This is an appeal against the decision of High Court of Malaya at Kuala Lumpur in relation to a patent infringement action between SKB Shutters Manufacturing Sdn. Bhd. and Seng Kong Shutter Industries Sdn. Bhd. and one Mr. Kooi Lam Tan. The High Court held that patent no. MY-128431-A valid and that Seng Kong Shutter Industries and Mr. Tan to be infringing the patent. Seng Kong Shutter Industries and Mr. Tan filed an appeal against the decision of the High Court and the Court of Appeals had allowed the appeal with cost.
SKB Shutters Manufacturing Sdn. Bhd. (hereinafter referred to as “the Respondent”) is in a business of manufacturing and distributing roller shutters, roller doors and wide range of shutters which is the subject matter of Malaysian Patent No. MY-128431-A (hereinafter referred to as “the Patent”). The Patent was filed on 24 February 1997.
Seng Kong Shutter Industries Sdn. Bhd. (hereinafter referred to as “the 1st Appellant”) deals with roller shutters and related products. Mr. Kooi Lim Tan (hereinafter referred to as “the 2nd Appellant”) is a shareholder and director of the 1st Defendant.
In the High Court, the Respondent had filed a patent infringement action against both the 1st and 2nd Appellants alleging that they sold products that infringe the claims of the Patent.
The 1st and 2nd Appellants in their counter-claim had argued that the invention has described in the Patent was not novel and not inventive as the invention had been anticipated by the disclosure in prior art such as PVC aluminium piece which had been sold in Malaysia market since 1996, which is prior to the date of application of the Patent, United States Patent No. 5,456,305 which was filed on 18 January 1995 and published prior to the date of application of the Patent and United States Patent No. 4,433,714 which was filed on 23 October and published prior to the date of application of the Patent.
Having considered arguments from both set of parties, the High Court held that the Patent was valid because the claims were not anticipated by the prior art and that both 1st and 2nd Appellants were infringing the Patent.
The 1st and 2nd Appellants then filed an appeal against the decision of the High Court. In the Court of Appeals, the 1st and 2nd Appellants had alleged that the High Court had applied the wrong approach to determine the novelty and the inventiveness of the invention as described in the Patent. Bizarrely, the High Court had compared the features of the Respondent’s product with the prior art (and not the features of the claims of the Patent) before concluding that the Patent was valid.
The Court of Appeals agreed with the 1st and 2nd Appellants that the High Court had applied the wrong approach and had indicated that the correct approach that should be applied by the High Court is the approach as described in the famous case of General Tire & Rubber Co which indicates that in comparing novelty and inventiveness of an invention, the invention as described in the claims of the patent in question may be compared with the prior art.
Having considered the prior art, the Court of Appeals held that the Patent was not valid as the claims have been anticipated by the prior art and there is no inventive step involved. The decision of the High Court was set aside.