Malaysia - One Cannot Infringe An Invalid Claim

Legal News & Analysis - Asia Pacific - Malaysia - Intellectual Property

20 March, 2018

This recent Federal Court decision affirms the decision of the High Court and Court of Appeal in declaring a patent invalid and dismissing the claims for infringement on the basis that one cannot infringe an invalid claim, thereby affirming the previous Federal Court decision in SKB Shutters.
Facts of the case
At the High Court, the Appellant filed an action against the Respondents in the High Court for, inter alia, infringement of Patent No MY-125567-A. The Respondents filed a counterclaim seeking a declaration that the patent is invalid. The High Court judge dismissed the Appellant’s claim and allowed the Respondent’s counterclaim in holding the patent invalid.
Dissatisfied, the Appellant appealed to the Court of Appeal. However, its appeal was dismissed unanimously at the Court of Appeal. The Appellant appealed again to the Federal Court.
Questions of law at the Federal Court
The Appellant was granted leave for appeal to the Federal for the following questions: 


  • Whether for the purpose of considering whether a patented invention is inventive (or not obvious), the court is required to apply and carry out the four-step test from the case of Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (or commonly known as the “Windsurfing test”);
  • Whether there is a distinction to be drawn between determining the “claimed features” of the claims of a patent (for the purposes of assessing novelty and infringement) and determining the “inventive concepts” of the invention in the patent (for the purpose of assessing inventiveness);
  • If the answer to Question ii is in the affirmative, whether an assessment of the “inventive concepts” of the invention is to be confined to just the claims of the patent or should be construed from reading the patent specifications as a whole and with the common knowledge of the skilled person.


The Appeal was dismissed. The Federal Court, after having examined the answers to the three questions posed, held that the Appellant’s patent is invalid. The Federal Court affirmed the decisions of both the High Court and Court of Appeal.

On the issue of infringement, the Federal Court, in quoting S Thorley, R Miller, G Burkill, C Birss, Terrell on the Law of Patents, 15th Ed, and following the decision of SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 6 MLJ 293, held that there cannot be, in any event, an infringement of an invalid patent. The Federal Court further granted the Respondents the reliefs in their counterclaim save for prayer (9) pertaining to an injunction to restrain the Appellant from instigating, instituting or intiating or threatening to institute or initiate civil or criminal action in respect of the first Respondent’s floor gully traps.
On the point of novelty and construction of claims, the Federal Court applied the principles of purposive construction and noted that the feature alleged to be novel by the Appellant was not expressively stated or alluded in the language of the claims. It would not be therefore taken into account in the assessment of novelty or inventiveness.

On the point of inventiveness, as the Federal Court agreed with the High Court and Court of Appeal’s findings that the patent is not novel, the question of whether it involves an inventive step would not arise. Notwithstanding the above, on the assumption that the patent is novel, the Federal Court went on to apply the Windsurfing test and found that a number of features were anticipated by the prior art.

On the issue of the Respondent’s expert witness who was challenged by the Appellant, the Federal Court held that the High Court Judge had not relied substantially, if at all, on the expert’s opinion in reaching the decision on the issue of inventiveness. All in all, even if the patent was novel, in applying the Windsurfing test, the Federal Court saw no reason to depart from the conclusion reached by the High Court and the Court of Appeal.




For further information, please contact:


Karen Abraham, Partner, Shearn Delamore & Co​