Towa Corp v ASM Technology Singapore Pte Ltd and another [2016] SGHC 280

The plaintiff, Towa Corporation, is a company incorporated in Japan. The plaintiff is the registered proprietor of Singapore Patent No 49740 (“the Patent”). The first defendant, ASM Technology Singapore Pte Ltd, is a company incorporated in Singapore and is a wholly-owned subsidiary of the second defendant, ASM Pacific Technology Limited, which is a company incorporated in the Cayman Islands but with its registered address in Hong Kong. The Patent expired sometime in 2014, although parties seem to differ on the exact date of expiry.

In this suit (“the Suit”) the plaintiff claims against the defendants for infringement of the Patent. The infringing acts alleged by the plaintiff concern a product known as the IDEALmold machine. The defendants oppose the plaintiff’s claim on various grounds. They also counterclaim against the plaintiff for making groundless threats of infringement proceedings pursuant to s 77 of the Patents Act (Cap 221, 2005 Rev Ed) (“Patents Act”).

The Suit has been bifurcated and the trial proceeded on the issue of liability.

Facts

Brief background to moulding technology and moulding machines

The Patent concerns moulding technology and moulding machines. Moulding is the process of injecting molten thermo-setting plastics on top of electronic circuitry. Thermo-setting plastics (also referred to as “resin”) are made up of polymer materials with the unique characteristic of being liquid or malleable but capable of undergoing an irreversible hardening process through curing (which is usually induced by heat) to become an infusible and insoluble polymer network.

The moulding process encapsulates the electronic circuitry with resin. This involves a process of softening the resin with heat and injecting the resin into a mould under high pressure. The end result is a layer of resin encasing and sealing the electronic circuitry, which protects it from heat and environmental hazards.

In the 1970s, the moulding process involved a substantial amount of manual input from the operator. A typical moulding machine would comprise a mould as shown in the following diagram:

A moulding machine back then was essentially the mould (also called a “mould chase”) and a pressing mechanism which was used to operate the moulds. The mould chase with the pressing mechanism is usually referred to as a “mould press”. The moulding machine would operate as follows:

(a) Pre-heated resin tablet is manually placed into the pot.

(b) A lead frame (containing the electronic circuitry) is manually placed into the cavity.

(c) The lower and upper mould dies would come together through the operation of the pressing mechanism.

(d) The plunger compresses the resin and the resin flows through the runners into the cavities, encapsulating the lead frame in the process.

(e) The sealed lead frame is manually removed from the moulding machine after the resin cools and hardens.

The early 1990s, however, saw the advent of fully-automated moulding machines. In addition to having automated moulding presses, these machines automated the previously manual processes of loading and unloading the resin tablets and lead frames.

The parties’ pleaded cases

The plaintiff’s pleaded case

The plaintiff’s pleaded case is that the defendants have infringed Claims 1, 2, 4 and 5 of the Patent by doing the following acts in Singapore without the consent of the plaintiff:

(a) The first defendant has offered for use, in Singapore, the IDEALmold machine which infringes Claims 1 and 2 of the Patent.

(b) The first defendant has made, kept, offered to dispose and disposed of, in Singapore, the IDEALmold machine which infringes Claims 4 and 5 of the Patent.

(c) The second defendant has made and kept, in Singapore, the IDEALmold machine which infringes Claims 4 and 5 of the Patent.

(d) Both defendants have jointly, pursuant to a common design, made, kept, offered for use, offered to dispose and disposed of, in Singapore, the IDEALmold machine which infringes Claims 1, 2, 4 and 5 of the Patent.

Thus, the plaintiff asks for: (a) a declaration that the Patent has been infringed by the defendants; (b) an inquiry as to damages or, alternatively, at the plaintiff’s option, an account of profits and an order for payment of all sums found due upon making such inquiry or account; and (c) interest. In addition to these, the plaintiff had originally asked for an injunction. However, in closing submissions, this was conceded to be an inappropriate remedy in light of the Patent’s expiry. The plaintiff had also originally asked for an order for delivery up or destruction upon oath, but ultimately accepted, in oral submissions, that it is “not really pressing” for this.

The defendants’ pleaded case

The defendants oppose the plaintiff’s claim on grounds that can be summarised as follows:

(a) The Patent is invalid for lack of novelty, inventive step and sufficiency.

