Kingtime International LTD & Anor V Petrofac E&C SDN Bh-2 PDF

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1. Kingtime International Ltd & Anor v Petrofac E&C Sdn Bhd

[2018] MLJU 1840
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DEMI MIN
Kingtime International Ltd & Anor v Petrofac E&C Sdn Bhd
[2018] MLJU 1840
Malayan Law Journal Unreported
HIGH COURT (KUALA LUMPUR)

WONG KIAN KHEONG J
CIVIL SUIT NO 22IP-63-11 OF 2015
14 November 2018
Ambiga Sreenevasan (C Sri Kumar, Janini Rajeswaran, Chetan Jethwani, Jaqdesh Singh Johal and Lim Wei
Jiet with her) (Kumar Partnership) for the plaintiffs.
Darryl Goon Siew Chye (Choon Hon Leng and Leong Ooi Ling with him) (Raja Darryl & Loh) for the defendant.
Wong Kian Kheong J:

JUDGMENT
(after trial)
A. Introduction
[1]This case concerns “Mobile Offshore Production Unit” (MOPU). A MOPU is a physical structure which, among
others, is installed in an offshore oil field and used for early production of oil.
[2]The first plaintiff company (1st Plaintiff) is incorporated under the laws of the British Virgin Islands. The second
plaintiff company (2nd Plaintiff) is incorporated under our previous Companies Act 1965 (CA).
[3]After this suit has been filed by the 1st and 2nd Plaintiffs (Plaintiffs), the 2nd Plaintiff has been wound up. The
Official Receiver has however sanctioned the prosecution of this action by the 2nd Plaintiff.
[4]The defendant company (Defendant) is incorporated under CA and is a member of the Petrofac group of
companies (Petrofac Group).
[5]The 1st Plaintiff has registered the following two patents (2 Patents) under the Patents Act 1983 (PA):
(1) Patent No. MY 144898-A (Patent 898); and
(2) Patent No. MY 145004-A (Patent 5004).
[6]The 1st Plaintiff has granted a license to the 2nd Plaintiff regarding the 2 Patents.
[7]In this case -

(1) the Plaintiffs claimed that the Defendant (Original Action) -
(a) has infringed Claim 1 of Patent 5004 [Claim 1 (Patent 5004)] by making, offering for sale, selling and
using a MOPU in an oil field in Sepat off the coast of Terengganu (Sepat MOPU); and
(b) has infringed Claim 13 of Patent 5004 [Claim 13 (Patent 5004)] and Claim 1 of Patent 898 [Claim 1
(Patent 898)] by using a method to install Sepat MOPU.
In this judgment, Claim 1 (Patent 5004), Claim 13 (Patent 5004) and Claim 1 (Patent 898) shall be referred
together as the “3 Claims”;
(2) the Defendant has applied to invalidate the 3 Claims (Counterclaim); and
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(3) the Plaintiffs have obtained a Court order for a “split trial”, namely the Court shall first decide whether the
Defendant is liable for an infringement of the 3 Claims under s 58 read with s 36(1)(a), (2), (3)(a)(i) and
(b)(i) PA (Patent Infringement Issue) before hearing the issue of what is the appropriate remedy, if any,
for the Plaintiffs in this case.
B. Issues
[8]The following questions arise in this case:

(1) whether the 2nd Plaintiff (a licensee of the 2 Patents) has a right under ss 43(1), 59(1), 61(1)(a), (2), (3) and
(4) PA to claim for an infringement of the 3 Claims;
(2) who is the notional person ordinarily skilled in the art (POSITA) regarding the 2 Patents? In this regard -
(a) whether the Defendant’s expert, Mr. David J. Bignold (SD1), has a duty under O 40A rr 2(1), (2) and
3(2)(h) of the Rules of Court 2012 (RC) to disclose to Court any matter which impugns or is likely to
impugn SD1’s independence as an expert. This is a novel question in this country; and
(b) if -
(i) SD1 is not independent or is seen to be not independent; or
(ii) SD1 has failed to disclose a matter which impugns or is likely to impugn SD1’s independence as
an expert
- how should the Court deal with SD1’s expert opinion in terms of its admissibility and weight?;
(3) what was the common general knowledge (CGK) possessed by POSITA on 14.5.2008, the priority date of
the 2 Patents (Priority Date)?;
(4) what is the scope of the 3 Claims? In construing the words “removeably attached” in 3 Claims, whether the
Court can refer to -
(a) the other specifications in the 2 Patents;
(b) the dictionary meaning of those words;
(c) five patents granted in the United States of America (5 US Patents) which contain those words; and
(d) the judgment of US Court of Appeal in Dorel Juvenile Group Inc v Graco Children’s Products Inc
No. 5-2016 (Dorel’s Case);
(5) whether the 3 Claims can be invalidated on the following grounds -
(a) are the inventions in the 3 Claims “new” within the meaning of ss 11 and 14(1) PA (Novelty
Requirement)?;
(b) do the inventions in the 3 Claims involve an “inventive step” as required by ss 11 and 15 PA
(Inventiveness Requirement)?; and
(c) is there sufficient disclosure of the inventions in the 3 Claims (Disclosure Requirement) according to
s 23 PA read with regs. 5(1)(b), 12(1)(c) and 13(1) of the Patents Regulations 1986 (PR)?
Regarding the Novelty and Inventiveness Requirements, there is a novel issue of whether the Court may
consider the written opinion of the International Searching Authority (ISA);
(6) if the 3 Claims are valid -

(a) whether the Defendant is liable for infringement of the 3 Claims under s 35(1A) PA when Sepat MOPU
has been completed and installed by the Defendant before the grant of the 2 Patents.
There has not been a previous Malaysian case which has interpreted s 35(1A) PA; and
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(b) which of the following test should be applied by the Court in deciding Patent Infringement Issue -
(i) whether Sepat MOPU has fulfilled all the essential integers of the 3 Claims (Essential Integers
Test);
(ii) the three questions laid down by Hoffmann J (as he then was) in United Kingdom’s (UK) High
Court case of Improver Corp & Ors v Remington Consumer Products Ltd & Ors [1990] FSR 181,
at 189 (Improver’s Test); or
(iii) the test expounded by Lord Neuberger P in UK’s Supreme Court in Actavis UK Ltd & Ors v Eli Lilly
and Co, and other appeals [2018] 1 All ER 171, at paragraph 66 (Actavis’ Test); and
(7) if the Defendant has infringed any of the 3 Claims in respect of Sepat MOPU, in view of s 134 of the
Evidence Act 1950 (EA), should the Court exercise its discretion under O 59 rr 2(2), 3(2), 8(b) and 19(1)
RC to allow costs for only one POSITA instead of two POSITA’s called by the Plaintiffs to testify in this
case?
C. 3 Claims
[9]The 3 Claims provide as follows:
“Claim 1 (Patent 898)
A method of installing a wellhead platform (22) for exploring hydrocarbon below sea bed which includes a wellhead deck
(24) and sub-sea conductor frame (32) using an offshore unit (10, 60, 62, 64, 58, 70) which includes:
a hull (12) and/or deck frame (52);
a mat (14) attached to at least one connecting leg (16) or a spud can (50) attached to each of at least one connecting leg or
to lower hull (18);
wherein method includes the steps of:
i) transporting the offshore unit to offshore installation site;
ii) installing the offshore unit;
iii) deploying a means for exploring hydrocarbon (54) below sea bed supported by the wellhead deck (24) until the
means for exploring hydrocarbon (54) below sea bed penetrate through soil layers to target penetration;
iv) retrieving the means for exploring hydrocarbon (54) ;

v) installing at least one conductor (26) through the wellhead deck (24) and sub-sea conductor frame (32) until the at
least one conductor (26) penetrate through soil layers to target penetration;
vi) securing the wellhead deck (24) to the at least one conductor (26); and wherein the wellhead deck (24) is
removeably attached to the hull (12) and/or deck frame (52); and
wherein the sub-sea conductor frame (32) is removeably attached to the mat (14) or to the at least one connecting leg (16),
wherein a spud can is attached to each of at least one connecting leg (16), or to the lower hull (18); and wherein the
wellhead deck (24) and sub sea conductor frame (32) are attached to the offshore unit prior to loading out and transporting
the platform from fabrication site to offshore installation site; and wherein the hull (12) and/or deck frame (52) and the mat
(14) or the spud can (50) is connectable with the at least one connecting leg (16); and wherein the hull (12) and/or deck
frame (52) and the lower hull (18) is connectable with the at least one connecting means.
Claim 1 (Patent 5004)
1. An offshore unit (10, 60, 62, 64, 58, 70) which includes: hull (12) and/or deck frame (52); a mat (14) attached to at least
one connecting leg (16) or a spud can (50) attached to each of at least one connecting leg or to lower hull (18) attached to
at least one connecting means (66), characterized in that:
i) a wellhead deck (24) is removeably attached to the hull (12) and/or deck frame (52); and
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ii) a sub-sea claimp (20) in conjunction with a caisson (28) or a sub- sea conductor frame (32) removeably attached
to the mat (14) or to the at least one connecting leg (16), where a spud can (50) is attached to each of the at least
one connecting leg, or to the lower hull (18); and
wherein the hull (18) and/or deck frame (52) and the mat (14) or the spud can (50) is connected with the at least one
connecting leg (16); and wherein the hull (18) and/or deck frame (52) and the lower hull (18) is connectable with the at least
one connecting means.
Claim 13 (Patent 5004)
A method of installing a wellhead platform (22) which includes a wellhead deck (24), sub-sea conductor frame (32) and at
least one conductor using an offshore unit (10, 60, 62, 64, 58, 70) which offshore unit includes: a hull and/or deck frame
(52);
a mat (14) attached to at least one connecting leg (16) or a spud can (50) attached to each of at least one connecting leg or
to lower hull (18) attached to at least one connecting means (66),
wherein the method includes the steps of:
i) transporting the offshore unit to offshore installation site;
ii) installing the offshore unit;
iii) installing at least one conductor (26) through the wellhead deck (24) and sub-sea conductor frame (32) until the at
least one conductor (26) penetrate through soil layers to target penetration;
iv) securing the wellhead deck (24) to the at least one conductor (26); and wherein the wellhead deck (24) is
removeably attached to the hull (12) and/or deck frame (52); and
wherein the sub-sea conductor frame (32) is removeably attached to the mat (14) or to the at least one connecting leg (16),
where a spud can is attached to each of at least one connecting leg (16), or to the lower hull (18); and wherein the wellhead
deck (24) and sub sea conductor frame (32) are attached to the offshore unit while loading out and transporting the offshore
unit from fabrication site to offshore installation site; and wherein the hull (12) and/or deck frame (52) and the mat (14) or
the spud can (50) is connectable with the at least one connecting leg (16); and wherein the hull (12) and/or deck frame (52)
and the lower hull (18) is connectable with the at least one connecting means.”
D. TrialD(1). Pl ai nti ffs’ case
[10]The Plaintiffs called the following witnesses:

(1) Mr. Wojciech Leon Weckiewicz (SP1);
(2) Mr. Russell B. Gilbert (SP2);
(3) Dato’ IR Mahendran Suppiah (SP3), the Chief Operating Officer of Gryphon group of companies (which
includes the 2nd Plaintiff); and
(4) Dato’ Nagendran C. Nadarajah (SP4), a director of the 1st Plaintiff.
[11]According to the Plaintiffs, SP1 and SP2 are POSITA’s regarding the 2 Patents.
[12]SP3, SP4 and Mr. Renata De Raj are the co-inventors of the 2 Patents (Co-Inventors). SP4 owns and controls
the Plaintiffs.
[13]SP3 testified, among others, as follows:

