SPIND MALAYSIA SDN BHD v. JUSTRADE MARKETING SDN BHD & ORS

[2018] 2 MLRA 281

SPIND MALAYSIA SDN BHD v. JUSTRADE MARKETING SDN BHD & ORS
Federal Court, Putrajaya
Raus Sharif CJ, Hasan Lah, Azahar Mohamed, Balia Yusof Wahi FCJJ, Alizatul Khair Osman Khairuddin JCA
[Civil Appeal No: 02(f)-55-08/2016(W)]
30 January 2018

Patents : Infringement - Allegations of - Whether there was novelty in design - Whether invention anticipated by prior art - Whether disclaimed feature expressly stated in patent - Whether disclaimed feature was solution to problems in field of technology generally - Whether patent involved inventive steps - Whether patent valid - Whether there was infringement - Whether trial judge erred in assessing expert evidence - Whether trial judge erred in finding that patent was not new or inventive

The appellant was a company in the business of designing and manufacturing plumbing products, including one known as the SPIND Floor Gully/Trap. The appellant was also the registered proprietor of Malaysian Patent No: MY-125567-A (MY-567) entitled "Improvement in and relating to floor traps" since 30 August 2006. The 1st respondent was a company in the business of supplying construction materials and related products. The 1st respondent was appointed as the appellant's marketing agent for the SPIND Floor Gully/ Trap in Vietnam from October 2010 to March 2011. The 2nd respondent was a shareholder and Director of the 1st respondent. He was appointed as the appellant's Marketing Consultant from April 2008 to March 2011. On 12 May 2011, the 1st respondent filed a patent application P12011002144 entitled "Top Accessible Drainage Floor Trap with built in control valve" with the Malaysian Intellectual Property Office. The patent was commercially developed into the 1st respondent's PAZTEE Floor Gully Trap. The 2nd respondent was named the inventor of the product. The appellant contended that the product was similar to the latest developed version of the SPIND Floor Gully/Trap. Consequently, the appellant filed an action in the High Court against the respondents for infringement of patent MY-567, infringement of industrial design, and breach of confidential information. The respondents filed a counterclaim challenging the validity of the patent, on the basis that it was not new or inventive, as well as the validity of the industrial design. The High Court allowed the respondents' counterclaim. The appellant's appeal to the Court of Appeal was dismissed. The appellant thus appealed to the Federal Court.

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