ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and Others [2009] SGHC 206

Facts

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.

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. 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. ASM claimed that Aurigin had infringed ASM’s Singapore patent and that its two directors had directed, authorised, counselled or procured Aurigin to infringe the patent.

The court found that ASM’s patent was invalid for lack of novelty and inventiveness and allowed Aurigin’s counterclaim by revoking ASM’s patent and granting an injunction to restrain ASM from making groundless threats of infringement proceedings against Aurigin and its customers.

The Decision

The Court heard testimony from expert witnesses and reviewed the state of the prior art. In general, the Court preferred evidence provided by Aurigin and agreed with Aurigin that ASM’s invention was not novel and did not involve an inventive step, and accordingly revoked ASM’s patent and dismissed their claims for patent infringement.

In respect of Aurigin’s counterclaim for groundless threats of legal proceedings, the Court noted that the UK position had changed after 2005 because of the inclusion of s 70(2A) of the UK Patents Act. The Court noted that the present position in the UK (as a result of the inclusion of s 70(2A)) is that even if the patent of the party making the threats is shown to be invalid, that party may avoid liability for making the threats by showing that when the threats were made, he did not know, and had no reason to suspect, that the patent was invalid. However, as there was no modification to Section 77 of the Patents Act, the UK position did not apply in Singapore.

The Court therefore granted an injunction to restrain ASM from continuing to threaten Aurigin, its customers, directors, officers, employees and agents with any legal proceedings for infringement of ASM’s patent. An inquiry as to damages suffered by Aurigin as a result of ASM’s groundless threats of infringement was also ordered.

The decision is currently under appeal.

Edmund Kok
Patent Attorney
Intellectual Property and Technology Group
ATMD Bird & Bird LLP
Phone +65 6534 5266
Email:  Edmund.Kok@twobirds.com