Billion Prima SDN BHD & Anor V Nuctech Company Limited & Anor (2019) 1 LNS 1006

[2019] 1 LNS 1006 Legal Network Series
IN THE HIGH COURT OF MALAYA AT KUALA LUMPUR
IN THE FEDERAL TERRITORY OF KUALA LUMPUR,

MALAYSIA
[SUIT NO: 22IP-50-09/2015]
BETWEEN
1. BILLION PRIMA SDN. BHD.

(Co. No.: 771035-V)
2. PAN ASIATIC TECHNOLOGIES SDN. BHD.

(Co. No.: 742846-D) … PLAINTIFFS
AND
1. NUCTECH COMPANY LIMITED

2. TSINGHUA UNIVERSITY … DEFENDANTS
(BY ORIGINAL ACTION)
AND BETWEEN
1. NUCTECH COMPANY LIMITED

2. TSINGHUA UNIVERSITY … PLAINTIFFS
AND
1. BILLION PRIMA SDN. BHD.

(Co. No.: 771035-V)
1
2. PAN ASIATIC TECHNOLOGIES SDN. BHD.

(Co. No.: 742846-D)
3. DIRECTOR GENERAL OF CUSTOMS AND EXCISE
4. GOVERNMENT OF MALAYSIA … DEFENDANTS
(BY COUNTERCLAIM)
JUDGMENT
(After trial)
A. Background
[1] This is a novel case where the Government of Malaysia

(Government) and one of its departments have been alleged to
have infringed a patent registered under the Patents Act 1983
(PA).
[2] The first plaintiff company (1 st Plaintiff) designed and

developed “BBScan Portal X-ray Screening Machine System”
(BBScan System). The second plaintiff company (2 nd Plaintiff)
is licensed by the 1 st Plaintiff to commercialise BBScan System.
[3] The 2 nd Plaintiff has supplied units of BBScan System to the

Royal Malaysian Customs Department (RMCD).
[4] The first defendant company (1 st Defendant) is a company

incorporated in the People‟s Republic of China (PRC) while the
second defendant (2 nd Defendant) is a university in PRC.
[5] The 1 st and 2 nd Defendants (Defendants) are co-owners of patent

no. MY-142862-A (‘862 Patent) which is registered under PA.
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[6] The 1 st Defendant has filed Kuala Lumpur High Court Civil Suit
No. 22IP- 43-11/2013 (1 st Suit) against the 2 nd Plaintiff and
three individuals (who are the directors and shareholders of the
2 nd Plaintiff). The defendants in the 1 st Suit filed third party
proceedings against Powerscan Co. Ltd. (PCL). In the 1 st Suit -
(1) the 1 st Defendant had claimed that -
(a) the 2 nd Plaintiff‟s supply and installation of

“BTScan-P/X Portal X-ray Screening Machine
System” (BTScan System) in RMCD‟s Customs,
Immigration and Quarantine Complex in Tanjung
Kupang [RMCD’s Premises (TK)], had infringed
„862 Patent; and
(b) the 2 nd Plaintiff‟s agreement to supply “BPScan-M1

Portal X-ray Screening Machine System” (BPScan
System) to RMCD, had threatened to infringe „862
Patent
[Original Action (1 st Suit)];
(2) the defendants in the 1 st Suit had counterclaimed that „862

Patent is invalid [Counterclaim (1 st Suit)]; and
(3) in the event that the defendants in the 1 st Suit are liable to
the 1 st Defendant, the defendants in the 1 st Suit have
claimed an indemnity from PCL because the 2 nd Plaintiff
has bought BTScan System from PCL [Third Party
Proceedings (1 st Suit)].
[7] PCL had instituted Kuala Lumpur High Court Civil Suit No.
22IP-24- 05/2014 (2 nd Suit) against the Defendants (in this
case). In the 2 nd Suit -
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(1) PCL had applied for a declaration that „862 Patent is

invalid [Original Action (2 nd Suit)]; and
(2) the Defendants counterclaimed that PCL had infringed

„862 Patent regarding the BTScan System [Counterclaim
(2 nd Suit)].
[8] The 1 st and 2 nd Suits have been consolidated (2 Suits). The 2

Suits are tried before Azizah Nawawi J who has decided as
follows [High Court’s Decision (2 Suits)]:
(1) „862 Patent is valid. As such, the Counterclaim (1 st Suit)

and the Original Action (2 nd Suit) are dismissed with costs;
(2) BTScan System has infringed „862 Patent while BPScan

System will infringe „862 Patent. Hence, the Original
Action (1 st Suit) and Counterclaim (2 nd Suit) are allowed
with costs; and
(3) the Third Party Proceedings (1 st Suit) is allowed whereby

PCL has to indemnify the 2 nd Plaintiff regarding BTScan
System‟s infringement of „862 Patent and the likelihood of
BPScan System‟s infringement of „862 Patent.
[9] An appeal to the Court of Appeal has been filed against the High
Court‟s Decision (2 Suits) and is still pending on the date of this
written judgment.
[10] In this suit -
(1) the 1 st and 2 nd Plaintiffs (Plaintiffs) claim for a declaration

under s. 62(1) PA that BBScan System does not infringe
„862 Patent [Original Action (This Suit)]; and
(2) the Defendants have counterclaimed that -
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(a) the Plaintiffs; and
(b) the Director-General of RMCD (RMCD’s DG) and

the Government
- have infringed „862 Patent with regard to BBScan System

[Counterclaim (This Suit)].
B. Issues
[11] The following questions arise in this case:
(1) whether the Defendants can contend that the first version
of BBScan System [BBScan System (1 st Version)] has
infringed „862 Patent. In this regard -
(a) has the Defendants‟ Re-Amended Defence and

Counterclaim (RDCC) pleaded infringement of „862
Patent by BBScan System (1 st Version)?;
(b) as BBScan System (1 st Version) has implemented

part of patent no. MY-157628-A which is registered
under PA in favour of the 1 st Plaintiff (‘628 Patent),
can the court consider the validity of „628 Patent
when the Defendants have not applied in RDCC to
invalidate „628 Patent under s. 56(1) PA?; and
(c) whether BBScan System (1 st Version) can infringe

„862 Patent pursuant to s. 36(3)(a)(i), (b)(i) and (ii)
read with s. 58 PA when the Plaintiffs only sold to
RMCD and installed the second version of BBScan
System [BBScan System (2 nd Version)];
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(2) whether the second limb of res judicata doctrine (issue

estoppel principle) applies in this case by reason of the
High Court‟s Decision (2 Suits);
(3) regarding „862 Patent -
(a) who is the notional person ordinarily skilled in the

art (POSITA) for „862 Patent?; and
(b) has BBScan System (2 nd Version) infringed Claims 1,

7, 8, 9, 11 and 12 of „862 Patent (Claims 1, 7, 8, 9,
11 and 12)? In this regard, whether the court should
draw an adverse inference under s. 114(g) of the
Evidence Act 1950 (EA) against the Plaintiffs in this
case; and
(4) if BBScan System (2 nd Version) has infringed Claims 1, 7,

8, 9, 11 and 12 (Patent Infringement) -
(a) whether the court can grant perpetual mandatory and

restraining injunctions against RMCD and
Government under s. 60(1) PA in view of -
(i) proviso (a) to s. 29(1) and s. 29(2) of the

Government Proceedings Act 1956 (GPA); and
(ii) ss. 54(d) and (j) of the Specific Relief Act 1950
(SRA); and
(b) whether the court should deprive the Defendants of

the costs of this suit under O. 59 rr. 2(2), 3(2), 8(b)
and 19(1) of the Rules of Court 2012 (RC) when -
(i) the Defendants had caused a private

investigator (PI), Puan Syajaratuddur bt.
Mawardee (SD2), and a Kazakhstan citizen
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(Kazakh National) to enter RMCD‟s Premises

(TK) and RMCD‟s premises at Pasir Gudang
[RMCD’s Premises (PG)] [RMCD‟s Premises
(TK) and RMCD‟s Premises (PG) shall be
referred to in this judgment as the “2 Sites”] by
impersonation, an offence under s. 416 of the
Penal Code (PC);
(ii) SD2 and Kazakh National had not obtained

permission of RMCD to enter the 2 Sites as
required by s. 5(1) of the Protected Areas and
Protected Places Act 1959 (PAPPA) because
the 2 Sites are “protected places” within the
meaning of s. 2 PAPPA;
(iii) SD2 had secretly taken photographs (SD2’s

Photographs) and covertly made a video
recording (SD2’s Video Recording) of her
visits to the 2 Sites (SD2’s Site Visits);
(iv) SD2‟s Video Recording was suppressed from

this court; and
(v) when SD2 testified in this case, without giving

any prior notice to the Plaintiffs, RMCD and
Government, SD2 applied to court for immunity
from prosecution under s. 132(2) EA (except
for the offence of giving false evidence) so as
to enable SD2 to tender SD2‟s Video Recording
as evidence.
C. Claims 1, 7, 8, 9, 11 and 12
[12] I reproduce below Claims 1, 7, 8, 9, 11 and 12:
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“1. A system for imaging inspection of a movable

object, comprising: a first detecting unit configured
to detect whether a moving object to be inspected
moves into a passage or not;
a second detecting unit configured to detect whether

a part to be shielded of the moving object passes
into the passage or not and generate a passing
signal after the first detecting unit detects that the
moving object to be inspected moves into the
passage;
a scan imaging device configured to emit radiating

beams for inspecting the moving object to be
inspected by scanning; and
a control system configured to generate a control

signal for controlling the scan imaging device to
generate the radiating beams according to the
passing signal from the second detecting unit.
7. The system for imaging inspection of a movable object

according to claim 1, wherein the moving object is a
vehicle.
8. The system for imaging inspection of a movable object

according to claim 7, wherein the part to be shielded is a
driving cab of the vehicle.
9. A dodging method for a moving object being image

inspected, comprising:
8
a first determining step of judging whether the moving

object moves into a passage or not;
a second determining step of judging whether a part to be

shielded of the moving object passes through a radiating
scan area in the passage and generate a passing signal ;
and
a scan imaging step of generating a control signal for

controlling a scan imaging device to generate radiating
beams according to the passing signal, after judging that
the part to be shielded passes through the radiating scan
area, to emit radiating beam to
the passage and inspect the moving object by scanning to

dodge the area to be shielded.
11. The dodging method for a moving object being image

inspected according to claim 9, wherein the moving
object is a vehicle.
12. The dodging method for a moving object being image

inspected according to claim 9, wherein a part to be
shielded is a driving cab of the vehicle.”
(emphasis added).
D. Case for the Plaintiffs
[13] The following witnesses testified for the Plaintiff:
(1) Mr. Matthew Stephen English (SP1);
(2) Mr. John William McCorkle (SP2);
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(3) Ms. Carol Johnstone (SP3); and
(4) Mr. Lee Yuh Jiunn (SP4).
[14] According to the Plaintiffs, SP1, SP2 and SP3 are POSITA‟s
regarding „862 Patent. I will discuss their expert testimonies
later in this judgment.
[15] SP4 is the 1 st Plaintiff‟s Chief Technology Officer (CTO).