(b) The IDEALmold machine merely embodies the teaching of an apparatus previously disclosed in the prior art available before the priority date of the Patent without substantial or patentable variation, such that any act made with respect to the IDEALmold machine did not, and could not, infringe the Patent.

(c) The claims of the Patent do not cover the IDEALmold machine.

(d) Neither of the defendants used or offered the use of the method covered by Claims 1 and 2 of the Patent with respect to the IDEALmold machine in Singapore.

(e) The defendants did not have knowledge, and in the circumstances it was not obvious to a reasonable person, that the alleged making, keeping, offer for use, offer to dispose or disposal of the IDEALmold machine may constitute use of the process in Claims 1 or 2 of the Patent.

(f) The second defendant is an investment holding company and was not involved in manufacturing or sales operations at all material times.

(g) There was no common design.

(h) The plaintiff has been aware, or should reasonably have been aware, of the IDEALmold machine since 1999/2000 and, therefore, s 6 of the Limitation Act (Cap 163, 1996 Rev Ed) (“Limitation Act”) and the defences of estoppel, delay, laches and acquiescence apply.

In addition, the defendants also rely on ss 69(1) and 70 of the Patents Act. They further counterclaim against the plaintiff for making groundless threats of infringement proceedings pursuant to s 77 of the Patents Act.

In these premises, the defendants ask for: (a) a declaration that Claims 1, 2, 4 and/or 5 of the Patent are invalid and/or are not infringed by the defendants; (b) an order that Claims 1, 2, 4 and/or 5 of the Patent be revoked; (c) a declaration that the plaintiff’s threats are unjustifiable; (d) an injunction against the continuance of the plaintiff’s threats; and (e) damages in respect of any loss the defendants have sustained by the threats.

The asserted claims

From the above, it is apparent that a total of four claims (viz, Claims 1, 2, 4 and 5) are in issue in the Suit. In so far as these claims are concerned:

(a) Claims 1 and 2 are process claims while Claims 4 and 5 are product claims.

(b) Claim 2 is dependent on Claim 1 and Claim 5 is dependent on Claim 4.

(c) Claim 1 is similar to Claim 4 in that Claim 1 teaches the process whereby the moulding machine taught in Claim 4 is operated.

In light of this, the plaintiff has suggested (rightly, in my view) that I focus my attention on Claim 4. In this regard, the disputed part of Claim 4 reads as follows:

Issues

Drawing the various threads together, the broad issues that arise for my determination in the Suit are as follows:

(a) What is the proper construction of the Patent claims (in particular, Claim 4)?

(b) Is the Patent (in particular, Claim 4) valid?

(c) If the Patent is valid, are the defendants prima facie liable for infringing the Patent?

(d) If the defendants are prima facie liable for infringing the Patent, are there any defences available to them?

(e) If the Patent is not valid and/or the defendants are not liable for infringing the Patent, is the plaintiff liable for making groundless threats of infringement proceedings?

In this judgment, the English spelling for “mould” will be used except where the word is cited from a document which adopts the American spelling.

What is the proper construction of the Patent claims (in particular, Claim 4)?

The law

I turn to the first broad issue, viz, what is the proper construction of the Patent claims (in particular, Claim 4)? In this regard, s 113(1) of the Patents Act provides that an invention for a patent for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the patent, as interpreted by the description and any drawings contained in that specification.

In First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal [2008] 1 SLR(R) 335 (“First Currency Choice”), the Court of Appeal observed (at [23]) that in ascertaining the true construction of a patent specification, the claims themselves are the principal determinant, while the description and other parts of the specification may assist in the construction of the claims. The court then went on to hold (at [24]) as follows:

Thus, in construing a patent claim, regard can (and should) be given to the description and drawings of the patent, so long as these are not used to alter the plain meaning of the claim.

In addition, the Court of Appeal has repeatedly endorsed a purposive approach to claim construction (see, for example, Bean Innovations Pte Ltd and another v Flexon (Pte) Ltd [2001] 2 SLR(R) 116 (“Bean Innovations”) at [19]; First Currency Choice at [25]). This approach posits that a patent specification “should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge” (Catnic Components Limited and another v Hill & Smith Limited [1982] RPC 183 at 243). However, the Court of Appeal has also cautioned that the purposive approach “does not mean that the court in construing a claim is entitled to disregard the clear and unambiguous words used to describe the essential features of a claim” (Bean Innovations at [27]). Thus, “[e]ven adopting a purposive construction, one cannot write words into a claim that are not there or give a meaning to a term of a claim that is contrary to its language” (Bean Innovations at [27]).

