ASM Assembly Automation Ltd v Aurigin Technology: Patent Infringement & Validity in Solder Ball Placement Technology

In ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd, the High Court of Singapore, presided over by Justice Tan Lee Meng, ruled on September 16, 2009, in favor of Aurigin Technology, revoking ASM's patent for an apparatus and method for automatically placing solder balls onto a substrate. ASM had sued Aurigin, along with its directors Lim Ee Teoh and Tam Wing Wah, for patent infringement related to Aurigin's AU800 product. The court found ASM's patent lacked novelty and inventiveness, and granted Aurigin's counterclaim for groundless threats of patent infringement, issuing an injunction against ASM and ordering an inquiry into damages. The court also awarded costs to Aurigin.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

ASM's patent was revoked, and an injunction was granted to restrain ASM from threatening Aurigin with legal proceedings for patent infringement. Aurigin is entitled to damages and costs.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

ASM Assembly Automation sued Aurigin Technology for patent infringement. The court revoked ASM's patent for lacking novelty and inventiveness and granted Aurigin's counterclaim for groundless threats.

1.7 Decision Date

15 September 2009

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
ASM Assembly Automation Ltd	Plaintiff	Corporation	Patent Revoked	Lost	Paul Teo of Drew & Napier LLC Dedar Singh Gill of Drew & Napier LLC
Aurigin Technology Pte Ltd	Defendant	Corporation	Counterclaim Allowed	Won	Low Chai Chong of Rodyk & Davidson LLP Lee Ai Ming of Rodyk & Davidson LLP Alvin Lim of Rodyk & Davidson LLP
Lim Ee Teoh	Defendant	Individual	Counterclaim Allowed	Won	Low Chai Chong of Rodyk & Davidson LLP Lee Ai Ming of Rodyk & Davidson LLP Alvin Lim of Rodyk & Davidson LLP
Tam Wing Wah	Defendant	Individual	Counterclaim Allowed	Won	Low Chai Chong of Rodyk & Davidson LLP Lee Ai Ming of Rodyk & Davidson LLP Alvin Lim of Rodyk & Davidson LLP

3. Judges

Judge Name	Title	Delivered Judgment
Tan Lee Meng	Judge	Yes

4. Counsels

Counsel Name	Organization
Paul Teo	Drew & Napier LLC
Dedar Singh Gill	Drew & Napier LLC
Low Chai Chong	Rodyk & Davidson LLP
Lee Ai Ming	Rodyk & Davidson LLP
Alvin Lim	Rodyk & Davidson LLP

4. Facts

ASM is the registered proprietor of Patent No 104354, granted on 30 December 2005, relating to solder ball placement.
Aurigin's AU800 is an automated BGA solder ball placement machine.
ASM alleged that Aurigin infringed its patent by manufacturing and selling the AU800.
Aurigin denied infringement and sought revocation of ASM's patent for lack of novelty and inventiveness.
Aurigin counterclaimed against ASM for groundless threats of patent infringement.
ASM's expert witness was found to be unfamiliar with the prior art.
Aurigin's expert witness demonstrated that ASM's patent lacked novelty and inventiveness based on prior art.

5. Formal Citations

ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and Others, Suit 163/2007, [2009] SGHC 206

6. Timeline

Date	Event
2002-01-08	Priority date of ASM's patent
2002-10-14	Priority date of Aurigin's Singapore patent
2003-11-19	First two sets of AU800 sold by Aurigin
2005-12-30	ASM's patent granted
2006-12-06	ASM demanded Aurigin cease and desist from infringing activities
2007-01-01	Suit filed by ASM against Aurigin
2007-04-30	Aurigin's Singapore patent granted
2008-12-02	Aurigin's US patent granted
2009-09-16	Judgment reserved