According to SP4, among others -
(1) after the High Court‟s Decision (2 Suits) -
(a) the 2 nd Plaintiff ceased to import vehicle scanning

machines from PCL;
(b) the 1 st Plaintiff designed BBScan System which is

different from BTScan System and BPScan System;
and
(c) the testing of BBScan System (1 st Version) revealed

numerous technical problems. To overcome such
problems, the 1 st Plaintiff designed the BBScan
System (2 nd Version); and
(2) the Plaintiffs have installed the BBScan System (2 nd

Version) in -
(a) RMCD‟s Premises (PG);
(b) RMCD‟s Premises (TK); and
(c) RMCD‟s premises in Seberang Perai.
10
E. Defendants’ case
[16] Three witnesses gave evidence for the Defendants, namely -
(1) SD2;
(2) Professor Athanassios Manikas (SD3); and
(3) Professor David Koltick (SD4).
[17] SD3 and SD4 have been called by the Defendants as POSITA‟s
for „862 Patent. I will discuss the expert views of SD3 and SD4
together with the expert testimonies of SP1, SP2 and SP3.
[18] SD2 testified as follows, among others:
(1) SD2 previously worked as a PI at Maxguard Security and

Services Sdn. Bhd.;
(2) while SD2 was a PI, SD2 had been engaged by the 1 st
Defendant to investigate IRadar Sdn.Bhd. (ISB) which
supplied the radar component of BBScan System to the
Plaintiffs;
(3) SD2 contacted ISB by impersonating as “Azila Mohd.

Hashim” (SD2’s Impersonation); and
(4) by way of SD2‟s Impersonation -
(a) SD2 contacted ISB‟s representative, Mr. Koo Voon

Chet (Mr. Koo) regarding a vehicle inspection
system;
(b) on 17.2.2016, SD2 visited ISB‟s premises at Malacca

where Mr. Koo gave a presentation on BBScan
System;
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(c) SD2 contacted Mr. Koo for a visit to the 2 Sites with
the Kazakh National as a potential purchaser of
vehicle inspection system. The 1 st Defendant
arranged for a person to impersonate as a Kazakh
National;
(d) on 31.3.2016, SD2 and the Kazakh National

inspected BBScan System in the 2 Sites. During
SD2‟s Site Visits -
(i) SD2 met with representatives from the

Plaintiffs;
(ii) SD2 has been informed that BBScan System

uses some components supplied by ISB;
(iii) in the control room of BBScan System

(Control Room), SD2 could see on the
computer screen “scan images” of the entire
vehicle (the driver cabin and the rest of the
vehicle are visible) (Full Scan) and scan
images which did not show the entire vehicle
[the driver cabin is not visible but the rest of
the vehicle (including the cargo section) is
visible] (Scan Images); and
(iv) SD2‟s Photographs of the Scan Images had

been secretly taken. SD2‟s Video Recording
had also been covertly made;
(e) after SD2‟s Site Visits, SD2 requested from Mr. Koo
for further information on BBScan System. Mr. Koo
then sent a promotional video regarding “MyCIS
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Cargo Inspection System”, exhibit D4 (MyCIS

Video); and
(f) by way of “Whatsapp” messages, SD2 has been

informed by Mr. Koo that BBScan System has an
adjustable setting whereby BBScan System can
conduct a Full Scan or otherwise. SD2 has adduced
the Whatsapp messages between SD2 and Mr. Koo
(SD2’s WhatsApp Messages).
F. Case for RMCD and Government
[19] The sole witness for RMCD and Government is Dato‟ Mohd.
Mastar bin Musa (SD1), RMCD‟s Deputy Director for
Acquisition Management Section. According to SD1, among
others -
(1) the Government has entered into two agreements with the
2 nd Plaintiff as follows -
(a) the first agreement provided for RMCD to acquire

four units of BPScan System from the 2 nd Plaintiff
(1 st Agreement); and
(b) a supplemental agreement to the 1 st Agreement

(Supplemental Agreement) in respect of the 2 nd
Plaintiff‟s supply of four units of BBScan System to
RMCD;
(2) clause 45 of the 1 st Agreement (Clause 45) provides for

the 2 nd Plaintiff to indemnify the Government in the event
that, among others, the vehicle inspection systems
provided by the 2 nd Plaintiff infringe the patent of a third
party;
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(3) according to clause 5.2 of the Supplemental Agreement,

among others, Clause 45 shall be considered as an integral
part of the Supplemental Agreement; and
(4) the 2 nd Plaintiff had sent a letter dated 31.7.2015 to RMCD

which, among others, “guaranteed” that BBScan System
would not infringe any patent.
G. Whether Defendants can contend that BBScan System (1 st

Version) has infringed ‘862 Patent
[20] The Defendants have submitted that BBScan System (1 st

Version) has infringed Claims 1, 7, 8, 9, 11 and 12. I am not
able to accept this contention for the following reasons:
(1) SP4 had given evidence regarding BBScan System (1 st

Version). RDCC has been amended twice by the
Defendants and yet, the Defendants have not applied for
leave of court to amend RDCC so as to include the
Defendants‟ claim that BBScan System (1 st Version) has
infringed Claims 1, 7, 8, 9, 11 and 12. It is trite law that a
party is bound by the party‟s pleading - please see Federal
Court‟s judgment delivered by Azahar Mohamed FCJ in
Saiman bin Umar v. Lembaga Pertubuhan Peladang &
another appeal [2015] 6 MLJ 492, at [41]. The trial of this
case has concluded and it is now too late for the
Defendants to aver that BBScan System (1 st Version) has
infringed Claims 1, 7, 8, 9, 11 and 12. If otherwise, there
will be an injustice to the Plaintiffs;
(2) BBScan System (1 st Version) is based on „628 Patent. The

Defendants‟ RDCC did not apply to invalidate „628 Patent
under s. 56(1) PA (Invalidation Application). As the
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Defendants have not filed the Invalidation Application in

this case, the 1 st Plaintiff as the registered owner of „628
Patent can exercise all the statutory rights under s.
36(1)(a), (3)(a)(i), (ii), (b)(i) and (ii) PA regarding „628
Patent in respect of BBScan System (1 st Version). I
reproduce below ss. 36 (the relevant part only) and 58 PA -
“Rights of owner of patent.
36(1) Subject and without prejudice to the other provisions

of this Part, the owner of a patent shall have the
following exclusive rights in relation to the patent :
(a) to exploit the patented invention;
(3) For the purposes of this Part, “exploitation” of a

patented invention means any of the following acts in
relation to a patent:
(a) when the patent has been granted in respect of a

product:
(i) making, importing, offering for sale, selling or

using the product;
(ii) stocking such product for the purpose of

offering for sale, selling or using
(b) when the patent has been granted in respect of a

process:
(i) using the process;
15
(ii) doing any of the acts referred to in para graph

(a), in respect of a product obtained directly
by means of the process.
Acts deemed to be infringement
58 Subject to subsections 37(1), (2) and (3) and section

38, an infringement of a patent shall consist of the
performance of any act referred to in subsection 36(3) in
Malaysia by a person other than the owner of the patent
and without the agreement of the latter in relation to a
product or a process falling within the scope of
protection of the patent. ”
(emphasis added).
I am of the view that an exercise of the 1 st Plaintiff‟s exclusive

right under s. 36(1)(a), (3)(a)(i), (b)(i) and (ii) PA to exploit
„628 Patent in respect of BBScan System (1 st Version), cannot
constitute an infringement of „862 Patent under s. 58 PA; and
(3) the Plaintiffs have sold BBScan System (2 nd Version) [not

BBScan System (1 st Version)] to the Government. There is
therefore no exploitation of BBScan System (1 st Version)
by the Plaintiffs which can constitute an infringement of
„862 Patent within the meaning of s. 36(3)(a)(i), (b)(i) and
(ii) read with s. 58 PA.
[21] I must add that nothing in this judgment prevents the Defendants
from filing a fresh action to invalidate „628 Patent. This is
because this suit does not concern „628 Patent, let alone its
validity.
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H. Admissibility of illegally obtained evidence
[22] By deception, SD2 has unlawfully obtained the following

evidence (Ilegally Obtained Evidence):
(1) SD2‟s oral evidence regarding SD2‟s Site Visits;
(2) SD2‟s Photographs;
(3) SD2‟s Video Recording;
(4) SD2‟s WhatsApp Messages; and
(5) MyCIS Video.
[23] If Illegally Obtained Evidence is relevant to the issue to be

decided in a criminal case, such evidence is admissible. In Dato’
Seri Anwar Ibrahim v. Public Prosecutor and another appeal
[2015] 2 CLJ 145, at [98], Arifin Zakaria CJ delivered the
following judgment of the Federal Court:
“[98] Now, even if those exhibits recovered from the

lock-up were indeed illegally obtained, which we say were
not, in law they remain admissible if found to be relevant
to the case (s. 5 of the Evidence Act). …”
(emphasis added).
[24] Illegally Obtained Evidence (as enumerated in the above

paragraph 22) is clearly relevant in this case and I so admit it.
The court may admit Illegally Obtained Evidence in a civil case
- please see Tenaga Nasional Bhd v. Api-api Aquaculture Sdn
Bhd [2015] 3 AMR 811, at [56] and [58(a)].
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I. Credibility of witnesses
[25] I will discuss the expert testimonies of SP1, SP2, SP3, SD3 and
SD4 as POSITA‟s for „862 Patent.
[26] SD1 gave evidence based on documents. There is thus no reason

to doubt SD1‟s credibility.
[27] I find as a fact that SP4 is not a credible witness. This decision
is based on the following evidence and reasons:
(1) SP4 testified that the “MiWi Receiver Relay

Board” (Green Board) was present at the time
of the “Final Acceptance Test” (FAT) of
BBScan System (2 nd Version). However, such
evidence by SP4 was materially contradicted by
a photograph in the FAT Report which did not
show the presence of the Green Board at the
time of the FAT;
(2) SP4 gave evidence that BBScan System (1 st Version) was

replaced by BBScan System (2 nd Version) around May
2015. This could not be true because -
(a) in May 2015, the “HAGI” radar component (HAGI

Radar) in BBScan System (2 nd Version) was not seen
at the 2 Sites. Instead, in May 2015, there were
multiple sensors (not Hagi Radar) on the shielding
walls and gantry at the 2 Sites; and
(b) a photograph of FAT report dated 30.5.2015 for

