Case Details
- Citation: [2023] SGHC 99
- Court: High Court of the Republic of Singapore
- Date: 2023-04-14
- Judges: Lee Seiu Kin J
- Plaintiff/Applicant: Towa Corp
- Defendant/Respondent: ASM Technology Singapore Pte Ltd and another
- Legal Areas: Damages — Assessment, Intellectual Property — Remedies
- Statutes Referenced: English Patents Act, Limitation Act, Patents Act
- Cases Cited: [2023] SGHC 99, ASM Technology Singapore Pte Ltd v Towa Corp [2018] 1 SLR 211, Towa Corp v ASM Technology Singapore Pte Ltd and another [2017] 3 SLR 771
- Judgment Length: 54 pages, 13,742 words
Summary
This case concerns the assessment of damages to be awarded to the plaintiff, Towa Corp, for the infringement of its patent by the defendant, ASM Technology Singapore Pte Ltd (ASMS). The High Court of Singapore previously found ASMS liable for infringing Towa's patent, and this judgment addresses the calculation of damages owed to Towa. The key issues include the scope of machines to be considered, Towa's production capacity, the relationship between Towa's YPS machines and ASMS's infringing IDEALmold machines, and the appropriate methodology for calculating lost profits and other damages.
What Were the Facts of This Case?
Towa Corp is a Japanese company that provides semiconductor packaging solutions and is the registered proprietor of Singapore Patent No. 49740 (the "Patent"). ASMS is a Singaporean company that manufactures and sells semiconductor equipment, including the IDEALmold machine, which the court previously found to infringe Towa's Patent.
Towa commenced legal proceedings against ASMS and its parent company, ASM, alleging that their manufacture and sale of the IDEALmold machine infringed Towa's Patent. In 2016, the High Court found the Patent to be valid and that ASMS had infringed it through its acts of making, disposing of, offering to dispose of, keeping, and offering for use the IDEALmold machine.
The Court of Appeal subsequently confirmed the limitation period for damages to be from 20 April 2007 to 5 July 2014, the date just before the Patent expired. This period is referred to as the "Claim Period" in the judgment.
Towa elected to receive damages for ASMS's infringement during the Claim Period. Towa claimed that ASMS had manufactured at least 439 IDEALmold machines for sale, which were direct substitutes for and in competition with Towa's YPS machines. Towa sought damages for lost profits on the YPS machines and related parts and services that it would have sold but for ASMS's infringement.
ASMS acknowledged that some IDEALmold machines were manufactured or part-manufactured in Singapore during the Claim Period, but disputed the number and argued that many were sold after the Patent had expired or to associated companies within the ASM group. ASMS also disputed that the YPS machine was a direct substitute for or in competition with the IDEALmold machine.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether all 439 IDEALmold machines should be considered for the purposes of calculating damages, or if certain machines should be excluded.
- Whether Towa had the production capacity to manufacture and sell the additional YPS machines that it claimed it would have sold in the absence of ASMS's infringement.
- Whether the YPS machine was a direct substitute for or in competition with the IDEALmold machine during the Claim Period.
- The appropriate methodology for calculating Towa's lost profits, including issues related to Towa's profit margins, the life expectancy of the machines, and the treatment of various cost items.
- Whether Towa was entitled to pre-judgment interest on the damages awarded.
How Did the Court Analyse the Issues?
The court began by addressing a preliminary point on the pleadings, noting that Towa had elected for damages rather than an account of profits. The court then turned to the key issues.
On the scope of machines to be considered, the court found that the 27 machines sold after the Claim Period and the 2 unsold machines should be excluded from the damages calculation. However, the court rejected ASMS's argument that the 200 machines sold to associated companies within the ASM group should be excluded, as Towa could have sold YPS machines to those companies.
Regarding Towa's production capacity, the court accepted Towa's evidence that it had the capacity to manufacture and sell the additional YPS machines claimed. The court also found that Towa's subsidiaries could have provided the necessary aftersales services for the YPS machines.
On the issue of whether the YPS machine was a direct substitute for the IDEALmold machine, the court accepted Towa's argument that the two machines were in direct competition, as they both targeted the same customer base and the modularity feature of the YPS machine was relevant to purchasing decisions.
The court then addressed various methodological issues in the calculation of damages, including the treatment of the Idealmold 60T model, the use of multi-year averages versus a year-on-year basis for profit margins, the appropriate life expectancy of the machines, the currency for the calculations, and the exclusion of certain cost items.
Finally, the court considered the appropriate discount rate to be applied to the additional sales and aftersales, as well as the issue of pre-judgment interest.
What Was the Outcome?
The court ordered ASMS to pay Towa damages for the infringement of its Patent during the Claim Period, with the specific amount to be determined based on the court's findings and the parties' further submissions on the calculation of damages.
Why Does This Case Matter?
This case provides important guidance on the assessment of damages for patent infringement in Singapore. The court's detailed analysis of the various issues, including the scope of infringing machines, the plaintiff's production capacity, the competitive relationship between the patented and infringing products, and the appropriate methodologies for calculating lost profits, will be valuable precedent for future patent infringement cases.
The case also highlights the importance of careful pleading and evidence-gathering by both parties in patent infringement disputes, as the court's findings on these issues were crucial in determining the final damages award. The judgment demonstrates the court's willingness to closely scrutinize the parties' submissions and evidence to arrive at a fair and well-reasoned outcome.
Legislation Referenced
Cases Cited
- [2023] SGHC 99
- ASM Technology Singapore Pte Ltd v Towa Corp [2018] 1 SLR 211
- Towa Corp v ASM Technology Singapore Pte Ltd and another [2017] 3 SLR 771
Source Documents
This article analyses [2023] SGHC 99 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.