Sun Electric Pte Ltd v Sunseap Group Pte Ltd and others [2017] SGHCR 6

This is an application by the plaintiff, Sun Electric Pte Ltd (“the Plaintiff”), under O 18 r 19(1)(a) to (d) of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) (“Rules of Court”), to strike out parts of the Defence and Counterclaim (Amendment No 1) dated 17 February 2017 (“Defence and Counterclaim”) and the Particulars of Objection dated 5 January 2017 (“Particulars of Objection”), on the basis that these purport to put in issue claims in a patent that the Plaintiff has not asserted.

Background facts

The Plaintiff is the registered proprietor of a Singapore patent granted based on Singapore Patent Application No 10201405341Y (“the Patent”). The Patent is in respect of a power grid system and method of determining power consumption at one or more building connections in the power grid system.

The 1st Defendant, Sunseap Group Pte Ltd, is the parent company of a group of related subsidiary companies, which includes the 2nd Defendant, Sunseap Energy Pte Ltd, and the 3rd Defendant, Sunseap Leasing Pte Ltd (collectively, “the Defendants”).

The Plaintiff’s claim against the Defendants in this suit is for alleged infringement of the Patent. The Patent consists of 12 claims. Of these, the Plaintiff alleged that the Defendants have jointly or severally infringed claims 1, 3, 4, 5, 7, 9, 10 and 11 by carrying out a number of alleged acts listed in the Plaintiff’s Particulars of Infringement (Amendment No 1) dated 2 February 2017. The Plaintiff did not allege infringement of the remaining claims in the Patent, ie claims 2, 6, 8 and 12 (“the Unasserted Claims”).

The Defendants have, by way of defence, denied all allegations of infringement of the Patent. The Defendants have also filed a counterclaim against the Plaintiff, of which the following claims are relevant for the purposes of the present application:

(a) an order that the Patent be revoked; and

(b) remedies for groundless threats under s 77 of the Patents Act (Cap 221, Rev Ed 2005) (“the Patents Act”), namely:

(i) a declaration that the Plaintiff has made unjustifiable threats;

(ii) an injunction against the continuance of the threats; and

(iii) damages in respect of any loss which the Defendants have sustained by the threats.

Based on the Defence and Counterclaim, the Defendants have put the validity of the entire Patent, including the Unasserted Claims, in issue. These are also found in the Particulars of Objection.

The present application

Section 82(1) of the Patents Act stipulates a list of five categories of proceedings in which the validity of a patent may be put in issue. Beyond this list, the validity of a patent “may not be put in issue in any other proceedings” (s 82(2) of the Patents Act). Section 82 of the Patents Act reads, in relevant part, as follows:

The Plaintiff objects to the Defendants putting the validity of the Unasserted Claims in issue. This is because each claim in a patent stands on its own, and even within a single patent, each individual claim has to be assessed separately (see Astrazeneca AB v Ranbaxy (Malaysia) Sdn Bhd [2012] SGHC 7 at [8] (“Ranbaxy”)). As such, given that the Plaintiff has not relied on the Unasserted Claims, it contends that the Defendants should not be allowed to seek invalidation of the Unasserted Claims.

The Plaintiff therefore brought the present application, seeking a striking out of the following:

(a) First, paragraphs 4 and 14 of the Defence and Counterclaim, to the extent that the validity of claims 2, 6, 8 and 12 of the Patent are put in issue. The paragraphs provide as follows:

(b) Second, paragraph 16 of the Defence and Counterclaim, which provides as follows:

(c) Third, paragraph 1 of the Particulars of Objection, to the extent that the validity of claims 2, 6, 8 and 12 of the Patent are put in issue. The paragraph provides as follows:

The Defendants resisted the application on the basis that they were entitled to put in issue the validity of the entire Patent, including the Unasserted Claims, on each of the grounds stipulated in [11] below.

Issues

The issues before this court are whether the Unasserted Claims are properly put in issue by the Defendants on any of the following grounds:

(a) by way of defence against the Plaintiff’s infringement claim, pursuant to s 82(1)(a) of the Patents Act;

(b) by way of a counterclaim for groundless threats of infringement proceedings, pursuant to s 82(1)(b) of the Patents Act; and

(c) by way of a counterclaim for revocation of the Patent, pursuant to s 80 (read with s 91) and s 82(1)(d) of the Patents Act.

The parties agreed that if any one or more of the above grounds are made out, the present application for striking out will fail. I turn to analyse each of the grounds in turn.

