Mühlbauer AG v Manufacturing Integration Technology Ltd

• Jurisdiction: Singapore
• Judge: Chao Hick Tin JA
• Judgment Date: 23 February 2010
• Neutral Citation: [2010] SGCA 6
• Date: 23 February 2010
• Docket Number: Civil Appeal No 34 of 2009
• Published date: 19 March 2010
• Plaintiff Counsel: Dr Stanley Lai and Vignesh Vaerhn (Allen & Gledhill LLP)
• Hearing Date: 01 October 2009
• Defendant Counsel: Foo Maw Shen, Koh Kia Jeng and Calvin Lim (Rodyk & Davidson LLP)
• Court: Court of Appeal (Singapore)
• Subject Matter: Patents and Inventions

Andrew Phang Boon Leong JA (delivering the judgment of the court):

This is an appeal against the decision of the trial judge (“the Judge”) in Mühlbauer AG v Manufacturing Integration Technology Ltd [2009] SGHC 45 (“the GD”). The Judge allowed the respondent’s counterclaim that the appellant’s patent be declared invalid for want of both novelty as well as an inventive step. Accordingly, the appellant’s claim for infringement was dismissed.

The appellant, Mühlbauer AG (“the Appellant”), is a company incorporated in Germany. It is the registered proprietor of Singapore patent No 117982 entitled “Device for Inspecting and Rotating Electronic Components” [emphasis added] (“the Patent”), filed in Singapore sometime in December 2005. The Patent is in force in Singapore, with its priority date being 16 February 2004.

The respondent, Manufacturing Integration Technology Ltd (“the Respondent”), is a Singapore company. It is alleged to have infringed the Patent pursuant to s 66(1)(a) of the Patents Act (Cap 221, 2005 Rev Ed) (“the Act”) by making, disposing of, offering to dispose of, using or importing the patented product and/or keeping the patented product, whether for disposal or otherwise. In particular, the Appellant complained that the Respondent had manufactured and marketed a device under the trademark or name “CAERUS” which infringed the Patent.

In the court below, the Respondent acknowledged that its machine infringed all 10 claims of the Patent. In its counterclaim, however, the Respondent contended that the Patent lacked novelty as well as any inventive step vis-à-vis the prior state of the art (“the state of the art”), and should therefore be found to be invalid. In any case, for the purposes of this judgment, we shall be taking the Patent and the Respondent’s “CAERUS” device to be exactly identical.

Although the issues canvassed in the present appeal were straightforward, a number of significant (and broader) issues were raised, including (as we shall see) the role of characterisation in the context of deciding patent disputes as well as the (no less important) role of experts in the same context.

Facts (including a description of the Patent)

The Patent describes a machine for inspecting, picking up and placing electronic components onto printed circuit boards or tape and reel packaging. The Respondent’s “CAERUS” device is also a machine that facilitates the inspection and rotation of electronic components.