Finally, claim construction is done through the eyes of the person skilled in the art (First Currency Choice at [27]–[28]).

Analysis

The plaintiff submits that the invention, which is described in Claim 4 of the Patent, is:

At trial, the defendants’ expert, Dr Michael Pecht (“Pecht”), appeared to have substantially agreed with the essential elements of the above characterisation. On my part, I agree with the plaintiff’s interpretation of Claim 4. However, this is not the end of the matter, as there still remains differences between the parties.

Definition of “molding unit”

The most critical of these differences relates to the definition of the term “molding unit”. The difference in the parties’ positions is best explained by a reference to Figure 3 of the Patent:

There are two similar structures in this figure, one around the middle of the figure and another on the right. For present purposes, it suffices to look only at the structure on the right. Pecht is of the view that the term “molding unit” refers only to the top half of this structure, ie, the part of the structure within numerals 25, 26, 24 and 28. Pecht’s view is based on an earlier part of Claim 4, which reads as follows:

On the other hand, the plaintiff’s expert, Haruo Tabata (“Tabata”), takes the view that the term “molding unit” refers to the entire structure. To Tabata, the term “molding unit” comprises not only the mould (which is indicated by the numerals 26 and 28), but also the pressing mechanism (which is indicated by numeral 27).

In my judgment, the term “molding unit” refers, as suggested by Tabata, to the entire structure. I do not think that the part of Claim 4 relied on by Pecht (see [24] above) is intended to set out a definition (much less an exhaustive definition) of what a “molding unit” comprises. Indeed, the defendants accept that the elements listed in this part of Claim 4 are not exhaustive. This being the case, I do not see anything else that can give rise to the restrictive interpretation suggested by Pecht.

On the contrary, the description and Figure 3 of the Patent indicate that the term “molding unit” refers to the entire structure. In the specification, the term “molding unit” is indicated by the numerals 5, 5a, 5b and 5c at various junctures, including in the disputed part of Claim 4. When one looks at Figure 3 of the Patent, it is sufficiently clear that the numerals 5 and 5a refer to the two structures in their entirety. This interpretation is further supported by the following extracts from the description, which suggest that the term “molding unit” includes the components indicated by numerals 27 and 39 and, therefore, refers to the entire structure:

As I have mentioned earlier, regard can (and should) be given to the description and drawings of the patent in construing a patent claim (see [19] above). Moreover, given my observation at [26] above, this is not a case where the description and Figure 3 of the Patent are being used to alter the plain meaning of the claim. Thus, I find that the term “molding unit” refers to the entirety of each of the two structures in Figure 3.

Meaning of “freely increasing/decreasing”

Number of moulding units and when number of moulding units adjusted

A third difference concerns, first, whether there can be infringement when there are only one or two moulding units involved in the allegedly infringing product or process. With regard to an allegedly infringing product, Pecht highlights that the disputed part of Claim 4 refers to “additional molding units” (in the plural) being rendered detachably mountable with respect to an existing moulding unit. In his view, therefore, any apparatus that has only one or two moulding units will not infringe. As for an allegedly infringing process, Pecht highlights the reference to “an additional molding unit” (in the singular) in Claim 1 to assert that any process that involves only one moulding unit in the apparatus will not infringe. In this respect, the relevant part of Claim 1 reads as follows:

In my view, Pecht’s interpretation of Claims 1 and 4 is incorrect. As I have found earlier, the invention in Claim 4 concerns the application of the concept of modularity to the moulding units of moulding machines (see [22] above). This being the case, the actual number of moulding units involved is irrelevant, as the whole point is that this number is supposed to be flexible. Rather, what matters is whether the allegedly infringing product or process involves the feature of modularity.

Even if the number of moulding units were relevant, I reject Pecht’s interpretation because it is precisely the kind of interpretation that the purposive approach to claim construction seeks to avoid, ie, “the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge” (see [20] above). The sense that one gets from reading the Patent is that any allegedly infringing product or process involving, at the very least, one to three additional moulding units would fall within Claims 1 and 4. This much is clear from how, in both Claims 1 and 4, the reference to “additional molding units” (in Claim 4) and “an additional molding unit” (in Claim 1) is followed by a reference to three additional moulding units, viz, “(5a, 5b, 5c)”.

