Sne Engineering Co Ltd v. Hsin Chong Construction Co Ltd and Another

HCA 1466/2012

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 1466 of 2012

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JUDGMENT

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1.This is a claim for patent infringement. The plaintiff is suing for the infringement of a Hong Kong short-term patent No 1150416 for a construction method for extracting building piles in the ground (“the Patent”).

2.For the construction of the High Speed Railway between Hong Kong and the Mainland, some of the building piles need to be removed for the construction of the underground railway tunnel.  Under Contract 802, the 1^st defendant, Hsin Chong Construction Co Ltd (“Hsin Chong”), was awarded a contract by Mass Transit Railway Corporation (“MTRC”) for some of the pile removal works under the High Speed Railway Project (“the Project”).

3.In 2010, following negotiations and a tendering process, the plaintiff, SNE Engineer Co Ltd (“SNE”), was awarded 2 sub-contracts (“the Sub-Contracts”) by Hsin Chong to remove 5 bored piles and 364 H-piles at the site in Nam Chong Station (“the Site”) under Contract 802.

4.Under another contract, Contract 820, Dragages-Bonuygues JV (“Dragages”) was another contractor of MTRC to carry out pile removal works under the Project.  SNE was also awarded a sub-contract by Dragages for such pile removal works.

5.SNE engaged the 2^nd defendant, Chim Kee Machinery Co Ltd (“Chim Kee”), as a sub-contractor for the provision of equipment and operators for the pile removal works under the Sub-Contracts with Hsin Chong.

6.It is SNE’s case that SNE and its Japanese shareholders had developed a construction method to remove building piles.  SNE describes such method as the “rotate and wedge method” or “rotator and wedge method”.  In this Judgment, I will adopt the latter description.

7.There is no dispute between the parties that, due to actual condition at the Site, the works under the Sub-Contracts proceeded more slowly than originally expected.  Because of this, Hsin Chong was considering to terminate the Sub-Contracts with SNE in around June or July 2011.

8.SNE then applied for the Patent on 4 August 2011.  SNE eventually obtained the registration of the Patent, and it alleges that the invention claimed in the Patent is the rotator and wedge method.

9.On 15 November 2011, Hsin Chong entered into a supplemental agreement with MTRC which provided for more funds and extended the time for the performance of the works.  However, there was a dispute between SNE and Hsin Chong and the latter refused to grant variations to SNE or to enter into a corresponding supplemental agreement with SNE.

10.On 27 July 2012, Hsin Chong, on the purported grounds that SNE was working too slowly and removing too few piles, took over the majority of the Site.  In September 2012, Hsin Chong terminated the Sub-Contracts with SNE and took over the works in the entirety.

11.After the termination of the Sub-Contracts, Hsin Chong directly engaged Chim Kee to provide machinery and operators and continued to remove the H-piles at the Site using allegedly the same method that had previously been used by SNE, i.e. the rotator and wedge method.

12.Hence, what started as a contractual dispute ended up in a patent infringement claim.  On 17 August 2012, SNE commenced the present proceedings against Hsin Chong and Chim Kee for infringement of the Patent in relation to the H-pile removal works under Contract 802.  SNE has not made a claim for infringement in relation to the bored pile removal works.

13.For the purpose of this action, all the parties agree that the court does not need to deal with the contractual disputes relating to the works at the Site, in particular the court is not required to determine whether Hsin Chong was right in terminating the Sub-Contracts and whether the parties have valid claims for the sums allegedly due under the Sub-Contracts.

14.On 22 August 2012, SNE took out a summons for, inter alia, directions for speedy trial.  On 28 August 2012, Hsin Chong took out an application to strike out SNE’s claim.  On 31 August 2012, DHCJ Yan, SC made an order for speedy trial of this case and granted leave to the parties to call up to 2 experts each on the relevant state of the art.  On 17 October 2012, Mr Recorder P Fung, SC dismissed Hsin Chong’s striking out application.

15.After that, the case was listed before me for various interlocutory applications on 31 January, 2 May, 14 June, 2 August and 9 August 2013.  Since the parties could not agree on some of the translations of the key documents, the trial had to be heard by a bilingual judge and the case was eventually listed before me for trial.

ISSUES IN THE CASE

16.For the purpose of this Judgment, I will try to group the issues of the present case under the following 3 headings:

(i)   defences relating to the construction and infringement of the Patent and the invalidity of the Patent due to insufficiency;

(ii)   defences relating to the invalidity of the Patent for want of  novelty and for want of any inventive step; and

(iii)   defences specifically relating to Chim Kee.

17.In the pleadings, Hsin Chong denies infringement of the Patent and challenges the validity of the Patent by reason of insufficiency.

18.First, it is Hsin Chong’s case that the Patent, when properly construed, does not cover the rotator and wedge method as claimed by SNE.  The Patent does not state that the circular wedge would perform the function of a jamming or immobilizing device.  On the contrary, the Patent only discloses a method characterized by only rotating a circular wedge to cut the pile.  Such interpretation of the Patent is actually supported by the contents of the search report submitted by SNE in the application of the Patent (“the Search Report”).

19.Second, the Patent is invalid because it has failed to disclose the invention clearly and completely enough for it to be performed by a person skilled in the art without undue burden.

20.Third, Hsin Chong denies infringement of the Patent because the Patent specifically refers to the use of a circular wedge, whereas the pile removal works performed by Hsin Chong only involved the use of a star-shaped wedge.

21.Although these are separate defences, they are all related to the construction of the terms of the Patent itself.  As these are related defences, I will deal with them as the first group of issues.

22.Hsin Chong has also tried to attack the validity of the Patent by reason of the lack of novelty and lack of any inventive step. The attack is based on two-front.

23.First, Hsin Chong argues that the rotator and wedge method is not novel because it formed part of the state of the art at the time of the application of the Patent.  In this regard, Hsin Chong relies on a method for the extraction of piles introduced in a brochure of Nippon Sharyo (a Japanese company) with the title “Underground Obstacles Removal” (“the Brochure”). Further, the alleged inventor of the rotator and wedge method, Mr Yoshihito Sugisaki (“Sugisaki”) of SNE, agrees that there are many patents relating to the use of rotators in Japan.  By failing to adduce expert evidence generally about the prior art in Japan, SNE has failed to discharge its burden in proving the validity of the Patent under s 129(1) of the Patents Ordinance (Cap 514).

24.Second, it is Hsin Chong’s case that SNE had disclosed the rotator and wedge method in various ways prior to the application of the Patent, including the disclosure of the method in various meetings involving the engineering personnel of the Project and in the method statements and other relevant documents submitted by SNE to Hsin Chong, Dragages, MTRC and the Government authorities.  Hsin Chong also relies on the disclosure of the method to various relevant personnel involved in the piles removal works and the public by the actual performance of such works at the Site.

25.I will group these defences as the second group of issues which relate to the invalidity of the Patent for want of novelty and for want of any inventive step.

26.Chim Kee basically adopts the same defences of Hsin Chong in attacking the validity of the Patent.  Further, Chim Kee claims that it is an innocent party in the present proceedings.  Its role in Contracts 802 and 820 was the same, i.e. to provide machinery to be used at the Site.  In fact, Chim Kee was only a machinery supplier and it would provide equipment and operators for the machinery to whatever company which was willing to pay the rental charges.  Insofar as SNE is alleging that Chim Kee should be liable as a joint tortfeasor, Chim Kee submits that SNE has not pleaded such allegation in the pleading.

27.These defences are specially related to Chim Kee, and so I will deal with them as the third group of issues.

BACKGROUND OF THE CASE

(i)  The rotator and wedge method and the other pile removal methods used in the trade

28.Before I deal with these issues, I need to explain the “rotator and wedge” method claimed by SNE and the other methods commonly used in the trade for the extraction of building piles.

29.A pile is a type of foundation constructed to stabilize buildings and to distribute the load of the building evenly across the ground upon which the building will rest.  Specifically, piles are a type of “deep foundation”, which are designed to transmit safely some or the entire applied load to appropriate depths below the ground surface through soil friction or end bearing.  Deep foundations are capable of carrying significant loads, including lateral loads.[1]

30.On some occasions, the piles have to be removed for the construction of new buildings, underground tunnels or underground railways.  However, after the piles have been placed in the ground for a long time, the soil around the pile would become strongly compressed making it more difficult to remove the pile.

31.There are 2 types of piles which are relevant to this dispute: bored concrete piles of large diameters and steel H-piles.

32.At present, chiselling and grabbing method, forced hoisting method and sinking casings with water infill method are mainly used for extracting these piles.[2]

33.The chiselling and grabbing method is mainly used for the removal of concrete bored piles.  It comprises hitting the underground pile into pieces with a heavy hammer or chisel and then grabbing the bits with a grab.  The shortcomings of such method are: loud noise, large vibrations, time-consuming and high costs.

34.The forced hoisting method refers to lifting of the piles off the ground with the use of lifting equipment such as a crane or hydraulic jack.  On some occasions, a casing will be sunk to the ground around the pile and the soil around the pile will be removed before the lifting of the pile.  Vibrator may also be used to loosen the soil around the pile before the actual lifting.

35.There may be problems with such method, in particular if the pile is long and has been bent underground.  In those circumstances, the pile may not be able to be removed completely, breaking off at some depth below the ground surface.  Further removal process will then be necessary and will be more difficult.  Further, using vibrators to loosen the soil around the pile may cause significant impact to surrounding buildings.

36.The sinking casings with water infill method involves using mechanical power to cause steel casing to sink around the pile by pressure, replacing the soil around the pile with water, and then hoisting the pile with steel wire.  This removal method utilizes water to replace the soil around the pile.  However, some pieces in the soil such as sand and stone would sink to the bottom of the pile due to their own weights, making it difficult to lower down the wire to its designated position and the extraction of the pile would not be possible.

37.At the trial, 2 more methods have been mentioned: the Auger Casing method and the All-Casing method.  These are the methods mainly referred to by the Japanese partners of SNE.  The Auger Casing method involves the use of an auger to loosen and extract the soil around the pile. After that, the pile would be removed.  The All-Casing method involves the driving of a casing into the ground.  Then the operators would try to break the pile with the use of chisels or various kinds of hammer-grabs.  If the pile is not too long or heavy, after the casing has loosened the soil around the pile, one can simply lift out the whole pile with a crane or other lifting device in one piece.

38.I then have to explain the rotator and wedge method claimed by SNE.  As described by SNE’s expert, the method includes the insertion of a steel casing to a depth equal to or longer than the predetermined length of the pile segment to be removed.  The operators would then excavate and remove the soil down to this depth within the casing.  A wedge is slipped in between the pile segment and the internal circumference of the casing, acting as a jamming and immobilising device.  With a powerful rotator, the casing is rotated.  When sufficient friction is built up between the wedge and the internal surface of the casing, the wedge would rotate together with the casing.  As the pile segment has been jammed by the wedge, it will be twisted until it breaks.  The broken segment will then be lifted and removed by a crane.[3]

39.A good illustration of the rotator and wedge method can be found in 2 diagrams included in a written presentation about the method prepared by Hsin Chong and a photograph taken at the Site for the H-pile removal works carried out by Hsin Chong after the termination of the Sub-Contracts, which are included in Annex 1 of this Judgment.  As shown in these diagrams and photograph, a star-shaped wedge is used as a jamming and immobilising device, jamming the H-pile against the internal surface of the casing. If the casing is rotated by the rotator, it would cause the H-pile to twist and to break at a pre-determined point.

40.It is SNE’s case that the invention claimed in the Patent is the rotator and wedge method mentioned above.

(ii)  Witnesses at the trial

41.At the trial, SNE has called the following 3 factual witnesses:

(i)   Sugisaki, who is the president of Sugisaki Kiso (a Japanese company) and managing director of SNE, and he is also the alleged inventor of the rotator and wedge method;

(ii)   Mr Takakazu Nakamura (“Nakamura”), who acted as an interpreter in various meetings between the Japanese and the Hong Kong parties and was for a period a director of SNE; and

(iii)   Mr Takuya Matsumoto (“Matsumoto”), who joined SNE in September 2010 and was the general manager of SNE at the material time.

42.SNE has intended to call Mr Hiroyuki Kobiyama (“Kobiyama”) of Niigata Shoji (a Japanese company) to testify at the trial.  He came from Japan to give evidence but due to delays in the trial was not able to be called before he needed to return to Japan to attend to business commitments.  It is common ground that, for the purpose of this trial, the court should ignore his evidence in his witness statement.

43.There was also a Mr Takayoshi Chigita (“Chigita”), who acted as an interpreter in the early business discussions between the Japanese and the Hong Kong parties.  Unfortunately, Chigita passed away in late January 2010 and so he is not available to give evidence at the trial.

44.Hsin Chong has called the following 2 factual witnesses:

(i)   Mr Frankie Lam (“Frankie Lam”) who is the project director and was at the material time the project manager of Hsin Chong; and

(ii)   Mr Wilkin Lam who was the former technical director of SNE and the owner of a company, Ellitt Engineering (“Ellitt”), which was originally a shareholder holding 30% of the shares of SNE.

45.Chim Kee has called its managing director, Mr James Tang (“Tang”), to testify at the trial.

46.SNE and Hsin Chong have each called one expert witness to testify at the trial.  SNE’s expert is Professor Lee Kai Kwong Peter (“Professor Lee”) who is an associate professor (geotechnical engineering) and an honorary professor of the University of Hong Kong.  Hsin Chong’s expert is Dr Albert Yeung (“Dr Yeung”) who is an associate professor of the Department of Civil Engineering of the University of Hong Kong.

(iii)  Evidence presented by the factual witnesses at the trial

47.Following the trial of this action, there are relatively few factual issues in dispute between the parties.  The basic facts as they have come out at the trial are set out in the following paragraphs.  I will also try to identify the facts which are in dispute between the parties.

48.The infringement relates to the pile removal works at the Site.  Because of the construction of the High Speed Railway connecting Hong Kong and the Mainland, some of the newly installed piles at the Site need to be removed to facilitate the underground construction works.

49.MTRC was responsible for the construction of the High Speed Railway in the Hong Kong sector, and Hsin Chong and Dragages were planning to bid for the pile removal works at the various sites in the Project. By that time, both Hsin Chong and Dragages wanted to explore whether there was a new method to extract the piles which would be more time and cost efficient.

50.Wilkin Lam of Ellitt has had many years of experience in the construction business in Hong Kong.  In late 2009, he was approached by Dragages and later Hsin Chong to see if he could identify companies that could assist with the pile removal works under the Project. Dragages was bidding for the works under MTRC’s Contract No 820.

51.Hsin Chong had submitted a tender on 24 September 2009 for MTRC’s Contract No 802 to remove bored piles and H-piles at the Site.

52.Wilkin Lam had connections with some of the Japanese construction contractors.  He therefore, through Chigita, approached some of these Japanese contractors, which included Niigata Shoji (which was owned by Kobiyama) and Sugisaki Kiso (which was owned by Sugisaki), in November 2009 to see if they were interested in bidding for the works under the Project.

53.Based on the tender information received from Dragages via Wilkin Lam, Kobiyama of Niigata Shoji sent quotations for the works to Wilkin Lam who passed them on to Dragages.  One quotation included a series of computer generated drawings of a method for removing piles using a casing and a wedge.

54.It is SNE’s case that Sugisaki was by then thinking about a method of removing piles which would later become the “rotator and wedge” method.  He had discussed this with Kobiyama but had not fully worked out the details.