BBScan System at RMCD‟s Premises (TK) showed
the presence of sensors on the shielding walls; and
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(3) during cross-examination, SP4 testified that he could not

remember when sensors for BBScan System (1 st Version)
were installed on the shielding walls. Such evidence shows
that SP4 is less than honest because he is the 1 st Plaintiff‟s
CTO and has access to all information regarding BBScan
System (1 st Version).
J. Effect of High Court’s Decision (2 Suits)
[28] In Sri Paandi Restaurant Sdn Bhd & Anor v. Saraswathy A/P
Kesavan & Ors [2019] AMEJ 540, at [49], [50] and [53], the res
judicata doctrine has been explained as follows:
“[49] Once a court has finally decided a case (1 st Case),

the decision in the 1 st Case may affect subsequent cases
by way of an application of the doctrine of res judicata.
In the Supreme Court case of Asia Commercial Finance
(M) Bhd v. Kawal Teliti Sdn Bhd [1995] 3 MLJ 189, at
197-198, 198 and 199-200, Peh Swee Chin FCJ has
explained that the doctrine of res judicata consists of two
limbs (2 Limbs) as follows:
(1) the principle of cause of action estoppel applies to

bar a person (Y) and/or Y‟s “privy” from filing any
action after the 1 st Case (Subsequent Case) based on
a cause of action which has been decided in the 1 st
Case (1 st Limb); and
(2) issue estoppel principle operates to prevent Y and/or

Y‟s privy from raising any issue in the Subsequent
Case which -
(a) has been raised in the 1 st Case; or
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(b) can be raised with reasonable diligence in the

1 st Case
(2 nd Limb).
G(2). 2 nd Defendant and its privies
[50] In Doretti Resources Sdn Bhd v. Fitters Marketing

Sdn Bhd & Ors [2017] 5 MLRH 1, at [15], I have
followed Megarry VC‟s decision in the English High
Court case of Gleeson v. J. Wippell & Co Ltd [1977] 1
WLR 510, at 514, that a person is a “privy” of another
person if there is a relationship between those persons by
blood, title or interest.
[53] Res judicata doctrine is based on case law and

should not be applied indiscriminately so as to cause
injustice - please see Gopal Sri Ram JCA‟s (as he then
was) judgment in the Court of Appeal case of Chee Pok
Choy & Ors v. Scotch Leasing Sdn Bhd [2001] 4 MLJ
346, at 356, 357 and 358.”
(emphasis added).
[29] I am of the following view regarding the High Court‟s Decision

(2 Suits):
(1) the 2 nd Plaintiff and Defendants are parties in the 2 Suits;
(2) the 1 st Plaintiff has a privity of commercial interest with

the 2 nd Plaintiff as the latter has been licensed by the
former to commercialise BBScan System (2 nd Version);
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(3) the Government (which includes RMCD‟s DG) has a

privity of commercial interest with the 2 nd Plaintiff by
reason of the 1 st Agreement and Supplemental Agreement;
(4) issue estoppel principle applies to bind all the parties in

this suit regarding the following issues which have been
decided in the High Court‟s Decision (2 Suits) -
(a) who is a POSITA for „862 Patent? In this regard,

SD4 is a POSITA whose expert view on „862 Patent
has been accepted in the High Court‟s Decision (2
Suits);
(b) „862 Patent is valid;
(c) BTScan System has infringed Claims 1, 7, 8, 9, 11

and 12; and
(d) BPScan System will infringe Claims 1, 7, 8, 9, 11

and 12; and
(5) it is neither unjust nor inequitable to apply issue estoppel

principle in this case with regard to the High Court‟s
Decision (2 Suits). Furthermore, for reasons explained
subsequently in this judgment, BBScan System (2 nd
Version) constitutes an unlawful attempt by the Plaintiffs
to circumvent the High Court‟s Decision (2 Suits).
K. POSITA
K(1). Who is POSITA for ‘862 Patent?
[30] In Kingtime International Ltd & Anor v. Petrofac E&C Sdn Bhd
[2018] MLJU 1840, at [29] and [30], this court has followed two
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Federal Court judgments in SKB Shutters Manufacturing Sdn

Bhd v. Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 6
MLJ 293, at [38], [39] and [41] [judgment by Zulkefli CJ
(Malaya) (as he then was)] and Spind Malaysia Sdn Bhd v.
Justrade Marketing Sdn Bhd & Ors [2018] 4 MLJ 34 (decision
by Raus Sharif CJ), at [85] and [86] regarding the importance of
a POSITA in a patent case:
“[29] Based on SKB Shutters Manufacturing and Spind -
(1) the Court may be assisted by a POSITA‟s expert

evidence; and
(2) the Court is not bound to accept a POSITA‟s

opinion.
[30] The POSITA‟s expert view is important in the

following matters:
(1) the construction of a patent, especially its claims ;
(5) whether a claim in a patent has been infringed

under s. 58 read with s. 36 PA.”
(emphasis added).
[31] I have considered the expert testimonies of SP1, SP2, SP3, SD3
and SD4. I am of the view that a POSITA for „862 Patent is a
team of persons possessing all the following skills:
(1) knowledge in applied physics related to -
(a) accelerators; or
(b) radiation production and detection;
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(2) qualification and experience in radiation safety, has access

to and would have read journals such as “Nuclear
Instruments and Methods” and “IEEE Transactions in
Nuclear Science” and publications referred therein;
(3) has attended international conferences such as “Nuclear

Science Symposium” or “Conference on Applications of
Accelerators to Research and Industry”;
(4) involved in or interested in portal security and has a basic

knowledge in chemistry (including knowledge of elemental
analysis); and
(5) has qualification and/or experience in the area of

electronics and computers.
[32] Based on the resumes of SP1, SP2, SP3, SD3 and SD4, I accept
these expert witnesses as POSITA‟s for „862 Patent. In fact,
SD4 has also been accepted as a POSITA for „862 Patent by the
High Court which has decided the 2 Suits. Although I recognize
SP1, SP2, SP3, SD3 and SD4 as POSITA‟s for „862 Patent, the
weight to be attached to their expert testimonies may differ
based on the reasons stated later in this judgment.
K(2). Weight to be attached to POSITA’s expert evidence
[33] The Plaintiffs have firstly contended that SD3 is not an expert
on radar under s. 45(1) EA because SD3‟s curriculum vitae (CV)
shows that SD3‟s qualification, experience and publication is in
the field of “Communications and Arrays Signal Processing ”
and not on radar technology. Hence, the Plaintiffs submit that
SD3‟s expert evidence concerning radar technology, in
particular concerning HAGI Radar, should be disregarded. I am
23
not able to accede to this contention due to the following

evidence and reasons:
(1) as submitted by the Defendants, SD3‟s CV disclosed five

publications on radar;
(2) SD3‟s CV shows that SD3 has personally carried out

research work regarding radar technology; and
(3) SD3 has also supervised many dissertations on radar by

post- graduate students pursuing their Masters and
Doctorate degrees.
[34] I cannot accede to the Plaintiffs‟ contention that SD4 is not an

expert in radar because firstly, SD4‟s CV shows SD4‟s
qualification and experience regarding “scattering” and radar is
only one example of the generation and detection of the
scattering of electromagnetic waves. Furthermore, a “Google”
search of SD4 (exhibit D55) reveals SD4‟s expertise regarding
radar.
[35] The Plaintiffs have submitted that the expert evidence of SP2
should be preferred to that of SD3 because SD3 has not
examined HAGI Radar. I reject such a contention because based
on SD3‟s expertise on radar technology, SD3 is able to give his
expert view on HAGI Radar premised on -
(1) the specifications of HAGI Radar (HAGI Radar

Specifications). HAGI Radar Specifications, in my view,
can provide the true capabilities of HAGI Radar. In this
case, the Plaintiffs have not adduced any expert evidence
to show that HAGI Radar Specifications do not accurately
state the actual capabilities of HAGI Radar. If HAGI Radar
Specifications are wrong or misleading in any manner, the
24
Plaintiffs would have contacted or taken action, against

ISB, the supplier of HAGI Radar; and
(2) SP2‟s video presentation regarding HAGI Radar to this

court (Exhibit P6).
[36] The Plaintiffs have contended that SD3 has failed to disclose to
the court that SD3 has not inspected HAGI Radar and as such,
the court should not accept SD3‟s expert opinion. I have perused
SD3‟s two expert reports which state that SD3‟s expert view is
based on an examination of the relevant documents. It is clear
from SD3‟s expert reports that SD3 has not inspected HAGI
Radar. SD3 did not conceal or mislead this court regarding the
fact that HAGI Radar had not been inspected by him. In any
event, SD3‟s expert evidence is based on, among others, HAGI
Radar Specifications and Exhibit P6. There is also no reason to
doubt SD3‟s independence in this case.
[37] I attach weight to the expert opinions of SD3 and SD4 due to the
following reasons:
(1) SD3 and SD4 have given cogent reasons for their expert
views in their reports attached to their affidavits and their
oral testimonies; and
(2) SD3 and SD4 have been vigorously cross-examined by the

Plaintiffs‟ learned counsel and such a cross-examination
has not revealed any reason to doubt their veracity as
POSITA‟s for „862 Patent.
It is to be noted that the High Court‟s Decision (2 Suits) is

based solely on SD4‟s expert testimony.
[38] I find as a fact that SP1, SP2 and SP3 are not reliable expert
witnesses. This decision is made because SP1, SP2 and SP3 have
25
failed to consider the issue of nuclear radiation safety regarding

the drivers of the vehicles which are scanned by BBScan
System, be it the first or second version. This is an important
question because this issue concerns public safety and may
entail civil liability in the future on the part of the Plaintiffs and
Government to drivers of vehicles which have been scanned by
BBScan System (1 st Version) and by BBScan System (2 nd
Version).
[39] SP2‟s expert evidence regarding HAGI Radar is doubtful

because -
(1) SP2 admitted during cross-examination that he did not

know many aspects concerning HAGI Radar - please see
the Defendants‟ first written submission dated 2.4.2018
(Defendants’ 1 st Submission), at paragraph 203;
(2) SP2 gave the following conflicting answers regarding

HAGI Radar -
(a) whether HAGI Radar is an “adaptive radar” (a radar

which estimates the current position of a target by
using previous estimates); and
(b) whether radar signals are random or otherwise;
(3) SP2 has provided a figure on the reflection paths to the

HAGI Radar (Figure 6) which is erroneous and this was
pointed out by SD3;
(4) SP2‟s expert testimony on whether HAGI Radar can detect

a target or not, is erroneous because he has looked at the
wrong reference point - please see the Defendants‟ 1 st
Submission, at paragraph 205; and
26
(5) SP2 has provided an illustration regarding HAGI Radar

