Element Six Technologies Ltd v IIa Technologies Pte Ltd: Patent Infringement, Novelty, and Pleadings
In Element Six Technologies Ltd v IIa Technologies Pte Ltd, the High Court of Singapore addressed applications for further and better particulars in a patent infringement suit. Element Six, the plaintiff, alleged infringement of its patents related to CVD diamond production. IIa Technologies, the defendant, counterclaimed for revocation based on lack of novelty and inventive step. The court allowed Element Six's requests for particulars on prior art combinations and specific passages but disallowed IIa Technologies' requests regarding commercial success, emphasizing the distinction between particulars and discovery.
1. Case Overview
1.1 Court
High Court of the Republic of Singapore1.2 Outcome
Combination Requests and Passage Requests allowed; Commercial Success Requests disallowed.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Patent dispute over CVD diamonds. The court addressed requests for further particulars regarding prior art combinations, specific passages, and commercial success.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Element Six Technologies Ltd | Plaintiff, Applicant, Respondent | Corporation | Combination Requests and Passage Requests allowed | Partial | Melvin Pang, Nicholas Ong |
| IIa Technologies Pte Ltd | Defendant, Respondent, Applicant | Corporation | Commercial Success Requests disallowed | Partial | Meryl Koh, Javier Yeo |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Justin Yeo | Assistant Registrar | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Melvin Pang | Amica Law LLC |
| Nicholas Ong | Amica Law LLC |
| Meryl Koh | Drew & Napier LLC |
| Javier Yeo | Drew & Napier LLC |
4. Facts
- Element Six is the proprietor of Singapore Patent Numbers 115872 and 110508.
- IIa Technologies manufactures and grows CVD diamonds.
- Element Six alleged that IIa Technologies infringed 33 claims in the '872 Patent and 24 claims in the '508 Patent.
- IIa Technologies counterclaimed to revoke the patents, alleging lack of novelty, inventive step, and insufficient disclosure.
- The Defendant raised separate lists of prior art to challenge each of the asserted claims in the Patents.
- The Plaintiff averred that the ‘872 Patent’s inventiveness was evidenced by the commercial success of its single crystal CVD diamond products.
5. Formal Citations
- Element Six Technologies Ltd v IIa Technologies Pte Ltd, HC/S 26 of 2016, [2017] SGHCR 16
6. Timeline
| Date | Event |
|---|---|
| Suit filed (Suit No 26 of 2016) | |
| 16th Affidavit of Mehta Vishal Jatin filed | |
| 6th Affidavit of Susan Fletcher-Watts filed | |
| Hearing for SUM 2929 and SUM 2935 | |
| Hearing for SUM 2929 and SUM 2935 | |
| Further submissions tendered to court | |
| Oral judgment rendered |
7. Legal Issues
- Patent Infringement
- Outcome: The court did not rule on infringement itself, but addressed the scope of particulars required in relation to infringement claims.
- Category: Substantive
- Patent Validity (Novelty)
- Outcome: The court addressed the scope of particulars required in relation to a challenge to novelty based on prior art.
- Category: Substantive
- Patent Validity (Inventive Step/Obviousness)
- Outcome: The court addressed the scope of particulars required in relation to a challenge to inventive step based on prior art combinations.
- Category: Substantive
- Pleadings (Further and Better Particulars)
- Outcome: The court clarified the requirements for providing further and better particulars in patent cases, specifically regarding prior art combinations, specific passages, and commercial success.
