1. Billion Prima Sdn. Bhd. v 1. Nuctech Company Limited (22IP-50-09/2015)

BILLION PRIMA SDN. BHD. (Co. No.: 771035-V)

PAN ASIATIC TECHNOLOGIES SDN. BHD. (Co. No.: 742846-D) … PLAINTIFFS

1.

TSINGHUA UNIVERSITY … DEFENDANTS (BY ORIGINAL ACTION)

1.

TSINGHUA UNIVERSITY … PLAINTIFFS

BILLION PRIMA SDN. BHD. (Co. No.: 771035-V)

PAN ASIATIC TECHNOLOGIES SDN. BHD. (Co. No.: 742846-D)

3.

GOVERNMENT OF MALAYSIA … DEFENDANTS (BY COUNTERCLAIM) 2 JUDGMENT (After trial)

This is a novel case where the Government of Malaysia (Government) and one of its departments have been alleged to have infringed a patent registered under the Patents Act 1983 (PA).

The first plaintiff company (1st Plaintiff) designed and developed “BBScan Portal X-ray Screening Machine System” (BBScan System). The second plaintiff company (2nd Plaintiff) is licensed by the 1st Plaintiff to commercialise BBScan System.

The 2nd Plaintiff has supplied units of BBScan System to the Royal Malaysian Customs Department (RMCD).

The first defendant company (1st Defendant) is a company incorporated in the People’s Republic of China (PRC) while the second defendant (2nd Defendant) is a university in PRC.

The 1st and 2nd Defendants (Defendants) are co-owners of patent no. MY-142862-A (‘862 Patent) which is registered under PA.

The 1st Defendant has filed Kuala Lumpur High Court Civil Suit No. 22IP- 43-11/2013 (1st Suit) against the 2nd Plaintiff and three individuals (who are the directors and shareholders of the 2nd Plaintiff). The defendants in the 1st Suit filed third party proceedings against Powerscan Co. Ltd. (PCL). In the 1st Suit -

the 1st Defendant had claimed that - 3

the 2nd Plaintiff’s supply and installation of “BTScan-P/X Portal X-ray Screening Machine System” (BTScan System) in RMCD’s Customs, Immigration and Quarantine Complex in Tanjung Kupang [RMCD’s Premises (TK)], had infringed ‘862

the 2nd Plaintiff’s agreement to supply “BPScan-M1 Portal X-ray Screening Machine System” (BPScan System) to RMCD, had threatened to infringe ‘862 Patent [Original Action (1st Suit)];

the defendants in the 1st Suit had counterclaimed that ‘862 Patent is invalid [Counterclaim (1st Suit)]; and

in the event that the defendants in the 1st Suit are liable to the 1st Defendant, the defendants in the 1st Suit have claimed an indemnity from PCL because the 2nd Plaintiff has bought BTScan System from PCL [Third Party Proceedings (1st Suit)].

PCL had instituted Kuala Lumpur High Court Civil Suit No. 22IP-24- 05/2014 (2nd Suit) against the Defendants (in this case). In the 2nd Suit -

PCL had applied for a declaration that ‘862 Patent is invalid [Original Action (2nd Suit)]; and

the Defendants counterclaimed that PCL had infringed ‘862 Patent regarding the BTScan System [Counterclaim (2nd Suit)]. 4

The 1st and 2nd Suits have been consolidated (2 Suits). The 2 Suits are tried before Azizah Nawawi J who has decided as follows [High Court’s

‘862 Patent is valid. As such, the Counterclaim (1st Suit) and the Original Action (2nd Suit) are dismissed with costs;

BTScan System has infringed ‘862 Patent while BPScan System will infringe ‘862 Patent. Hence, the Original Action (1st Suit) and Counterclaim (2nd Suit) are allowed with costs; and

the Third Party Proceedings (1st Suit) is allowed whereby PCL has to indemnify the 2nd Plaintiff regarding BTScan System’s infringement of ‘862 Patent and the likelihood of BPScan System’s infringement of ‘862 Patent.

An appeal to the Court of Appeal has been filed against the High Court’s Decision (2 Suits) and is still pending on the date of this written judgment.

In this suit -

the 1st and 2nd Plaintiffs (Plaintiffs) claim for a declaration under s 62(1) PA that BBScan System does not infringe ‘862 Patent [Original Action (This Suit)]; and

the Defendants have counterclaimed that -

the Plaintiffs; and

the Director-General of RMCD (RMCD’s DG) and the Government 5 - have infringed ‘862 Patent with regard to BBScan System [Counterclaim (This Suit)].

The following questions arise in this case:

whether the Defendants can contend that the first version of BBScan System [BBScan System (1st Version)] has infringed ‘862 Patent. In this regard -

has the Defendants’ Re-Amended Defence and Counterclaim (RDCC) pleaded infringement of ‘862 Patent by BBScan System (1st Version)?;

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

whether BBScan System (1st Version) can infringe ‘862 Patent pursuant to s 36(3)(a)(i), (b)(i) and (ii) read with s 58 PA when the Plaintiffs only sold to RMCD and installed the second version of BBScan System [BBScan System (2nd Version)];

whether the second limb of res judicata doctrine (issue estoppel principle) applies in this case by reason of the High Court’s Decision (2 Suits); 6

regarding ‘862 Patent -

who is the notional person ordinarily skilled in the art (POSITA) for ‘862 Patent?; and

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

if BBScan System (2nd Version) has infringed Claims 1, 7, 8, 9, 11 and 12 (Patent Infringement) -

whether the court can grant perpetual mandatory and restraining injunctions against RMCD and Government under s 60(1) PA in view of -

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

(ii) ss 54(d) and (j) of the Specific Relief Act 1950 (SRA); and

whether the court should deprive the Defendants of the costs of this suit under O 59 rr 2(2), 3(2), 8(b) and 19(1) of the Rules of Court 2012 (RC) when -

the Defendants had caused a private investigator (PI), Puan Syajaratuddur bt. Mawardee (SD2), and a Kazakhstan citizen (Kazakh National) to enter RMCD’s Premises (TK) and RMCD’s premises at Pasir Gudang [RMCD’s Premises 7 (PG)] [RMCD’s Premises (TK) and RMCD’s Premises (PG) shall be referred to in this judgment as the “2 Sites”] by impersonation, an offence under s 416 of the Penal Code (PC);

(ii) SD2 and Kazakh National had not obtained permission of RMCD to enter the 2 Sites as required by s 5(1) of the Protected Areas and Protected Places Act 1959 (PAPPA) because the 2 Sites are “protected places” within the meaning of s 2 PAPPA;

(iii) SD2 had secretly taken photographs (SD2’s Photographs) and covertly made a video recording (SD2’s Video Recording) of her visits to the 2 Sites (SD2’s Site Visits);

(iv) SD2’s Video Recording was suppressed from this court; and

when SD2 testified in this case, without giving any prior notice to the Plaintiffs, RMCD and Government, SD2 applied to court for immunity from prosecution under s 132(2) EA (except for the offence of giving false evidence) so as to enable SD2 to tender SD2’s Video Recording as evidence. C. Claims 1, 7, 8, 9, 11 and 12

I reproduce below Claims 1, 7, 8, 9, 11 and 12: “1. A system for imaging inspection of a movable object, comprising: a first detecting unit configured to detect whether a moving object to be inspected moves into a passage or not; 8 a second detecting unit configured to detect whether a part to be shielded of the moving object passes into the passage or not and generate a passing signal after the first detecting unit detects that the moving object to be inspected moves into the passage; a scan imaging device configured to emit radiating beams for inspecting the moving object to be inspected by scanning; and a control system configured to generate a control signal for controlling the scan imaging device to generate the radiating beams according to the passing signal from the second detecting unit. …

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

The system for imaging inspection of a movable object according to claim 7, wherein the part to be shielded is a driving cab of the vehicle.

