Tutorial 8: Patents 3

1. Discuss the 2 approaches to determine patent infringement

● S.58 – Acts deemed to be infringement. 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
● Pith and Marrow Construction
⮚The Pith and Marrow construction was developed as a less narrow manner of
interpreting claims when compared to literal construction.
⮚This mode of construction ignores immaterial variants or deviations made by the
alleged infringer from the exact wording of the claim. In other words, if the
alleged infringer alters a non-essential integer of the claims and substitutes it
with a mechanical equivalent that does not result in any essential difference, the
infringer’s act will still be regarded as falling within the scope of the claim if all
essential integers have been taken.
⮚Case: Rodi & Wienenberger AG v Henry Showell Ltd
⮚Case: Lim Choong Huat v Syntlz Enterprise Sdn Bhd
❖ Hamid Sultan Abu Backer JC: In essence, the infringement tests require
one to consider three factors, namely:
(i) Determine the “essential” integers (inessential integers is not
important because there may be mechanical equivalent) of the
plaintiff’s patent;
(ii) Once the “essential’ integer is determined, one must then consider
whether “each” and “every” “essential” integer is taken by the
defendants;
(iii) Determine whether each of the defendants’ integers “works” in the
“same way” as claimed by the plaintiff in their Patent.
● Purposive Construction
⮚This method of construction places less important on the literal meaning of the
wording of the claim and emphasises more on the intention behind the wording.
⮚The purposive construction of claims was advocated in Rhone-Poulenc AG Co v
Dikloride Herbicides Sdn Bhd as the approach to be used in construing claims.
⮚Case: Catnic Components Ltd v Hill and Smith Ltd
❖ The plaintiff’s patent concerned a hollow steel lintel which was used
over apertures in cavity walls. This required the support of the backplate
of the lintel which extended vertically.
■ The defendant’s product had a backplate which was not perfectly
vertical but was slightly inclined from the vertical position.
■ In an action against the defendants for infringement of the plaintiff’s
patent, the defendants argued that there was no literal infringement
because they had not exactly adopted the features of the plaintiff’s
product and so did not fall within the claims.
■ In addition, the defendants contended that there was no pith and
marrow infringement because the essential integer of the plaintiff’s
patent as the vertical backplate which was needed to support load-
bearing lintel.
 ■ Since this feature was not taken by the defendants, they argued that
there was no infringement.
■ The House of Lord found that there was an infringement because it
was clear that ‘the patentee did not intend to make exact verticality in
the positioning of the backplate an essential feature of the invention
claimed’.
⮚Case: Improver Corporation v Remington Consumer Products Ltd
❖ Hoffman J: If the issues 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.
2. Advise Ben on whether Ariel and Beanie are infringing his patent.
● Issue: Whether Ben can take action against Ariel for infringing his patent
● Law:S.58 of Patent Act, Pith and Marrow Construction, Rodi & Wienenberger AG v Henry
Showell Ltd
● Application: The essential integers in Ben’s claim are the kinetic-to-electric conversion
system and an electric energy storage system by means of rechargeable battery or
similar device. Ben’s company uses rechargeable lithium battery as its energy system.
Even though Ariel Sdn Bhd has made an immaterial variation to the electric energy
storage system by replacing the rechargeable lithium battery with a capacitor, which is a
mechanical equivalent, Ariel Sdn Bhd’s watch still falls within the scope of Ben’s claim as
all essential interger have been taken.
● Conclusion: Ariel Sdn Bhd Had infringed Ben’s patent.

● Issue: Whether Ben can take action against Beanie for infringing his patent
● Law: Purposive Construction, Catnic Components Ltd v Hill and Smith Ltd, Improver
Corporation v Remington Consumer Products Ltd, S.37 of PA
● Application: It is clear from the phrase ‘rechargeable battery or other similar devices’
that Ben intends to include all electric energy storage device as an essential feature of
his invention. Both rechargeable lithium battery and off-the-shelf Nickl Metal Hydride
batteries are devices used to store electrical energy. So, the minor variation made by
Beanie has no material effect upon the way the watch works. However, by virtue of S.37,
Beanie may raise it as a defence as he is an engineering student who likes to build
interesting devices.
● Conclusion: Beanie did not infringe Ben’s patent.