Ship's Equipment Centre Bremen GmbH v Fuji Trading: Patent Infringement & Validity of Twistlock Coupling Device

In Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd, the High Court of Singapore addressed a patent infringement suit (Suit No 315 of 2010 and Suit No 738 of 2011) concerning patents for a twistlock coupling device used to secure shipping containers. Ship’s Equipment Centre Bremen GmbH, the plaintiff, alleged patent infringement against Fuji Trading (Singapore) Pte Ltd and others. The defendants denied infringement and counterclaimed to invalidate the patents for lack of novelty. The plaintiff then applied to amend the patent claims under s 83(1) of the Patents Act. Lee Seiu Kin J dismissed the plaintiff’s applications to amend the patents, finding that the proposed amendments did not meet the requirements of the Patents Act and that the court should exercise its discretion to reject the amendments due to the plaintiff's undue delay and attempts to gain an unfair advantage.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Plaintiff's applications to amend the patents dismissed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Singapore High Court case concerning patent infringement of a twistlock coupling device. The court dismissed the plaintiff's application to amend the patents.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Ship’s Equipment Centre Bremen GmbHPlaintiffCorporationApplications to amend the patents dismissedLost
Fuji Trading (Singapore) Pte LtdDefendantCorporationPlaintiff's applications to amend the patents dismissedWon
Fuji Transport Systems Co LtdDefendantCorporationPlaintiff's applications to amend the patents dismissedWon
Taiyo Seiki Iron Works Co LtdDefendantCorporationPlaintiff's applications to amend the patents dismissedWon
Moby Dick Supplies Pte LtdDefendantCorporationPlaintiff's applications to amend the patents dismissedWon
ISS Equipment Pte LtdDefendantCorporationPlaintiff's applications to amend the patents dismissedWon

3. Judges

Judge NameTitleDelivered Judgment
Lee Seiu KinJudgeYes

4. Counsels

Counsel NameOrganization
Low Chai ChongRodyk & Davidson LLP
Lee Ai MingRodyk & Davidson LLP
Alvin LimRodyk & Davidson LLP
Vernon ChuaRodyk & Davidson LLP
Tan Yiting GinaLegal Solutions LLC
Kwek Yiu Wing KevinLegal Solutions LLC
Jevon LouisRavindran Associates
Lau Kok KengRajah & Tann Singapore LLP
Wendy LowRajah & Tann Singapore LLP

4. Facts

  1. Ship's Equipment Centre Bremen GmbH owns Singapore Patents SG110370 and SG129978 for a twistlock coupling device.
  2. The Plaintiff commenced proceedings against Fuji Trading and others for infringing the patents by offering for sale a freight container coupling device.
  3. The Defendants denied infringement and counterclaimed to invalidate the patents for lack of novelty.
  4. The Plaintiff applied to amend the claims of the patents under s 83(1) of the Patents Act.
  5. The European Patent Office (EPO) found the equivalent European patent to be invalid.
  6. The Defendants opposed the proposed amendments, arguing they lacked clarity, conciseness, and support, and disclosed additional matter.
  7. The Plaintiff sought to amend the claims to correspond to the allowed claims of the corresponding European patent application.

5. Formal Citations

  1. Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd and others and another suit, Suit No 315 of 2010 (Summons No 2458 of 2013) and Suit No 738 of 2011 (Summons No 2455 of 2013), [2015] SGHC 159

6. Timeline

DateEvent
Plaintiff commenced Suit No 315 of 2010 against Fuji Trading (Singapore) Pte Ltd
Plaintiff filed amendments for European Patent
Opposition Division of EPO found European Patent to be invalid
Plaintiff joined the second and third defendants in Suit No 315 of 2010
Plaintiff filed notice of appeal with EPO
Plaintiff commenced infringement proceedings in Suit No 738 of 2011
Plaintiff obtained search order against defendants of Suit No 738 of 2011
Plaintiff filed statement of reasons
Proposed Amendments published in Patents Journal
Plaintiff gave notice to the Registrar of Patents of its intention to amend the 370 Patent in S 738/2011
Proposed Amendments published in Patents Journal
Plaintiff filed summons no 2458 of 2013 in S 315/2010 and summons no 2455 of 2013 in S 738/2011 to apply for leave to amend the 370 Patent
Quentin Loh J directed issue of amendment to be heard as preliminary issue
Appeal Board of the EPO decision that the equivalent of the Proposed Amended Claim 1 under the European Patent is not patentable due to lack of inventive step
Judgment reserved