A dodging method for a moving object being image inspected, comprising: a first determining step of judging whether the moving object moves into a passage or not; a second determining step of judging whether a part to be shielded of the moving object passes through a radiating scan area in the passage and generate a passing signal; and a scan imaging step of generating a control signal for controlling a scan imaging device to generate radiating beams according to the passing signal, after judging that the part to be shielded passes through the radiating scan area, to emit radiating beam to 9 the passage and inspect the moving object by scanning to dodge the area to be shielded. …

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

The dodging method for a moving object being image inspected according to claim 9, wherein a part to be shielded is a driving cab of the vehicle.” (emphasis added). D. Case for the Plaintiffs

The following witnesses testified for the Plaintiff:

Mr. Matthew Stephen English (SP1);

Mr. John William McCorkle (SP2);

Ms. Carol Johnstone (SP3); and

Mr. Lee Yuh Jiunn (SP4).

According to the Plaintiffs, SP1, SP2 and SP3 are POSITA’s regarding ‘862 Patent. I will discuss their expert testimonies later in this judgment.

SP4 is the 1st Plaintiff’s Chief Technology Officer (CTO). According to SP4, among others -

after the High Court’s Decision (2 Suits) -

the 2nd Plaintiff ceased to import vehicle scanning machines from PCL; 10

the 1st Plaintiff designed BBScan System which is different from

the testing of BBScan System (1st Version) revealed numerous technical problems. To overcome such problems, the 1st Plaintiff designed the BBScan System (2nd Version); and

the Plaintiffs have installed the BBScan System (2nd Version) in -

RMCD’s Premises (PG);

RMCD’s Premises (TK); and

RMCD’s premises in Seberang Perai. E. Defendants’ case

Three witnesses gave evidence for the Defendants, namely -

SD2;

Professor Athanassios Manikas (SD3); and

Professor David Koltick (SD4).

SD3 and SD4 have been called by the Defendants as POSITA’s for ‘862 Patent. I will discuss the expert views of SD3 and SD4 together with the expert testimonies of SP1, SP2 and SP3.

SD2 testified as follows, among others: 11

SD2 previously worked as a PI at Maxguard Security and Services Sdn. Bhd.;

while SD2 was a PI, SD2 had been engaged by the 1st Defendant to investigate IRadar Sdn.Bhd. (ISB) which supplied the radar component of BBScan System to the Plaintiffs;

SD2 contacted ISB by impersonating as “Azila Mohd. Hashim” (SD2’s Impersonation); and

by way of SD2’s Impersonation -

SD2 contacted ISB’s representative, Mr. Koo Voon Chet (Mr. Koo) regarding a vehicle inspection system;

on 17.2.2016, SD2 visited ISB’s premises at Malacca where Mr. Koo gave a presentation on BBScan System;

SD2 contacted Mr. Koo for a visit to the 2 Sites with the Kazakh National as a potential purchaser of vehicle inspection system. The 1st Defendant arranged for a person to impersonate as a

on 31.3.2016, SD2 and the Kazakh National inspected BBScan

SD2 met with representatives from the Plaintiffs;

(ii) SD2 has been informed that BBScan System uses some components supplied by ISB; 12

(iii) in the control room of BBScan System (Control Room), SD2 could see on the computer screen “scan images” of the entire vehicle (the driver cabin and the rest of the vehicle are visible) (Full Scan) and scan images which did not show the entire vehicle [the driver cabin is not visible but the rest of the vehicle (including the cargo section) is visible] (Scan Images); and

(iv) SD2’s Photographs of the Scan Images had been secretly taken. SD2’s Video Recording had also been covertly made;

after SD2’s Site Visits, SD2 requested from Mr. Koo for further information on BBScan System. Mr. Koo then sent a promotional video regarding “MyCIS Cargo Inspection System”, exhibit D4 (MyCIS Video); and

by way of “Whatsapp” messages, SD2 has been informed by Mr. Koo that BBScan System has an adjustable setting whereby BBScan System can conduct a Full Scan or otherwise. SD2 has adduced the Whatsapp messages between SD2 and Mr. Koo (SD2’s WhatsApp Messages).

The sole witness for RMCD and Government is Dato’ Mohd. Mastar bin Musa (SD1), RMCD’s Deputy Director for Acquisition Management Section. According to SD1, among others -

the Government has entered into two agreements with the 2nd Plaintiff as follows - 13

the first agreement provided for RMCD to acquire four units of BPScan System from the 2nd Plaintiff (1st Agreement); and

a supplemental agreement to the 1st Agreement (Supplemental Agreement) in respect of the 2nd Plaintiff’s supply of four units of

clause 45 of the 1st Agreement (Clause 45) provides for the 2nd Plaintiff to indemnify the Government in the event that, among others, the vehicle inspection systems provided by the 2nd Plaintiff infringe the patent of a third party;

according to clause 5.2 of the Supplemental Agreement, among others, Clause 45 shall be considered as an integral part of the Supplemental Agreement; and

the 2nd Plaintiff had sent a letter dated 31.7.2015 to RMCD which, among others, “guaranteed” that BBScan System would not infringe any patent. G. Whether Defendants can contend that BBScan System (1st Version) has infringed ‘862 Patent

The Defendants have submitted that BBScan System (1st Version) has infringed Claims 1, 7, 8, 9, 11 and 12. I am not able to accept this contention for the following reasons:

SP4 had given evidence regarding BBScan System (1st Version). RDCC has been amended twice by the Defendants and yet, the Defendants have not applied for leave of court to amend RDCC so 14 as to include the Defendants’ claim that BBScan System (1st Version) has infringed Claims 1, 7, 8, 9, 11 and 12. It is trite law that a party is bound by the party’s pleading - please see Federal Court’s judgment delivered by Azahar Mohamed FCJ in Saiman bin Umar v Lembaga Pertubuhan Peladang & another appeal [2015] 6 MLJ 492, at [41]. The trial of this case has concluded and it is now too late for the Defendants to aver that BBScan System (1st Version) has infringed Claims 1, 7, 8, 9, 11 and 12. If otherwise, there will be an injustice to the Plaintiffs;

BBScan System (1st Version) is based on ‘628 Patent. The Defendants’ RDCC did not apply to invalidate ‘628 Patent under s 56(1) PA (Invalidation Application). As the Defendants have not filed the Invalidation Application in this case, the 1st Plaintiff as the registered owner of ‘628 Patent can exercise all the statutory rights under s 36(1)(a), (3)(a)(i), (ii), (b)(i) and (ii) PA regarding ‘628 Patent in respect of BBScan System (1st Version). I reproduce below ss 36 (the relevant part only) and 58 PA - “Rights of owner of patent. 36(1) Subject and without prejudice to the other provisions of this Part, the owner of a patent shall have the following exclusive rights in relation to the patent:

to exploit the patented invention; …

For the purposes of this Part, “exploitation” of a patented invention means any of the following acts in relation to a patent:

when the patent has been granted in respect of a product: 15

making, importing, offering for sale, selling or using the product;

(ii) stocking such product for the purpose of offering for sale, selling or using

when the patent has been granted in respect of a process:

using the process;

(ii) doing any of the acts referred to in paragraph (a), in respect of a product obtained directly by means of the process. … Acts deemed to be infringement 58 Subject to subsections 37(1), (2) and (3) and section 38, an infringement of a patent shall consist of the performance of any act referred to in subsection 36(3) in Malaysia by a person other than the owner of the patent and without the agreement of the latter in relation to a product or a process falling within the scope of protection of the patent. ” (emphasis added). I am of the view that an exercise of the 1st Plaintiff’s exclusive right under s 36(1)(a), (3)(a)(i), (b)(i) and (ii) PA to exploit ‘628 Patent in respect of BBScan System (1st Version), cannot constitute an infringement of ‘862 Patent under s 58 PA; and

the Plaintiffs have sold BBScan System (2nd Version) [not BBScan System (1st Version)] to the Government. There is therefore no exploitation of BBScan System (1st Version) by the Plaintiffs which 16 can constitute an infringement of ‘862 Patent within the meaning of s 36(3)(a)(i), (b)(i) and (ii) read with s 58 PA.

I must add that nothing in this judgment prevents the Defendants from filing a fresh action to invalidate ‘628 Patent. This is because this suit does not concern ‘628 Patent, let alone its validity. H. Admissibility of illegally obtained evidence

By deception, SD2 has unlawfully obtained the following evidence (Ilegally Obtained Evidence):

SD2’s oral evidence regarding SD2’s Site Visits;

SD2’s Photographs;

SD2’s Video Recording;

SD2’s WhatsApp Messages; and

MyCIS Video.