Section 82(1)(a) of the Patents Act – defence against infringement claim

The first issue is whether the Unasserted Claims can be put in issue by way of defence against the Plaintiff’s infringement claim, pursuant to s 82(1)(a) of the Patents Act.

Parties’ arguments

Counsel for the Plaintiff (“Mr Louis”) argued, citing the authority of Ranbaxy, that the Unasserted Claims cannot be put in issue by way of defence.

In Ranbaxy, the defendant applied to the Singapore Health Sciences Authority for the grant of product licences pursuant to the Medicines Act (Cap 176, Rev Ed 1985) (“the Medicines Act”). The plaintiff instituted proceedings against the defendant, seeking a declaration that certain claims (ie claims 1, 2, 3, 11 and 12) of its patent would be infringed by the defendant’s intended acts of infringement. The defendant, in its Defence and Counterclaim and Particulars of Objection, put in issue the validity of other claims (ie claims 4, 5, 6, 7, 8, 9, 10, 17 and 18) that had not been asserted.

The court in Ranbaxy held that the defendant was not entitled to put in issue the validity of claims that had not been asserted by the plaintiff. The reasons were as follows:

(a) First, s 82(1)(a) of the Patents Act cannot be read to give the defendant the right to put in issue the validity of a patent, where the plaintiff has only alleged infringement of some (but not all) of the claims in the patent. This is by virtue of claim independence and as a matter of logic – putting a claim in issue does not function as a defence to infringement of another claim. See Ranbaxy at [8]–[9].

(b) Second, the fact that the plaintiff may subsequently assert the other unasserted claims is more properly dealt with by the court as and when the situation arises. The court would, at that time, have to consider inter alia whether the plaintiff’s fresh assertions of the previously unasserted claims should be struck out as an abuse of the court’s process. In particular, the plea of res judicata may apply. See Ranbaxy at [5]–[6] and [10].

(c) Third, there are practical considerations as to why a defendant should not be allowed to put in issue claims that have not been asserted. Allowing a defendant to do so would be “putting the cart before the horse” (Ranbaxy at [29]), and would result in the expending of unnecessary costs and time. While the plaintiff may subsequently attempt to bring infringement proceedings for the previously unasserted claims, this may well be struck out as an abuse of process (see [16(b)] above).

In summary, Ranbaxy stands for the proposition that, for the purposes of s 82(1)(a) of the Patents Act, a defendant can only put in issue claims that have been asserted to be infringed; there is no carte blanche for a defendant to put in issue the validity of the entire patent.

With regard to Ranbaxy, counsel for the Defendants (“Ms Leow”) raised the following three arguments:

(a) First, Ranbaxy ought to be distinguished from the present case. Unlike the claim in Ranbaxy, which concerned a declaration of intended infringement under the Medicines Act, the present case relates to infringement proceedings commenced under the Patents Act.

(b) Second, the reasoning in Ranbaxy ought to be disregarded, because that case related to a claim under the Medicines Act instead of the Patents Act and, as such, s 82(1) of the Patents Act should not have been applicable at all. In this regard, Ms Leow cited AstraZeneca AB (SE) v Sanofi-Aventis Singapore Pte Ltd [2012] SGHC 16 (“Sanofi-Aventis”) at [30] for the proposition that an action brought pursuant to s 12A of the Medicines Act is “incompatible” with a patent infringement action brought under s 67 of the Patents Act. Ms Leow further suggested that the incompatibility between the two legislative regimes was “the fundamental reason” that the court in Ranbaxy found that the defendant was unable to put the validity of the entire patent in issue under s 82(1)(a) of the Patents Act.

(c) Third, unlike the Defendants, the defendant in Ranbaxy could not avail itself of any of the other grounds in s 82 of the Patents Act (viz, s 82(1)(b) to (e) of the Patents Act).

Decision

In my view, the reasoning in Ranbaxy is applicable to the present application, for four reasons:

(a) First, while the underlying claim in Ranbaxy (under the Medicines Act) is different from the underlying claim in the present case (under the Patents Act), the mere fact of this difference does not, in and of itself, mean that the reasoning in Ranbaxy is of no application. Indeed, given that the decision in Ranbaxy was specifically based on s 82(1)(a) of the Patents Act, the reasoning ought to be considered in the present application.

