Mühlbauer AG v Manufacturing Integration Technology Ltd: Patent Validity & Infringement
In Mühlbauer AG v Manufacturing Integration Technology Ltd, the Court of Appeal of Singapore heard an appeal regarding the validity and infringement of Singapore patent No 117982, owned by Mühlbauer AG, for a device inspecting and rotating electronic components. Manufacturing Integration Technology Ltd was alleged to have infringed the patent with its "CAERUS" device. The High Court had previously declared Mühlbauer AG's patent invalid for lacking novelty and an inventive step. The Court of Appeal allowed the appeal, finding the patent both novel and non-obvious.
1. Case Overview
1.1 Court
Court of Appeal1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
The Court of Appeal addressed the validity and infringement of a patent for a device inspecting and rotating electronic components, focusing on novelty and inventive step.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Mühlbauer AG | Appellant | Corporation | Appeal Allowed | Won | |
| Manufacturing Integration Technology Ltd | Respondent | Corporation | Appeal Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chao Hick Tin | Justice of the Court of Appeal | No |
| Andrew Phang Boon Leong | Justice of the Court of Appeal | Yes |
| V K Rajah | Justice of the Court of Appeal | No |
4. Counsels
4. Facts
- Mühlbauer AG owns Singapore patent No 117982 for a device inspecting and rotating electronic components.
- Manufacturing Integration Technology Ltd was alleged to have infringed the patent with its "CAERUS" device.
- The "CAERUS" device infringes all 10 claims of the Patent.
- The patent describes a machine for inspecting, picking up, and placing electronic components onto printed circuit boards or tape and reel packaging.
- The device alternates between clockwise and anti-clockwise 180-degree rotations of the pivoting pickup heads.
- The patent operates with two pickup heads only.
- The patent includes claims for a method and process.
5. Formal Citations
- Mühlbauer AG v Manufacturing Integration Technology Ltd, Civil Appeal No 34 of 2009, [2010] SGCA 6
- Mühlbauer AG v Manufacturing Integration Technology Ltd, , [2009] SGHC 45
6. Timeline
| Date | Event |
|---|---|
| Priority date of the Patent | |
| ASA Patent published | |
| ASA Patent granted | |
| Patent filed in Singapore | |
| Mühlbauer AG sent letter to Manufacturing Integration Technology Ltd | |
| Judgment reserved | |
| High Court Decision ([2009] SGHC 45) |
7. Legal Issues
- Patent Infringement
- Outcome: The court found that the patent was valid and therefore capable of being infringed.
- Category: Substantive
- Patent Validity
- Outcome: The court held that the patent was valid, reversing the High Court's decision.
- Category: Substantive
- Sub-Issues:
- Lack of Novelty
- Obviousness
- Novelty
- Outcome: The court found that the patent was novel vis-à-vis the state of the art.
- Category: Substantive
- Inventive Step
- Outcome: The court found that the patent involved an inventive step over the state of the art.
- Category: Substantive
8. Remedies Sought
- Declaration of Patent Infringement
- Injunction
- Damages
9. Cause of Actions
- Patent Infringement
10. Practice Areas
- Patent Litigation
- Intellectual Property Litigation
11. Industries
- Manufacturing
- Technology
- Semiconductor
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited and Others | English Court of Appeal | Yes | [1972] RPC 457 | England and Wales | Cited for the test for determining novelty in a patent under s 32(1)(e) of the Patents Act 1949 (c 87) (UK) in the case of anticipation by prior publication. |
| Merck & Co Inc v Pharmaforte Singapore Pte Ltd | Court of Appeal | Yes | [2000] 2 SLR(R) 708 | Singapore | Endorsed the views of Sachs LJ in General Tire regarding the test for determining novelty. |
| Genelabs Diagnostics Pte Ltd v Institut Pasteur and another | Court of Appeal | Yes | [2000] 3 SLR(R) 530 | Singapore | Endorsed the views of Sachs LJ in General Tire regarding the test for determining novelty and held that the prior publication must not only identify the subject matter of the claim in the later patent but must also be an enabling disclosure. |
| Dextra Asia Co Ltd and another v Mariwu Industrial Co (S) Pte Ltd and another suit | Singapore High Court | Yes | [2006] 2 SLR(R) 154 | Singapore | Endorsed the views of Sachs LJ in General Tire regarding the test for determining novelty. |
