Case Details
- Citation: [2009] SGHC 206
- Case Title: ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and Others
- Court: High Court of the Republic of Singapore
- Decision Date: 16 September 2009
- Case Number: Suit 163/2007
- Judge: Tan Lee Meng J
- Coram: Tan Lee Meng J
- Plaintiff/Applicant: ASM Assembly Automation Ltd
- Defendants/Respondents: Aurigin Technology Pte Ltd; Lim Ee Teoh; Tam Wing Wah
- Parties (as described): ASM Assembly Automation Ltd — Aurigin Technology Pte Ltd; Lim Ee Teoh; Tam Wing Wah
- Represented By (Plaintiff): Dedar Singh Gill and Paul Teo (Drew & Napier LLC)
- Represented By (Defendants): Low Chai Chong, Lee Ai Ming and Alvin Lim (Rodyk & Davidson LLP)
- Legal Area(s): Patents and Inventions; Patent infringement; Revocation; Defences under the Patents Act
- Statutes Referenced: Patents Act (Cap 221, 2002 Rev Ed) (“the Act”) (including ss 29(1)(c), 29(5), and s 71(1))
- Judgment Length: 21 pages, 9,663 words
- Expert Witnesses (high-level): For ASM: Assoc Prof Khong Poh Wah (NTU); Mr Robert Faber (patent attorney, not a person skilled in the art). For Aurigin: Assoc Prof Tay Meng Leong (NTU); Mr Dennis Miller (Motorola executive/inventor with BGA-related patents)
- Patent(s) at Issue: ASM’s Singapore Patent No 104354 (granted 30 December 2005; priority date 8 January 2002). Aurigin’s AU800 solder ball placement module; Aurigin’s own Singapore patent (Patent No 111523, granted 30 April 2007; priority date 14 October 2002) and US filing (US Patent No 10/531,611; priority date 2 December 2008)
Summary
ASM Assembly Automation Ltd (“ASM”) sued Aurigin Technology Pte Ltd (“Aurigin”) and its directors, Mr Lim Ee Teoh and Mr Tam Wing Wah, alleging infringement of ASM’s Singapore patent (Patent No 104354) relating to an apparatus and method for automatically placing an array of solder balls onto a substrate, particularly ball-grid array (“BGA”) substrates. ASM sought declarations of validity and infringement, injunctive relief, and either an inquiry as to damages or an account of profits. Aurigin denied infringement and countered by seeking revocation on grounds of lack of novelty and inventiveness, while also pleading statutory defences under the Patents Act, including the defence for serious and effective preparations made before the relevant priority date.
The High Court (Tan Lee Meng J) approached the dispute through the familiar patent litigation framework: (i) construction of the relevant claims (as amended), (ii) assessment of validity challenges (including novelty and inventiveness), and (iii) comparison of the accused product with the asserted claim features. The court also addressed evidential issues, including the admissibility and relevance of expert testimony from a patent attorney who was not a person skilled in the art. The judgment ultimately resolved the parties’ competing claims and counterclaims, including the issue of whether Aurigin could rely on the statutory defence under s 71(1) for pre-priority preparations and sales, and whether ASM was entitled to relief for the period claimed.
What Were the Facts of This Case?
ASM is a Hong Kong company manufacturing and selling semiconductor assembly and packaging equipment. It is the registered proprietor of Singapore Patent No 104354, granted on 30 December 2005. The patent’s priority date is 8 January 2002. The invention concerns 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 granted pursuant to s 29(1)(c) and s 29(5) of the Patents Act, relying on its corresponding US patent application (US Patent No 6,766,938B2). This background is important because it frames the technical and legal context in which ASM’s claims were prosecuted and later asserted in Singapore.
ASM alleged that Aurigin infringed its patent through Aurigin’s flagship product, the AU800 automated BGA solder ball placement machine. ASM further alleged that the directors, Mr Lim and Mr Tam, directed, authorised, counselled, or procured Aurigin to infringe. The AU800 was said to house a key solder ball placement module based on its patented design. Aurigin’s inventors included Mr Lim and Mr Tam (together with Mr Ng Boon Chew). Aurigin’s solder ball placement module was patented in Singapore as Patent No 111523, granted on 30 April 2007 with a priority date of 14 October 2002, and also filed in the US on 2 December 2008.
