Sun Electric v Sunseap: Patent Validity, Groundless Threats, and Revocation
Sun Electric Pte Ltd sued Sunseap Group Pte Ltd, Sunseap Energy Pte Ltd, and Sunseap Leasing Pte Ltd in the High Court of Singapore, alleging patent infringement. The defendants, collectively known as Sunseap, denied infringement and counterclaimed for revocation of the patent and remedies for groundless threats. The plaintiff applied to strike out parts of the Defence and Counterclaim and the Particulars of Objection. The court declined to strike out the paragraphs in the Defence and Counterclaim and the Particulars of Objection and ordered the Defendants to amend paragraphs 4, 14 and 16 of the Defence and Counterclaim.
1. Case Overview
1.1 Court
High Court of the Republic of Singapore1.2 Outcome
Application to strike out parts of the Defence and Counterclaim and the Particulars of Objection is declined. The Defendants are ordered to amend paragraphs 4, 14 and 16 of the Defence and Counterclaim.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Sun Electric sues Sunseap for patent infringement. Sunseap counterclaims for groundless threats and patent revocation. The court considers striking out parts of Sunseap's defense.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Sun Electric Pte Ltd | Plaintiff, Applicant | Corporation | Application Dismissed | Lost | |
| Sunseap Group Pte Ltd | Defendant, Respondent | Corporation | Successful Defence | Won | |
| Sunseap Energy Pte Ltd | Defendant, Respondent | Corporation | Successful Defence | Won | |
| Sunseap Leasing Pte Ltd | Defendant, Respondent | Corporation | Successful Defence | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Justin Yeo | Assistant Registrar | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Jevon Louis | Ravindran Associates |
| Leow Jiamin | Rajah & Tann Singapore LLP |
4. Facts
- Sun Electric Pte Ltd is the registered proprietor of a Singapore patent.
- The patent relates to a power grid system and method of determining power consumption.
- Sunseap Group Pte Ltd is the parent company of Sunseap Energy Pte Ltd and Sunseap Leasing Pte Ltd.
- Sun Electric alleges that Sunseap infringed claims 1, 3, 4, 5, 7, 9, 10, and 11 of the patent.
- Sunseap denies infringement and counterclaims for revocation and groundless threats.
- Sunseap puts the validity of the entire patent, including unasserted claims, in issue.
5. Formal Citations
- Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others, Suit No 1229 of 2016 (Summons No 1221 of 2017), [2017] SGHCR 6
6. Timeline
| Date | Event |
|---|---|
| Singapore Patent Application No.10201405341Y was filed | |
| Singapore Patent Application No.10201405341Y was granted | |
| Suit No 1229 of 2016 filed | |
| Particulars of Objection dated filed | |
| Plaintiff’s Particulars of Infringement (Amendment No 1) dated filed | |
| Defence and Counterclaim (Amendment No 1) dated filed | |
| Hearing | |
| Judgment reserved | |
| Judgment issued |
7. Legal Issues
- Patent Validity
- Outcome: The court held that the validity of the entire patent, including unasserted claims, can be put in issue in revocation proceedings brought as a counterclaim.
- Category: Substantive
- Related Cases:
- [2012] SGHC 7
- [2012] SGHC 16
- Groundless Threats of Patent Infringement
- Outcome: The court held that in groundless threats proceedings, the issue of validity of patent claims ought to be limited to the claims for which actual or potential infringement is alleged.
- Category: Substantive
- Striking Out Pleadings
- Outcome: The court declined to strike out the paragraphs in the Defence and Counterclaim and the Particulars of Objection.
- Category: Procedural
8. Remedies Sought
- Injunction
- Damages
- Declaration that threats are unjustifiable
- Order that the Patent be revoked
9. Cause of Actions
- Patent Infringement
- Groundless Threats
- Patent Revocation
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 for the principle that each claim in a patent stands on its own and must be assessed separately. |
| AstraZeneca AB (SE) v Sanofi-Aventis Singapore Pte Ltd | High Court | Yes | [2012] SGHC 16 | Singapore | Cited for the proposition that an action brought pursuant to s 12A of the Medicines Act is incompatible with a patent infringement action brought under s 67 of the Patents Act. |
| Singsung Pte Ltd v LG Electronics Pte Ltd (trading as S Electrical Trading) | High Court | Yes | [2016] 4 SLR 86 | Singapore | Cited in the context of the Copyright Act, for the proposition that the commencement of proceedings is, in itself, not a “threat”. |
| Siegfried Demel (Trading as Demotec Siegfried Demel) v C & H Jefferson (A Firm) and Another | N/A | Yes | [1999] FSR 204 | N/A | Cited as an example where the validity of entire patents have been put in issue in groundless threats proceedings. |
| Bean Innovations Pte Ltd and another v Flexon (Pte) Ltd | N/A | Yes | [2001] 2 SLR(R) 116 | Singapore | Cited as an example where the patent proprietor sought to defend itself against groundless threats proceedings by relying on only one claim of its patent. |
| Energenics Pte Ltd v Musse Singapore Pte Ltd and another suit | High Court | Yes | [2013] SGHCR 21 | Singapore | Cited for the distinction between legislative provisions which refer to a single point of entry and one where there is a choice of points of entry. |
| Main-Line Corporate Holdings Ltd v DBS Bank Ltd | High Court | Yes | [2012] 4 SLR 147 | Singapore | Cited as an example of cases where revocation proceedings have been brought by way of a counterclaim and dealt with by the High Court. |
| 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 an example of cases where revocation proceedings have been brought by way of a counterclaim and dealt with by the High Court. |
| V-Pile Technology (Luxembourg) SA and others v Peck Brothers Construction Pte Ltd | High Court | Yes | [1997] 3 SLR(R) 981 | Singapore | Cited as an example of cases where revocation proceedings have been brought by way of a counterclaim and dealt with by the High Court. |
13. Applicable Rules
| Rule Name |
|---|
| O 18 r 19(1)(a) to (d) of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) |
| O 56 r 1(3) of the Rules of Court |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, Rev Ed 2005) | Singapore |
| Rules of Court (Cap 322, R 5, 2006 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Patent
- Infringement
- Revocation
- Groundless threats
- Unasserted claims
- Validity
- Counterclaim
- Particulars of Objection
15.2 Keywords
- patent
- infringement
- revocation
- groundless threats
- Sun Electric
- Sunseap
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 90 |
| Revocation | 70 |
| Inventions | 70 |
| Validity | 60 |
| Groundless Threats | 60 |
| Defence | 50 |
| Civil Procedure | 40 |
| Striking out | 40 |
| Pleadings | 30 |
| Company Law | 10 |
16. Subjects
- Intellectual Property
- Patents
- Civil Procedure