Seiko Epson v Sepoms Technology: Defence of Innocent Infringement in Patent Law
Seiko Epson Corporation appealed against the High Court's decision, which upheld the assistant registrar's rejection of Seiko Epson's application for Sepoms Technology Pte Ltd and JAL Technology (S) Pte Ltd to file a further account of profits. The Court of Appeal of Singapore, comprising Andrew Phang Boon Leong JA and V K Rajah JA, dismissed the appeal, holding that s 69(1) of the Patents Act operates as a restriction on the relief awardable, not as a defence to liability for patent infringement. The court considered the scope of a consent judgment and the interpretation of s 69(1) in relation to patent infringement.
1. Case Overview
1.1 Court
Court of Appeal1.2 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 held that the defence of innocent infringement under s 69(1) of the Patents Act restricts relief, not liability.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Seiko Epson Corporation | Appellant | Corporation | Appeal Dismissed | Lost | |
| Sepoms Technology Pte Ltd | Respondent | Corporation | Application Dismissed | Won | |
| JAL Technology (S) Pte Ltd | Respondent | Corporation | Application Dismissed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Andrew Phang Boon Leong | Justice of the Court of Appeal | Yes |
| V K Rajah | Justice of the Court of Appeal | No |
4. Counsels
4. Facts
- Seiko Epson Corporation is the registered proprietor of Singapore Patent No SG 46602.
- Sepoms Technology Pte Ltd and JAL Technology (S) Pte Ltd are companies that develop, manufacture, and sell compatible and refillable printer cartridges.
- Seiko Epson commenced an action against Sepoms and JAL for infringing the Patent.
- The respondents initially denied infringement and pleaded the defence of innocent infringement under s 69(1) of the Singapore Act.
- The respondents later consented to judgment, which declared the Patent valid and infringed, and ordered an account of profits.
- The appellant was dissatisfied with the respondents’ account of profits and sought a further account for an earlier period.
- The respondents resisted the application based on s 69(1), arguing they were unaware of the Patent during the earlier period.
5. Formal Citations
- Seiko Epson Corporation v Sepoms Technology Pte Ltd and Another, CA 19/2007, [2007] SGCA 52
6. Timeline
| Date | Event |
|---|---|
| Date of publication of the Patent | |
| Appellant commenced an action against the respondents for patent infringement | |
| Respondents filed a defence and counterclaim denying infringement | |
| Respondents applied for a preliminary hearing on the defence of acquiescence | |
| Assistant Registrar Chung Yoon Joo dismissed the application | |
| Respondents filed a notice of appeal against the decision | |
| Kan Ting Chiu J dismissed the appeal | |
| Respondents' counsel informed the High Court that the respondents would consent to judgment | |
| Consent judgment was entered before Tan Lee Meng J | |
| Respondents filed an account of profits for the period from 2005-10-01 to 2006-07-31 | |
| Appellant applied to the High Court for an order that the respondents file a further account for the period from 1998-02-20 to 2005-09-30 | |
| Court of Appeal dismissed the appeal |
7. Legal Issues
- Defence of Innocent Infringement
- Outcome: The court held that the defence of innocent infringement under s 69(1) of the Patents Act operates as a restriction on the relief awardable, not as a defence to liability.
- Category: Substantive
- Statutory Interpretation
- Outcome: The court interpreted s 69(1) of the Patents Act to determine its scope and effect.
- Category: Procedural
- Scope of Consent Judgment
- Outcome: The court held that the consent judgment was final only on the issue of liability, with the specific accounting period to be determined at a later stage.
