Case Details
- Citation: [2018] SGCA 1
- Case Title: ASM Technology Singapore Pte Ltd v Towa Corporation
- Court: Court of Appeal of the Republic of Singapore
- Date of Decision: 05 January 2018
- Civil Appeal No: Civil Appeal No 9 of 2017
- Coram: Sundaresh Menon CJ; Andrew Phang Boon Leong JA; Tay Yong Kwang JA
- Judgment Author: Tay Yong Kwang JA (delivering the judgment of the court)
- Plaintiff/Applicant (Appellant): ASM Technology Singapore Pte Ltd
- Defendant/Respondent (Respondent): Towa Corporation
- Legal Area: Intellectual Property — Patents
- Issue Type: Patent infringement (liability only; trial bifurcated)
- Related High Court Decision: Towa Corp v ASM Technology Singapore Pte Ltd and another [2017] 3 SLR 771
- Reported Decision in Appeal: [2018] SGCA 1
- Judgment Length: 25 pages, 10,609 words
- Counsel for Appellant: Stanley Lai Tze Chang SC and Vignesh Vaerhn (Allen & Gledhill LLP); Lim Ying Sin Daniel (Joyce A Tan & Partners)
- Counsel for Respondent: Low Chai Chong, Long Ai Ming, Foo Maw Jiun, and Quek Jie Ying (Dentons Rodyk & Davidson LLP)
- Statutes Referenced: Limitation Act; Patents Act
- Other Procedural Notes: Appeal concerned liability only; High Court had bifurcated trial; Respondent’s claim against the appellant’s parent company was dismissed and not pursued on appeal.
Summary
ASM Technology Singapore Pte Ltd v Towa Corporation [2018] SGCA 1 is a Court of Appeal decision concerning patent infringement in Singapore, focusing on the “liability” stage of a bifurcated trial. The respondent, Towa Corporation, was the registered proprietor of a Singapore patent granted in 1999 for a “Method of and Apparatus for Moulding Resin to Seal Electronic Parts”. The appellant, ASM Technology Singapore Pte Ltd, manufactured and sold a moulding machine known as the “IDEALmold” machine, which the High Court found to infringe the patent. The Court of Appeal dismissed the appeal and upheld the High Court’s findings on infringement for the relevant claims.
Although the excerpted judgment text provided here is partial, the Court of Appeal’s framing makes clear that the appeal turned on claim construction and infringement analysis, as well as the legal treatment of defences raised by the appellant. The Court of Appeal also addressed the patent’s expiry timeline and the relevance of limitation-related arguments, while maintaining the High Court’s conclusion that ASM’s acts in Singapore fell within the scope of the asserted claims. The decision is significant for practitioners because it illustrates how Singapore courts approach the identification of essential features in patent claims and the comparison between those features and the accused product or process.
What Were the Facts of This Case?
Towa Corporation obtained a Singapore patent in 1999 for an invention relating to moulding resin to seal electronic parts. The patent’s earliest priority date, derived from original patents in Japan, was 22 July 1993, and the Singapore filing date was 6 July 1994. The grant date in Singapore was 22 February 1999. The parties differed on the precise date of expiry, but the High Court judge stated that the patent “expired sometime in 2014”, and the Intellectual Property Office of Singapore’s website indicated an expiry date of 6 July 2014. This expiry context mattered because infringement proceedings and any limitation arguments can depend on when the alleged infringing acts occurred and whether the patent remained in force at relevant times.
The patent concerned moulding technology used to encapsulate electronic circuitry with a layer of thermo-setting plastics (resin). In broad terms, the moulding apparatus softens resin with heat and injects the softened resin into a mould under high pressure. The resulting resin layer encases and seals the electronic circuitry, protecting it from heat and environmental hazards. The patent’s technical background described conventional transfer moulding/sealing apparatus and methods, including components such as fixed and movable mould sections, resin supply pots, plungers for pressurising resin, cavities in the mould surfaces, and resin passages between pots and cavities.
