Towa Corp v ASM Technology: Patent Infringement, Moulding Machine, Inventive Step
Towa Corporation, a Japanese company, sued ASM Technology Singapore Pte Ltd and ASM Pacific Technology Limited in the High Court of Singapore for patent infringement related to a moulding machine (IDEALmold). The court, presided over by Lee Seiu Kin J, found ASM Technology Singapore Pte Ltd liable for infringing Towa Corporation's patent. The court declared that the patent had been infringed and ordered an inquiry into damages or an account of profits, along with interest. The claim against ASM Pacific Technology Limited and the counterclaim for groundless threats were dismissed.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Judgment for Plaintiff
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Towa Corp sues ASM Technology for patent infringement related to moulding machines. The court found ASM Technology liable for infringement.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| TOWA Corporation | Plaintiff | Corporation | Judgment for Plaintiff | Won | |
| ASM Technology Singapore Pte Ltd | Defendant | Corporation | Claims Dismissed | Lost | |
| ASM Pacific Technology Limited | Defendant | Corporation | Claims Dismissed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Lee Seiu Kin | Judge | Yes |
4. Counsels
4. Facts
- Towa Corporation is the registered proprietor of Singapore Patent No 49740.
- ASM Technology Singapore Pte Ltd is a wholly-owned subsidiary of ASM Pacific Technology Limited.
- The patent concerns moulding technology and moulding machines.
- The plaintiff claimed the defendants infringed Claims 1, 2, 4, and 5 of the patent by acts related to the IDEALmold machine.
- The defendants opposed the claim, arguing the patent was invalid and their actions did not infringe it.
- The defendants counterclaimed for groundless threats of infringement proceedings.
- The IDEALmold machine has a retrofitting feature that allows for an increase and decrease in the number of moulding units.
5. Formal Citations
- Towa Corp v ASM Technology Singapore Pte Ltd and another, Suit No 359 of 2013, [2016] SGHC 280
6. Timeline
| Date | Event |
|---|---|
| Writ of summons filed | |
| Judgment reserved | |
| Judgment issued |
7. Legal Issues
- Patent Infringement
- Outcome: The court found that the first defendant, ASM Technology Singapore Pte Ltd, had infringed the plaintiff's patent.
- Category: Substantive
- Sub-Issues:
- Validity of patent
- Scope of patent claims
- Infringing acts
- Validity of Patent
- Outcome: The court held that the patent was valid, finding that it was novel, involved an inventive step, and satisfied the sufficiency requirement.
- Category: Substantive
- Sub-Issues:
- Novelty
- Inventive step
- Sufficiency of disclosure
- Groundless Threats of Infringement Proceedings
- Outcome: The court found that the plaintiff was not liable for making groundless threats of infringement proceedings against the second defendant.
- Category: Substantive
8. Remedies Sought
- Declaration of patent infringement
- Inquiry as to damages or account of profits
- Interest
- Injunction (originally sought, but later conceded as inappropriate)
9. Cause of Actions
- Patent Infringement
10. Practice Areas
- Patent Infringement
- Intellectual Property Litigation
11. Industries
- Manufacturing
- Semiconductor
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal | Court of Appeal | Yes | [2008] 1 SLR(R) 335 | Singapore | Cited for principles on construing a patent specification, emphasizing the importance of claims and a purposive approach. |
| Bean Innovations Pte Ltd and another v Flexon (Pte) Ltd | Court of Appeal | Yes | [2001] 2 SLR(R) 116 | Singapore | Cited for endorsing a purposive approach to claim construction, while cautioning against disregarding clear and unambiguous words. |
| Catnic Components Limited and another v Hill & Smith Limited | N/A | Yes | [1982] RPC 183 | United Kingdom | Cited for the principle that a patent specification should be given a purposive construction. |
| Mühlbauer AG v Manufacturing Integration Technology Ltd | Court of Appeal | Yes | [2010] 2 SLR 724 | Singapore | Cited for the test to establish anticipation for discounting novelty and the impermissibility of assembling prior art into a mosaic. |
| Genelabs Diagnostics Pte Ltd v Institut Pasteur and another | N/A | Yes | [2000] 3 SLR(R) 530 | Singapore | Cited for the principle that prior publication must identify the subject matter of the claim and be an enabling disclosure. |
| Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and others and other suits | N/A | Yes | [2005] 3 SLR(R) 389 | Singapore | Cited for the principle that prior art documents must be construed as if the court had to construe it at the date of publication and an ex post facto analysis is not appropriate. |
| Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and another (First Currency Choice Pte Ltd, third party) | N/A | Yes | [2007] 1 SLR(R) 1021 | Singapore | Cited for the principle that the burden of proving anticipation rests on the defendant. |
| Gillette Safety Razor Company v Anglo-American Trading Company Ld | House of Lords | Yes | 30 RPC 465 | United Kingdom | Cited for the Gillette defence, where a defendant can argue non-infringement based on prior art lacking patentable difference. |
| Windsurfing International Inc v Tabur Marine (Great Britain) Ltd | N/A | Yes | [1985] RPC 59 | United Kingdom | Cited for the four-step approach to determine inventive step. |
| Merck & Co Inc v Pharmaforte Singapore Pte Ltd | N/A | Yes | [2000] 2 SLR(R) 708 | Singapore | Cited for affirming the four-step approach set out in Windsurfing. |
| Ng Kok Cheng v Chua Say Tiong | N/A | Yes | [2001] 2 SLR(R) 326 | Singapore | Cited for the principle that the burden of proof is upon the defendant to show that no inventive step was involved. |
| Peng Lian Trading Co v Contour Optik Inc and others | N/A | Yes | [2003] 2 SLR(R) 560 | Singapore | Cited for the principle that simplicity is no bar to inventiveness and a small step can still be an inventive step. |
| Kirin-Amgen Inc v Hoechst Marion Roussel Ltd | N/A | Yes | [2005] RPC 9 | United Kingdom | Cited for the two-step test to determine whether the specification of a patent is sufficient. |
| Mentor Corporation and Another v Hollister Incorporated | English Court of Appeal | Yes | [1993] RPC 7 | United Kingdom | Cited for the principle that disclosure of an invention does not have to be complete in every detail. |
| Morton-Norwich Products Inc and Others v Intercen Limited | N/A | Yes | [1978] RPC 501 | United Kingdom | Cited for the principle that persons whose respective shares in the commission of a tortious act are done in furtherance of a common design are properly regarded as joint tortfeasors. |
| The Koursk | N/A | Yes | [1924] page 140 | N/A | Cited as reference for joint tortfeasors. |
| Unilever Plc v Gillette (UK) Limited | N/A | Yes | [1989] RPC 583 | United Kingdom | Cited for the principle that tacit agreement will suffice for parties to operate in furtherance of a common design. |
| Bradley Lomas Electrolok Ltd and another v Colt Ventilation East Asia Pte Ltd and others | Court of Appeal | Yes | [1999] 3 SLR(R) 1156 | Singapore | Cited for the principle that some other evidence of actual involvement in furthering the common design of infringement had to be shown. |
| Tan Yong San v Neo Kok Eng and others | High Court | Yes | [2011] SGHC 30 | Singapore | Cited for the equitable principle of laches and its elements. |
| Management Corporation Strata Title Plan No 473 v De Beers Jewellery Pte Ltd | N/A | Yes | [2002] 1 SLR(R) 418 | Singapore | Cited for the two elements to consider when raising the defence of laches: the length of the delay and whether such delay had caused any prejudice or injustice. |
| Beale v Kyte | N/A | Yes | [1907] 1 Ch 564 | United Kingdom | Cited for the principle that time runs from the date of notice of the error, not from the time when the error is committed. |
| Dynasty Line Ltd (in liquidation) v Sia Sukamto and another | N/A | Yes | [2013] 4 SLR 253 | Singapore | Cited as reference for acquiescence and laches. |
| Tamglass Ltd OY v Luoyang North Glass Technology Co Ltd and another | English Patents Court | Yes | [2006] EWHC 65 (Ch) | United Kingdom | Cited for the principle that selling a product which incorporates an infringing process is equivalent to offering the infringing process for use. |
| Patrick John Brain v Ingledew Brown Bennison and Garrett (a firm) and another (No. 3) | N/A | Yes | [1997] FSR 511 | United Kingdom | Cited for the legislative intent behind the inclusion of 'person aggrieved' in threats of infringement proceedings. |
13. Applicable Rules
| Rule Name |
|---|
| Rules of Court (Cap 322, R5, 2014 Rev Ed) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| Limitation Act (Cap 163, 1996 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Moulding machine
- Moulding unit
- Patent
- Infringement
- IDEALmold machine
- Modularity
- Retrofitting
- Inventive step
- Novelty
- Groundless threats
15.2 Keywords
- Patent infringement
- Moulding machine
- IDEALmold
- Singapore
- Intellectual property
- Towa Corporation
- ASM Technology
- Lee Seiu Kin J
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patents | 95 |
| Patent Infringement | 90 |
| Groundless threat | 70 |
| Inventive step | 60 |
| Novelty | 50 |
| Validity | 50 |
| Contract Law | 5 |
| Trademarks | 5 |
| Corporate Law | 5 |
16. Subjects
- Patent Law
- Intellectual Property
- Technology