(Figure 8) which is wrong and this is admitted during
SD2‟s cross-examination.
[40] I am not able to attach any weight to SP3‟s expert view because
-
(1) SP3 had measured the radiation levels (Radiation Levels

Data) produced by the Betatron device in BBScan System
(2 nd Version) (Betatron Device) with the use of an
inappropriate “Geiger-Muller” dosimeter. The Betatron
Device is a “pulse accelerator” and an “Ion Chamber”
dosimeter (not Geiger-Muller dosimeter) is the appropriate
equipment to measure the radiation levels produced by the
Betatron Device - please see the Defendants‟ 1 st
Submission, at paragraphs 215-217. I accept a document
published by the American National Standards Institute
(ANSI Document) which stated that a Geiger- Muller
dosimeter is inappropriate to measure the dose of a pulse
accelerator (such as the Betatron Device). In fact, SP3 had
also relied on the same ANSI Document;
(2) the Radiation Levels Data were not recorded by SP3

herself. At the time of the recording of the Radiation
Levels Data, SP3 was in the Control Room and an
“engineer or operator” named Alfred was in the vehicle
(being driven through the scan area and being scanned by
the Betatron Device) with the Geiger-Muller dosimeter. In
other words, the Radiation Levels Data were recorded by
Alfred and not by SP3 herself. The Plaintiffs did not call
Alfred to give evidence in this case. Nor did the Plaintiffs
adduce any evidence why Alfred could not be subpoenaed
to testify in this suit. Accordingly, I am constrained to
27
draw an adverse inference under s. 114(g) EA against the

Plaintiffs not calling Alfred to testify in this case - please
see Mohd. Azmi SCJ‟s judgment in the Supreme Court
case of Munusamy v. Public Prosecutor [1987] 1 MLJ 492,
at 494;
(3) SP3‟s expert opinion on the “Collimator Effect” is not

substantiated, even by the manual regarding the Betatron
Device. In fact, SP3‟s expert testimony on the Collimator
Effect is undermined by SD4‟s video on collimation,
exhibit D17. During cross-examination, SP3‟s own
calculations could not even support her expert evidence
regarding the Collimator Effect - please see the
Defendants‟ 1 st Submission, at paragraph 213; and
(4) SP3‟s expert testimony on the “worst case scenario”

regarding the radiation exposure of a driver of the vehicle
being scanned by the Betatron Device is vacillating and
unconvincing - please see the Defendants‟ 1 st Submission,
at paragraph 211.
L. What is scope of Claims 1, 7, 8, 9, 11 and 12?
L(1). Patent construction
[41] Regarding the interpretation of a patent, it is decided in

Kingtime International, at [40], as follows:
“[40] I am of the following view regarding patent

construction:
(1) a patent contains, among others, the following -
28
(a) an abstract as stated in reg. 16(1) to (8) PR

(Abstract);
(b) a “description” as provided in reg. 12(1) to (3)

PR (Description);
(c) claims as required by reg. 13(1) to (6) PR

(Claims). Regulation 14(1) to (4) PR provides
for “dependent claims”; and
(d) drawings as stated in reg. 15(1) to (3) PR

(Drawings).
(2) the first step in patent litigation is to ascertain the

scope of the Claims - Spind, at paragraph 98;
(3) the Court may be assisted by a POSITA‟s expert

opinion in patent construction but ultimately, it is
up to the Court to interpret the patent - SKB
Shutters Manufacturing and Spind;
(4) the monopoly of an invention as conferred by a

patent is defined only in the Claims [not the
Abstract, Descriptions, Drawings and other
specifications of the patent (Other Patent
Specifications)] - please see reg. 13(5) PR and Lord
Russell‟s judgment in the House of Lords in
Electric & Musical Industries Ltd & Ors v. G Kalis
[1939] RPC 23, at 39. Electric & Musical Industries
has been followed in SKB Shutters Manufacturing
(in paragraph 34) and Spind (in paragraph 97);
(5) the primary objective in interpreting a Claim is to

limit (not to extend) the monopoly of the invention
as stated in the Claim - SKB Shutters
29
Manufacturing (in paragraph 19) and Spind (in

paragraph 97); and
(6) the Court shall construe a Claim in a purposive (not

literal) manner as understood by a POSITA - Spind,
in paragraph 123. In this regard -
(a) it is an objective exercise of how a POSITA

would have understood a Claim - please see
Lord Hoffmann‟s judgment in the House of
Lords in Kirin-Amgen Inc & Ors v. Hoechst
Marion Roussel Ltd and other appeals [2005]
1 All ER 667, at paragraph 32. Kirin-Amgen
has been followed in Spind, at paragraph 123;
(c) the Claims may be interpreted with reference

to the Other Patent Specifications but if a
Claim is clear, the scope of the Claim cannot
be extended, reduced or amended by the Other
Patent Specifications - Spind, at paragraph
124.”
(emphasis added).
[42] The Plaintiffs have attempted to construe „862 Patent based on

“Detailed Description of the Preferred Embodiments” in „862
Patent (Preferred Embodiments). I am not able to accept such
an approach. Firstly, if the claims of „862 Patent are clear based
on a purposive interpretation, these claims “cannot be extended,
reduced or amended” by the Preferred Embodiments - please see
Spind, at [124]. Furthermore, the Preferred Embodiments have
stated at p. 13 of „862 Patent that “it would be appreciated by
30
[POSITA’s] that changes may be made in this embodiment

without departing from the principles of the invention, the scope
of which is defined in the claims and their equivalents ”. In other
words, the Preferred Embodiments have already made clear that
the Preferred Embodiments do not confine in any manner the
scope of the claims of „862 Patent.
[43] I accept the expert view of SD4 that „862 Patent is a product and
process patent wherein the purpose of the invention in 862
Patent is a “system” (not a mere “device”) -
(1) to enable the inspection of a moving object (such as a

vehicle carrying cargo) by imaging the object (by
radiation); and
(2) at the same time, the system “shields” or “dodges” the

driver cabin of the vehicle from unsafe exposure of
radiation during the inspection process.
[Purpose (‘862 Patent)].
[44] In this judgment, regarding „862 Patent, I shall use the term
“shielding” and “dodging” inter-changeably as both terms are
used in Claims 1, 8, 9, 11 and 12.
L(2). Claim 1
[45] This court accepts SD4‟s expert opinion that Claim 1, a product
claim, is an independent claim regarding a system of imaging
inspection of a movable object which consists of the following
four essential integers [4 Essential Integers (Claim 1)]:
(1) a first detecting unit (1 st Detecting Unit) configured to

detect whether a moving object to be inspected has moved
31
into a passage (Passage) or not [1 st Essential Integer

(Claim 1)];
(2) a second detecting unit (2 nd Detecting Unit) -
(a) configured to detect whether a part to be shielded of

the moving object passes into the Passage or not; and
(b) generates a passing signal (Passing Signal) after the

1 st Detecting Unit detects that the moving object to
be inspected moves into the Passage
[2 nd Essential Integer (Claim 1)];
(3) a scan imaging device (Scan Imaging Device) configured

to emit radiating beams (Beams) for inspecting the moving
object to be inspected by scanning [3 rd Essential Integer
(Claim 1)]; and
(4) a control system (Control System) configured to generate

a control signal (Control Signal) for controlling the Scan
Imaging Device to generate the Beams according to the
Passing Signal [4 th Essential Integer (Claim 1)].
[46] It is to be noted that the High Court‟s Decision (2 Suits) has

also accepted SD4‟s expert testimony regarding the 4 Essential
Integers (Claim 1).
L(3). Claim 7
[47] I accept SD4‟s expert evidence that Claim 7, a product claim, is

a claim which is dependent on Claim 1, wherein the moving
object is a vehicle. Such a decision is consistent with the High
Court‟s Decision (2 Suits).
32
L(4). Claim 8
[48] SD4 opined that Claim 8 is a product claim which is dependent

on Claim 7, wherein the part to be shielded is the vehicle‟s
driving cab (Driving Cab). I accept such expert evidence from
SD4. There is also no reason to depart from the High Court‟s
Decision (2 Suits) regarding the scope of Claim 8.
L(5). Claim 9
[49] I am of the view that based on SD4‟s expert opinion, Claim 9, a

process claim, is an independent claim regarding a dodging
method for a moving object (being image inspected) with the
following three essential integers [3 Essential Integers (Claim
9)]:
(1) a first determining step (1 st Determining Step) of judging

whether a moving object has moved into the Passage or not
[1 st Essential Integer (Claim 9)];
(2) a second determining step (2 nd Determining Step) of

judging whether a part to be shielded of the moving object
passes through a radiating scan area in the Passage (Scan
Area) and generates a Passing Signal [2 nd Essential
Integer (Claim 9)]; and
(3) a scan imaging step of generating a Control Signal for

controlling the Scan Imaging Device to generate Beams
according to the Passing Signal, after judging that the part
to be shielded passes through the Scan Area, to emit
Beams to the Passage and inspect the moving object by
scanning to dodge the area to be shielded [3 rd Essential
Integer (Claim 9)].
33
The High Court‟s Decision (2 Suits) has also made the same
finding regarding Claim 9 (3 Essential Integers)].
L(6). Claim 11
[50] As testified by SD4, I am of the view that Claim 11 is a process

claim dependent on Claim 9, wherein the moving object is a
vehicle. This is in consonance with the High Court‟s Decision (2
Suits).
L(7). Claim 12
[51] I accept SD4‟s expert opinion that Claim 12 is a process claim

dependent on Claim 9, wherein a part to be shielded is the
Driving Cab. This finding is consistent with the High Court‟s
Decision (2 Suits).
M. Burden of proof
[52] Section 62(1) and (2) PA provide as follows:
“Declaration of non-infringement.
62(1) Subject to subsection (4), any interested person

shall have the right to request, by instituting proceedings
against the owner of the patent, that the Court declare
that the performance of a specific act does not constitute
an infringement of the patent.
(2) If the person making the request proves that the act
in question does not constitute an infringement of the
patent, the court shall grant the declaration of non -
infringement.”
34
(emphasis added).
[53] It is not disputed that with regard to „862 Patent, the Plaintiffs
are “interested persons” within the meaning of s. 62(1) PA. This
is because the Plaintiffs‟ commercial interest in the exploitation
of BBScan System (2 nd Version) is adversely affected by the
Counterclaim (This Suit) [which alleges that BBScan System
(2 nd Version) has infringed „862 Patent]. Accordingly, the
Plaintiffs have the locus standi to file the Original Action (This
Suit) under s. 62(1) PA.
[54] When a party (X) applies to court for a declaration pursuant to s.