| Mariwu Industrial Co (S) Pte Ltd v Dextra Asia Co Ltd and another | Singapore High Court | Yes | [2006] 4 SLR(R) 807 | Singapore | Related proceedings |
| Dextra Asia Co Ltd and another v Mariwu Industrial Co (S) Pte Ltd | Singapore High Court | Yes | [2007] 3 SLR(R) 29 | Singapore | Related proceedings |
| Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and others and other suits | Singapore High Court | Yes | [2005] 3 SLR(R) 389 | Singapore | Laid down the principles for determining anticipation by the prior art. |
| FE Global Electronics Pte Ltd and others v Trek Technology (Singapore) Pte Ltd and another appeal | Court of Appeal | Yes | [2006] 1 SLR(R) 874 | Singapore | Affirmed the principles laid down in Trek Technology for determining anticipation by the prior art. |
| SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent | House of Lords | Yes | [2006] RPC 10 | England and Wales | Clarified that the concepts of disclosure and enablement are distinct. |
| Ng Kok Cheng v Chua Say Tiong | Singapore High Court | Yes | [2001] 2 SLR(R) 326 | Singapore | Discussed the ideas of obviousness and inventive concept. |
| Windsurfing International Inc v Tabur Marine (Great Britain) Ltd | English Court of Appeal | Yes | [1985] RPC 59 | England and Wales | Espoused the four-step test for inventiveness. |
| First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal | Court of Appeal | Yes | [2008] 1 SLR(R) 335 | Singapore | Discussed the concept of common general knowledge and acknowledged criticisms of the Windsurfing test. |
| Main-Line Corporate Holdings Ltd v Overseas Bank Ltd and another | Singapore High Court | Yes | [2008] SGHC 55 | Singapore | Related proceedings |
| Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and another (First Currency Choice Pte Ltd, third party) | Singapore High Court | Yes | [2010] 1 SLR 189 | Singapore | Related proceedings |
| Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and another | Singapore High Court | Yes | [2009] SGHC 212 | Singapore | Related proceedings |
| DSM NV’s Patent | England and Wales | Yes | [2001] RPC 35 | England and Wales | Stated that by adopting the structured approach, one ensures that there is a measure of discipline, reasoning and method in one’s approach. |
| Vickers, Sons And Co, Limited v Siddell | United Kingdom | Yes | (1890) 7 RPC 292 | England and Wales | Formulated the test that an invention lacked an inventive step if what was claimed was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end. |
| Kirin-Amgen Inc v Hoechst Marion Roussel Ltd | House of Lords | Yes | [2005] RPC 9 | England and Wales | Endorsed adopting a “purposive construction” of patent claims so as to determine the essential features of any particular invention. |
| Catnic Components Limited and Another v Hill & Smith Limited | House of Lords | Yes | [1982] RPC 183 | England and Wales | Observed that a patent specification should be given a purposive construction rather than a purely literal one. |
| Merck & Co Inc v Pharmaforte Singapore Pte Ltd | Singapore High Court | Yes | [1999] 3 SLR(R) 1072 | Singapore | Held that the purposive construction of patent claims was preferred as it balanced the rights of the patentee and those of third parties. |
| Panwah Steel Pte Ltd v Koh Brothers Building & Civil Engineering Contractor (Pte) Ltd | Court of Appeal | Yes | [2006] 4 SLR(R) 571 | Singapore | The nature of the argument is such that it ought to be considered by this court and would not, in any event, entail any adduction of further evidence of any kind. |
| Khoo Bee Keong v Ang Chun Hong and another | Singapore High Court | Yes | [2005] SGHC 128 | Singapore | Discussed the difficulties engendered by the issue of bias with regard to experts for the respective parties. |
| Whitehouse v Jordan | House of Lords | Yes | [1981] 1 WLR 246 | England and Wales | Stated that the expert concerned has, in the final analysis, an overriding duty to objective justice and to the court. |
| Vita Health Laboratories Pte Ltd v Pang Seng Meng | Singapore High Court | Yes | [2004] 4 SLR 162 | Singapore | Reference may be made, in addition, to O 40A r 3(2)(h) as well as the views of V K Rajah JC (as he then was) in the Singapore High Court decision of Vita Health Laboratories Pte Ltd v Pang Seng Meng [2004] 4 SLR 162 at [79]–[90]. |
| Re J (Child Abuse: Expert Evidence) | England and Wales | Yes | [1991] FCR 193 | England and Wales | Expert witnesses are in a privileged position; indeed only experts are permitted to give an opinion in evidence. |