A second, related, point made by the defendants concerns the point in time when the number of moulding units is adjusted. The defendants’ submission is to the effect that, because of the use of the past tense (ie, “rendered”) in Claim 4, the Claim 4 apparatus does not require the actual addition or removal of any moulding unit, as long as a machine is provided with moulding units that are “detachably mountable”. In contrast, however, the Claim 1 process requires the active step of “adjusting the number of molding units”.

This submission relies on a literal interpretation of Claim 1 without consideration of its context. On any reasonable reading of Claim 1, it is obvious that the reference to “a step of adjusting the number of molding units”, when read purposively, is a reference to the feature of modularity. On my part, it is patently clear that this part of Claim 1 is intended to correspond to the disputed part of Claim 4 (see [15] above). Claim 4, to reiterate, concerns the application of the concept of modularity to the moulding units of moulding machines (see [22] above). Consequently, this part of Claim 1 must be given a corresponding interpretation. I further note that the Patent was translated from Japanese. Accordingly, the court should be slow to give it an interpretation that is too literal.

Configurability of number of moulding units during manufacturing stage

A fourth difference between the parties has to do with whether Claim 4 covers moulding machines for which the number of moulding units can be configured during the manufacturing stage. Pecht appears to be of the opinion that it does. Tabata, on the other hand, disagrees and opines that the Patent clearly describes a moulding machine that is already built. In my judgment, Tabata is correct. In Claim 4 (and indeed in Claim 1 as well), there is a “molding unit (5)” which is described as being “already provided”. This indicates that the contemplated adjustment of the number of moulding units is one that takes place post-manufacture and does not extend to the configurability of the number of moulding units during the manufacturing stage. Moreover, I agree with Tabata that various extracts from the Patent clearly state that the object of the invention is a moulding machine which can respond to changes in production needs by increasing and decreasing the number of moulding units, and that this is a feature that can exist only in a moulding machine that is already built. Indeed, there are references in the Patent to the number of moulding units being adjusted “in response to the production quantity as required” and “in response to the required production quantity”.

Is the Patent (in particular, Claim 4) valid?

Having construed the Patent claims, I now consider the second broad issue, viz, is the Patent (in particular, Claim 4) valid? A number of sub-issues arise in relation to this broad issue:

(a) Is the invention in Claim 4 novel?

(b) Does the invention in Claim 4 involve an inventive step?

(c) Does the Patent satisfy the sufficiency requirement?

Is the invention in Claim 4 novel?

The law

The requirement of novelty is prescribed by s 13(1) of the Patents Act. Section 14(1) of the Patents Act then states that an invention shall be taken to be new if it does not form part of the state of the art. It has been observed that the novelty inquiry involves two steps: (a) identify all the relevant pieces of “prior art” for the invention in question; and (b) assess whether the invention has been anticipated by any of these pieces of prior art (Ng-Loy Wee Loon, Law of Intellectual Property of Singapore (Sweet & Maxwell, 2nd Ed, 2014) at para 30.1.25).

In the present case, it is the second step that is principally in issue. In this connection, the Court of Appeal in Mühlbauer AG v Manufacturing Integration Technology Ltd [2010] 2 SLR 724 (“Mühlbauer”) summarised (at [17]) the general test as follows:

The invention must be compared against each individual piece of prior art; generally speaking, it is not permissible to assemble all the pieces of prior art together into a “mosaic”, and then to compare the invention under question against this “mosaic” (Mühlbauer at [68]). The 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 (Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd and others and other suits [2005] 3 SLR(R) 389 (“Trek”) at [87] affirmed in Mühlbauer at [18]). The burden of proving anticipation rests on the defendant (Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and another (First Currency Choice Pte Ltd, third party) [2007] 1 SLR(R) 1021 at [53]).

The above principles are well established. Notwithstanding, the defendants have urged me to consider two other defences, which are referred to as the Gillette defence and the “squeeze” argument respectively.

The Gillette defence stems from the decision of the House of Lords in Gillette Safety Razor Company v Anglo-American Trading Company Ld (1913) 30 RPC 465 (“Gillette Safety Razor”), which concerned an action for patent infringement. Lord Moulton considered a piece of prior art (“Butler”) and concluded (at 480–481):

The “squeeze” argument, on the other hand, is a variation of the Gillette defence. The defendants refer me to an earlier edition of the CIPA Guide to the Patents Act (Sweet & Maxwell, 7th Ed, 2011), where it is stated (at para 125.17) that the “squeeze” argument “particularly arises when there is the possibility of an elastic interpretation of a claim so that a defendant can contend that a claim will be either invalid if construed broadly, or not infringed if construed more narrowly”.

