Patent infringement – Patentability requirements – Whether the adjudication of an independent claim as invalid, automatically renders claims which are dependent on the independent claim invalid, without the need for the court to consider separately the validity of each and every dependent claim(s) – Patents Act 1983

Merck Sharp & Dohme Group and Merck Sharp & Dohme (Malaysia) Sdn Bhd v Hovid Berhad
Civil Appeal No 02(f)-53-07/2018(W), Federal Court

see the grounds of judgment here

Facts Merck Sharp & Dohme Group and Merck Sharp & Dohme (Malaysia) Sdn Bhd (the appellants), brought an action against Hovid Berhad (the respondent), for patent infringement of their patent. The appellants claimed that the respondent’s import, manufacture, offer for sale and stocking for the purpose of sale or offer for sale, alendronate 70 mg tablets had infringed their patent, which the first appellant was, at the material time, the registered owner of the said patent pertaining to the alendronate dosing issue, under the trade name “Fosamax” to inhibit bone resorption in humans. The second appellant is a Malaysian company which holds the exclusive licence from the first Plaintiff to distribute, sell, and offer to sell Fosamax products in Malaysia. The respondent denied the alleged infringement and counterclaimed for a declaration that the patent was invalid on the ground that the patent exhibited no inventive step pursuant to section 56(2)[1] of the Patents Act 1983 (the Act). The High Court dismissed the respondent’s infringement action against the Defendant and allowed the latter’s counterclaim for invalidation of the patent and declared that the patent was invalid for want of inventive step. The Court went on to hold that as the independent claim was invalid, all dependent claims related to the patent fell. Aggrieved, the appellants appealed to the Court of Appeal but was dismissed. Hence, this appeal.

Issues The main issue is whether it is correct to hold that the independent claim having fallen, all the other dependent claims also fall automatically as held in SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor
[2] (SKB Shutters).

Held In allowing the appeal, the Federal Court overturned the decision in SKB Shutters as it failed to take into account the myriad of other claims and bases of the challenge that routinely arise in patent adjudication and remitted back the case to the High Court to determine whether each of the dependent claims possesses independent validity (notwithstanding the fact that this case may entail Type 1 Claims
[3] or unless there is an express concession).
[1] Invalidation of patent
[2] [2015] 6 MLJ 293
[3] Type 1 claims consist of one or more independent claims which are supersets of the dependent claims. Naturally, the dependent claims would be subsets of the independent claim, focusing on specific features and having a narrower scope. (para 42)