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Grounds publishedDecided 23 Jun 2015
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High Court

Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd and others and another suit

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[2015] SGHC 159Case no. Suit No 315 of 2010 (Summons No 2458 of 2013) and Suit No 738 of 2011 (Summons No 2455 of 2013)

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  1. Lee Seiu Kin J:

  2. Introduction

  3. [1] This case concerns patents for a coupling device used to secure shipping containers and commonly known as a twistlock. In Suit No 315 of 2010 (“S 315/2010”) and Suit No 738 of 2011 (“S 738/2011”), the plaintiff commenced proceedings against two sets of defendants for alleged infringement of the patents. The defendants denied any infringement of the patents and counterclaimed to invalidate them for lack of novelty. Subsequently, the plaintiff applied under s 83(1) of the Patents Act (Cap 221, 2005 Rev Ed) for leave to amend the claims of the patents. The issue before me is whether the plaintiff should be allowed to amend the patents.

  4. [2] For the reasons set out in this judgment, I dismiss the plaintiff’s applications to amend the patents.

  5. Facts

  6. The plaintiff and its patents

  7. [3] The plaintiff, Ship’s Equipment Centre Bremen GmbH (“the Plaintiff”), is the proprietor of two Singapore patents (collectively referred to as “the Plaintiff’s Patents”):

  8. (a) Singapore Patent SG110370 (“the 370 Patent”); and

  9. (b) Singapore Patent SG129978 (“the 978 Patent”).

  10. [4] The Plaintiff obtained the 370 Patent pursuant to the Singapore patent application number 200500741-4 (“the 370 Patent Application”), which was based on PCT application number PCT/EP2003/004162 filed on 22 April 2003 (“the PCT Application). The Plaintiff also filed the European patent application EP 03727334.9 (“the European Patent Application”) based on the PCT Application. The European Patent Application was subsequently granted as European Patent EP 1534612 B1 (“the European Patent”).

  11. Suit No 315 of 2010

  12. [5] On 5 May 2010, the Plaintiff commenced S 315/2010 against Fuji Trading (Singapore) Pte Ltd for infringing the Plaintiff’s Patents by an offer of sale of a freight container coupling device known as FA-8. On 26 November 2010, the Plaintiff amended its statement of claim and joined Fuji Transport Systems Co Ltd and Taiyo Seiki Iron Works Co Ltd, as the second and third defendants in S 315/2010. It was alleged that the defendants in S 315/2010 had acted with a common design to infringe the Plaintiff’s Patents. The second and third defendants denied the allegation of infringement. Among other things, they challenged the validity of the Plaintiff’s Patents.

  13. Suit No 738 of 2011

  14. [6] On 19 October 2011, the Plaintiff commenced S 738/2011 against Moby Dick Supplies Pte Ltd and ISS Equipment Pte Ltd for infringing the Plaintiff’s Patents. Like the second and third defendants in S 315/2010, the defendants in S 738/2011 also challenged the validity of the Plaintiff’s Patents.

  15. Amendment of the 370 Patent

  16. [7] On 18 December 2012, the Plaintiff gave notice to the Registrar of Patents of its intention to amend the 370 Patent in S 315/2010. On 3 January 2013, the Plaintiff gave notice to the Registrar of Patents of its intention to amend the 370 Patent in S 738/2011. On 28 December 2012 and 30 January 2013, the Registrar of Patents published the advertisement for the Plaintiff’s proposed amendments to the 370 Patent in the Patents Journal.

  17. [8] The proposed amendments to the 370 Patent, marked up against the claims of the patent as granted, are as follows:

  18. For convenience, I shall refer to the proposed amendments individually as “Proposed Amended Claim” followed by the corresponding paragraph number, and collectively as “the Proposed Amendments”.

  19. [9] It was stated in the statement of reasons attached to the two notices to the Registrar of Patents that the Proposed Amendments were “to amend the claims in the Patent to correspond to the allowed claims of the corresponding [European Patent]”. By way of background, the European Patent was amended in the course of opposition proceedings before the Opposition Division of the European Patent Office (“EPO”). The amendments were allowed on 10 November 2010. The Proposed Amendments in the present case are identical to the amendments that were allowed by the Opposition Division of the EPO.

  20. [10] On 25 January 2013, the Plaintiff was served with a statement of opposition by the second and third defendants in S 315/2010 and the first and second defendants in S 738/2011 (collectively known as “the Defendants”).

  21. [11] On 10 May 2013, the Plaintiff filed summons no 2458 of 2013 (“SUM 2458/2013”) in S 315/2010 and summons no 2455 of 2013 (“SUM 2455/2013”) in S 738/2011 to apply for leave under O 87A r 11 of the Rules of Court (Cap 332, R 5, 2006 Rev Ed) and s 83 of the Patents Act to amend the 370 Patent.

  22. The parties’ cases

  23. [12] The Defendants take the view that the Proposed Amendments do not comply with the requirements of the Patents Act because they lack clarity and conciseness, are not supported by the description, and disclose additional matter and/or extend the protection of the patent. The Defendants also submit that the Proposed Amended Claim 1 should not be allowed because “the EPO has determined [the Plaintiff’s] equivalent claim to be invalid, and no amendment should be allowed if it leads to an invalid patent”. Alternatively, the Defendants contend that even if the Proposed Amendments comply with the requirements under the Patents Act, the Court should nevertheless exercise its discretion to reject the Proposed Amendments on the following grounds:

  24. (a) The Plaintiff had made incomplete disclosure in relation to the Proposed Amendments.

  25. (b) There had been undue delay on the part of the Plaintiff in applying for the Proposed Amendments.

  26. (c) The Plaintiff had sought and obtained an unfair advantage during the period of undue delay.

  27. [13] The Plaintiff disagrees. Among other things, the Plaintiff claims that the Defendant’s objection to the Proposed Amendments “turns on the interpretation and construction of English terms used in the [Proposed Amendments]”.

  28. Issues before this Court

  29. [14] The issues are as follows:

  30. (a) Whether the amendments to Proposed Amended Claim 1 should be allowed if the 370 Patent would nevertheless be invalid.

  31. (b) Whether the Proposed Amendments meet the requirements under the Patent Act.

  32. (c) Whether the Court should exercise its discretion to reject the Proposed Amendments even though the requirements under the Patents Act were met.

  33. [15] I will address these issues in turn.

  34. First issue: Whether the amendments to Proposed Amended Claim 1 should be allowed if the 370 Patent would nevertheless be invalid

  35. [16] The Defendants contend that the amendments to Proposed Amended Claim 1 should not be allowed because the 370 Patent would still be invalid even if the amendments were allowed. The Defendants’ contention is based on the decision of the Appeal Board of the EPO dated 26 November 2014 that the equivalent of the Proposed Amended Claim 1 under the European Patent is not patentable due to lack of inventive step. The Defendants submit that the outcome and reasoning of a post-grant proceedings before the EPO in respect of an European patent that corresponds to a Singapore patent is persuasive, and this is especially so where subject matter in both cases are identical. In this regard, the Defendants point out that the European Patent and the 370 Patent were derived from the same PCT Application ([4] above), and the Proposed Amendments were identical to the amendments that were allowed by the EPO ([9] above). Accordingly, the Defendants argue that the amendments to the Proposed Amended Claim 1 should not be allowed.