It seems to me that neither the Gillette defence nor the “squeeze” argument departs from the well-established principles of the law of Patents. Rather, their identifying feature is that they allow a court to come to a conclusion on liability without actually having to construe the claim(s) in question (see Gillette Safety Razor at 480; CIPA Guide to the Patents Act at para 125.17). As I have already construed the Patent claims (in particular, Claim 4) earlier in this judgment, a consideration of the Gillette defence or the “squeeze” argument is neither necessary nor profitable in the present case. I observe, however, that it may not be ideal for courts to side-step the issue of claim construction altogether. Indeed, Lord Moulton in Gillette Safety Razor accepted (at 480) that “such a mode of deciding a Patent case is unusual”.

Analysis

Having set out the applicable legal principles, I now consider the relevant prior art. Parties have agreed that there are three pieces of prior art that fall for my consideration: (a) a Japanese patent filed by Kyuushuu NEC Co Ltd (“NEC”); (b) a Japanese patent filed by Hitachi, Ltd (“Hitachi”) and (c) a machine made by Advanced Systems Automation Pte Ltd (“ASA”) known as the ASA 808K (“ASA 808K”). These will be considered in turn.

(1) NEC

The first piece of prior art is NEC, which deals with an invention titled “Resin Sealing Device for Semiconductor”. I am of the view that NEC does not anticipate the invention in Claim 4 because the machine in NEC does not contemplate modularity of moulding units.

Figure 1 of NEC shows that the moulding units of the machine in NEC are attached to what appears to be a table top of fixed dimensions:

I agree with Tabata that having the moulding units connected to a table top is a clear indication that the moulding machine in NEC is not designed to be modular and that the moulding units are not designed to be removed or added. Tabata states that any detachment of the moulding units would not be feasible as it would leave a gap in the machine, likely rendering the machine inoperable. In response to this, Pecht opines that any gap “can be handled by the robotics”. However, even if I were to accept Pecht’s evidence on this point, this only deals with the detachment or removal of moulding units. In so far as the addition of moulding units is concerned, Tabata’s view, which I find difficult to refute, is that any addition of moulding units would be impossible as there is no space to do so.

Admittedly, there are passages in NEC which allude to the number of moulding units being changeable. At one point, it is stated that “[t]his invention can be attached with a multiple number of press structure”. At another, it is stated that “[t]his invention is not limited to above implementation example, the transfer mold press and mold number can be increased, and with this it surround automotive units arrangement can be changed without being said”. In light of Figure 1, however, the only possible interpretation of these passages is that they refer to the number of moulding units being configurable during the manufacturing stage. In other words, a customer can place an order for a moulding machine with a variable number of moulding units. However, as alluded to at [36] above, this is not the same as the adjustability of the number of moulding units post-manufacture, which is what is contemplated by Claim 4. NEC, therefore, does not anticipate the invention in Claim 4.

(2) Hitachi

The second piece of prior art is Hitachi, which concerns an invention named “Molding system”. In my view, Hitachi does not anticipate the invention in Claim 4 because the machine in Hitachi does not contemplate modularity of moulding units. It is to be recalled that the burden of proving anticipation falls on the defendants in the present case (see [40] above). In this regard, Pecht’s evidence on Hitachi is unsatisfactory.

Pecht relies on, inter alia, the following passages in Hitachi:

In his report, Pecht originally opined that the word “mold” in Hitachi “clearly corresponds” to the moulding unit in the Patent. At trial, however, Pecht accepted that the word “mold” is used “in many different ways” in Hitachi.

On the other hand, the plaintiff submits that the above passages refer to exchangeability of the mould and not the moulding unit. According to Tabata, the mould is only a subset of the moulding unit, which comprises both the mould and the pressing mechanism. The purpose of changing moulds is to replace those which have worn out cavities or to react to different manufacturing requirements (eg, when different integrated circuits need to be moulded in a different form). In contrast, the purpose of adding or removing moulding units is to react to different levels of production capacities.