If Illegally Obtained Evidence is relevant to the issue to be decided in a criminal case, such evidence is admissible. In Dato’ Seri Anwar Ibrahim v Public Prosecutor and another appeal [2015] 2 CLJ 145, at [98], Arifin Zakaria CJ delivered the following judgment of the Federal Court: “[98] Now, even if those exhibits recovered from the lock-up were indeed illegally obtained, which we say were not, in law they remain admissible if found to be relevant to the case (s. 5 of the Evidence Act). …” 17 (emphasis added).

Illegally Obtained Evidence (as enumerated in the above paragraph 22) is clearly relevant in this case and I so admit it. The court may admit Illegally Obtained Evidence in a civil case - please see Tenaga Nasional Bhd v Api-api Aquaculture Sdn Bhd [2015] 3 AMR 811, at [56] and [58(a)]. I. Credibility of witnesses

I will discuss the expert testimonies of SP1, SP2, SP3, SD3 and SD4 as POSITA’s for ‘862 Patent.

SD1 gave evidence based on documents. There is thus no reason to doubt SD1’s credibility.

I find as a fact that SP4 is not a credible witness. This decision is based on the following evidence and reasons:

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

SP4 gave evidence that BBScan System (1st Version) was replaced by BBScan System (2nd Version) around May 2015. This could not be true because - 18

in May 2015, the “HAGI” radar component (HAGI Radar) in BBScan System (2nd Version) was not seen at the 2 Sites. Instead, in May 2015, there were multiple sensors (not Hagi Radar) on the shielding walls and gantry at the 2 Sites; and

a photograph of FAT report dated 30.5.2015 for BBScan System at RMCD’s Premises (TK) showed the presence of sensors on the shielding walls; and

during cross-examination, SP4 testified that he could not remember when sensors for BBScan System (1st Version) were installed on the shielding walls. Such evidence shows that SP4 is less than honest because he is the 1st Plaintiff’s CTO and has access to all information regarding BBScan System (1st Version). J. Effect of High Court’s Decision (2 Suits)

In Sri Paandi Restaurant Sdn Bhd & Anor v Saraswathy A/P Kesavan & Ors [2019] AMEJ 540, at [49], [50] and [53], the res judicata doctrine has been explained as follows: “[49] Once a court has finally decided a case (1st Case), the decision in the 1st Case may affect subsequent cases by way of an application of the doctrine of res judicata. In the Supreme Court case of Asia Commercial Finance (M) Bhd v Kawal Teliti Sdn Bhd [1995] 3 MLJ 189, at 197-198, 198 and 199-200, Peh Swee Chin FCJ has explained that the doctrine of res judicata consists of two limbs (2 Limbs) as follows:

the principle of cause of action estoppel applies to bar a person

(Y) and/or Y’s “privy” from filing any action after the 1st Case 19 (Subsequent Case) based on a cause of action which has been decided in the 1st Case (1st Limb); and

issue estoppel principle operates to prevent Y and/or Y’s privy from raising any issue in the Subsequent Case which -

has been raised in the 1st Case; or

can be raised with reasonable diligence in the 1st Case (2nd Limb). G(2). 2nd Defendant and its privies [50] In Doretti Resources Sdn Bhd v Fitters Marketing Sdn Bhd & Ors [2017] 5 MLRH 1, at [15], I have followed Megarry VC’s decision in the English High Court case of Gleeson v J. Wippell & Co Ltd [1977] 1 WLR 510, at 514, that a person is a “privy” of another person if there is a relationship between those persons by blood, title or interest. … [53] Res judicata doctrine is based on case law and should not be applied indiscriminately so as to cause injustice - please see Gopal Sri Ram JCA’s (as he then was) judgment in the Court of Appeal case of Chee Pok Choy & Ors v Scotch Leasing Sdn Bhd [2001] 4 MLJ 346, at 356, 357 and 358.” (emphasis added).

I am of the following view regarding the High Court’s Decision (2 Suits):

the 2nd Plaintiff and Defendants are parties in the 2 Suits;

the 1st Plaintiff has a privity of commercial interest with the 2nd Plaintiff as the latter has been licensed by the former to commercialise BBScan System (2nd Version); 20

the Government (which includes RMCD’s DG) has a privity of commercial interest with the 2nd Plaintiff by reason of the 1st Agreement and Supplemental Agreement;

issue estoppel principle applies to bind all the parties in this suit regarding the following issues which have been decided in the High Court’s Decision (2 Suits) -

who is a POSITA for ‘862 Patent? In this regard, SD4 is a POSITA whose expert view on ‘862 Patent has been accepted in the High Court’s Decision (2 Suits);

‘862 Patent is valid;

BTScan System has infringed Claims 1, 7, 8, 9, 11 and 12; and

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

it is neither unjust nor inequitable to apply issue estoppel principle in this case with regard to the High Court’s Decision (2 Suits). Furthermore, for reasons explained subsequently in this judgment, BBScan System (2nd Version) constitutes an unlawful attempt by the Plaintiffs to circumvent the High Court’s Decision (2 Suits). K. POSITA K(1). Who is POSITA for ‘862 Patent?

In Kingtime International Ltd & Anor v Petrofac E&C Sdn Bhd [2018] MLJU 1840, at [29] and [30], this court has followed two Federal Court 21 judgments in SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 6 MLJ 293, at [38], [39] and [41] [judgment by Zulkefli CJ (Malaya) (as he then was)] and Spind Malaysia Sdn Bhd v Justrade Marketing Sdn Bhd & Ors [2018] 4 MLJ 34 (decision by Raus Sharif CJ), at [85] and [86] regarding the importance of a POSITA in a patent case: “[29]

the Court may be assisted by a POSITA’s expert evidence; and

the Court is not bound to accept a POSITA’s opinion. [30] The POSITA’s expert view is important in the following matters:

the construction of a patent, especially its claims; …

whether a claim in a patent has been infringed under s 58 read with s 36 PA.” (emphasis added).

I have considered the expert testimonies of SP1, SP2, SP3, SD3 and SD4. I am of the view that a POSITA for ‘862 Patent is a team of persons possessing all the following skills:

knowledge in applied physics related to -

accelerators; or

radiation production and detection; 22

qualification and experience in radiation safety, has access to and would have read journals such as “Nuclear Instruments and Methods” and “IEEE Transactions in Nuclear Science” and publications referred therein;

has attended international conferences such as “Nuclear Science Symposium” or “Conference on Applications of Accelerators to Research and Industry”;

involved in or interested in portal security and has a basic knowledge in chemistry (including knowledge of elemental analysis); and

has qualification and/or experience in the area of electronics and computers.

Based on the resumes of SP1, SP2, SP3, SD3 and SD4, I accept these expert witnesses as POSITA’s for ‘862 Patent. In fact, SD4 has also been accepted as a POSITA for ‘862 Patent by the High Court which has decided the 2 Suits. Although I recognize SP1, SP2, SP3, SD3 and SD4 as POSITA’s for ‘862 Patent, the weight to be attached to their expert testimonies may differ based on the reasons stated later in this judgment. K(2). Weight to be attached to POSITA’s expert evidence

The Plaintiffs have firstly contended that SD3 is not an expert on radar under s 45(1) EA because SD3’s curriculum vitae (CV) shows that SD3’s qualification, experience and publication is in the field of “Communications and Arrays Signal Processing” and not on radar technology. Hence, the Plaintiffs submit that SD3’s expert evidence concerning radar technology, in particular concerning HAGI Radar, 23 should be disregarded. I am not able to accede to this contention due to the following evidence and reasons:

as submitted by the Defendants, SD3’s CV disclosed five publications on radar;

SD3’s CV shows that SD3 has personally carried out research work regarding radar technology; and

SD3 has also supervised many dissertations on radar by post-graduate students pursuing their Masters and Doctorate degrees.

I cannot accede to the Plaintiffs’ contention that SD4 is not an expert in radar because firstly, SD4’s CV shows SD4’s qualification and experience regarding “scattering” and radar is only one example of the generation and detection of the scattering of electromagnetic waves. Furthermore, a “Google” search of SD4 (exhibit D55) reveals SD4’s expertise regarding radar.

