Element Six Technologies Ltd v IIa Technologies Pte Ltd: Patent Infringement & Validity Dispute

In Element Six Technologies Ltd v IIa Technologies Pte Ltd, before the High Court of Singapore, Justice Valerie Thean addressed the issue of costs following a judgment in a patent infringement suit. Element Six Technologies Ltd (E6) sued IIa Technologies Pte Ltd (IIa) for infringing Singapore Patent No 115872 (SG 872) and Singapore Patent No 110508 (SG 508). The court found that IIa was responsible for manufacturing infringing samples using SG 872, while SG 508 was invalid. The court awarded costs to E6 on a standard basis, finding them to be the overall winner, but did not award indemnity costs due to E6's own conduct during the proceedings.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

1.2 Outcome

Judgment for Plaintiff

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Patent infringement suit. Court found IIa Technologies infringed Element Six Technologies' patent SG 872 but SG 508 was invalid. Judgment for Element Six.

1.7 Decision Date

21 July 2020

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
IIa Technologies Pte Ltd	Defendant	Corporation	Counterclaim Dismissed	Lost	Meryl Koh Junning of Drew & Napier LLC Tony Yeo Soo Mong of Drew & Napier LLC Loo Fang Hui of Drew & Napier LLC Yeo Javier of Drew & Napier LLC Chiew Jing Yi of Drew & Napier LLC
Element Six Technologies Ltd	Plaintiff	Corporation	Judgment for Plaintiff	Won	Alvin Yeo of WongPartnership LLP Daniel Chan of WongPartnership LLP Pang Sze Ray Melvin of Amica Law LLC Ong Eu Jin of Amica Law LLC Daryl Kwok of WongPartnership LLP Vivian Seah of WongPartnership LLP Chan Kwok Chuan Jason of Amica Law LLC Nicholas Tong Wei Jie of Amica Law LLC

3. Judges

Judge Name	Title	Delivered Judgment
Valerie Thean	Judge	Yes

4. Counsels

Counsel Name	Organization
Meryl Koh Junning	Drew & Napier LLC
Tony Yeo Soo Mong	Drew & Napier LLC
Loo Fang Hui	Drew & Napier LLC
Yeo Javier	Drew & Napier LLC
Chiew Jing Yi	Drew & Napier LLC
Alvin Yeo	WongPartnership LLP
Daniel Chan	WongPartnership LLP
Pang Sze Ray Melvin	Amica Law LLC
Ong Eu Jin	Amica Law LLC
Daryl Kwok	WongPartnership LLP
Vivian Seah	WongPartnership LLP
Chan Kwok Chuan Jason	Amica Law LLC
Nicholas Tong Wei Jie	Amica Law LLC

4. Facts

Element Six Technologies Ltd (E6) designs, develops, and manufactures synthetic diamond products.
E6 owns Singapore Patent No 115872 (SG 872) and Singapore Patent No 110508 (SG 508).
SG 872 is a patent for the manufacture of synthetic diamond using chemical vapour deposition (CVD).
SG 508 is a patent to convert a coloured single crystal CVD diamond to another colour under suitable heat treatment conditions, a process referred to as annealing.
IIa Technologies Pte Ltd (IIa) deals in the manufacture of CVD diamond products and the colour treatment of diamonds.
E6 contended that three Samples that originated from IIa infringed SG 872 and SG 508.
IIa denied that the Samples originated from them, and counterclaimed that SG 872 and SG 508 were invalid.

5. Formal Citations

Element Six Technologies Ltd v IIa Technologies Pte Ltd, Suit No 26 of 2016, [2020] SGHC 140
Element Six Technologies Ltd v IIa Technologies Pte Ltd, , [2020] SGHC 26
, , [2017] SGHCR 16
, , [2018] SGHCR 13

6. Timeline

Date	Event
2016-01-01	Suit filed
2017-03-03	Offer to Settle served by IIa Technologies
2020-03-30	Oral argument
2020-03-30	Costs hearing
2020-07-22	Judgment issued

7. Legal Issues

Patent Infringement
- Outcome: The court found that IIa was responsible for manufacturing all three Samples and that IIa had used SG 872 to manufacture the Samples.
- Category: Substantive
- Sub-Issues:
  - Use of patented process
  - Origin of samples
Patent Validity
- Outcome: The court found that SG 872 was valid while SG 508 was not.
- Category: Substantive
- Sub-Issues:
  - Anticipation by prior art
  - Novelty
  - Inventiveness
Costs
- Outcome: The court awarded costs to E6 on a standard basis, finding them to be the overall winner, but did not award indemnity costs due to E6's own conduct during the proceedings.
- Category: Procedural
- Sub-Issues:
  - Issue-based approach
  - Indemnity costs
  - Reasonableness of conduct

