IIa Technologies v Element Six: Patent Invalidity & Infringement in CVD Diamond Production
In [2023] SGCA 5, the Court of Appeal of the Republic of Singapore heard the appeal of IIa Technologies Pte Ltd against the decision of the High Court in favor of Element Six Technologies Ltd regarding Singapore Patent No 115872 ('SG 872'). The primary legal issue was the validity and infringement of SG 872, concerning synthetic diamonds grown using chemical vapor deposition. The Court of Appeal allowed the appeal, revoking SG 872 due to insufficiency, finding that the patent specification did not sufficiently enable a person skilled in the art to perform the invention across the full breadth of the claim.
1. Case Overview
1.1 Court
Court of Appeal of the Republic of Singapore1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Written Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Singapore Court of Appeal: IIa Technologies' appeal allowed, revoking Element Six's patent SG 872 due to insufficiency in CVD diamond production.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| IIa Technologies Pte Ltd | Appellant, Defendant | Corporation | Appeal Allowed | Won | |
| Element Six Technologies Ltd | Respondent, Plaintiff | Corporation | Patent Revoked | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Sundaresh Menon | Chief Justice | Yes |
| Judith Prakash | Justice of the Court of Appeal | No |
| Steven Chong | Justice of the Court of Appeal | No |
4. Counsels
4. Facts
- Element Six claimed IIa Technologies infringed its patents SG 872 and SG 508 related to CVD diamond production.
- IIa Technologies denied infringement and counterclaimed for revocation of both patents.
- The trial judge declared SG 508 invalid but found SG 872 valid and infringed by IIa Technologies.
- IIa Technologies appealed the trial judge's decision regarding the validity and infringement of SG 872.
- The patent specification of SG 872 directed the person skilled in the art to use a Deltascan (Metripol) to determine certain values.
- The Metripol data alone does not tell the person skilled in the art whether the delta value of a diamond falls within the SG 872 First Order.
- The respondent claimed that the production of low-strain single crystal CVD diamond material disclosed in Claims 1 to 61 and 72 to 78 was not possible prior to the discovery of the process in Claim 62.
5. Formal Citations
- IIa Technologies Pte Ltd v Element Six Technologies Ltd, Civil Appeal No 41 of 2020, [2023] SGCA 5
6. Timeline
| Date | Event |
|---|---|
| HC/S 26/2016 filed | |
| SG 872 filed | |
| Trial judge declared SG 508 invalid and revoked it | |
| CA/CA 41/2020 filed | |
| Judge delivered decision on costs | |
| CA/CA 96/2020 filed | |
| CA/SUM 87/2020 filed | |
| SUM 87 dismissed | |
| Parties directed to prepare a Primer | |
| Technology Tutorial conducted | |
| CA 41 hearing | |
| Court wrote to parties to clarify product claim scope | |
| Parties responded to court's clarification request | |
| Judgment reserved |
7. Legal Issues
- Patent Sufficiency
- Outcome: The Court held that the patent was invalid due to insufficiency, as the specification did not sufficiently enable a person skilled in the art to perform the invention across the full breadth of the claim.
- Category: Substantive
- Sub-Issues:
- Insufficient disclosure
- Undue burden on person skilled in the art
- Uncertainty in claim scope
- Patent Claim Construction
- Outcome: The Court construed the patent claims purposively, viewing them through the lens of a person skilled in the art.
- Category: Substantive
- Sub-Issues:
- Purposive construction
- Interpretation by person skilled in the art
- Patent Infringement
- Outcome: The Court overturned the trial judge's finding of infringement, holding that the samples did not infringe the patent.
- Category: Substantive
- Sub-Issues:
- Scope of patent claims
- Essential elements of claim
8. Remedies Sought
- Declaration of Patent Validity
- Injunction against Infringement
- Delivery up or Destruction of Infringing Products
- Revocation of Patent
9. Cause of Actions
- Patent Infringement
- Patent Revocation
10. Practice Areas
- Patent Litigation
- Commercial Litigation
11. Industries
- Manufacturing
- Technology
- Materials Science
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Element Six Technologies Ltd v IIa Technologies Pte Ltd | High Court | Yes | [2020] SGHC 26 | Singapore | The High Court's decision on the validity and infringement of the patents in question, which was appealed in the present case. |
| 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 for the principle that clarity is not a ground for revocation under the Patents Act (2005 Rev Ed), but sufficiency of disclosure is. |
| Oxley Consortium Pte Ltd v Geetex Enterprises Singapore (Ptd) Ltd and another matter | Court of Appeal | Yes | [2021] 2 SLR 782 | Singapore | Cited regarding the court's discretion to consider arguments not particularized in the Appellant's Case. |
| Global Yellow Pages Ltd v Promedia Directories Pte Ltd and another matter | Court of Appeal | Yes | [2017] 2 SLR 185 | Singapore | Cited regarding the court's discretion to consider arguments not particularized in the Appellant's Case. |
| Lee Tat Cheng v Maka GPS Technologies Pte Ltd | Court of Appeal | Yes | [2018] 1 SLR 856 | Singapore | Cited for principles of claim construction, specifically construing claims purposively. |
| Mühlbauer AG v Manufacturing Integration Technology Ltd | Court of Appeal | Yes | [2010] 2 SLR 724 | Singapore | Cited for the test of novelty and the role of common general knowledge in assessing prior art. |
| Windsurfing International Inc v Tabur Marine (Great Britain) Ltd | Court of Appeal | Yes | [1985] RPC 59 | England and Wales | Cited for the approach to determining obviousness, specifically whether differences from prior art constitute obvious steps. |
