In a recent patent infringement case in Singapore, the courts dealt with the issue of validity of the patent in suit.
The case was between Muhlbauer AG (the plaintiff) and Manufacturing Integration Technology Ltd (the defendant). The plaintiff is a company incorporated in Germany. It is the registered proprietor of Singapore patent number 117982 entitled “Device for Inspecting and Rotating Electronic Components” with a priority date of 16 February 2004. The defendant, a Singapore company, is alleged to have infringed the patent by manufacturing and marketing a device for inspecting and rotating electronic components which is distributed under the trade mark “CAERUS”. The defendant acknowledged infringement but disputed the validity of the plaintiff’s patent.
As Singapore has a self assessment system for National Phase applications entering Singapore, the applicant may eventually request for a grant of the patent by conducting local search and/or examination, or by relying on the results of a allowed/granted corresponding application or (as in this case) the findings of the examination done during the International phase. It has to be noted that a check with the PCT website shows that the plaintiff had sought grant of the Singapore patent on the basis of a strong International Preliminary Report on Patentability (IPRP), which had concluded that all 10 claims of the said patent complied with all the three conditions for a patentable invention, namely: novelty, inventive step and industrial applicability.
As to the patent itself, it has to be noted that in electronics manufacturing, it is commonplace to find pick and place mechanisms at work. The speed of completing a cycle and accuracy of placement are two important factors. One way of achieving accuracy of placing electronic components onto a substrate is by determining the position and orientation of the electronic components by optical means, usually a camera, before picking them up and placing them onto the substrate. However logically, since the capture of the positioning by the camera takes time and does not allow simultaneous pick up, the entire cycle is slowed.
The plaintiff’s invention consisted of two pickup heads in order to reduce the cycle time. One pickup head picks up an electronic component by its top surface while another pickup head concurrently transfers a previously picked up electronic component to another placing head which receives the electronic component by its bottom surface. The two pickup heads are arranged directly opposite each other on a pivoting part that rotates 180º each time. By means of a through opening located between the two pickup heads, the camera inspects the electronic component below while the pivoting part is rotating through an angle of 90º or 270º. As the optical inspection is carried out during the rotation step, time is fully made used of and not wasted in having to move the various components of the machine to and fro. The cycle time for the process is thus reduced.
During trial, the defendant presented five pieces of prior art to invalidate the plaintiff’s patent. During the international phase, the PCT Examiner only evinced two pieces of prior art. Among the prior art relied upon by the defendant a particularly strong piece (the ASA patent) was not mentioned in the PCT examination.
In deciding the issue of novelty in Singapore, Justice Tay relied on Justice Lai Kew Chai in Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd (No. 2) [2005] 3 SLR 389 where the learned judge set out the following guiding principles:
(a) the issue is determined by asking whether an invention forms part of the state of the art ;
(b) the prior art must, in order to invalidate the patent, be such that a person of ordinary skill and knowledge of the subject would at once perceive and understand and be able to practically apply the discovery without the necessity of making further experiments;
(c) the prior art documents must be construed as at the date of publication and it is not permissible to perform an ex post facto analysis;
(d) each prior art document has to be considered separately and not combined into a mosaic to arrive at the invention;
(e) the person skilled in the art is an unimaginative person of competent but average technical skill;
(f) the prior art document must contain clear directions to do what the patent claims to have invented.
Justice Tay then took in the opinions of the experts from both parties and accepted largely the report produced by the expert from the defendants, which having thoroughly reviewed the plaintiff’s patent and extensive research/information from public sources and other industry related publications and documents, suggested that the plaintiff’s patent is not new or novel because the invention features disclosed in Claims 1 and 7 have been palpably anticipated by the prior art materials. They include the pivoting part having two pick up heads placed opposite each other with one pick up head facing the substrate for pick up of a single electronic component and holding it during rotation through 180º, the rotary motion to invert the flip chip, the use of a vision inspection system to inspect the flip chip prior to its being picked up in that the image would be detected during rotation of the pivoting part through 90º or 270º, optical detection at the target placement site and optical detection and corrective movement of the flip chip after placement. Accordingly, the plaintiff’s patent was held to lack novelty.
The learned judge also found that the crux of the inventive concept in the plaintiff’s patent which is the carrying out of a visual inspection concurrently during the rotation of the pick up heads and via the through opening between the pick up heads, was already disclosed in the ASA Patent’s two head system and hence the patent in suit was lacking in inventive step. Furthermore, a concept involving four pick up heads was also held to be in the public domain and known to a skilled technician in the art. The plaintiff’s patent was thus held to be invalid.
On the issue of commercial success of the invention supporting its patentability, the learned judge commented that although the plaintiff’s machine sold like hotcakes in the market, the mere fact of commercial success of an invention alone is not conclusive. A product that sells well is not necessarily novel or one that involves an inventive step over the prior art. Good advertising, aggressive marketing and pricing could also play a part.
It is therefore important to note that the International Search and Written Opinion only provides a non-binding assessment of an invention’s patentability in Singapore and although the Report concerned may cause the grant of a patent, the courts are free to consider the position at trial. This is as the parties applying to revoke the patent may throw up more pieces of prior art than would have been discovered during the international phase. So applicants and patent practitioners may do well to remember that a strong favourable IPRP may in itself not be a sufficient guarantee of a valid patent, and ultimately it is the courts in Singapore that get to have the final say on its validity.