(1) in 2010, Petronas Carigali Sdn. Bhd. (Petronas) wished to develop an early production system (EPS) in
Sepat. Regarding Sepat EPS -
(a) Petronas prepared tender specifications for Sepat EPS (Tender);
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(b) Petronas was only interested to work with four companies, including Petrofac Malaysia (PM-304) Ltd.
(PML). Consequently, the 2nd Plaintiff negotiated with, among others, PML, to submit a joint bid for the
Tender (Negotiations);
(c) during the Negotiations, PML had been informed that the requirements of the Tender fell within the
scope of the 2 Patents (which were then pending registration under PA). The 2nd Plaintiff and PML had
entered into a “Confidentiality and Non-Disclosure Agreement”;
(d) for the purpose of the Tender, the 2nd Plaintiff prepared a proposal dated 20.9.2010 to PML; and
(e) in November 2010, the Negotiations failed and the 2nd Plaintiff did not participate further in the Tender;
(2) the Defendant was awarded Sepat EPS contract by Petronas; and
(3) the 1st Plaintiff commenced pre-trial discovery actions against -
(a) American Bureau of Shipping (M) Sdn. Bhd. (ABS); and
(b) Petronas.
Both the pre-trial discovery actions were consolidated and the High Court ordered ABS and Petronas to
disclose for inspection by the 1st Plaintiff, among others, “as built” drawings regarding Sepat MOPU
(Sepat’s As Built Drawings). However, Petronas and ABS did not disclose Sepat’s As Built Drawings for
the 1st Plaintiff’s inspection.
D(2). Defendant’ s case
[14]The following witnesses have been called by the Defendant:

(1) SD1; and
(2) Mr. Michael Anthony Cummings (SD2), the former Senior Vice- President of Petrofac International.
[15]The Defendant has called SD1 as a POSITA regarding the 2 Patents.
[16]SD2 gave the following evidence, among others:

(1) in 2004, SD2 was responsible for setting up PML for the purpose of “Cendor Field Development Project”
(Cendor Project) awarded by Petronas to PML. Regarding Cendor Project, among others -
(a) PML proposed a low risk and low cost solution comprising a MOPU with integrated wells (Cendor
MOPU); and
(b) Cendor Project was successfully completed by PML in September 2006;
(2) SD2 was involved with Sepat EPS as its Project Manager from the Tender stage until its completion. In
respect of Sepat EPS, among others -
(a) the Defendant submitted an alternative proposal to Petronas based on the tried and tested Cendor
MOPU (Defendant’s Alternative Proposal); and
(b) the Defendant’s Alternative Proposal was not based on the 2 Patents and was accepted by Petronas;
and
(3) Sepat MOPU cannot infringe the 3 Claims because Sepat MOPU is based on Cendor MOPU and Cendor
Project has been completed years before the grant of the 2 Patents.
E. Whether patent licensee can claim for patent infringement
[17]The relevant parts of ss 36, 43, 59 and 61 PA are reproduced below:
“Rights of owner of patent
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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;
(b) to assign or transmit the patent;
(c) to conclude licence contacts.
(2) No person shall do any of the acts referred to in subsection (1) without the consent of the owner of the patent.
(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;
(ii) doing any of the acts referred to in paragraph (a), in respect of a product obtained directly by means of the
process.
Rights of the licensee
43(1) In the absence of any provision to the contrary in the licence contract, the licensee shall be entitled to do any
or all of the acts referred to in paragraph 1(a), and subsection 36(3), within the whole geographical area of
Malaysia without limitation as to time and through any application of the invention.
Infringement proceedings
59(1) The owner of the patent shall have the right to institute court proceedings against any person who has
infringed or is infringing the patent.
Infringement proceedings by licensee and beneficiary of compulsory licence.
61(1) For the purposes of this section, “beneficiary” means -
(a) any licensee unless the licence contract provides that the
provisions of this subsection do not apply or provides different provisions;
(2) Any beneficiary may request the owner of the patent to institute Court proceedings for any infringement
indicated by the beneficiary, who shall specify the relief desired.
(3) The beneficiary may, if he proves that the owner of the patent received the request but refuses or fails to
institute the proceedings within three months from the receipt of the request, institute the proceedings in his own
name, after notifying the owner of the patent of his intention but the owner shall have the right to join in the
proceedings.
(4) Notwithstanding that the three-month period referred to subsection (3) has not been satisfied, the Court shall,
on the request of the beneficiary, grant an appropriate injunction to prevent infringement or to prohibit its
continuation, if the beneficiary proves that immediate action is necessary to avoid substantial damage.”
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(emphasis added).
[18]I accept the Defendant’s submission that the 2nd Plaintiff as a licensee of the 2 Patents has no right under PA to
claim for an infringement of the 3 Claims. This decision is premised on the following reasons:
(1) as a licensee of the 2 Patents, the 2nd Plaintiff only has rights conferred by s 43(1) read with s 36(1)(a) and
(3) PA. These statutory provisions do not confer any right on a licensee to claim for patent infringement;
(2) s 59(1)PA provides a right to file a patent infringement suit on an “owner of a patent”. Section 3 PA defines
an “owner of a patent” as the person for the time being recorded in the “Register” (interpreted in s 3 PA as
the Register of Patents) (Register) as the grantee of the patent. Section 59(1) PA does not therefore
confer any right to commence a patent infringement action on a patent licensee;
(3) a patent licensee can only institute a patent infringement suit in the following two circumstances -
(a) when a patent licensee has requested the patent owner to file a patent infringement action (Request)
and the latter has refused or failed to do so within three months from the receipt of the Request
(Three-Month Period) - please see s 61(1)(a), (2) and (3) PA; and
(b) notwithstanding that the Three-Month Period has not been satisfied, the patent icensee may apply to
Court for an injunction (not for damages or account of profits) to restrain a patent infringement, if the
patent licensee can prove that immediate action is necessary to avoid substantial damage to the patent
licensee - please see s 61(4) PA; and
(4) the above view is supported by the following High Court decisions -
(a) in Premier Products Co Ltd & Anor v Zamrud Fibre Industries (M) Sdn Bhd & Anor [1994] 4 CLJ 1043,
at 1053- 1054, Abdul Malek Ahmad J (as he then was) held as follows -
“It is quite clear under s. 59(1) [PA] that it is the owner of the patent who shall have the right to
institute Court proceedings for infringement but a licencee may, under s. 61(2) [PA], request the
owner of the patent to do so. Only if the owner had refused the request or failed to institute the
proceedings within three months from the receipt of the request, as provided in s. 61(3) [PA], can
the licencee institute the proceedings in his own name after notifying the owner but the owner
shall have the right to join in the proceedings. … In effect the licencee cannot institute the
proceedings and can do so only if the owner has failed to do so within three months of the
licencee’s request. In consequence, the second plaintiff in fact has no right to be a party to the
action.”
(emphasis added); and
(b) Premier Products has been followed by Yaacob Md. Sam J (as he then was) in Fukuyama
Automation Sdn Bhd v Xin Xin Engineering Sdn Bhd & Ors [2015] 9 MLJ 823, at paragraphs 92 and
93.
[19]Based on the reasons explained in the above paragraph 18, the Original Action by the 2nd Plaintiff is dismissed
with costs. This is because the 1st Plaintiff (as the owner of the 2 Patents) has already filed the Original Action and
there is no room to apply s 61(1)(a), (2), (3) or (4) PA with regard to the 2nd Plaintiff.
F. Expert witnessF(1). Whether expert has duty to disclose to Court matter which impugns or is likely to impugn
expert’s independence
[20]O 1A, O 2 r 1(2), O 40A rr 1(2), 2(1), (2), 3(1) and (2)(h) RC provide as follows:
“Regard shall be to justice O 1A In administering these Rules, the Court or a Judge shall have regard to the
overriding interest of justice and not only to the technical non-compliance with these Rules. O 2 r 1(2) These Rules
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are a procedural code and subject to the overriding objective of enabling the Court to deal with cases justly. The
parties are required to assist the Court to achieve this overriding objective. O 40A Experts of Parties
r 1(2) A reference to an “expert” in this Order is a reference to an expert who has been instructed to give or
prepare evidence for the purpose of Court proceedings.
Expert’s duty to the Court
r 2(1) It is the duty of an expert to assist the Court on the matters within his expertise.
(2) This duty overrides any obligation to the person from whom he has received instructions or by whom he is
paid.
Requirements of expert’s evidence
r 3(1) Unless the Court otherwise directs, expert evidence to be given at the trial of any action, is to be given in a
written report signed by the expert and exhibited in an affidavit sworn to or affirmed by him testifying that the
report exhibited is his and that he accepts full responsibility for the report.
(2)
An expert’s report shall -
(h)
contain a statement that the expert understands that in giving his report, his overriding duty is to the Court and
that he complies with that duty.”
(emphasis added).
[21]O 2 r 1(2) and O 40A RC have been introduced by RC. O1A RC was first introduced in the Rules of the High
Court 1980 with effect from 16.5.2002 - please see the Rules of the High Court (Amendment) 2002 [PU(A) 197/02].
[22]In the Court of Appeal case of Batu Kemas Industri Sdn Bhd v Kerajaan Malaysia & Anor [2015] 5 MLJ 52, at
paragraphs 35-37, Vernon Ong JCA decided as follows:
“[35] ... It is the primary duty of an expert to assist the court in arriving at the right decision; even if he
compromises the case of the party who called him and is paying for his services. It cannot be overemphasised
that this duty overrides any obligation to the party from whom the expert has received instructions or by whom he
is paid (O 40A r 2 [RC]). Therefore, the evidence of an expert should not only be independent but should also be
seen to be independent. …
[36] What are the duties and responsibilities of expert witnesses? It is useful to consider what Ian Freckelton and Hugh
Selby the authors of Expert Evidence - Law, Practice, Procedure and Advocacy (Lawbook Co 2005 Third Edition) described
as the most important enunciation of the duties and responsibilities of expert witnesses in the context of National Justice
Cia Naviera SA v Prudential Assurance Co Ltd, The Ikarian Reefer [1993] 2 Llyod’s Rep 68 at p 81-82 which has since
been applied in National Justice Cia Naviera SA v Prudential Assurance Co Ltd, The Ikarian Reefer [1995] 1 All ER 577 at
p 60:
The duties and responsibilities of expert witnesses in civil cases include the following:
Expert evidence presented to the court should be, and should be seen to be, the independent product of the
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expert uninfluenced as to form or to content by the exigencies of litigation (Whitehouse v Jordan [1981] 1 WLR
246 at 256-257; ; 1 All ER 267 at 276 per Lord Wilberforce).
An expert witness should provide independent assistance to the court by way of objective unbiased opinion
in relation to matters within his expertise (see Polivitte Ltd v Commercial Union Assurance Co Plc [1987] 1 Llyod’s
Rep 379 at 386 per Garland J and Re J [1991] FCR 193 per Cazalet J). An expert witness in the High Court
should never assume the role of an advocate.
[37] As an independent aid to the court, it is therefore essential that an expert witness must possess and retain a
standard of absolute personal integrity. …”
(emphasis added).
[23]Batu Kemas Industri has been accepted by Zulkefli Ahmad Makinuddin PCA in the Federal Court in U
Television Sdn Bhd & Anor v Comintel Sdn Bhd [2017] 10 CLJ 580. It was decided in U Television, at paragraphs
41 and 43, as follows:
“[41] For a witness to be an expert, he must be truly independent and skilled in the area in which he is giving
evidence. (See the case of [Batu Kemas Industri]. …
[43] It is our finding that both the plaintiff’s witnesses, PW2 and PW3, fell far short of the required standard of an expert
witness under s 45 [EA]. PW2 was the senior manager and PW3 the plaintiff’s CEO and director. Both witnesses can
hardly be described as independent. As members of the plaintiff’s senior management team they should have
been treated as having an interest in the case. This fact by itself should have disqualified them as truly
independent witnesses.”
(emphasis added).
[24]I am of the following view regarding an expert’s duties:

(1) an expert’s duties to the Court under O 40A rr 2(1), (2) and 3(2)(h) RC override the expert’s duties to -
(a) the party who calls the expert to testify in the case;
(b) the person who is not a party in the proceedings but has instructed the expert; and
(c) the person who pays the expert but is not a party in the case;
(2) an expert should not only be actually independent but should also be seen to be independent - please see
Batu Kemas Industri and U Television;
(3) an expert has a duty to disclose to Court any matter within the expert’s actual knowledge which impugns or
is likely to impugn the expert’s independence (Duty To Disclose). The Duty To Disclose is premised on
the following reasons -
(a) the party who did not call the expert (Opposing Party), the Opposing Party’s counsel and solicitors are
not reasonably expected to know anything regarding the expert’s background which impugns or is
likely to impugn the expert’s independence. Hence, the need for an expert’s Duty To Disclose;
(b) in the administration of O 40A rr 2(1), (2) and 3(2)(h) RC, the Court is required by O 1A and O 2 r 1(2)
RC to consider the overriding objective of justice. The overriding objective of justice requires the
imposition of an expert’s Duty To Disclose; and
(c) our O 40A r 2(1) and (2) RC are similar to r 35.3(1) and (2) of UK’s Civil Procedure Rules 1998 (CPR).
Hence, UK cases on r 35.3(1) and (2) CPR may be referred to in the interpretation of our O 40A r 2(1)
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and (2) RC. The following judgment of Lord Phillips MR (as he then was) in UK’s Court of Appeal in
Factortame Ltd & Ors v Secretary of State for the Environment, Transport & the Regions (No 2) [2002]
4 All ER 97, at paragraph 70, is pertinent -
“… Expert evidence comes in many forms and in relation to many different types of issue. It is
always desirable that an expert should have no actual or apparent interest in the outcome
of the proceedings in which he gives evidence, but such disinterest is not automatically a
precondition to the admissibility of his evidence. Where an expert has an interest of one
kind or another in the outcome of the case, this fact should be made known to the court as
soon as possible.”
(emphasis added).
Factortame has been cited with approval by Carnwarth LJ (as he then was) in UK’s Court of Appeal case
of Morgan & Anor v Hinton Organics (Wessex) Ltd [2009] EWCA Civ 107, at paragraph 69;
(4) an expert’s Duty To Disclose should extend to all the following matters which the expert may not have
actual knowledge -
(a) a matter which the expert has wilfully shut his or her eyes to the obvious;
(b) a matter which the expert has wilfully and recklessly failed to make such inquiries as an honest and
reasonable expert would have made;
(c) knowledge of circumstances of a matter which would have indicated the facts to an honest and
reasonable expert; and
(d) knowledge of circumstances of a matter which would put an honest and reasonable expert on inquiry;
(5) if an expert -
(a) is not independent or is perceived to be not independent; or
(b) has breached the Duty To Disclose the Court cannot reject the expert’s evidence. This view is
supported by the following reasons -
(i) O 40A r 2(1) and (2) RC do not provide for admissibility or exclusion of expert evidence;
(ii) s 45(1)EA provides for expert evidence as follows -
“Opinions of experts
45(1) When the court has to form an opinion upon a point of foreign law or of science or art, or as
to identity or genuineness of handwriting or finger impressions, the opinions upon that point of
persons specially skilled in that foreign law, science or art, or in questions as to identity or
genuineness of handwriting or finger impressions, are relevant facts.”
(emphasis added).
Section 45(1) EA does not bar the admissibility of expert evidence on the ground that the
expert is not independent (in fact or perceived as such) or has failed to comply with the Duty
To Disclose;
(iii) in the Federal Court case of Spind Malaysia Sdn Bhd v Justrade Marketing Sdn Bhd & Ors [2018]
4 MLJ 34, at paragraph 136, Raus Sharif CJ decided as follows -
“[136] The appellant’s counsel challenged the evidence of DW3 on two grounds, namely his
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lack of independence as a party to the suit, and his admission that he is not a person skilled in
the art. The first ground does not in itself render DW3’s evidence inadmissible, and the
acceptance of DW3’s evidence does not mean that the learned trial judge failed to accord proper
weight to the evidence of an interested party.”
(iv) in UK’s Court of Appeal case of Field & Anor v Leeds City Council [2000] 1 EGLR 54, the following
judgments support the above view -
(iiia) Lord Woolf MR (as he then was), at p. 55, decided as follows -
“The issue, which the city understand that this appeal to this court involves, is
whether under the CPR it is inappropriate for an expert to be called who is an
employee of the city, as opposed to an expert who is not so employed. If that is the
issue that arises on this appeal, then it is a non-issue. Mr Jan Luba, who appears on
behalf of the tenants, would accept that if an expert is properly qualified to give
evidence, then the fact that he is employed by a local authority would not disqualify
him from giving evidence.
In my judgment, Mr Luba is absolutely correct to accept that position.”
(emphasis added);
(iiib) Waller LJ (as he then was), at p. 56, held that -
“It is accepted that if the judge ruled against the calling of Mr Broadbent on the
basis that he was an employee of one party and on that basis should not be entitled
to give evidence as an expert, then the judge would be wrong.”
(iiic) according to May LJ (as he then was), at p. 56 -
“As to questions of opinion and generally, I entirely agree with my lord, the Master
of the Rolls, that there is no overriding objection to a properly qualified person
giving opinion evidence because he is employed by one of the parties. The fact of
his employment may affect its weight, but that is another matter.“
(emphasis added).
Field has been affirmed in Factortame, at paragraphs 67, 68 and 70; and
(c) the fact that an expert -

(a) is not independent or is seen to be not independent; or
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(b) has failed to comply with the Duty To Disclose may only adversely affect the weight of the expert’s
testimony - please see May LJ’s judgment in Field, at p. 56. Accordingly, in the above
circumstances -
(i) the Court should scrutinize an expert’s opinion with care; and
(ii) after careful scrutiny of an expert’s evidence, the Court may or may not attach weight to such
evidence.
F(2). Credibility of expert witnesses
[25]All the parties have agreed that SP1, SP2 and SD1 are POSITA’s for the purpose of the 2 Patents. Based on
the curricula vitae (CV) of SP1, SP2 and SD1, I am satisfied that these 3 witnesses are POSITA’s regarding the 2
Patents within the meaning of s 45(1) EA.
[26]I find as a fact that SP1 and SP2 are credible experts for the following reasons:
(1) in accordance with s 51 EA, the expert opinions of SP1 and SP2 are supported by reasons;
(2) SP1 and SP2 are independent experts and are perceived as such;
(3) the expert testimonies of SP1 and SP2 mutually corroborate each other; and
(4) there is nothing in the cross-examination of SP1 and SP2 which provides any ground to doubt their
credibility in this case.
[27]This Court finds as a fact that SD1 is not a credible expert in this case. This decision is premised on the
following evidence and reasons:
(1) the Plaintiffs’ learned counsel had obtained leave of Court under s 138(4) EA for further cross-examination
of SD1. During further cross- examination, SD1 admitted that despite the fact he had not been given
designs of demobilization of Cendor MOPU by the Defendant, he had given evidence in his re-examination
on those designs. Those designs were also not tendered in Court by the Defendant. SD1 further admitted
in his further cross-examination that he had “no basis” to give such an opinion! There was no further re-
examination of SD1 on this matter. It is difficult to rely on an expert who gives an opinion without any basis;
(2) SD1 gave evidence in re-examination that he was only involved in respect of the connection of the main
legs of Sepat MOPU to the mat. Such evidence is materially contradicted by SD1’s own email dated
11.1.2013 to SP3 (SD1’s Email) which stated as follows, among others -
“… In the meantime our MOPU experience in short is as follows:-
Year MOPU Client Description of work
… … … …
2011 SEPAT Petrofac Full naval architecture

