Towa Corp v ASM Technology Singapore Pte Ltd and another

• Jurisdiction: Singapore
• Judge: Lee Seiu Kin J
• Judgment Date: 22 December 2016
• Neutral Citation: [2016] SGHC 280
• Plaintiff Counsel: Low Chai Chong, Long Ai Ming, Foo Maw Jiun and Ng Chong Yuan (Dentons Rodyk & Davidson LLP)
• Docket Number: Suit No 359 of 2013
• Date: 22 December 2016
• Hearing Date: 15 July 2016,14 July 2016,20 July 2016,19 July 2016,26 September 2016,12 July 2016,13 July 2016
• Subject Matter: Groundless threat,Validity,Inventive step,Patents and inventions,Infringement,Novelty,Defence
• Published date: 11 January 2018
• Defendant Counsel: Lim Ying Sin Daniel (Joyce A. Tan & Partners LLC)
• Court: High Court (Singapore)
• Citation: [2016] SGHC 280
• Year: 2016

Lee Seiu Kin J:

The plaintiff, Towa Corporation, is a company incorporated in Japan. The plaintiff is the registered proprietor of Singapore Patent No 49740 (“the Patent”). The first defendant, ASM Technology Singapore Pte Ltd, is a company incorporated in Singapore and is a wholly-owned subsidiary of the second defendant, ASM Pacific Technology Limited, which is a company incorporated in the Cayman Islands but with its registered address in Hong Kong. The Patent expired sometime in 2014, although parties seem to differ on the exact date of expiry.

In this suit (“the Suit”) the plaintiff claims against the defendants for infringement of the Patent. The infringing acts alleged by the plaintiff concern a product known as the IDEALmold machine. The defendants oppose the plaintiff’s claim on various grounds. They also counterclaim against the plaintiff for making groundless threats of infringement proceedings pursuant to s 77 of the Patents Act (Cap 221, 2005 Rev Ed) (“Patents Act”).

The Suit has been bifurcated and the trial proceeded on the issue of liability.

Facts Brief background to moulding technology and moulding machines

The Patent concerns moulding technology and moulding machines. Moulding is the process of injecting molten thermo-setting plastics on top of electronic circuitry. Thermo-setting plastics (also referred to as “resin”) are made up of polymer materials with the unique characteristic of being liquid or malleable but capable of undergoing an irreversible hardening process through curing (which is usually induced by heat) to become an infusible and insoluble polymer network.

The moulding process encapsulates the electronic circuitry with resin. This involves a process of softening the resin with heat and injecting the resin into a mould under high pressure. The end result is a layer of resin encasing and sealing the electronic circuitry, which protects it from heat and environmental hazards.

In the 1970s, the moulding process involved a substantial amount of manual input from the operator. A typical moulding machine would comprise a mould as shown in the following diagram:

A moulding machine back then was essentially the mould (also called a “mould chase”) and a pressing mechanism which was used to operate the moulds. The mould chase with the pressing mechanism is usually referred to as a “mould press”. The moulding machine would operate as follows: Pre-heated resin tablet is manually placed into the pot. A lead frame (containing the electronic circuitry) is manually placed into the cavity. The lower and upper mould dies would come together through the operation of the pressing mechanism. The plunger compresses the resin and the resin flows through the runners into the cavities, encapsulating the lead frame in the process. The sealed lead frame is manually removed from the moulding machine after the resin cools and hardens.

The early 1990s, however, saw the advent of fully-automated moulding machines. In addition to having automated moulding presses, these machines automated the previously manual processes of loading and unloading the resin tablets and lead frames.

The parties’ pleaded cases The plaintiff’s pleaded case

The plaintiff’s pleaded case is that the defendants have infringed Claims 1, 2, 4 and 5 of the Patent by doing the following acts in Singapore without the consent of the plaintiff: The first defendant has offered for use, in Singapore, the IDEALmold machine which infringes Claims 1 and 2 of the Patent. The first defendant has made, kept, offered to dispose and disposed of, in Singapore, the IDEALmold machine which infringes Claims 4 and 5 of the Patent. The second defendant has made and kept, in Singapore, the IDEALmold machine which infringes Claims 4 and 5 of the Patent. Both defendants have jointly, pursuant to a common design, made, kept, offered for use, offered to dispose and disposed of, in Singapore, the IDEALmold machine which infringes Claims 1, 2, 4 and 5 of the Patent.