Crucially, the invention aimed to improve productivity and enable “simple response to mass-production” without increasing the size of the mould itself. The patent’s claimed solution involved a moulding apparatus equipped with a single moulding unit to which additional moulding units could be detachably mounted. By adjusting the number of moulding units in response to production capacity, the apparatus could scale output without requiring a larger mould. This “modular” approach is reflected in the disputed claims, which include both process claims (method of moulding resin to seal electronic parts) and product claims (apparatus with detachable additional moulding units).
ASM Technology began manufacturing and selling the IDEALmold machines in or around 1999. The High Court found that ASM’s IDEALmold machines infringed the patent. The infringement proceedings were brought in the High Court by Towa against ASM (as the first defendant) and ASM’s parent company (as the second defendant). The High Court allowed Towa’s infringement claim against ASM and dismissed the counterclaim for making groundless threats of infringement. Towa’s claim against the parent company was dismissed and that defendant did not participate in the appeal before the Court of Appeal.
What Were the Key Legal Issues?
The central legal issues in ASM Technology Singapore Pte Ltd v Towa Corporation [2018] SGCA 1 were (i) whether the IDEALmold machines infringed the asserted claims of the patent, and (ii) whether any defences or counterclaims advanced by ASM could defeat liability. Because the trial was bifurcated, the appeal concerned liability only, meaning the Court of Appeal’s focus was on whether infringement was established rather than on remedies or damages.
Patent infringement in Singapore requires a comparison between the properly construed claims and the accused product or process. Accordingly, a key issue was claim construction: what the claims required as a matter of law and how the essential technical features were to be identified. The disputed claims included Claim 1 (a process claim involving a moulding unit to which additional moulding units can be detachably mounted), Claim 2 (a further process claim specifying steps of transferring lead frames and resin tablets into the moulding unit), and product claims such as Claim 4 (an apparatus with detachable additional moulding units to increase or decrease the total number of moulding units) and Claim 5 (an apparatus for supplying lead frames and resin tablets through a product described in Claim 4, comprising multiple moulding units).
In addition, the case raised issues relating to the patent’s temporal scope and the relevance of limitation principles. The excerpt indicates that the Court of Appeal referenced the Limitation Act and the Patents Act. While the provided text does not include the full reasoning on these points, the metadata and the High Court’s discussion of expiry suggest that ASM likely argued that infringement could not be established for periods when the patent was not in force, or that limitation-related arguments should affect the enforceability of the claim.
How Did the Court Analyse the Issues?
The Court of Appeal’s analysis proceeded from the foundational principle that patent claims must be construed purposively and in a manner that gives effect to the patentee’s technical contribution. In practice, this means that the court identifies the claim’s essential features and then assesses whether the accused device or method falls within those features. The patent at issue was directed to a moulding apparatus and method that could scale production by detachably mounting additional moulding units to a base moulding unit. The Court of Appeal would therefore have examined whether the IDEALmold machine embodied the claimed modular architecture and the operational steps described in the process claims.
From the excerpt, the Court of Appeal reproduced the relevant claim language. Claim 1 required, among other steps, “adjusting the number of molding units by detachably mounting an additional molding unit” with respect to an already provided moulding unit, followed by supplying unsealed lead frames and resin tablets into each moulding unit, moulding resin to seal electronic parts through each moulding unit, and taking out sealed electronic parts to the exterior. Claim 2 further specified the manner of transferring lead frames and aligning resin tablets into a clearance between fixed and movable mould sections, closing the mould sections while heating and pressurising resin tablets, injecting molten resin through resin passages into cavities, and taking out sealed electronic parts.