It seems to me that the above passages in Hitachi have to do with exchangeability of moulds rather than moulding units. In the first passage, it is undisputed that “Mold 11 ~ 16” refers to the moulding unit. This being the case, the second reference to “mold” must logically refer to a mould rather than a moulding unit. This is the only sensible reading of the passage; otherwise, the passage would illogically suggest that each moulding unit has either the same or different type of moulding unit. As for the third reference to “molds” (which has to do with exchangeability), it is quite clear from the context that this has the same meaning as the second reference to “mold”. As for the second passage, the reference to a cavity deteriorating in quality indicates that what is being discussed is the exchangeability of moulds rather than moulding units. Indeed, it would be excessive to replace the entire moulding unit just to rectify a deteriorating cavity.

Even if Hitachi had to do with the exchangeability of moulding units, I find merit in the plaintiff’s submission that the concept of exchanging is not the same as that of adding and removing moulding units to react to different production volumes as there is no change in the number of moulding units in the former scenario. Admittedly, the second passage in Hitachi referred to above does contemplate that in the process of exchange, there may be a period of time whereby the moulding unit (on the assumption that this is what “mold” refers to) that is being exchanged is not working. In substance, this is no different from a scenario where a moulding unit is being removed. However, this still leaves the addition of a moulding unit unaccounted for. In this connection, I am not persuaded by Pecht’s argument, which appears to be that moulding units can be added on the basis that: (a) the machine in Hitachi does not have a common base but is mounted on the ground; and (b) the robotic track is extendable and the software can be programmed accordingly. Quite apart from the bare nature of these assertions, nowhere in Hitachi is it mentioned that a “mold” can be added. Pecht had in fact conceded at trial that Hitachi does not expressly mention that a moulding unit can be added.

A final point on Hitachi relates to the following passage in Hitachi:

Pecht relies on the emphasised part of the above passage. However, the furthest this passage goes is to suggest that the number of moulding units can be configured during the manufacturing stage. However, as alluded to at [36] above, this is not the same as the adjustability of the number of moulding units post-manufacture, which is what is contemplated by Claim 4. Hitachi, therefore, also does not anticipate the invention in Claim 4.

(3) ASA 808K

The final piece of prior art is the ASA 808K. A preliminary point that needs to be dealt with is the plaintiff’s submission that there is no evidence of prior sale and use of the ASA 808K before 22 July 1993, the priority date of the Patent. This submission goes towards the first step in the novelty inquiry (see [38] above). There is, however, no need for me to consider the substantive merits of this submission as the parties’ experts’ joint statement already indicates that parties are in agreement that the ASA 808K forms part of the relevant prior art. In these premises, the plaintiff would be hard-pressed to maintain this submission, which was, rightfully, not pursued much in oral submissions.

In any event, I am of the view that the ASA 808K also does not anticipate the invention in Claim 4 because the ASA 808K does not contemplate modularity of moulding units. First, the ASA 808K is a four-moulding unit machine with a base plate which is custom-built for four moulding units. That the ASA 808K comes with four moulding units is evident from the ASA 808K’s manual. In fact, Ng Wee Huat (“Wee Huat”), the first defendant’s senior technical consultant, gave evidence that the last “8” in “ASA 808K” is indicative that the four-press machine can mould up to eight lead frames simultaneously; a three-press machine has the name “ASA 806K” and so on. As for the customised size of the base plate, the defendants’ witnesses’ evidence is that if the number of moulding units needed to be increased, the base plate would need to be changed. All this being the case, I am unable to see how the ASA 808K can have modular moulding units. As Tabata has observed, where moulding units are connected to a common platform instead of each other, the addition of moulding units would be impossible as there is no space to do so.

Second, any “modularity” contemplated by the ASA 808K has, at its highest, to do with continuity of production when one moulding unit is removed or breaks down. It does not involve flexibility in terms of adjusting (and especially increasing) production capacity. In this regard, Wee Huat testified at trial that sometime in 1991, his company ordered an ASA 808K but, as ASA was short of one moulding unit and his company was in urgent need of the machine, the ASA 808K was shipped with only three moulding units and the fourth moulding unit was only installed subsequently. Another of the defendants’ witnesses, Ng See Hwee, gave evidence at trial that, sometime in the later half of 1990, he had seen the ASA 808K operating with one moulding unit removed for repair during the “pre-buy-off” process (which I understand to be part of the testing process) at ASA’s factory. Both of these instances of “modularity” do not actually involve any addition in the number of moulding units. Rather, all they show is that the ASA 808K is capable of operating even when one moulding unit is absent.