62(1) PA that a specific act does not infringe a patent (Non-
infringement of Patent), X bears the legal and evidential
burden to satisfy the court regarding the Non-infringement of
Patent. This is clear from the wording of s. 62(2) PA. However,
in this case the Defendants have alleged Patent Infringement. In
light of the Defendants‟ claim of Patent Infringement, I am of
the view that the Defendants have the legal and evidential
burden to prove Patent Infringement by the Plaintiffs, RMCD‟s
DG and Government. If the Defendants are able to discharge the
burden to prove Patent Infringement, the Counterclaim (This
Suit) should be allowed and the Original Action (This Suit) be
dismissed. Conversely, if the Defendants fail to prove Patent
Infringement, the Counterclaim (This Suit) should be dismissed
and the court should allow the Original Action (This Suit). For
the avoidance of doubt, I take the following position in this
case:
(1) the Defendants have the legal and evidential burden to

prove Patent Infringement on a balance of probabilities;
and
35
(2) the Plaintiffs have no legal and evidential burden to prove

that BBScan System (2 nd Version) has not infringed „862
Patent.
N. Patent Infringement
[55] It is explained in Kingtime International, at [81], that there are

three tests to decide whether a patent has been infringed (3
Tests) -
“[81] My understanding of case law is that there are three

tests to decide Patent Infringement Issue (3 Tests) as
follows:
(1) the Essential Integers Test is explained by Lord

Upjohn in the 3-2 majority judgment in the House
of Lords‟ case of Rodi & Wienenberger AG v. Henry
Showell Ltd [1969] RPC 367, at 391 (Rodi‟s Case),
as follows -
“To constitute infringement, the article must

take each and every one of the essential
integers of the claim. Non-essential integers
may be omitted or replaced by mechanical
equivalents.”
(emphasis added).
Rodi‟s Case has been followed by the Court of

Appeal‟s judgment delivered by Vernon Ong JCA in
Yeohata Machineries Sdn Bhd & Anor v. Coil
Master Sdn Bhd & Ors [2015] 6 MLJ 810, at
paragraph 15;
36
(2) according to the Improver‟s Test [1990] FSR 181, at 189 -
“If the issue was whether a feature embodied in an

alleged infringement which fell outside the primary,
literal or a contextual meaning of a descriptive
word or phrase in the claim (“a variant”) was
nevertheless within its language as properly
interpreted, the court should ask itself the following
three questions:
(1) Does the variant have a material effect upon

the way the invention works? If yes, the variant is
outside the claim. If no -
(2) Would this (i.e. that the variant had no

material effect) have been obvious at the date of
publication of the patent to a reader skilled in the
art. If no, the variant is outside the claim. If yes -
(3) Would the reader skilled in the art

nevertheless have understood from the language of
the claim that the patentee intended that strict
compliance with the primary meaning was an
essential requirement of the invention. If yes, the
variant is outside the claim.
On the other hand, a negative answer to the last

question would lead to the conclusion that the
patentee was intending the word or phrase to have
not a literal but a figurative meaning (the figure
being a form of synecdoche or metonymy) denoting
a class of things which included the variant and the
literal meaning, the latter being perhaps the most
37
perfect, best-known or striking example of the

class.”
(emphasis added).
In Cadware Sdn Bhd v. Ronic Corp [2013] 6 MLJ 19, at

paragraph 24, our Court of Appeal in a judgment given
by Mohd. Hishamudin JCA, has applied Improver‟s Test;
and
(3) Actavis’ Test [2018] 1 All ER 171, at paragraph 66, is as

follows -
“[66] In these circumstances, given the weight

that has been given by courts in this jurisdiction
(and indeed in some other jurisdictions) to the three
„Improver questions‟, I think it must be right for
this court to express in our own words our
reformulated version of those questions. In doing
so, it is right to emphasise, as Lord Hoffmann did
in Kirin-Amgen [2005] 1 All ER 667, [2005] RPC
169 (at [52]), that these questions are guidelines,
not strict rules (as indeed the Oberlandesgericht
indicated in Eli Lilly & Co v. ratiopharm GmbH
Case No 6U 3039/16, when saying that it was
„generally‟ true that „three requirements must be
met‟). While the language of some or all of the
questions may sometimes have to be adapted to
apply more aptly to the specific facts of a particular
case, the three reformulated questions are as
follows:
(i) Notwithstanding that it is not within the literal

meaning of the relevant claim(s) of the patent,
38
does the variant achieve substantially the

same result in substantially the same way as
the invention, ie the inventive concept
revealed by the patent?
(ii) Would it be obvious to the person skilled in

the art, reading the patent at the priority date,
but knowing that the variant achieves
substantially the same result as the invention,
that it does so in substantially the same way as
the invention?
(iii) Would such a reader of the patent have

concluded that the patentee nonetheless
intended that strict compliance with the literal
meaning of the relevant claim(s) of the patent
was an essential requirement of the invention?
In order to establish infringement in a case where

there is no literal infringement, a patentee would
have to establish that the answer to the first two
questions was „yes‟ and that the answer to the third
question was „no‟.” ”
(emphasis added).
[56] In this case, I will apply the 3 Tests as follows:
(1) whether BBScan System (2 nd Version) has all the essential

integers of Claims 1, 7, 8, 9, 11 and 12 (Essential
Integers Test);
(2) the three questions laid down in Improver Corp & Ors v.
Remington Consumer Products Ltd & Ors [1990] FSR 181,
at 189 (Improver’s Test); and
39
(3) the application of the test expounded in Actavis UK Ltd &

Ors v. Eli Lilly and Co, and other appeals [2018] 1 All ER
171, at [66] (Actavis’ Test).
N(1). BBScan System (2 nd Version)
[57] Based on the evidence of SP1, SP2, SP3 and SP4, the essential
features of BBScan System (2 nd Version) are as follows:
(1) BBScan System (2 nd Version) is an automated vehicle

scanning system which conducts a Full Scan of the entire
vehicle (including the Driving Cab) without a need for the
driver of the vehicle to step out of the vehicle during the
scanning process of the vehicle;
(2) BBScan System (2 nd Version) operates in the following

three zones -
(a) “Entry Zone”;
(b) “Vehicle Data Collection Zone”; and
(c) “Scanner Zone”;
(3) the Entry Zone consists of a gantry of 5 metres. There is a

pair of over-height sensors on the gantry. The BBScan
System (2 nd Version) can only scan vehicles with a height
(including the cargoes) not exceeding 5 metres. The
purpose of the over-height sensors is to detect vehicles or
their cargoes which are higher than 5 metres. When the
over-height sensors are triggered, a safety barrier located
before the Scanner Zone will be lowered to prevent the
vehicle from entering the Scanner Zone and to avoid
damage to the BBScan System (2 nd Version);
40
(4) the Vehicle Data Collection Zone employs the following

two separate systems -
(a) “Optical Character Recognition System” (OCR

System); and
(b) “Radiation Portal Monitoring System” (RPM

System);
(5) the OCR System uses optical cameras to capture the

license plate of vehicles entering the Vehicle Data
Collection Zone and the container number of the cargoes
(if any). Information captured by the OCR System is stored
in the OCR database;
(6) the RPM System detects the radiation level of vehicles

entering the Vehicle Data Collection Zone and their
cargoes. If a high-level radioactive material in a vehicle is
detected by the RPM System, RMCD‟s officers will be
alerted. The radiation level reading for each vehicle is
stored in the RPM database;
(7) the Scanner Zone uses the following systems -
(a) HAGI Radar;
(b) a control system named “Programmable Logic

Controller” (PLC); and
(c) the Betatron Device;
(8) the HAGI Radar detects a vehicle entering the Scanner

Zone and will send a signal to the PLC. The PLC will then
send a signal to the Betatron Device so as to activate the
Betatron Device (which will generate Beams to conduct a
41
Full Scan of the vehicle). SP2 has recorded this entire

process to take only 0.03 seconds; and
(9) the vehicle will be scanned as it moves along the scan line.
Once the back of the vehicle passes the end of the scan
line, a laser sensor will send a signal to the PLC which
will then send a signal to deactivate the Betatron Device.
N(2). Whether Claims 1, 7 and 8 have been infringed by BBScan

System (2 nd Version)
[58] Regarding the 1 st Essential Integer (Claim 1) -
(1) I accept the expert testimony of SD3 and SD4 that the
over-height sensors on the gantry and the HAGI Radar of
BBScan System (2 nd Version) constitute the 1 st Detecting
Unit. This is because the over- height sensors on the
gantry can detect whether moving objects move into the
Passage or otherwise. Similarly, the HAGI Radar is able to
detect whether a moving object moves into the Passage or
not;
(2) if this court accepts the expert opinion of SP2 that the
over-height sensors on the gantry and the HAGI Radar of
BBScan System (2 nd Version) do not fall within the
meaning of the 1 st Detecting Unit, this is tantamount to an
acceptance of a narrow meaning of the word “detect” in in
Claim 1 and is contrary to the Purpose („862 Patent); and
(3) a purposive interpretation of the 1 st Essential Integer

(Claim 1) only requires the 1 st Detecting Unit to “detect
whether a moving object to be inspected ” has moved into
the Passage or not. The 1 st Essential Integer (Claim 1) does
not require BBScan System (2 nd Version) to distinguish
42
whether a moving object is a vehicle, non-vehicle or a

natural person. In any event, SD3 has given his expert
view that HAGI Radar is able to distinguish between a
vehicle and its driver.
[59] In respect of the 2 nd Essential Integer (Claim 1) -
(1) I am satisfied that based on the expert testimonies of SD3

and SD4, BBScan System (2 nd Version) has a 2 nd Detecting
Unit, namely the HAGI Radar. According to SD3, the
HAGI Radar can -
(a) detect whether a part to be shielded of the moving

object passes into the Passage or otherwise; and
(b) send a Passing Signal (which contains information

regarding, among others, the part of the moving
object to be shielded from scanning) to the Control
System (PLC) after the 1 st Detecting Unit (the over-
height sensors on the gantry and the HAGI Radar)
has detected a moving object (to be inspected)
moving into the Passage;
(2) I am not able to accept SP2‟s expert opinion that due to

“severe dense echo multipath from the transmitted pulse”
(Clutter), the HAGI Radar can only detect the presence of
the front end of the approaching vehicle. This is because,
as admitted by SP2, the HAGI Radar is a “UWB terrestrial
radar” which is able to filter Clutter during the
performance of its functions. In other words, the HAGI
Radar can operate in the presence of Clutter and is able to
detect not only the front part of the vehicle but also all
other parts of the vehicle, including the Driving Cab;
43
(3) SP2 has opined that when the front part of the vehicle
reaches “trigger point 5” (Trigger 5), a “simple signal”
associated with scanning, namely a “switch on signal of
one-bit information (with no other information) ”, is sent
by HAGI Radar to the PLC to start the scanning process by
the Betatron Device. According to SP2, the Green Board is
part of HAGI Radar and the HAGI Radar cannot send a
Passing Signal to the PLC. I am not able to accept such an
expert opinion by SP2 because -
(a) the scanning process in BBScan System (2 nd