8. Remedies Sought

Injunction
Delivery up and/or destruction of any infringing articles
Inquiry into damages or an account of profits

9. Cause of Actions

Patent Infringement

10. Practice Areas

Patent Infringement Litigation
Commercial Litigation

11. Industries

Technology
Manufacturing

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Wyno Marine Pte Ltd (in liquidation) v Lim Teck Cheng and Others	High Court	Yes	[1998] SGHC 340	Singapore	Cited for the principle that a valid offer to settle must have some semblance of reasonableness.
Man B&W Diesel S E Asia Pte Ltd and another v PT Bumi International Tankers and another appeal	Court of Appeal	Yes	[2004] 3 SLR(R) 267	Singapore	Cited for the principle that an offer to settle should be a serious and genuine offer which contains an element which would induce or facilitate settlement.
CCM Industrial Pte Ltd v Uniquetech Pte Ltd	Court of Appeal	Yes	[2009] 2 SLR(R) 20	Singapore	Cited for the proposition that the court should take into account the duration in which the plaintiff could have accepted the offer to settle and the benefits that could have accrued in that time.
Tullio Planeta v Maoro Andrea G	Court of Appeal	Yes	[1994] 2 SLR(R) 501	Singapore	Cited as the approach to awarding costs where a party is the overall winner but loses on some issues.
Re Elgindata Ltd (No 2)	N/A	Yes	[1992] 1 WLR 1207	England and Wales	Cited for the principles on which costs are to be awarded, including that costs should follow the event unless some other order should be made.
Cicada Cube Pte Ltd v National University Hospital (Singapore) Pte Ltd and another appeal	Court of Appeal	Yes	[2018] 2 SLR 940	Singapore	Cited as an example of a patent case where the successful party was awarded costs of the suit with a discount to reflect the issues on which it had lost.
Lee Tat Cheng v Maka GPS Technologies Pte Ltd	Court of Appeal	Yes	[2018] 1 SLR 856	Singapore	Cited as an example of a case where the successful party was given only a third of his costs because significant time and resources had been spent on an ultimately unsuccessful challenge.
Summit Property Limited v Pitmans (A Firm)	England and Wales Court of Appeal (Civil Division)	Yes	[2001] EWCA Civ 2020	England and Wales	Cited to define the issue-based approach where the court considers each issue independently and then considers which party has been successful on that issue.
Monsanto Technology LLC v Cargill International SA (No. 2)	English Patents Court	Yes	[2008] FSR 16	England and Wales	Cited to define the issue-based approach where the court still begins by considering who the successful party overall is, and any issues for which the successful party has been unsuccessful is assessed in that context.
Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd (No 2)	Federal Court of Australia	Yes	[2019] FCA 57	Australia	Cited as an example of the issue-based approach in the Summit sense, where it was not possible to identify a winning or losing party.
Schütz (UK) Limited v Werit UK Limited, Protechna SA	High Court of Justice (England and Wales)	Yes	[2010] EWHC 1197 (Pat)	England and Wales	Example of a case where the courts have taken the Monsanto approach.
Novartis AG and CIBA Vision AG v Johnson & Johnson Medical Limited and Johnson & Johnson Vision Care, Inc	High Court of Justice (England and Wales)	Yes	[2009] EWHC 2029 (Pat)	England and Wales	Example of a case where the courts have taken the Monsanto approach.
Omnipharm Limited v Merial	High Court of Justice (England and Wales)	Yes	[2012] EWHC 172 (Pat)	England and Wales	Example of a case where the courts have taken the Monsanto approach.
Vernacare Ltd v Environmental Pulp Products Ltd	Patents County Court	Yes	[2012] EWPCC 49	England and Wales	Example of a case where the courts have taken the Monsanto approach.
R v Lord Chancellor, Ex parte Child Poverty Action Group and another matter	N/A	Yes	[1999] 1 WLR 347	England and Wales	Cited for the rationale that costs should follow the event to promote discipline within the litigation system.
Then Khek Koon and another v Arjun Permanand Samtani and another and other suits	High Court	Yes	[2014] 1 SLR 245	Singapore	Cited for the principle that the indemnity principle enhances access to justice by ensuring that successful litigants are not put out of pocket.