Crucially, the factual narrative included sales and deployment timing. The first two sets of the AU800 were sold by Aurigin on 19 November 2003, which is materially earlier than ASM’s priority date of 8 January 2002? In the pleadings and defences, the timing becomes central to the statutory defence under s 71(1). Aurigin’s position was that, even if ASM’s patent were valid, Aurigin had made “serious and effective preparations” to manufacture and offer to sell the AU800 before ASM’s priority date, and therefore could rely on the statutory protection for that pre-priority conduct.
ASM’s pleaded remedies were robust. It sought declarations that its Singapore patent was valid and that the AU800 infringed specified claims (claims 1–4, 6–7, and 11–12) of ASM’s amended patent. ASM also sought an injunction restraining infringement and an inquiry as to damages or, alternatively, an account of profits. Aurigin’s response was twofold: it denied infringement and sought revocation of ASM’s patent for lack of novelty and inventiveness. In addition, it pleaded defences of innocent infringement and argued that ASM should not be entitled to damages or an account of profits prior to 6 December 2006. Aurigin also counterclaimed for groundless threats of infringement, seeking an inquiry as to damages suffered.
What Were the Key Legal Issues?
The case raised several interlocking legal issues typical of Singapore patent litigation. First, the court had to determine whether ASM’s patent (as amended during the trial) was valid, particularly in light of Aurigin’s counterclaim for revocation on grounds of lack of novelty and inventiveness. Validity required the court to consider whether the claimed subject matter was new and involved an inventive step over the prior art, assessed through the lens of the person skilled in the art.
Second, the court had to decide infringement: whether Aurigin’s AU800 fell within the scope of ASM’s asserted claims. This required claim construction and a feature-by-feature comparison between the AU800 and the elements of the asserted claims. The claims were technical and detailed, including, for example, a positioning member, a movable container for solder balls, a tilting mechanism applying force to the solder balls during movement, and additional features relating to templates, apertures, vibration, oxidation reduction, and pick-and-place placement.
Third, and importantly for remedies, the court had to consider the statutory defence under s 71(1) of the Patents Act. Aurigin pleaded that it was entitled to rely on s 71(1) because it had made serious and effective preparations to manufacture and offer to sell the AU800 before the priority date of ASM’s patent. This defence, if made out, could limit or negate liability for certain pre-priority acts and could affect the period for which damages or profits could be recovered. Finally, the court had to address Aurigin’s counterclaim for groundless threats, which required an assessment of whether ASM’s conduct in threatening proceedings was legally justified.
How Did the Court Analyse the Issues?
A central part of the court’s analysis was the treatment of expert evidence. ASM called Assoc Prof Khong Poh Wah, a mechanical engineering academic from NTU, as an expert on the technical aspects. ASM also called Mr Robert Faber, a patent lawyer who had prosecuted ASM’s US patent. However, Mr Faber admitted that he was not a person skilled in the art. The court relied on the principle articulated in Ng Kok Cheng v Chua Say Tiong [2001] 3 SLR 487, where a patent attorney called as an expert was held not to be an expert for technical issues because he was not skilled in the relevant craft. Consistent with that approach, the court treated Mr Faber’s evidence as not relevant to questions requiring the perspective of the person skilled in the art.
On the other side, Aurigin called Assoc Prof Tay Meng Leong (also from NTU) and Mr Dennis Miller, a former senior director and vice-president of Motorola Inc in Illinois. Mr Miller had strong credentials as an inventor and innovator, including 11 patents, five relating to BGA technology. The court found Mr Miller’s evidence particularly useful. This evidential approach reflects a broader patent litigation practice: while patent attorneys may assist on prosecution history and legal framing, technical questions—such as what the prior art taught, what a skilled person would understand, and whether features were novel or inventive—are best addressed by those with relevant technical expertise.
The court then provided a technical primer on BGA technology, drawing from Mr Miller’s affidavit. The primer explained that IC packages are mounted on printed circuit boards using surface mount devices, and that BGA technology uses an array of solder balls on a substrate. As solder balls became smaller, new problems arose, including flux contamination and difficulties in picking up tiny balls from reservoirs. The court’s discussion also highlighted the industry trend of separating major elements into independent processes, such as presenting balls in a template with one ball per vacuum hold, and separating filling processes from pickup operations. This technical background was necessary to understand the claimed apparatus and to evaluate novelty and inventiveness.