7. Legal Issues

Patent Validity
- Outcome: The court found ASM's patent to be invalid due to a lack of novelty and inventiveness.
- Category: Substantive
- Sub-Issues:
  - Lack of Novelty
  - Lack of Inventiveness
- Related Cases:
  - [2005] 3 SLR 389
  - [1985] RPC 59
  - [2008] 1 SLR 335
Patent Infringement
- Outcome: The court did not rule on the issue of patent infringement as ASM's patent was found to be invalid.
- Category: Substantive
Groundless Threats of Patent Infringement
- Outcome: The court found that ASM had made groundless threats of patent infringement and granted Aurigin's counterclaim.
- Category: Substantive
- Related Cases:
  - [1999] FSR 204

8. Remedies Sought

Declaration of Patent Validity
Injunction against Infringement
Inquiry as to Damages or Account of Profits
Revocation of Patent
Injunction against Groundless Threats
Damages for Groundless Threats

9. Cause of Actions

Patent Infringement
Groundless Threats of Patent Infringement

10. Practice Areas

Patent Litigation
Intellectual Property Litigation

11. Industries

Semiconductor
Manufacturing

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Ng Kok Cheng v Chua Say Tiong	High Court	Yes	[2001] 3 SLR 487	Singapore	Cited to support the principle that a patent attorney is not an expert in the art of making locks unless they are skilled in the art.
Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd (No. 2)	High Court	Yes	[2005] 3 SLR 389	Singapore	Cited for principles on determining novelty in patent law.
Windsurfing International Inc v Tabur Marine	N/A	Yes	[1985] RPC 59	N/A	Cited for the four-step test for assessing inventiveness.
First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd	Court of Appeal	Yes	[2008] 1 SLR 335	Singapore	Cited for approving the Windsurfing test for inventiveness.
Unilever v Chefaro	N/A	Yes	[1994] RPC 567	N/A	Cited for the principle that the 'inventive concept' of the claim in question must be considered.
SmithKline Beecham plc v Apotex Europe	N/A	Yes	[2005] FSR 23	N/A	Cited for the principle that a judge should be careful to distinguish his views on the experts as to whether they are good witnesses or good teachers.
Technograph v Mills & Rockely	N/A	Yes	[1972] RPC 346	N/A	Cited for the principle that one is entitled to make a “mosaic” out of relevant documents if it can be put together by an unimaginative man with no inventive capability.
Shaw v Burnet & Co	N/A	Yes	[1924] 41 RPC 432	N/A	Cited for the principle that the addition of a piece of plastic to an ordinary bag veil to prevent it from slipping off a hat was a mere workshop improvement that did not involve any invention.
Curtis & Son v Heward & Co	N/A	Yes	(1923) 40 RPC 53	N/A	Cited for the principle that an alleged invention that made improvements to abdominal supports for medical purposes was not patentable as it was an ordinary workshop improvement of a well-known type of apparatus.
Siegfried Demel (Trading As Demotec Siegfried Demel) v. C & H Jefferson (A Firm) and Another	N/A	Yes	[1999] FSR 204	United Kingdom	Cited for the principle that where the patent of the party making the threats is found to be invalid, its threats are unjustified and the aggrieved party is entitled to relief.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act (Cap 221, 2002, Rev Ed)	Singapore
Patents Act (Cap 221, 2002, Rev Ed) s 13(1)	Singapore
Patents Act (Cap 221, 2002, Rev Ed) s 14	Singapore
Patents Act (Cap 221, 2002, Rev Ed) s 15	Singapore
Patents Act (Cap 221, 2002, Rev Ed) s 77	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Solder Ball Placement
Ball-Grid Array (BGA)
Patent Infringement
Novelty
Inventiveness
Prior Art
Groundless Threats
Tilting Mechanism
Positioning Member
Container
Apertures
Oxidation
Workshop Variation

15.2 Keywords

patent
infringement
solder ball
BGA
novelty
inventiveness
groundless threats

17. Areas of Law

Area Name	Relevance Score
Patents	90
Intellectual Property Law	80
Inventions	70
Groundless threats of infringement proceedings	60
Civil Litigation	30
Contract Law	20

16. Subjects

Patent Law
Intellectual Property
Technology