The Plaintiffs have submitted that the expert evidence of SP2 should be preferred to that of SD3 because SD3 has not examined HAGI Radar. I reject such a contention because based on SD3’s expertise on radar technology, SD3 is able to give his expert view on HAGI Radar premised on -

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

SP2’s video presentation regarding HAGI Radar to this court (Exhibit P6).

The Plaintiffs have contended that SD3 has failed to disclose to the court that SD3 has not inspected HAGI Radar and as such, the court should not accept SD3’s expert opinion. I have perused SD3’s two expert reports which state that SD3’s expert view is based on an examination of the relevant documents. It is clear from SD3’s expert reports that SD3 has not inspected HAGI Radar. SD3 did not conceal or mislead this court regarding the fact that HAGI Radar had not been inspected by him. In any event, SD3’s expert evidence is based on, among others, HAGI Radar Specifications and Exhibit P6. There is also no reason to doubt SD3’s independence in this case.

I attach weight to the expert opinions of SD3 and SD4 due to the following reasons:

SD3 and SD4 have given cogent reasons for their expert views in their reports attached to their affidavits and their oral testimonies; and

SD3 and SD4 have been vigorously cross-examined by the Plaintiffs’ learned counsel and such a cross-examination has not revealed any reason to doubt their veracity as POSITA’s for ‘862 Patent. 25 It is to be noted that the High Court’s Decision (2 Suits) is based solely on SD4’s expert testimony.

I find as a fact that SP1, SP2 and SP3 are not reliable expert witnesses. This decision is made because SP1, SP2 and SP3 have failed to consider the issue of nuclear radiation safety regarding the drivers of the vehicles which are scanned by BBScan System, be it the first or second version. This is an important question because this issue concerns public safety and may entail civil liability in the future on the part of the Plaintiffs and Government to drivers of vehicles which have been scanned by BBScan System (1st Version) and by BBScan System (2nd Version).

SP2’s expert evidence regarding HAGI Radar is doubtful because -

SP2 admitted during cross-examination that he did not know many aspects concerning HAGI Radar - please see the Defendants’ first written submission dated 2.4.2018 (Defendants’ 1st Submission), at paragraph 203;

SP2 gave the following conflicting answers regarding HAGI Radar -

whether HAGI Radar is an “adaptive radar” (a radar which estimates the current position of a target by using previous estimates); and

whether radar signals are random or otherwise;

SP2 has provided a figure on the reflection paths to the HAGI Radar (Figure 6) which is erroneous and this was pointed out by SD3; 26

SP2’s expert testimony on whether HAGI Radar can detect a target or not, is erroneous because he has looked at the wrong reference point - please see the Defendants’ 1st Submission, at paragraph 205; and

SP2 has provided an illustration regarding HAGI Radar (Figure 8) which is wrong and this is admitted during SD2’s cross-examination.

I am not able to attach any weight to SP3’s expert view because -

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

the Radiation Levels Data were not recorded by SP3 herself. At the time of the recording of the Radiation Levels Data, SP3 was in the Control Room and an “engineer or operator” named Alfred was in the vehicle (being driven through the scan area and being scanned by the Betatron Device) with the Geiger-Muller dosimeter. In other words, the Radiation Levels Data were recorded by Alfred and not by 27 SP3 herself. The Plaintiffs did not call Alfred to give evidence in this case. Nor did the Plaintiffs adduce any evidence why Alfred could not be subpoenaed to testify in this suit. Accordingly, I am constrained to draw an adverse inference under s 114(g) EA against the Plaintiffs not calling Alfred to testify in this case - please see Mohd. Azmi SCJ’s judgment in the Supreme Court case of Munusamy v Public Prosecutor [1987] 1 MLJ 492, at 494;

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

SP3’s expert testimony on the “worst case scenario” regarding the radiation exposure of a driver of the vehicle being scanned by the Betatron Device is vacillating and unconvincing - please see the Defendants’ 1st Submission, at paragraph 211. L. What is scope of Claims 1, 7, 8, 9, 11 and 12? L(1). Patent construction

Regarding the interpretation of a patent, it is decided in Kingtime International, at [40], as follows: “[40] I am of the following view regarding patent construction:

a patent contains, among others, the following - 28

an abstract as stated in reg. 16(1) to (8) PR (Abstract);

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

claims as required by reg. 13(1) to (6) PR (Claims). Regulation 14(1) to (4) PR provides for “dependent claims”; and

drawings as stated in reg. 15(1) to (3) PR (Drawings).

the first step in patent litigation is to ascertain the scope of the Claims - Spind, at paragraph 98;

the Court may be assisted by a POSITA’s expert opinion in patent construction but ultimately, it is up to the Court to interpret the patent - SKB Shutters Manufacturing and Spind;

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

the primary objective in interpreting a Claim is to limit (not to extend) the monopoly of the invention as stated in the Claim - SKB Shutters Manufacturing (in paragraph 19) and Spind (in paragraph 97); and

the Court shall construe a Claim in a purposive (not literal) manner as understood by a POSITA - Spind, in paragraph 123. In this regard - 29

it is an objective exercise of how a POSITA would have understood a Claim - please see Lord Hoffmann’s judgment in the House of Lords in Kirin-Amgen Inc & Ors v Hoechst Marion Roussel Ltd and other appeals [2005] 1 All ER 667, at paragraph 32. Kirin-Amgen has been followed in Spind, at paragraph 123; …

the Claims may be interpreted with reference to the Other Patent Specifications but if a Claim is clear, the scope of the Claim cannot be extended, reduced or amended by the Other Patent Specifications - Spind, at paragraph 124.” (emphasis added).

The Plaintiffs have attempted to construe ‘862 Patent based on “Detailed Description of the Preferred Embodiments” in ‘862 Patent (Preferred Embodiments). I am not able to accept such an approach. Firstly, if the claims of ‘862 Patent are clear based on a purposive interpretation, these claims “cannot be extended, reduced or amended” by the Preferred Embodiments - please see Spind, at [124]. Furthermore, the Preferred Embodiments have stated at p. 13 of ‘862 Patent that “it would be appreciated by [POSITA’s] that changes may be made in this embodiment without departing from the principles of the invention, the scope of which is defined in the claims and their equivalents”. In other words, the Preferred Embodiments have already made clear that the Preferred Embodiments do not confine in any manner the scope of the claims of ‘862 Patent.

I accept the expert view of SD4 that ‘862 Patent is a product and process patent wherein the purpose of the invention in 862 Patent is a “system” (not a mere “device”) - 30

to enable the inspection of a moving object (such as a vehicle carrying cargo) by imaging the object (by radiation); and

at the same time, the system “shields” or “dodges” the driver cabin of the vehicle from unsafe exposure of radiation during the inspection process. [Purpose (‘862 Patent)].

In this judgment, regarding ‘862 Patent, I shall use the term “shielding” and “dodging” inter-changeably as both terms are used in Claims 1, 8, 9, 11 and 12.

This court accepts SD4’s expert opinion that Claim 1, a product claim, is an independent claim regarding a system of imaging inspection of a movable object which consists of the following four essential integers [4

a first detecting unit (1st Detecting Unit) configured to detect whether a moving object to be inspected has moved into a passage (Passage) or not [1st Essential Integer (Claim 1)];

a second detecting unit (2nd Detecting Unit) -

configured to detect whether a part to be shielded of the moving object passes into the Passage or not; and 31

generates a passing signal (Passing Signal) after the 1st Detecting Unit detects that the moving object to be inspected moves into the Passage [2nd Essential Integer (Claim 1)];

a scan imaging device (Scan Imaging Device) configured to emit radiating beams (Beams) for inspecting the moving object to be inspected by scanning [3rd Essential Integer (Claim 1)]; and

a control system (Control System) configured to generate a control signal (Control Signal) for controlling the Scan Imaging Device to generate the Beams according to the Passing Signal [4th Essential Integer (Claim 1)].

It is to be noted that the High Court’s Decision (2 Suits) has also accepted SD4’s expert testimony regarding the 4 Essential Integers (Claim 1).

I accept SD4’s expert evidence that Claim 7, a product claim, is a claim which is dependent on Claim 1, wherein the moving object is a vehicle. Such a decision is consistent with the High Court’s Decision (2 Suits).