  36. [17] I do not agree with the Defendants’ contention. The EPO decisions only are of persuasive value before the Singapore courts, and we are not bound by them, even if they pertain to the same issue. The court in Main-Line Corporate Holdings Ltd v DBS Bank Ltd [2012] 4 SLR 147 (“Main-Line”) at [52] held that:

  37. [18] On a more general note, the Court of Appeal in First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal [2008] 1 SLR(R) 335 (“First Currency”) at [2] observed that different jurisdictions may well have different views on the same issue:

  38. [19] With respect, no matter how persuasive one might consider an EPO decision to be, the validity of a Singapore patent is ultimately a question for the Singapore courts to decide. The Defendants’ contention would inevitably require that this Court decide on the validity of the 370 Patent before it can determine whether the Proposed Amended Claim 1 should be allowed. This puts the proverbial cart before the horse. Such an approach should not be accepted in the present case where the issue of validity is scheduled to be heard after SUM 2455/2013 and SUM 2458/2013 have been decided. As such, it is necessary to proceed with the examination of the validity of the Proposed Amendments.

  39. Second issue: Whether the Proposed Amendments meet the requirements under the Patent Act

  40. [20] As an alternative argument, the Defendants submit that the Proposed Amendments should not be allowed because they do not comply with the requirements under the Patents Act, in particular:

  41. (a) The Proposed Amendments lack clarity, conciseness and the support of the description (see ss 25(5)(b) and (c) of the Patents Act).

  42. (b) The Proposed Amendments disclose additional matter (see s 84(3)(a) of the Patents Act).

  43. (c) The Proposed Amendments extend the protection of the patent (see s 84(3)(b) of the Patents Act).

  44. [21] I will set out the relevant legal principles before I proceed to consider whether the Proposed Amendments comply with the requirements under the Patents Act.

  45. Law on patent amendments

  46. [22] Under s 84(3)(a) of the Patents Act, the amendment of the specification of a patent would be allowed only if it does not result in the specification “disclosing any additional matter”. The test to be applied in determining whether the amendments to a patent’s specification would disclose additional matter (under s 84(3)(a) of the Patents Act) has been laid down in Bonzel (T) v Intervention Limited (No 3) [1991] RPC 553 (“Bonzel”) as follows:

  47. (a) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly, in the patent application as filed.

  48. (b) To do the same in respect of the patent as proposed to be amended.

  49. (c) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.

  50. [23] The Bonzel test has been endorsed by the Court of Appeal in FE Global Electronics Pte Ltd and others v Trek Technology (Singapore) Pte Ltd and another appeal [2006] 1 SLR(R) 874 (“FE Global (CA)”) at [24], and applied by subsequent High Court cases, including Martek Biosciences Corp v Cargill International Trading Pte Ltd [2011] 4 SLR 429 at [81], Main-Line at [73] and Novartis AG and another v Ranbaxy (Malaysia) Sdn Bhd [2013] 2 SLR 117 (“Novartis”) at [8]. As the court in Novartis pointed out at [8], the test in Bonzel has been further elaborated upon in European Central Bank v Document Security Systems Incorporated [2007] EWHC 600 (Pat) at [97]–[102]:

  51. [24] Section 84(3)(b) of the Patents Act mandates that the amendment of the specification of a patent shall not be allowed if it “extends the protection conferred by the patent”. In order to determine if the scope of protection of the patent has been extended, one must examine and compare the totality of the claims before and after the proposed amendments. The extension of the scope of an individual claim per se is not objectionable if it does not result in the extension of the protection of the patent: Richard Miller et al, Terrell on the Law of Patents (Sweet & Maxwell, 17th Ed, 2011) (“Terrell”) at para 15-41, citing Siegfried Demel v Jefferson [1999] FSR 204 at 213.

  52. [25] Apart from s 84(3) of the Patents Act, the proposed amendments must also satisfy the requirements under ss 25(5)(b) and (c) of the Patents Act, ie, the claim or claims must be “clear and concise” and “supported by the description”. These are the “base-line criteria” for which any amendments must satisfy: Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and others and other suits [2005] 3 SLR(R) 389 (“FE Global (HC)”) at [52]. I agree with the observations of Kitchin LJ in Sudarshan Chemical Industries Ltd v Clariant Produkte (Deutschland) GmbH [2014] RPC 6 (“Sudarshan”) at [77]:

  53. Further, the learned authors in Terrell observed at para 15-43 that “[w]here an amendment is of a vague nature and would create uncertainty as to what the new claim really means, it will be refused”. In the same vein, any proposed amendment that introduces uncertainty would fall foul of s 25(5)(b) of the Patents Act and must accordingly be rejected.

  54. General principles of patent construction

  55. [26] The Court of Appeal in First Currency began its discussions on the general principles of patent construction by observing at [22] that:

  56. While First Currency was concerned with patent construction in relation to the question of infringement, there can be no doubt that the same exercise is relevant when a court has to decide whether a set of proposed amendments comply with the requirements under the Patents Act. Accordingly, I find it apposite to consider some of the principles of patent construction.

  57. [27] I start with s 113(1) of the Patents Act, which reads:

  58. [28] It is well accepted in Singapore that a purposive construction should be adopted when construing a patent specification. In the seminal House of Lords decision of Catnic Components Limited and another v Hill and Smith Limited [1982] RPC 183, Lord Diplock said at 242–243:

  59. This has been endorsed by the Court of Appeal in FE Global (CA) at [14], where it commented that the purposive approach was preferred because it “balance[d] the rights of the patentee and those of third parties”. The Court of Appeal reaffirmed this in First Currency at [26], where it added that:

  60. [29] According to M P H Rubin J in V-Pile Technology (Luxembourg) SA and others v Peck Brothers Construction Pte Ltd [1997] 3 SLR(R) 981 at [63], the purposive approach towards patent construction would allow one to refer to the description and the drawings when interpreting the claims. Indeed, s 113(1) of the Patents Act specifically states so. Judith Prakash J in Ng Kok Cheng v Chua Say Tiong [2001] 2 SLR(R) 326 at [87] explained that it is legitimate in approaching the construction of the claims to read the specification as a whole because it “provides the necessary background and in some cases the meaning of the words used in the claims may be affected by or defined by what is said in the body of the specification”.

  61. [30] While the other parts of a patent specification may be helpful in the construction of the claims, it would not be permissible to rely on them to narrow or expand the claims (which define the boundaries of the monopoly). In Bean Innovations Pte Ltd and another v Flexon (Pte) Ltd [2001] 2 SLR(R) 116 (“Bean Innovations”), the Court of Appeal at [16] explained that:

  62. [31] The Court of Appeal also acknowledged at [18] that the “words and terms [in a claim] must be given their reasonable and sensible meaning” and that a purposive construction must be adopted. However, the Court of Appeal cautioned at [27] that the purposive construction would not entitle the courts to disregard the clear and unambiguous words used to describe the essential features of a claim and that “one cannot write words into a claim that are not there or give a meaning to a term of a claim that is contrary to its language”.

  63. [32] The Court of Appeal in First Currency also observed at [23]–[24] that:

  64. [33] It is also important to bear in mind, when construing claims, not to assume that the scope of the claims is necessarily co-extensive with the teaching of the description: Terrell at para 9-45. In Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, Lord Hoffman stated at [33] that:

  65. [34] In addition, it should be noted that the reference numerals or signs which appear in a claim are irrelevant to the construction of the claim. It is stated in Terrell at para 9-119 that:

  66. The reasoning of Jacob LJ in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2010] RPC 8 applies in Singapore as well. In particular, I note that the examination guidelines for Patent Applications at the Intellectual Property Office of Singapore (14 February 2014) at para 2.64 states that:

  67. [35] With these general principles of patent construction in mind, I turn now to consider if the Proposed Amendments meet the requirements under the Patents Act.