- Category: Procedural
8. Remedies Sought
- Declaration of Patent Infringement
- Account of Profits
- Injunction
- Delivery Up of Infringing Articles
- Costs
9. Cause of Actions
- Patent Infringement
10. Practice Areas
- Intellectual Property Litigation
- Patent Infringement
11. Industries
- Manufacturing
- Technology
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Seiko Epson Corp v Sepoms Technology Pte Ltd | High Court | Yes | [2007] 3 SLR 225 | Singapore | Upholding the decision of the assistant registrar regarding the application for directions to file a further account of profits. |
| Emjay Enterprises Pte Ltd v Skylift Consolidator (Pte) Ltd | N/A | Yes | [2006] 2 SLR 268 | Singapore | Cited for the principle that rigorous theoretical analysis can play a role in ensuring a more nuanced development of the law. |
| Roger James Weston v Sara Elizabeth Dayman | English Court of Appeal | Yes | [2006] EWCA Civ 1165 | England and Wales | Cited for the principle that a consent judgment should be interpreted like a contract. |
| Investors Compensation Scheme Ltd v West Bromwich Building Society | House of Lords | Yes | [1998] 1 WLR 896 | England and Wales | Cited for principles of contract interpretation. |
| Sandar Aung v Parkway Hospitals Singapore Pte Ltd | N/A | Yes | [2007] 2 SLR 891 | Singapore | Cited as a local case adopting the principles of contract interpretation articulated in Investors Compensation Scheme Ltd v West Bromwich Building Society. |
| China Insurance Co (Singapore) Pte Ltd v Liberty Insurance Pte Ltd | N/A | Yes | [2005] 2 SLR 509 | Singapore | Cited as a local case adopting the principles of contract interpretation articulated in Investors Compensation Scheme Ltd v West Bromwich Building Society. |
| Tee Soon Kay v AG | Court of Appeal | Yes | [2007] 3 SLR 133 | Singapore | Cited for the importance of headings and marginal notes in the context of statutory interpretation. |
| Regina v Montila | House of Lords | Yes | [2004] 1 WLR 3141 | England and Wales | Cited for the principle that headings and sidenotes can be considered in construing a provision in an Act of Parliament. |
| Regina (Westminster City Council) v National Asylum Support Service | N/A | Yes | [2002] 1 WLR 2956 | England and Wales | Cited for the principle that language in all legal texts conveys meaning according to the circumstances in which it was used. |
| Oyston v Blaker | English Court of Appeal | Yes | [1996] 1 WLR 1326 | England and Wales | Cited regarding the use of headings and sidenotes in statutory interpretation (but ultimately disregarded as no longer good law). |
| Institut Pasteur v Genelabs Diagnostics Pte Ltd | High Court | Yes | [2000] SGHC 53 | Singapore | Cited for the principle that innocent infringement is no defence to a claim for infringement of a patent save for the question of whether damages are to be awarded. |
| Genelabs Diagnostics Pte Ltd v Institut Pasteur | Court of Appeal | Yes | [2001] 1 SLR 121 | Singapore | Affirmed the High Court decision in Institut Pasteur v Genelabs Diagnostics Pte Ltd. |
| Wilbec Plastics Limited v Wilson Dawes (Sales and Contracts) Limited | English High Court | Yes | [1966] RPC 513 | England and Wales | Discusses s 59(1) of the 1949 UK Act as a 'special defence' but recognizes its relief-limiting characteristic. |
| Hunter Manufacturing Pte Ltd v Soundtex Switchgear & Engineering Pte Ltd (No 1) | Court of Appeal | Yes | [2000] 1 SLR 401 | Singapore | Discusses innocent infringement in the context of s 3 of the United Kingdom Designs (Protection) Act as a 'defence' capable of reducing damages after infringement is established. |
| Main-Line Corporate Holdings Ltd v UOB Ltd | High Court | Yes | [2007] 1 SLR 1021 | Singapore | Discusses the pleading requirements for a defence of innocent infringement under s 69(1). |
| First Currency Choice Pte Ltd v Main-Line Corporate Holdings Limited | Court of Appeal | Yes | [2007] SGCA 50 | Singapore | Clarifies that the protection conferred by s 69(1) is not a 'defence' in the strict sense but an extenuating consideration that ameliorates unknowing transgressions in terms of remedy. |
| Schmittzehe v Roberts | English High Court | Yes | 72 RPC 122 | England and Wales | Discusses the equivalent provision of s 69(1) in the Registered Designs Act 1949 (UK) as a 'statutory protection' safeguarding the innocent person from some portion of the liability attached to the infringement of registered designs. |
| Benmax v Austin Motor Coy Ld | English High Court | Yes | 70 RPC 143 | England and Wales | Discusses s 59(1) of the 1949 UK Act as an 'absolute' protection securing an offender against an order awarding damages to a successful patentee. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 2005 Rev Ed) s 69(1) | Singapore |
| Patents Act (Cap 221, 2005 Rev Ed) s 67(1) | Singapore |
| Patents Act 1977 (c 37) (UK) s 62 | United Kingdom |
| Patents and Designs (Amendment) Act 1907 (c 28) (UK) s 27 | United Kingdom |
| Patents and Designs Act 1907 (c 29) (UK) s 33 | United Kingdom |
| Patents Act 1949 (c 87) (UK) s 59(1) | United Kingdom |
15. Key Terms and Keywords
15.1 Key Terms
- Innocent Infringement
- Account of Profits
- Defence to Liability
- Relief Awardable
- Consent Judgment
- Patent Infringement
- Statutory Interpretation
- Res Judicata
15.2 Keywords
- patent
- infringement
- innocent infringement
- defence
- liability
- account of profits
- Singapore
- Patents Act
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 90 |
| Innocent Infringement | 75 |
| Statutory Interpretation | 40 |
| Res Judicata | 30 |
| Estoppel | 20 |
| Contract Law | 10 |
16. Subjects
- Intellectual Property
- Patent Law
- Civil Procedure
- Statutory Interpretation