SD4 opined that Claim 8 is a product claim which is dependent on Claim 7, wherein the part to be shielded is the vehicle’s driving cab (Driving Cab). I accept such expert evidence from SD4. There is also no reason 32 to depart from the High Court’s Decision (2 Suits) regarding the scope of Claim 8.

I am of the view that based on SD4’s expert opinion, Claim 9, a process claim, is an independent claim regarding a dodging method for a moving object (being image inspected) with the following three essential integers [3 Essential Integers (Claim 9)]:

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

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

a scan imaging step of generating a Control Signal for controlling the Scan Imaging Device to generate Beams according to the Passing Signal, after judging that the part to be shielded passes through the Scan Area, to emit Beams to the Passage and inspect the moving object by scanning to dodge the area to be shielded [3rd Essential Integer (Claim 9)]. The High Court’s Decision (2 Suits) has also made the same finding regarding Claim 9 (3 Essential Integers)]. 33 L(6). Claim 11

As testified by SD4, I am of the view that Claim 11 is a process claim dependent on Claim 9, wherein the moving object is a vehicle. This is in consonance with the High Court’s Decision (2 Suits).

I accept SD4’s expert opinion that Claim 12 is a process claim dependent on Claim 9, wherein a part to be shielded is the Driving Cab. This finding is consistent with the High Court’s Decision (2 Suits). M. Burden of proof

Section 62(1) and (2) PA provide as follows: “Declaration of non-infringement. 62(1) Subject to subsection (4), any interested person shall have the right to request, by instituting proceedings against the owner of the patent, that the Court declare that the performance of a specific act does not constitute an infringement of the patent.

If the person making the request proves that the act in question does not constitute an infringement of the patent, the court shall grant the declaration of non-infringement.” (emphasis added).

It is not disputed that with regard to ‘862 Patent, the Plaintiffs are “interested persons” within the meaning of s 62(1) PA. This is because the Plaintiffs’ commercial interest in the exploitation of BBScan System (2nd Version) is adversely affected by the Counterclaim (This Suit) [which 34 alleges that BBScan System (2nd Version) has infringed ‘862 Patent]. Accordingly, the Plaintiffs have the locus standi to file the Original Action (This Suit) under s 62(1) PA.

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

the Defendants have the legal and evidential burden to prove Patent Infringement on a balance of probabilities; and

the Plaintiffs have no legal and evidential burden to prove that BBScan System (2nd Version) has not infringed ‘862 Patent. N. Patent Infringement

It is explained in Kingtime International, at [81], that there are three tests to decide whether a patent has been infringed (3 Tests) - 35 “[81] My understanding of case law is that there are three tests to decide Patent Infringement Issue (3 Tests) as follows:

the Essential Integers Test is explained by Lord Upjohn in the 3- 2 majority judgment in the House of Lords’ case of Rodi & Wienenberger AG v Henry Showell Ltd [1969] RPC 367, at 391 (Rodi’s Case), as follows - “To constitute infringement, the article must take each and every one of the essential integers of the claim. Non-essential integers may be omitted or replaced by mechanical equivalents.” (emphasis added). Rodi’s Case has been followed by the Court of Appeal’s judgment delivered by Vernon Ong JCA in Yeohata Machineries Sdn Bhd & Anor v Coil Master Sdn Bhd & Ors [2015] 6 MLJ 810, at paragraph 15;

according to the Improver’s Test [1990] FSR 181, at 189 - “If the issue was whether a feature embodied in an alleged infringement which fell outside the primary, literal or a contextual meaning of a descriptive word or phrase in the claim (“a variant”) was nevertheless within its language as properly interpreted, the court should ask itself the following three questions:

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

Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of 36 the patent to a reader skilled in the art. If no, the variant is outside the claim. If yes -

Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. If yes, the variant is outside the claim. On the other hand, a negative answer to the last question would lead to the conclusion that the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy) denoting a class of things which included the variant and the literal meaning, the latter being perhaps the most perfect, best-known or striking example of the class.” (emphasis added). In Cadware Sdn Bhd v Ronic Corp [2013] 6 MLJ 19, at paragraph 24, our Court of Appeal in a judgment given by Mohd. Hishamudin JCA, has applied Improver’s Test; and

Actavis’ Test [2018] 1 All ER 171, at paragraph 66, is as follows - “[66] In these circumstances, given the weight that has been given by courts in this jurisdiction (and indeed in some other jurisdictions) to the three 'Improver questions', I think it must be right for this court to express in our own words our reformulated version of those questions. In doing so, it is right to emphasise, as Lord Hoffmann did in Kirin-Amgen [2005] 1 All ER 667, [2005] RPC 169 (at [52]), that these 37 questions are guidelines, not strict rules (as indeed the Oberlandesgericht indicated in Eli Lilly & Co v ratiopharm GmbH Case No 6U 3039/16, when saying that it was 'generally' true that 'three requirements must be met'). While the language of some or all of the questions may sometimes have to be adapted to apply more aptly to the specific facts of a particular case, the three reformulated questions are as follows:

Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, ie the inventive concept revealed by the patent?

(ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?

(iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was 'yes' and that the answer to the third question was 'no'.” ” 38 (emphasis added).

In this case, I will apply the 3 Tests as follows:

whether BBScan System (2nd Version) has all the essential integers of Claims 1, 7, 8, 9, 11 and 12 (Essential Integers Test);

the three questions laid down in Improver Corp & Ors v Remington Consumer Products Ltd & Ors [1990] FSR 181, at 189 (Improver’s Test); and

the application of the test expounded in Actavis UK Ltd & Ors v Eli Lilly and Co, and other appeals [2018] 1 All ER 171, at [66] (Actavis’ Test). N(1). BBScan System (2nd Version)

Based on the evidence of SP1, SP2, SP3 and SP4, the essential features of BBScan System (2nd Version) are as follows:

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

BBScan System (2nd Version) operates in the following three zones -

“Entry Zone”;

“Vehicle Data Collection Zone”; and

“Scanner Zone”; 39

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

the Vehicle Data Collection Zone employs the following two separate systems -

“Optical Character Recognition System” (OCR System); and

“Radiation Portal Monitoring System” (RPM System);

the OCR System uses optical cameras to capture the license plate of vehicles entering the Vehicle Data Collection Zone and the container number of the cargoes (if any). Information captured by the OCR System is stored in the OCR database;

the RPM System detects the radiation level of vehicles entering the Vehicle Data Collection Zone and their cargoes. If a high-level radioactive material in a vehicle is detected by the RPM System, RMCD’s officers will be alerted. The radiation level reading for each vehicle is stored in the RPM database;

the Scanner Zone uses the following systems - 40

HAGI Radar;

a control system named “Programmable Logic Controller” (PLC); and

the Betatron Device;

the HAGI Radar detects a vehicle entering the Scanner Zone and will send a signal to the PLC. The PLC will then send a signal to the Betatron Device so as to activate the Betatron Device (which will generate Beams to conduct a Full Scan of the vehicle). SP2 has recorded this entire process to take only 0.03 seconds; and

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

Regarding the 1st Essential Integer (Claim 1) -

I accept the expert testimony of SD3 and SD4 that the over-height sensors on the gantry and the HAGI Radar of BBScan System (2nd Version) constitute the 1st Detecting Unit. This is because the over-height sensors on the gantry can detect whether moving objects move into the Passage or otherwise. Similarly, the HAGI Radar is able to detect whether a moving object moves into the Passage or not; 41

if this court accepts the expert opinion of SP2 that the over-height sensors on the gantry and the HAGI Radar of BBScan System (2nd Version) do not fall within the meaning of the 1st Detecting Unit, this is tantamount to an acceptance of a narrow meaning of the word “detect” in in Claim 1 and is contrary to the Purpose (‘862 Patent); and

a purposive interpretation of the 1st Essential Integer (Claim 1) only requires the 1st Detecting Unit to “detect whether a moving object to be inspected” has moved into the Passage or not. The 1st Essential Integer (Claim 1) does not require BBScan System (2nd Version) to distinguish whether a moving object is a vehicle, non-vehicle or a natural person. In any event, SD3 has given his expert view that HAGI Radar is able to distinguish between a vehicle and its driver.

