Sun Electric Pte Ltd v Sunseap Group Pte Ltd: Patent Revocation & High Court Jurisdiction
Sun Electric Pte Ltd sued Sunseap Group Pte Ltd, Sunseap Energy Pte Ltd, and Sunseap Leasing Pte Ltd in the High Court of Singapore for patent infringement. The defendants counterclaimed for revocation of the patent. The plaintiff appealed against the Assistant Registrar's decision, arguing that the High Court lacks jurisdiction to hear revocation proceedings at first instance. George Wei J allowed the appeal, holding that the High Court does not have the jurisdiction to hear revocation proceedings or to grant an order for revocation by counterclaim.
1. Case Overview
1.1 Court
High Court of Singapore1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Appeal on whether the High Court has jurisdiction to hear patent revocation proceedings. The court held it does not have jurisdiction.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Sun Electric Pte Ltd | Plaintiff, Appellant | Corporation | Appeal Allowed | Won | |
| Sunseap Group Pte Ltd | Defendant, Respondent | Corporation | Appeal Dismissed | Lost | |
| Sunseap Energy Pte Ltd | Defendant, Respondent | Corporation | Appeal Dismissed | Lost | |
| Sunseap Leasing Pte Ltd | Defendant, Respondent | Corporation | Appeal Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| George Wei | Judge | Yes |
4. Counsels
4. Facts
- Sun Electric Pte Ltd is the registered proprietor of a Singapore patent for a power grid system.
- Sunseap Group Pte Ltd, Sunseap Energy Pte Ltd, and Sunseap Leasing Pte Ltd are accused of infringing the patent.
- Sun Electric sued Sunseap for patent infringement in Suit No 1229 of 2016.
- Sunseap denied infringement and counterclaimed for revocation of the patent.
- The Assistant Registrar allowed the counterclaim for revocation to proceed.
- Sun Electric appealed the Assistant Registrar's decision.
- The key issue on appeal was whether the High Court has jurisdiction to hear patent revocation proceedings at first instance.
5. Formal Citations
- Sun Electric Pte LtdvSunseap Group Pte Ltd and others, Suit No 1229 of 2016(Registrar’s Appeal No 135 of 2017), [2017] SGHC 232
6. Timeline
| Date | Event |
|---|---|
| Patent Application filed | |
| Patent granted | |
| Lawsuit filed | |
| Amended defence and counterclaim filed | |
| Hearing before the Assistant Registrar | |
| Assistant Registrar delivered decision | |
| Notice of Appeal filed | |
| Judgment reserved | |
| Judgment issued |
7. Legal Issues
- Jurisdiction of the High Court to hear patent revocation proceedings
- Outcome: The High Court does not have original jurisdiction under the Patents Act to revoke a patent by way of a counterclaim in infringement proceedings.
- Category: Jurisdictional
- Validity of patent claims
- Outcome: The validity of the asserted claims was put in issue by way of the defence and the counterclaim for groundless threats of suit.
- Category: Substantive
8. Remedies Sought
- Declaration of Patent Invalidity
- Order for Patent Revocation
- Declaration of Non-Infringement
- Remedies for Groundless Threats
9. Cause of Actions
- Patent Infringement
10. Practice Areas
- Intellectual Property Litigation
- Patent Infringement
- Patent Revocation
11. Industries
- Energy
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Astrazeneca AB v Ranbaxy (Malaysia) Sdn Bhd | High Court | Yes | [2012] SGHC 7 | Singapore | Cited to support the principle that a defendant may only challenge claims that have been asserted by the plaintiff to have been infringed. |
| Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others | High Court | Yes | [2017] SGHCR 6 | Singapore | Cited as the Assistant Registrar's decision being appealed. |
| The Bunga Melati 5 | Singapore Court of Appeal | Yes | [2012] 4 SLR 546 | Singapore | Cited for the legal principles applicable to striking out pleadings. |
| Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd (formerly known as Contour Aerospace Ltd) | UK Supreme Court | Yes | [2013] UKSC 46 | United Kingdom | Cited for discussion on the interface between an in personam action, the principle of res judicata and revocation. |
| Re Nalpon Zero Geraldo Mario | Singapore Court of Appeal | Yes | [2013] 3 SLR 258 | Singapore | Cited for the proposition that the jurisdiction of a court is to be distinguished from its powers. |