| Regeneron Pharmaceuticals Inc v Kymab Ltd | UK Supreme Court | Yes | [2021] 1 All ER 475 | United Kingdom | Cited for the principle that a patent specification must enable the invention to be performed to the full extent of the monopoly claimed. |
| Synthon BV v SmithKline Beecham plc | House of Lords | Yes | [2005] UKHL 59 | United Kingdom | Cited for the role of common general knowledge in interpreting prior art. |
| Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and others; Hoechst Marion Roussel Ltd and others v Kirin-Amgen and others | House of Lords | Yes | [2005] RPC 169 | United Kingdom | Cited for the two-step assessment of sufficiency and the principle that disclosure must enable the invention to the full extent of the monopoly claimed. |
| Biogen Inc v Medeva PLC | House of Lords | Yes | [1997] RPC 1 | United Kingdom | Cited for the principle that disclosure must enable the invention to the full extent of the monopoly claimed and the relevant date for assessing sufficiency. |
| H Lundbeck A/S v Generics (UK) Ltd and others | Court of Appeal | Yes | [2008] RPC 437 | England and Wales | Cited for the principle that where a claim is to a class of products, the class of products is enabled only if the PSA can work the invention in respect of all members of the class. |
| Anan Kasei Co. Ltd and another company v Neo Chemicals and Oxides Ltd (formerly Molycorp Chemicals and Oxides (Europe) Ltd) and another company | Court of Appeal | Yes | [2019] EWCA Civ 1646 | England and Wales | Cited for the principle that a claim limited by reference to a desirable physical characteristic covers a class of products. |
| Generics [UK] Ltd (t/a Mylan) v Yeda Research and Development Co Ltd and another | High Court | Yes | [2012] EWHC 1848 (Pat) | England and Wales | Cited for the principle that insufficiency may arise where the PSA does not know how to determine whether a particular product or process is within or outside the scope of the claim. |
| Generics [UK] Ltd (t/a Mylan) v Yeda Research and Development Co Ltd and another | Court of Appeal | Yes | [2013] EWCA Civ 925 | England and Wales | Cited for the principle that insufficiency may arise where the PSA does not know how to determine whether a particular product or process is within or outside the scope of the claim. |
| Unwired Planet International Ltd & Ors v Google Commerce Ltd (2016) | High Court | Yes | [2016] EWHC 576 (Pat) | England and Wales | Cited for the principle that insufficiency may arise where the PSA does not know how to determine whether a particular product or process is within or outside the scope of the claim. |
| Glaxo Group Ltd and other companies v Vectura Ltd | High Court | Yes | [2018] EWHC 3414 (Pat) | England and Wales | Cited for the principle that uncertainty in which test should be used to determine whether a particular product or process meets the characteristics specified in the claim can sustain an objection of uncertainty in the context of insufficiency. |
| Martek Biosciences Corp v Cargill International Trading Pte Ltd | Court of Appeal | Yes | [2011] 4 SLR 429 | Singapore | Cited for the principle that lack of clarity in claim language must leave the PSA unclear as to how to determine whether a particular product or process is within the scope of the claim. |
| Bayer Schering Pharma/Reach-through claim | Technical Board of Appeal | Yes | [2009] OJ EPO 516 | Europe | Cited for the principle that trial and error on every conceivable chemical compound for the claimed capability was an undue burden. |
| American Home Products Corporation v Novartis Pharmaceuticals UK Ltd | Court of Appeal | Yes | [2001] RPC 8 | England and Wales | Cited for the principle that the duty upon the patentee is to provide a description which enables the skilled person to perform the invention, not to supply a starting point for a research programme. |
| Saint-Gobain Adfors SAS (a company existing under the laws of France) v 3M Innovative Properties Co (a company existing under the laws of Delaware, United States) | High Court | Yes | [2022] EWHC 1018 (Pat) | England and Wales | Cited for the importance of providing guidance on how to vary process parameters to achieve a specific product in the range of products claimed in the patent. |
| Novartis AG v Johnson & Johnson Medical Ltd | Court of Appeal | Yes | [2011] ECC 10 | England and Wales | Cited for the principle that it is irrelevant that the challenger had not performed any experiments if the Patent gives no clue as to whether he will be successful. |
| Sunseap Group Pte Ltd v Sun Electric Pte Ltd | Court of Appeal | Yes | [2019] 1 SLR 645 | Singapore | Cited for the observation that a patent should be revoked if all the independent claims in a patent have found to be invalid. |
13. Applicable Rules
| Rule Name |
|---|
| Rules of Court (2014 Rev Ed) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Chemical Vapor Deposition
- CVD Diamond
- Optical Birefringence
- Metripol
- SG 872 First Order
- Dislocation Density
- Optical Retardation
- Phase Shift
- Nitrogen Concentration
- Source Gas
- Plasma Etch
- Homoepitaxial Diamond Growth
- Deltascan
- Gap Theory
15.2 Keywords
- patent
- infringement
- validity
- CVD diamond
- chemical vapor deposition
- insufficiency
- revocation
- birefringence
- Metripol
- Singapore
- intellectual property
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 95 |
| Intellectual Property Law | 90 |
| Patent Revocation | 85 |
| Patent Invalidity | 80 |
| Claim Construction | 70 |
| Patent Specification | 60 |
| Civil Procedure | 30 |
| Contract Law | 10 |
16. Subjects
- Patent Law
- Intellectual Property
- Synthetic Diamonds
- Chemical Vapor Deposition