AEI Rediffusion Music Ltd v Phonographic Performance Ltd	N/A	Yes	[1999] 1 WLR 1507	England and Wales	Cited for the concern that a too robust application of the follow the event principle encourages litigants to increase the costs of litigation.
Ng Eng Ghee and others v Mamata Kapildev Dave and others (Horizon Partners Pte Ltd, intervener) and another appeal	Court of Appeal	Yes	[2009] 4 SLR(R) 155	Singapore	Cited for the principle that unmerited barriers in the path of recovering reasonably incurred costs might well have the chilling effect of deterring parties from legitimately pursuing or defending their rights.
Universal Cycles Plc v Grangebriar Limited	N/A	Yes	[2000] CPLR 42	England and Wales	Cited as a warning that the issue-based approach can be taken too far and could create a deterrent effect on claimants who are in the right overall.
Smithkline Beecham plc and Glaxosmithkline UK Ltd v Apotex Europe Ltd and Others	N/A	Yes	[2005] 2 Costs LR 293	England and Wales	Cited for the principle that whether or not it was reasonable for a party to raise, pursue or contest a particular allegation remains a relevant factor to be taken into account as part of the conduct of the parties.
Rediffusion Simulation Ltd v Link-Miles Ltd	N/A	Yes	[1993] FSR 369	England and Wales	Cited for the principle that the costs order in patent actions should, in appropriate cases, reflect the extent to which significant sums of costs have been thrown away by reason of one party, albeit successful overall, raising and pursuing unsuccessful points.
Actavis Limited v Merck & Co Inc	High Court of Justice (England and Wales)	Yes	[2007] EWHC 1625 (Pat)	England and Wales	Cited for the initial indication that the court had to find a suitably exceptional case to make an adverse costs order.
Hospira UK Limited v Novartis AG	High Court of Justice (England and Wales)	Yes	[2013] EWHC 886 (Pat)	England and Wales	Cited for the principle that an adverse costs order would be made simply when it is appropriate in all the circumstances.
Roache v News Group Newspapers Limited and Others	N/A	Yes	[1998] EMLR 161	England and Wales	Cited for the principle that the overall winner is the party who has won something of value which it could not have won without fighting the action through to a finish.
Airtrust (Hong Kong) Ltd v PH Hydraulics & Engineering Pte Ltd	High Court	Yes	[2016] 5 SLR 103	Singapore	Cited for the principle that awarding costs on an indemnity basis is the exception rather than the norm.
Singapore Shooting Association and others v Singapore Rifle Association	Court of Appeal	Yes	[2020] 1 SLR 395	Singapore	Cited for the principle that the outcome reached on the substantive issues is not the only consideration taken into account in awarding costs.
Mohamed Affandi bin Rosli v Public Prosecutor and another appeal	Court of Appeal	Yes	[2019] 1 SLR 440	Singapore	Cited to show that speculative arguments about a break in the chain of custody would not be entertained.
Edward Lifesciences AG v Cook Biotech Incorporated	High Court of Justice (England and Wales)	Yes	[2009] EWHC 1443 (Pat)	England and Wales	Cited for the argument that E6's conduct in relation to the IVCs warranted an adjustment of the costs order in IIa's favour.
Sunseap Group Pte Ltd and others v Sun Electric Pte Ltd	Court of Appeal	Yes	[2019] 1 SLR 645	Singapore	Cited for the uncertainty over whether dependent claims could be independently valid in the same way as in the UK.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Rules of Court (Cap 322, R 5, 2014 Rev Ed)	Singapore
O 22A r 9(3) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed)	Singapore
O 59 r 6A of the Rules of Court	Singapore
O 59 r 5(b) of the Rules of Court	Singapore
O 59 r 27(3) of the Rules of Court	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Synthetic diamond
Chemical vapour deposition
Annealing
Patent infringement
Patent validity
Offer to settle
Indemnity costs
Issue-based approach
Standard basis
Confidential process

15.2 Keywords

patent infringement
patent validity
synthetic diamond
chemical vapour deposition
costs
Singapore

17. Areas of Law

Area Name	Relevance Score
Costs	95
Civil Practice	70
Patents	60
Contract Law	10

16. Subjects

Patent Law
Intellectual Property
Civil Procedure
Costs