In respect of the 2nd Essential Integer (Claim 1) -

I am satisfied that based on the expert testimonies of SD3 and SD4, BBScan System (2nd Version) has a 2nd Detecting Unit, namely the HAGI Radar. According to SD3, the HAGI Radar can -

detect whether a part to be shielded of the moving object passes into the Passage or otherwise; and

send a Passing Signal (which contains information regarding, among others, the part of the moving object to be shielded from scanning) to the Control System (PLC) after the 1st Detecting Unit (the over-height sensors on the gantry and the HAGI Radar) 42 has detected a moving object (to be inspected) moving into the

I am not able to accept SP2’s expert opinion that due to “severe dense echo multipath from the transmitted pulse” (Clutter), the HAGI Radar can only detect the presence of the front end of the approaching vehicle. This is because, as admitted by SP2, the HAGI Radar is a “UWB terrestrial radar” which is able to filter Clutter during the performance of its functions. In other words, the HAGI Radar can operate in the presence of Clutter and is able to detect not only the front part of the vehicle but also all other parts of the vehicle, including the Driving Cab;

SP2 has opined that when the front part of the vehicle reaches “trigger point 5” (Trigger 5), a “simple signal” associated with scanning, namely a “switch on signal of one-bit information (with no other information)”, is sent by HAGI Radar to the PLC to start the scanning process by the Betatron Device. According to SP2, the Green Board is part of HAGI Radar and the HAGI Radar cannot send a Passing Signal to the PLC. I am not able to accept such an expert opinion by SP2 because -

the scanning process in BBScan System (2nd Version), as admitted by SP1, operates on a “pre-determined non-arrival time-out” mechanism (Time-out Mechanism). According to the Time-out Mechanism, if a vehicle has not reached “Position B” within a pre-determined time period, the Time-out Mechanism will be triggered (even if Trigger 5 is triggered) and the scanning process by the Betatron Device does not commence. It is thus 43 clear that SP2 has fallen into error because the Betatron Device does not start scanning a vehicle even if Trigger 5 has been triggered when the Time-out Mechanism applies;

the above expert view of SP2 was not in his initial expert report (when it was filed in court and served on the Defendants’ solicitors) and was only given in this court after SP2 had taken the witness stand and had subsequently amended his expert report to include the above expert opinion; and

the Green Board is part of the Control System and does not form part of HAGI Radar. This is clear from the wiring diagram of BBScan System (2nd Version) (Wiring Diagram), FAT reports and HAGI Radar Specifications. In fact, the Green Board has a microprocessor to process data sent by “RS232 Cable”;

SP2 has given expert evidence that because scanning by the Betatron Device starts from the front of the vehicle, BBScan System (2nd Version) has no ability to shield any part of the vehicle. Such an expert opinion is contrary to MyCIS Video which shows that BBScan System (2nd Version) is capable of shielding the Driving Cab;

as explained in the above sub-paragraph 35(1), the true capabilities of HAGI Radar can be ascertained from the HAGI Radar Specifications. There is no expert evidence led by the Plaintiffs that the HAGI Radar Specifications have stated that HAGI Radar has no ability to detect whether a part to be shielded of the moving object has passed into the Passage or not; 44

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

a purposive interpretation of Claim 1 does not require HAGI Radar to measure the exact shape and size of the Driving Cab so as to enable the Driving Cab to be shielded during the scan. The 2nd Essential Integer (Claim 1) is fulfilled by BBScan System (2nd Version) so long as the HAGI Radar has the ability to detect whether the part of the moving object to be shielded from scanning, has passed into the Passage or otherwise.

The Plaintiffs have contended that in Claim 1, the 1st Detecting Unit and 2nd Detecting Unit have to be discrete. I am not able to accept such a construction of Claim 1. Firstly, a purposive interpretation of the 1st Essential Integer (Claim 1) and 2nd Essential Integer (Claim 1) does not provide that the 1st Detecting Unit has to be separate from the 2nd Detecting Unit. Furthermore, I accept the expert opinion of SD3 that the HAGI Radar can be broken into discrete sub-systems within the HAGI Radar itself wherein there is a sub-system which constitutes the 1st Detecting Unit and another sub-system which functions as the 2nd Detecting Unit. It is thus clear that HAGI Radar performs the functions of the 1st Detecting Unit and 2nd Detecting Unit within the meaning of the 1st 45 Essential Integer (Claim 1) and 2nd Essential Integer (Claim 1) respectively.

Based on the expert testimony of SD4 -

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

BBScan System (2nd Version) has the 4th Essential Integer (Claim 1) because BBScan System (2nd Version) has a Control System (PLC) which sent Control Signals (which contains information regarding, among others, the part of the moving object to be shielded from scanning) for controlling Betatron Device to generate the Beams according to the Passing Signals (which contains information regarding, among others, the part of the moving object to be shielded from scanning).

In view of the above expert evidence of SD3 and SD4, BBScan System (2nd Version) has fulfilled all the 4 Essential Integers (Claim 1).

Claim 7 is fulfilled by BBScan System (2nd Version) because the moving object to be inspected is a vehicle and all the 4 Essential Integers (Claim 1) are present in BBScan System (2nd Version).

I find as a fact that Claim 8 is present in BBScan System (2nd Version). This decision is based on the following expert evidence and reasons:

BBScan System (2nd Version) has all the 4 Essential Integers (Claim 1); 46

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

SD4’s expert evidence is supported by the following evidence -

MyCIS Video (produced by the 2nd Plaintiff);

SD2 testified that during SD2’s Site Visits, in the Control Room, she saw Scan Images on the computer screen of BBScan System (2nd Version) where there was a shielding of the Driving Cab of vehicles inspected by BBScan System (2nd Version);

SD2’s Photographs show the shielding of the Driving Cab by BBScan System (2nd Version); and

according to SD2’s WhatsApp Messages, Mr. Koo informed SD2 that BBScan System (2nd Version) has an “adjustable setting” which is capable of shielding the Driving Cab;

the fact that SD4 did not inspect the Betatron Device during SD4’s inspection of BBScan System (2nd Version) (SD4’s Inspection) is immaterial because SD4 could provide his expert opinion regarding the capability of BBScan System (2nd Version) to shield the Driving Cab from being scanned by the Betatron Device; and

I give no credence to the Plaintiff’s contention that the Betatron Device operates on a single energy level, namely 6 MeV because 47 according to SD4’s expert view, the Betatron Device can operate at different energy levels. In fact, during SD4’s Inspection, the Betatron Device operated at 2 MeV (instead of at 6 MeV).

Premised on SD4’s expert evidence, I am satisfied that BBScan System (2nd Version) has infringed Claims 1, 7 and 8 according to Improver’s Test as follows:

the features of BBScan System (2nd Version) which are different from the 4 Essential Integers (Claim 1), Claims 7 and 8 do not have a material effect on the way the invention in Claims 1, 7 and 8 works;

the variants, if any, would have been obvious to SD4 (POSITA on ‘862 Patent) on the date of publication of ‘862 Patent; and

SD4 would not have understood from the language of Claims 1, 7 and 8 that the Defendants (as co-patentees of ‘862 Patent) intended that strict compliance with the primary meaning of Claims 1, 7 and 8 was an essential requirement of the invention in Claims 1, 7 and 8.

Applying Actavis’ Test, according to SD4’s expert view, there has been an infringement of Claims 1, 7 and 8 by BBScan System (2nd Version) as follows:

notwithstanding that some features of BBScan System (2nd Version) are not within the literal meaning of Claims 1, 7 and 8, the variants achieve substantially the same result in substantially the same way as the invention in Claims 1, 7 and 8; 48

it is obvious to SD4 (POSITA on ‘862 Patent) reading Claims 1, 7 and 8 on the priority date of ‘862 Patent that BBScan System (2nd Version) achieves substantially the same result as the invention in Claims 1, 7 and 8 in substantially the same way as the invention in Claims 1, 7 and 8; and

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

As regards the 1st Essential Integer (Claim 9), I accept the expert evidence of SD3 and SD4 that the over-height sensors on the gantry and the HAGI Radar of BBScan System (2nd Version) constitute the 1st Determining Step of judging whether a moving object has moved into the Passage or otherwise.