55.Frankie Lam, who was by then a project manager of Hsin Chong, also contacted Wilkin Lam to see if he had any contacts who knew about a better method of removing piles.  For the removal of H-piles, Hsin Chong intended to (and eventually did) enter a contract with another sub-contractor Tysan Foundation Ltd (“Tysan”).  The contract with Tysan was to remove the H-piles using hydraulic jacks.

56.Meetings were arranged by Wilkin Lam with Dragages on 13 January 2010 and Hsin Chong and Chim Kee on 14 January 2010. Sugisaki and Kobiyama flew from Japan to attend these 2 meetings.  Chigita was the interpreter in these meetings.

57.The parties dispute the contents of the discussions in the meeting on 14 January 2010 (“the Preliminary Meeting”).  According to Sugisaki, the rotator and wedge method had never been discussed in the Preliminary Meeting.  He only introduced the Augar Casing and All-Casing methods to Hsin Chong and Chim Kee.  On the other hand, Frankie Lam testifies that a method involving the use of rotator and wedge was introduced by the Japanese parties in that meeting.  Though he and his superior did not fully understand how the method worked in practice, Frankie Lam was certain that it was a new method unknown to him.  If it was one of the existing methods such as Augar Casing or All-Casing method, he would have known about it.  According to Frankie Lam, Sugisaki said that such new method had been widely used in Japan and Singapore.  By that time, Hsin Chong was very concerned about the efficiency of such method and so they made enquiry with Sugisaki and Kobiyama as to the working schedule of such method and the time that would be needed to extract the piles using such method.  Frankie Lam also produces the contemporaneous note that he prepared during or immediately after the Preliminary Meeting.

58.Shortly after the said meetings, the Japanese partners and Wilkin Lam as a joint-venture proceeded to bid for the sub-contract with Dragages for the pile removal works.  It was also agreed that a company would be established in Hong Kong (later SNE) to carry out such piles removal works.

59.Hsin Chong’s tender was accepted by MTRC on 27 January 2010.  The formal date of commencement of the works was 1 February 2010.

60.It is SNE’s case that in February 2010, a trial of the rotator and wedge method was conducted at a Kumagai Gumi construction site at Hamacho in Tokyo.  The trial was arranged by Niigata Shoji.  The actual trial was conducted by Yushou Kogyou who signed a confidentiality agreement with Niigata Shoji.

61.In March 2010, Wilkin Lam submitted a method statement to Dragages that partially described the rotator and wedge method (“the March 2010 Method Statement”).

62.Thereafter, Wilkin Lam submitted on behalf of the joint-venture to Hsin Chong a quotation for the removal of the 2.8 metres diameter bored piles under Contract 802.  This quotation referred to the method to be used as “360 degree rotator with wedge removing method”.

63.In mid-April 2010, Wilkin Lam and the representatives of Dragages visited Japan to see and to assess if the Japanese contractors had the ability to carry out the pile removal works.  The Hamacho site was visited and the rotator and wedge method was explained to them with some drawings.

64.There is a dispute as to which method was being shown to the visiting party at the Hamacho site at the time of the visit.  Sugisaki says that it was not the rotator and wedge method, and the twisted base of the I-beams lying at the site were in fact twisted by the friction between the base of the beams and the inner wall of the casing.  On the other hand, Wilkin Lam says that the method shown to them at the time of the visit was the rotator and wedge method.

65.In the end of April 2010, Dragages was successful in its tender for Contract 820.

66.In May 2010, another method statement for the removal of bored pile was submitted to Hsin Chong (“the May 2010 Method Statement”).  This was prepared by Wilkin Lam with the assistance of Sugisaki and Kobiyama.  As compared with the March 2010 Method Statement, the May 2010 Method Statement described the rotator and wedge method in much clearer terms.

67.SNE was then incorporated on 7 June 2010 in Hong Kong to carry out the pile removal works under the Project.  The shareholders were Sugisaki Kiso, Kobiyama, one Mr Sugahara and Ellitt.

68.After that, it is SNE’s case that a further trial of the rotator and wedge method was conducted in Japan for removal of bored piles at a site at Motoyawata where a subsidiary of Sugisaki Kiso, SKS, was conducting pile removal works.  Confidentiality agreements were signed with all the relevant parties.

69.On 5 August 2010, Hsin Chong signed a letter of acceptance with SNE for the removal of the bored piles at the Site.

70.In mid-August 2010, Frankie Lam and the representatives of MTRC and the Highways Department visited Japan.  MTRC had specifically requested this visit to confirm whether the Japanese partners of SNE were able to carry out the bored pile removal works according to the method introduced by them, ie the rotator and wedge method.

71.On 17 August 2010, the visitors were taken to the site in Motoyawata, which is just outside Tokyo, where they were given a presentation of the method of removal of bored piles.  In Sugisaki’s first witness testament, he stated that a trial demonstration was conducted for the visitors.  In his supplemental witness statement and oral evidence, he clarifies this by saying that in fact no demonstration was carried out at the time of this particular visit.  The trial of the rotator and wedge at the Motoyawata site actually took place much earlier in around July 2010.  An introduction of the rotator and wedge method was nevertheless made to the visitors.  On the other hand, Frankie Lam testifies that, although the actual removal process did not take place at the time of the visit, he was given to understand that a pile was removed by the rotator and wedge method shortly before the visit.  According to one of the photographs taken during the visit, he can actually identify one of the wet piles removed by the alleged rotator and wedge method.

72.In September 2010, Hsin Chong and MTRC approached SNE exploring the idea of using the rotator and wedge method to remove the H-piles at the Site.  Due to the faults in the welding of the H-piles, the method proposed by Tysan using hydraulic jacks was not proceeding well.  A submission based on the rotator and wedge method was made to the Buildings Department in October 2010.

73.Applications were made in October 2010 to bring in skilled workers from Japan to work at the Site.  Hsin Chong and Chim Kee allege that these workers were familiar with the rotator and wedge method.  SNE denies this.  In any event, SNE claims that these workers were subject to confidentiality agreements.

74.Chim Kee was engaged in September 2010 to provide equipment and operators to SNE for the pile removal works at the Site.

75.A trial for removing H-pile using a fork wedge was conducted successfully at the Site in October 2010.  As part of the celebration, the engineering personnel exhibited the twisted pile which was removed using the rotator and wedge method near the site office of Hsin Chong at the Site.

76.On 21 February 2011, Hsin Chong signed a letter of acceptance with SNE for the removal of H-piles at the Site.  The formal sub-contract was signed on 11 March 2011.

77.On a number of occasions, submissions were prepared by MTRC or its consultants to be submitted to the Buildings Department for the approval of the execution of the works.  These submissions provided details of the method to be used to extract piles.

78.The fork wedge was found to be not so effective in removing H-piles because it damaged the inside surface of the casing.  SNE therefore developed a drum wedge to remove H-piles.  This was tested and used successfully.

79.A number of variations of the drum wedge were tried.  This included inserting a chisel wedge at the back of the drum wedge to create more friction with the casing.  Wilkin Lam developed a hydraulic drum wedge but this was never put into operation.

80.During the course of the works, site workers found that a star-shaped chisel used by itself or with a chisel wedge could be effectively used to remove H-piles.  The chisel wedge was first used in March or April 2011 as an alternative to drum wedges and used side by side on the same site with several rotators simultaneously in operation.

81.Unfortunately, SNE’s works proceeded more slowly than the schedules set out in the Sub-Contracts.  The parties are still in dispute over the Sub-Contracts and whether and how they had been breached and terminated.

82.MTRC and Hsin Chong signed a supplemental agreement to Contract 802 which extended the time for completion of the H-pile removal works and provided for extra payment.  Hsin Chong declined to sign supplemental agreement with SNE with similar effect.  This is still a matter of dispute between the parties.

83.In June or July 2011, there was rumour that Hsin Chong would terminate the Sub-Contracts with SNE for the pile removal works at the Site.  At around the same time, Matsumoto initiated steps to file a patent application for the alleged rotator and wedge method.  Wilkin Lam initially opposed but eventually agreed with the filing of the application.

84.One Mr Lok Lee Sui of SNE was given the responsibility for making the patent application.  The patent was drafted in Chinese by the patent agent under the instruction of the solicitors filing the patent application.  The draft in Chinese was explained to Matsumoto but no translation was prepared for his benefit.

85.The patent application was filed on 4 August 2011.  The Search Report was obtained from the State Intellectual Property Office on 11 August 2011.  The examiner stated in the Search Report that the invention was patentable.  One Japanese patent application no. 2010202432A in the name of Kaneken Co Ltd (“the Kaneken Patent”) was identified as the closest prior art, but was distinguished as not disclosing the same method.  Neither Hsin Chong nor Chim Kee has pleaded the Kaneken Patent as a piece of prior art to invalidate the Patent.  SNE eventually obtained the registration of the Patent.

86.SNE first notified Hsin Chong of the Patent in May 2012.  Chim Kee was notified on 29 July 2012.

87.On 27 July 2012, Hsin Chong, on the grounds that SNE was working too slowly and removing too few piles, took over the majority of the Site.  In September 2012, Hsin Chong terminated the Sub-Contracts with SNE and took over the works in the entirety.

88.After the termination of the Sub-Contracts, Hsin Chong directly engaged Chim Kee to provide machinery and operators and continued to remove the H-piles at the Site using allegedly the same method that had previously been used by SNE, i.e. the rotator and wedge method.  SNE therefore commenced the present proceedings against Hsin Chong and Chim Kee.

89.The Patent in the present case is a short-term patent.  In order to resolve the issues between the parties, one needs to understand the system of short-term patent which is relatively new in Hong Kong.

THE SYSTEM OF SHORT-TERM PATENT IN HONG KONG

90.There are 2 types of patents in Hong Kong, namely standard patent and short-term patent.  The grant of a standard patent in Hong Kong[4] is based on the registration of a patent granted by one of the 3 “designated patent offices”, namely the State Intellectual Property Office in the Mainland, the European Patent Office (in respect of a patent designating the United Kingdom) and the United Kingdom Patent Office.

91.Thus, an applicant who wishes to have a standard patent in Hong Kong must first apply for such patent in one of the 3 designated patent offices.  In such patent offices, the application will be considered and a detailed examination process will be carried out to consider whether the proposed patent is valid and should be allowed to be registered.

92.As the standard patents registered in Hong Kong have gone through detailed examination process in one of the 3 designated patent offices, the law provides a presumption of validity for those standard patents and it is for the party who challenges the validity of a standard patent to bear the onus of proving invalidity.[5]

93.The period of protection under a standard patent is up to a maximum of 20 years.[6]

94.Short-term patent is a new kind of patent which has been introduced in Hong Kong in 1997.  I am given to understand that the system of short-term patent can only be found in a few countries, including the Mainland, Germany, Australia and South Africa.

95.The system of short-term patent is different, and it does not require a detailed examination at the time of the application.  Short-term patents are governed by s 113 of the Patents Ordinance:

“Every application for a short-term patent shall be signed by the application and be filed with the Registrar in the prescribed manner and shall contain –

(a) a request for the grant of a short-term patent;

(b) a specification which provides on the fact of it for –

(i) a description of the invention to which the application relates;

(ii) one or more claims but not exceeding one independent claim;

(iii) any drawing referred to in the description or the claim or claims;

(c) an abstract; and

(d)   a search report in relation to the invention.”

96.A search report means a report by a prescribed searching authority of a search undertaken by that authority as to the prior art in relation to the invention, based on the claims and having due regard to the description and drawings (if any); and which contains the prescribed information.[7]

97.An application for a short-term patent has to satisfy the “minimum requirements” and the “formal requirements”, which are respectively provided for in ss 114 and 115 of the Patents Ordinance.  Under s 114(1), the Registrar shall examine the application to see if it satisfies the requirements specified in s 114(2) for the accordance of a date of filing, i.e. the minimum requirements.  Under s 115(1), if a short-term patent application has been accorded a date of filing, and is not deemed to be withdrawn by virtue of s 113(5), the Registrar shall examine whether the requirements of s 113 and of any rules made for the purpose of that section, i.e. the formal requirements, have been satisfied.[8]

98.The examination of a short-term patent application is only a formal examination.  S 117 of the Patents Ordinance, under the title “Formality examination only”, provides that –

“Except as expressly provided to the contrary, nothing in this Part providing for the examination by the Registrar of an application for a short-term patent for an invention shall be construed as imposing any obligation upon the Registrar to consider or to have regard to, for the purpose of such examination, any question as to –

(a) the patentability of the invention;

(b) whether the applicant is entitled to any priority claimed in the application;

(c) whether the invention is properly disclosed in the application; or

(d) any matter specified in section 45, 77, 78, 79, 93, 94, 96, 97, 100, 109, 110, 111(2) to (6) or 120(2).”

99.Accordingly, the granting of a short-term patent per se does not mean that the invention claimed in the relevant short-term patent is a patentable invention in that it is, inter alia, new and involves an inventive step.[9]

100.Short term patents are therefore registered under a special procedure under which the Registrar of Patents is only concerned with the formalities of the application to register with no regard being paid to the substance of the claims under the patent.  In other words, the validity of the patent has never been considered by the Registrar.

101.In an infringement action, the owner of a short-term patent therefore bears the burden of establishing the validity of the patent.  S 129(1) of the Patents Ordinance provides that:

“In any proceedings before a court for the enforcement of rights conferred under this Ordinance in relation to a short-term patent –

(a) it is for the proprietor of the patent to establish the validity of the patent, and the fact that the patent has been granted under this Part shall be of no account in that regard;

(b)  evidence by the proprietor which is sufficient to establish prima facie the validity of the patent shall in the absence of evidence to the contrary be sufficient proof of such validity.”

102.The period of protection for a short-term patent is up to a maximum of 8 years.[10]

103.In the present case, there are at least two features of the short-term patent system which are relevant in considering the issues between the parties.  Firstly, Hsin Chong and Chim Kee submit that the description of the patented process in the Search Report is different from the rotator and wedge method claimed by SNE.  In such circumstances, how would it affect the validity of the Patent?  Are the contents of the Search Report relevant in the construction of the specification in the Patent?  Secondly, there is some doubt as to whether the alleged patented process was novel in Japan at the time when the application was made.  Hence, who bears the burden of proving or disproving the validity of the Patent would be relevant in considering the issue of liability in the present case.  I would address these issues in the appropriate parts of this Judgment.

104.Having outlined the background of the case, I will turn to the various groups of issues mentioned earlier in this Judgment. I will start with the first group of issues, which all relate to the construction of the terms of the Patent and the question of insufficiency.

CONSTRUCTION AND INFRINGEMENT OF THE PATENT AND INVALIDITY OF THE PATENT DUE TO INSUFFICIENCY

(i)  Legal principles governing the construction of a patent

105.Although the Patent is a short-term patent, the principles of construction are the same.

106.S 76(1)(b) of the Patents Ordinance provides the basic test for the construction of the terms of a patent:

“(1) For the purposes of this Ordinance-

… … …

(b) an invention for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the patent, as interpreted by the description and any drawings contained in that specification,

and the extents of the protection conferred by a patent or an application for a patent shall be determined accordingly.”

107.S 76(3) provides further guidance on the construction of a patent:

“(3) Subsection (1) should not be interpreted in either of the following senses, namely –

(a) in the sense that the extent of the protection conferred by a patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims, on the one hand; or

(b) in the sense that the claims serve only as a guidance and that the actual protection conferred by a patent may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated, on the other hand,

but rather is to be interpreted as defining a position between these extremes which combines a fair protection for the proprietor of the patent or the application for a patent with a reasonable degree of certainty for third parties.”