and structural scope
… … … …
I attach our company profile for you to see the full extent of our services. I also attach a list of typical services
provided by MOPU’s. It is not exhaustive as each has its unique features.
Will be in touch, [SD1]”
(emphasis added).
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The above contents of SD1’s Email have not been denied by SD1. When there is a conflict between oral
and documentary evidence, the court should accept the latter - please see Chang Min Tat FJ’s judgment in
the Federal Court case of Tindok Besar Estate Sdn Bhd v Tinjar Co [1979] 2 MLJ 229, at 234. It is clear
that SD1’s Email has severely undermined his credibility as an expert;
(3) from August 2007 to April 2014, SD1 was firstly the General Manager and then the Managing Director
(MD) of Longitude Engineering Pte. Ltd., a Singapore company (Longitude Singapore). From April 2014
until the time SD1 gave evidence in this case, he was a director of a UK company, Longitude Consulting
Engineers Ltd. (Longitude UK). Presently, SD1 is MD of Longitude UK. Longitude Singapore and
Longitude UK belong to the same group of companies (Longitude Group).
For the purpose of a suit, the Court has a discretion to pierce or lift the corporate veil of a group of
companies to reveal that those companies are in fact one entity - please see Singham Sulaiman Sdn
Bhd v Appraisal Property Management Sdn Bhd & Anor and another case [2018] 10 MLJ 187, at
paragraphs 55-57. Such a discretion can only be exercised if the following two conditions (2
Conditions) are fulfilled -
(a) there exists special circumstances to pierce or lift the corporate veil (1st Condition), such as to prevent
an evasion of liability; and
(b) the piercing or lifting of a corporate veil is in the interest of justice (2nd Condition).
There is a distinction between the piercing and lifting of a company’s corporate veil - please see Staughton
LJ’s judgment in UK’s Court of Appeal case of Atlas Maritime Co SA v Avalon Maritime Ltd (The Coral
Rose) (No. 1) [1991] 4 All ER 769, at 779. The requirement of the 2 Conditions for the mere lifting of a
corporate veil (to ascertain the true state of affairs and not to impose personal liability on an individual or a
certain company in a group of companies) is not as stringent as the satisfaction of the 2 Conditions for the
piercing of a corporate veil (which imposes personal liability on an individual or a certain company) - please
see Mohammad Hafiz bin Hamidun v Kamdar Sdn Bhd, Kuala Lumpur High Court Civil Suit No. WA-
22IP- 13-04/2017, at paragraph 13. I exercise my discretion to lift (not pierce) the corporate veil of
Longitude Singapore and Longitude UK to reveal that both companies are part of one entity, namely
Longitude Group. Such an exercise of discretion is premised on the fulfillment of the 2 Conditions as follows
-
(i) the 1st Condition is satisfied because there exists special circumstances to lift the corporate veil of
Longitude Singapore and Longitude UK, namely to prevent the Defendant’s evasion of liability for
patent infringement of the 3 Claims; and
(ii) the lifting of the corporate veil of Longitude Singapore and Longitude UK is in the interest of justice.
The fulfillment of the 2nd Condition is clear from the following evidence -
(iia) page 2 of SD1’s CV states that “In particular [SD1] is responsible for building an oil and gas
capability in UK and Europe bringing together the existing strengths of Longitude offices in UK and
worldwide”. Such an admission clearly evidences that Longitude Singapore and Longitude UK have
considered themselves as one entity; and
(iib) SD1 is presently MD for Longitude UK and yet, he is aware of Longitude Singapore’s efforts to
procure a consultancy contract for the demobilization of Sepat MOPU.
This Court also exercises it discretion to lift the corporate veil of Defendant and PML to show that
both companies from the Petrofac Group constitute one entity. This is firstly to ensure that the
Defendant does not evade liability regarding the patent infringement of the 3 Claims (fulfillment of
the 1st Condition). Secondly, it is in the interest of justice to do so (satisfaction of the 2nd Condition)
as the Defendant has alleged that Sepat MOPU (built by Defendant and the subject matter of the
Patent Infringement Issue in this case) is based on Cendor MOPU (designed and built by PML).
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I find the following evidence proves that SD1 is not an independent expert in this case, either in
fact or by perception -
(aa) Longitude Singapore, including SD1, was involved in the problems regarding the rig and
demobilization of Cendor MOPU. SD1 had also worked with PML regarding Cendor MOPU;
(bb) the contents of SD1’e Email; and
(cc) SD1 admitted that Longitude UK was involved in Sepat MOPU regarding connection of the
main legs of Sepat MOPU to the mat. In fact, SD1 was involved in the preparation of certain
drawings for the connection of the main legs of Sepat MOPU to the mat;
(iii) during cross-examination, SD1 testified that he had no duty to disclose his involvement with Sepat
MOPU and Cendor MOPU. I am unable to agree because such matters are within SD1’s personal
knowledge which impugn or are likely to impugn his independence as an expert. Hence, SD1 has a
duty to disclose to Court the nature and extent of his involvement with Sepat MOPU and Cendor
MOPU. I find as a fact that SD1 has breached this duty by concealing from this court his involvement
with Sepat MOPU and Cendor MOPU (SD1’s Breach); and
due to -
(a) SD1’s lack of independence, either actual or perceived [please see the above sub-paragraph (3)];
and
(b) SD1’s Breach
- I am duty bound to scrutinize SD1’s expert opinion with care - please see the above sub-
paragraph 24(6). After a careful scrutiny of SD1’s expert testimony vis-à-vis the expert
opinions of SP1 and SP2, I am not able to accept SD1’s testimony. Instead, I accept the
expert opinions of SP1 and SP2.
G. POSITAG(1). Importance of POSITA
[28]Section 15 PA and reg. 12(1)(c) PR have referred to a POSITA. The role of a POSITA in patent cases has been
explained by the Federal Court’s judgment delivered by Zulkefli CJ (Malaya) (as he then was) in SKB Shutters
Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 6 MLJ 293, at paragraphs 38, 39
and 41. SKB Shutters Manufacturing has been affirmed by Raus Sharif CJ in the Federal Court case of Spind
Malaysia Sdn Bhd v Justrade Marketing Sdn Bhd & Ors [2018] 4 MLJ 34, at paragraphs 85 and 86.
[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;
(2) whether a patent has made sufficient disclosure under regs. 5, 12, 13, 15 and 16 PR read with s 23 PA;
(3) whether an invention in a patent is novel and has not been anticipated by prior art under ss 11, 14(1) and
(2)(a) PA;
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(4) whether an invention in a patent involves an inventive step which is not obvious to a POSITA within the
meaning of ss 11 and 15 PA; and
(5) whether a claim in a patent has been infringed under s 58 read with s 36 PA.
[31]It was decided in Merck Sharp & Dohme Corp & Anor v Hovid Bhd [2017] 7 MLJU 77, at paragraph 60, as
follows:
“60. I am of the following view regarding a POSITA:
(1) a POSITA is a -
(a) notional person; or

(b) hypothetical group of persons (please see Rockwater)
- who is or are ordinarily skilled in respect of the patented invention [please see Ramly Ali JCA’s (as he then was) judgment
in the Court of Appeal case of Ranbaxy (M) Sdn Bhd v Ei Du Pont De Nemours & Co [2012] 4 MLJ 34, at paragraphs 29-
36].
In the House of Lords case of Catnic Components Ltd & Anor v Hill & Smith Ltd [1982] RPC 183, at 242-243, Lord Diplock
held that a POSITA should have a practical interest, knowledge and experience in the invention in question. …;
(2) a POSITA has the [CGK] which existed on the [Priority Date] (please see Ranbaxy and Rockwater);
(3) a POSITA is generally unimaginative and does not have any inventive capacity (please see Rockwater);
(4) a POSITA may possess common prejudices or conservatism regarding the patented invention which existed on the
priority date of the patent (please see Rockwater); …”
G(2). Who is POSITA regarding 2 Patents?
[32]According to SP2’s expert opinion, a POSITA for the 2 Patents -

(1) consists of a team of engineers tasked with providing facilities required to develop an offshore hydrocarbon
reservoir (Notional Team);
(2) the Notional Team will include -
(a) reservoir and drilling engineers (who design wells),
(b) structural and mechanical engineers (who design the supporting structure and its installation aids) and
(c) marine engineers (who understand the construction capabilities of mobile units such as drilling rigs,
MOPU’s and crane barges); and
(3) when deciding the concept to be used for the wellhead structure, the decision-maker -
(a) would be the senior structural and mechanical engineer for the offshore development and
(b) would typically be a graduate with five or more years of experience in the offshore industry.
[33]SP1 opined that a POSITA for the 2 Patents is a hypothetical person having ordinary skill to do routine work
and is able to understand and utilize prior art before the Priority Date.
[34]SD1’s report did not explain who is a POSITA in respect of the 2 Patents.
[35]I accept SP2’s detailed meaning of POSITA/Notional Team regarding the 2 Patents. Furthermore, no reason
has been advanced by SD1 for me to do otherwise.
H. What was CGK on Priority Date?
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[36]SP1’s report stated that CGK on the Priority Date was information in the field of offshore drilling and production
which, on the Priority Date, was generally known and accepted by the POSITA.
[37]SP2 had explained in detail CGK on the Priority Date (please see Part 7 of SP2’s report).
[38]SD1’s report did not specify what constituted CGK on the Priority Date.
[39]I accept SP2’s expert opinion regarding CGK on the Priority Date. This is because SP2’s expert view regarding
CGK on the Priority Date is based on offshore drilling and production practice and methods which were adopted on
the Priority Date. Furthermore, SD1 has not given any reason why SP2’s expert evidence (regarding CGK on the
Priority Date) should be rejected.
I. What is scope of 3 Claims?I(1). Patent interpretation
[40]I am of the following view regarding patent construction:

(1) a patent contains, among others, the following -
(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 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;
(b) the Court cannot consider the subjective opinion, intention and purpose of the inventor, patentee or
author of the patent documents - please see Azahar Mohamed J’s judgment (as he then was) in the
High Court case of Kendek Industry Sdn Bhd v Ecotherm (TFT) Sdn Bhd [2010] 10 CLJ 210, at
paragraph 44. Accordingly, I cannot consider the opinions of SP3 and SP4 (two of the three Co-
Inventors) in construing the 3 Claims; and
(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.
I(2). Scope of Claim 1 (Patent 898)
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[41]SP1 gave expert evidence that Claim 1 (Patent 898) has the following 11 essential integers [SP1’s 11
Essential Integers of Claim 1 (Patent 898)]:
(1) a method of installing a wellhead platform (WHP) for exploring hydrocarbon below sea bed which includes
-
(a) a wellhead deck (WHD) [SD1 described WHD as a wellhead structure (WHS)] and
(b) sub-sea conductor frame (SSCF) [SD1 used the term “sub-sea spacer frame” (SSSF) in place of
SSCF]
using an offshore unit which includes: a hull and/or deck frame;
(2) a mat attached to at least one connecting leg or a spud can attached to each of at least one connecting leg
or to lower hull;
(3) wherein method includes the steps of: i) transporting the offshore unit to offshore installation site;
(4) installing the offshore unit;
(5) deploying a means for exploring hydrocarbon below sea bed supported by the WHD until the means for
exploring hydrocarbon below sea bed penetrate through soil layers to target penetration; retrieving the
means for exploring hydrocarbon;
(6) installing at least one conductor through the WHD and SSCF until the at least one conductor penetrate
through soil layers to target penetration;
(7) securing the WHD to the at least one conductor;
(8) wherein the WHD is removeably attached to the hull and/or deck frame;
(9) wherein the SSCF is removeably attached to the mat or to the at least one connecting leg, wherein a spud
can is attached to each of at least one connecting leg, or to the lower hull;
(10) wherein the WHD and SSCF are attached to the offshore unit prior to loading out and transporting the
platform from fabrication site to offshore installation site; and
(11) wherein the hull and/or deck frame and the mat or the spud can is connectable with the at least one
connecting leg.
[42]SP2 opined that Claim 1 (Patent 898) has the following 12 integers [SP1’s 12 Essential Integers of Claim 1
(Patent 898)]:
(1) a method of installing a WHP for exploring hydrocarbon below sea bed which includes a WHD and SSCF;
(2) using an offshore unit which includes: a hull and/or deck frame; a mat attached to at least one connecting
leg or a spud can attached to each of at least one connecting leg or to lower hull; wherein method includes
the steps of:
(3) transporting the offshore unit to offshore installation site;
(5) deploying a means for exploring hydrocarbon below sea bed supported by the WHD until the means for
exploring hydrocarbon below sea bed penetrate through soil layers to target penetration; retrieving the
means for exploring hydrocarbon;
(8) and wherein the WHD is removeably attached to the hull and/or deck frame;
(9) and wherein the SSCF is removeably attached to the mat or to the at least one connecting leg, wherein a
spud can is attached to each of at least one connecting leg, or to the lower hull;
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(10) and wherein the WHD and SSCF are attached to the offshore unit prior to loading out and transporting the
platform from fabrication site to offshore installation site;
(11) and wherein the hull and/or deck frame and the mat or the spud can is connectable with the at least one
connecting leg; and
(12) wherein the hull and/or deck frame and lower hull is connectable with the at least one connecting means.
[43]SP2 testified that the invention in Patent 898 [Invention (Patent 898)] is as follows:
(1) the Invention (Patent 898) is to enable a field owner to economically construct a stand-alone wellhead
structure without the need to employ a heavy-lift crane mounted on a costly construction vessel;
(2) the structure is assembled on site from two key components, WHD and SSCF, which are transported to the
site attached to a mobile unit;
(3) the components are positioned in such a way that without further heavy lifting or engineering work they
facilitate drilling operations by providing support for drill-string and conductors;
(4) the attachments to the 2 key components are designed so that they can easily be disconnected and
removed from the mobile unit when it is demobilized from site;
(5) the 2 key components are completed as a stand-alone structure by utilizing at least one conductor tube to
act as a platform leg;
(6) the conductor is driven into the sea-bed, acting as a foundation pile, and extends above the sea surface to
WHD to support it;
(7) the use of the mobile unit as an aligning support for the assembly of the wellhead structure is a key factor
in the value of the 2 Patents; and
(8) the key concept is that the WHD is secured clear of the sea by attachment to the raised hull or deck of the
mobile unit and the SSCF is secured at sea-bed level by attachment to the spud can at the lower end of a
leg, or to a mat or lower hull.
[44]In view of the Invention (898 Patent) (as opined by SP2), I give a purposive construction of Claim 1 (Patent 898)
and accept SP2’s 12 Essential Integers of Claim 1 (Patent 898). Furthermore, SP1’s 11 Essential Integers of Claim
1 (Patent 898) omitted the last part of Claim 1 which is the last essential integer of SP2’s 12 Essential Integers of
Claim 1 (Patent 898). It is to be noted that SD1 did not state how many essential integers are present in Claim 1
(Patent 898).
[45]SP1’s expert view is that Claim 1 (Patent 5004) has the following six essential integers [SP1’s 6 Essential
Integers of Claim 1 (Patent 5004)]:
(1) an offshore unit which includes a hull and/or deck frame;
or to lower hull attached to at least one connecting means, characterized in that:
(3) a WHD is removeably attached to the hull and/or deck frame and
(4) a sub-sea clamp in conjunction with a caisson or a SSCF removeably attached to the mat or to the at least
one connecting leg, where a spud can is attached to each of the at least one connecting leg, or to the lower
hull;
connecting leg; and
(6) wherein the hull and/or deck frame and the lower hull is connectable with the at least one connecting
means.
[46]SP2 gave expert evidence that Claim 1 (Patent 5004) has the following three essential integers [SP2’s 3
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(1) an offshore unit which includes a hull and/or deck frame, a mat attached to at least one connecting leg or
to lower hull attached to at least one connecting means, characterized in that:
(2) a WHD is removeably attached to the hull and/or deck frame; and
(3) a sub-sea clamp in conjunction with a caisson or a SSCF removeably attached to the mat or to the at least
one connecting leg, where a spud can is attached to each of the at least one connecting leg, or to the lower
hull; and wherein the hull and/or deck frame and the mat or the spud can is connectable with the at least
one connecting leg; and wherein the hull and/or deck frame and the lower hull is connectable with the at
least one connecting means.
[47]According to SP2, the invention in Patent 5004 [Invention (Patent 5004)] is the same as the Invention (Patent
898) except for the following differences:
(1) the 2 key components are a WHD and a sub-sea clamp in conjunction with a caisson or a SSCF;
(2) the WHD and caisson are completed as a stand-alone structure by sinking the caisson into the sea-bed,
and then securing the WHD to it. The alternative embodiment of a WHD and SSCF are completed as a
stand-alone structure by utilizing at least one conductor tube to act as a platform leg; and
(3) the key concept is that the WHD is secured clear of the sea by attachment to the raised hull or deck of the
mobile unit and the caisson or SSCF are secured at sea-bed level by attachment to the lower end of a leg,
or to a mat, lower hull or spud can.
[48]SD1 expressed no expert view regarding the essential integers of Claim 1 (Patent 5004). Giving a purposive
interpretation of Claim 1 (Patent 5004), I accept SP2’s 3 Essential Integers of Claim 1 (Patent 5004). It is to be
noted that -
(1) the first essential integer of SP2’s 3 Essential Integers of Claim 1 (Patent 5004) is a combination of the first
and second essential integers of SP1’s 6 Essential Integers of Claim 1 (Patent 5004); and
(2) the third essential integer of SP2’s 3 Essential Integers of Claim 1 (Patent 5004) combines the fourth to
sixth essential integers of SP1’s 6 Essential Integers of Claim 1 (Patent 5004).
[49]SP1 is of the expert opinion that Claim 13 (Patent 5004) has the following 11 essential integers [SP1’s 11
(1) a method of installing a WHP which includes a WHD, SSCF and at least one conductor using an offshore
unit which offshore unit includes: a hull and/or deck frame;
or to lower hull attached to at least one connecting means;
(3) wherein the method includes the steps of transporting the offshore unit to offshore installation site;
(8) wherein the SSCF is removeably attached to the mat or to the at least one connecting leg, where a spud
(9) wherein the WHD and SSCF are attached to the offshore unit while loading out and transporting the
offshore unit from fabrication site to offshore installation site;
connecting leg; and
means.
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[50]SP2 testified that Claim 13 (Patent 5004) has the following 10 essential integers [SP2’s 10 Essential Integers
of Claim 13 (Patent 5004)]:
(1) a method of installing a WHP which includes a WHD, SSCF and at least one conductor using an offshore
unit which offshore unit includes:
(2) a hull and/or deck frame; a mat attached to at least one connecting leg or a spud can attached to each of
at least one connecting leg or to lower hull attached to at least one connecting means wherein the method
includes the steps of:
(3) transporting the offshore unit to offshore installation site; installing the offshore unit;
(7) wherein the SSCF is removeably attached to the mat or to the at least one connecting leg, where a spud
(8) wherein the WHD and SSCF are attached to the offshore unit while loading out and transporting the
offshore unit from fabrication site to offshore installation site;
connecting leg; and
means.
[51]The sixth to eleventh essential integers of SP1’s 11 Essential Integers of Claim 13 (Patent 5004) are identical to
the fifth to tenth essential integers of SP2’s 10 Essential Integers of Claim 13 (Patent 5004). Based on the purpose
and wording of Claim 13 (Patent 5004), I accept SP2’s 10 Essential Integers of Claim 13 (Patent 5004). Once
again, there was no expert evidence by SD1 regarding the essential integers of Claim 13 (Patent 5004).
I(5). M eani ng of “ removeably attached”
[52]The essential integers of the 3 Claims provide, among others, that -