I am satisfied based on the expert opinion of SD3 and SD4 that BBScan System (2nd Version) has the 2nd Essential Integer (Claim 9) because the HAGI Radar is capable of -

being the 2nd Determining Step of judging whether a part to be shielded of a moving object, has passed through the Scan Area; and

generating a Passing Signal (which contains information regarding, among others, the part of the moving object to be shielded from scanning) to be sent to the Control System (PLC). 49

Premised on the expert views of SD3 and SD4, I find as a fact that BBScan System (2nd Version) possesses the 3rd Essential Integer (Claim 9), namely the scan imaging step, as follows:

the PLC generates a Control Signal (which contains information regarding, among others, the part of the moving object to be shielded from scanning) to the Betatron Device (to control the Betatron Device); and

the Betatron Device generates Beams according to the Passing Signal (which contains information regarding, among others, the part of the moving object to be shielded from scanning), after judging that the part of the moving object to be shielded passes through the Scan Area, to emit Beams to the Passage and inspect the moving object by scanning to dodge the area to be shielded.

As explained above, I have no hesitation to find as a fact that BBScan System (2nd Version) has fulfilled all the 3 Essential Integers (Claim 9).

Claim 11 applies to BBScan System (2nd Version) because the moving object to be inspected is a vehicle and BBScan System (2nd Version) possesses all the 3 Essential Integers (Claim 9).

BBScan System (2nd Version) has infringed Claim 12 because -

BBScan System (2nd Version) possesses all the 3 Essential Integers (Claim 9); and

the part of the vehicle to be shielded from scanning by BBScan System (2nd Version) is the Driving Cab. 50

Applying Improver’s Test, this court is satisfied that BBScan System (2nd Version) has infringed Claims 9, 11 and 12 because -

the features of BBScan System (2nd Version) which are different from Claims 9, 11 and 12 do not have any material effect on the way the invention in Claims 9, 11 and 12 works;

the variants, if any, would have been obvious to SD4 (POSITA on ‘862 Patent) on the date of publication of ‘862 Patent; and

SD4 would not have understood from the language of Claims 9, 11 and 12 that the Defendants (as co-patentees of ‘862 Patent) intended that strict compliance with the primary meaning of Claims 9, 11 and 12 was an essential requirement of the invention in Claims 9, 11 and 12.

Based on SD4’s expert evidence, an application of Actavis’ Test shows that BBScan System (2nd Version) has infringed Claims 9, 11 and 12 as follows:

notwithstanding that some features of BBScan System (2nd Version) are not within the literal meaning of Claims 9, 11 and 12, the variants achieve substantially the same result in substantially the same way as the invention in Claims 9, 11 and 12;

it is obvious to SD4 (POSITA on ‘862 Patent) reading Claims 9, 11 and 12 on the priority date of ‘862 Patent that BBScan System (2nd Version) achieves substantially the same result as the invention in 51 Claims 9, 11 and 12 in substantially the same way as the invention in Claims 9, 11 and 12; and

SD4 would not have concluded that the Defendants (as co-patentees of ‘862 Patent) intended that strict compliance with the literal meaning of Claims 9, 11 and 12 was an essential requirement of the invention in Claims 9, 11 and 12. N(4). Have Defendants discharged burden to prove Patent Infringement?

As explained in the above Parts N(2) and N(3), BBScan System (2nd Version) has infringed Claims 1, 7, 8, 9, 11 and 12.

I find as a fact that the Plaintiffs have committed Patent Infringement in the following manner:

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

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

RMCD’s DG and Government have committed Patent Infringement when RMCD uses BBScan System (2nd Version) as understood in s 36(3)(a)(i),

(b)(i) and/or (ii) read with s 58 PA.

I am of the view that the Defendants have succeeded to discharge the legal and evidential burden to prove on a balance of probabilities that the 52 Plaintiffs, RMCD and Government have committed Patent Infringement in this case. N(5). Adverse inference

I accept the Defendants’ submission that an adverse inference against the Plaintiffs should be made under s 114(g) EA due to the following reasons:

on 18.4.2016, all the parties in this case have agreed to a discovery order whereby the Plaintiffs are bound to produce, among others, technical documents regarding BBScan System (Discovery Order). Despite the Discovery Order, relevant documents regarding the Green Board (such as the circuit diagram) and HAGI Radar (eg. the signal processing algorithms) have not been adduced by the Plaintiffs in this case;

the Plaintiffs have failed to call ISB’s Expert to assist this court regarding the true capabilities of HAGI Radar;

the person who recorded the Radiation Levels Data, namely Alfred, had not been called by the Plaintiffs to testify regarding the recording of the Radiation Levels Data; and

on 19.4.2016, all the parties have agreed to a consent order which allows the Defendants to inspect the 2 Sites (Site Inspection Order). When SD4 inspected BBScan System (2nd Version) on 23.5.2016 and 24.5.2016, despite the Site Inspection Order - 53

SD4 was not given access to the image analysis room which stored data for the Scan Images;

SD4 was denied access to the pull down menu for the Betatron Device which would show the energy level and pulse counts; and

during SD4’s site inspections, BBScan System (2nd Version) was not operating “normally”. In other words, the Plaintiffs have concealed the true capabilities of BBScan System (2nd Version) from SD4.

I have not overlooked SD2’s suppression of SD2’s Video Recording which attracts an adverse inference against the Defendants under s 114(g) EA. Such an adverse inference is however rebutted by the expert opinions of SD3 and SD4 which prove the Patent Infringement in this case - please see the Supreme Court’s judgment delivered by Syed Agil Barakbah SCJ in Namasiyiam & Ors v Public Prosecutor [1987] 2 MLJ 336, at 343. N(6). Unlawful circumvention of High Court’s Decision (2 Suits)

After the High Court’s Decision (2 Suits), the Plaintiffs came up with BBScan System (2nd Version). I find as a fact that BBScan (2nd Version) constitutes an unlawful circumvention of the High Court’s Decision (2 Suits). This is because no expert evidence has been adduced by the Plaintiffs to show that BBScan (2nd Version) has been designed and developed based on known technology which is independent of ‘862 Patent. 54 O. Whether court should grant injunctions in this case

Section 60(1) PA provides as follows: “60(1) If the owner of the patent proves that an infringement has been committed or is being committed, the Court shall award damages and shall grant an injunction to prevent further infringement and any other legal remedy.” (emphasis added).

Despite the fact that s 60(1) PA employs the term “shall”, I am of the view that the court has a discretion not to grant an injunction in a patent infringement case. This is because by virtue of ss 50, 52 [Illustration (r)] and 53 SRA, an injunction is an equitable remedy which may be granted at the discretion of the court. I reproduce below ss 50, 52 [Illustration (r)] and 53 SRA: “50. Preventive relief is granted at the discretion of the court by injunction, temporary or perpetual. 52(1) Subject to the other provisions contained in, or referred to by, this Chapter, a perpetual injunction may be granted to prevent the breach of an obligation existing in favour of the applicant, whether expressly or by implication. ILLUSTRATIONS …

A infringes B’s patent. If the court is satisfied that the patent is valid and has been infringed, B may obtain an injunction to restrain the infringement. … 55

When, to prevent the breach of an obligation, it is necessary to compel the performance of certain acts which the court is capable of enforcing, the court may in its discretion grant an injunction to prevent the breach complained of, and also to compel performance of the requisite acts.” (emphasis added).

In this case, the court has no discretion to grant any injunction against RMCD and Government because of the following statutory provisions: “GPA 29(1) In any civil proceedings by or against the Government the court shall, subject to this Act, have power to make all such orders as it has power to make in proceedings between subjects, and otherwise to give such appropriate relief as the case may require: Provided that -

where in any proceedings against the Government any such relief is sought as might in proceedings between subjects be granted by way of injunction or specific performance, the court shall not grant an injunction or make an order for specific performance, but may in lieu thereof make an order declaratory of the rights of the parties; and …

The court shall not in any civil proceedings grant any injunction or make any order against an officer of the Government if the effect of granting the injunction or making the order would be to give any relief against the Government which could not have been obtained in proceedings against the Government. SRA

An injunction cannot be granted - 56 …

to interfere with the public duties of any department of any Government in Malaysia, or with the sovereign acts of a foreign Government; …” (emphasis added).