108.S 76(3) is based on the Protocol on the Interpretation of Article 69 of the European Patent Convention.

109.It is trite law that a patent should be construed using a “purposive construction”.  The classic statement can be found in the landmark decision of Catnic Components Ltd & Anr v Hill & Smith[11] (adopted by the Hong Kong Court of Appeal in Improver Corp v Raymond Industrial Ltd[12]) where the House of Lords held:[13]

“My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. ‘skilled in the art’), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so called ‘pith and marrow’ of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.”

110.In 2004, the House of Lords in Kirin-Amgen v Hoechst Marion Rousell[14] had comprehensively reviewed the principles for patent construction.  Of most importance, the House of Lords held that a patent is to be interpreted according to the meaning the audience it was directed to would understand it.  That is, in this case, construction or civil engineers.

111.Lord Hoffman said:[15]

“In the case of a patent specification, the notional addressee is the person skilled in the art.  He (or, I say once and for all, she) comes to a reading of the specification with common general knowledge of the art.  And he reads the specification on the assumption that its purpose is to both to describe and to demarcate an invention – a practical idea which the patentee has had for a new product or process – and not to be a textbook in mathematics or chemistry or a shopping list of chemicals or hardware.  It is this insight which lies at the heart of “purposive construction … …”.

112.Lord Hoffman also explained how to construe a claim when dealing with variants:[16]

“49. Although article 69 prevents equivalence from extending protection outside the claims, there is no reason why it cannot be an important part of the background of facts known to the skilled man which would affect what he understood the claims to mean. That is no more than common sense. It is also expressly provided by the new art. 2 added to the Protocol by the Munich Act revising the EPC, dated 29 November 2000 (but which has not yet come into force):

‘For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.’

50. In the Catnic case [1982] RPC 183, 243 Lord Diplock offered some observations on the relevance of equivalence to the question of construction:

‘The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.

The question, of course, does not arise where the variant would in fact have a material effect upon the way the invention worked. Nor does it arise unless at the date of publication of the specification it would be obvious to the informed reader that this was so. Where it is not obvious, in the light of then-existing knowledge, the reader is entitled to assume that the patentee thought at the time of the specification that he had good reason for limiting his monopoly so strictly and had intended to do so, even though subsequent work by him or others in the field of the invention might show the limitation to have been unnecessary. It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked.’

51. In Improver Corp v Remington Consumer Products Ltd [1990] FSR 181, 189 I tried to summarise this guidance:

‘If the issue was whether a feature embodied in an alleged infringement which fell outside the primary, literal or a contextual meaning of a descriptive word or phrase in the claim (‘a variant’) was nevertheless within its language as properly interpreted, the court should ask itself the following three questions:

(1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no?

(2) Would this (ie 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 include the variant and the literal meaning, the latter being perhaps the most perfect, best-known or striking example of the class.’

52.  These questions, which the Court of Appeal in Wheatley v Drillsafe Ltd [2001] RPC 133, 142 dubbed ‘the Protocol questions’ have been used by English courts for the past 15 years as a framework for deciding whether equivalents fall within the scope of the claims.  On the whole, the judges appear to have been comfortable with the results, although some of the cases have exposed the limitations of the method.  When speaking of the ‘Catnic principle’ it is important to distinguish between, on the one hand, the principle of purposive construction which I have said gives effect to the requirements of the Protocol, and on the other hand, the guidelines for applying that principle to equivalents, which are encapsulated in the Protocol questions.  The former is the bedrock of patent construction, universally applicable.  The latter are only guidelines, more useful in some cases than in others.  I am bound to say that the cases show a tendency for counsel to treat the Protocol questions as legal rules rather than guides which will in appropriate cases help to decide what the skilled man would have understood the patentee to mean.  The limits to the value of the guidelines are perhaps most clearly illustrated by the present case and therefore, instead of discussing the principles in the abstract as I have been doing so far, I shall make my comments by reference to the facts of the case.”

113.Patent claims are also not to be limited by reference to the specific embodiments referred to in the patent.  Floyd J held in Nokia v Ipcom:[17]

“Where a patentee has used general language in a claim, but has described the invention by reference to a specific embodiment, it is not normally legitimate to write limitations into the claim corresponding to details of the specific embodiment, if the patentee has chosen not to do so. The specific embodiments are merely examples of what is claimed as the invention, and are often expressly, although superfluously, stated not to be ‘limiting’. There is no general principle which requires the court to assume that the patentee intended to claim the most sophisticated embodiment of the invention. The skilled person understands that, in the claim, the patentee is stating the limits of the monopoly which it claims, not seeking to describe every detail of the manifold ways in which the invention may be put into effect.”

114.In Rediffusion Simulation v Link Miles, Aldous J reinstated that “the specification should be read through the eyes of the skilled addressee, attempting to give it a practical meaning and endeavouring to ascertain the intention of the draftsman”. [18]

115.Despite that a patent should not be construed too literally or narrowly, the law has also emphasised that there should be a reasonable degree of certainty for third parties.  Ultimately, a patent is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of the claim.  In Kirin-Amgen, Lord Hoffman said the following:[19]

“‘Purposive construction’ does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which board allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in this opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must be in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.”

116.In Beloit v Valmet (No 2), Jacob J also made the following observation:[20]

“In all this it must be remembered that it is the patentee who has set out the limits of his monopoly. Moreover, those reading his claim are entitled to see that it has a scope that goes this far and no further and to design around the patent. There is no such thing as the tort of non-infringement. Finally, if claims are given the sort of loose construction contended for, the whole approach to examination of patents is rendered more uncertain.”

117.Purposive construction therefore does not entitle the court to rewrite or amend the claim in the guise of construing it. Such unfettered approach would be at the expense of any degree of certainty to third parties.  Hence in construing the meaning of a patent, the court has to struggle with and to strike a proper balance between two competing interests: to give a reasonable protection for the patentee whilst at the same time to give a reasonable certainty for third parties.

(ii)  Legal principles on invalidity due to insufficiency

118.Under s 91(1)(c) of the Patents Ordinance, the court can revoke a patent in the case that “the specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be performed by a person skilled in the art”.

119.A convenient summary of the general principles underlying the requirement of sufficiency was set out by Kitchin J in Eli Lilly v Human Genome Sciences:[21]

“The specification must disclose the invention clearly and completely enough for it to be performed by a person skilled in the art. The key elements of this requirement which bear on the present case are these:

(i) the first step is to identify the invention and that is to be done by readying and construing the claims;

(ii) in the case of a product claim that means making or otherwise obtaining the product;

(iii) in the case of a process claim, it means working the process;

(iv) sufficiency of the disclosure must be assessed on the basis of the specification as a whole including the description and the claims;

(v) the disclosure is aimed at the skilled person who may use his common general knowledge to supplement the information contained in the specification;

(vi) the specification must be sufficient to allow the invention to be performed over the whole scope of the claim;

(vii)   the specification must be sufficient to allow the invention to be so performed without undue burden.”

120.The general principles by which the sufficiency of the specification should be determined are set out in Mentor Corporation v Holloster Inc, in which Lloyd LJ said:[22]

“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. … … …”

121.The man skilled in the art is not expected to be inventive but he is expected to be competent.  In Terrell on the Law of Patents (17 ed), the learned authors said the following:[23]

“ … … But the inventor cannot be expected to relieve the ‘competent workman’ from all obligation to take trouble in carrying into effect the description in the specification. For example, in modern engineering practice no one would think of treating the drawings of a machine in a specification as working drawings: a certain amount of designing and calculation has to be carried out before a machine can be built, and the degree of knowledge requisite to perform such operations must be presumed in the person to whom the specification is addressed. It should, however, be noted that there is no requirement that the example given should actually have been carried out. What is important is what the document teaches, not how the contents came to be there.

Generally speaking, therefore, an inventor is not required to give directions of a more minute nature than a person of ordinary skill and knowledge of the art might fairly be expected to need. … …”

122.In respect of an error in a specification, the learned authors said the following in Terrell:[24]

“An error in a specification will not render the patent invalid, although it be an error in description or drawing, provided it be such an error as the skilled addressee would at once observe and be in a position to correct.”

123.In Mentor Corporation v Hollister Inc, the English Court of Appeal approved the following test in dealing with errors in the specification:[25]

“The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions [without] the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency.”

124.Lack of clarity of a claim is not as such a separate ground of revocation.  However, a claim that lacks clarity may suffer from the defect of lacking sufficient particulars in the specification and therefore be vulnerable to an insufficiency attack.  That was actually what happened in Kirin-Amgen v Hoechst Marion Rousell[26] where the House of Lords held that the claim was bad for insufficiency.  The Law Lords found that the lack of clarity made the specification insufficient, as all the skilled man could do in that case was to guess what was in the mind of the patentee.[27]

125.As mentioned in the latter part of this Judgment, there is a distinction between the burden of proof relating to the validity of a standard patent vis-à-vis a short-term burden.[28]  In the case of a short-term patent, the patentee bears the burden of proving that the patent discloses a sufficiently clear and complete method which can be performed by a person skilled in the art.

126.As one can see from above, construction of a patent and insufficiency are very much related issues.  In determining whether a patent should be revoked on the ground of insufficiency, the court has to first understand the patented product or process as claimed by the patentee. After knowing the invention itself, the court has to construe the specification in the patent, putting itself in the shoes of a person skilled in the art, and to determine whether the patent has disclosed the invention in a manner sufficiently clear and complete for it to be performed by a person skilled in the art.  I therefore consider these two issues together, but before that, I have set out the terms in the Claims of the Patent.

(iii)  The Claims in the Patent and the Search Report

127.As mentioned above, an invention for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the patent.  The Claims in the Patent herein were drafted in simplified Chinese characters, and they read as follows (for the purpose of this judgment, the traditional Chinese characters are used):

「權利要求書

１、一種提取樁的施工方法，其特徵在於，將樁從上部依次分節切斷並提取該節樁體，具體包括以下步驟：

a、沉入鋼套管：將鋼套管（5）沉至地下，使鋼套管（5）內含樁（3）的頂部一節或者使鋼套管（5）內含樁（3）的頂部一節的一部分，挖掘鋼套管（5）內的土壤；

b、圓形楔楔入：用圓形楔（2）楔入樁（3）和鋼套管（5）之間；

c、切斷樁：驅動圓形楔（2）運動，在樁（3）的兩節之間的預計斷點（4）附近切斷樁（3）；

d、 拔樁：對切斷的樁（3）進行提取;

e、 回填：回填拔取樁（3）之後留下的洞。

2、根據權利要求1所述的一種提取樁的施工方法，其特徵在於，所述步驟a分為以下子步驟：

    (a1)   對待拔的樁（3）進行定位，定位後在其上方的地面上以地平線為主水平基準安裝旋轉裝置（1）和起重機；

   (a2) 將鋼套管（5）竪向沉至地下，使鋼套管（5）內含樁（3）的頂部一節或者使鋼套管（5）內含樁（3）的頂部一節的一部分；

(a3)    運用旋轉裝置（1）及其上安裝的抓斗挖掘樁（3）與鋼套管（5）之間的土壤，讓樁（3）的頂部一節或者頂部一節的一部分露出，鋼套管（5）的內部需要留下土壤，從而防止附近的土地沉降。

   3、根據權利要求1所述的一種提取樁的施工方法，其特徵在於，所述步驟b具體為：

將抓斗更換為圓形楔（2），通過旋轉裝置（1）將圓形楔（2）放置在鋼套管（5）與樁（3）的頂部之間。

4、根據權利要求1所述的一種提取樁的施工方法，其特徵在於，所述步驟c具體為:

將圓形楔（2）沿與主水平基準垂直的方向楔入樁（3）和鋼套管（5）之間，一直楔入到樁（3）兩節之間的預計斷點（4）處，用旋轉裝置（1）驅動圓形楔（2）繞樁（3）做圓周運動，通過圓形楔（2）扭轉樁（3），直到樁（3）在預計斷點（4）或預計斷點(4)的附近斷裂，從而切斷樁（3）的頂部一節或者樁（3）的頂部一節的一部分。

5、根據權利要求1所述的一種提取樁的施工方法，其特徵在於，所述步驟d具體為:

將圓形楔（2）更換為抓斗，通過旋轉裝置（1）使用抓斗抓取鋼套管（5）內斷裂的樁（3），測量抓取的斷裂的樁（3）的長度。

6、根據權利要求5所述的一種提取樁的施工方法，其特徵在於，在斷裂的樁（3）的長度與預計斷點（4）以上的樁（3）的長度相符時，用起重機提取鋼套管（5），重新定位樁（3）的剩餘部分中最上節的預計斷點（4）的位置或者重新對樁（3）定位，此時再次操作從 (a2) 至 (c) 的步驟以及步驟（d）中使用抓斗抓取斷裂的樁（3）並測量抓取的斷裂的樁（3）的長度的步驟，直到多次提取後剩餘的樁（3）的高度符合設計要求。

7、根據權利要求5所述的一種提取樁的施工方法，其特徵在於，在斷裂的樁（3）的長度與預計斷點（4）以上的樁（3）的長度不符時，檢查抓取的斷裂的樁（3）、旋轉裝置（1）、圓形楔（2）及其它設備後繼續提取工作，直到多次提取後剩餘的樁（3）的高度符合設計要求。

8、根據權利要求1所述的一種提取樁的施工方法，其特徵在於，所述步驟e具體為:

提取樁（3）後，剩餘的樁（3）的高度符合設計要求時，用旋轉裝置（1）拔出鋼套管（5），同時根據剩餘的樁（3）的頂部的水平線，用回填材料回填拔取樁（3）之後留下的洞，然後用沙子覆蓋地面；回填材料的頂部高於並與鋼套管（5）的底部動態保持一段距離，直到回填材料填充到上述洞的洞口，然後繼續拔出鋼套管（5），直至完全拔出。

9、根據權利要求1所述的一種提取樁的施工方法，其特徵在於，鋼套管（5）的直徑為1.5 – 3.0 m。」

128.The English translation reads as follows:

“CLAIMS

1. A construction method for extracting a pile, comprising breaking the pile by sections sequentially from its top part extracting the broken section of the pile; specifically comprising the following steps:

a. Sink the steel casing: Cause the steel casing (5) to be sunk into the ground such that a section of the top part of the pile (3) or a part thereof, are enclosed by the steel casing (5), excavate the soil insidethe steel casing (5);

b. Wedge the circular wedge: use a circular wedge (2) to wedge between the pile (3) and the steel casing (5);

c. Break the pile: drive the circular wedge (2) to move, break the pile (3) at a position close to a predicted breakpoint (4) between two sections of the pile (3);

d. Extract the pile: extract the broken pile (3);

e. Backfill: backfill the hole left after the pile (3) is extracted.

2. The construction method for extracting a pile as claimed in claim 1, the characteristic of which is that, wherein step a comprises:

(a1) locate the position the pile (3) to be extracted; after locating the position, install a rotating device (1) and a crane above the pile on the ground taking the horizon as the Principle Datum;

(a2) cause the steel casing to be vertically sunk into the ground such that a section of the top part of the pile (3) or a part thereof are enclosed by the steel casing (5);

(a3) Utilize a rotating device (1) and a grab installed [D1 on] [P: above] it to excavate the soil between the pile and the steel casing to expose a section of the top part of the pile (3) or a part thereof; while there is a need to leave some soil inside the steel casing (5) so as to avoid the ground nearby from settling.

3. A construction method for extracting a pile as claimed in claim 1, the characteristic of which is that, wherein step b comprises:

Replace the grab by a circular wedge (2), [D1: using the rotating device to] place the circular wedge (2) [P: through the rotating device (1),] in a position between the top part of the pile (3) and the steel casing (5).

