniport to Mure. | |
| The European patent was registered in Singapore. | |
| The Techniport-CCL licence agreement was terminated. | |
| Dextra sold its Singapore business to CCL. | |
| Dextra acquired the patent for the Bartec process in Asia from Mure. | |
| CCL appointed Easteel Construction Services Pte Ltd as its licensee for Bartec products in Singapore. | |
| Dextra informed CCL that it had acquired the Bartec patent in Asia. | |
| Dextra informed Easteel that it owned the Bartec patent in Asia. | |
| Dextra re-entered the Singapore market and appointed Sintec System Pte Ltd as its distributor. | |
| Easteel ceased to be CCL’s distributor of Bartec products. | |
| Mr. Tan left Easteel for Mariwu. | |
| Dextra invited Mariwu to be its licensee. | |
| Dextra terminated Sintec’s licence. | |
| Dextra appointed Easteel as its exclusive licensee. | |
| Dextra sued Mariwu and Mr Tan (Suit 641/2004). | |
| Dextra sued Mr Tan (Suit 339/2005). | |
| Both suits were consolidated by an Order of Court. | |
| Judgment reserved. |
7. Legal Issues
- Patent Infringement
- Outcome: The court found that Mariwu had infringed on Dextra's patent.
- Category: Substantive
- Patent Validity
- Outcome: The court found that the patent was valid, possessing both novelty and inventiveness.
- Category: Substantive
- Sub-Issues:
- Lack of Novelty
- Lack of Inventiveness
- Prior Use
- Outcome: The court found that Mariwu did not provide sufficient evidence of prior use to invalidate the patent.
- Category: Substantive
- Prior Disclosure
- Outcome: The court found that disclosures made before the priority date were cloaked with confidentiality and did not invalidate the patent.
- Category: Substantive
- Prior Art
- Outcome: The court found that the prior art cited by Mariwu did not invalidate the patent due to lack of clear and unmistakable directions.
- Category: Substantive
- Inventive Step
- Outcome: The court held that the Bartec process was not obvious to a person skilled in the art and thus possessed an inventive step.
- Category: Substantive
8. Remedies Sought
- Injunction
- Damages
9. Cause of Actions
- Patent Infringement
10. Practice Areas
- Patent Infringement Litigation
- Intellectual Property Litigation
11. Industries
- Construction
- Manufacturing
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Hunter Manufacturing Pte Ltd v Soundtex Switchgear& Engineering Pte Ltd (No 1) | Court of Appeal | Yes | [2000] 1 SLR 401 | Singapore | Cited regarding prior disclosure in the context of registered design infringement, specifically concerning collaboration and confidentiality between parties. |
| 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 of anticipation in patent law, requiring clear and unmistakable directions in prior publications to invalidate a patent claim. |
| Merck & Co Inc v Pharmaforte Singapore Pte Ltd | Court of Appeal | Yes | [2000] 3 SLR 717 | Singapore | Endorsed the view in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited regarding anticipation. |
| In the matter of Lowndes’ Patent | N/A | Yes | (1928) 45 RPC 48 | N/A | Cited for the principle that a patent cannot be invalidated by piecing together information from multiple prior documents to create a mosaic. |
| Molnlycke AB v Procter & Gamble Limited | N/A | Yes | [1994] RPC 49 | N/A | Cited for the objective criterion in determining whether an invention involves an inventive step, focusing on what would be obvious to a person skilled in the art. |
| Windsurfing International Inc v Tabur Marine (Great Britain) Ltd | N/A | Yes | [1985] RPC 59 | N/A | Cited for the four-step approach to determine inventiveness, including identifying the inventive concept and assessing obviousness to a skilled person. |
| British Celanese,Ld v Courtaulds,Ld | N/A | Yes | (1935) 52 RPC 171 | N/A | Cited for the principle that a patentable combination requires a working inter-relation between old integers producing a new or improved result. |
| Peng Lian Trading Co v Contour Optik Inc | N/A | Yes | [2003] 2 SLR 560 | N/A | Cited for the principle that a small step or slight advance can still constitute an inventive step. |
| Vickers, Sons and Co, Limited v Siddell | N/A | Yes | (1890) 7 RPC 292 | N/A | Cited for the principle that simplicity does not negate inventiveness. |
| Samuel Parkes & Co Ld v Crocker Brothers Ld | N/A | Yes | (1929) 46 RPC 241 | N/A | Cited for the principle that commercial success is a factor to consider when determining inventiveness. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| Section 13(1) Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| Section 14(1) of the Patents Act | Singapore |
| Section 14(2) of the Patents Act | Singapore |
| Section 15 of the Patents Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Patent
- Infringement
- Novelty
- Inventiveness
- Rebars
- Cold Forging
- Bartec Process
- Mechanical Coupler
- Priority Date
- Prior Art
- Prior Use
- Prior Disclosure
15.2 Keywords
- patent infringement
- patent validity
- novelty
- inventiveness
- rebar manufacturing
- cold forging
- Dextra
- Mariwu
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 90 |
| Patent Infringement | 85 |
| Inventive step | 70 |
| Novelty | 70 |
| Revocation of patent | 60 |
| Groundless threat of infringement | 60 |
| Contracts | 30 |
| Breach of Contract | 20 |
| Contract Law | 20 |
16. Subjects
- Patent Law
- Intellectual Property
- Construction
- Manufacturing