Thus, the plaintiff asks for: (a) a declaration that the Patent has been infringed by the defendants; (b) an inquiry as to damages or, alternatively, at the plaintiff’s option, an account of profits and an order for payment of all sums found due upon making such inquiry or account; and (c) interest. In addition to these, the plaintiff had originally asked for an injunction. However, in closing submissions, this was conceded to be an inappropriate remedy in light of the Patent’s expiry. The plaintiff had also originally asked for an order for delivery up or destruction upon oath, but ultimately accepted, in oral submissions, that it is “not really pressing” for this.

The defendants’ pleaded case

The defendants oppose the plaintiff’s claim on grounds that can be summarised as follows: The Patent is invalid for lack of novelty, inventive step and sufficiency. The IDEALmold machine merely embodies the teaching of an apparatus previously disclosed in the prior art available before the priority date of the Patent without substantial or patentable variation, such that any act made with respect to the IDEALmold machine did not, and could not, infringe the Patent. The claims of the Patent do not cover the IDEALmold machine. Neither of the defendants used or offered the use of the method covered by Claims 1 and 2 of the Patent with respect to the IDEALmold machine in Singapore. The defendants did not have knowledge, and in the circumstances it was not obvious to a reasonable person, that the alleged making, keeping, offer for use, offer to dispose or disposal of the IDEALmold machine may constitute use of the process in Claims 1 or 2 of the Patent. The second defendant is an investment holding company and was not involved in manufacturing or sales operations at all material times. There was no common design. The plaintiff has been aware, or should reasonably have been aware, of the IDEALmold machine since 1999/2000 and, therefore, s 6 of the Limitation Act (Cap 163, 1996 Rev Ed) (“Limitation Act”) and the defences of estoppel, delay, laches and acquiescence apply.

In addition, the defendants also rely on ss 69(1) and 70 of the Patents Act. They further counterclaim against the plaintiff for making groundless threats of infringement proceedings pursuant to s 77 of the Patents Act.

In these premises, the defendants ask for: (a) a declaration that Claims 1, 2, 4 and/or 5 of the Patent are invalid and/or are not infringed by the defendants; (b) an order that Claims 1, 2, 4 and/or 5 of the Patent be revoked; (c) a declaration that the plaintiff’s threats are unjustifiable; (d) an injunction against the continuance of the plaintiff’s threats; and (e) damages in respect of any loss the defendants have sustained by the threats.

The asserted claims

From the above, it is apparent that a total of four claims (viz, Claims 1, 2, 4 and 5) are in issue in the Suit. In so far as these claims are concerned: Claims 1 and 2 are process claims while Claims 4 and 5 are product claims. Claim 2 is dependent on Claim 1 and Claim 5 is dependent on Claim 4. Claim 1 is similar to Claim 4 in that Claim 1 teaches the process whereby the moulding machine taught in Claim 4 is operated.

In light of this, the plaintiff has suggested (rightly, in my view) that I focus my attention on Claim 4. In this regard, the disputed part of Claim 4 reads as follows:

An apparatus for molding resin to seal electronic parts, comprising:

…

additional molding units (5a, 5b, 5c) being rendered detachably mountable with respect to already provided said molding unit (5), thereby freely increasing/decreasing the number of said molding units.

Issues

Drawing the various threads together, the broad issues that arise for my determination in the Suit are as follows: What is the proper construction of the Patent claims (in particular, Claim 4)? Is the Patent (in particular, Claim 4) valid? If the Patent is valid, are the defendants prima facie liable for infringing the Patent? If the defendants are prima facie liable for infringing the Patent, are there any defences available to them? If the Patent is not valid and/or the defendants are not liable for infringing the Patent, is the plaintiff liable for making groundless threats of infringement proceedings?

In this judgment, the English spelling for “mould” will be used except where the word is cited from a document which adopts the American spelling.

What is the proper construction of the Patent claims (in particular Claim 4)? The law

I turn to the first broad issue, viz, what is the proper construction of the Patent claims (in particular, Claim 4)? In this regard, s 113(1) of the Patents Act provides that an invention for a patent for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the patent, as interpreted by the description and any drawings contained in that specification.

In First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal [2008] 1 SLR(R) 335 (“First Currency Choice”), the Court of Appeal observed (at [23]) that in ascertaining the true construction of a patent specification, the claims themselves are the principal determinant, while the description and other parts of the specification may assist in the construction of the claims. The court then went on to hold (at [24]) as follows:

As the necessary background of the words used in the claims may be affected or defined by what is said in the body of the patent specification, the claims should not be viewed independently, but should instead be construed as part of the whole specification ... However, it is not permissible to put a gloss on or expand the claims by relying on a statement in the specification. If the claims have a plain meaning, then reliance ought not to be placed on the language...