4. A construction method for extracting a pile as claimed in claim 1, the characteristic of which is that, wherein step c comprises;

Wedge the circular wedge (2) between the pile (3) and the steel casing (5) along a direction perpendicular to the Principle Datum until it reaches the estimated breakpoint (4) between two sections of the pile (3); use the rotating device (1) to drive the wedge (2) to move in a circular motion around the pile (3), [D1: using] [P: through] the circular wedge (2) [D1: to] twist the pile (3), until the pile (3) is fractured or ruptured at or around the estimated breakpoint (4), so as to break a section of the top part of the pile (3) or a part thereof.

5. A construction method for extracting a pile as claimed in claim 1, the characteristic of which is that, wherein step d comprises:

Replace the circular wedge (2) with the grab; [D1: utilizing the rotating device (1) to] use the grab to grab [P: through the rotation device (1),] the broken pile (3) inside the steel casing (5); measure the length of the broken pile which is grabbed.

6. A construction method for extracting a pile as claimed in claim 5, the characteristic of which is that, when the length of the broken pile (3) matches with the length of the pile (3) above the estimated breakpoint (4), extract the steel casing (5) with a crane and reposition them to an estimated breakpoint (4) of the top part of the remaining pile (3) or reposition them to the pile (3). At this time, repeat the steps (a2) to (c) and the procedure of using the grab to grab the broken pile (3) and measuring the length of the broken pile (3) in step (d) until the height of the remaining pile (3) meets the design specifications after numerous extractions.

7. A construction method for extracting a pile as claimed in claim 5, the characteristic of which is that, when the length of the broken pile (3) does not match with the length of the pile (3) above the estimated breakpoint (4), continue the extraction works after inspecting the grabbed broken pile (3), the rotating device (1), the circular wedge (2) and other equipment until the height of the reaming pile (1) meets the design specifications after numerous extractions.

8. A construction method for extracting a pile as claimed in claim 1, the characteristic of which is that, wherein step e comprises:

After the pile (3) is extracted, if the height of the remaining pile (3) meets with the design specifications, use the rotating device (1) to extract the steel casing (5), while at the same time, according to the level of the top of the remaining pile (3), backfill the hole left after the pile is extracted with backfill material, and then with sand to cover the ground. During the process, the top level of the backfill material should be higher than the bottom of the steel casing (5), and the two should be dynamically spaced from each other by a certain distance until the backfill material reaches the top of the aforesaid hole. Subsequently, continue extracting or pulling out the steel casing until it is completely extracted or pulled out.

9. A construction method for extracting a pile claimed in claim 1, the characteristic of which is that, the diameter of the steel casing (5) is 1.3-3.0m.”

129.The Patent has also contained 2 embodiments and 7 diagrams.  Diagrams 1 to 6 are related to the first embodiment and Diagram 7 is related to the second embodiment.  According to these diagrams, it seems that the first and the second embodiments are providing the details of the working procedures to remove bored piles and H-piles respectively.  The 7 diagrams in the Patent are included in Annex 2 of this Judgment.

130.In support of the patent application, SNE has also filed the Search Report prepared by the State Intellectual Property Office of the Mainland.  The relevant part of the Search Report reads as follows:

「1. 對比文件1 作為最接近的現有技術，其公開了一種提取樁的施工方法，並具體公開了以下技術特徵：該施工方法是將樁從上部依次分節切斷並提取該節樁體，具體步驟包括:沉入套管１：將套管1沉至地下，使套管內含樁的頂部一節，挖掘套管內的土壤；將切割器10放入樁和套管之間；驅動套管運動，在樁的兩節之間的預計斷點附近切斷樁；對切斷的樁進行提取，回填拔取樁之後留下的洞；對比文件1中的技術方案雖然也公開了一種分節切斷樁並提取狀體的施工方法，但對比文件1中並未公開採用圓形楔楔入樁和鋼套管之間以及只驅動該圓形楔從而切斷樁的技術特徵；因此權利要求1所要求保護的技術方案具有新穎性，符合中華人民共和國專利法第二十二條第二款的規定。

2. 上述區別技術特徵既未被檢索到的對比文獻公開，也不屬於本領域中的公知常識，權利要求1的技術方案相對於現有技術而言採用了一種新型的圓形楔作為切斷樁的工具，而且在施工過程中只需要驅動圓形楔繞樁做圓周運動從而扭轉切斷樁，適應性强，並可以帶來所需拔樁力小，能夠拔取深樁且可準確預計出斷點的技術效果，因此相對於現有技術並非顯而易見；因此權利要求1所要求保護的技術方案具有創造性，符合中華人民共和國專利法第二十二條第三款的規定。」(phrases in bold are quoted in the following paragraphs)

131.The parties have not prepared an English translation of the said relevant part of the Search Report, partly because the parties cannot agree on the translations of some of the key phrases.  I therefore set out my own reading of the document.

132.In the said two paragraphs, the examiner compares the pile removal method claimed in the Patent with the existing prior art the closest of which is the Kaneken Patent.  The examiner refers the Kaneken Patent as a method of cutting the pile.  In paragraph 1, the examiner describes the characteristic of the patented method as, after the wedging of the circular wedge into the space between the pile and the casing, it only drives the circular wedge to cut the pile (採用圓形楔楔入樁和鋼套管之間以及只驅動該圓形楔從而切斷樁的技術特徵).  According to the examiner, what is different between the patented method and the method in the Kaneken Patent is that the Patent refers to the use of a new type of circular wedge as a tool to cut the pile (新型的圓形楔作為切斷樁的工具).  During the execution process, it is only necessary to drive the circular wedge around the pile in a circular motion to twist and cut the pile (在施工過程中只需要驅動圓形楔繞樁做圓周運動從而扭轉切斷樁).

133.It is SNE’s case that the Patent, when read by persons skilled in the art, has properly disclosed the alleged rotator and wedge method.  SNE accepts that Hsin Chong might have used a star-shaped wedge as a jamming device in performing the pile removal works.  However, this is only a variant of the invention.  For the purpose of the infringement, the shape of the wedge used by the alleged infringer is not material so long as he is using the wedge for the same purpose as that disclosed in the patent, i.e. as a jamming and immobilising device.  Further, a star-shaped wedge can also be described as a circular wedge, and so the pile removal works performed by Hsin Chong after the termination of the Sub-Contracts are caught by the Claims in the Patent.

134.Hsin Chong and Chim Kee disagree.  According to them, the Patent does not state that the circular wedge would perform the function of a jamming or immobilizing device.  It is their case that the Patent, when properly construed and read by persons skilled in the art, only discloses a method characterized by only rotating a circular wedge to cut the pile.  Such interpretation of the Patent is also supported by the contents of the Search Report submitted by SNE in the application of the Patent.  Further, the Patent is invalid because it has failed to disclose the invention clearly and completely enough for it to be performed by a person skilled in the art without undue burden.  Finally, Hsin Chong denies infringement of the Patent because the Patent specifically refers to the use of a circular wedge, whereas the pile removal works performed by Hsin Chong only involved the use of a star-shaped wedge.

(iv)  The relevance of the expert evidence

135.It is trite law that construction of a patent is ultimately a matter for the court and not the witnesses.  However, since a patent has to be construed in the eyes of persons skilled in the art, the court can take into account the evidence of the relevant experts, who are presumably persons skilled in the art, in construing the terms of the patent itself.  The experts may not be asked what the specification means, but expert evidence may be admissible, even on the issue of construction, for instance to explain technical matters.[29] They are also able to give evidence on the issue of insufficiency, i.e. whether the specification in a patent has disclosed sufficient particulars to enable persons skilled in the art to work out the patent itself.  For the purpose of this case, the persons skilled in the art are construction or civil engineers.

136.According to the order granting leave to adduce expert evidence[30], the experts are supposed to give evidence on prior art only.  Such direction was given at the time when the parties had yet formulated the details of the objection relating to the validity of the Patent.  Subsequently in their expert reports and oral testimony, both experts have also given evidence on technical matters relating to the construction of the Patent and the issue of insufficiency.  As the parties have not taken issue about the admissibility of such evidence, I will consider their evidence on these issues as well.

137.SNE’s expert is Professor Lee.  He has one year of onsite working experience in Hong Kong before pursuing an academic career with the University of Hong Kong.  He is now the Associate Dean in the Faculty of Engineering and Honorary Professor in the Department of Civil Engineering in the University of Hong Kong.

138.According to Professor Lee, his reading of the Patent is that the wedge is being used as a jamming and immobilising device.  The casing is rotated with the use of a powerful rotator.  When sufficient friction is built up between the wedge and the internal surface of the casing, the wedge would rotate together the casing.  As the pile segment has been jammed by the wedge, it will be twisted until it breaks.  This is his understanding of the patented process as described in the Patent.[31]

139.Professor Lee agrees that there are some words and phrases in the Patent which are unclear and confusing.  For example, he agrees that it is not possible to oscillate or vibrate the steel casing into the ground, and so the use of the words “oscillating” and “vibrating” in relation to a rotator may refer to something else.[32]  Further, the use of the words “circular wedge” may not be completely correct as any shape of wedge or assembly of wedges can in fact be used as a jamming and immobilising device.[33]

140.Despite the ambiguities in some of the words and phrases used in the Patent, Professor Lee is of the view that an experienced engineer would be able to work out the same method as alleged by SNE as the rotator and wedge method.

141.Hsin Chong’s expert is Dr Albert Yeung.  He is an Associate Professor of the Department of Civil Engineering in the University of Hong Kong.  He obtained a doctorate degree in geotechnical engineering in 1990.  After working as an academic in the United States for some time, he returned to Hong Kong in 1998.  He worked as a chief engineer in a private firm (during which he was involved in a number of high profile projects such as the reclamation works in Lamma Island and the remedial works after the installation of substandard piles in Tin Chung Court in Tin Shui Wai) and as the Assistant Secretary for the Finances Services and the Treasury of the Hong Kong Government.  He then joined the University of Hong Kong as an Associate Professor.  Throughout the years, he has obtained experience in foundation engineering in Hong Kong through his research and consulting practice in Hong Kong and the United States.

142.Firstly, Dr Yeung is of the view that the Patent is difficult to read and understand.[34] The specification in the Patent is confusing, and he finds that there are quite a number of technical details which do not make sense.[35]  For example, there is no 2.8 metres diameter “precast” concrete pile, and it is not possible to oscillate or vibrate the steel casing into the ground.  Further, the diagrams and the embodiments in the Patent do not correspond with the textual description of the patented process in the specification of the Patent.

143.After reading the Patent a number of times, he has come to the view that the Patent is trying to put forward two different methods: one for the removal of bored piles involving the jamming of something and the other one for the removal of H-piles with a cutting process.[36]  Despite that, Dr Yeung does not know how to jam the bored pile as shown in Diagram 1 in the Patent.  He also does not quite understand what causes the wedge to move around the casing thereby cutting the H-piles.  According to him, the Patent is supposed to teach him something new, but he cannot figure out the exact operation of the patented process.

144.In her final submission, Ms Tam, SC, counsel for SNE, has tried to attack the  creditability of Dr Yeung’s expert evidence on various grounds, including, inter alia, that:

(i)   Dr Yeung may not be a truly independent witness because of the business interest of his private practice;

(ii)   his understanding of the patent law may not be correct; and

(i)   he has written to the court prior to the trial referring to certain matters in the without prejudice meeting between the experts.

145.I do not accept that these criticisms would affect the creditability of Dr Yeung’s evidence.  After listening to the expert evidence for many days, I am convinced that both Dr Yeung and Professor Lee have tried their very best to assist the court in determining the technical matters involved in the case.  Obviously, there are some limitations in their evidence, for example they are not very familiar with the pile removal methods used in some other countries such as Japan, but I do not accept that they are “hired guns” who would just give whatever evidence which is favourable to their respective clients’ case.  Further, Dr Yeung did not hide the fact that he had been writing to the court prior to the trial.  In fact, no suggestion of impropriety has been made by SNE and Dr Yeung has not been cross-examined on such issue at the trial.

(v)   The meaning of the invention claimed in the Patent

146.Having considered all the evidence of the case, I do not think that the parties would disagree that the key concepts or the “pith and marrow” of the rotator and wedge method consist of the following:

(i)   the use of a wedge of any shapes, or an assembly of wedges of any shapes, as jamming and immobilising device between the pile and the internal surface of the casing; and

(ii)   with the trapping of the pile inside the casing, the rotation of the casing causing the pile to twist and to break at a pre-determined point.

147.Does the specification in the Patent disclose such key concepts?

148.Ms Tam answers in the affirmative.  She submits that the use of the phrase “楔入” (or “to wedge in” in English) indicates that the wedge is being used as a jamming device.  In the case that the word “wedge” is to be used as a verb, the Shorter Oxford Dictionary defines it as “1. to tighten, fasten tight by driving in a wedge or wedges; … 3. to drive, push or cleave into something where it is held fast; to fix firmly by driving in, or by pressing tight.”  The concept is therefore different from simply “put”, “insert” or “lower into”.  It connotes tightness and pressure.  On the other hand, the noun “wedge” should be understood in that light as a tool performing those functions.

149.Further, Ms Tam submits that the use of the phrase “扭轉樁” (or “to twist the pile” in English) suggests that the pile is broken by twisting, which can be only be performed by a method like the rotator and wedge method.

150.Despite the able submission of Ms Tam, I am of the view that the specification in the Patent was badly drafted.  Essential particulars are missing, and as a result persons skilled in the art would have serious difficulty in working out the exact process claimed in the Patent.

151.As I see it, the lack of clarity is caused mainly by the following factors.

152.Firstly, the Patent does not specify in clear terms that the wedge is being used as a jamming or immobilising device.  As I see it, the most important part about the alleged wedging process can be found in §1(c) of the Claims.  It refers to “the use of a circular wedge to wedge between the pile and the steel casing”. However, it does not specify whether circular wedge is being used as a cutting or a jamming device.  Even in the oral testimony of Professor Lee, he agrees that the Patent does not so specify[37].  Further, both the phrases “twisting the pile” and “cutting the pile” have been used to describe the method, which would only add to the confusion facing persons skilled in the art as they would be puzzled as to whether the wedge is to be used as a jamming or a cutting device.  As agreed by SNE, the use of a wedge as a jamming and immobilising device is the key concept of the patented process, and so one would wonder why the draftsman of the Patent did not specify such key concept clearly in the Patent itself.

153.Secondly, there is some confusion in the Patent as to what causes the wedge to rotate inside the casing.  If the patented process involves the rotation of the rotator which, by reason of the placement of the wedge as a jamming and immobilising device, in turn causes the wedge to rotate, this should be a very important step in the procedures, and yet it is missing in the specification.

154.Although §4 of the Claims refers to the use of the rotating device to drive the wedge to move in a circular motion around the pile, it misses out an important step, i.e. the rotation of the casing, which because of the placement and the use of the wedge as a jamming device trapping the H-pile, in turn causes the casing and the wedge to move at the same time.  On the other hand, the phrase “to move in a circular motion around the pile” seems to suggest that the rotating device would turn the wedge to move inside the casing and around the pile but without moving the casing itself, and as a result it cuts the pile at a pre-determined depth.  As the evidence of the present case shows, it is feasible to cause a wedge to rotate by itself without rotating the casing, for example with a Reverse Circulation Drill (“RCD”)[38], and so one should not leave it to the persons skilled in the art to speculate as to what sort of method is covered by the Patent.