(b) Second, the relevant holding in Sanofi-Aventis is that s 12A of the Medicines Act provides a separate cause of action from s 67 of the Patents Act. The issue of whether s 82 of the Patents Act applies to a cause of action under s 12A of the Medicines Act was not discussed at all in Sanofi-Aventis. As such, the “incompatibility” referred to by Ms Leow (see [18(b)] above) does not have any direct bearing on the applicability or persuasiveness of the reasoning in Ranbaxy. Indeed, it ought to be noted that Ms Leow’s alleged “fundamental reason” for the decision in Ranbaxy was neither mentioned in, nor implied by, the published decision itself. It should also be noted that the decisions in Ranbaxy and Sanofi-Aventis were rendered just 6 days apart, and that the former decision did not appear to have been cited to the court deciding the latter case.

(c) Third, in Sanofi-Aventis, the court recognised that actions under both s 12A of the Medicines Act and the Patents Act similarly require that the allegedly infringing product must fall squarely within the claim of the patent (see Sanofi-Aventis at [31], read with [19] and [23]). This is consistent with the reasoning in Ranbaxy, viz, that infringement is tied to specific patent claims. It also implies that the invalidation of an unasserted claim is no defence to infringement of an asserted claim.

(d) Fourth, even assuming that the court in Ranbaxy had incorrectly proceeded on the basis of s 82 of the Patents Act, the three reasons highlighted at [16] above continue to hold true in the context of infringement proceedings taken out under the Patents Act. In this regard, Ms Leow did not provide any compelling reason to justify putting the Unasserted Claims in issue by way of defence. While she argued that a claim under s 12A of the Medicines Act deals with intended infringement (contra actual infringement), the point remains that the question of infringement – whether intended or actual – is tied to specific asserted claims in the patent (see the analysis of Sanofi-Aventis at [19(c)] above).

As such, applying the approach at [16] above, I find that the Defendants are not entitled to put the Unasserted Claims in issue by way of defence under s 82(1)(a) of the Patents Act.

Section 82(1)(b) of the Patents Act – counterclaim for groundless threats

The next issue is whether the Unasserted Claims can be put in issue by way of a counterclaim for groundless threats of infringement proceedings, under s 82(1)(b) of the Patents Act.

Parties’ arguments

Ms Leow argued that the validity of the entire Patent, including the Unasserted Claims, can be put in issue once groundless threats proceedings are brought. She cited the following reasons:

(a) First, nothing in the plain wording of s 82(1)(b) of the Patents Act imports a restriction against putting the validity of the entire Patent in issue in groundless threats proceedings.

(b) Second, none of the Plaintiff’s threats complained of had made reference to any specific claims in the Patent. As such, the Defendants are entitled to put the validity of the entire Patent in issue.

(c) Third, the scope of infringement proceedings is irrelevant to proceedings for groundless threats, because the commencement of proceedings is, in itself, not a “threat” (citing Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as S Electrical Trading) [2016] 4 SLR 86 at [134], in the context of the Copyright Act). It follows that the entire Patent can be put in issue regardless of the fact that the Plaintiff has relied only on selected claims in the Patent.

(d) Fourth, there are precedent cases, such as Siegfried Demel (Trading as Demotec Siegfried Demel) v C & H Jefferson (A Firm) and Another [1999] FSR 204 (“Siegfried”), in which the validity of entire patents have been put in issue in groundless threats proceedings.

Mr Louis submitted that only asserted claims can be put in issue in groundless threats proceedings. He raised the following three counter-arguments to Ms Leow’s position that the Defendants have a carte blanche right to invalidate the entire Patent in groundless threats proceedings:

(a) First, Ms Leow’s position flies in the face of the express wording and structure of s 77 of the Patents Act. In particular, the phrase “in a relevant respect” in s 77(2)(b) of the Patents Act (the relevant legislation is reproduced at [24] below) precluded the Defendants from putting the Unasserted Claims in issue.

(b) Second, allowing the Defendants to put the Unasserted Claims in issue would result in wasted time and costs for the parties as well as the court. The statutory framework could not have been intended to entitle a party to embark on a pointless and often costly exercise of invalidating unasserted claims of a patent, when these are ultimately irrelevant to the groundless threats proceedings.

(c) Third, on closer inspection of the cases cited by Ms Leow as examples of the validity of entire patents being put in issue in groundless threats proceedings, none of these were helpful to her case. For instance, with regard to Siegfried, the parties had in fact commenced separate applications for revocation of the patent in question.