  68. Application to the Proposed Amendments

  69. [36] At the start of the hearing, counsel for the Defendants state that his objections were confined to the Proposed Amended Claims 1, 4, 5, 7 and 9. This is a different position from that taken in the written submissions, in which every single one of the nine Proposed Amended Claims was contested. For completeness, I shall address all of the Defendants’ arguments notwithstanding the oral concession at the hearing.

  70. [37] At this juncture, I should also clarify that the decision of the EPO to allow the amendments (which were, as I understand, the same as the Proposed Amendments) should not in any way affect the outcome of these proceedings. I have explained my reasons above at [17]–[18]. In any event, I should add that there was no evidence adduced to show the reasoning of the EPO in relation to the amendments with regard to the European Patent.

  71. [38] I will now consider Proposed Amended Claim 1.

  72. Proposed Amended Claim 1

  73. [39] The Proposed Amended Claim 1 reads as follows:

  74. [40] The Defendants object to Proposed Amended Claim 1 on the basis that it discloses additional matter, extends the protection of the patent and is not clear, concise or supported by the description.

  75. [41] The subject matter of the objection is the locking catch (which is circled in the left diagram below), and the sloping shoulder (which is marked out with an “X” in the right diagram below):

  76. [42] It is also important to understand what the corner fitting of a container looks like and a diagram is reproduced below:

  77. [43] Figure 13 in the 370 Patent (reproduced below) shows the coupling device in a corner fitting (which has been shaded), when viewed from the longitudinal direction of the containers:

  78. (1) Discloses additional matter

  79. [44] The Defendants submit that the Proposed Amended Claim 1 results in the following instances of added subject matter:

  80. (a) An “unwarranted generalisation” based on a specific disclosure in the 370 Patent Application.

  81. (b) An inclusion of at least three additional embodiments not previously disclosed in the 370 Patent Application.

  82. (A) Unwarranted generalisation

  83. [45] According to the Defendants, the wording “... the upper container is lifted during unloading of the same is shifted in a direction opposite to the direction where the locking catch points”, as used in the Proposed Amended Claim 1, is an “unwarranted generalisation” that discloses additional matter. The Plaintiff, on the other hand, claims that the 370 Patent Application already disclosed that the coupling device shifts in a direction opposite to the direction where the locking catch points.

  84. [46] To support its contention, the Defendants referred to Novartis at [36], where the High Court considered the concept of intermediate generalisation and accepted that the narrowing of claims may, in certain cases, add matter. However, I do not think that intermediate generalisation captures what the Defendants are trying to say in the present case. In Cornish, Llewelyn and Aplin, Intellectual Property Patents, Copyright, Trade Marks and Allied Rights (Sweet & Maxwell, 7th Ed, 2010) (“Cornish”) at paras 4-32 and 4-33, the learned authors explain the concept of intermediate generalisation as follows:

  85. [47] To illustrate using the crimping tool in Cornish, there are at least three possible ways in which proposed amendments could disclose additional matter, namely:

  86. (a) If no stop device was disclosed in the patent application, but the proposed amendments disclose a stop device.

  87. (b) If a particular kind of stop device was disclosed in the patent application, but the proposed amendments disclose all kinds of stop devices.

  88. (c) If stop devices in general was disclosed in the patent application, but the proposed amendments disclose a particular kind of stop device.

  89. It appears from the passage in Cornish that only the third example would constitute intermediate generalisation.

  90. [48] However, not all intermediate generalisations are inherently objectionable. To explain this point, I rely on the illustration found in the United Kingdom Intellectual Property Office decision of Clear Focus Imaging Inc v Contra Vision Ltd (10 April 2003, unreported) at [24]–[26]. I find the illustration in the case exceptionally helpful and I gratefully adopt it. If a patentee discloses apples, oranges and bananas and claims “fruit”, but he discovers after the grant that apples are old, he can amend to have two claims, one for oranges and one for bananas (assuming that they have been described in the specification). To amend the claim to “fruit having an inedible rind”, which teaches something that had not been taught before, would constitute intermediate generalisation which discloses additional matter. The generalisation is “intermediate” insofar as it is broader than the specific embodiments, ie, oranges or bananas, but not as broad as the original claim, ie, fruits. This also explains why the first and second examples in the crimping tool illustration would not fall within the concept of intermediate generalisation.

  91. [49] This is not a case of intermediate generalisation. As I understand it, the Defendants’ contention is that the Proposed Amended Claim 1 discloses additional matter because the Proposed Amended Claim 1 discloses the general concept that the coupling device always moves in a direction opposite to the direction where the locking catch points, even though the 370 Patent Application only discloses that the coupling device moves to the left when the locking catch, which points to the right, abuts the bottom of the corner fitting. The Defendants’ real complaint, it seems to me, is that the Proposed Amended Claim 1 is not supported by the description in the 370 Patent Application (and this will be addressed separately later). If there is nothing in the patent application to support a proposed amendment to the claim, then the proposed amendment would also be considered as having disclosed additional matter: B & R Relays Ltd’s Application [1985] RPC 1 at 7; Raychem Ltd’s Application [1986] RPC 547 at 555.

  92. [50] As mentioned earlier ([45] above), the Plaintiff takes the position that the 370 Patent Application discloses that the coupling device moves in a direction opposite to the direction where the locking catch points. In particular, the Plaintiff refers to the 370 Patent Application which states:

  93. I should add that the locking catch in Figure 2 ([41] above) points to the right.

  94. [51] I find that the 370 Patent Application shows that the coupling device “shift[s] in a direction opposite to the direction where the locking catch points”. The wording must be read in the context of the Proposed Amended Claim 1 which states that the locking catch is “arranged laterally” when the coupling device is viewed from the longitudinal direction of the containers. In other words, with reference to Figure 2, the locking catch would either point to the right or the left. The Plaintiff argues that the two passages in the description ([50] above), when read together, would disclose that the coupling device moves in a direction opposite to the direction of the locking catch when the sloping shoulder abuts the corner fitting. I agree with this. The first passage makes it quite clear that the locking catch can be either on the right or the left side of the coupling device, and Figure 2 merely shows one of the possible embodiments of the coupling device with the locking catch pointing to the right. It would also be clear to a person skilled in the art that the coupling device, by virtue of the upward lifting force during the unloading process and abutment of the sloping shoulder to the corner fitting, would move in the direction opposite to the direction where the locking catch points. In this respect, it should be noted that the Defendants’ expert witness, Erik Elof Mellberg (“Mellberg”) had, in his first affidavit of evidence-in-chief (“AEIC”), accepted that:

  95. Accordingly, I find that the Proposed Amended Claim 1 does not disclose additional matter.

  96. (B) Additional embodiments

  97. [52] The Defendants argue that the Proposed Amended Claim 1 discloses three additional embodiments, namely:

  98. (a) First, an embodiment where the locking catch points to the left instead of the right (“the First Additional Embodiment”).

  99. (b) Second, an embodiment where the locking catch may contact any point of the corner fitting, instead of the bottom of the corner fitting, in order to give rise to the necessary motion to disengage (“the Second Additional Embodiment”).

  100. (c) Third, an embodiment where the sliding locking catch retracts into the coupling device, against the force of the spring, when it abuts the corner fitting (“the Third Additional Embodiment”).

