Melissa Long discusses a significant patent decision on dependent claims.
 
THE ROAD TO INVALIDATION
 
As is wont to happen in cases involving the issue of patent validity, this case started off in the High Court with SKB Shutters Manufacturing Sdn Bhd (“SKB”) suing the Defendants for infringement of SKB’s Patent No. MY-128431-A (“Patent 431”). The Defendants raised the defence and counterclaim that Patent 431 was invalid for failing to be new and/or inventive in light of the prior art – these being necessary requirements for a valid patent under sections 14 and 15 of the Patents Act 1983 (“Act”). ‘Prior art’ is a term that more or less refers to all things published or disclosed in the world prior to the patent-in-suit.
 
The High Court decided in favour of SKB, both finding Patent 431 to have been valid and infringed.¹ The Defendants appealed to the Court of Appeal on various grounds, all relating to the High Court’s determination of Patent 431’s validity. This appeal was allowed and Patent 431 declared invalid.²
 
In a final turn, in what is said to be the first patent case allowed on full appeal to the Federal Court, seven questions on patent invalidation were submitted for our apex court’s determination. All seven questions were answered in the Defendants’ favour, thus spelling the end of Patent 431.³
 
THE ‘ROLLING DOOR’ PATENT
 
To put this case in context (and at the risk of over simplifying a 20 page patent document containing 11 claims), the claimed invention in Patent 431 concerned panels to be used in the make-up of a rolling door of the type including a door curtain supported on a roller assembly – or in lay-speak ‘roller shutters’ that are generally employed to secure retail and commercial shop fronts during closed hours.
 
Patent 431’s specification described and illustrated the preferred embodiment of the claimed roller shutter panels to incorporate long strips of transparent panes interconnected by engagement links so that the general public would be able to see through the shutters during closing hours.
 
Nonetheless, notwithstanding the illustrations or descriptions that may be set out in a patent specification, the Federal Court noted that it is the claims in a patent document that define an invention in terms of the technical features and that determine the patent’s monopoly. To put this in context, Claim 1 of Patent 431, for example, dealt with various characteristics to the roller shutter panel and its engagement means, but made no mention of any portion of the panel to be made up of transparent material. This last part came in Claim 9 and/or Claim 11.
 
Consequently the Federal Court held, inter alia, that the assessment of validity must be made by a comparison of the patent claims against the prior art. It would not do, as the Court of Appeal found the trial judge to have done, to merely compare a product embodiment of the patent against the prior art. This is because a patent holder’s product may differ from the claims or may reflect only one of the possible embodiments of the patent claims which would result in an inaccurate assessment of a narrower form of the claims.
 
BROAD v NARROW
 
Bear in mind that the narrower the scope of monopoly claimed, the more technical features that it likely contains, and more technical features equals a higher likelihood that at least some elements contribute to it being new or inventive. To use a hypothetical example: claiming a motorised vehicle would be broader in that it potentially applies to more things, whereas a claim for a motorised vehicle with twenty wheels and a dome shaped cap would be narrower.
 
Generally speaking, the broader the scope of the claim the higher the likelihood that it is not new or inventive. In our hypothetical example, the broad claim to motorised vehicles would not be valid if there are any motorised vehicles found published, disclosed or in use anywhere in the world, or if it was an obvious invention based on preceding vehicles that are out there.
 
This is usually balanced with a need to avoid being overly narrow with claims for fear that potential infringers might be able to easily engineer around the patent. Again in our hypothetical example, whilst is it less likely that a motorised vehicle with twenty wheels and a dome shaped cap would be found anywhere in the world or deemed ‘obvious’ – and is therefore more likely valid, yet a motorised vehicle with eighteen wheels and a triangular shaped cap would not infringe the narrow claim and may defeat the patentee’s objective.
 
Attaining this balance of ‘broad’ and ‘narrow’ as a matter of practice is usually dealt with by setting out a hierarchy of claims relating to the same invention in a patent. Narrower claims which contain a reference to a preceding broader claim are known as dependent claims.
 
Patent 431 consisted of 11 claims: Claims 1 and 11 which were ‘independent’ and Claims 2 to 10 which were ‘dependent’. Dependent claim 2 for example, was worded as follows “A panel as claimed in claim 1 wherein the first arm includes an inwardly projecting nib which is received in a complementary groove in said elongated body member.”
 