Decision

Section 77 of the Patents Act provides the statutory framework for groundless threats proceedings. Of relevance to the present application is s 77(1)–(3) of the Patents Act, reproduced below. To avoid doubt, the reference to “plaintiff” therein includes a plaintiff in a counterclaim (viz, the Defendants, in the present case).

In my view, s 77 of the Patents Act should be approached as follows:

(a) A person (“the threatenor”), whether or not the proprietor of the patent in question, threatens another person with proceedings for infringement of the patent. There is no requirement that the threat must stipulate the specific claims of the patent that are allegedly infringed; indeed, in many cases, there would probably be no such specificity in the threats.

(b) A person aggrieved by the threats (“the aggrieved person”), whether or not he is the person to whom the threats are made, brings proceedings in court against the threatenor, for the making of groundless threats. The aggrieved person will have to prove both that the threats were made, and that he is a person aggrieved by them.

(c) If the threatenor does not seek to justify the threats made, the aggrieved person succeeds on his claim for groundless threats.

(d) If the threatenor seeks to defend himself against the claim for groundless threats, he will have to justify the threats made. In this regard:

(i) The threatenor will have to prove that the patent has been, or will be, infringed by the acts in respect of which the threats were made. In doing so, he must necessarily specify the claim or claims that he alleges have been, or will be, infringed. If he fails to prove actual or potential infringement of those claims, the aggrieved person succeeds on his claim for groundless threats. For example, in Bean Innovations Pte Ltd and another v Flexon (Pte) Ltd [2001] 2 SLR(R) 116, the patent proprietor sought to defend itself against groundless threats proceedings by relying on only one claim of its patent. It was unable to establish infringement of this specific claim. As such, the aggrieved party succeeded in its claim for groundless threats.

(ii) The aggrieved person may seek to prove that the patent is invalid “in a relevant respect”, pursuant to s 77(2)(b) of the Patents Act. This means that he must seek to invalidate the specific claims that were relied upon by the threatenor in the threatenor’s defence against the claim for groundless threats.

The crux of the issue before me is whether the phrase “in a relevant respect” in s 77(2)(b) of the Patents Act limits an aggrieved person to putting only the specific asserted claims in issue; or, put the other way, whether the phrase precludes an aggrieved person from putting unasserted claims in issue.

On the one hand, the phrase itself does not expressly prescribe any preclusion of putting unasserted claims in issue. Indeed, as a “relevant respect” of a patent is, by definition, a subset of the entire patent, invalidating the entire patent will necessarily also mean that the patent is invalid “in a relevant respect”. As such, the phrase may be interpreted simply to mean that an aggrieved person does not have the burden to invalidate the entire patent in order to make out his claim for groundless threats; all he has to do is to show that a “relevant respect” – ie the asserted claims – of the patent is invalid. A literal interpretation therefore does not determine whether or not an aggrieved person is precluded from putting unasserted claims in issue.

On the other hand, there is merit in Mr Louis’ observation that, in the context of groundless threats proceedings, it would be entirely futile for an aggrieved person to put the validity of unasserted claims in issue. This is because invalidating those claims would not assist, in any way, his claim for groundless threats. To illustrate, if a threatenor defends against a groundless threats claim by contending that claims 1 and 2 of a 4-claim patent have been infringed, it is pointless for the aggrieved person to prove that claims 3 and 4 of the patent are invalid – for even if he successfully so proves, he still fails to make out his claim for groundless threats.

For the reasons stated in [28] above, in the context of groundless threats proceedings, the issue of validity of patent claims ought to be limited to the claims for which actual or potential infringement is alleged. Precluding an aggrieved person from putting unasserted claims in issue would also be consistent with the approach taken vis-à-vis defence (see [16] read with [19] and [20], above). If the aggrieved person is really seeking to invalidate all the claims in a patent, including unasserted claims, the proper approach is for him to commence revocation proceedings, instead of relying on a claim for groundless threats.

I therefore find that the Defendants are not entitled to put the Unasserted Claims in issue by way of a counterclaim for groundless threats of infringement proceedings, under s 82(1)(b) of the Patents Act.

Section 82(1)(d) of the Patents Act – counterclaim for revocation

The final issue is whether the Unasserted Claims can be put in issue by way of the Defendants’ counterclaim for revocation of the Patent.

Parties’ arguments

At the hearing, Mr Louis cited s 82(2) of the Patents Act for the proposition that proceedings cannot be instituted to seek only a declaration as to the invalidity of a patent.