  101. [53] For the purposes of the hearing, Mellberg had helpfully prepared a diagram to illustrate the First Additional Embodiment, which I reproduce here:

  102. [54] For the same reasons set out at [51], the First Additional Embodiment which has been disclosed in the 370 Patent Application, would not be considered as added matter. I should add that Mellberg had confirmed that the First Additional Embodiment is “a twistlock that will not function in reality”.

  103. [55] I move on to the Second Additional Embodiment. According to Mellberg, the Proposed Amended Claim 1 does not describe where the locking catch abuts the corner fitting and would cover a coupling device where the locking catch abuts at any point in the corner fitting. He claims that the Proposed Amended Claim 1 would disclose additional matter when compared to the 370 Patent Application, which merely describes that the locking catch “abuts against the bottom of the container corner fitting”. This cannot be correct. The words “abuts the corner fitting” in the Proposed Amended Claim 1 would not disclose the Second Additional Embodiment. Mellberg’s view results from a literal consideration of the words “abuts the corner fitting” without regard to the rest of the specification. It is quite clear that one must be allowed to refer to the description and the drawings when construing the claims ([29] above). In Strix Ltd v Otter Controls Ltd [1995] RPC 607 at 650–651, Ferris J accepted that an amendment would not disclose additional matter where a feature is evident from the reading of the specification in conjunction with the drawings included in the patent. It is also not wrong to rely on reference numerals or signs to “see where in the specific embodiment a particular claim element is”, even though they may not be relevant to the construction of a patent ([34] above). As such, I prefer the evidence of the Plaintiff’s expert witness, Johan Marinus Huisman (“Huisman”), that the Proposed Amended Claim 1, when read in conjunction with Figure 2 ([41] above), would not disclose additional matter in the form of the Second Additional Embodiment.

  104. [56] Next, I shall consider the Third Additional Embodiment which, according to the Defendants, is disclosed by the wording “gets disengaged from the corner fitting of the container, when the sloping shoulder ... abuts the corner fitting” in Proposed Amended Claim 1. The Third Additional Embodiment has been illustrated by Mellberg in the diagram below:

  105. [57] Mellberg takes the view that the Third Additional Embodiment is disclosed by the Proposed Amended Claim 1 but not the 370 Patent Application. In his opinion, the additional matter is that the coupling device will be disengaged when the locking catch abuts the corner fitting without the need for movement to the left. Huisman disagrees and claims that the Third Additional Embodiment is not disclosed by, inter alia, the Proposed Amended Claim 1. I do not think that the Proposed Amended Claim 1 would, as suggested by Mellberg, disclose the Third Additional Embodiment. The Proposed Amended Claim 1 states:

  106. A purposive reading of the Proposed Amended Claim 1 would show that it could not possibly disclose an embodiment which would not shift to the left when the upper container is lifted and the locking catch (which points to the right) abuts the corner fitting. It explicitly states that the coupling device would shift in the direction opposite to the direction in which the locking catch points. Accordingly, I find that the Proposed Amended Claim 1 would not disclose the Third Additional Embodiment.

  107. [58] To summarise, I find that:

  108. (a) The First Additional Embodiment is not added matter given that it has been disclosed in the 370 Patent Application.

  109. (b) The Proposed Amended Claim 1 would not disclose the Second Additional Embodiment and Third Additional Embodiment.

  110. (2) Extends protection

  111. [59] I move on to consider the Defendants’ next argument, that is, the Proposed Amended Claim 1 extends the protection of the 370 Patent.

  112. [60] The Defendants claim that the Proposed Amended Claim 1 extends the protection of the 370 Patent because it now confers protection to a number of embodiments which have not been protected by the 370 Patent. The Plaintiff denies this. In particular, the Plaintiff submits that the 370 Patent discloses that the locking catch can be assigned to either side of the coupling device.

  113. [61] The starting point is to ask: what is the scope of protection under the 370 Patent? The Defendants argue that the term “sloping shoulder” in claim 1 of the 370 Patent is ambiguous and a person skilled in the art would refer to the rest of the specification to resolve the ambiguity. In particular, the Defendants highlight the following passage:

  114. The Defendants argue that the person skilled in the art, having read the specification, would understand the sloping shoulder to have a “functional element which is determined by a very specific interaction with the ... corner fitting ... such that the coupling [device] is shifted to the left”. However, I note that the description of the 370 Patent also states that:

  115. [62] I therefore do not agree that a person skilled in the art would come to the conclusion suggested by the Defendants. The more likely view is that a person skilled in the art would understand that the locking catch can be on either the right or the left long sides of the coupling device, and this is consistent with the claim which states the locking catch as being “arranged laterally” when the coupling device is viewed from the longitudinal direction of the containers.

  116. [63] In any event, the Defendants’ contention would, in effect, result in the use of the other parts of the specification to narrow the scope of the protection in the claims. It is trite law that the description cannot be used to narrow the scope of the claims ([30] above). Claim 1 of the 370 Patent only states that the locking catch is “arranged laterally” when the coupling device is viewed from the longitudinal direction of the containers. The language in the claim is wide enough to encompass coupling devices with the locking catch on either side, and it is supported by the description ([61] above). It would therefore be inappropriate for the Defendants to rely on the references to one specific embodiment where the locking catch is pointed to the right to narrow the scope of the claims.

  117. [64] The next step in the inquiry is to consider the scope of protection under Proposed Amended Claim 1. I have found earlier at [54]–[57] that the First Additional Embodiment is not considered an added matter, and that the Second and Third Additional Embodiment are not disclosed by the Proposed Amended Claim 1. Since the Second and Third Additional Embodiment are not disclosed by the Proposed Amended Claim 1, they would not be relevant to the issue of whether the scope of protection has been extended by the Proposed Amended Claim 1. Given that the 370 Patent and the Proposed Amended Claim 1 would both disclose the First Additional Embodiment, it follows that there is no basis for the Defendants’ contention that the Proposed Amended Claim 1 extends the scope of protection of the 370 Patent.

  118. [65] I proceed to the Defendants’ third and final argument in relation to the Proposed Amended Claim 1.

  119. (3) Not clear, concise or supported by the description

  120. [66] The Defendants’ contention is, in essence, that the Proposed Amended Claim 1 is unsupported by the description which only discloses a specific embodiment where the coupling device (with a locking catch pointing to the right) shifts to the left when the upper container is lifted and the sloping shoulder abuts the corner fitting. I have considered the issue, albeit for a related but distinct point, above at [49] and [51]. For the same reasons stated there, I find that the Proposed Amended Claim 1 is supported by the description.

  121. Proposed Amended Claim 2

  122. [67] The Proposed Amended Claim 2 reads as follows:

  123. [68] This is one of the Proposed Amendments which has not been addressed during the hearing.

  124. [69] In their submissions, the Defendants contend that Proposed Amended Claim 2 should be rejected for disclosing additional matter, extending protection of the 370 Patent and lacking in clarity, conciseness and unsupported by the description. The Defendants’ objection, as I understand from their submissions and Mellberg’s evidence, is that Proposed Amended Claim 2 refers to and is dependent on Proposed Amended Claim 1. Since the Defendants’ submission in relation to Proposed Amended Claim 1 had been rejected earlier, there is nothing left for the Defendants to base their objection for Proposed Amended Claim 2. In addition, the Proposed Amended Claim 2, on its own, would not fall foul of the requirements under the Patents Act. Accordingly, there is no basis for the Defendants’ objection to Proposed Amended Claim 2.