Version), as admitted by SP1, operates on a “pre-
determined non-arrival time-out” mechanism (Time-
out Mechanism). According to the Time-out
Mechanism, if a vehicle has not reached “Position B”
within a pre-determined time period, the Time-out
Mechanism will be triggered (even if Trigger 5 is
triggered) and the scanning process by the Betatron
Device does not commence. It is thus clear that SP2
has fallen into error because the Betatron Device
does not start scanning a vehicle even if Trigger 5
has been triggered when the Time-out Mechanism
applies;
(b) the above expert view of SP2 was not in his initial
expert report (when it was filed in court and served
on the Defendants‟ solicitors) and was only given in
this court after SP2 had taken the witness stand and
had subsequently amended his expert report to
include the above expert opinion; and
(c) the Green Board is part of the Control System and

does not form part of HAGI Radar. This is clear from
44
the wiring diagram of BBScan System (2 nd Version)

(Wiring Diagram), FAT reports and HAGI Radar
Specifications. In fact, the Green Board has a
microprocessor to process data sent by “RS232
Cable”;
(4) SP2 has given expert evidence that because scanning by

the Betatron Device starts from the front of the vehicle,
BBScan System (2 nd Version) has no ability to shield any
part of the vehicle. Such an expert opinion is contrary to
MyCIS Video which shows that BBScan System (2 nd
Version) is capable of shielding the Driving Cab;
(5) as explained in the above sub-paragraph 35(1), the true

capabilities of HAGI Radar can be ascertained from the
HAGI Radar Specifications. There is no expert evidence
led by the Plaintiffs that the HAGI Radar Specifications
have stated that HAGI Radar has no ability to detect
whether a part to be shielded of the moving object has
passed into the Passage or not;
(6) the Plaintiffs could have easily called an expert from ISB,
the supplier of HAGI Radar, to give expert evidence that
HAGI Radar has no capability to detect whether a part to
be shielded of the moving object has passed into the
Passage or otherwise (ISB’s Expert). No evidence has
been adduced by the Plaintiffs regarding the reason for not
calling ISB‟s Expert in this case. As such, an adverse
inference under s. 114(g) EA is drawn against the
Plaintiffs for not calling ISB‟s Expert regarding the actual
capabilities of HAGI Radar; and
(7) a purposive interpretation of Claim 1 does not require

HAGI Radar to measure the exact shape and size of the
45
Driving Cab so as to enable the Driving Cab to be shielded

during the scan. The 2 nd Essential Integer (Claim 1) is
fulfilled by BBScan System (2 nd Version) so long as the
HAGI Radar has the ability to detect whether the part of
the moving object to be shielded from scanning, has passed
into the Passage or otherwise.
[60] The Plaintiffs have contended that in Claim 1, the 1 st Detecting

Unit and 2 nd Detecting Unit have to be discrete. I am not able to
accept such a construction of Claim 1. Firstly, a purposive
interpretation of the 1 st Essential Integer (Claim 1) and 2 nd
Essential Integer (Claim 1) does not provide that the 1 st
Detecting Unit has to be separate from the 2 nd Detecting Unit.
Furthermore, I accept the expert opinion of SD3 that the HAGI
Radar can be broken into discrete sub-systems within the HAGI
Radar itself wherein there is a sub-system which constitutes the
1 st Detecting Unit and another sub-system which functions as the
2 nd Detecting Unit. It is thus clear that HAGI Radar performs the
functions of the 1 st Detecting Unit and 2 nd Detecting Unit within
the meaning of the 1 st Essential Integer (Claim 1) and 2 nd
Essential Integer (Claim 1) respectively.
[61] Based on the expert testimony of SD4 -
(1) BBScan System (2 nd Version) has the Betatron Device

which can emit Beams to scan moving objects as provided
in 3 rd Essential Integer (Claim 1); and
(2) BBScan System (2 nd Version) has the 4 th Essential Integer

(Claim 1) because BBScan System (2 nd Version) has a
Control System (PLC) which sent Control Signals (which
contains information regarding, among others, the part of
the moving object to be shielded from scanning) for
controlling Betatron Device to generate the Beams
46
according to the Passing Signals (which contains

information regarding, among others, the part of the
moving object to be shielded from scanning).
[62] In view of the above expert evidence of SD3 and SD4, BBScan
System (2 nd Version) has fulfilled all the 4 Essential Integers
(Claim 1).
[63] Claim 7 is fulfilled by BBScan System (2 nd Version) because the

moving object to be inspected is a vehicle and all the 4 Essential
Integers (Claim 1) are present in BBScan System (2 nd Version).
[64] I find as a fact that Claim 8 is present in BBScan System (2 nd

Version). This decision is based on the following expert
evidence and reasons:
(1) BBScan System (2 nd Version) has all the 4 Essential

Integers (Claim 1);
(2) SD4 has opined that BBScan System (2 nd Version) has the
capability to shield the Driving Cab from being scanned.
Accordingly, the fact that BBScan System (2 nd Version)
can operate on a “fixed length scan” mode does not mean
that BBScan System (2 nd Version) is not able to shield the
Driving Cab from scanning by the Betatron Device;
(3) SD4‟s expert evidence is supported by the following

evidence -
(a) MyCIS Video (produced by the 2 nd Plaintiff);
(b) SD2 testified that during SD2‟s Site Visits, in the

Control Room, she saw Scan Images on the computer
screen of BBScan System (2 nd Version) where there
47
was a shielding of the Driving Cab of vehicles

inspected by BBScan System (2 nd Version);
(c) SD2‟s Photographs show the shielding of the Driving

Cab by BBScan System (2 nd Version); and
(d) according to SD2‟s WhatsApp Messages, Mr. Koo

informed SD2 that BBScan System (2 nd Version) has
an “adjustable setting” which is capable of shielding
the Driving Cab;
(4) the fact that SD4 did not inspect the Betatron Device
during SD4‟s inspection of BBScan System (2 nd Version)
(SD4’s Inspection) is immaterial because SD4 could
provide his expert opinion regarding the capability of
BBScan System (2 nd Version) to shield the Driving Cab
from being scanned by the Betatron Device; and
(5) I give no credence to the Plaintiff‟s contention that the

Betatron Device operates on a single energy level, namely
6 MeV because according to SD4‟s expert view, the
Betatron Device can operate at different energy levels. In
fact, during SD4‟s Inspection, the Betatron Device
operated at 2 MeV (instead of at 6 MeV).
[65] Premised on SD4‟s expert evidence, I am satisfied that BBScan

System (2 nd Version) has infringed Claims 1, 7 and 8 according
to Improver‟s Test as follows:
(1) the features of BBScan System (2 nd Version) which are

different from the 4 Essential Integers (Claim 1), Claims 7
and 8 do not have a material effect on the way the
invention in Claims 1, 7 and 8 works;
48
(2) the variants, if any, would have been obvious to SD4

(POSITA on „862 Patent) on the date of publication of
„862 Patent; and
(3) SD4 would not have understood from the language of

Claims 1, 7 and 8 that the Defendants (as co-patentees of
„862 Patent) intended that strict compliance with the
primary meaning of Claims 1, 7 and 8 was an essential
requirement of the invention in Claims 1, 7 and 8.
[66] Applying Actavis‟ Test, according to SD4‟s expert view, there

has been an infringement of Claims 1, 7 and 8 by BBScan
System (2 nd Version) as follows:
(1) notwithstanding that some features of BBScan System (2 nd

Version) are not within the literal meaning of Claims 1, 7
and 8, the variants achieve substantially the same result in
substantially the same way as the invention in Claims 1, 7
and 8;
(2) it is obvious to SD4 (POSITA on „862 Patent) reading

Claims 1, 7 and 8 on the priority date of „862 Patent that
BBScan System (2 nd Version) achieves substantially the
same result as the invention in Claims 1, 7 and 8 in
and 8; and
(3) SD4 would not have concluded that the Defendants (as co-
patentees of „862 Patent) intended that strict compliance
with the literal meaning of Claims 1, 7 and 8 was an
essential requirement of the invention in Claims 1, 7 and 8.
49
N(3). Have Claims 9, 11 and 12 been infringed by BBScan System

(2 nd Version)?
[67] As regards the 1 st Essential Integer (Claim 9), I accept the

expert evidence of SD3 and SD4 that the over-height sensors on
the gantry and the HAGI Radar of BBScan System (2 nd Version)
constitute the 1 st Determining Step of judging whether a moving
object has moved into the Passage or otherwise.
[68] I am satisfied based on the expert opinion of SD3 and SD4 that
BBScan System (2 nd Version) has the 2 nd Essential Integer
(Claim 9) because the HAGI Radar is capable of -
(1) being the 2 nd Determining Step of judging whether a part

to be shielded of a moving object, has passed through the
Scan Area; and
(2) generating a Passing Signal (which contains information

regarding, among others, the part of the moving object to
be shielded from scanning) to be sent to the Control
System (PLC).
[69] Premised on the expert views of SD3 and SD4, I find as a fact
that BBScan System (2 nd Version) possesses the 3 rd Essential
Integer (Claim 9), namely the scan imaging step, as follows:
(1) the PLC generates a Control Signal (which contains

information regarding, among others, the part of the
moving object to be shielded from scanning) to the
Betatron Device (to control the Betatron Device); and
(2) the Betatron Device generates Beams according to the

Passing Signal (which contains information regarding,
among others, the part of the moving object to be shielded
from scanning), after judging that the part of the moving
50
object to be shielded passes through the Scan Area, to emit

Beams to the Passage and inspect the moving object by
scanning to dodge the area to be shielded.
[70] As explained above, I have no hesitation to find as a fact that

BBScan System (2 nd Version) has fulfilled all the 3 Essential
Integers (Claim 9).
[71] Claim 11 applies to BBScan System (2 nd Version) because the

moving object to be inspected is a vehicle and BBScan System
(2 nd Version) possesses all the 3 Essential Integers (Claim 9).
[72] BBScan System (2 nd Version) has infringed Claim 12 because -
(1) BBScan System (2 nd Version) possesses all the 3 Essential

Integers (Claim 9); and
(2) the part of the vehicle to be shielded from scanning by

BBScan System (2 nd Version) is the Driving Cab.
[73] Applying Improver‟s Test, this court is satisfied that BBScan

System (2 nd Version) has infringed Claims 9, 11 and 12 because
-
(1) the features of BBScan System (2 nd Version) which are

different from Claims 9, 11 and 12 do not have any
material effect on the way the invention in Claims 9, 11
and 12 works;
(2) the variants, if any, would have been obvious to SD4

(POSITA on „862 Patent) on the date of publication of
„862 Patent; and
(3) SD4 would not have understood from the language of

