Seiko Epson Corp v Sepoms Technology: Patent Infringement & Accounting for Profits

Seiko Epson Corporation sued Sepoms Technology Pte Ltd and JAL Technology (S) Pte Ltd in the High Court of Singapore for patent infringement. The defendants denied infringement and challenged the patent's validity. A consent judgment was reached, finding the patent valid and infringed, ordering an account of profits, and other remedies. The plaintiff appealed the Assistant Registrar's decision refusing to order the defendants to file a further account for the period 20 February 1998 to 30 September 2005. Lai Siu Chiu J dismissed the appeal, finding that the defendants could assert a lack of knowledge of the patent to limit the accounting period.

1. Case Overview

1.1 Court

High Court of Singapore

1.2 Outcome

Appeal dismissed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Seiko Epson sues Sepoms Technology for patent infringement. The court addresses whether Sepoms can limit the infringement period for accounting purposes.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Sepoms Technology Pte LtdDefendant, AppellantCorporationAppeal WonWon
JAL Technology (S) Pte LtdDefendant, AppellantCorporationAppeal WonWon
Seiko Epson CorpPlaintiff, RespondentCorporationAppeal dismissedLost

3. Judges

Judge NameTitleDelivered Judgment
Lai Siu ChiuJudgeYes

4. Counsels

Counsel NameOrganization
Yeong Zee KinRajah & Tann
Koh Chia LingAlban Tay Mahtani & de Silva
Ang Kai HsiangAlban Tay Mahtani & de Silva

4. Facts

  1. Seiko Epson is a manufacturer of ink jet printers.
  2. Sepoms Technology and JAL Technology manufacture and sell compatible and refillable ink cartridges.
  3. Seiko Epson sued Sepoms and JAL for patent infringement of Singapore Patent No. SG46602.
  4. The defendants denied infringement and challenged the validity of the patent.
  5. A consent judgment was reached, finding the patent valid and infringed.
  6. The consent judgment ordered an account of profits by the defendants.
  7. The defendants filed accounts from the date of the writ to 31 July 2006.
  8. The defendants claimed they first acquired knowledge of the patent on 7 October 2005.
  9. The plaintiff contended the infringement period was from the date of publication of the patent until the date of the consent judgment.

5. Formal Citations

  1. Seiko Epson Corp v Sepoms Technology Pte Ltd, Suit 699/2005, RA 375/2006, [2007] SGHC 81

6. Timeline

DateEvent
Patent publication date
Lawsuit filed
Consent judgment reached
Defendants filed accounts in court
Plaintiff filed an objection against accounts
Chou Khow Shing filed Affidavit of Evidence-in-Chief
Appeal dismissed

7. Legal Issues

  1. Patent Infringement
    • Outcome: The court held that the defendants could assert a lack of knowledge of the patent to limit the accounting period.
    • Category: Substantive
  2. Liability to Account for Profits
    • Outcome: The court held that the defendants could limit the period of infringement for accounting purposes based on their knowledge of the patent.
    • Category: Substantive
  3. Issue Estoppel
    • Outcome: The court held that the consent judgment was not a final and conclusive judgment on the merits, so issue estoppel did not apply.
    • Category: Procedural
    • Related Cases:
      • [2005] 3 SLR 157

8. Remedies Sought

  1. Account of Profits
  2. Injunction
  3. Delivery Up of Infringing Articles
  4. Monetary Damages
  5. Interest
  6. Costs

9. Cause of Actions

  • Patent Infringement

10. Practice Areas

  • Patent Infringement
  • Commercial Litigation

11. Industries

  • Manufacturing
  • Technology

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Lee Tat Development Pte Ltd v Management Corporation of Grange Heights Strata Title No. 301 (No. 2)Court of AppealYes[2005] 3 SLR 157SingaporeCited for the meaning of issue estoppel.
Wilbec Plastics Limited v Wilson Dawes (Sales and Contracts) LimitedN/AYes[1966] RPC 513N/ACited for the proposition that it is a question of fact when an infringer acquired the requisite knowledge.
Hunter Manufacturing Pte Ltd v Soundtex Switchgear & Engineering Pte LtdN/AYes[2001] 1 SLR 401SingaporeCited for the proposition that it is a question of fact when an infringer acquired the requisite knowledge.
Lancer Boss Ltd v Henley Forklift Co LtdN/AYes[1975] RPC 307N/ACited for the proposition that the test to be applied was objective.
Trek Technology(Singapore) Pte Ltd v FE Global Electronics Pte Ltd & Ors (No. 2)N/AYes[2005] 3 SLR 389SingaporeCited for the proposition that the court must make a finding on the facts to determine when the infringer acquired the requisite knowledge.
Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd & First Currency Choice Pte LtdN/AYes[2007] 1 SLR 1021SingaporeCited to show that the plea of innocent infringement had already been raised by the defendants in their defence and counterclaim.
Raymond Construction Pte Ltd v Low Yang Tong & AnorHigh CourtYes[1996] SGHC 136SingaporeCited for the proposition that findings of fact should not in any case be made at interlocutory hearings.

13. Applicable Rules

Rule Name
O 43 r 3 of the Rules of Court (2004 revised edition)
O 38 r 1 of the Rules of Court (2004 revised edition)
O 38 r 8 of the Rules of Court (2004 revised edition)
O 43 r 1 of the Rules of Court (2004 revised edition)

14. Applicable Statutes

Statute NameJurisdiction
Patents Act (Cap 221, 2005 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Patent Infringement
  • Account of Profits
  • Consent Judgment
  • Innocent Infringement
  • Issue Estoppel
  • Requisite Knowledge
  • Patent
  • Ink Cartridges

15.2 Keywords

  • Patent Infringement
  • Accounting for Profits
  • Innocent Infringement
  • Singapore
  • High Court

17. Areas of Law

Area NameRelevance Score
Patents90
Innocent Infringement70
Commercial Disputes40
Contract Law30

16. Subjects

  • Intellectual Property
  • Patent Law
  • Civil Procedure