The 10 claims countenanced by the Patent are important, and they are as follows (see also Appendix A):¹ 1. A device for checking and rotating electronic components, in particular flip chips, with a pivoting part attached to a pivoting point for rotating the electronic components, on the exterior of which part a first pickup element is fixed for taking up a single electronic component from a substrate and keeping hold of it during a rotational movement of the part, characterized in that a second pickup element is arranged externally on the part opposite the first pickup element in relation to the pivotal point in such a way that in each case one pickup element is facing the substrate for each rotation of the part through 180º, and that in the part a through opening is arranged between the pickup elements in such a way that the through opening is facing the substrate for a rotation of the pivoting part through 90º or 270º. 2. Device according to Claim 1, characterized in that the first pickup element is attached on a first projection and the second pickup element on a second projection of the part. 3. Device according to Claim 2, characterized in that the through opening is developed between the projections as a through channel open on one long side. 4. Device according to one of the preceding claims, characterized in that on a side of the pivoting part facing the substrate a first optical facility is arranged for optical checking of surfaces and correct positions of the electronic components arranged on the substrate before being picked up. 5. Device according to Claim 4, characterized in that the through opening is formed in such a way that it permits an optical connection between the first optical facility and an electronic component arranged on the substrate during a rotational movement of the pivoting part. 6. Device according to one of the preceding claims, characterized by a second optical facility for checking a correct position of the rotated and deposited electronic component. 7. Method for checking and rotating electronic components, in particular flip chips, which are picked up individually from a sandwich of electronic components arranged on a substrate, by means of a first pickup element arranged on a pivoting part and are deposited in a rotated position, the pivoting part being placeable between the substrate and a first optical facility for checking the surface and the correct position of a single component arranged on the substrate, characterized in that during a 180º rotation of the pivoting part a pickup by the first pickup element of a single electronic component arranged on the substrate, a check of a surface and the correct position of a further electronic component arranged on the substrate, by means of the optical facility and a through opening arranged in the pivoting part, a depositing of the electronic component held by the first pickup element on a placing facility after a 180º rotation of the pivoting part and at the same time a further pickup of the further individual electronic component arranged on the substrate, by a second pickup element arranged externally opposite the first pickup element on the pivoting part, are executed. 8. Method according to Claim 7, characterized in that after the 180º rotation a 180º rotation going in the other direction is executed. 9. Method according to Claim 7 or 8, characterized in that by means of a second optical facility, a correct position of the turned and deposited component is checked and adjusted during or after its transport. 10. Method according to one of the claims 7 – 9, characterized in that the first optical facility is activated with a predefinable time delay after a rotation of the through opening into an optical connection line between the first optical facility and the electronic component still arranged on the substrate.

[emphasis added]

Put simply, the Patent describes both a device (Claims 1 through 6, with Claims 2 to 6 being dependent claims) and a method (Claims 7 through 10, with Claims 8 to 10 being dependent claims) in which an optical inspection of a wafer chip, a pickup of a wafer chip, a turning-around and subsequent deposit of the wafer chip all occur within a single 180-degree rotation of a two-headed pivoting part of the device. At the end of the 180-degree rotation, the device is primed to pick up the next wafer chip in line. The device alternates between clockwise and anti-clockwise 180-degree rotations of the pivoting pickup heads. The apparent ingenuity of this device (and method) lies in its circumventing the need for separate stages for optical inspection and pickup. By means of a through opening located transversely between the two pickup heads, the top-mounted camera inspects the wafer chip below on the substrate – the base material on which semiconductor devices are fabricated – while the pivoting part, picking up another wafer chip simultaneously, rotates through an angle of 90 or 270 degrees. As optical inspection and pickup are concurrent, the cycle time is reduced, resulting in greater productivity. ²

It was previously thought that since both the camera and the pickup head had to be located directly over the electronic component to carry out their respective tasks (of determining the position/orientation of the component and picking it up after correcting for any offset, respectively), this method required the pickup head to move out of the line of sight of the camera before each and every optical inspection. This was time-consuming. The device and method countenanced in the Patent, however, overcame this difficulty with apparent efficiency as well as elegance. Indeed, as we shall see, it is crucial to the present appeal that: The Patent operates with two pickup heads – and two pickup heads only. The Patent alternates between clockwise and anti-clockwise 180-degree rotations of the pivoting pickup heads, thus enabling a through opening located transversely between the two pickup heads that (in turn) facilitates visual inspection of the electronic component below. It is also important to note that the combined result of (a) and (b) above – from the important practical perspective – is a much improved overall throughput. This has, in turn, translated to significant commercial success as well – a point that was acknowledged by the Judge (see the GD at [44]), although he correctly pointed out that the commercial success of an invention “alone is not conclusive” as to whether the invention is novel and/or one involving an inventive step (see the GD at [47]). But we are running ahead of the story as these (as well as other) characteristics relating to the Patent will need to be compared with the relevant characteristics in the other patents mentioned below (see [11], and which are relied upon by the Respondent as forming part of the state of the art) in order to ascertain whether or not the Patent is new and/or involved an inventive step.

The decision below

After considering the evidence on both sides, in particular, the testimony of two expert witnesses, the Judge found (at [48] of the GD) that:

… what the [Appellant] has succeeded in inventing is not that described in its patent claims … but a more efficient utilisation of two pick up heads (perhaps by decreasing the size of the rotating parts and improving on the vacuum suction) thereby enhancing the speed of the throughput on its machine.

He further commented (at...