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SKB Shutters' Case

The SKB Shutters case: Malaysian Federal Court holds that dependent claims subsequently fall if the independent claims on which they depend on are invalidated.

By: Wing Hang Foong, Patents Department, Advanz Fidelis IP Sdn Bhd

The Federal Court of Malaysia in the case of SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Tan Kooi Lim (Civil Appeal No. 02(f)-97-12/2014) has delivered a landmark ruling which in essence states that the falling of an independent claim in a patent would cause any dependent claims associated with said independent claim to consequently fall as well.

This case concerned an appeal by SKB Shutters Manufacturing (Appellant) against the Court of Appeal’s decision in favouring the arguments of Seng Kong Shutter Industries (First Respondent) & Tan Kooi Lim (Second Respondent) (together, “the Respondents”), and reversing the judgement of the High Court. It was the finding of the Court of Appeal that the Appellant’s patent no. MY-128431-A titled “Rolling Door” was invalid, following the finding of one invalid claim (independent claim 1).

In this appeal, the Appellant submitted that the Court of Appeal’s findings of invalidation are unsound in its entirety, as the invalidation of the Patent following a finding of only one invalid claim and/or invalid parts of a claim is not sustainable in law. As such, the Appellant contended that the Court of Appeal could at most only partially invalidate the Patent.

The Federal Court upheld the judgement of the Court of Appeal and ruled in favour of the Respondents. The Federal Court stated that having considered independent claims 1 and 11 to be invalid, the Court of Appeal was entitled to hold the Appellant’s Patent invalid as the rest of the claims, being dependent on claim 1, would also fall. Citing the ca