| The Ikarian Reefer | English High Court | Yes | [1993] 2 Lloyd’s Rep 68 | England and Wales | Detailed formulation of the duties of experts. |
| The Ikarian Reefer | English Court of Appeal | Yes | [1995] 1 Lloyd’s Rep 455 | England and Wales | Endorsed (with one modification) on appeal: see per Stuart-Smith LJ, delivering the judgment of the English Court of Appeal in The Ikarian Reefer [1995] 1 Lloyd’s Rep 455 at 496. |
| Expert’s Duty to be Truthful in the Light of the Rules of Court | Singapore Academy of Law Journal | Yes | (2004) 16 SAcLJ 407 | Singapore | Discussed the expert's duty to be truthful. |
| The Expert in Court | Law Quarterly Review | Yes | (1983) 99 LQR 197 | England and Wales | Discussed the role of the expert in court. |
| Expert Evidence | Modern Law Review | Yes | (1947) 10 MLR 32 | England and Wales | The Court may be induced to believe the expert who has succeeded in putting forward his views in the most persuasive and plausible manner. |
| Asia Hotel Investments Ltd v Starwood Asia Pacific Management Pte Ltd | Singapore High Court | Yes | [2007] SGHC 50 | Singapore | For the purposes of determining whether the evidence of an expert should be discounted, the relevant test is one of actual partiality, rather than merely the appearance of partiality. |
| Peng Lian Trading Co v Contour Optik Inc and others | Court of Appeal | Yes | [2003] 2 SLR(R) 560 | Singapore | Made clear that it is permissible to construct a “mosaic” out of the various pieces of prior art in the inquiry for obviousness (i.e., an inventive step) – unless the act of “mosaicing” itself is not obvious to the notional skilled person. |
| Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd | House of Lords | Yes | [1972] RPC 346 | England and Wales | The “mosaic” must be one which is “put together by an unimaginative man with no inventive capacity” |
| ASM Assembly Automation Ltd v Aurigin Technology Pte Ltd and others | Singapore High Court | Yes | [2010] 1 SLR 1 | Singapore | The “mosaic” must be one which is “put together by an unimaginative man with no inventive capacity” |
| Biogen Inc v Medeva Plc | House of Lords | Yes | [1997] RPC 1 | England and Wales | Whenever anything inventive is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge. |
| Generics (UK) Ltd v H Lundbeck A/S | House of Lords | Yes | [2009] RPC 13 | England and Wales | Much would, of course, depend on the precise facts of the case concerned itself. |
| Merrell Dow Pharmaceuticals Inc and Another v HN Norton & Co Ltd and Others | House of Lords | Yes | [1996] RPC 76 | England and Wales | The disclosure in a patent claim must enable a “skilled person in the art” to make the invention. |
| Pozzoli SpA v BDMO SA | English Court of Appeal | Yes | [2007] FSR 37 | England and Wales | Patentability is justified because the prior idea which was thought not to work must, as a piece of prior art, be taken as it would be understood by the person skilled in the art. |
| Non-Drip Measure Coy Ld v Stranger’s Ld and Others | United Kingdom | Yes | (1943) 60 RPC 135 | England and Wales | Nothing is easier than to say, after the event, that the thing was obvious and involved no invention. |
| Institut Pasteur v Genelabs Diagnostics Pte Ltd | Singapore High Court | Yes | [2000] SGHC 53 | Singapore | The simplicity of the invention does not mean that the invention is obvious, or lacking in any inventive step. |
13. Applicable Rules
| Rule Name |
|---|
| O 40 r 1 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) |
| O 40A r 2 of the Rules of Court |
| O 40A r 3(2)(h) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| s 66(1)(a) of the Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| s 13(1) of the Patents Act | Singapore |
| s 14 of the Patents Act | Singapore |
| s 15 of the Patents Act | Singapore |
| s 72 of the Patents Act | Singapore |
| s 77 of the Patents Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Patent
- Infringement
- Novelty
- Inventive Step
- Flip Chip
- Die Bonder
- Wafer
- Pickup Head
- Optical Inspection
- Throughput
- Pivoting Part
- State of the Art
- Purposive Construction
15.2 Keywords
- patent
- infringement
- validity
- novelty
- inventive step
- semiconductor
- Singapore
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 95 |
| Patent Validity | 80 |
| Patent Infringement | 70 |
| Intellectual Property Law | 60 |
| Contract Law | 10 |
| Civil Procedure | 5 |
16. Subjects
- Patent Law
- Intellectual Property
- Technology