For the product claims, Claim 4 required an apparatus comprising a moulding unit with specified structural components (mould, resin supply pots, resin pressurising plungers, cavities, and resin passages), means for supplying unsealed lead frames and resin tablets into the moulding unit, and means for taking out sealed electronic parts to the exterior. It also required that additional moulding units be “rendered detachably mountable” with respect to the already provided moulding unit, thereby allowing the number of moulding units to be freely increased or decreased. Claim 5 then required that the apparatus include multiple moulding units and specified the supply means for lead frames and resin tablets into each moulding unit.
Against this claim structure, the Court of Appeal would have assessed the IDEALmold machine’s operation and configuration. The High Court had already found infringement, and the Court of Appeal’s task was to determine whether that finding was correct in law and fact. In patent cases, the infringement inquiry often turns on whether the accused product includes each essential feature (either literally or by a legally equivalent means, depending on the claim and the applicable approach). Here, the patent’s distinctive feature was the modular, detachable additional moulding units that enable scaling without increasing the size of the mould itself. The Court of Appeal would therefore have focused on whether ASM’s machine allowed additional moulding units to be detachably mounted and whether the machine’s process steps corresponded to the claimed method of supplying and moulding resin through each unit.
The Court of Appeal also had to consider the patent’s expiry and the timing of alleged infringing acts. The excerpt notes that the High Court judge stated the patent “expired sometime in 2014”, with the official expiry date being 6 July 2014. Infringement is generally assessed with reference to acts done while the patent is in force. If ASM’s manufacturing, selling, or offering for sale occurred before expiry, infringement could be established for those acts; if acts occurred after expiry, the patent would no longer provide protection. The Court of Appeal’s reference to the Limitation Act suggests that ASM may have argued that even if infringement occurred, the claim should be limited by time, or that certain heads of relief were time-barred. The Court of Appeal would have addressed these arguments by applying the relevant statutory framework and the procedural posture of the case.
What Was the Outcome?
The Court of Appeal dismissed ASM Technology Singapore Pte Ltd’s appeal and upheld the High Court’s decision that ASM infringed the patent claims asserted by Towa. The practical effect is that ASM remained liable for patent infringement for the relevant acts found by the High Court at the liability stage. Because the trial was bifurcated, the decision in this appeal primarily confirms liability rather than finalising remedies.
In addition, the High Court had dismissed ASM’s counterclaim for making groundless threats of infringement. While the excerpt does not detail the Court of Appeal’s treatment of that counterclaim, the dismissal of the appeal indicates that ASM did not succeed in overturning the High Court’s findings on infringement and related issues.
Why Does This Case Matter?
ASM Technology Singapore Pte Ltd v Towa Corporation [2018] SGCA 1 matters because it reinforces the importance of claim construction and feature-by-feature comparison in patent infringement analysis. The case demonstrates that courts will scrutinise whether the accused product or process truly implements the patent’s technical contribution—here, the modular detachable moulding units enabling scalable production. For practitioners, the decision underscores that infringement arguments should be grounded in the claim language and the patent’s technical teaching, rather than in broad characterisations of similarity.
The decision is also relevant for how Singapore courts handle patents with complex technical subject matter. The patent claims in this case included both process steps and apparatus features, and the modular architecture required careful mapping between the claimed “detachably mountable” additional moulding units and the accused machine’s configuration. Lawyers advising clients in manufacturing and technology sectors should take note that courts may treat the “essential features” of a claim as the focal point, and evidence about how machines are assembled, operated, and scaled can be decisive.
Finally, the case highlights the procedural and temporal dimensions of patent enforcement. The discussion of expiry and the reference to limitation principles show that infringement liability may depend not only on technical correspondence but also on whether the patent was in force and whether claims are affected by statutory time bars. This is particularly important for ongoing commercial relationships where products are developed and sold over many years.
Legislation Referenced
- Limitation Act
- Patents Act
Cases Cited
- [2018] SGCA 1 (this appeal)
- Towa Corp v ASM Technology Singapore Pte Ltd and another [2017] 3 SLR 771
Source Documents
This article analyses [2018] SGCA 1 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.