155.In the course of the evidence, SNE tries to establish that it is not practicable to cause a wedge to rotate by itself with a RCD.  Although one cannot be certain as to the practicability of such method, one should not forget that even Professor Lee had serious doubt as to whether the rotator and wedge method could work in practice when he first read the Patent, and it was only after the presentation by the personnel of SNE that he was convinced that the rotator and wedge method was workable.[39]  In my judgment, the specification should provide more details of the patented process so that the addressees do not need to speculate as to what was in the mind of the patentee.

156.Thirdly, the specific reference to the shape of the wedge, i.e. circular in shape, is causing confusion.  According to SNE, the concept of the patented process is that the wedge would be used as a jamming and immobilising device.  This is the “pith and marrow” of the claim.  However, since the internal surface of the casing and at least the bored pile are circular in shape, one should not be too difficult to understand that a circular wedge does not serve very well as a jamming or immobilising device under such circumstances.  On the other hand, a circular-shaped object may serve very well as a cutting device, which seems to suggest that the method involves the circular movement of the wedge around the pile as part of the cutting process.

157.In Diagram 6 of the Patent, it refers to a drum-shaped object with a trapezoidal groove.  According to Ms Tam, such drum-shaped object can be described as a circular wedge.  She even seems to suggest that a star-shaped wedge can also be described as a circular wedge.

158.Despite Ms Tam’s attempt in trying to stretch the meaning of the word “circular”, I find that the specification in the Patent is placing undue burden on persons skilled in the art in trying to work out the details of the patented method.  According to the specification, Diagrams 1 to 6 are illustrations for the operation involved in the first embodiment, which apparently relates to the extraction of bored piles.  The shape of the wedge in Diagram 6 does not correspond with the wedge depicted in Diagram 1.  I understand that Diagram 1 shows a side-view of the extraction process, however even with the lengthy explanations given by the experts, I cannot see how a drum-shaped object with a trapezoidal groove can be used as a jamming or immobilising device if it is placed in the position as indicated in Diagram 1.  Even in Diagram 7, I cannot quite understand how the placing of the drum-shaped wedge (as shown in Diagram 6) in the position as shown in the diagram can function as a jamming or immobilising device.

159.In his testimony, Dr Yeung has already explained in some details that a drum-shaped wedge may not serve very well as a jamming device[40]. I agree that it is still possible to jam the pile with the use of a drum-shaped wedge together with some other wedges (apparently drum-shaped wedge had been used at the Site on some occasions), I cannot still understand why the draftsman of the Patent, when he tried to present the concept of jamming, would have used a circular wedge or a drum-shaped wedge.  As a jamming device placed inside the casing with a circular surface, one would certainly try to use a wedge of other shapes or a wedge with many protrusions like a star-shaped wedge.  On the other hand, a circular wedge, together with the positioning of the wedges shown in Diagrams 1 and 7, seem to suggest that the patented process involves the use of a circular wedge as a cutting device.  This would be quite confusing even in the eyes of persons skilled in the art.

160.Fourthly, the diagrams in the Patent are causing confusion as they do not quite correspond with the description of the rotator and wedge method alleged by SNE.  Instead of showing that the wedge is being used as a jamming and immobilising device, the diagrams in the Patent seem to suggest something else.  As mentioned above, the diagrams showing the positioning of the wedges do not suggest that the wedges are being used as a jamming device.  As shown in the diagrams and photograph in Annex 1, in order for the wedge to perform such function, the wedge should be placed in the position to fill in the void between the pile and the casing, thereby trapping the pile inside.  Undoubtedly, one of the key concepts of the rotator and wedge method is the trapping of the pile inside the casing, and yet such key concept is not shown in the diagrams in the Patent.

161.Even Professor Lee has problems with the diagrams[41]. Professor Lee does not understand how the method works in extracting the piles by looking at the diagrams.  At one stage, he agrees that the wedge shown in Diagram 2 is apparently used to cut rather than to rotate[42].  This echoes the contention of the defence that the wedge is being used as a cutting rather than a jamming device.  On the other hand, Dr Yeung testifies that if the wedge is put in the position as shown in Diagram 7, it would not drive the pile to twist at the same time.  Further, the wedges in Diagrams 6 and 7 are of different shapes[43].  If the Patent has specified in clear terms that the wedge would perform the function of a jamming and immobilising device and not a cutting device, a person skilled in the art may try to find a way to jam the wedge.  But if the Patent has not so specified, then a person skilled in the art may think that the wedge is being used as a cutting device.

162.In questioning Dr Yeung, SNE seems to suggest that the drum-shaped wedge with a trapezoidal groove would work well if the H-pile is rested with excessive disinclination.  However, according to the specification in the Patent, the wedge in Diagram 6 is used for the extraction of bored piles as described in the first embodiment.  How does a wedge of such shape work in the removal of bored piles?  Further, as I have mentioned above, the positioning of the wedges as shown in Diagrams 1 and 7 does not correspond with the use of the wedge as a jamming device and so it cannot assist SNE’s case.

163.Fifthly, it is stated in the Patent that the method can work both in relation to the extraction of bored piles and H-piles. Unfortunately, after hearing the expert evidence for many days, I still do not know how the patented method works in the case of the extraction of bored piles.

164.According to SNE, the patented method involves the use of a wedge of any shape as a jamming and immobilising device.  The device would try to jam the pile against the internal surface of the casing. In such case, the rotation of the rotator would cause the pile to twist and to break.  However, how does this method work in relation to the bored piles? Although some bored piles had been successfully removed at the Site by SNE, even Professor Lee acknowledges that he cannot quite understand how the patented method works in relation to bored piles[44]. In the case of Dr Yueng, he is of the opinion that the Patent seems to teach two different methods relating to the extraction of bored piles and H-piles. In the case of the former, it seems that some kind of jamming concept is disclosed, though he does not know how it works out in practice.  For H-piles, the Patent seems to suggest that some kind of method is being used to cut (but not to twist) the H-piles.

165.This illustrates the confusion facing the readers who are persons skilled in the art.  The Patent teaches them that the method can work both in the removal of bored piles and H-piles.  In such case, they would try to figure out a method which would fit both kinds of piles.  If the wedge is being used as a jamming device, then they would start to puzzle as to how such method works in the case of removing bored piles.  However, if the wedge is being used as a cutting device, it may well work for both types of piles.  In the end, persons skilled in art would be confused as to the exact process identified in the Patent and they have to speculate as to what was in the mind of the patentee.

166.Sixthly, as described by Dr Yeung in his expert reports, there are many technical flaws in the description of the patented process in the Patent.  Error in the specification may not be a ground for invalidating a patent.  If the mistake is an obvious one to a person skilled in the art, he would try to correct the mistake himself.  Further, it has been mentioned in the authorities that person skilled in the art, using the common general knowledge, would try his best to figure out the patented process with a view to achieve success.  Despite these attempts, with all the ambiguities and the technical flaws in the Patent, even person skilled in the art would start to query whether the alleged patented method, if he can figure out the exact process, is workable.  This would only add to the confusion facing the addressees of the Patent.

167.In my judgment, these 6 factors are the main reasons for the ambiguities. Although one single factor may not be enough to invalidate the Patent, a combination of these 6 factors would create considerable confusion in the minds of persons skilled in the art, and they would have serious difficulty in working out the patented process themselves.

168.In fact, Professor Lee was facing the same difficulty when he was asked to read the Patent for the first time.  In his oral testimony, he agrees that he had difficulty in understanding how the method worked just by looking at the textual description in the specification in the Patent.  However, after someone from SNE had made a presentation to him about the method and informed him that the method was workable, he agreed that the Patent had disclosed the rotator and wedge method as claimed by SNE.[45]

169.Although Professor Lee claims that the initial difficulty facing him might be caused by the poor quality of the diagrams supplied to him by that time.  However as I have mentioned above, even Professor Lee himself has difficulty with the diagrams when he is asked to explain the meaning of the invented process, and so the situation should have been the same even if diagrams of better quality were supplied to Professor Lee at the outset.

170.In my judgment, this shows the danger of reading the Patent with the benefit of hindsight.  A patent is a document addressed to the public.  When the addressees and the persons skilled in the art are reading the Patent, they are not provided with the additional materials given in the presentation to Professor Lee.  Without these additional materials and taking into account the ambiguities and the confusion about the specification of the Patent mentioned above, I find that a person skilled in the art, like Dr Yeung and Professor Lee when he first read the Patent, would face the same difficulty in ascertaining what is the invented process covered by the Patent, and as a result the alleged invention has not been disclosed clearly and enough for it to be performed by a person skilled in the art without undue burden.

171.In her submission, Ms Tam submits that the specification in the Patent is not unclear, as similar descriptions of the rotator and wedge method can be found in some of the method statements submitted to MTRC and the Buildings Department.  However, like Professor Lee, the relevant engineering personnel involved in the Project were getting the same kind of presentation from SNE.  If they had any doubt about the method, they could always get clarifications from SNE and Hsin Chong.  On the other hand, in understanding the meaning of the invented process, the specification in the Patent has to be read without these additional materials.  Although persons skilled in the art would apply their common general knowledge in trying their best to figure out the invention with a view to achieve success, they would face the same difficulty in trying to ascertain the exact operation of the invented process.  Hence, the fact that similar descriptions had been used in the previous method statements does not, in my judgment, take SNE’s case any further.

172.Before leaving the issue of insufficiency, I would like to add one more observation about the ambiguity of the alleged patented process.  Throughout the trial, both experts have proceeded on the basis that the rotator and wedge method is something like the method used by Hsin Chong after the termination of the Sub-Contracts as shown in the photograph in Annex 1.  However, when Sugisaki gives evidence after the experts, it is surprising that his explanation of the rotator and wedge method is somewhat different from the understanding of both experts[46].  Instead of excavating the soil around the pile and putting a wedge to fill in the void to trap the H-pile, the method described by Sugisaki involves the insertion of the wedge into the soil around the pile.  Such process would drive out the water in the soil and harden the soil around the pile.  When the rotator rotates the casing, it would then twist the pile.  Such method involves the concept of hardening the soil around the pile, which is missing in: (i) the specification in the Patent; (ii) the explanation of the method by Professor Lee; and (iii) the operation actually carried out by Hsin Chong after the termination of the Sub-Contracts.  In my judgment, this illustrates the vagueness and the confusion about the actual operation of the alleged patented process.

173.In construing the specification in the Patent, I have reminded myself that the court has to adopt a purposive approach.  I appreciate that the draftsman of a patent may have difficulty in describing something new, and so the court should not adopt a legalistic approach in construing the meaning of an invention, like the approach of an lawyer in construing the meaning of a contract or a piece of legislation.  Nevertheless, the Patent here is not concerned with some completely new theory or concept which is difficult to express in conventional language.  It is only about the extraction of piles.  There are various ways for the extraction of building piles involving the use of similar equipment, and it is how the use of such equipment, or the new concept in the use of such equipment, which is the subject matter of the Patent.  The language used by the patentee in describing the process is therefore of critical importance.  Although one does not expect the Patent to be a technical manual and the drawings contained therein to be working drawings, the Patent should identify the novel concept involved in a reasonably clear manner.  If the Patent is reasonably capable of being understood by persons skilled in the art as referring to two or more different methods, the draftsman of the Patent should have supplied sufficient particulars in the specification so that there is a reasonable degree of certainty about the Patent.

174.In my judgment, the Patent here has failed in this regard.  No matter who bears the burden of proving or disproving the validity of the Patent, the Patent is still invalid due to insufficiency.

(vi)  The relevance of the Search Report

175.This would have been sufficient to dispose the case.  However, in case my conclusion above is held to be wrong, it would be prudent for me to deal with the other issues raised by the parties.

176.In his submission, Mr Pao, counsel for Hsin Chong, submits that the contents in the Search Report do not support the interpretation of the Patent as contended for by SNE, and so the invented process claimed in the Patent is not the rotator and wedge method.  This case therefore raises one very interesting question: are the contents of a search report filed in support of a short-term patent relevant for the construction of the specification in the patent?

177.Ms Tam submits that as there is no evidence to show that the search examiner is a person skilled in the art, his or her reading of the claim in the Patent is quite irrelevant for the construction exercise.

178.As a patent is defined by that specified in a claim of the specification of the patent, as interpreted by the description and any drawings contained in that specification[47], the contents of a search report are generally irrelevant for the court in constructing the terms in a patent.  But in my judgment, such contents may be relevant in considering another more fundamental challenge against the validity of a short-term patent.

179.S 113(8) of the Patents Ordinance provides:

“In this section, ‘search report’ … … means a report –

(a) by a prescribed searching authority of a search undertaken by that authority as to the prior art in relation to the invention, based on the claims and having due regard to the description and drawings (if any); and

(b)  which contains the prescribed information.”

180.The subject of the search is therefore the alleged invention as the search examiner finds “based on the claims and having due regard to the description and drawings”.  Without the search examiner’s finding as to what is the alleged invention, the report would be deprived of a subject and would become meaningless.  As Mr Pao puts it, the question is: in relation to what was the prior art search conducted?

181.Perhaps one can also approach the issue from another angle.  Assuming that the patentee claims that the patented method is A, whereas the search examiner describes the patented method as B, is the short-term patent still a valid one?

182.In my judgment, the answer must be no.  As the search examiner describes the patented method as B, the prior art search is only conducted by reference to the patented method described as B.  In such circumstances, one cannot be sure whether there was then existing prior art in respect of the patented method described as A.  As the search report filed in support of the short-term patent is defective, the patent should not be regarded as a valid one.

183.An applicant for a short-term patent therefore has a duty to make sure that the contents of the search report, in particular the description of the patented method in such report, are consistent with the description of the same in the specification of the patent.

184.In the present case, the inconsistency is obvious. In the Search Report, the examiner describes the characteristic of the patented method as, after the wedging of the circular wedge into the space between the pile and the casing, it only drives the circular wedge to cut the pile.  According to the examiner, what is different between the patented method and the method in the Kaneken Patent (which is described as a method of cutting the pile) is that the Patent refers to the use of a new type of circular wedge as a tool to cut the pile.  Although the phrase “to twist and cut the pile” also appears in the Search Report, the examiner clearly refers to the patented method as “only” driving the circular wedge to cut the pile.  On the other hand, the “pith and marrow” of the patented process alleged by SNE involve the driving of the casing which, through the use of the wedge as a jamming and immobilising device, also drives the wedge itself.

185.In my judgment, this is a big difference.  There must be an implication by clearly stating in the Search Report that it “only” drives the circular wedge to cut the pile, and that what is novel about the patented process is that it involves “a new type of circular wedge to cut the pile”.  In particular, it is proven that the circular wedge can be made to rotate itself by an independent device without rotating the casing.  Hence, if the examiner has chosen to describe the patented process in such manner, the court has no option but to conclude that the prior art search was conducted on the basis that the prior art was compared with the patented method so described by the examiner.

186.Hence, assuming that the rotator and wedge method is properly disclosed in the Patent (which I do not accept it to be the case), I have to hold that the Search Report filed by SNE in support of the patent application is defective because the prior art search was conducted on the basis of the understanding of the Patent as described by the examiner, which is not quite the same as the rotator and wedge method claimed by SNE.  As a result, the Patent should not be regarded as a valid patent covering the rotator and wedge method.

187.There may be a consequential question arising from the aforesaid analysis.  If the search report is defective in the sense that it fails to prove the novelty of the patented process, can the patentee prove the novelty of the patent at the trial without relying on the search report with a view to salvage the patent itself?