With the technical context established, the court turned to ASM’s claims. The judgment extract includes the amended claims, particularly claim 1, which is representative of the core inventive concept: an apparatus with a positioning member, a movable container supplying solder balls to the positioning member, and a tilting mechanism that applies force to the solder balls in the direction of container movement as the container moves between remote and over-positioning positions. The claim further specifies that the tilting mechanism rotates the container about an axis perpendicular to the direction of motion to tilt it. Dependent claims add further features such as repeated rotation to spread balls, controllable rotational angles and speeds, a positioning rail and motor, vibration generation to facilitate separation, ball templates with apertures slightly larger than solder balls, pick-and-place removal while retaining positions, simultaneous rotation of container/template/substrate, through-holes allowing direct fall onto the substrate, a separator cap to prevent or permit passage, and a closed top to reduce oxidation.
Although the provided extract truncates the remainder of the judgment, the structure of the dispute indicates that the court’s infringement analysis would have required mapping these claim elements to the AU800’s structure and operation. The validity analysis would have required assessing whether these features were disclosed in prior art and whether the combination involved an inventive step. The statutory defence under s 71(1) would have required the court to examine evidence of “serious and effective preparations” and the timing of manufacturing and offers to sell the AU800 relative to ASM’s priority date. The court would also have considered the directors’ liability, which typically depends on whether they procured or authorised infringement, and whether the pleaded infringement was made out.
What Was the Outcome?
The extract provided does not include the dispositive orders. However, the judgment clearly addressed the full suite of claims and counterclaims: ASM’s infringement and validity case, Aurigin’s revocation and infringement defences (including s 71(1)), Aurigin’s challenge to damages/profits for earlier periods, and Aurigin’s counterclaim for groundless threats. The court’s reasoning on expert relevance and the technical claim features suggests that the outcome turned on both the legal construction of the asserted claims and the evidential sufficiency of Aurigin’s defences.
Practically, the outcome would determine (i) whether ASM obtained declarations of validity and infringement, (ii) whether injunctive relief was granted, and (iii) the scope of monetary relief (damages or account of profits) and whether it was limited by the statutory defence for pre-priority preparations. It would also determine whether Aurigin succeeded on its groundless threats counterclaim and the extent of any damages inquiry.
Why Does This Case Matter?
This case is significant for patent practitioners in Singapore because it illustrates how courts handle both technical and legal aspects of infringement and validity disputes, especially where statutory defences under the Patents Act are pleaded. The inclusion of s 71(1) as a defence underscores that even where a patent is found valid, liability may be limited by earlier conduct that falls within the statutory protection for pre-priority preparations and offers to sell. For rights holders, this means that enforcement strategy must account for potential “preparations” evidence and the timing of commercialisation. For alleged infringers, it highlights the importance of documentary and factual proof of serious and effective preparations.
From an evidential standpoint, the court’s approach to expert testimony is also instructive. The reliance on Ng Kok Cheng v Chua Say Tiong demonstrates that patent attorneys, while valuable for legal context, may not be treated as experts on technical matters if they are not persons skilled in the art. Practitioners should therefore ensure that technical evidence is led by appropriately qualified experts and that patent attorney evidence is confined to areas where it is genuinely relevant.
Finally, the case provides a useful template for how courts may structure claim analysis in complex mechanical/electro-mechanical inventions. The detailed claim language—covering movement, tilting mechanisms, templates, apertures, vibration, oxidation reduction, and pick-and-place placement—shows that infringement analysis often turns on precise operational and structural correspondences. Lawyers advising on design-around strategies or on claim construction disputes will find the claim feature breakdown particularly relevant.
Legislation Referenced
- Patents Act (Cap 221, 2002, Rev Ed) — s 29(1)(c)
- Patents Act (Cap 221, 2002, Rev Ed) — s 29(5)
- Patents Act (Cap 221, 2002, Rev Ed) — s 71(1)
Cases Cited
- Ng Kok Cheng v Chua Say Tiong [2001] 3 SLR 487
- [2009] SGHC 206 (this case)
Source Documents
This article analyses [2009] SGHC 206 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.