  125. Proposed Amended Claim 3

  126. [70] The Proposed Amended Claim 3 reads as follows:

  127. [71] Like Proposed Amended Claim 2, this is also one of the Proposed Amendments which has not been addressed during the hearing.

  128. [72] The Defendants’ objection to Proposed Amended Claim 3 is substantially similar to Proposed Amended Claim 2, ie, that the Proposed Amended Claim 3 refers to and is dependent on Proposed Amended Claims 1 and 2. I have considered Mellberg’s evidence, but for the reasons above ([69] above), I find no basis for the Defendants’ objection to Proposed Amended Claim 3.

  129. Proposed Amended Claim 4

  130. [73] The Proposed Amended Claim 4 reads as follows:

  131. [74] There are two alternative limbs to the Defendants’ objection to Proposed Amended Claim 4, namely:

  132. (a) The Proposed Amended Claim 4 refers to and is dependent on Proposed Amended Claims 1 to 3, and they disclose additional matter, extend protection and/or lack clarity, conciseness and support of the description.

  133. (b) The Proposed Amended Claim 4, on its own, discloses additional matter, extends the protection and lacks clarity, conciseness and support of the description.

  134. [75] The objection relates, in essence, to the lead-in chamfer (which is circled in Figure 2 below):

  135. [76] Figure 15 below provides an alternative embodiment of the coupling device where the lead-in chamfer has two gradients:

  136. [77] As regards the first limb of the objection, the same reasons that I have given earlier (at [69] and [72]) apply equally here. With that, I move on to the second limb of the objection with regard to Proposed Amended Claim 4.

  137. (1) Discloses additional matter

  138. [78] The Defendants argue that Proposed Amended Claim 4, which replaces the term “provided” for the term “formed”, would result in a materially different technical understanding by the person skilled in the art, and hence, discloses additional matter. The Plaintiff takes the view that the word “formed” only serves to clarify what was already disclosed in the 370 Patent Application, and it follows that no additional matter is disclosed.

  139. [79] Mellberg’s evidence on this issue is inconsistent. He initially took the position in his first AEIC that the replacement of the term “provided” with the term “formed” only serves to clarify what was already disclosed in the Patent Application. Later, he changed his view in his second AEIC to say that the term “provided” which was used in the 370 Patent Application would convey a meaning different from the term “formed” in Proposed Amended Claim 4. He explained that the term “provided” was used throughout the 370 Patent Application in respect of defining or describing various features of the coupling device, and in contrast, the term “formed” was not used even at all. Mellberg changed his position once more when he confirmed during cross-examination that he is still of the opinion as stated in his first AEIC, ie, the proposed amendment only serves to clarify what was already disclosed in the 370 Patent Application. The Defendants submit that it was not specifically put to Mellberg that he stood by his initial opinion in respect of the replacement of the term “provided” with the term “formed”. However, there is no merit to the Defendants’ submission. In particular, Mellberg confirmed that he stands by para 142 of his first AEIC, which contains, inter alia, his initial opinion that the replacement of the term “provided” with the term “formed” only serves to clarify what was already disclosed in the Patent Application. In my view, it is immaterial that para 142 of his first AEIC contained more than one proposed amendment given that Mellberg’s confirmation during the cross-examination was clear and unconditional. The Defendants also point out that Mellberg came to a different view in his second AEIC after having considered Huisman’s first AEIC where, as I shall elaborate later, Huisman accepts that the two words are different. Again, I do not see how that advances the Defendants’ case especially in light of Mellberg’s confirmation that he stands by his initial opinion.

  140. [80] I turn to consider Huisman’s evidence. In his first AEIC, he stated that the term “formed” was a “better technical word”, taking into consideration the casting process which was used to construct the coupling piece, and this has been disclosed in the Patent Application. However, Huisman’s position was less clear during the hearing. On the one hand, it appears that he maintains his view in the first AEIC. On the other hand, however, he considers that the replacement of the term “provided” with the term “formed” was unnecessary from a technical point of view. In addition, the Defendants point out that the term “provided” was used in the 370 Patent Application in relation to other features of the coupling piece that also underwent the casting process (eg, the locking catch), but the Plaintiff had not sought to amend those other instances. Despite that, Huisman sought to explain the term “formed” on the basis of the casting process. This, the Defendant argues, casts a doubt on the objectivity of Huisman. However, as the Court of Appeal observed in Mühlbauer AG v Manufacturing Integration Technology Ltd [2010] 2 SLR 724 (“Mühlbauer”) at [47], the relevant test is one of actual as oppose to appearance of partiality. I do not think that the threshold has been met; no evidence was adduced to show that Huisman was actually biased.

  141. [81] Given the state of evidence before this Court, I should start by stating that while expert evidence may be helpful, it is ultimately for the court to decide whether the requisite legal criteria have (or have not) been met: Mühlbauer at [47]. As noted in Contour Optik Inc and others v Pearl’s Optical Co Pte Ltd and another [2002] SGHC 238 at [35], “the construction of a patent is a matter for the court and not the expert witness”.

  142. [82] Applying the Bonzel test ([22] above), I find that the replacement of the term “provided” with the term “formed” would disclose additional matter. Nowhere in the 370 Patent Application was the term “formed” used in relation to the chamfer labelled as 52. In fact, the term “formed” does not appear at all. Instead, the description in the Patent Application states that “... the lead-in chamfer is first provided with a steeper chamfer [labelled as] 52”. This was precisely what the Plaintiff is seeking to replace in Proposed Amended Claim 4. In my view, a person skilled in the art would understand the term “formed” to connote a different meaning from that of the term “provided”. The difference is not merely one of linguistic clarity. The evidence of the experts supports this. Huisman’s evidence is that the term “formed” means that the feature is an integral part of the coupling piece as a result of the casting process whereas the term “provided” indicates something more. Likewise, Mellberg considers that the term “provided” may be understood to mean that the feature “may not be integral with the coupling piece”, while the term “formed” would suggest that it is. Therefore the replacement of the term “provided” for the term “formed” as in Proposed Amended Claim 4 would result in a different understanding of the casting process, specifically for the chamfer labelled as 52, and this was not disclosed in the 370 Patent Application.

  143. [83] My finding that Proposed Amended Claim 4 discloses additional matter would suffice for this Court to reject Proposed Amended Claim 4. For completeness, however, I shall proceed to consider the Defendants’ alternative arguments with regard to Proposed Amended Claim 4.

  144. (2) Extends protection

  145. [84] The Defendants submit that the Proposed Amended Claim 4 would extend the protection of the 370 Patent because it does not cover an embodiment of the coupling device where the lead-in chamfer is “formed with a first chamfer ...” I do not agree with the Defendants’ submission. The claims in the 370 Patent are wide enough to cover an embodiment where the lead-in chamfer is “formed with a first chamfer ...” The term “provided” has been used in the 370 Patent to describe features that may or may not be integral with the coupling piece as a result of the casting process. For instance, Figure 15 shows an exemplary embodiment of the coupling device with a movable locking catch (which, thus, would not be integral with the coupling piece), and the description states:

  146. At the same time, the term “provided” has been used throughout the 370 Patent to refer to features that are integral with the coupling piece as a result of the casting process. As a result of the manner in which the term “provided” has been used in the 370 Patent, a person skilled in the art would not consider the term “provided” to exclusively refer to features that are not integral to the coupling piece as a result of the construction method, ie, the casting process. Therefore, I find that the Proposed Amended Claim 4 would not extend the scope of protection of the 370 Patent.