188.As this issue has not been fully argued by the parties, I prefer to leave this question to be decided at a proper venue in the future.  In any event, SNE has failed to discharge such burden in the present case.  In his testimony, Professor Lee acknowledges that his expert report was only intended to deal with the state of the art in Hong Kong[48].  He acknowledges that he cannot be sure if he knows all the pile removal methods in Hong Kong[49].  He further acknowledges that he has not conducted a patent search in Hong Kong[50], not even to mention a search of the relevant patents elsewhere.  His knowledge about the pile removal methods in other parts of the world is also limited.  In such circumstances, the expert evidence of Professor Lee cannot serve the function of a search report in the case of an application for a short-term patent, and hence the consequential question is only an academic issue in the present case.

(vii)  The “variant” argument

189.Again it is quite unnecessary for me to deal with the issue as to whether the use of a star-shaped wedge is a variant of the patented process.  As I do not accept that there has been sufficient description or disclosure of the patented process in the specification, it would be difficult, and indeed impossible, for me to decide on the artificial question that, if sufficient particulars have been provided for in the Patent, whether the use of a star-shaped wedge by Hsin Chong for removing the H-piles after the termination of the Sub-Contracts amounts to an infringement of the patent. There are simply insufficient particulars in the Patent for me to decide whether this is a variant.  Hence, I would not answer this question in this Judgment.

NOVELTY OF THE PATENT AND OBVIOUSNESS

190.I then turn to the second group of defences which focus on the challenges against the Patent for want of novelty and for want of any inventive step.  Undoubtedly, the questions of novelty and obviousness depend on what the invention is.  If the Patent has not disclosed the rotator and wedge method, or has not disclosed it in a sufficient manner, SNE’s claim has already failed.  Nevertheless, if my judgment on the question of insufficiency is held to be wrong, it would be desirable for me to deal with the other challenges against the Patent based on the lack of novelty and obviousness. However, the consideration of these issues will have to be made on the assumption that sufficient particulars of the rotator and wedge method have been provided for in the Patent to enable persons skilled in the art to work out the patented process without undue burden.

191.S 93(1) of the Patents Ordinance defines a patentable invention as follows:

“An invention is patentable if it is susceptible of industrial application, is new and involves an inventive step.”

192.Ss 94 (1) and (2) deal with the issue of novelty:

“(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise everything made available to the public (whether in Hong Kong or elsewhere) by means of a written or oral description, by use, or in any other way-

… …

(b)  before the date of filing of an application for a short-term patent for the invention … …”

193.Hence, if an inventor has made his invention available to the public before the application date of the patent, it would invalidate the patent itself.  As to the meaning of disclosure of the invention to the public, it is trite law that:[51]

(i)   it is sufficient if it is communicated to a single person, by way of documents, prior use or otherwise, who is free in law and equity to use the information communicated to him; and

(ii)   the disclosure must amount to an “enabling disclosure”, i.e. sufficient information has to be provided for the recipient to be able to put the invention into practice himself.

194.In respect of the challenge of a patent based on obviousness.  S 96(1) of the Patents Ordinance provides that:

“An invention shall be considered as involving an inventive step, if having regard to the state of the art, it is not obvious to a person skilled in the art.”

195.The attack on the lack of novelty and obviousness can be sub-divided into two sub-categories.  First, Hsin Chong and Chim Kee claim that the rotator and wedge method was widely known and extensively used in Japan prior to the application and the alleged patented process involved no inventive step in light of the prior art in Japan as at the application date. In any event, SNE has failed to prove that the patented method is a novel invention or involves an inventive step in the light of the existing prior art, and that it has failed to discharge the burden of providing the validity of the Patent under s 129(1) of the Patents Ordinance.  Second, SNE had by itself disclosed the rotator and wedge method to various personnel involved in the Project and the public prior to the application date.

196.Hence, the first sub-category relates to the prior art in Japan and s 129(1) of the Patents Ordinance, and the second sub-category is about the disclosure of the patented method by SNE itself mainly in Hong Kong.  As I will further explain below, I reject the attack under the first sub-category, but I agree with Hsin Chong and Chim Kee that the Patent is invalid because SNE had disclosed the patented process itself prior to the application for the Patent.

(i)  Challenge based on the prior art in Japan and s 129(1) of the Patents Ordinance

197.I start with the challenge based on the prior art in Japan and s 129(1) of the Patents Ordinance.

198.In lodging such attack, Hsin Chong and Chim Kee firstly rely on a pile removal method disclosed in the Brochure of Nippon Sharyo as a piece of prior art, and as a result the alleged patented process was not novel or lacked any invention step at the time of the application of the Patent.

199.Secondly, it was revealed in an email dated 13 June 2011 written by Sugisaki that there were many patents in Japan relating to the use of rotators in extracting piles.  The relevant part of the email reads as follows:

“Currently in Japan there are a large number of patents in relation to rotator. Major patents are not yet applied for in Hong Kong. I cannot say rotation and wedging method alone is sufficient. Therefore, let’s arrange quickly and then proceed with the application.”

200.Hsin Chong and Chim Kee therefore submit that SNE should have disclosed these patents in relation to rotator because they may encroach on the validity of the Patent.  Further, it is clear from the evidence that the prior art which may affect the validity of the Patent is all from Japan, and yet SNE has not adduced any evidence on the prior art in Japan.  In such circumstances, SNE has failed to discharge the legal burden in establishing the validity of the Patent under s 129(1).  In other words, SNE has failed to clear the doubt regarding the validity of the Patent.

201.The problem with the present case is that, as admitted by Matsumoto in his testimony[52], Japan has more advanced technology for pile removal works.  Unfortunately, as demonstrated by their evidence, both experts have experience in the local construction field but their knowledge about pile removal works in other parts of the world, in particular Japan, is very limited.  Furthermore, if the rotator and wedge was a novel invention in Japan at the time of the application, one would query why the Japanese partners of SNE, in particular Sugisaki, had not made an application to obtain a patent for the rotator and wedge method in Japan.  These Japanese partners mainly carry on their businesses in Japan, and so it is surprising that they have not applied for a patent in Japan to protect their interests.  In such circumstances, who bears the burden of proving the validity of a short-term patent, including the novelty of the invention and the involvement of inventive step, is of some significance here.

(a)  Legal principles about the burden of proof of the validity of a short-term patent

202.As I see it, there is a difference between the burden of proof of the validity of a standard patent vis-à-vis a short-term patent.

203.As the application for a standard patent has undergone a detailed search and examination process, the law generally presumes the validity of a standard patent.  It is trite law that it is for the party who challenges the validity of a standard patent to bear the onus of proving invalidity[53]. Further, under O 103 r 21 of the RHC, anyone who challenges the validity of a standard patent would have to supply and plead the particulars of objection, so that the patentee can know full well the objections that he has to face at the trial.

204.On the other hand, s 129(1) of the Patents Ordinance provides that an owner of a short-term patent has the burden of proving the validity of a short-term patent.  How does such provision make a difference in the law in term of the burden of proof?  It seems that this is a novel point which has not been decided before.  In particular, since England does not have the short-term patent system, there is no English authority on the issue.

205.In his submission, Mr Pao for Hsin Chong submits that, in a short-term patent infringement action, the court has to put itself in the position of an examiner in the search and examination process of a standard patent application.  Irrespective of what have been pleaded in the particulars of objection filed by the alleged infringer, the judge (like an examiner) must make up to his own mind as to what objection should be raised, and the owner, just like in the case of the search and examination process in a standard patent application, simply has the ultimate burden of proving the novelty of the patent against the prior art anywhere in the world.  Apart from the Brochure, Hsin Chong and Chim Kee have not pleaded any other prior art in Japan to challenge the validity of the Patent.  Nevertheless, Sugisaki has revealed that there are many patents relating to rotators in Japan.  Mr Pao therefore submits that, despite the lack of such complaint in the pleading, SNE has the duty to adduce expert evidence generally on the prior art in Japan in order to show that the rotator and wedge method was novel in Japan the time of the application.  In failing to do so, SNE has failed to discharge the burden of proving the validity of the Patent under s 129(1) of the Patents Ordinance.

206.I cannot accept such proposition, as it would place an onerous burden on the patentee which, in practice, would be quite impossible to discharge.  If Mr Pao’s argument is correct, a defendant in a patent infringement action can just ignore his obligation to plead the particulars of objection. He can simply rely on any materials revealed at the trial to challenge the novelty of the invention.  This cannot be right.  If the patentee does not know the case he has to meet before the trial and he has to anticipate all the possible challenges that can be lodged by the alleged infringer to attack the novelty of the patent, there is no way that the patentee can discharge such onerous duty at the trial.

207.On the other hand, does it mean that the burden of proof in the case of a short-term patent is the same as that of a standard patent?  In other words, s 129(1) adds nothing new to the law.  So long as the owner has complied with all the minimum and formality requirements in obtaining the registration of a short-term patent, the patent is prima facie valid and the burden then shifts to the alleged infringer to challenge the validity of the patent.

208.In my judgment, such proposition cannot be right either.  Every applicant for a short-term patent would have to comply with these minimum and formality requirements in obtaining the registration of the patent.  If the compliance with these requirements can have the effect of discharging the burden of proving the prima facie validity of the short-term patent, this would essentially mean that every short-term patent is presumed to be prima facie valid, and s 129(1) is very much a redundant provision.

209.As I see it, s 129(1) is a very important provision which makes the enforcement of a short-term patent different from that of a standard patent.  Because the application has not undergone a detailed search and examination process, s 129(1) places the ultimate burden of proving the validity of a short-term patent on the patentee.  However, s 129(1)(b) also stipulates that evidence by the proprietor which is sufficient to establish prima facie the validity of the patent shall, in the absence of evidence to the contrary, be sufficient proof of such validity.  In my judgment, if the alleged infringer has not put forward evidence to the contrary, for example evidence challenging the novelty of the patent, then the patent is prima facie valid.

210.In order not to have a radical change of the procedural rules for litigation and to avoid surprises, the alleged infringer would still have to comply with O 103 r 21 in supplying the particulars of objection. Evidence to the contrary can then be adduced according to these particulars of objection.  Once the alleged infringer has adduced such evidence, the ultimate burden remains on the owner to prove the validity of the patent.  This is no different from the burden of proof of an applicant in a standard patent application, who bears the burden of overcoming any objections raised by the examiner of the designated patent office during the examination process.  This approach is, in my judgment, consistent with all the statutory provisions and it would be a fair and workable approach without placing undue burden on either party to the litigation.  I also agree with Mr Wong, counsel for Chim Kee, that the legislation cannot possibly have intended to give the owner of a short-term patent an advantage over the owner of a standard patent in term of the burden of proof.

211.Before I leave the legal principles governing s 129(1), I will deal with a pleading issue raised by Hsin Chong.  In the Statement of Claim, SNE has only pleaded that the Patent “is and was at all material times in force”.  Relying on a passage in Halsbury’s Laws of Hong Kong[54], Mr Pao submits that such pleading is defective because SNE has failed to plead that the Patent is a valid one pursuant to s 129(1).

212.In my judgment, this is only a technical objection which does not carry very much weight based on the facts of the present case.  Throughout the proceedings, all the parties have been fully aware that the validity of the Patent is one of central issues of the case.  In such circumstances, the court should not allow such technicality to affect the consideration of the overall merits of the case, and so I reject such technical objection raised by Hsin Chong.

(b)  Evidence on prior art adduced by the defence to challenge the validity of the Patent

213.The question here is how to apply the aforesaid principles to the facts of the present case.  So far as the prior art in Japan is concerned, Hsin Chong and Chim Kee have only pleaded the pile removal method as disclosed in the Brochure to challenge the Patent for want of novelty or for want of any inventive step.  In the absence of any other plea about the prior art in Japan, Hsin Chong and Chim Kee are not entitled to complain that SNE has failed to adduce expert evidence generally on the prior art in Japan in discharging the burden of proving the validity of the Patent.  As I have mentioned above, although the patentee has the ultimate burden of proving the validity of a short-term patent, he only has the burden of disproving the particulars of objection put forward by the alleged infringer.  The patentee does not need to deal with unpleaded objections.  In such case, the court should just focus on the Brochure which is the only piece of prior art adduced by Hsin Chong and Chim Kee to challenge the validity of the Patent.

214.The relevant page in the Brochure is included in Annex 3 of this Judgment.  There is no serious dispute between the parties that at least the Japanese version of the Brochure was available to the public before the application date of the Patent.  Although the Brochure was apparently printed in Japanese, the web-site of Nippon Sharyo contains an English version of the Brochure.

215.The Brochure carries the title “Underground – Obstacles Removal”.  A number of methods to remove piles are introduced in the Brochure, with the description of one of the methods as “cut and break a steel pipe with casing bits”.  3 diagrams are included to illustrate the operation of the method.  The method can be used to cut circular steel pipes and H-piles. The method consists of 3 steps: (i) cutting by casing bits; (ii) breaking by chisel; and (iii) excavating by hammer grab. The description of the method appears in the bottom of the page with the English version reads as follows:

“Steel pipes and H-shape beams can be easily removed after cutting them into two pieces by casing bits. Sometimes, a hammer grab is dropped into between the casing and the cut pieces of the steel pipe. Then, remove the cut pieces by rotating the casing together with hammer grab, resulting the cut pieces to be twisted and broken.”

216.As I see it, this method is not the same as the rotator and wedge method.  Although it is mentioned that the casing would be rotated together with the hammer grab resulting the cut pieces to be twisted and broken, it is not specified that the hammer grab would perform the function of a jamming or immobilising device.  Neither is such function shown in the diagrams.  Based on the very limited materials available to the court, I am not sure that the Brochure is referring to the same rotator and wedge method.

217.The next question is, even the method may not be the same, whether the rotator and wedge method involves an inventive step if, having regard to the method shown in the Brochure, it is not obvious to a person skilled in the art.  This is the “obviousness” question.

218.In my judgment, it is very difficult for me to answer this particular question because of my earlier ruling that the Patent should be declared invalid due to insufficiency.  At this stage, the court knows very little about the method shown in the Brochure.  However, there is one thing in common between the description of the method in the Brochure and that of the patented method in the Patent, that is the missing of some of the key concepts of the rotator and wedge method.

219.It is common ground that the “pith and marrow” of the rotator and wedge method consist of the following: (i) the performance of the wedge as a jamming device trapping the H-pile inside the casing; and (ii) the rotation of the casing which, through the use of the wedge as a jamming and immobilising device, in turn causes the wedge to move and to twist the pile.  In the specification in the Patent, these key concepts are not clearly specified and as a result persons skilled in art may have difficulty working out the method, in particular they may be misled to believe that the wedge is to be used as a cutting device.  The description of the method in the Brochure also lacks these key concepts, but the Brochure actually gives a better description of something like the rotator and wedge method because it refers to the rotation of the casing together with the hammer grab (though hammer grab may not serve very well as a jamming device) which is not mentioned in the specification of the Patent itself.

220.The interactions between different grounds to challenge the validity of a patent are discussed in Terrell on the Law of Patents[55]. In particular, the learned authors said the following in relation to the interaction between insufficiency and obviousness:[56]

“It is not uncommon for the grounds of obviousness and insufficiency to be argued in the alternative, the contention in an appropriate case being that either the difference between the cited prior art and the claim is such that the invention would have been obvious to the skilled addressee given the state of his/her common general knowledge, or if not (because some necessary aspect was not part of the common general knowledge) then the specification insufficiently discloses how the invention is to be performed.

