Lee Tat Cheng v Maka GPS Technologies: Patent Infringement, Validity & Groundless Threat
In Lee Tat Cheng v Maka GPS Technologies Pte Ltd, the High Court of Singapore addressed a patent infringement claim concerning an in-vehicle camera system. Lee Tat Cheng, the plaintiff, alleged that Maka GPS Technologies infringed his patent by selling certain devices. Maka GPS Technologies counterclaimed, asserting the patent's invalidity and groundless threats of legal action. The court, presided over by George Wei J, found the patent valid, addressing novelty and inventive step, but ruled that Maka GPS Technologies' devices did not infringe the patent. The court granted an injunction to Maka GPS Technologies against Lee Tat Cheng's groundless threats of infringement proceedings.
1. Case Overview
1.1 Court
High Court of the Republic of Singapore1.2 Outcome
Judgment for Defendant on non-infringement; Injunction granted to Defendant against Plaintiff's groundless threats.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Patent infringement suit involving in-vehicle camera tech. Court found patent valid but not infringed; groundless threat claim succeeded.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Lee Tat Cheng | Plaintiff, Respondent | Individual | Claim Dismissed | Lost | |
| Maka GPS Technologies Pte Ltd | Defendant, Applicant | Corporation | Declaration of Non-Infringement Granted | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| George Wei | Judge | Yes |
4. Counsels
4. Facts
- The Plaintiff owns a patent for an automotive accident recordal system.
- The Defendant sells in-vehicle cameras marketed under the name 'RoadCorder'.
- The Plaintiff alleged that the Defendant's devices infringed the Plaintiff's patent.
- The Defendant claimed the Plaintiff's patent was invalid and counterclaimed for groundless threats.
- The Plaintiff sent two cease and desist letters to the Defendant prior to commencing the suit.
- The Defendant's devices can be powered by connecting to the car's battery through the cigarette lighter socket.
- The Plaintiff's patent uses an ignition monitor to detect voltage from the ignition system.
5. Formal Citations
- Lee Tat Cheng v Maka GPS Technologies Pte Ltd, Suit No 228 of 2015, [2017] SGHC 48
6. Timeline
| Date | Event |
|---|---|
| Patent in Suit filed | |
| Patent in Suit published | |
| Patent in Suit granted | |
| First cease and desist letter sent | |
| Second cease and desist letter sent | |
| Patent in Suit renewed | |
| Suit commenced | |
| Trial began | |
| Closing submissions filed | |
| Judgment reserved |
7. Legal Issues
- Patent Infringement
- Outcome: The court held that the Defendant's devices did not infringe the Plaintiff's patent.
- Category: Substantive
- Sub-Issues:
- Essential elements of claim
- Interpretation of claims
- Patent Validity
- Outcome: The court held that the Plaintiff's patent was valid.
- Category: Substantive
- Sub-Issues:
- Novelty
- Inventive step
- Groundless Threats of Infringement Proceedings
- Outcome: The court held that the Plaintiff's threats were unjustified and granted an injunction against the continuance of the threats.
- Category: Substantive
- Sub-Issues:
- Justification of threats
- Relief for groundless threats
8. Remedies Sought
- Delivery up of infringing devices
- Account of profits
- Damages
- Declaration of patent invalidity
- Injunction against threats
9. Cause of Actions
- Patent Infringement
- Groundless Threats of Infringement Proceedings
10. Practice Areas
- Patent Litigation
- Intellectual Property Litigation
11. Industries
- Automotive
- Technology
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Pfizer Ltd’s Patent | England and Wales High Court | Yes | [2001] FSR 16 | England and Wales | Cited to describe the attributes of the notional skilled reader. |
| Ng Kok Cheng v Chua Say Tiong | High Court | Yes | [2001] 2 SLR(R) 326 | Singapore | Cited regarding the skills and attributes of the notional skilled reader. |
| SmithKline Beecham plc and others v Apotex Europe Ltd and others | England and Wales Court of Appeal | Yes | [2004] All ER (D) 431 | England and Wales | Cited regarding the importance of the expert's reasons for their views. |
| Mühlbauer AG v Manufacturing Integration Technology Ltd | Court of Appeal | Yes | [2010] 2 SLR 724 | Singapore | Cited regarding the reality that many experts would not themselves fall within the category of the notional skilled reader. |
