Landmark patent decision in Malaysia
The patent at issue is for a riverbank protection system. It was applied for in October 2004 and granted in August 2008. Positive Well claimed that OKA had infringed the patent by making and selling a similar riverbank protection system without its consent or a licence. OKA’s riverbank protection system is made of a precast concrete pile and panel, and an anchoring tie. Positive Well sued OKA for patent infringement and OKA counterclaimed for patent invalidation.
The High Court held in favour of Positive Well and confirmed the validity of its patent. In its oral decision, the court approved the test for infringement that was used in the 1969 case of Rodi & Wienenberger AG v Henry Showell Ltd.
This case held the following key steps as the test for finding patent infringement: (i) determine the “essential” integers of the patent; (ii) consider whether “each” and “every” “essential” integer is taken by the defendant; (iii) and determine whether each of the defendants’ integers “work” in the “same way” as claimed by the plaintiff’s patent.
"THE COURT SAID THAT IF IT IS NECESSARY TO PULL TOGETHER TWO OR MORE PIECES OF PRIOR ART TO DEMONSTRATE EACH FEATURE THAT COMBINES TO FORM THE COMPLETE INVENTION, THEN THE FEATURE COMBINATION IS THE INVENTION IS NEW AND NOT ANTICIPATED."
On the issue of novelty, the court clarified that each piece of prior art must be interpreted on its own and it is not permissible to combine two or more pieces of prior art to determine anticipation.
The court said that if it is necessary to pull together two or more pieces of prior art to demonstrate each feature that combines to form the complete invention, then the feature combination in the invention is new and not anticipated.
Once prior art has been identified, it must be compared with the patent’s claims. The patent will only be anticipated if the prior art holds clear instructions for something that would infringe the patent if it was carried out, so each piece of prior art on its own must contain all of the claimed features.
As for inventive step, the court agreed with the principles outlined in the 1985 English case of Windsurfing International Inc v Tabur Marine (Great Britain) Ltd.
The court said that to determine the inventiveness of an invention, courts need to first identify the inventive concept of the claim in question and the differences between the state of the art and the inventive concept of the claimed invention, and without the benefit of hindsight, to decide whether the differences identified constitute obvious steps to the notional person skilled in the art.
As Malaysian patent case law is a little thin on the ground, this decision is welcome. It helps to clarify important principles in patent infringement actions under Malaysian patent law and sets out clear direction for determining anticipation and inventive step.
Chew Kherk Ying is a partner at Wong & Partners. She can be contacted at: kherk.ying.chew@wongpartners.com
Brian Law is a senior associate at Wong & Partners. He can be contacted at: brian.law@wongpartners.com