  147. (3) Not clear, concise or supported by the description

  148. [85] The Defendants submit that the Proposed Amended Claim 4 is neither clear nor supported by the description. Specifically, the Defendants reiterate the point that the term “formed” is not used in the 370 Patent Application or the 370 Patent, and that the term “provided” has been used for features which may or may not be integral with the coupling piece as a result of the casting process.

  149. [86] I agree with the Defendants on this point. The Proposed Amended Claim 4 would result in a lack of clarity because it would result in inconsistency in the description of the features which are integral with the coupling piece as a result of the casting process. If Proposed Amended Claim 4 were allowed, then some features which are integral to the coupling piece would be described as “provided” whereas chamfer labelled as 52 (which is also integral to the coupling piece) would be described as “formed”. The discrepancy would render the scope of the protection under the 370 Patent unclear. This is one of those amendments which, in the words of the learned authors in Terrell at para 15-43 ([25] above), would “create uncertainty as to what the new claim really means”. Therefore I find the Proposed Amended Claim 4 to be unclear and that it should be rejected under s 25(5)(b) of the Patents Act.

  150. [87] Also, for the reasons that I have stated earlier at [82], I find that the Proposed Amended Claim 4 is not supported by the description and should be rejected under s 25(5)(c) of the Patents Act.

  151. Proposed Amended Claim 5

  152. [88] The Proposed Amended Claim 5 reads as follows:

  153. [89] The Defendants’ objection in relation to Proposed Amended Claim 5 can be divided into two parts, namely:

  154. (a) The Proposed Amended Claim 5 refers to and is dependent on Proposed Amended Claims 1 to 4, and they disclose additional matter, extend protection and/or lack clarity, conciseness and support of the description.

  155. (b) The Proposed Amended Claim 5 would, on its own, disclose additional matter and extends the scope of protection.

  156. [90] In relation to the first part of the contention, having rejected Proposed Amended Claim 4, it follows that I should also reject Proposed Amended Claim 5.

  157. [91] As for the second part of the contention, the gist of it lies with the wording “the locking catch is designed to be slidable against the coupling projection” in the Proposed Amended Claim 5. The original claim in the 370 Patent Application states that it is “cross-slidable” against the force of a spring. An example of a coupling device with such a locking catch would be Figure 16:

  158. [92] As mentioned earlier, the Defendants say that Proposed Amended Claim 5 discloses additional matter and extends the protection of the 370 Patent. I discuss both points below.

  159. (1) Discloses additional matter

  160. [93] The Defendants take the view that the replacement of the term “cross-slidable” with the term “slidable” would disclose additional matter. In particular, the Defendants submit that the term “cross-slidable” connotes linear motion while the term “slidable” includes linear as well as rotational motion. The Defendants argue that since the 370 Patent Application only discloses linear and not rotational motion, the Proposed Amended Claim 5 would disclose additional matter. The Plaintiff’s response is that no additional matter was disclosed as the term “slidable” restricts the sliding to the direction of the locking catch.

  161. [94] The evidence of the experts on this point is clear. Mellberg says that the term “cross-sliding” refers to a linear motion while the term “sliding” can include both linear and rotational motion. Huisman, on the other hand, considers that the original wording “cross-slidable against the force of a spring” is vague and can be in “any direction”, whereas the Proposed Amended Claim 5 restricts the “sliding direction against the coupling projection”.

  162. [95] In my view, the Proposed Amended Claim 5 does not disclose additional matter. I disagree with Mellberg that the term “sliding” would include a rotational motion. In my view, the wording “the locking catch is designed to be slidable against the coupling projection, in particular against the force of a spring” (emphasis added) in the Proposed Amended Claim 5, read in its proper context, would disclose that the locking catch has only one axis of movement, that is, in the direction of the spring. Further, this has been disclosed in the 370 Patent Application in the following manner:

  163. These two passages, when read in conjunction with Figure 16 ([91] above), would show that the sliding of the locking catch against a single axis has been disclosed in the 370 Patent Application. Accordingly, the replacement of the term “cross-sliding” for the term “sliding”, in this context, would not disclose additional matter.

  164. (2) Extends protection

  165. [96] The Defendants contend, in the alternative, that the Proposed Amended Claim 5, with the replacement of the term “cross-slidable” for the term “slidable”, would extend the scope of protection to cover an embodiment where the locking catch moves in a rotational (as opposed to linear) motion. The Defendants claim that it would disclose an embodiment of the coupling device that is “distinct” from the embodiments covered by the 370 Patent and thus extends the scope of protection.

  166. [97] I do not agree with the Defendants’ contention. As mentioned earlier ([95] above), the Proposed Amended Claim 5 would not disclose an embodiment where the locking catch moves in a rotational motion. Further, the claims in the 370 Patent, when read in light of Figure 16 and the description ([91] and [88] above), would disclose an embodiment where the locking catch moves along a single axis of movement, that is, in the direction of the spring. Hence, the Proposed Amended Claim 5 would not, in any way, extend the protection of the 370 Patent.

  167. Proposed Amended Claim 6

  168. [98] The Proposed Amended Claim 6 reads as follows:

  169. [99] This is another one of the Proposed Amendments that has not been addressed during the hearing.

  170. [100] The Defendants’ objection to Proposed Amended Claim 6 is that it refers to and is dependent on Proposed Amended Claims 1 to 5, and that they disclose additional matter, extend protection and/or lack clarity, conciseness and support of the description. Given that Proposed Amended Claim 4 has been rejected, I find that Proposed Amended Claim 6 should likewise be rejected.

  171. Proposed Amended Claim 7

  172. [101] The Proposed Amended Claim 7 reads as follows:

  173. [102] The Defendants object to Proposed Amended Claim 7 on two grounds, namely:

  174. (a) The Proposed Amended Claim 7 refers to and is dependent on Proposed Amended Claims 1 to 6, and they disclose additional matter, extend protection and/or lack clarity, conciseness and support of the description.

  175. (b) The Proposed Amended Claim 7 would, on its own, lack clarity and conciseness.

  176. [103] I begin with the first ground. For the same reasons articulated above at [90] and [100], Proposed Amended Claim 7 should be rejected. In any event, I proceed to consider the second ground of objection.

  177. [104] For the second ground, the Defendants argue that Proposed Amended Claim 7, which introduces the wording “in particular according to any one of claims 1 to 5”, is not clear and concise. It is pertinent to note that if the amendments were allowed, the claim would read as “according to any one of claims 1 to 6, in particular according to any one of claims 1 to 5”. Mellberg’s evidence is that this renders the Proposed Amended Claim 7 unclear. The Plaintiff’s explanation is that this is the way that a patent writer would write it in light of Proposed Amended Claim 6, and that it does not offend any rules.

  178. [105] The meaning of the wording “according to any one of claims 1 to 6, in particular according to any one of claims 1 to 5” is clear. It refers to a set of claims (ie, claims 1 to 6) and emphasis is placed on a sub-set thereof (ie, claims 1 to 5). However, the problem is redundancy. In spite of the Plaintiff’s purported explanation, there is no apparent reason for the emphasis on “claims 1 to 5”. This redundancy, in my view, introduces uncertainty as to the scope of Proposed Amended Claim 7. Claims must be “drawn in terms which are sufficiently clear for the skilled addressee to determine their scope”: Sudarshan at [77]. As a result of the redundant words “in particular according to any one of claims 1 to 5”, the scope of the Proposed Amended Claim 7 would not be clear. Even if the wording in Proposed Amended Claim 7 would not introduce uncertainty as to the scope of the claim, I find that it is not concise given that the emphasis on “claims 1 to 5” is redundant and adds nothing but meaningless words. The Plaintiff’s explanation as set out above simply does not clarify why the emphasis on “claims 1 to 5” is necessary, and the reason is not in any way apparent on its face. Accordingly, I reject Proposed Claim 7 under s 25(5)(b) of the Patents Act.

