In the second such patent infringement suit this year, the Singapore High Court has decided in favor of the defendants by revoking the plaintiff’s Singapore patent on the grounds of lacking novelty and inventive step. Interestingly, the patent in question, like the previous one, also relates to the electronics manufacturing industry.
Background
The plaintiff, ASM Assembly Automation Ltd (“ASM”), manufactures and sells semiconductor assembly and packaging equipment. Their allegedly infringed patent relates to the mounting Integrated Circuit (“IC”) packages onto Printed Circuit Boards (“PCBs”) so as to form electrical connections between the two and in particular, ball-grid array technology, whereby an array of solder balls are soldered on the subtrate of the IC package for mounting onto a PCB.
It was alleged that the first defendant, Aurigin Technology Pte Ltd (“Aurigin”), infringed ASM’s patent relating to this particular field of technology, the patent being granted by reliance on its corresponding US application. The second and third defendants, as the directors of Aurigin, were alleged to have directed, authorized, counseled or procured Aurigin to infringe the patent.
The allegedly infringing article was Aurigin’s AU800, an automated BGA solder ball placement machine housing a key solder ball placement module based on its own patented solder ball placement module design, said module also patented in Singapore and the United States. In, particular, ASM sought a declaration that its Singapore patent was valid and that the above article infringed claims 1-4, 6-7 and 11-12 of its amended patent. An injunction was also sought restraining the defendants from infringing its Singapore patent, as well as an inquiry as to damages or in the alternative, an account of profits made by Aurigin and its directors as a result of the infringing act.
In defense, the defendants claimed ASM”s patent to be lacking patentability in respect of novelty and inventive step and that there was no evidence of infringement. Pleadings for a right to continued use under section 71(1) and innocent infringement was also made, while an injunction was sought restraining ASM from threatening their customers with legal proceedings. A counterclaim against ASM was also made alleging groundless threats of infringement proceedings.
THE DECISION
As is common in patent infringement cases, expert witnesses played a salient role in the court’s decision, perhaps even more so in this particular case. One of the plaintiff’s witnesses was found to lack sufficient knowledge of the prior art and had to backtrack on his findings in several instances, while the other, as a patent attorney and partner of the intellectual property firm responsible for prosecuting the plaintiff’s corresponding US patent, was found not to be a person skilled in the art, upholding the court’s decision in Ng Kok Cheng v Chua Say Tiong [2001]. In particular, the first witness’ assertions that the tilting mechanism and that the container of claim 1 having a closed top, as claimed in claim 11, was sufficient to confer novelty on the invention had to be withdrawn in the face of prior art, leading the court to cast aspersions over the nonpartisanship of the witness. On the other hand, the defendant’s witness had impressive credentials in this field of technology and was able to explain the reasons for his conclusions cogently and authoritatively, thus resulting in the court’s unreserved acceptance of the defendant’s findings that the plaintiff’s patent was anticipated by the prior art.
On the grounds of inventive step, the plaintiff’s witness identified advantages achieved by the invention as claimed. Firstly, the invention allows multiple opportunities to backfill the solder balls. Secondly, the invention minimizes the damage to the solder balls and thirdly, having the closed lid on the container reduced oxidization of the solder balls in the process. Again, these findings were refuted by the court.
With regard to the first point, the court found it did not constitute an inventive step, since the prior art as well as the allegedly infringing article were able to fill the solder balls within a single stroke, thereby rendering the additional opportunities for backfilling redundant. The plaintiff’s patent was therefore seen as an obvious disadvantageous modification of the prior art, while doubts were also expressed over the second and third advantages. Regardless, the court accepted the defendant’s submission that the plaintiff’s patent contained no inventive step since it comprised a mere aggregation of features taught in the prior art, such as the closed top container, the location of the position member and the bi-directional tilting mechanism.
Lastly, in respect of the defendant’s counterclaim for groundless threats of infringement proceedings, the court upheld the current standing in Singapore, which awards relief to a person aggrieved by the threats unless the person making the threats are able to prove that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent, and that the patent is valid. This is based on the former section 70 of the United Kingdom Patents Act, which has now been amended to require that the person making the threats be aware or had reason to suspect that the patent was invalid. Since no such amendment has been made thus far, Singapore’s position remains consistent with that of Siegfried Demel (Trading As Demotec Siegfried Demel) v. C & H Jefferson (A Firm) and Another [1999] under the former section 70 of the United Kingdom Patents Act.
In finding the plaintiff’s patent to be invalid, the court then deemed the threats unjustifiable, granting relief to the first defendant as well as an injunction preventing ASM from threatening legal proceedings for infringement of their patent.