7. Legal Issues

  1. Patent Infringement
    • Outcome: The court did not rule on infringement due to dismissing the application to amend the patent.
    • Category: Substantive
  2. Patent Amendment
    • Outcome: The court dismissed the plaintiff's applications to amend the patents.
    • Category: Procedural
    • Related Cases:
      • [1991] RPC 553
      • [2006] 1 SLR(R) 874
      • [2011] 4 SLR 429
      • [2013] 2 SLR 117
      • [2008] 1 SLR(R) 335
  3. Validity of Patent
    • Outcome: The court did not rule on the validity of the patent.
    • Category: Substantive
    • Sub-Issues:
      • Lack of Novelty
      • Inventive Step
  4. Undue Delay in Seeking Amendment
    • Outcome: The court found undue delay on the part of the plaintiff in applying to amend the 370 Patent.
    • Category: Procedural
    • Related Cases:
      • [1989] FSR 561
      • [1973] RPC 823
  5. Unfair Advantage
    • Outcome: The court found that the plaintiff sought to obtain unfair advantage from the 370 Patent.
    • Category: Procedural
    • Related Cases:
      • [1989] FSR 561
      • [1988] RPC 425

8. Remedies Sought

  1. Injunction
  2. Damages

9. Cause of Actions

  • Patent Infringement

10. Practice Areas

  • Patent Litigation
  • Intellectual Property Litigation

11. Industries

  • Shipping
  • Manufacturing

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Main-Line Corporate Holdings Ltd v DBS Bank LtdHigh CourtYes[2012] 4 SLR 147SingaporeCited for the principle that EPO decisions are of persuasive value but not binding on Singapore courts.
First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appealCourt of AppealYes[2008] 1 SLR(R) 335SingaporeCited for the principle that different jurisdictions may have different views on the same issue regarding patent rights.
Bonzel (T) v Intervention Limited (No 3)N/AYes[1991] RPC 553N/ACited for the test to determine whether amendments to a patent's specification would disclose additional matter.
FE Global Electronics Pte Ltd and others v Trek Technology (Singapore) Pte Ltd and another appealCourt of AppealYes[2006] 1 SLR(R) 874SingaporeCited for endorsing the Bonzel test and for the purposive approach to patent construction.
Martek Biosciences Corp v Cargill International Trading Pte LtdHigh CourtYes[2011] 4 SLR 429SingaporeCited for applying the Bonzel test.
Novartis AG and another v Ranbaxy (Malaysia) Sdn BhdHigh CourtYes[2013] 2 SLR 117SingaporeCited for applying the Bonzel test and elaborating on it with reference to European Central Bank v Document Security Systems Incorporated.
European Central Bank v Document Security Systems IncorporatedHigh Court of Justice (England and Wales)Yes[2007] EWHC 600 (Pat)England and WalesCited for elaborating on the Bonzel test.
Siegfried Demel v JeffersonN/AYes[1999] FSR 204N/ACited for the principle that the extension of the scope of an individual claim per se is not objectionable if it does not result in the extension of the protection of the patent.
Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and others and other suitsHigh CourtYes[2005] 3 SLR(R) 389SingaporeCited for the principle that claims must be clear and concise and supported by the description.
Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GmbHN/AYes[2014] RPC 6N/ACited for the requirement that claims must be clear and concise to provide legal certainty.
Catnic Components Limited and another v Hill and Smith LimitedHouse of LordsYes[1982] RPC 183United KingdomCited for the principle that a patent specification should be given a purposive construction rather than a purely literal one.
V-Pile Technology (Luxembourg) SA and others v Peck Brothers Construction Pte LtdHigh CourtYes[1997] 3 SLR(R) 981SingaporeCited for the principle that a purposive approach towards patent construction would allow one to refer to the description and the drawings when interpreting the claims.
Ng Kok Cheng v Chua Say TiongHigh CourtYes[2001] 2 SLR(R) 326SingaporeCited for the principle that it is legitimate in approaching the construction of the claims to read the specification as a whole.