In view of proviso (a) to s 29(1), s 29(2) GPA and s 54(d) SRA, this court cannot grant any perpetual injunction, be it restraining or mandatory, against RMCD’s DG and Government. The following reasons support such a decision:

RMCD and Government are blameless in this case;

BBScan System (2nd Version) has been acquired by the Government with the use of public funds. It will be a waste of public funds if injunctions are ordered regarding BBScan System (2nd Version);

any injunction to restrain RMCD from using BBScan System (2nd Version) would hinder the performance of RMCD’s statutory duties and functions under the Customs Act 1967; and

in lieu of injunctions -

this court exercises its discretion to grant declarations in favour of the Defendants regarding the Patent Infringement - please see proviso (a) to s 29(1) GPA and s 60(1) PA (any other legal remedy); and

the Defendants are entitled to elect to claim for - 57

damages under s 60(1) PA; or

(ii) an account of profits [s 60(1) PA (any other legal remedy)]. In view of the above monetary relief available to the Defendants, the Defendant are therefore not prejudiced by the court’s refusal to grant injunctions in favour of the Defendants in this case.

There is another reason why the Defendants cannot claim for injunctive relief in this case. The following unlawful and inequitable conduct by the Defendants (Defendants’ Unlawful Conduct) disentitles them under s 54(j) SRA from claiming for an equitable remedy of injunction:

in this case, SD2 and Kazakh National have each committed an offence of impersonation under ss 415(b) and 416 PC. I reproduce below ss 415(b) and 416 PC - “415. Whoever by deceiving any person, whether or not such deception was the sole or main inducement, - …

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

A person is said to “cheat by personation”, if he cheats by pretending to be some other person, or by knowingly substituting one person for another, or representing that he or any other person is a person other than he or such other person really is. 58 Explanation - The offence is committed whether the individual personated is a real or imaginary person.” (emphasis added);

the 2 Sites are “protected places” according to s 2 read with s 5 PAPPA. SD2 and Kazakh National did not obtain permission from RMCD before they enter the 2 Sites as required by s 5(1) PAPPA. SD2 and Kazakh National have each committed an offence under s 7 PAPPA which may be punished with imprisonment up to 2 years and/or a fine not exceeding RM1,000.00;

at the 2 Sites, SD2 had unlawfully taken SD2’s Photographs and SD2’s Video Recording;

SD2’s Video Recording is suppressed from the court by SD2 and an adverse inference under s 114(g) EA is therefore drawn against the Defendants - please see the above paragraph 80; and

when SD2 testified in this case, without giving any prior notice to the learned counsel for the Plaintiffs, RMCD and Government, SD2 applied to court for immunity from prosecution under s 132(2) EA so as to enable SD2 to tender SD2’s Video Recording as evidence (SD2’s Application). Section 132(1) and (2) EA provide as follows - “s 132(1) A witness shall not be excused from answering any question as to any matter relevant to the matter in issue in any suit, or in any civil or criminal proceeding, upon the ground that the answer to that question will criminate or may tend directly or indirectly to criminate, him, or that it will expose, or tend directly 59 or indirectly to expose, the witness to a penalty or forfeiture of any kind, or that it will establish or tend to establish that he owes a debt or is otherwise subject to a civil suit at the instance of the Government of Malaysia or of any State or of any other person.

No answer which a witness shall be compelled by the court to give shall subject him to any arrest or prosecution, or be proved against him in any criminal proceeding, except a prosecution for giving false evidence by that answer.” (emphasis added). I disallow SD2’s Application on the following grounds -

immunity from prosecution (except for the offence of giving false evidence) under s 132(2) EA is only granted if the court “compels” a witness to answer a question during trial. This court did not compel SD2 to answer any question in this case; and

SD2 had committed the above offences and had the pre-meditated intention to seek immunity from prosecution (except for the offence of giving false evidence) pursuant to s 132(2) EA. If I had allowed SD2’s Application, this meant that SD2 would have immunity from prosecution for all her offences (except for the offence of giving false evidence). This would constitute an abuse of s 132 EA and would open the floodgates for criminals to apply for immunity from prosecution (except for the offence of giving false evidence) when they elect to testify in court regarding the crimes committed by them. 60 P. Should Defendants be deprived of costs in this case?

It is not disputed that the court has a wide discretion to award costs in any case - please see De Tebrau Makmur Sdn Bhd & Anor v Bank Kerjasama Rakyat Malaysia Bhd [2017] MLJU 201, at [67]. This is clear from O 59 rr 2(2), 3(2), 8(b) and 19(1) RC which provide as follows: “O 59 r 2(2) Subject to the express provisions of any written law and of these Rules, the costs of and incidental to proceedings in the Court, shall be in the discretion of the Court, and the Court shall have full power to determine by whom and to what extent the costs are to be paid. r 3(2) If the Court in the exercise of its discretion sees fit to make any order as to the costs of or incidental to any proceedings, the Court shall, subject to this Order, order the costs to follow the event, except when it appears to the Court that in the circumstances of the case some other order should be made as to the whole or any part of the costs. r 8. The Court in exercising its discretion as to costs shall, to such extent, if any, as may be appropriate in the circumstances, take into account - …

the conduct of all the parties, including conduct before and during the proceedings; … r 19(1) The amount of costs (excluding disbursement) that are payable shall be at the discretion of the Court and shall be determined upon the conclusion of the trial.” (emphasis added). 61

In view of the Defendants’ Unlawful Conduct (please see the above paragraph 86), I exercise my discretion under O 59 rr 2(2), 3(2), 8(b) and 19(1) RC to deprive the Defendants of costs of this case. If the Defendants are not penalized in respect of costs of this case, this will send the wrong message that -

a party may appoint a PI to obtain evidence by breaking the law (PI’s Offence); and

when the PI testifies in court regarding the illegally obtained evidence, the PI may abuse s 132(2) EA by applying to court under s 132(2) EA for immunity from prosecution regarding PI’s Offence.

I should add that no costs is ordered against RMCD’s DG and Government because RMCD and Government are blameless in this case. Q. Court’s decision

In summary -

the Defendants cannot contend in this case that BBScan System (1st Version) has infringed Claims 1, 7, 8, 9, 11 and 12;

by reason of the issue estoppel principle, the Plaintiffs, RMCD’s DG and Government are estopped from denying the effect of the High Court’s Decision (2 Suits) in this case;

according to the 3 Tests, based on the expert evidence of SD3 and SD4, BBScan System (2nd Version) has infringed Claims 1, 7, 8, 9, 11 and 12. Consequently, the Plaintiffs, RMCD’s DG and 62 Government have committed Patent Infringement under s 36(3)(a)(i),

(b)(i) and (ii) read with s 58 PA;

the court draws an adverse inference against the Plaintiffs pursuant to s 114(g) EA by reason of the Plaintiffs’ failure to adduce material documentary evidence and to call relevant witnesses;

an adverse inference against the Defendants arising from the suppression of SD2’s Video Recording is rebutted by the expert evidence of SD3 and SD4 regarding Patent Infringement;

by reason of proviso (a) to s 29(1) GPA, s 29(2) GPA, s 54(d) and (j) SRA, the court cannot grant any perpetual injunction, restraining and mandatory, against RMCD’s DG and Government; and

in view of the Defendants’ Unlawful Conduct, this court exercises its discretion under O 59 rr 2(2), 3(2), 8(b) and 19(1) RC to deprive the Defendants of costs of this case.

Premised on the above evidence and reasons -

the Original Action (This Suit) is dismissed;

the Counterclaim (This Suit) is allowed; and

no order of costs is made regarding the Original Action (This Suit) and Counterclaim (This Suit).

I end by emphasising that PI’s cannot breach the law in their overzealousness to obtain evidence for their clients and then abuse s 63 132(2) EA by applying to court for immunity from prosecution (except for the offence of giving false evidence). WONG KIAN KHEONG Judge High Court (Commercial Division) Kuala Lumpur DATE: 22 JULY 2019 Counsel for Plaintiffs: Ms. Chew Kerk Ying, Dato’ Mohd. Ariff Emran bin Arifin, Mr. Chong Tze Lin & Mr. Raymond Tan Yan Kai (Messrs Wong & Partners) Counsel for Defendants: Mr. Khoo Guan Huat, Ms. Kuek Pei Yee, Mr. Joshua Teoh Beni Chris, Ms. Lam Rui Rong & Mr. Gooi Yang Shuh (Messrs Skrine)