Such an interrelationship was considered by then Court of Appeal in Halliburton v Smith, where it was stated:

‘We would add one further comment here: there is an interrelationship between obviousness and insufficiency. At the first blush one might suppose that an idea which requires masses of work to implement would be more readily rejected by, or less likely to occur to, the notional unimaginative skilled person/team who is the addressee than one which can be readily put into practice. This produces an apparent paradox: the less sufficient the description, the less is an idea likely to be obvious. The answer to the paradox is this: that if the notional skilled person/team is one that is prepared to contemplate an immense amount of work, that attribute must also be considered part of the person/team’s consideration of what is obvious. Obviousness and sufficiency of description must be considered by the same person/team.’

However the last sentence must be qualified having regard to the subsequent decision in Schlumberger v EMGS.”

221.The court is perhaps facing the same paradox here.  Although the person skilled in the art for obviousness is not necessarily the same person skilled in the art for performing the invention once it is made (as observed by the English Court of Appeal in Schlumberger v EMGS[57]), I am of the view that, in the present context, persons skilled in art, when they have difficulty in working out the exact method under the Patent, would have the same problem when they have to work out the rotator and wedge method just by studying the method described in the Brochure.  On the other hand, if persons skilled in the art would have been so skilful in working out the rotator and wedge method by studying the specification in the Patent, which I do not accept it to be the case, the rotator and wedge method would have been obvious to them after studying the method described in the Brochure.  In other words, the Patent involves no inventive step.

222.In the Judgment above, I have already ruled that the Patent is invalid for insufficiency, as the specification has failed to disclose sufficient particulars to enable a person skilled in the art to work out the alleged patented process without undue burden.  As the key concepts of the rotator and wedge method are missing both in the specification in the Patent and in the description of the method in the Brochure, I do not accept that the rotator and wedge method is obvious to a person skilled in the art after studying the method described in the Brochure.  Hence, the challenge based on the prior art in Japan and s 129(1) of the Patents Ordinance fails.

(ii)  Challenge based on the disclosure of the alleged patented method by SNE itself

223.Given my judgment on the insufficiency of the specification, the attack based on the prior art in Japan is not a strong ground to challenge the validity of the Patent.  However, SNE had, prior to the application date, disclosed the rotator and wedge method to a lot of engineering personnel involved in the Project and performed the pile removal works using such method at the Site.  Assuming that the Patent is not bad for insufficiency, it remains a serious question as to whether the Patent is also invalid for want of novelty by reason of prior enabling disclosure of the patented method by SNE itself.

(a)  Disclosure of the method to the personnel involved in the Project

224.It is the case of Hsin Chong and Chim Kee that SNE and its partners had disclosed the rotator and wedge method to various persons involved in the Project prior to the application date.  They claim that the enabling disclosures were made on the following occasions, inter alia:

(i)   the provision of various method statements, in particular the May 2010 Method Statement and another one dated 9 October 2010, which were submitted to MTRC or the Buildings Department relating to the pile removal works of the Project;

(ii)   the visit to the Hamacho site in Japan arranged by the Japanese partners of SNE in mid-April 2010 and attended by Wilkin Lam and the engineering personnel of Dragages;

(iii)   the visit to the Motoyawata site arranged by SNE and attended by, inter alia, Frankie Lam of Hsin Chong on 17 August 2010;

(iv)   the oral presentations made by Sugisaki or SNE on or about 18 May and 9 July 2010 to the engineering personnel of Dragages, MTRC, Railway Development Office of the Highways Department and Ove Arup & partners Hong Kong Limited; and

(v)   the actual performance of the pile removal works at the Site by SNE prior to the application of the Patent.

225.SNE agrees that it had disclosed the rotator and wedge method in various method statements submitted to Hsin Chong, Dragages, MTRC, the Buildings Department and other related parties who could have access to these documents.  It is also not in dispute that the method was made available and disclosed to all the personnel and workers involved in the pile removal works at the Site prior to the application date.  Despite these disclosures, SNE claims that they do not invalidate the Patent because they were covered by express or implied obligations of confidence.

226.In support of SNE’s contention, Ms Tam submits that the law has long recognised that parties tending for and involving in commercial dealings are subject to obligations of confidence to each other.

227.In Coco v AN Clark Engineering[58], Megarry J held:

“ … … where information of commercial or industrial value is given on a business-like basis and with some avowed common object in mind, such as a joint venture or the manufacture of articles by one party for the other, I would regard the recipient as carrying a heavy burden if he seeks to repel a contention that he was bound by an obligation of confidence.”

228.In Catnic v Evans[59], an architect showed a model to a number of parties who he hoped to interest in making it commercially.  There was no confidentiality agreement.  Falconer J held that this was not public disclosure.

229.In Strix v Otter[60], the parties were in a joint venture and had a mutual obligation of confidence.  Communications between the parties were not invalidating disclosure.

230.In Intertechnique SA v BE Intellectual Property Inc[61], the Board of Appeals of the European Patent Office considered whether presentations of a gas mask for the purpose of soliciting orders prior to application of a patent to Boeing and United Airlines was prior user.  There was no explicit request of confidentiality.  The Board of Appeals held:[62]

“Therefore, in the light of the foregoing, the sole absence of an explicit request of confidentiality is not sufficient for concluding with certainty that there was no confidentiality at the demonstrations because secrecy may result from an ethical conduct of the employees of big companies like Boeing and United Airlines.”

231.In Qualcomm v Nokia[63], a number of documents were circulated within standards setting bodies (including the competitors of Qualcomm) before the priority date of the patent.  Of most relevance to the case was a Cellular Telecom Industry Association (“CTIA”) paper which was circulated to CTIA and its members to evaluate Qualcomm’s technology. There was no express undertaking of confidentiality.  Floyd J concluded:[64]

“… … The document was supplied to the CTIA for a limited purpose, namely for it to evaluate CDMA technology. It was only in that limited context that it was free to make use of the document. It is undoubtedly the case that the contemplated process of evaluation of the technology carried with it the risk that the information in the CTIA paper might have been further disclosed, so as to make it available to the public. But, in my judgment, it was not established that further disclosure ever happened. The provision of the document to the CTIA did not itself make the document available to the public.”

232.Despite the able submission of Ms Tam, I do not accept that there should always be express or implied confidentiality attached to all the information passed between two business partners who are working on the submission of a tender or a joint venture project.  Whether confidentiality should be so attached depends very much on the nature of the information.  In all the cases relied on by SNE, the subject matters of the disclosure were related to some sensitive new inventions or products.  In such circumstances, even if there was no explicit request of confidentiality, the law would encumber such kind of communication with an obligation of confidence, express or implied, and as a result the communication has no invalidating effect.  However, if a partner of a business project makes a representation to another to the effect that the information contained in the communication has already been in the public domain, then the person who receives the information is free in law and equity to make use of the information for himself, with the effect that the disclosure would have an invalidating effect.

233.The circumstances under which the Japanese partners of the SNE had introduced the rotator and wedge method to Hsin Chong are therefore of utmost importance.  If I were to accept the evidence of Hsin Chong that the Japanese partners of SNE had made a representation to it that the rotator and wedge method had been widely used in Japan and Singapore, then the law should not impose confidentiality on the information passed between the parties about the operation of such method, because the information was supposed to be already in the public domain.  If the court were to make such finding of fact, Ms Tam accepts that no confidence should be attached to the relevant communications.

234.The discussions in the Preliminary Meeting are therefore important.  First, I must emphasise that as Frankie Lam and the other Hong Kong parties did not quite understand the “new” method introduced by the Japanese parties in that meeting, there could not have been enabling disclosure made in the Preliminary Meeting.  In fact, this is not the pleaded case of Hsin Chong or Chim Kee.  However according to Frankie Lam, the Japanese parties had told them that such “new” method had been widely used in Japan and Singapore.

235.Sugisaki disagrees with Frankie Lam’s evidence. According to Sugisaki, he developed the idea about the rotator and wedge method shortly before the Preliminary Meeting.  By that time, no trial had yet been conducted using such method and he did not introduce such method to the Hong Kong parties in the Preliminary Meeting.  Subsequently, 2 trials of the rotator and wedge method were conducted in February and July 2010.  With his contribution, a method statement describing the rotator and wedge method was prepared in May 2010.

236.I certainly have some difficulty with Sugisaki’s evidence.  If what he said were the truth, despite the introduction of the Augar Casing and All-Casing methods in the Preliminary Meeting, the Japanese parties were trying to introduce a completely new method for the pile removal works, with no proven track record, after the Preliminary Meeting.  In such case, there should have some reference in the correspondence between the parties after the Preliminary Meeting mentioning a new method to remove the piles.  In particular, as shown in the contemporaneous note made by Frankie Lam in the Preliminary Meeting, Hsin Chong was looking for a more time-efficient method to remove the piles, and that was why Frankie Lam asked about and put down in his note the time that would be needed to extract a pile using such “new” method.  Under such circumstances, the introduction of a completely new method (with no proven track record) after the Preliminary Meeting should have been a matter of great concern to both the Japanese parties and Hsin Chong.  Yet I cannot find any documents between the relevant parties which referred to a new method which the Japanese parties sought to introduce after the Preliminary Meeting.

237.More surprisingly, no such reference can be found in the documents or correspondence between the Japanese partners and Wilkin Lam.  Wilkin Lam was supposed to be the business partner of the Japanese parties for the pile removal works and so there should have been no secret between them.  Yet the Japanese parties had not made any reference about a new pile extraction method in the correspondence between them.  This is most surprising.  In my judgment, the contents of such correspondence are more consistent with Hsin Chong’s case that the rotation and wedge method described by the Japanese parties in the method statements and other documents after the Preliminary Meeting was the same one as that introduced by the Japanese parties during the Preliminary Meeting.  At least, that was what they were led to believe.

238.Further, I also have some reservation about Sugisaki’s evidence relating to the visits to Japan.  It is common ground that Dragages, Hsin Chong and MTRC were very concerned about the pile removal method introduced by SNE, because they had a tight schedule for the pile removal works under the Project.  As a result, they paid visits to Japan in April and August 2010 to assess whether the Japanese partners of SNE did have the ability to remove the piles as alleged by them.  That was the whole purpose of these visits.

239.According to Sugisaki, no demonstration of the rotator and wedge method was shown to the visitors during these visits. Further, the removed piles shown to the visitors were not actually extracted by the rotator and wedge method.  Instead, only a verbal presentation with some diagrams about the new method were made and shown to the visitors.

240.This is again most surprising.  Although there were always construction works going on at these sites and one could not expect the contractors in these sites to alter their schedules to accommodate the needs of the visitors, there was no purpose for MTRC, Hsin Chong, Dragages or the representatives of the Government to attend these overseas visits if nothing useful was shown to them at the sites.  In fact, oral presentations could have been made to the visiting parties in Hong Kong without the need of these overseas visits.

241.Further, if the method introduced by SNE was a new one without any proven track record, I am quite sure that the Hong Kong parties would have demanded the Japanese parties to provide more information about the 2 trials conducted in February and July 2010.  Yet no such request was made by MTRC, Hsin Chong or Dragages, and both visits were brief ones.  In fact, it seems that the Hong Kong parties, at that time, were not even aware of the 2 trials conducted in Japan.  If that was the case, it would be most surprising because the Japanese parties did not even care to inform the Hong Kong parties about the trials of the new method which was planned to be used in such an important and large-scaled project.  In my judgment, these events can only be explained by the fact that the Hong Kong parties had all along believed that the rotator and wedge method was a mature method which had been used elsewhere.

242.Further, I accept the evidence of Wilkin Lam and Frankie Lam that some of the piles removed by the rotator and wedge method were shown to them during the visits.  If nothing was shown to them, it would be very difficult for SNE to justify the purpose of these visits.

243.Finally, the partners of SNE, by their own conduct, did not seem to regard the rotator and wedge method as something confidential.   In fact, whether precautions to maintain confidentiality of some kind were taken is one of the many factors for the court to decide whether the information was available to the public[65]. There is no dispute that SNE and its Japanese partners had not taken any steps to inform the personnel involved in the Project (including Chim Kee) that they had to keep the rotator and wedge method confidential.  According to Sugisaki, there is a business custom in Japan that parties working together for a project would regard the communications between them as confidential.  Nevertheless, he required the contractors responsible for carrying out the 2 trials in February and July 2010 to sign confidentiality agreements.  Why he did not ask Wilkin Lam, Hsin Chong or Dragages to do the same in Hong Kong?  Further, the Japanese parties were planning to enter into a new market in Hong Kong.  They should not be too familiar with the local customs and one would wonder why they had not raised the subject of confidentiality, whether at the outset or at the material time of the performance of the pile removal works.

244.In addition, SNE should have known that Hsin Chong did display the twisted pile near the site office after the trial on H-pile in October 2010.  No one would dispute that the twisted pile is a unique feature and end-product of the rotator and wedge method.  No other method commonly used in the trade to extract piles would have produced twisted piles like that, and there was a serious risk that someone witnessing the twisted pile might have been able to work out the method by just looking at the shape of the extracted pile.  Yet SNE did not seem to care whether any outsiders or workers of other unrelated contractors would have witnessed the twisted piles. All these facts indicate that SNE did not consider the method to be confidential.

245.Ms Tam submits that the evidence of Wilkin Lam and Tang has actually supported SNE’s case, as they testify that the use of wedges was not discussed in the Preliminary Meeting.  However, that is not quite correct.  According to Wilkin Lam, Sugisaki always mentioned the word “wedgy” (which I understand is the word “to wedge” or “wedge” with a Japanese ascent) in the Preliminary Meeting[66]. On the other hand, Tang has already explained his involvement in the Preliminary Meeting.  In particular, he says that he did not pay attention to the topics discussed at the meeting, and he “went out and went back” and answered various phone calls during the meeting.[67]  Hence, I find that Sugisaki did mention the use of the wedges when he introduced the “new” method to the Hong Kong parties in the Preliminary Meeting.

246.In trying to establish the confidentiality of the information passed by SNE to the relevant personnel of the Project, SNE seeks to rely on: (i) a suggestion made by Wilkin Lam to the Japanese parties that he would approach Hsin Chong and Dragages asking them not to release the working photographs and videos of the pile removing works to outsiders, which was contained in an email written by Wilkin Lam to Nakamura on 28 June 2010; and (ii) a suggestion made by Frankie Lam in October 2011 for SNE and Hsin Chong to file a patent application in Hong Kong.

247.However, I do not accept that these documents would affect the creditability of the evidence of Wilkin Lam or Frankie Lam. As mentioned by Frankie Lam in his oral testimony, he did not know the law relating to patent application at that time, and so he thought, quite wrongly, that they might still be able to apply for a patent in Hong Kong despite the fact that such method had already been used elsewhere or by them in Hong Kong. Further, it was the Japanese parties who should have been keen to protect the secrecy of the method.  Yet, they took no step to do so.  It seems that the Japanese parties, perhaps with a view to establish their reputation in Hong Kong, were quite happy for Hsin Chong or Dragages to publicise the method in Hong Kong, for example by letting Hsin Chong to exhibit the twisted pile near the site office.  Furthermore, in order to establish that the Japanese contractors had had considerable experience in operating the “new” method, they were just happy to let Hsin Chong to believe that this was a mature method outside Hong Kong.

248.Neither can the confidentiality clause in Contract 802 assist SNE’s case, as such clause was aimed to prohibit the contractor and supplier from disclosing any confidential information passed to them by MTRC or other government agencies.