(1) the WHD is “removeably attached” to the hull and/or deck frame; and
(2) SSCF is “removeably attached” to the mat or at least one connecting leg.
(3) The Claims and the Other Patent Specifications do not define the words “removeably attached”.
[53]SD1 gave his expert opinion on the words “removeably attached” in the 3 Claims as follows:
(1) regarding the WHS (SP1 and SP2 used the term WHD) -
(a) the WHS is “removeably attached” if the WHS can be “removed by industry standard methods, ie
cutting or gouging” without any damage to the WHS and
(b) after the removal of the WHS, the remaining WHP is capable of being in in a standalone position
(without any support) [Standalone Feature (WHP)]; and
(2) in respect of SSSF (SSCF according to SP1 and SP2), the SSSF refers to “structural conductors” which
are self-supporting. SD1 relies on, among others, Claim 7 of Patent 5004.
[54]According to the Defendant -

(1) the words “removeably attached” must refer to the manner of attachment of the WHS or SSSF. The
Defendant relies on the following 5 US Patents which have the words “removeably attached” -
(a) US Patent No. US 9,458,689 B2 (System for controlling in-riser functions from out-of-riser control
system);
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(b) US Patent No. US 9,428,877 B2 (Modular monopole tower foundation);

(c) US Patent No. US 8,997,898 B2 (Drilling equipment and attachment means for the same);
(d) US Patent No. US 9,233,736 B2 (Installation for anchoring a floating platform to the ground); and
(e) US Patent No. US 9,392,926 B2 (Washing rotor and washer machine comprising said washing motor).
The 5 US Patents have provided for the mode of attachment regarding objects which are “removeably
attached”;
(2) reliance has been placed on the majority decision of US Court of Appeal delivered by Clevenger Circuit
Judge in Dorel’s Case;
(3) the words “removeably attached” must have the same meaning for both WHS and SSSF;
(4) reliance has been placed on the meaning of “attach” in renowned English dictionaries;
(5) the 2nd Plaintiff’s video entitled “Animation of Invention, the Sub-sea Conductor Frame” (exhibit P14)
showed that the SSCF is attached by means of a pin (Pin Device) and the Pin Device allows the removal
of the SSCF. The still image of the relevant part of this video is adduced as exhibit D13. Hence, the SSCF
is “removeably attached” by reason of the Pin Device;
(6) the WHS of Sepat MOPU is not “removeably attached” because the WHS is welded to Sepat MOPU by
three forms of welding which have to be cut by using oxy-acetylene torch or arc-air gouging (blow touch or
gas axe); and
(7) the SSSF of Sepat MOPU is not “removeably attached” to the mat because -
(a) the SSSF will be destroyed by being cut at the provided cutlines and thereafter cannot be “reattached”
and reused; and
(b) the SSSF as a single unit component of Sepat MOPU is not designed to be “removed” from the mat as
a single unit component.
[55]SP1 and SP2 shared the same following expert opinion regarding the words “removeably attached” in the 3
Claims. According to SP1 and SP2, the WHD and SSCF are “removeably attached” if they have been designed to
have the ability of being removed on some occasion during their design life.
[56]I am unable to accept SD1’s expert opinion on the meaning of the words “removeably attached” in the 3 Claims.
Instead I have no hesitation to accept the expert evidence of SP1 and SP2 on the meaning of those words. This
decision is premised on the following reasons:
(1) SP1 testified that the inventive concept of Claim 1 (Patent 5004) is a new offshore unit which has a flexible
approach to the EPS by using the “building block” principle. According to SP1, the WHD and SSCF are
“building blocks” which are initially added to the offshore unit and installed as one unit but the WHD can be
later detached from the offshore unit and be used independently by tying the WHD to other production
units. Such a purpose of the 3 Claims supports the expert view of SP1 and SP2 on the meaning of the
words “removeably attached”;
(2) regarding WHD -
(a) the requirement of a Standalone Feature (WHP) is not borne out by the wording of the 3 Claims. More
importantly, a purposive construction of the 3 Claims does not support the requirement of a Standalone
Feature (WHP). This is because the purpose of the 3 Claims is attained once a WHD is designed with
the capability of being removed and reused during its design life, irrespective of whether a Standalone
Feature (WHP) is present or not;
(b) SD1’s expert opinion on the meaning of the words “removeably attached” in the 3 Claims imposes an
unwarranted requirement regarding the mode of attachment. The purpose and wording of the 3 Claims
is to enable a WHD to be subsequently removed and reused. Hence, the purpose and the words
“removeably attached” in the 3 Claims must refer to the “removeability” (not the manner of attachment)
of the WHD, ie. the ability of the WHD to be later removed from a MOPU and be reused in another
EPS. In other words, irrespective of how a WHD is attached (full penetration weld, fillet weld or seal
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weld), the WHD is “removeably attached” if it is designed with the capability of being removed
subsequently from a MOPU and be reused in another EPS; and
(c) a purposive and literal reading of the 3 Claims do not require the WHD to be removed from the MOPU
without any damage to the WHS and the remaining WHP, so long as the WHD is designed with the
capacity of being detached later from the MOPU and can be re-utilized in another EPS;
(3) in respect of SSCF -
(a) the wording of the 3 Claims does not require the SSCF to be a structural conductor. More importantly,
such a requirement does not the serve the purpose of the 3 Claims because a non- supporting SSCF
can still be designed to have the capability of being subsequently removed and reused during its
design life; and
(b) the 3 Claims are “independent claims” and the scope of the words “removeably attached” therein
(regarding SSCF) cannot be confined by Claim 7 of Patent 5004 [which is a “dependent claim” under
reg. 14(1) PR] - please see Merck Sharp & Dohme Corp, at paragraph 67; and
(4) SP1 and SP2 are credible experts (please see the above paragraph 26). For reasons elaborated in the
above paragraph 27, this Court finds as a fact that SD1 is not a credible expert.
[57]As I have accepted the expert views of SP1 and SP2 on the meaning of “removeably attached” in the 3 Claims -
(1) the meaning of “removeably attached” in the 3 Claims cannot be curtailed or altered by the Other Patent
Specifications - Spind;
(2) no resort to English dictionaries regarding the meaning of “removeably attached” is permissible;
(3) the 5 US Patents cannot be referred to. Furthermore, the 5 US Patents concern inventions which are
different from the inventions in the 3 Claims; and
(4) Dorel’s Case concerned a US patent regarding a child’s car seat assembly having a retractable cup holder
(which is different from the inventions in the 3 Claims). Cases, Malaysian or otherwise, cannot substitute a
POSITA’s expert view regarding the meaning of a Claim.
J. Counterclaim to be decided before Original Action
[58]To claim for an infringement of the 3 Claims under s 59(1) PA, the 3 Claims must first be valid - Spind, at
paragraphs 144 and 145. As such, I shall first decide the Counterclaim.
[59]In the Original Action, the 1st Plaintiff has applied for relief against the Defendant for infringement of the 3
Claims. Consequently, the Defendant is an “aggrieved person” under s 56(1) PA and is entitled to file the
Counterclaim - please see Iradar Sdn Bhd v Nutech Co Ltd & Anor [2017] 1 MLRH 15, at sub-paragraph 13(4)(c).
[60]Section 33A(1) PA provides that, among others, the Register shall be prima facie evidence of all matters
required by PA to be entered therein. Accordingly, in view of the registration of the 2 Patents under PA, the
Defendant has the burden to satisfy the Court that the 3 Claims should be invalidated under s 56(2) PA - Merck
Sharp & Dohme Corp, at paragraph 40. Furthermore, according to s 103 EA, the Defendant who alleges a
particular fact that the 3 Claims are invalid, has the onus to prove such a particular fact.
K. Novelty Requirement
[61]Sections 11 and 14(1) PA require an “invention” [defined in s 12(1) PA] in a patent to be “new”. I reproduce
below ss 11, 14(1) and (2)(a) PA:
“Patentable inventions
11. An invention is patentable if it is new, involves an inventive step and is industrially applicable.
Meaning of “invention”
12(1) An invention means an idea of an inventor which permits in practice the solution to a specific problem in the
field of technology.
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Novelty
14(1) An invention is new if it is not anticipated by prior art.
14(2) Prior art shall consist of -
(a) everything disclosed to the public, anywhere in the world, by written publication, by oral disclosure, by use or
in any other way, prior to the priority date of the patent application claiming the invention; …”
(emphasis added).
[62]My understanding of case law regarding the Novelty Requirement is as follows:

(1) in deciding whether an invention in a patent is new under ss 11 and 14(1) PA, the Court must only consider
the Claim and not the Other Patent Specifications - SKB Shutters Manufacturing (at paragraph 34) and
Spind (at paragraphs 104 and 113);
(2) the Court has to ascertain who is a POSITA for the invention in question;
(3) based on the POSITA’s expert opinion, the Court has to identify the prior art (before the Priority Date)
regarding the invention under s 14(2)(a) PA (Prior Art) - please see the judgment of Aziah Ali JCA (as she
then was) in the Court of Appeal case of Seng Kong Shutter Industries Sdn Bhd & Anor v SKB Shutters
Manufacturing Sdn Bhd [2014] 5 MLJ 98, at paragraph 18. The Court of Appeal’s decision in Seng Kong
Shutter Industries has been affirmed by the Federal Court in SKB Shutters Manufacturing;
(4) the relevant date for the POSITA to consider the Prior Art is the date of publication of the Prior Art (not the
Priority Date) [Publication Date (Prior Art)] - please see Lai Kew Chai J’s judgment in the Singapore High
Court in Trek Technology (S) Pte Ltd v FE Global Electronics Pte Ltd & Ors and other suits (No 2) [2005]
3 SLR 389, at sub-paragraph 87(a). This is because in deciding the Novelty Requirement regarding a
particular piece of Prior Art, the POSITA cannot consider publications, information, materials, use and
events after the Publication Date (Prior Art);
(5) the POSITA cannot combine or “mosaic” disparate pieces of Prior Art in determining whether the Novelty
Requirement has been met. Each Prior Art document has be considered by the POSITA separately -
please see Trek Technology, at sub-paragraph 87(b); and
(6) there are two tests to decide whether an invention is novel or otherwise -
(a) the first test consists of the following two cumulative matters (1st Test) -
(i) whether each element of the invention in the Claim has been disclosed in a single piece of Prior
Art - please see the Court of Appeal’s decision in Seng Kong Shutter Industries, at paragraph
18. The Court of Appeal’s judgment in Seng Kong Shutter Industries has been followed by
Alizatul Khair Osman JCA (as she then was) in the Court of Appeal in See Hau Global Sdn Bhd v
Mah Sing Plastics Industries Sdn Bhd [2018] 3 CLJ 359, at paragraph 33; and
(ii) whether a POSITA is able to perform the invention claimed in the patent based on the single piece
of Prior Act which has disclosed all the elements of the invention - please see Lord Hoffmann’s
judgments in the House of Lords in Smithkline Beecham PLC’s (Paroxetine Methanesulfonate)
Patent [2006] RPC 10 (at paragraph 22) and H Lundbeck A/S v Generics (UK) Ltd [2008] RPC
437 (at p. 443); and
(b) the second test (2nd Test) is the “reverse infringement test”. The 2nd Test has been explained by Aickin
J in the High Court of Australia in Meyers Taylor Pty Ltd v Vicarr Industries Ltd & Ors (1976-1977)
137 CLR 228, at 235. It is noted that the High Court is the apex court in Australia. According to the
reverse infringement test, if the alleged anticipation in the Prior Art constitutes an infringement of a
patent, the invention in the patent is not novel.
The application of the 1st and 2nd Tests entails a comparison by a POSITA between the Claims (as
interpreted by the POSITA) and a single piece of Prior Art based on the Publication Date (Prior Art).
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[63]The Defendant has submitted that if Sepat MOPU is decided to have infringed the 3 Claims, the Defendant will
then contend that the inventions in the 3 Claims are not novel. For reasons explained in the above paragraph 58, I
am not able to decide the Patent Infringement Issue before determining whether the 3 Claims are invalid for not
complying with the Novelty Requirement.
[64]The Defendant advances the following submission regarding the lack of novelty regarding the inventions in the
3 Claims:
(1) according to SD1 -
(a) as WHS and SSSF are attached to Sepat MOPU by welding (which is commonly used in the
construction industry), there is nothing novel regarding the 3 Claims;
(b) if the words “removeably attached” in the 3 Claims mean that the WHS can be removed from Sepat
MOPU by cutting the welds, the 3 Claims have been anticipated by Cendor MOPU; and
(c) if SSSF are not structural conductors, the 3 Claims have been anticipated by Cendor MOPU; and
(2) the Cendor MOPU predates the Priority Date of the 2 Patents. The Sepat MOPU is built based on Cendor
MOPU. Accordingly, the inventions in the 3 Claims are not new because they have already been
anticipated by Cendor MOPU.
[65]I find as a fact that the inventions of the 3 Claims are novel within the meaning of ss 11 and 14(1) PA. This
decision is based on the following evidence and reasons:
(1) SP1 and SP2 have testified that Cendor MOPU was different from Sepat MOPU because -
(a) the WHD of Cendor MOPU (Cendor WHD) had been structurally integrated into the hull of Cendor
MOPU (Cendor Hull) whereas the WHD of Sepat MOPU (Sepat WHD) was only “removeably
attached” to the hull of Sepat MOPU.
The above expert opinion is corroborated by an email dated 11.10.2014 by Mr. Ian Prescott to SP4
(Mr. Prescott’s Email) which stated as follows -
“…
Subject: RE Cendor 3D Drawing
…FYI, the Cendor WHSS is a fixed structure welded to [Cendor Hull] and is most definitely
not disconnectable in anyway. This is evidenced by the fact that the Cendor WHSS was
recently removed and in doing so Petrofac had to destroy almost 30 tonnes of deck plate
etc. Not exactly a disconnectable WHSS!!!”
(emphasis added).
Mr. Prescott is the Group Chief Executive Officer of Global Process Systems Inc. (GPS). I attach
great weight to Mr. Prescott’s Email because -
(i) GPS was the owner of Cendor MOPU;
(ii) neither GPS nor Mr. Prescott have any interest in the outcome of this case. There is thus no
reason for Mr. Prescott to be untruthful in Mr. Prescott’s Email; and
(iii) the Defendant had not adduced any evidence to rebut the contents of Mr. Prescott’s Email. As
stated in the above paragraph 60, the Defendant (not the 1st Plaintiff) bears the onus to prove the
Counterclaim regarding the Novelty Requirement;
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(b) Cendor WHD lacked operational integrity, ie. Cendor WHD did not have important pieces of equipment
to operate the wells, manifold headers and wellhead control panels (Operational Equipment). Sepat
WHD however has Operational Equipment;
(c) Cendor WHD was not designed to have the capability of being removed from Cendor Hull and be
reused (unlike Sepat WHD). This was clear from the fact that the decoupling of Cendor WHD from
Cendor Hull was laborious (please see Mr. Prescott’s Email), time-consuming, costly and hazardous.
On the contrary, the “cut lines” in Sepat MOPU are clear and clean; and
(d) after removal, the Cendor WHD could not be reused because it lacked both structural and operational
integrity. Instead, a new WHD had to be installed in Cendor MOPU;
(2) SD1 had not referred to a single piece of Prior Art which had disclosed all the elements of the inventions in
the 3 Claims. Nor had SD1 satisfied this Court that a POSITA was able to perform the inventions in the 3
Claims based on a single piece of Prior Act on the Publication Date (Prior Art). Accordingly, an application
of the 1st Test must be resolved in favour of the novelty of the inventions in the 3 Claims;
(3) the Defendant has not adduced any expert evidence to prove that Cendor MOPU could infringe the 3
Claims. As such, an application of the 2nd Test does not show that the inventions in the 3 Claims are not
new;
(4) the ISA has given a written opinion that, among others, the inventions in the 3 Claims are novel and
contain inventive steps (ISA’s Opinion).
I am of the view that the Court should consider ISA’s Opinion in deciding whether the inventions in the
3 Claims comply with Novelty and Inventiveness Requirements because -
(a) Malaysia has acceded to the Patent Cooperation Treaty (PCT).
PCT (except Article 59) is applicable to Malaysia with effect from 16.8.2006. Consequently, a
new Part XIVA (ss 78A to 78Q) has been inserted by Parliament into PA.
According to Article 16(1) PCT, ISA “may be either a national Office or an intergovernmental
organization, such as the International Patent Institute, whose tasks include the establishing
of documentary search reports on prior art with respect to inventions which are the subject of
applications”.
Pursuant to s 78L(1) PA, ISA may conduct an “international search” (defined in s 78A PA as
“a search to discover relevant prior art with respect to the invention”).
In view of Malaysia’s accession of PCT and the introduction of international searches by ISA
[s 78L(1) PA], the Court should consider ISA’s Opinion; and
(b) patent rights, like all other Intellectual Property (IP) rights, are borderless in nature. Accordingly, the
Court should not take a blinkered view regarding the protection and enforcement of IP rights - please
see GS Yuasa Corporation v GBI Marketing Sdn Bhd [2017] 8 MLJ 166, at paragraph 40.
I must clarify that ISA’s Opinion does not bind the Court. Nor is ISA’s Opinion conclusive
regarding the issues of whether the inventions in the 3 Claims comply with Novelty and
Inventiveness Requirements. In this case, ISA’s Opinion lends assurance to this Court’s
decision regarding Novelty and Inventiveness Requirements;
(5) for reasons explained in the above paragraphs 26 and 27, I attach weight only to the expert views of SP1
and SP2 (not SD1); and
(6) due to the above reasons, the Defendant has failed to discharge the burden under s 56(2) PA read with s
103 EA to prove that the inventions in the 3 Claims are not novel.
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[66]The Defendant initially relied on “Ocean Legend” MOPU to contend that the inventions in the 3 Claims did not
comply with the Novelty Requirement. However, the Defendant did not adduce any design drawing of Ocean
Legend MOPU to show that Ocean Legend MOPU had anticipated the inventions in the 3 Claims. In any event,
SP1 and SP2 have given mutually corroborative expert opinions that the WHD of Ocean Legend MOPU was
integrated into Ocean Legend MOPU. Hence, the inventions in the 3 Claims could not be anticipated by the prior
use of Ocean Legend MOPU.
L. Inventiveness Requirement
[67]Section 15 PA provides for the Inventiveness Requirement as follows:
“Inventive step
15. An invention shall be considered as involving an inventive step if, having regard to any matter which forms
part of the prior art under paragraph 14(2)(a), such inventive step would not have been obvious to a person having
ordinary skill in the art.”
(emphasis added).
[68]Regarding the Inventiveness Requirement -