  179. Proposed Amended Claim 8

  180. [106] The Proposed Amended Claim 8 reads as follows:

  181. [107] This is the last of the Proposed Amendments that have not been addressed during the hearing. Like the others, the Defendants object to it in their written submissions.

  182. [108] The Defendants object to Proposed Amended Claim 8 because it refers to and is dependent on Proposed Amended Claim 7, which in turn refers to and is dependent on Proposed Amended Claims 1 to 6. As I had found Proposed Amended Claims 4 to 7 to be invalid, I reject Proposed Amended Claim 8 as well.

  183. Proposed Amended Claim 9

  184. [109] The Proposed Amended Claim 9 reads as follows:

  185. [110] The Defendants contend that Proposed Amended Claim 9 should be rejected for disclosing additional matter, extending protection of the 370 Patent and lacking in clarity, conciseness and unsupported by the description.

  186. [111] Proposed Amended Claim 9 concerns the movement of the upper container when the coupling and/or the uncoupling with the lower container. Depending on the shape and arrangement of the coupling devices, the upper container would either rotate about its vertical axis (see diagram below, which shows the upper container from the top view) or offset laterally during the process of loading (ie, coupling) and/or unloading (ie, uncoupling):

  187. (1) Discloses additional matter

  188. [112] The Defendants contend that the 370 Patent Application does not disclose any lateral offset or rotation of the upper container during the loading process (ie, during the coupling with the lower container) when coupling devices with movable locking catch (reflected in the embodiment in Figure 16 ([91] above)) are used. Since the Proposed Amended Claim 9 would cover coupling devices which would rotate about its vertical axis or offset laterally “during the coupling and/or uncoupling with the lower container”, it would disclose additional matter. The Plaintiff appears to contend that Proposed Amended Claim 9 has already been disclosed in the Patent Application.

  189. [113] The Defendants claim that the 370 Patent Application discloses the expected movement of the upper container during the loading and/or unloading based on the arrangement of the coupling devices as follows:

  190. [114] It is undisputed that the Proposed Amended Claim 9 would cover the rotational or lateral offset of the upper container during loading and/or unloading. The question lies with what was disclosed in the 370 Patent Application, and specifically, in relation to the movement of the upper container during loading using coupling devices with movable locking catch. The area of contention is emphasised with bold italics in the table above (at [113]). The relevant part of the specifications states:

  191. [115] The Defendants rely on Mellberg’s evidence that the 370 Patent Application does not disclose that there will be a lateral offset during loading when coupling devices with moveable locking catch are used.

  192. [116] Huisman’s evidence is that there might be rotational or lateral offset of the upper container when coupling devices with movable locking catch are used. This depends on “how the container is dropped on top of the lower one and what is the strength of the spring”. Huisman added that it is “only theoretical” to say that there will be no movement at all. In response to the question of whether the 370 Patent Application states that there would be no rotational movement when coupling devices with movable locking catch are used, Huisman answered:

  193. I understand Huisman to mean that while there may be situations where there is no rotation about the vertical axis by the upper container when loading (eg, when the container is “jammed against a container next to it”), it is not necessarily so. It depends on, inter alia, the force of the spring and the downward force of the upper container.

  194. [117] Therefore Huisman’s view is that it depends on the circumstances (eg, the proximity of the containers, force of the spring and the downward force of the upper container). In other words, the rotational or lateral offset of the upper container as a result of the movable locking catch would, in the eyes of a person skilled in the art, be a possible albeit unintended result. The question, therefore, is: would such a disclosure suffice?

  195. [118] In my view, it would not. The specification in the 370 Patent Application makes it clear that the movable locking catch is meant to eliminate any rotation about the vertical axis or lateral offset of the upper container caused by a fixed locking catch during loading. It specifically states that the advantage of a movable locking catch is that it does not involve any rotation of the upper container about its vertical axis. It also explains that this is achieved by the design of the lower slope such that it is “slightly greater than a right angle” so that an “optimal force” is reached to push the locking catch back during the loading process. In this respect, it refers to Figure 16 to show that the locking catch would “come into the position shown by broken lines in Figure 16” ([91] above) during the loading process, and the broken lines in Figure 16 shows the movable locking catch as flushed against the lower coupling projection. There is no reference to any rotation about the vertical axis or lateral offset of the upper container when using coupling devices with movable locking catch. For these reasons, I do not find that the 370 Patent Application has disclosed that the use of coupling devices with movable locking catch would result in the rotation about the vertical axis or lateral offset of the upper container during the loading process. This is therefore not clearly and unambiguously disclosed in the 370 Patent Application. I find that a person skilled in the art would not have understood the 370 Patent Application as having disclosed any rotation about the vertical axis or lateral offset of the upper container as a result of using coupling devices with movable locking catch. Accordingly, the Proposed Amended Claim 9 is invalid for having disclosed additional matter.

  196. [119] The Defendants also argue, in the alternative, that Proposed Amended Claim 9 would extend the protection of the 370 Patent. I turn now to address it.

  197. (2) Extends protection

  198. [120] The Defendants submit that the Proposed Amended Claim 9 would extend the protection of the 370 Patent to cover the rotation about the vertical axis and lateral offset during the coupling and/or uncoupling of the upper container using coupling devices with a movable locking catch. It appears that the Proposed Amended Claim 9 seeks to amalgamate the original claims 17 to 20 of the 370 Patent, which read:

  199. [121] The Defendants highlight that the original claims 17 to 20 did not cover a coupling device with movable locking catch, which is provided under the original claims 12 and 13, as follows:

  200. Instead, the original claims 17 to 20 only covered a coupling device with a fixed locking catch as illustrated by Figure 2 ([41] above).

  201. [122] Since the claims of the 370 Patent do not cover the movements caused by the shape of a coupling device with movable locking catch, the Defendants submit that the Proposed Amended Claim 9 would extend the protection of the 370 Patent. I accept the Defendants’ argument on this point. A plain reading of the original claims 17 to 20 would reveal that they do not cover the rotation about the vertical axis or lateral offset of the upper container as a result of using coupling devices with a movable locking catch. However, the Proposed Amended Claim 9 would cover such movements. Accordingly, I find that the Proposed Amended Claim 9 would extend the protection of the 370 Patent and accordingly reject it under s 84(3)(b) of the Patents Act.

  202. [123] I next consider the Defendants’ third argument.

  203. (3) Not clear, concise or supported by the description

  204. [124] The Defendants claim that the Proposed Amended Claim 9 is not supported by the description. The Defendants’ argument, as discussed earlier, is that the 370 Patent Application discloses that there is no rotation about the vertical axis or lateral offset of the upper container during the loading process when coupling devices with movable locking catch are used. In light of the earlier discussion ([118] above), I also find that the Proposed Amended Claim 9 is not supported by the description and reject it under s 25(5)(c) of the Patents Act.

  205. Third issue: Whether the Court should exercise its discretion to reject the Proposed Amendments even though the requirements under the Patents Act were met?