This hierarchy of claims affords some degree of assistance to patentees in jurisdictions such as the United Kingdom (since 1919 at least) where invalidation of some claims would not necessarily invalidate other claims. In such circumstances, patentees may be able to take some measure of risk by including slightly broader claims as well as narrower dependent claims in the knowledge that the potential invalidation of broader claims may still mean that dependent claims with more technical features are preserved.
 
Malaysia too recognizes, to an extent, partial invalidation of patents. Section 56(3) of the Act provides, inter alia, that upon the application by an aggrieved person to invalidate some of the claims or some parts of a claim in a patent, “such claims or parts of a claim may be declared invalid by the Court” and that “the invalidity of part of a claim shall be declared in the form of a corresponding limitation of the claim in question”. Section 56(3) not only applies to invalidation actions but also in cases of infringement where invalidation is raised as a defence under Section 60(3) of the Act.
 
The scope of partial invalidation in Malaysia became a key issue in this case as it was argued that the Court of Appeal had not assessed the dependent claims 2 to 10 of Patent 431 before invalidating the patent.
 
THE FATE OF DEPENDENT CLAIMS
 
Pivotally distilling from the decision, is essentially the Federal Court’s pronouncement that a finding that an independent claim is invalid would also automatically invalidate any claims dependent on it.
 
The Federal Court reasoned this to be because dependent claims incorporate all features of the independent claim upon which they depend, but are drafted to only make reference to the independent claim e.g. “A panel as claimed in claim 1 wherein …” being the start of Claim 2 of the patent in question. Consequently, the Federal Court took the view that the only way for a dependent claim to survive is if it were redrafted to incorporate the features of the now ‘invalid’ independent claim.
 
The position in Malaysia, it reasoned, differed from that in the United Kingdom where a patent claim could be amended pending litigation in respect of its validity. It was also observed that Section 63 of the U.K. Patents Act 1977 expressly empowered the courts to enforce parts of a patent found to be valid, to which Section 56(3) of the Act could not be said to be an equivalent. Consequently, without a provision in the Act to allow for an amendment of a patent-in-suit, and with Section 56(3) merely stating that some claims or part of a claim may be declared invalid, the Federal Court held that this can only refer to the independent claims of a patent.
 
Two things seem stark in light of the Federal Court’s interpretation of Section 56(3) of the Act. The first is that the Court took a restrictive view of the powers provided under said provision to make the declarations and corresponding limitations to claims in cases where partial validity is found.
 
The second is that the Court’s observation of Section 56(3) being not equal to the express provision in the U.K. which empowers the courts there to enforce a partially valid patent, may be more perplexing than at first glance. Particularly because if this is the issue, then why would independent claims be treated any different to partially valid dependent claims? More worryingly, could the Federal Court unwittingly have opened the doors to entire patents being unenforceable upon any one claim, be it dependent or independent, being found invalid? After all, Section 63 of the U.K. Patents Act 1977 does not discriminate between independent claims and dependent claims, but empowers the court there to enforce a partially valid patent. If this lacuna in our Act is the issue, then Section 56(3) could not possibly be said to give any more power to our courts to enforce a patent when any one claim is invalid, whether the claim be dependent or independent. For now, the decision does not suggest any intention to declare anything more than dependent claims being automatically invalidated, but it remains to be seen what future patent challengers may make of this.
 
WHERE DO WE GO FROM HERE?
 
Unless this decision is revisited or the law amended, it appears that to mitigate the risk of automatic invalidation of dependent claims, prospective patentees may just have to fully recite preceding features of any relevant broader claim before stating the further elements or features to narrow the claims.
 
A more vexed question which arises from the case is this: if you already have an existing patent which contains a number of dependent claims, can you amend the patent to set out fully the details of the independent claims on which the dependent claim is predicated? Our Patent Office, to our knowledge, has not officially given word on the extent amendments will be accepted or the timeframes required for such amendments to be processed if accepted.
 
It is believed that certain associations have put forward proposals for amendments to the Act to address the issues that arise from this case. It remains to be seen whether our legislators will be receptive to such proposals and if affirmative, how long it will take for such proposals to be implemented.