(1) the Inventiveness Requirement is distinct from the Novelty Requirement - Spind, at paragraph 57. The
question of inventiveness only arises when an invention is novel - Spind, at paragraph 57;
(2) the inventive concept of a patent must be identified from the Claims and not the Other Patent
Specifications - SKB Shutters Manufacturing (at paragraph 34) and Spind (at paragraphs 99-104, 112
and 113); and
(3) the Federal Court has decided in Spind as follows -
(a) the four-step test laid down by Oliver LJ (as he then was) in UK’s Court of Appeal in Windsurfing
International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59, at 73-74 (Windsurfing’s Test), is
a “helpful guide”. The Windsurfing’s Test is as follows -
(i) the Court shall identify the inventive concept embodied in the patent (1st Step);
(ii) the Court shall assume the mantle of the POSITA in question and impute to the POSITA the CGK
on the Priority Date (2nd Step);
(iii) the third step (3rd Step) is that the Court shall identify the differences between the Prior Art and the
alleged invention (Differences); and
(iv) whether, viewed without any knowledge of the alleged invention, the Differences constitute steps
which would have been obvious to the POSITA or whether the Differences require any degree of
invention (4th Step);
(b) regarding the 4th Step -
(i) its application is an objective one and a question of fact. Hence, reliance on previous cases is “not
helpful”;
(ii) the POSITA cannot have the benefit of hindsight; and
(iii) the Court may consider primary and secondary evidence.
Primary evidence consists of a POSITA’s expert testimony and the reasons for such a testimony.
Secondary evidence includes contemporary events and commercial success of the alleged invention.
Secondary evidence in itself is not conclusive of the 4th Step;
(c) the application of Windsurfing’s Test is not set in stone and should not be mechanically applied. The
Court must always bear in mind that the ultimate question as expressed in s 15 PA is the 4th Step; and
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(d) it is “unnecessary” to apply the reformulated Windsurfing’s Test as explained by Jacob LJ in UK’s
Court of Appeal in Pozzoli Spa v BDMO SA & Anor [2007] FSR 37, at paragraphs 14-23.
[69]SD1 opined that WHS and SSSF are attached to Sepat MOPU by welding, a common practice in the
construction industry. Hence, the inventions in the 3 Claims do not satisfy the Inventiveness Requirement.
[70]Applying the Windsurfing’s Test, I am satisfied that the inventions in the 3 Claims involve inventive steps within
the meaning of ss 11 and 15 PA. This decision is premised on the following evidence and reasons -
(1) regarding the 1st Step, according to SP1 -
(a) the inventive step of Claim 13 (Patent 5004) is a method to install a WHP (which includes a WHD and
SSCF) which can be subsequently removed and reused. This method is based on the building block
principle. Claim 1 (Patent 898) has the same inventive concept of Claim 13 (Patent 5004) except that
Claim 1 (Patent 898) has the additional inventive step of deploying and retrieving a means of exploring
hydrocarbons (drilling and completion); and
(b) Claim 1 (Patent 5004) has an inventive step of offering a new offshore unit comprising WHD and SSCF
which can be later removed and reused (based on the building block principle);
(2) applying the 2nd Step, the Court shall assume the mantle of the POSITA and impute to the POSITA the
CGK on the Priority Date;
(3) in respect of the 3rd Step, SP1 and SP2 had testified that the Prior Art consisted of -
(a) MOPU with separately installed or adjacent WHP (1st Category of Prior Art). In the 1st Category of
Prior Art, WHP’s are separately transported and installed (independent of MOPU); and
(b) MOPU with integrated wellhead template WHP (2nd Category of Prior Art). For the 2nd Category of
Prior Art, the wellhead template is built as part of the MOPU and is integrated with the MOPU.
According to SP1 and SP2, the differences between the Prior Art and the inventive steps of the 3 Claims as
stated in the above sub- paragraph (1) [Inventive Steps (3 Claims)] are -
(i) unlike the 1st Category of Prior Art, the Inventive Steps (3 Claims) provide for a design that the WHD
and SSCF are part of the MOPU and are brought together with the MOPU to the offshore field and the
WHD and SSCF may be subsequently removed and reused. The Inventive Steps (3 Claims) have the
following benefit (as compared to the 1st Category of Prior Art) -
(ia) cost of transportation and installation of WHP components is significantly reduced; and
(ib) dependence on third parties, such as barge owners, is reduced; and
(ii) the Inventive Steps (3 Claims) can be distinguished from the 2nd Category of Prior Art because the
WHD and SSCF provided in the 3 Claims are designed to be capable of being subsequently removed
and reused. Consequently, the Inventive Steps (3 Claims) have the following advantages -
(iia) there is no need to demolish existing wellhead template and to design, construct, transport and
install a new one in its place;
(iib) there is no need to remove existing wellhead template which is costly, time-consuming and
hazardous to health, safety and environment; and
(iic) during the removal of WHD and SSCF (as provided in the 3 Claims), production need not be shut
down for an extended period and this results in a significant saving; and
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(4) concerning the 4th Step, both SP1 and SP2 have given their expert opinions that, viewed without any
knowledge of the Inventive Steps (3 Claims), the differences elaborated in the above sub-paragraph (3)
would -
(a) not have been obvious to SP1 and SP2; and/or
(b) require a certain degree of invention by SP1 and SP2.
[71]The above decision is supported by -

(1) ISA’s Opinion [please see the above sub-paragraph 65(4); and
(2) SD1’s lack of credibility [please refer to the above paragraph 27].
[72]Based on the expert evidence and reasons stated in the above paragraphs 70 and 71, I find as a fact that the
Defendant has failed to discharge the burden under s 56(2) PA read with s 103 EA to prove that the inventions in
the 3 Claims lack inventive steps as required by ss 11 and 15 PA.
M. Disclosure Requirement
[73]Section 23 PA states that every application for a patent “shall” comply with PR. Regulations 5(1)(b), 12(1)(c), (f)
and 13(1) PR provide for the Disclosure Requirement as follows:
“reg 5. Application for Grant of Patent
(1) An application shall contain -
(b) a description; … reg 12. Description
(1) The description shall first state the title of the invention as appearing in the request and shall -
(c) disclose the invention in such terms that it can be understood and in a manner sufficiently clear and complete
for the invention to be evaluated and to be carried out by a person having ordinary skill in the art, and state any
advantageous effects of the invention with reference to the background art;
(f) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the
invention is industrially applicable and the way in which it can be made and used or, if it can only be used, the way
in which it can be used.
reg 13. Claims
(1) The claims shall be clear and concise and fully supported by the description; …”
(emphasis added).
[74]The Defendant relied on SD1’s expert opinion that the 2 Patents had breached the Disclosure Requirement for
not providing sufficient information regarding the words “removeably attached” so as to enable a POSITA to perform
the 2 Patents.
[75]I am of the view that the 2 Patents comply with the Disclosure Requirement for the following reasons:
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(1) according to the expert views of SP1 and SP2, the 2 Patents (including the 3 Claims) have disclosed the
inventions in the 2 Patents in such terms that those inventions can be understood and in a manner
sufficiently clear and complete for those inventions to be evaluated and to be carried out by SP1 and SP2. I
rely on Lloyd LJ’s judgment in UK’s Court of Appeal in Mentor Corporation & Anor v Hollister Incorporated
[1993] RPC 7, at 10, as follows -
“The question for decision in the present case is whether the specification discloses the invention
clearly enough and completely enough for it to be performed by a person skilled in the art. This
obviously involves a question of degree. Disclosure of an invention does not have to be complete in
every detail, so that anyone, whether skilled or not, can perform it. Since the specification is
addressed to the skilled man, it is sufficient if the addressee can understand the invention as
described, and can then perform it. In performing the invention the skilled man does not have to be
told what is self-evident, or what is part of common general knowledge, that is to say, what is known
to persons versed in the art.”
(emphasis added);
(2) SD1’s credibility is doubtful for reasons expressed in the above paragraph 27; and
(3) this Court is not satisfied that the Defendant has discharged the onus under s 56(2) PA read with s 103 EA
to prove that the inventions in the 3 Claims do not comply with the Disclosure Requirement.
N. Patent infringementN(1). Whether Defendant may rely on s 35(1A) PA
[76]Section 35(1), (1A), (1B) and (1C) PA state as follows:
“Duration of patent
35(1) Subject to subsections (1B) and (1C), the duration of a patent shall be twenty years from the filing date of the
application.
(1A) Without prejudice to subsection (1) and subject to the other provisions of this Act, a patent shall be deemed
to be granted and shall take effect on the date the certificate of grant of the patent is issued.
(1B) Where a patent application was filed before 1 August 2001, and was pending on that date, the duration of the patent
granted on that application shall be twenty years from the date of filing or fifteen years from the date of grant, whichever is
the longer.
(1C) The duration of a patent granted before 1 August 2001 and still in force on that date shall be twenty years from the
date of filing or fifteen years from the date of grant whichever is the longer.”
(emphasis added).
[77]The Defendant raised the following novel contention:

(1) Patent 898 was granted on 23.11.2011 while Patent 5004 was granted on 8.12.2011;
(2) according to s 35(1A) PA, the 2 Patents “shall” be deemed to be granted and “shall” take effect on the date
of grant of the 2 Patents;
(3) the Defendant cannot be liable for infringement of the 2 Patents because by 1.9.2011, the construction of
Sepat MOPU had been completed by the Defendant (before the grant of the 2 Patents). Thereafter,
Petronas had used Sepat MOPU; and
(4) reliance was placed on the opinion of Associate Professor Tay Pek San in her book, “Intellectual Property
Law in Malaysia”, at paragraph 25.3.1.
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[78]I am not able to accept the above submission by the Defendant. This decision is premised on the following
reasons:
(1) the opening words in s 35(1) PA make it clear that s 35(1) PA is only subject to s 35(1B) and (1C) [not s
35(1A) PA]. Section 35(1B) and (1C) PA do not apply to the 2 Patents;
(2) s 35(1A)PA has expressly provided that s 35(1A) PA is “without prejudice” to s 35(1) PA. In other words, s
35(1A) PA cannot affect the application of s 35(1) PA. By virtue of s 35(1) PA, the 20 years’ duration of the
2 Patents shall take effect from the filing date of the applications of the 2 Patents. According to s 27A(1)
PA, the Priority Date (14.5.2008) of the 2 Patents is the filing date of the applications of the 2 Patents. The
Defendant’s construction of Sepat MOPU took place during the duration of the 2 Patents;
(3) the following High Court cases support the above construction of s 35(1) PA -
(a) Chew Soo Ho JC’s (as he then was) decision in CHD Global IP Sdn Bhd & Anor v Uni-Vessel
Automation Sdn Bhd [2011] 1 LNS 1769, at p. 6; and
(b) the judgment of Hanipah Farikullah JC (as she then was) in Sanofi-Aventis (M) Sdn Bhd & Anor v
Fresenius Kabi (M) Sdn Bhd & Anor [2012] 4 CLJ 532, at paragraphs 70 and 71; and
(4) s 35(1A)PA was introduced by Patents (Amendment) Act 2000 (Act A1088). The speech of the then
Deputy Minister of Domestic Trade and Consumerism in Dewan Rakyat on 20.7.2000 (during the second
and third reading of Act A1088) supports the above construction of s 35(1) and (1A) PA.
N(2). Test to decide patent infringement
[79]Section 58 PA states as follows:
“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).
[80]Sections 37(1), (2), (3) and 38 PA do not apply in this case.
[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;
(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
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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 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, 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).
I am not able to find any Malaysian case which has discussed, let alone apply, Actavis’ Test.
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[82]As a matter of stare decisis, I am bound by the Court of Appeal’s decisions in Yeohata Machineries and
Cadware to apply the Essential Integers Test and Improver’s Test respectively.
[83]I am attracted to Actavis’ Test for the following reasons:

(1) the UK Supreme Court has explained in Actavis, at paragraphs 61- 63, the problems regarding the
application of the second Improver’s question. The third Improver’s question has also been clarified in
Actavis, at paragraph 65. In other words, Actavis’ Test is a clearer test vis-à-vis Improver’s Test; and
(2) Actavis’ Test (at paragraphs 44, 45, 64 and 66) has taken into account the approach by the German
Federal Patent Court (Bundespatentgericht) regarding the test to decide patent infringement. In view of the
extra-territorial nature of patent rights, I am in favour of, as far as possible, a uniform test in different
jurisdictions to ascertain whether a patent has been infringed or otherwise. Such an approach ensures
consistency and predictability in the exercise and enforcement of patent rights.
[84]Premised on the reasons explained in the above paragraphs 82 and 83, I will apply all the 3 Tests in the
determination of the Patent Infringement Issue.
[85]The Defendant has relied on SD1’s expert evidence that Sepat MOPU cannot infringe the 3 Claims due to
SD1’s meaning of the words “removeably attached” in the 3 Claims. According to SD1, among others -
(1) Sepat MOPU does not have a WHP which can stand alone (after the removal of WHD). As such, Sepat
MOPU cannot infringe the 3 Claims; and
(2) the words “removeably attached” in the 3 Claims regarding SSCF require structural conductors. Sepat
MOPU does not have structural conductors and cannot therefore infringe the 3 Claims.
[86]Applying the Essential Integers Test, I accept the expert evidence of SP1 and SP2 (not the expert opinion of
SD1) and decide as follows:
(1) Sepat MOPU has all the essential integers as elaborated in SP2’s 12 Essential Integers of Claim 1 (Patent
898);
(2) all of SP2’s 3 Essential Integers of Claim 1 (Patent 5004) are present in Sepat MOPU; and
(3) Sepat MOPU has all of SP2’s 10 Essential Integers of Claim 13 (Patent 5004).
I am satisfied that the Defendant’s design, construction, installation and operation of Sepat MOPU has infringed all
the 3 Claims based on an application of the Essential Integers Test.
[87]Regarding Improver’s Test, based on the expert views of SP1 and SP2 (not the expert opinion of SD1), I find as
a fact the following:
(1) Sepat MOPU does not have a material effect on the way the inventions in the 3 Claims work;
(2) Sepat MOPU would have been obvious to SP1 and SP2 (as POSITA’s regarding the 2 Patents) on the
date of publication of the 2 Patents; and
(3) SP1 and SP2 would not have understood from the language of the 3 Claims that the 1st Plaintiff (as
patentee in the 2 Patents) intended that strict compliance with the primary meaning of the 3 Claims was an
essential requirement of the inventions in the 3 Claims.
Applying the Improver’s Test, this Court is satisfied that the Defendant’s design, fabrication, installation and use of
Sepat MOPU has infringed all the 3 Claims.
[88]Based on Actavis’ Test, I find as a fact that the Defendant’s design, completion, installation and use of Sepat
MOPU has infringed all the 3 Claims as follows:
(1) relying on the expert testimonies of SP1 and SP2, Sepat MOPU achieves substantially the same result in
substantially the same way as the inventions in the 3 Claims;
(2) it is obvious to SP1 and SP2 (POSITA’s for the 2 Patents), reading the 2 Patents on the Priority Date that
Sepat MOPU achieves substantially the same result as the inventions in the 3 Claims in substantially the
same way as the inventions in the 3 Claims; and
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(3) SP1 and SP2 would not have concluded that the 1st Plaintiff (as patentee in the 2 Patents) nonetheless
intended that strict compliance with the literal meaning of the 3 Claims was an essential requirement of the
inventions in the 3 Claims.
[89]Applying the 3 Tests based on the expert opinions of SP1 and SP2, I make the following findings of fact:
(1) the Defendant’s use of the method of construction, installation and operation of Sepat MOPU has infringed
Claim 1 (Patent 898) and Claim 13 (Patent 5004) within the meaning of s 36(1)(a) (exploitation of patented
process), s 36(2) and s 36(3)(b)(i) PA; and
(2) the Defendant’s “making”, “offering for sale”, sale and use of Sepat MOPU has infringed Claim 1 (Patent
5004) within the meaning of s 36(1)(a), (2) and (3)(a)(i) PA.
O. Costs for 1 POSITA only
[90]After a trial, the Court has an unfettered discretion under O 59 rr 2(2), 3(2), 8(b) and 19(1) RC to award costs
regarding the case. The conduct of a party “before and during the proceedings” [O 59 r 8(b) RC] is a relevant
consideration regarding an award of costs - please see Dawama Sdn Bhd v Mohd Fadel bin Yusof & Ors [2015] 7
MLJ 1, at paragraph 25.
[91]In this case, the Plaintiffs had called two POSITA’s. There is no patent case which requires a POSITA’s expert
opinion to be corroborated by another POSITA. On the contrary, s 134 EA provides as follows:
“Number of witnesses
134. No particular number of witnesses shall in any case be required for the proof of any fact.”
(emphasis added).
[92]By calling two POSITA’s, the Plaintiffs have unnecessarily prolonged this trial. Furthermore, significant costs
could have been saved in this case by calling only one POSITA. Accordingly, I exercise my discretion under O 59 rr
2(2), 3(2), 8(b) and 19(1) RC to award costs to the 1st Plaintiff for only one POSITA. This award of costs is to ensure
that in future patent cases, parties need only call one POSITA and consequently, such cases can be disposed of
expeditiously and economically.
P. Court’s decision
[93]In summary -
(1) the 2nd Plaintiff (a licensee of the 2 Patents) has no right under ss 43(1) and 59(1) PA to file a patent
infringement action. As the 1st Plaintiff has filed the Original Action, the 2nd Plaintiff cannot claim for an
infringement of the 3 Claims under s 61(1)(a), (2), (3) or (4) PA;
(2) SP1 and SP2 are credible POSITA’s regarding the 2 Patents. SD1’s credibility as an expert is doubted
because of, among others, the following reasons -
(a) SD1 lacks independence, actual and perceived; and
(b) SD1’s Breach;
(3) the Court accepts the expert opinions of SP1 and SP2 on the meaning of “removeably attached” in the 3
Claims. Accordingly, the Court cannot refer to -
(a) the Other Patent Specifications;
(b) the dictionary meaning of those words;
(c) 5 US Patents; and
(d) Dorel’s Case;
(4) based on the expert testimonies of SP1 and SP2 (supported by Mr. Prescott’s Email and ISA’s Opinion),
the inventions in the 3 Claims are new within the meaning of ss 11 and 14(1) PA;
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(5) this Court accepts the expert views of SP1 and SP2 as well as ISA’s Opinion that the inventions in the 3
Claims involve inventive steps under ss 11 and 15 PA;
(6) based on the expert testimonies of SP1 and SP2, the 2 Patents have fulfilled the Disclosure Requirement;
(7) the 20 years’ duration of the 2 Patents takes effect from the Priority Date in accordance with ss 27A(1) and
35(1) PA. Section 35(1A) PA does not affect the application of s 35(1) PA;
(8) an application of the 3 Tests based on the expert evidence of SP1 and SP2, shows that the Defendant’s
design, construction, installation and use of Sepat MOPU have infringed all the 3 Claims; and
(9) the Court exercises its discretion under O 59 rr 2(2), 3(2), 8(b) and 19(1) RC to award costs for one
POSITA only to the 1st Plaintiff because there is requirement for a POSITA’s expert view to be
corroborated by another POSITA.
[94]The upshot is -
(1) the Original Action by the 2nd Plaintiff is dismissed with costs to be paid by the 2nd Plaintiff to the
Defendant; and
(2) the Counterclaim is dismissed with costs to be borne by the Defendant in favour of the 1st Plaintiff; and
(3) the Original Action by the 1st Plaintiff (regarding the Defendant’s liability for infringement of the 3 Claims) is
allowed with costs.
[95]I end by thanking all learned counsel in this case for their able assistance, without which this judgment is not
possible.
End of Document
DEMI MIN

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Date and Time: Friday, 30 August, 2019 5:18:00 PM MYT

1. Kingtime International Ltd & Anor v Petrofac E&C Sdn Bhd

HIGH COURT (KUALA LUMPUR)

Wong Kian Kheong J:

[7]In this case -

[8]The following questions arise in this case:

(6) if the 3 Claims are valid -

[9]The 3 Claims provide as follows:

“Claim 1 (Patent 898)

a hull (12) and/or deck frame (52);

wherein method includes the steps of:

i) transporting the offshore unit to offshore installation site;

ii) installing the offshore unit;

iv) retrieving the means for exploring hydrocarbon (54) ;

Claim 1 (Patent 5004)

Claim 13 (Patent 5004)

wherein the method includes the steps of:

i) transporting the offshore unit to offshore installation site;

ii) installing the offshore unit;

D. TrialD(1). Pl ai nti ffs’ case

[10]The Plaintiffs called the following witnesses:

[13]SP3 testified, among others, as follows:

D(2). Defendant’ s case

[14]The following witnesses have been called by the Defendant:

[15]The Defendant has called SD1 as a POSITA regarding the 2 Patents.

[16]SD2 gave the following evidence, among others:

E. Whether patent licensee can claim for patent infringement

[17]The relevant parts of ss 36, 43, 59 and 61 PA are reproduced below:

“Rights of owner of patent

(b) to assign or transmit the patent;

(c) to conclude licence contacts.

(i) using the process;

Rights of the licensee

Infringement proceedings by licensee and beneficiary of compulsory licence.

61(1) For the purposes of this section, “beneficiary” means -

provisions of this subsection do not apply or provides different provisions;

(emphasis added); and

Expert’s duty to the Court

Requirements of expert’s evidence

An expert’s report shall -

[24]I am of the following view regarding an expert’s duties:

(emphasis added); and

(iiia) Lord Woolf MR (as he then was), at p. 55, decided as follows -

In my judgment, Mr Luba is absolutely correct to accept that position.”

(iiib) Waller LJ (as he then was), at p. 56, held that -

(emphasis added); and

(iiic) according to May LJ (as he then was), at p. 56 -

(c) the fact that an expert -

F(2). Credibility of expert witnesses

“… In the meantime our MOPU experience in short is as follows:-

Year MOPU Client Description of work

2011 SEPAT Petrofac Full naval architecture

Will be in touch, [SD1]”

(bb) the contents of SD1’e Email; and

G. POSITAG(1). Importance of POSITA

[29]Based on SKB Shutters Manufacturing and Spind -

[30]The POSITA’s expert view is important in the following matters:

“60. I am of the following view regarding a POSITA:

(a) notional person; or

G(2). Who is POSITA regarding 2 Patents?

[32]According to SP2’s expert opinion, a POSITA for the 2 Patents -

H. What was CGK on Priority Date?