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Singapore High Court Allows Counterclaim To Revoke Patent
December 2009 | Intellectual Property & Technology Litigation | Litigation & Arbitration | Intellectual Property & Technology | IP Edge

Introduction

On 16 September 2009, the Singapore High Court granted judgment in favour of Aurigin Technology Pte Ltd ("Aurigin") against ASM Assembly Automation Ltd ("ASM"), dismissing ASM's claim that Aurigin had infringed ASM's patent.

After a 23 day trial, the court allowed Aurigin's counterclaims by revoking ASM's patent and granting an injunction to prevent ASM from making groundless threats of infringement against Aurigin.

Aurigin was represented by Rodyk & Davidson LLP's Low Chai Chong and Lee Ai Ming, who were assisted by Alvin Lim and Catherine Chang. Dedar Singh and Paul Teo of Drew & Napier LLC acted for ASM.

Case facts

Aurigin is an eight year old Singapore company which designs, develops and manufactures automation machines and manufacturing solutions for advanced semiconductor packaging. ASM is a subsidiary of ASM Pacific Technology Limited, a 34 year old corporation listed in Hong Kong and the world's largest assembly and packaging equipment supplier for the semiconductor and LED industries.

Aurigin's flagship product, the AU800, is an automated ball-grid array ("BGA") solder ball placement machine which houses a key solder ball placement module. Invented by Aurigin's two founder directors and one of its engineers, Aurigin successfully patented the AU800 in several countries, including a Singapore patent which was granted in 2007 and a United States patent in 2008.

ASM claimed that Aurigin and its two founder directors had, by selling, offering for sale, and keeping the AU800, infringed ASM's Singapore patent. ASM's patent related to an apparatus and method for automatically placing an array of solder balls onto a substrate, such as a BGA substrate. ASM's Singapore patent was registered in 2005 by relying on its corresponding United States patent.

Aurigin and its two founder directors denied that their AU800 infringed ASM's patent. Further, Aurigin filed a counterclaim for ASM's patent to be revoked and sought an injunction to restrain ASM from making groundless threats of infringement against Aurigin.

The High Court decision

In the course of a 23-day trial, the Singapore High Court heard testimony from several expert witnesses and reviewed the state of the prior art. The court agreed with Aurigin and held that ASM's invention was not novel and did not involve an inventive step, both of which were conditions that had to be satisfied for an invention to be patentable.

As such, the court revoked ASM's patent. ASM's claims for patent infringement were dismissed. The court ordered an injunction to restrain ASM from making further threats of infringement against Aurigin, its directors, officers, employees, agents and customers. The court also ordered an inquiry as to damages suffered by Aurigin as a result of ASM's groundless threats of infringement.