- Category: Procedural
8. Remedies Sought
- Injunction
- Damages
- Revocation of Patent
9. Cause of Actions
- Patent Infringement
- Patent Revocation
10. Practice Areas
- Patent Litigation
- Commercial Litigation
11. Industries
- Manufacturing
- Gems and Jewellery
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Dien Ghin Electronic (S) Pte Ltd v Khek Tai Ting (trading as Soon Heng Digitax) | High Court | Yes | [2011] 3 SLR 227 | Singapore | Cited regarding mosaicking of prior art to demonstrate obviousness and invalidate a patent. |
| Mills & Rockley (Electronics) Limited v Technograph Printed Circuits Limited | N/A | Yes | [1971] FSR 188 | England and Wales | Cited for the concept of 'mosaicking' and the standard for combining prior art by an 'unimaginative man with no inventive capacity'. |
| Sharpe & Dohme Inc v Boots Pure Drug Co Ltd | N/A | Yes | (1927) 44 RPC 367 | England and Wales | Cited regarding an exception to the rule that mosaicking is generally permitted only in relation to obviousness. |
| Lee Tat Cheng v Maka GPS Technologies Pte Ltd | High Court | Yes | [2017] SGHC 48 | Singapore | Cited regarding the role of experts in analyzing the obviousness of an invention. |
| Jason Swist and Crude Solutions Limited et al v MEG Energy Corp | N/A | Yes | (22 September 2015) | Canada | Cited for the proposition that matters relating to combinations of prior art are matters of expert evidence; ultimately not relied upon. |
| AstraZeneca AB(SE) v Sanofi-Aventis Singapore Pte Ltd | High Court | Yes | [2013] SGHCR 7 | Singapore | Cited for the general proposition that expert evidence is usually more suited to a later stage of the proceedings. |
| Throttle Control Tech Inc v Precision Drilling Corp | N/A | Yes | (2010) FC 1085 | Canada | Cited for the approach of identifying any alleged combination of prior art which, when read together, support an allegation of obviousness. |
| Fowler v Gaul | N/A | Yes | (1886) 3 RPC 247 | England and Wales | Cited for the principle that sufficient information must be given to identify the part of the prior art which is relied on. |
| Heathfield v Greenway | N/A | Yes | (1894) 11 RPC 17 | England and Wales | Cited for the principle that it may be necessary for the defendant to specify the pages and lines relied on, particularly in the case of complicated prior art. |
| Sidebottom v Fielden | N/A | Yes | [1891] RPC 266 | England and Wales | Cited regarding a request to identify the page and line references in a piece of prior art should not be allowed; distinguished on its facts. |
| Holliday v Heppenstall | N/A | Yes | [1889] RPC 320 | England and Wales | Cited regarding a request to identify the page and line references in a piece of prior art should not be allowed; distinguished on its facts. |
| Ransburg Co v Aerostyle Ltd | N/A | Yes | [1966] FSR 26 | England and Wales | Cited regarding the approach to assessing infringement of dependent claims. |
| John Deks Limited v Aztec Washer Company | N/A | Yes | [1989] RPC 413 | England and Wales | Cited regarding the particulars required for a commercial success claim, including identifying defects in prior art and long-felt want. |
| Schlumberger Holdings Ltd v Electromagnetic Geoservices AS | England and Wales Court of Appeal | Yes | [2010] EWCA 819 | England and Wales | Cited for setting out a detailed list of matters relevant to a commercial success claim, including defects in prior art and long-felt want. |
| EA Apartments Pte Ltd v Tan Bek | N/A | Yes | [2017] 3 SLR 559 | Singapore | Cited for the definition of material facts in pleadings. |
| Muhlbauer AG v Manufacturing Integration Technology Ltd | Court of Appeal | Yes | [2010] 2 SLR 724 (CA) | Singapore | Cited for observations on the role of commercial success in patent disputes. |
13. Applicable Rules
| Rule Name |
|---|
| Order 18 Rule 12 of the Rules of Court |
| Order 18 Rule 7 of the Rules of Court |
| Order 87A of the Rules of Court |
| Order 87A Rule 2 of the Rules of Court |
| Order 87A Rule 3 of the Rules of Court |
| Order 87A Rule 3(3) of the Rules of Court |
| Order 87A Rule 3(5) of the Rules of Court |
| Order 87A Rule 5 of the Rules of Court |
| Order 87A Rule 5(1) of the Rules of Court |
| Order 87A Rule 5(2) of the Rules of Court |
| Order 87A Rule 5(3) of the Rules of Court |
| Order 87A Rule 5(3) of the Rules of Court |
| Order 87A Rule 3(1) of the Rules of Court |
| Order 87A Rule 3(2) of the Rules of Court |
| Order 87A Rule 3(5) of the Rules of Court |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Rules of Court (Cap 322, R 5, 2014 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- CVD diamond
- Prior art
- Mosaicking
- Obviousness
- Novelty
- Further and better particulars
- Commercial success
- Pleadings
- Patent infringement
- Patent validity
- Combination requests
- Passage requests
- Commercial success requests
15.2 Keywords
- patent
- infringement
- CVD diamond
- pleadings
- particulars
- novelty
- obviousness
- commercial success
16. Subjects
- Patent Law
- Civil Procedure
- Intellectual Property
- Pleadings
17. Areas of Law
- Patent Law
- Civil Procedure
- Intellectual Property Law