Claims 9, 11 and 12 that the Defendants (as co-patentees
of „862 Patent) intended that strict compliance with the
51
primary meaning of Claims 9, 11 and 12 was an essential

requirement of the invention in Claims 9, 11 and 12.
[74] Based on SD4‟s expert evidence, an application of Actavis‟ Test

shows that BBScan System (2 nd Version) has infringed Claims 9,
11 and 12 as follows:
(1) notwithstanding that some features of BBScan System (2 nd

Version) are not within the literal meaning of Claims 9, 11
and 12, the variants achieve substantially the same result
in substantially the same way as the invention in Claims 9,
11 and 12;
(2) it is obvious to SD4 (POSITA on „862 Patent) reading

Claims 9, 11 and 12 on the priority date of „862 Patent that
BBScan System (2 nd Version) achieves substantially the
same result as the invention in Claims 9, 11 and 12 in
and 12; and
(3) SD4 would not have concluded that the Defendants (as co-
patentees of „862 Patent) intended that strict compliance
with the literal meaning of Claims 9, 11 and 12 was an
essential requirement of the invention in Claims 9, 11 and
12.
N(4). Have Defendants discharged burden to prove Patent

Infringement?
[75] As explained in the above Parts N(2) and N(3), BBScan System
(2 nd Version) has infringed Claims 1, 7, 8, 9, 11 and 12.
[76] I find as a fact that the Plaintiffs have committed Patent

Infringement in the following manner:
52
(1) when the Plaintiffs offered for sale BBScan System (2 nd

Version) to the Government - please see s. 36(3)(a)(i)
and/or (b)(ii) read with s. 58 PA; and/or
(2) when the Plaintiffs sold BBScan System (2 nd Version) to

the Government - please refer to s. 36(3)(a)(i) and/or
(b)(ii) read with s. 58 PA.
[77] RMCD‟s DG and Government have committed Patent

Infringement when RMCD uses BBScan System (2 nd Version) as
understood in s. 36(3)(a)(i), (b)(i) and/or (ii) read with s. 58 PA.
[78] I am of the view that the Defendants have succeeded to

discharge the legal and evidential burden to prove on a balance
of probabilities that the Plaintiffs, RMCD and Government have
committed Patent Infringement in this case.
N(5). Adverse inference
[79] I accept the Defendants‟ submission that an adverse inference

against the Plaintiffs should be made under s. 114(g) EA due to
the following reasons:
(1) on 18.4.2016, all the parties in this case have agreed to a

discovery order whereby the Plaintiffs are bound to
produce, among others, technical documents regarding
BBScan System (Discovery Order). Despite the Discovery
Order, relevant documents regarding the Green Board
(such as the circuit diagram) and HAGI Radar (e.g. the
signal processing algorithms) have not been adduced by
the Plaintiffs in this case;
(2) the Plaintiffs have failed to call ISB‟s Expert to assist this
court regarding the true capabilities of HAGI Radar;
53
(3) the person who recorded the Radiation Levels Data,

namely Alfred, had not been called by the Plaintiffs to
testify regarding the recording of the Radiation Levels
Data; and
(4) on 19.4.2016, all the parties have agreed to a consent order

which allows the Defendants to inspect the 2 Sites (Site
Inspection Order). When SD4 inspected BBScan System
(2 nd Version) on 23.5.2016 and 24.5.2016, despite the Site
Inspection Order -
(a) SD4 was not given access to the image analysis room
which stored data for the Scan Images;
(b) SD4 was denied access to the pull down menu for the
Betatron Device which would show the energy level
and pulse counts; and
(c) during SD4‟s site inspections, BBScan System (2 nd

Version) was not operating “normally”. In other
words, the Plaintiffs have concealed the true
capabilities of BBScan System (2 nd Version) from
SD4.
[80] I have not overlooked SD2‟s suppression of SD2‟s Video

Recording which attracts an adverse inference against the
Defendants under s. 114(g) EA. Such an adverse inference is
however rebutted by the expert opinions of SD3 and SD4 which
prove the Patent Infringement in this case - please see the
Supreme Court‟s judgment delivered by Syed Agil Barakbah
SCJ in Namasiyiam & Ors v. Public Prosecutor [1987] 2 MLJ
336, at 343.
54
N(6). Unlawful circumvention of High Court’s Decision (2 Suits)
[81] After the High Court‟s Decision (2 Suits), the Plaintiffs came up
with BBScan System (2 nd Version). I find as a fact that BBScan
(2 nd Version) constitutes an unlawful circumvention of the High
Court‟s Decision (2 Suits). This is because no expert evidence
has been adduced by the Plaintiffs to show that BBScan (2 nd
Version) has been designed and developed based on known
technology which is independent of „862 Patent.
O. Whether court should grant injunctions in this case
[82] Section 60(1) PA provides as follows:
“60(1) If the owner of the patent proves that an

infringement has been committed or is being committed,
the Court shall award damages and shall grant an
injunction to prevent further infringement and any other
legal remedy.”
(emphasis added).
[83] Despite the fact that s. 60(1) PA employs the term “shall”, I am
of the view that the court has a discretion not to grant an
injunction in a patent infringement case. This is because by
virtue of ss. 50, 52 [Illustration (r)] and 53 SRA, an injunction
is an equitable remedy which may be granted at the discretion of
the court. I reproduce below ss. 50, 52 [Illustration (r)] and 53
SRA:
“50. Preventive relief is granted at the discretion of the

court by injunction, temporary or perpetual .
55
52(1) Subject to the other provisions contained in, or

referred to by, this Chapter, a perpetual injunction may
be granted to prevent the breach of an obligation existing
in favour of the applicant, whether expressly or by
implication.
ILLUSTRATIONS
(r) A infringes B‟s patent. If the court is satisfied that

the patent is valid and has been infringed, B may
obtain an injunction to restrain the infringement .
53. When, to prevent the breach of an obligation, it is

necessary to compel the performance of certain acts
which the court is capable of enforcing, the court may in
its discretion grant an injunction to prevent the breach
complained of, and also to compel performance of the
requisite acts.”
(emphasis added).
[84] In this case, the court has no discretion to grant any injunction
against RMCD and Government because of the following
statutory provisions:
“GPA
29(1) In any civil proceedings by or against the

Government the court shall, subject to this Act, have
power to make all such orders as it has power to make in
proceedings between subjects, and otherwise to give such
appropriate relief as the case may require:
56
Provided that -
(a) where in any proceedings against the Government

any such relief is sought as might in proceedings
between subjects be granted by way of injunction or
specific performance, the court shall not grant an
injunction or make an order for specific
performance, but may in lieu thereof make an order
declaratory of the rights of the parties; and
(2) The court shall not in any civil proceedin gs grant

any injunction or make any order against an officer of
the Government if the effect of granting the injunction or
making the order would be to give any relief against the
Government which could not have been obtained in
proceedings against the Government.
SRA
54. An injunction cannot be granted -
(d) to interfere with the public duties of any department

of any Government in Malaysia, or with the
sovereign acts of a foreign Government;
…”
(emphasis added).
[85] In view of proviso (a) to s. 29(1), s. 29(2) GPA and s. 54(d)

SRA, this court cannot grant any perpetual injunction, be it
57
restraining or mandatory, against RMCD‟s DG and Government.

The following reasons support such a decision:
(1) RMCD and Government are blameless in this case;
(2) BBScan System (2 nd Version) has been acquired by the

Government with the use of public funds. It will be a waste
of public funds if injunctions are ordered regarding
BBScan System (2 nd Version);
(3) any injunction to restrain RMCD from using BBScan

System (2 nd Version) would hinder the performance of
RMCD‟s statutory duties and functions under the Customs
Act 1967; and
(4) in lieu of injunctions -
(a) this court exercises its discretion to grant

declarations in favour of the Defendants regarding
the Patent Infringement - please see proviso (a) to s.
29(1) GPA and s. 60(1) PA (any other legal remedy);
and
(b) the Defendants are entitled to elect to claim for -
(i) damages under s. 60(1) PA; or
(ii) an account of profits [s. 60(1) PA (any other legal

remedy)].
In view of the above monetary relief available to the

Defendants, the Defendant are therefore not prejudiced by
the court‟s refusal to grant injunctions in favour of the
Defendants in this case.
58
[86] There is another reason why the Defendants cannot claim for
injunctive relief in this case. The following unlawful and
inequitable conduct by the Defendants (Defendants’ Unlawful
Conduct) disentitles them under s. 54(j) SRA from claiming for
an equitable remedy of injunction:
(1) in this case, SD2 and Kazakh National have each

committed an offence of impersonation under ss. 415(b)
and 416 PC. I reproduce below ss. 415(b) and 416 PC -
“415. Whoever by deceiving any person, whether or

not such deception was the sole or main
inducement, -
(b) intentionally induces the person so deceived to

do or omit to do anything which he would not
do or omit to do if he were not so deceived and
which act or omission causes or is likely to
cause damage or harm to any person in body,
mind, reputation, or property,
is said to “cheat”.
416. A person is said to “cheat by personation”, if

he cheats by pretending to be some other person, or
by knowingly substituting one person for another,
or representing that he or any other person is a
person other than he or such other person really is.
Explanation - The offence is committed whether the

individual personated is a real or imaginary
person.”
59
(emphasis added);
(2) the 2 Sites are “protected places” according to s. 2 read

with s. 5 PAPPA. SD2 and Kazakh National did not obtain
permission from RMCD before they enter the 2 Sites as
required by s. 5(1) PAPPA. SD2 and Kazakh National have
each committed an offence under s. 7 PAPPA which may
be punished with imprisonment up to 2 years and/or a fine
not exceeding RM1,000.00;
(3) at the 2 Sites, SD2 had unlawfully taken SD2‟s

Photographs and SD2‟s Video Recording;
(4) SD2‟s Video Recording is suppressed from the court by