| Vita Health Laboratories Pte Ltd v Pang Seng Meng | High Court | Yes | [2004] SLR(R) 162 | Singapore | Cited regarding the expert's duty to the court. |
| Catnic Components Limited and Another v Hill & Smith Limited | England and Wales Court of Appeal | Yes | [1982] RPC 183 | England and Wales | Cited regarding the interpretation of patent specifications. |
| First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal | Court of Appeal | Yes | [2008] 1 SLR(R) 335 | Singapore | Cited regarding the construction of patent claims. |
| Kirin-Amgen Inc v Hoechst Marion Roussel Ltd | House of Lords | Yes | [2005] RPC 9 | United Kingdom | Cited regarding the purposive interpretation of patent claims. |
| FE Global Electronics Pte Ltd and others v Trek Technology (Singapore) Pte Ltd and another appeal | Court of Appeal | Yes | [2006] 1 SLR(R) 874 | Singapore | Cited regarding the purposive interpretation of patent claims. |
| The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited and others | England and Wales Court of Appeal | Yes | [1972] RPC 457 | England and Wales | Cited regarding the interpretation of prior art. |
| Synthon BV v SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent | House of Lords | Yes | [2006] RPC 10 | United Kingdom | Cited regarding the relationship between disclosure and enablement concepts. |
| Asahi Kasei Kogyo KK’s Application | House of Lords | Yes | [1991] RPC 485 | United Kingdom | Cited regarding the requirement of enablement for anticipation. |
| Windsurfing International Inc v Tabur Marine (Great Britain) Ltd | England and Wales Court of Appeal | Yes | [1985] RPC 59 | England and Wales | Cited regarding the four-step test for inventive step. |
| Conor Medsystems Incorporated v Angiotech Pharmaceuticals Inc | House of Lords | Yes | [2008] UKHL 49 | United Kingdom | Cited regarding the importance of defining the claimed invention by reference to the claims in the assessment of inventive step. |
| Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd | Chancery Division | Yes | [1972] RPC 346 | England and Wales | Cited regarding the mosaicing of prior art. |
| Pozzoli SpA v BDMO SA | England and Wales Court of Appeal | Yes | [2007] FSR 37 | England and Wales | Cited regarding the assessment of inventive step. |
| Flexon (Pte) Ltd v Bean Innovations Pte Ltd and another | High Court | Yes | [2000] 3 SLR(R) 492 | Singapore | Cited regarding the determination of a 'threat'. |
| ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and others | Court of Appeal | Yes | [2010] 1 SLR 1 | Singapore | Cited regarding the burden of proof in groundless threat claims. |
| Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) | Court of Appeal | Yes | [2016] 4 SLR 86 | Singapore | Cited regarding the purpose of groundless threat claims. |
| Carflow Products (UK) Ltd v Linwood Securities (Birmingham) Ltd and Others | England and Wales High Court | Yes | [1998] FSR 691 | England and Wales | Cited regarding the proof of financial loss arising from a threat. |
13. Applicable Rules
| Rule Name |
|---|
| Rules of Court (Cap 322, R 5, 2014 Rev Ed) O 87A r 3(2) |
| Rules of Court O 40A r 2 |
| Rules of Court O 40A r 3 |
| Rules of Court O 40A r 3(2)(h) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| Patents Act s 66(1) | Singapore |
| Patents Act s 13(1) | Singapore |
| Patents Act s 14(1) | Singapore |
| Patents Act s 14(2) | Singapore |
| Patents Act s 15 | Singapore |
| Patents Act s 77 | Singapore |
| Patents Act s 77(1) | Singapore |
| Patents Act s 77(2) | Singapore |
| Patents Act s 77(3) | Singapore |
| Patents Act s 77(4) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Patent
- Infringement
- Validity
- Novelty
- Inventive step
- Groundless threats
- Ignition monitor
- Optical recorder
- System controller
- Prior art
- Automotive accident recordal system
15.2 Keywords
- patent
- infringement
- validity
- groundless threats
- in-vehicle camera
- automotive
- Singapore
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 90 |
| Infringement | 80 |
| Inventions | 70 |
| Validity | 60 |
| Inventive step | 50 |
| Novelty | 50 |
| Groundless threat | 40 |
| Trademarks | 10 |
| Contract Law | 5 |
| Commercial Disputes | 5 |
16. Subjects
- Patent Law
- Intellectual Property
- Technology
- Litigation