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2nd February, 2016

This is the Appellant’s appeal against the whole of the decision of the Court of Appeal in allowing the Respondents’ appeal against the decision of the High Court of Kuala Lumpur and this appeal is therefore dismissed by the Federal Court with costs.

SKB Shutters Manufacturing Sdn. Bhd. (hereinafter referred to as “the Appellant”) is the registered proprietor of Malaysian Patent No. MY-128431-A entitled “Rolling Door” (hereinafter referred to as “the Patent”). The Appellant’s patents pertain to the features and parts of a “rolling door”. The Appellant is in the business of manufacturing, distributing and dealing in roller shutters, roller doors and a wide range of shutters.

Seng Kong Shutter Industries Sdn. Bhd. (hereinafter referred to as “the 1st Respondent”) is also deals with roller shutters and related products. Mr. Tan Kooi Lim (hereinafter referred to as “the 2nd Respondent”) is a shareholder and director of the 1st Respondent”.

The High Court upheld the validity of Malaysian Patent No. MY-128431-A entitled “Rolling Door” belonging to the Appellant and found that the Respondents had infringed the same.

At the High Court, the Respondents denied patent infringement and counterclaimed that the Appellant’s patent was invalid on the ground that the claimed features were neither novel nor inventive. The Respondents submitted evidence that there was prior art i.e. a PVC aluminum roller shutter (before the application date of the Appellant’s patent).

The High Court judge compared the PVC aluminum shutter against the Appellant’s products and decided that the Appellant’s patent was valid and that the Respondents to be infringing the patent.

The Respondents then filed an appeal against the decision of the High Court at the Court of Appeal and the Court held that the High Court had used the wrong test. To determine novelty, it is the patent claims (of the Appellant’s patent), not Appellant’s products that should be compared against the prior art. On conducting this test, the Court of Appeal held that the patent claims by the Appellant were not novel and therefore the Appellant’s patent was held invalid. The Court of Appeals had allowed the appeal with cost.

The Appellant obtained leave from the Federal Court to appeal against the Court of Appeal’s decision where one of the legal questions posed to the Federal Court was :-

“Where a patent comprises multiple claims, whether, in invalidating a patent for lacking novelty and/or inventive step, the Court must make a determination on each and every claim.”

The Federal Court held that once an independent claim is found to be invalid, any dependent claim(s) which depend(s) on the invalid independent claim is / are also invalid because the dependent claim(s) cannot remain as dependent claim(s) anymore and the dependent claim(s) cannot be re-drafted or amended.

The Federal Court held that there is no merit in this appeal. As such, the appeal is therefore dismissed with costs.