  206. [125] The power of the Court to amend the specification of the patent is discretionary, and this is clear from the language of s 83(1) of the Patents Act. The sub-section reads:

  207. [126] I will first examine the principles on which discretion is to be exercised.

  208. Factors to be taken into account

  209. [127] The analysis begins with the English case of Smith Kline and French Laboratories Limited v Evans Medical Limited [1989] FSR 561 (“SKF Laboratories”), where Aldous J, at 569, set out the guidelines as to the exercise of the discretion concerning patent amendment as follows:

  210. [128] This has been endorsed in Singapore by the Court of Appeal in FE Global (CA), and applied in Novartis. In this respect, however, it is necessary to bear in mind the remarks of the Court of Appeal in FE Global (CA) at [31] on the “lenient approach” towards amendments.

  211. [129] In relation to the third factor, ie, whether the patentee delayed in seeking the amendments (and, if so, whether there were reasonable grounds for such delay), it was observed in Novartis at [10] that:

  212. [130] Further, it was noted in Novartis at [48] that:

  213. [131] It is also pertinent to consider the decision of Pumfrey J in Instance v CCL Label Inc [2002] FSR 27 (“Instance”). There, the patentee applied to amend claim 8 of its European patent in infringement proceedings. It was contended that the patentee knew or ought to have known that claim 8 was anticipated by prior art since the allegation had been made during the prosecution of the corresponding domestic British application. At around the same time, the patentee commenced infringement proceedings against various parties and sought a Europe-wide injunction. The patentee’s case was that he relied on the advice of his patent agent that claim 8 was not anticipated by prior art. Pumfrey J refused the amendments. He considered that a patentee could not normally be criticised for making decisions on the need to amend his patent on the basis of the advice received from a competent patent agent. In such a case, the patentee could not be considered as guilty of culpable delay. Even though the application to amend was made shortly after the patentee found out that claim 8 was invalid, Pumfrey J found that there was no satisfactory explanation for it. In addition, the infringement proceedings were commenced even though the patentee thought that amendment for claim 8 was required. As a result, Pumfrey J decided to refuse the patentee’s application to amend.

  214. [132] As for the fourth factor, ie, whether the patentee had sought to obtain an unfair advantage from the patent, Aldous J in SKF Laboratories considered at 569 that it encompasses a case “where a patentee threatens an infringer with his unamended patent after he knows or should have known of the need to amend”. In SKF Laboratories, Aldous J referred to, inter alia, the case of Autoliv Development AB’s Patent [1988] RPC 425. In that case, the patentees knew that amendment was necessary to avoid prior art, but delayed amending their patent for four years, and in the meantime, sent out threatening letters to alleged infringers. Falconer J refused to allow the amendment. He found that the delay of four years was unreasonably long in light of the circumstances, and the sending out of the threatening letters after they knew that the patent should be amended would amount to seeking an unfair advantage.

  215. [133] To sum up, it is important to bear in mind the underlying rationale of the discretion to refuse an application to amend. This is well explained by Aldous LJ in Kimberly-Clark Worldwide Inc v Procter & Gamble Limited and another [2000] FSR 235 at 248 as the “desire to protect the public against abuse of monopoly”. Pumfrey J in Instance at [37] described it as “a desire to ensure that patentees do not obtain an advantage which is unfair from their failure to amend” and went further to consider that it may be “to punish patentees for the unreasonableness of their conduct even when no advantage has in fact been gained”.

  216. [134] With these principles in mind, I now turn to address the present case.

  217. Application to the facts

  218. [135] For convenience, I shall set out the chronology of relevant events below:

  219. [136] In light of these circumstances, the Defendants submit that this Court should not allow the Proposed Amendments given that:

  220. (a) The Plaintiff has not disclosed all the relevant information with regard to the Proposed Amendments.

  221. (b) The Plaintiff has no reasonable grounds for the delay in seeking the Proposed Amendments.

  222. (c) The Plaintiff has obtained an unfair advantage from the delay in seeking the Proposed Amendments despite having reasonable grounds to believe that the 370 Patent is invalid.

  223. [137] The Plaintiff denies the Defendants’ allegations of delay and unfair advantage.

  224. Non-disclosure

  225. [138] The Defendants contend that the Plaintiff had not disclosed the relevant findings of the EPO that have a material impact on the circumstances surrounding these applications, as well as the evidence to explain the circumstances of its delay in filing these applications.

  226. [139] For a start, I note that, pursuant to the Convention of the Grant of European Patents (“the European Patent Convention”), the EPO would have, as it appears, no discretion over whether an amendment should be granted based on the conduct of the patentee. This is observed by Floyd J in Zipher Ltd v Markem Systems Ltd [2009] FSR 1 at [197]–[219]:

  227. [140] The learned authors of Terrell at para 15-69 noted that Floyd J’s view “appears consistent with the policy intention as expressed in the travaux preparatoires” of the European Patent Convention.

  228. [141] In light of this, it appears to me that the findings of the EPO on the issue of amendment would have no bearing on whether the discretion ought to be exercised in the present case. The Defendants have not shown otherwise. It follows that there appears to be no reason to find that the Plaintiff had failed to make full and frank disclosure on the findings of the EPO in relation to the issue of amendment.

  229. [142] As for the circumstances surrounding the alleged delay, it is not true that the Plaintiff had not adduced any evidence as the Defendants claim. In particular, the Plaintiff had called Detlef Von Ahsen (“Detlef”), who is the “overall coordinating counsel” for S 315/2010 and S 738/2011, to give evidence. The burden lies with the Plaintiff to show that the discretion should be exercised and the Plaintiff’s case would turn on the evidence it seeks to adduce. The Defendants undoubtedly take the view that Detlef’s evidence is inadequate. This does not mean, however, that this Court should draw an inference that the Plaintiff has failed to make full and frank disclosure.

  230. [143] I therefore do not find that the Plaintiff had failed to make full and frank disclosure.

  231. Undue delay

  232. [144] The Defendants contend that the Plaintiff knew that claim 1 of the 370 Patent, which corresponds with claim 1 of the European Patent, might be invalid as early as November 2010 when the decision of the Opposition Division was released. Notwithstanding that, the Plaintiff only published its intention to amend the 370 Patent on 28 December 2012 and 30 January 2013, more than two years later. The Defendants submit that there was no reasonable explanation for the delay. In response, the Plaintiff denies that there was a delay in applying to amend the 370 Patent, and submit that they were entitled to wait for the final outcome of the appeal in the EPO before deciding whether to amend the 370 Patent. The Plaintiff also explained that it had gone ahead with the amendment application before the release of the decision of the Appeals Board of the EPO as a result of Loh J’s directions for the issue of validity to be heard first.

  233. [145] Detlef accepts that the Plaintiff knew as of 25 November 2010 that the 370 Patent corresponds to the European Patent and the Opposition Division of the EPO had found the European Patent to be invalid. He also accepts that there was “a potential risk” that the Singapore court might come to the same view as the Opposition Division of the EPO. However, Detlef insists that he disagrees with the decision of the Opposition Division of the EPO, and in all likelihood, he would have advised the Plaintiff as such. Notwithstanding that, the Plaintiff eventually decided to amend the 370 Patent before the decision of the Appeal Board of the EPO was released, contrary to the earlier view taken by Detlef and presumably the Plaintiff. Pertinently, it appears that the Plaintiff had decided to go ahead with the Proposed Amendments as a result of the decision of the Opposition Division of the EPO. This was precisely what Detlef said he did not agree with. The statement of reasons filed by the Plaintiff on 18 December 2012 reads:

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