Bean Innovations Pte Ltd and another v Flexon (Pte) LtdCourt of AppealYes[2001] 2 SLR(R) 116SingaporeCited for the principle that the claims as stated in the specification of the patent are the principal determinant of the scope of the monopoly.
Merck & Co Inc v Generics (UK) LtdN/AYes[2004] RPC 31N/ACited for the principle that the purpose of a patent is to convey to the public what the patentee considers to be his invention and what monopoly he has chosen to obtain.
Rosedale Associated Manufacturers Ld v Carlton Tyre Saving Coy LdN/AYes[1960] RPC 59N/ACited for the principle that the claims and the description are to be read together and construed contextually.
Kirin-Amgen Inc v Hoechst Marion Roussel LtdN/AYes[2005] RPC 9N/ACited for the principle that there is no presumption about the width of the claims.
Virgin v Premium Aircraft InteriorsN/AYes[2010] RPC 8N/ACited for the principle that reference numerals appearing in a claim, while helpful, are irrelevant to construction.
B & R Relays Ltd’s ApplicationN/AYes[1985] RPC 1N/ACited for the principle that if there is nothing in the patent application to support a proposed amendment to the claim, then the proposed amendment would also be considered as having disclosed additional matter.
Raychem Ltd’s ApplicationN/AYes[1986] RPC 547N/ACited for the principle that if there is nothing in the patent application to support a proposed amendment to the claim, then the proposed amendment would also be considered as having disclosed additional matter.
Strix Ltd v Otter Controls LtdN/AYes[1995] RPC 607N/ACited for the principle that an amendment would not disclose additional matter where a feature is evident from the reading of the specification in conjunction with the drawings included in the patent.
Mühlbauer AG v Manufacturing Integration Technology LtdCourt of AppealYes[2010] 2 SLR 724SingaporeCited for the principle that the relevant test is one of actual as oppose to appearance of partiality.
Contour Optik Inc and others v Pearl’s Optical Co Pte Ltd and anotherHigh CourtYes[2002] SGHC 238SingaporeCited for the principle that the construction of a patent is a matter for the court and not the expert witness.
Smith Kline and French Laboratories Limited v Evans Medical LimitedN/AYes[1989] FSR 561N/ACited for the guidelines as to the exercise of the discretion concerning patent amendment.
Matbro Limited v Michigan (Great Britain) LimitedN/AYes[1973] RPC 823N/ACited for the principle that mere delay is not, of itself, necessarily sufficient to justify refusal of amendment.
Autoliv Development AB’s PatentN/AYes[1988] RPC 425N/ACited for the principle that a patentee who delays amending their patent and sends out threatening letters to alleged infringers will not be allowed to amend.
Kimberly-Clark Worldwide Inc v Procter & Gamble Limited and anotherN/AYes[2000] FSR 235N/ACited for the underlying rationale of the discretion to refuse an application to amend, which is the desire to protect the public against abuse of monopoly.
Instance v CCL Label IncN/AYes[2002] FSR 27N/ACited for the principle that a patentee cannot normally be criticised for making decisions on the need to amend his patent on the basis of the advice received from a competent patent agent.
Zipher Ltd v Markem Systems LtdN/AYes[2009] FSR 1N/ACited for the principle that the EPO would have no discretion over whether an amendment should be granted based on the conduct of the patentee.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Patents Act (Cap 221, 2005 Rev Ed)Singapore
s 83(1) of the Patents ActSingapore
s 84(3)(a) of the Patents ActSingapore
s 84(3)(b) of the Patents ActSingapore
ss 25(5)(b) of the Patents ActSingapore
ss 25(5)(c) of the Patents ActSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • Twistlock
  • Coupling device
  • Patent infringement
  • Patent amendment
  • Lack of novelty
  • Sloping shoulder
  • Locking catch
  • Corner fitting
  • Longitudinal direction
  • Lead-in chamfer
  • Additional matter
  • Undue delay
  • Unfair advantage

15.2 Keywords

  • patent
  • infringement
  • amendment
  • twistlock
  • coupling device
  • shipping container

17. Areas of Law

Area NameRelevance Score
Patents90
Shipping Law30
Commercial Disputes20
Contract Law20

16. Subjects

  • Patent Law
  • Intellectual Property
  • Shipping Containers