However, Ms Leow clarified that for the purposes of the application, the Defendants were not relying on a declaration as to the invalidity of a patent. Rather, they were relying on a separate cause of action under the counterclaim, which is for an order “that the Patent be revoked” under s 80 of the Patents Act. Paragraph 1 of the Particulars of Objection (see [9(c)] above) makes this clear.

Ms Leow made the following submissions.

(a) First, the validity of the entire Patent can be put in issue where revocation is brought as a counterclaim in infringement proceedings. This is because s 82(1)(d) of the Patents Act permits validity of a patent to be put in issue “in proceedings before the Registrar [viz, the Registrar of Patents] under section 80 for the revocation of the patent”.

(b) Second, while s 82(1)(d) of the Patents Act makes express reference to “proceedings before the Registrar”, and s 80 of the Patents Act mentions only “the Registrar” and not “the court”, revocation proceedings can nonetheless be brought directly before the court at first instance. This is in view that s 91 of the Patents Act empowers the court to “make any order or exercise any power which the Registrar could have made or exercised… ”.

Mr Louis agreed that under ss 82(1)(d) read with 80 of the Patents Act, a party is entitled to put in issue all claims of a patent because, in his view, s 80 of the Patents Act “does not contain any express limitation”. In this regard, he drew a distinction between revocation proceedings and the situations envisaged under ss 82(1)(a) (viz, defence) and (b) (viz, claim for groundless threats) of the Patents Act.

However, he contended that the right to institute revocation proceedings is confined to proceedings before the Registrar, citing the express wording in ss 80 and 82(1)(d) of the Patents Act (see [34(b)] above). He argued that such wording evinced a careful delineation of the proper forum for revocation proceedings to be brought at first instance. In this regard, he cited Energenics Pte Ltd v Musse Singapore Pte Ltd and another suit [2013] SGHCR 21 (“Energenics”) at [56]:

At the hearing, I informed Mr Louis and Ms Leow that an appeal had been successfully brought against the decision in Energenics, although there is no published judgment or grounds of decision of the appeal. Nonetheless, Mr Louis maintained that the proposition in [56] of Energenics should still be considered in the present application.

Finally, Mr Louis also pointed out that in Ranbaxy, the court had similarly considered a situation in which the defendant had included a prayer for revocation of the patent. The court appeared to disagree with the defendant’s attempt to “[sidestep] the statutory restriction in s 82(2)” by seeking a declaration as to invalidity along with revocation (Ranbaxy at [17]). The court concluded, at [20], that the defendant had “put the validity of the plaintiff’s unasserted patents in issue on a basis falling outside of those enumerated in s 82(1), [and therefore] has invariably run afoul of the general rule in s 82(2)” (emphasis in original). Mr Louis thus relied on Ranbaxy to argue that, in the present case, the Patent is similarly being put in issue in instances falling outside of s 82(1) of the Patents Act, and that this is contrary to s 82(2) of the Patents Act.

Decision

It is undisputed that in revocation proceedings, a party is entitled to put the validity of all claims, including unasserted claims, in issue.

It is also uncontroversial that s 91 of the Patents Act empowers the High Court to determine revocation proceedings brought under s 80 of the Patents Act. If authority is needed for this trite proposition, it suffices to cite Ng-Loy Wee Loon, Law of Intellectual Property of Singapore (Sweet & Maxwell, 2nd Ed, 2009) at paragraph 30.06, where the learned author observed that an application for revocation under s 80(1) of the Patents Act “may be made to the Registrar of Patents or to the High Court” (emphasis added), and included a footnote reference indicating s 91(1) of the Patents Act as the source of the High Court’s power to hear revocation proceedings.

The key issue in contention is therefore whether, in the present case, revocation proceedings may properly be commenced in the High Court at first instance.

In this regard, it should be noted that despite Mr Louis’ reliance on Energenics, the decision does not actually further his arguments. The court did not make any finding on the existence of the court’s jurisdiction to deal with issues for which the Registrar is, at least based on the wording of s 20(1)(a) of the Patents Act, stipulated as the port of call. Rather, it dealt with whether it was an abuse of process for a party to circumvent the legislative framework by commencing such proceedings in the High Court at the first instance (see Energenics at [60] and [67]). Furthermore, the decision did not deal at all with s 80 of the Patents Act, which calls for separate analysis.

In my view, revocation proceedings can properly be commenced in the High Court at first instance, particularly (as in the present case) where infringement proceedings are already before the High Court and revocation proceedings are brought by way of counterclaim.