SD2 and an adverse inference under s. 114(g) EA is
therefore drawn against the Defendants - please see the
above paragraph 80; and
(5) when SD2 testified in this case, without giving any prior
notice to the learned counsel for the Plaintiffs, RMCD and
Government, SD2 applied to court for immunity from
prosecution under s. 132(2) EA so as to enable SD2 to
tender SD2‟s Video Recording as evidence (SD2’s
Application). Section 132(1) and (2) EA provide as
follows -
“s. 132(1) A witness shall not be excused from

answering any question as to any matter relevant to
the matter in issue in any suit, or in any civil or
criminal proceeding, upon the ground that the
answer to that question will criminate or may tend
directly or indirectly to criminate, him, or that it
will expose, or tend directly or indirectly to expose,
the witness to a penalty or forfeiture of any kind , or
60
that it will establish or tend to establish that he owes

a debt or is otherwise subject to a civil suit at the
instance of the Government of Malaysia or of any
State or of any other person.
(2) No answer which a witness shall be compelled

by the court to give shall subject him to any arrest
or prosecution, or be proved against him in any
criminal proceeding, except a prosecution for giving
false evidence by that answer.”
(emphasis added).
I disallow SD2‟s Application on the following grounds -
(a) immunity from prosecution (except for the offence of

giving false evidence) under s. 132(2) EA is only granted
if the court “compels” a witness to answer a question
during trial. This court did not compel SD2 to answer any
question in this case; and
(b) SD2 had committed the above offences and had the pre-
meditated intention to seek immunity from prosecution
(except for the offence of giving false evidence) pursuant
to s. 132(2) EA. If I had allowed SD2‟s Application, this
meant that SD2 would have immunity from prosecution for
all her offences (except for the offence of giving false
evidence). This would constitute an abuse of s. 132 EA and
would open the floodgates for criminals to apply for
immunity from prosecution (except for the offence of
giving false evidence) when they elect to testify in court
regarding the crimes committed by them.
61
P. Should Defendants be deprived of costs in this case?
[87] It is not disputed that the court has a wide discretion to award
costs in any case - please see De Tebrau Makmur Sdn Bhd &
Anor v. Bank Kerjasama Rakyat Malaysia Bhd [2017] MLJU
201, at [67]. This is clear from O. 59 rr. 2(2), 3(2), 8(b) and
19(1) RC which provide as follows:
“O. 59 r. 2(2) Subject to the express provisions of any

written law and of these Rules, the costs of and incidental
to proceedings in the Court, shall be in the discretion of
the Court, and the Court shall have full power to
determine by whom and to what extent the costs are to be
paid.
r. 3(2) If the Court in the exercise of its discr etion sees

fit to make any order as to the costs of or incidental to
any proceedings, the Court shall, subject to this Order,
order the costs to follow the event, except when it appears
to the Court that in the circumstances of the case some
other order should be made as to the whole or any part of
the costs.
r 8. The Court in exercising its discretion as to costs

shall, to such extent, if any, as may be appropriate in the
circumstances, take into account -
(b) the conduct of all the parties, including conduct

before and during the proceedings;
62
r 19(1) The amount of costs (excluding disbursement)

that are payable shall be at the discretion of the Court
and shall be determined upon the conclusion of the trial .”
(emphasis added).
[88] In view of the Defendants‟ Unlawful Conduct (please see the

above paragraph 86), I exercise my discretion under O. 59 rr.
2(2), 3(2), 8(b) and 19(1) RC to deprive the Defendants of costs
of this case. If the Defendants are not penalized in respect of
costs of this case, this will send the wrong message that -
(1) a party may appoint a PI to obtain evidence by breaking

the law (PI’s Offence); and
(2) when the PI testifies in court regarding the illegally

obtained evidence, the PI may abuse s. 132(2) EA by
applying to court under s. 132(2) EA for immunity from
prosecution regarding PI‟s Offence.
[89] I should add that no costs is ordered against RMCD‟s DG and

Government because RMCD and Government are blameless in
this case.
Q. Court’s decision
[90] In summary -
(1) the Defendants cannot contend in this case that BBScan

System (1 st Version) has infringed Claims 1, 7, 8, 9, 11
and 12;
(2) by reason of the issue estoppel principle, the Plaintiffs,

RMCD‟s DG and Government are estopped from denying
63
the effect of the High Court‟s Decision (2 Suits) in this

case;
(3) according to the 3 Tests, based on the expert evidence of

SD3 and SD4, BBScan System (2 nd Version) has infringed
Claims 1, 7, 8, 9, 11 and 12. Consequently, the Plaintiffs,
RMCD‟s DG and Government have committed Patent
Infringement under s. 36(3)(a)(i), (b)(i) and (ii) read with
s. 58 PA;
(4) the court draws an adverse inference against the Plaintiffs

pursuant to s. 114(g) EA by reason of the Plaintiffs‟
failure to adduce material documentary evidence and to
call relevant witnesses;
(5) an adverse inference against the Defendants arising from

the suppression of SD2‟s Video Recording is rebutted by
the expert evidence of SD3 and SD4 regarding Patent
Infringement;
(6) by reason of proviso (a) to s. 29(1) GPA, s. 29(2) GPA, s.

54(d) and (j) SRA, the court cannot grant any perpetual
injunction, restraining and mandatory, against RMCD‟s
DG and Government; and
(7) in view of the Defendants‟ Unlawful Conduct, this court

exercises its discretion under O. 59 rr. 2(2), 3(2), 8(b) and
19(1) RC to deprive the Defendants of costs of this case.
[91] Premised on the above evidence and reasons -
(1) the Original Action (This Suit) is dismissed;
(2) the Counterclaim (This Suit) is allowed; and
64
(3) no order of costs is made regarding the Original Action

(This Suit) and Counterclaim (This Suit).
[92] I end by emphasizing that PI‟s cannot breach the law in their
overzealousness to obtain evidence for their clients and then
abuse s. 132(2) EA by applying to court for immunity from
prosecution (except for the offence of giving false evidence).
(WONG KIAN KHEONG)

Judge
High Court (Commercial Division)
Kuala Lumpur
Dated: 22 JULY 2019
COUNSEL:
For the plaintiffs - Chew Kerk Ying, Mohd Ariff Emran Arifin, Chong
Tze Lin & Raymond Tan Yan Kai; M/s Wong & Partners
For the defendants - Khoo Guan Huat, Kuek Pei Yee, Joshua Teoh
Beni Chris, Lam Rui Rong & Gooi Yang Shuh; M/s Skrine
For the RMCD & government - Farah Ezlin Yusof Khan, Senior
Federal Counsel & Goh Hsiao Tung, Federal Counsel
Case(s) referred to:
Dato’ Seri Anwar Ibrahim v. Public Prosecutor and another appeal

[2015] 2 CLJ 145
Tenaga Nasional Bhd v. Api-api Aquaculture Sdn Bhd [2015] 3 AMR

811
65
Sri Paandi Restaurant Sdn Bhd & Anor v. Saraswathy A/P Kesavan &
Ors [2019] AMEJ 540
Kingtime International Ltd & Anor v. Petrofac E&C Sdn Bhd [2018]
MLJU 1840
SKB Shutters Manufacturing Sdn Bhd v. Seng Kong Shutter Industries

Sdn Bhd & Anor [2015] 6 MLJ 293
Spind Malaysia Sdn Bhd v. Justrade Marketing Sdn Bhd & Ors [2018]
4 MLJ 34
Namasiyiam & Ors v. Public Prosecutor [1987] 2 MLJ 336
De Tebrau Makmur Sdn Bhd & Anor v. Bank Kerjasama Rakyat

Malaysia Bhd [2017] MLJU 201
Legislation referred to:
Patents Act 1983, ss. 36(3)(a)(i), (b)(i) (ii), 58, 60(1), 62(1) (2)
Evidence Act 1950, ss. 45(1), 114(g), 132(2)
Specific Relief Act 1950, ss. 50, 52, 53, 54(d) (j)
Government Proceedings Act 1956, s. 29(1) (2)
Rules of Court 2012, O. 59 rr. 2(2), 3(2), 8(b) 19(1)
66

Billion Prima SDN BHD & Anor V Nuctech Company Limited & Anor (2019) 1 LNS 1006

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Billion Prima SDN BHD & Anor V Nuctech Company Limited & Anor (2019) 1 LNS 1006

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[2019] 1 LNS 1006 Legal Network Series

IN THE HIGH COURT OF MALAYA AT KUALA LUMPUR

IN THE FEDERAL TERRITORY OF KUALA LUMPUR,

[SUIT NO: 22IP-50-09/2015]

1. BILLION PRIMA SDN. BHD.

2. PAN ASIATIC TECHNOLOGIES SDN. BHD.

1. NUCTECH COMPANY LIMITED

(BY ORIGINAL ACTION)

1. NUCTECH COMPANY LIMITED

1. BILLION PRIMA SDN. BHD.

2. PAN ASIATIC TECHNOLOGIES SDN. BHD.

[1] This is a novel case where the Government of Malaysia

[2] The first plaintiff company (1 st Plaintiff) designed and

[3] The 2 nd Plaintiff has supplied units of BBScan System to the

[4] The first defendant company (1 st Defendant) is a company

[5] The 1 st and 2 nd Defendants (Defendants) are co-owners of patent

(1) the 1 st Defendant had claimed that -

(a) the 2 nd Plaintiff‟s supply and installation of

(b) the 2 nd Plaintiff‟s agreement to supply “BPScan-M1

[Original Action (1 st Suit)];

(2) the defendants in the 1 st Suit had counterclaimed that „862

(1) PCL had applied for a declaration that „862 Patent is

(2) the Defendants counterclaimed that PCL had infringed

[8] The 1 st and 2 nd Suits have been consolidated (2 Suits). The 2

(1) „862 Patent is valid. As such, the Counterclaim (1 st Suit)

(2) BTScan System has infringed „862 Patent while BPScan

(3) the Third Party Proceedings (1 st Suit) is allowed whereby

[10] In this suit -

(1) the 1 st and 2 nd Plaintiffs (Plaintiffs) claim for a declaration

(2) the Defendants have counterclaimed that -

(a) the Plaintiffs; and

(b) the Director-General of RMCD (RMCD’s DG) and

- have infringed „862 Patent with regard to BBScan System

[11] The following questions arise in this case:

(a) has the Defendants‟ Re-Amended Defence and

(b) as BBScan System (1 st Version) has implemented

(c) whether BBScan System (1 st Version) can infringe

(2) whether the second limb of res judicata doctrine (issue

(3) regarding „862 Patent -

(a) who is the notional person ordinarily skilled in the

(b) has BBScan System (2 nd Version) infringed Claims 1,

(4) if BBScan System (2 nd Version) has infringed Claims 1, 7,

(a) whether the court can grant perpetual mandatory and

(i) proviso (a) to s. 29(1) and s. 29(2) of the

(b) whether the court should deprive the Defendants of

(i) the Defendants had caused a private

(Kazakh National) to enter RMCD‟s Premises

(ii) SD2 and Kazakh National had not obtained

(iii) SD2 had secretly taken photographs (SD2’s

(iv) SD2‟s Video Recording was suppressed from

(v) when SD2 testified in this case, without giving

[12] I reproduce below Claims 1, 7, 8, 9, 11 and 12:

“1. A system for imaging inspection of a movable

a second detecting unit configured to detect whether

a scan imaging device configured to emit radiating

a control system configured to generate a control

7. The system for imaging inspection of a movable object

8. The system for imaging inspection of a movable object

9. A dodging method for a moving object being image

a first determining step of judging whether the moving

a second determining step of judging whether a part to be

a scan imaging step of generating a control signal for

the passage and inspect the moving object by scanning to