Singapore company prevails in patent battle and solders on

The High Court of Singapore recently ruled on a suit involving patent infringement and revocation.

The plaintiff, ASM Assembly Automation Ltd ("ASM") commenced an action against Aurigin Technology Pte Ltd ("Aurigin") and 2 other defendants for the infringement of its registered patent for an apparatus and method for automatically placing an array of solder balls onto a substrate. The defendants counterclaimed on 2 main grounds; first, that ASM's patent was invalid for lack of novelty and inventiveness and second, that ASM had made groundless threats of infringement.

On the issue of novelty, while ASM's expert witness made certain unfavourable concessions in the course of cross-examination, Aurigin's expert witness explained how the patent was not new as each of the tendered prior art documents individually disclosed all the elements of the invention. His testimony on novelty was unreservedly accepted by the court, which then held that ASM's patent was not novel.

On the issue of inventiveness, ASM asserted that the patent was inventive as it was an improvement over the prior art. However, this assertion did not bear out during cross-examination. On the contrary, the court observed that the patent was "a disadvantageous modification of the closest prior art".

It was not surprising, therefore, that the court held that the patent was neither novel nor inventive, and Aurigin succeeded in revoking the patent. Accordingly, there could be no patent infringement and the threats made by Aurigin were found to be groundless.

As patent cases rarely make it to trial in Singapore, those that do are valuable stockpiles of instruction and guidance for future cases. Even though the court's judgment did not modify or expand on the law, having applied established common law principles laid down in Trek Technology (S) Pte Ltd v FE Global Electronics Pte Ltd (No. 2) [2005] 3 SLR 389 for novelty and Windsurfing International Inc v Tabur Marine [1985] RPC 59 as approved by the Court of Appeal in First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR 335 for inventiveness, the following lessons may still be learnt from this case :

1. Exercise care in the selection of expert witnesses; patent attorneys, no matter how qualified, may not necessarily be persons skilled in the art.

2. Ensure that witnesses are qualified and well-prepared to endure cross-examination by opposing counsel. In this case, the court had commented that ASM's expert witness was not familiar enough with the prior art. Cross-examination also demonstrated that the expert witness was ill-prepared, resulting in damage to ASM's case.

The decision is currently under appeal.

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

Unlucky 13

The Criminal Investigation Department conducted simultaneous raids of 13 shops in Lucky Plaza yesterday, resulting in the arrest of 27 men and 1 woman, aged between 19 and 55 years old. The raids were carried out on the premise of trade mark and copyright infringement offences. Originally targetting the sale of pirated games and illegally modified gaming consoles, the CID's haul of 794 items eventually included desktop computers, laptops, external hard disks and memory sticks. The seized items had an estimated street value of S$60,000.

If found guilty, each offender is liable to pay a fine of up to S$10,000 per item (subject to a maximum of S$100,000) and may be imprisoned for up to 5 years.

David sues Goliath

Singapore's national broadcaster MediaCorp has been taken to court by an Internet start-up company RecordTV, for issuing groundless threats of legal action. In its defence, MediaCorp has filed a counterclaim for copyright infringement. Groundless threats are actionable under the Copyright Act, Trade Marks Act, Patents Act and Registered Designs Act.

As its name suggests, RecordTV's 2007-launched website allowed registered users to request recording of MediaCorp's free-to-air television programmes. In its opening statement in court, RecordTV said its service was merely an alternative to more traditional permitted means of recording television programmes at home, such as using a video cassette recorder or digital video recorder. The only difference was that RecordTV recordings were stored outside the user's premises. RecordTV has also contended that the recordings were made by its users, and not itself.

In reply, MediaCorp pointed to evidence gathered by its private investigators, which showed that unlike users of video cassette recorders, users of RecordTV's services had no control over functions such as recording and playback. Further, one of the private investigators had requested a 5-minute recording but received a 26-minute recording instead - this, MediaCorp suggested, was indicative that it was RecordTV and not the user that made the recordings.

Presided over by the Honourable Justice Andrew Ang, the 4-day hearing is slated to end today.

Interestingly, RecordTV stated that it bought the software from RecordTV USA. If this is the same RecordTV USA that the Los Angeles Federal court ruled against in 2001, then things do not look too optimistic for the start-up.