249.No matter what was the intention or motive behind the Japanese parties, I prefer to accept, on the balance of probabilities, the evidence of Hsin Chong and Chim Kee that the Japanese parties had made a representation to them in the Preliminary Meeting that the “new” method had been widely used in Japan and Singapore.  Since the operational procedures of such method were represented to have been already in the public domain, the court should not encumber the communications between SNE (or its partners) and Hsin Chong and other related parties involved in the Project with an obligation of confidence.  Hence, these communications and the performance of the pile removal works in front of the engineering personnel involved in the Project would have the effect of invalidating the Patent for want of novelty.

250.Further, even if the communications between SNE and Hsin Chong and Dragages were encumbered with the obligation of confidence, the same should not apply to the disclosures of the rotator and wedge method to Chim Kee or its operators.  Chim Kee was only involved in the machinery rental industry.  It is very difficult to argue that a machinery supplier is under a general duty to keep confidential the information it receives in the absence of any warning about the novelty of the invention or express confidentiality agreement.  It was for SNE to take the necessary precaution against a low-level participant like Chim Kee.  Without any warning or express confidentiality agreement, the court should not impose an obligation of confidence on the operators of Chim Kee about the operational procedures of the pile removal works.

251.As the aforesaid disclosures are already sufficient to invalidate the Patent, it is not necessary for me to consider whether the submissions of the method statements to the Government authorities or the presentations of the method to them are also invalidating disclosures.

(b)  Disclosure of the alleged patented method to the public and parties not involved in the Project

252.Further, the Patent is also invalid as SNE had, prior to the application of the Patent, disclosed the rotator and wedge method to the public and other parties not involved in the Project by the actual performance of the pile removal works at the Site.

253.As part of its case, Hsin Chong relies on the disclosure of the method during the trials of the rotator and wedge method in the construction sites at Hamacho and Motoyawata in February and July 2010 respectively.  In this regard, SNE claims that the trials in these 2 sites were covered by confidentiality agreements.  As the court has no reason to doubt SNE’s allegation in this regard, and the court knows very little about what had actually happened in these trials, I do not accept that SNE had disclosed the method to the public by the conduct of these trials.

254.It is also the case of Hsin Chong and Chim Kee that the rotator and wedge method was made available to the public by the fact that the pile removal works at the Site could be observed from many public places around the Site.

255.It is common ground that there was a public car park and a public podium in Fu Cheong Estate at the opposite side of Sham Mong Road which provided a clear view of what happened at the Site.

256.For the purpose of determining whether there was enabling disclosure of the patented method to the public, the court is concerned with whether a person skilled in the art would be able to work out the method if he observed what happened at the Site from the public area.  The court is not concerned whether there was actually anyone who witnessed the whole process from the public podium or the public car park.  In Lux Traffic Controls Ltd v Pike Signals Ltd & Faronwise Ltd, Aldous J said the following:[68]

“In the case of a written description, what is made available to the public is the description and it is irrelevant whether it is read. In the case of a machine it is that machine which is made available and it is irrelevant whether it is operated in public. A machine is like a book can be examined and the information gleaned can be written down. Thus what is made available to the public by the machine, such as a light control system, is that which the skilled man would, if asked to describe its construction and operation, write down having carried out an appropriate test or examination … … …”

257.In Memcor Australia Pty Ltd v Norit Membraan Technologie BV[69], Judge Fysh QC also held that if any recipient had been free in law or equity to disclose the report to third parties without fetter of confidence, it made no difference whether there was in fact any such disclosure before the priority date of the patent.

258.In such circumstances, the fact that it would take a substantial period of time to observe the entire pile removal process is neither here or there.  The law is concerned with whether the method had been made available to the public, not whether there was in fact anyone who had taken the opportunity to view the process.

259.It is quite true that anyone who witnessed the pile removal works would not be able to see what happened inside the casing.  SNE therefore submits that the skilled man would not be able to ascertain if any type of guide rail had been fixed inside the casing to be used to hold the wedge in place when the casing rotated.  Given the use of guide rails was known in the art, but there was no or no clear prior art on the use of wedges or jamming devices inside the casing, the skilled man would more likely than not conclude that a guide rail or some other similar device was being used to hold the wedge in place.  In any event, he would not be able to write “a clear and unambiguous description of the invention claimed.”

260.I disagree.  There is no dispute that the public would be able to observe the following features of the pile removal works “above ground”:

(i)   the details of the equipment to be used in the process, including the rotator, the casing and the wedge;

(ii)   the sinking of the casing into the ground;

(iii)   the lowering of the wedge into the casing itself;

(iv)   the rotation of the casing by the rotator; and

(v)   the extraction of the twisted pile.

261.Having considered all the evidence in this case, I accept the expert opinion of Dr Yeung that persons skilled in the art could work out the pile removal method by observing the machinery set-up at the Site, by observing what had been dropped down into the casing, such as the wedge or the hammer grab, and by observing what had been pulled out such as the twisted piles.[70] As I mentioned above, one of the unique features of the rotator and wedge method is the shape of the pile extracted with this process.  No method commonly used in the trade would be able to extract a pile twisted like that.  Hence, the shape of the twisted pile would give a big clue about the operation of the process.  Being persons skilled in the art, they should be able to figure out that the wedge is being used as a jamming device and as a result the pile is twisted in such manner.

262.As I see it, the observation from the public places would be able to teach persons skilled in the art more about the rotator and wedge method than the specification in the Patent itself.  In the Patent, it does not clearly state that the wedge would perform the function of a jamming device.  Further, the positioning of the wedges shown in the diagrams is not accurate to reflect their function as a jamming device.  In such case, any persons skilled in the art studying the method, either by observing the extraction process from the public places (without the opportunity of seeing what happened inside the casing) or reading the specification in the Patent, would suffer the same handicap.  However, members of the public would be able to learn more about the process by the observation.  Firstly, they would be able to know that the rotation of the rotator would play an important part in the process, whereas the Patent does not specifically state that what causes the wedge to rotate inside the casing.  Secondly, as mentioned above, the unique shape of the twisted pile would be able to teach persons skilled in the art that the wedge is being used as a jamming rather than a cutting device as some would understand it by reading the Patent itself.  Hence, I agree with Dr Yeung that persons skilled in the art would be able to work out the rotator and wedge method by observing the works at the public podium.

263.Ms Tam submits that it is not fair for the defence to run this argument as Professor Lee has not been asked as to whether an outside observer would have been able to learn the method by just observing the process above the ground without knowing what happened inside the casing. Further, it seems that Dr Yeung at one stage agrees that he would not be able tell the method just by looking at the equipment used in the operation and the twisted pile[71].

264.I am not able to agree with Ms Tam’s submission. One should not take a particular answer of Dr Yeung out of context. Considering his evidence as a whole, it is clear that Dr Yeung is of the opinion that a person skilled in the art would be able to work out the rotator and wedge method by observing the entire process which took place above ground, not just by looking at the equipment and the end product.  Further, if Professor Lee is able to work out the rotator and wedge method by just looking at the vague or incomplete particulars provided in the specification in the Patent, he certainly would have no problem in working out the method by observing the process from the public podium.  As I have mentioned above, the observation reveals more about the method than the contents in the specification.

265.Ms Tam also relies on the case of T1085/92 Robert Bosch/Electrical Machine v (Opposition by Siemens)[72]and argues that there was no invalidating disclosure by the performance of the pile removal works at the Site.  In that case, a German company Koster was contracted by Siemens to manufacture brush holders.  The brush holders were installed on Siemens production line.  The production line was not open to the public but suppliers, or with the permission of the company management, groups of visitors from competitors, technical colleges and other interested parties were allowed to follow the work on the conveyor belt.  The Technical Board of Appeals held that there was no enabling disclosure because the notoriety of the features of the invention were concealed from the visitors and those features were not directly conspicuous to a person skilled in the art.

266.This is not the case here.  Both experts agree that the one of the unique features of the rotator and wedge method is the twisted shape of the piles extracted by such method.  No method commonly used in the trade would have produced an end product like this.  Such feature would have definitely alerted a person skilled in the art that a new method was used at the Site.  After observing the process from the public podium, the person skilled in the art should have been able to work out the details of the operation.

267.Further, SNE submits that anyone observing the method from the car park or the public podium would not be free in law and equity to do so.  They would know that there were spying on a restricted-access site just by looking at the hoarding and the gates.  SNE also seeks to rely on the decision of the United States Federal Court of Appeals in Dupont v Christopher[73], and argues that observing the pile removal operation at the public podium amounts to unacceptable industrial espionage.

268.In Dupont, someone hired a plane to take photos of a construction site and the court held that this was not invalidating disclosure.  However, I agree with Mr Wong, counsel for Chim Kee, that this case has to be treated with utmost caution.  First, the decision was based on Texas law.  Second, it is one thing for a third party to conduct industrial espionage by hiring a private plane to take photos of what happens inside a construction site, it is quite another if the construction method can be freely observed by members of the public in nearby public places.  In the former case, it is not expected that someone would conduct such kind of “unacceptable industrial espionage” and so the court would not expect the patentee to do something more to protect the secrecy of the invention.  On other hand, it is quite foreseeable that, although the Site itself was not open to the public, the public could easily observe the pile removal works from the public places around the Site and yet no step had been taken to protect the secrecy of the alleged invention.  In my judgment, members of the public would expect that they were free to observe the construction works at the public podium or car park (even SNE’s staff freely took photographs and videos of what happened at the Site after the termination of the Sub-Contracts without permission), and so the performance of the pile removal works quite publicly at the Site using the rotator and wedge method would amount to invalidating disclosure.

269.One would normally expect an inventor of a new product or process to take some steps to guard the secrecy of his invention, in particular before the application of the patent.  However, the facts of the present case are quite different.  SNE, and before its incorporation its partners, had done nothing to protect the secrecy of the invention.  The facts suggest that they did not regard the method itself as confidential.  They waited for a long time before the relationship between the parties turned sour, and only by then SNE considered to apply for the Patent in Hong Kong and not in Japan.  It was also only by that time that they seemed to care about matters such as confidentiality and disclosure.  In my judgment, the application was a tactical move by SNE to protect its interest under the Sub-Contracts after the circulation of the rumour about the possible termination of the Sub-Contracts. By that time, it was simply too late so far as the validity of the Patent is concerned.  Even if the Patent is not bad for insufficiency, it would still be regarded as invalid by reason of the enabling disclosures made by SNE and its partners themselves prior to the application of the Patent.  In such circumstances, SNE’s infringement claim cannot possibly succeed.

CHIM KEE’S DEFENCE OF INNOCENCE

270.By reason of the aforesaid analysis, it would be quite unnecessary for me to address the particular defence of innocence put forward by Chim Kee.  But for the sake of completeness, I will address this issue briefly.

271.So far as the case against Chim Kee is concerned, the following facts are not in dispute:

(i)   Chim Kee is one of the most well-established construction machinery suppliers in Hong Kong, and it has had business in Hong Kong for many years;

(ii)  Chim Kee does not provide operators for all kinds of  machinery it supplies, and usually it only provides operators for cranes and excavators because such operators are required to have a licence under the law to operate such machinery and the supply of such operators is small in the market;

(iii)   for Contract 802, the operators provided by Chim Kee only operated the crawler cranes and excavators supplied by Chim Kee;

(iv)   Chim Kee does not have a “sub-contractor” licence and so it cannot and has not conducted any business or undertaking involving any kind of construction work itself; and

(v)   Chim Kee was not aware of the terms of the contract between MTRC and Hsin Chong, the Sub-Contracts between SNE and Hsin Chong and the code of practice of MTRC.

272.Further as between September 2010 and July 2012, Chim Kee supplied machinery and operators of the cranes and excavators to SNE and the only agreements between them were the rental quotations and rental agreements issued by Chim Kee.  After the termination of the rental relationship between SNE and Chim Kee, Chim Kee supplied machinery and operators of the cranes and excavators to Hsin Chong at the Site and the only agreements between them were those rental quotations issued by Chim Kee.

273.Assuming that the Patent is a valid one, Claim 1 of the Patent discloses a construction method for extracting a pile consisting of the following steps: (i) sinking the steel casing; (ii) wedging the circular wedge (using a circular wedge to wedge between the pile and the steel casing); (iii) breaking the pile (only driving the circular wedge to move, breaking the pile at a position close to a predicted breakpoint between two sections of the pile); (iv) extracting the broken pile; and (v) backfilling.

274.I agree with Mr Wong that in order to infringe a particular claim in a patent, the alleged infringer must have committed all of the steps claimed in the relevant patent.  The monopoly is limited to the use of the entire process.  Yet, there is no evidence to show that the operators of Chim Kee were involved in all of the steps above.  In particular, Chim Kee’s operators were only responsible for the operation of the cranes and the excavators.[74] The operators of Chim Kee were not responsible for sinking the steel casing into the ground nor driving the circular wedge to move around the pile.  As SNE has failed to prove that Chim Kee had committed each of the steps claimed in the relevant claim, its claim against Chim Kee must fail.

275.If the alleged infringer is only responsible for carrying out part of the work of the alleged patented process, he may be liable as a joint tortfeasor for infringing the patent if there was a common design and he has committed a tortuous act in furtherance of that common design. However, no such plea has been made in the Statement of Claim.  Ms Tam relies on the case of Unilever Plc v Gillette (UK) Ltd[75] and argues that a case of joint tortfeasance needs not be specifically pleaded.  However in Unilever, the claim of joint tortfeasance was specifically pleaded in the proposed amendment to the Statement of Claim and the particulars in support of the case of joint tortfeasance were specifically provided.  In fact, the importance of pleading a proper case of joint tortfeasance was emphasized throughout in the first instance judgment by Falconer J and the appellate judgment of the English Court of Appeal.  The importance of properly pleading a case of joint tortfeasance can also be seen in Belegging-En v Witten[76] and Anheuser-Busch v Budejovicky Budvar[77].

276.In the present case, SNE has not pleaded a case of joint torteasance.  It has not pleaded the common design or the “tacit agreement” and has not provided any particulars or evidence relied upon in support of the alleged common design.  Neither Tang nor Frankie Lam has been cross-examined on such common design and the case of joint tortfeasance has not been put to any of the witnesses.  In fact, SNE has not even mentioned the cause of action based on joint tortfeasance in its opening submissions.  Hence, SNE should not be allowed to run such a case against Chim Kee in its final submissions.

277.Even if SNE has expressly pleaded such an averment, Chim Kee was only providing machinery to Hsin Chong for the works at the Site. The operators of Chim Kee just performed the works according to the instructions given by the staff of Hsin Chong, and there is no evidence to show that the operators of Chim Kee were involved in the planning nor in the execution of all the steps involved in extracting the piles from the ground. In such circumstances, I do not accept that Chim Kee has jointly infringed the Patent pursuant to a common design.

CONCLUSION

278.For the above analysis, there are a multiple of reasons as to why SNE’s claim cannot succeed.  I therefore dismiss its claim against both defendants.  In respect of the counterclaim, I accept that the Patent is invalid and so I make an order in terms of paragraphs 1 and 2 in the prayer for relief in the Defence and Counterclaim of Hsin Chong. 

279.I also make an order nisi that the costs of the action be to Hsin Chong and Chim Kee, which shall be made absolute 14 days after the date of the handing down of this Judgment.

280.Finally, I would like to express my gratitude to all the counsel for the valuable assistance they have provided to this court for this complicated piece of litigation.

Ms Winnie Tam, SC & Mr Douglas Clark, instructed by Robert Lee Law Offices, for the plaintiff

Mr Felix H Pao, instructed by Wong & Lawyers, for the 1^st defendant

Mr Philips Wong, instructed by Tsui & Co, for the 2^nd defendant

ANNEX 1

ANNEX 2

ANNEX 3