| Warner-Lambert Co LLC v Novartis (Singapore) Pte Ltd | High Court | Yes | [2016] 4 SLR 252 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd and others and another suit | High Court | Yes | [2015] 4 SLR 781 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Bradley Lomas Electrolok Ltd and another v Colt Ventilation East Asia Pte Ltd and others | High Court | Yes | [1999] 2 SLR(R) 983 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Attorney-General v Ting Choon Meng and another appeal | High Court | Yes | [2017] 1 SLR 373 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd | Court of Appeal | Yes | [2008] 1 SLR(R) 335 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Peng Lian Trading Co v Contour Optik Inc and others | Court of Appeal | Yes | [2003] 2 SLR(R) 560 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Dextra Asia Co Ltd and another v Mariwu Industrial Co (S) Pte Ltd and another suit | High Court | Yes | [2006] 2 SLR(R) 154 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Main-Line Corporate Holdings Ltd v DBS Bank Ltd | High Court | Yes | [2012] 4 SLR 147 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Ng Kok Cheng v Chua Say Tiong | High Court | Yes | [2001] 2 SLR(R) 326 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Merck & Co, Inc v Pharmaforte Singapore Pte Ltd | Court of Appeal | Yes | [2000] 2 SLR(R) 708 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Lee Tat Cheng v Maka GPS Technologies Pte Ltd | High Court | Yes | [2017] SGHC 48 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| V-Pile Technology (Luxembourg) SA v Peck Brothers Construction Pte Ltd | High Court | Yes | [1997] 3 SLR(R) 981 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| ASM Assembly Automation Pte Ltd v Aurigin Technology Pte Ltd and others | High Court | Yes | [2010] 1 SLR 1 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd | Court of Appeal | Yes | [2017] SGCA 45 | Singapore | Cited as a case involving a counterclaim for revocation arising from infringement proceedings. |
| Berjaya Development Sdn Bhd v Keretapi Tanah Melayu Bhd | Court of Appeal of Malaysia | Yes | [2014] 4 MLJ 606 | Malaysia | Cited for the principle that the respondent must be made aware of the decision and issues being challenged so that he may have a fair opportunity to respond and address them during the appeal. |
| Public Prosecutor v Hwong Yu Hee & ors | High Court of Malaysia | Yes | [2015] 11 MLJ 138 | Malaysia | Cited for the principle that the respondent must be made aware of the decision and issues being challenged so that he may have a fair opportunity to respond and address them during the appeal. |
| Dato’ Wong Gek Meng v Pathmanathan a/l Mylvaganam & Ors | High Court of Malaysia | Yes | [1998] 5 MLJ 560 | Malaysia | Cited as an example of a case where the notice of appeal filed was struck out for failing to comply with the prescribed form. |
| Hong Kim Sui & anor v Malaysian Banking Bhd | High Court of Malaysia | Yes | [1971] 1 MLJ 289 | Malaysia | Cited for the principle that the failure to adhere to the prescribed form was treated as a mere irregularity which did not render the proceedings void. |
| Biogen Inc v Scitech Medical Products Pte Ltd and another | High Court | Yes | [1994] SGHC 188 | Singapore | Cited for describing the patent registration regime in Singapore at the time as a “patent by importation system” or a “re-registration system”. |
| Solite Impex Pte Ltd v Ang Lay See trading as Beng Poh Heng Trading and Others | High Court | Yes | [1997] SGHC 135 | Singapore | Cited for the relevant provisions of the Registration of United Kingdom Patents Act. |
| Ang Lay See and others v Solite Impex Pte Ltd | High Court | Yes | [1998] 1 SLR(R) 421 | Singapore | Cited for the alternative to commence proceedings in the UK to revoke the underlying UK patent. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| Rules of Court (Cap 322, R 5, 2014 Rev Ed) | Singapore |
| Patents Act 1994 (Act 21 of 1994) | Singapore |
| UK Patents Act 1977 (c 37) | United Kingdom |
| Registration of United Kingdom Patents Act (Cap 271, 1985 Rev Ed) | Singapore |
| Patent (Compulsory Licensing) Act (Cap 221, 1985 Rev Ed) | Singapore |
| Supreme Court of Judicature Act (Cap 322, 2007 Rev Ed) | Singapore |
| Registered Designs Act (Cap 266, 2005 Rev Ed) | Singapore |
| UK Designs (Protection) Act (Cap 339) | United Kingdom |
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Patent Revocation
- Jurisdiction
- Counterclaim
- Infringement Proceedings
- Original Jurisdiction
- Patents Act
- Registrar of Patents
- Validity
- Asserted Claims
- Unasserted Claims
15.2 Keywords
- Patent
- Revocation
- Jurisdiction
- High Court
- Singapore
- Infringement
- Counterclaim
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 90 |
| Civil Practice | 70 |
| Statutory Interpretation | 50 |
| Appellate Practice | 30 |
16. Subjects
- Intellectual Property
- Patent Law
- Civil Procedure
- Jurisdiction