Indeed, s 82(7) of the Patents Act supports this conclusion. That section provides that where proceedings with regard to a patent are pending in the High Court under any provision mentioned in s 82(1) of the Patents Act (including, eg, proceedings for patent infringement), revocation proceedings cannot be instituted before the Registrar except with the leave of the High Court. This means that where revocation proceedings are brought as a counterclaim in proceedings concerning the patent in question, the matter should, as a starting point, be brought before the High Court at first instance, unless the High Court grants leave for the matter to go before the Registrar. There is good reason for such an approach – it will avoid a situation where infringement proceedings (which may concern the validity of specific claims in the patent) are before the High Court while revocation proceedings (which concern the validity of the entire patent) are before the Registrar, as well as the attendant risks of inconsistent decisions arising from such a bifurcation. It would generally also help to streamline proceedings within a single forum, and possibly reduce the resources expended in resolving the dispute.

I am fortified in this view by numerous examples of cases where revocation proceedings have been brought by way of a counterclaim and dealt with by the High Court. The examples cited by Ms Leow include Main-Line Corporate Holdings Ltd v DBS Bank Ltd [2012] 4 SLR 147, Dextra Asia Co Ltd and another v Mariwu Industrial Co (S) Pte Ltd and another suit [2006] 2 SLR(R) 154 and V-Pile Technology (Luxembourg) SA and others v Peck Brothers Construction Pte Ltd [1997] 3 SLR(R) 981. It has also been observed in A Guide to Patent Law in Singapore (Alban Kang gen ed) (Sweet & Maxwell, 2nd Ed, 2009) at paragraph 8.2.2, that “more often than not, issues relating to the revocation of a patent are heard in the courts rather than before the Registrar”.

As such, I find that the Defendants are entitled to put the Unasserted Claims in issue under s 82(1)(d) of the Patents Act, by way of a counterclaim brought before the High Court for revocation of the Patent.

For completeness, I should also address the concern expressed in Ranbaxy about a party “sidestepping” the statutory restriction in s 82(2) of the Patents Act by seeking a declaration as to invalidity along with revocation (see [38] above). The court made no clear finding on this issue, and its eventual decision was arrived at on the basis that the defendant had run afoul of s 82(2) of the Patents Act by putting the validity of unasserted claims in issue on a basis falling outside the grounds enumerated in s 82(1) of the Patents Act.

In my view, when a party brings revocation proceedings, s 82(2) of the Patents Act does not preclude him from concurrently seeking a declaration as to invalidity of the patent in question. This is because he is not instituting proceedings seeking only a declaration as to invalidity – on the contrary, he is in fact seeking a declaration together with a revocation claim, the latter itself plainly falling within the scope of s 82(1) of the Patents Act.

One may then query as to why s 82(2) of the Patents Act precludes a party from instituting standalone proceedings for declarations of invalidity of a patent, while allowing the party to “sidestep” this preclusion simply by concurrently bringing a claim for revocation of the same patent – after all, in both situations, all of the claims in the patent are put in issue. In this regard, it should be noted that there is a distinction between a declaration as to invalidity and a revocation of a patent – the latter is executory in nature and is an additional step beyond the former. The purpose of s 82(2) of the Patents Act in precluding standalone proceedings for declarations as to invalidity is, in fact, precisely to ensure that invalid patents are not merely declared to be invalid, but are in fact revoked: see Terrell on the Law of Patents (Sweet & Maxwell, 18th Ed, 2017) at para 23-78 (commenting on s 74(2) of the UK Patents Act 1977, which is in pari materia with s 82(2) of the Patents Act).

Conclusion

Based on my findings at [20], [30] and [46] above, I decline to strike out the paragraphs in the Defence and Counterclaim and the Particulars of Objection. Instead, I order that the Defendants amend paragraphs 4, 14 and 16 of the Defence and Counterclaim as follows:

I further order that:

(a) If no appeal is brought against this decision within the time limited for appeal as stipulated in O 56 r 1(3) of the Rules of Court:

(i) the amendments to the Defence and Counterclaim, specified at [50] above, are to be made within 7 days after the time limited for appeal; and

(ii) leave is granted for any consequential amendments to the Reply and Defence to Counterclaim to be made within 7 days thereafter.

(b) If an appeal is brought against this decision within the time limited for appeal, the order at [50] above is stayed pending determination of the appeal.