Neither am I persuaded by Pecht’s reliance on passages in the ASA 808K’s manual which, at first blush, give the impression that the ASA 808K contemplates modularity of moulding units. The first such passage reads: “[m]odular design permits flexibility and interchangeability to accept a wide range of package configurations”. Tabata, however, explains that the modularity mentioned in the ASA 808K’s manual refers to the ease of exchanging the mould and the plunger in order to service different types of product packages. The second passage in the ASA 808K’s manual relied on by Pecht states as follows:

In my judgment, this passage is simply referring to the use of software (ie, the “individual control system”) to disable (and presumably also enable) any given moulding unit on the ASA 808K. Plainly, this is entirely different from the physical modularity of moulding units contemplated by Claim 4.

Finally, I should also state that I give no weight to the photographs adduced by the defendants showing what appears to be a moulding unit removed from a similar machine known as the ASA 808S. The ASA 808S is not relied on as prior art by the defendants. In any event, the photographs do not assist the defendants’ case on any front, as all they show is the removal of a moulding unit from the ASA 808S. The ASA 808K, therefore, also does not anticipate the invention in Claim 4. Accordingly, the invention in Claim 4 is novel.

Does the invention in Claim 4 involve an inventive step?

The law

The requirement of inventive step is likewise prescribed by s 13(1) of the Patents Act. Section 15 of the Patents Act then states that an invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of s 14(2) of the Patents Act and without having regard to s 14(3) of the same. Like the novelty inquiry, the inventive step inquiry also involves two steps: (a) construct the relevant state of the art for the invention in question; and (b) compare the invention with the state of the art to determine if the invention is obvious to the person skilled in the art (Law of Intellectual Property of Singapore at para 30.1.46).

In so far as the second step is concerned, the Court of Appeal has repeatedly affirmed the four-step approach set out in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (“Windsurfing”) (at 73–74) (see, for example, Mühlbauer at [20]; Merck & Co Inc v Pharmaforte Singapore Pte Ltd [2000] 2 SLR(R) 708 at [50]). The four steps to this approach are as follows:

(a) Identify the inventive concept embodied in the patent in suit.

(b) Assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and impute to him what was, at that date, common general knowledge in the art in question.

(c) Identify what, if any, differences exist between the matter being cited as being known or used and the alleged invention.

(d) Ask whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.

The burden of proof is upon the defendant to show that no inventive step was involved (Mühlbauer at [19]; Ng Kok Cheng v Chua Say Tiong [2001] 2 SLR(R) 326 (“Ng Kok Cheng”) at [16]–[17]). In First Currency Choice, the Court of Appeal observed (at [44]) that it is the fourth step of the Windsurfing approach that is “ultimately the only critical question”. In this fourth step, and unlike in the novelty inquiry, it is permissible to construct a “mosaic” out of the various pieces of prior art, unless the act of “mosaicing" itself is not obvious to the notional skilled person (Mühlbauer at [93]). Moreover, simplicity is no bar to inventiveness (Mühlbauer at [102]) and a small step can still be an inventive step (Peng Lian Trading Co v Contour Optik Inc and others [2003] 2 SLR(R) 560 at [28]).

Analysis

Although the defendants originally pleaded that the Patent did not involve an inventive step, this issue is not dealt with in any substantive measure in the defendants’ closing submissions. It is only in their reply submissions that the defendants seek to deal with this issue and “show that the Patent is obvious”. Even then, however, all the defendants do is attempt to rebut the plaintiff’s submissions. In both sets of submissions, there is no mention of the well-established Windsurfing approach, much less an engagement of its four steps. Fatally, there is no meaningful attempt to compare the invention in Claim 4 with the prior art and show how and why the differences (if any) are obvious to a person skilled in the art. The defendants’ submissions on the issue of inventive step are therefore woefully inadequate to discharge their burden of proof.

Interestingly, Pecht did deal with the issue of inventive step in his report. However, in light of the defendants’ submissions, it is not entirely clear if Pecht’s opinion on this issue has been adopted by the defendants. In any event, Pecht’s opinion that there is no inventive step is based on his view that there is no difference between what is known or used and the alleged invention. As the plaintiff submits, therefore, Pecht’s opinion really is that the invention in Claim 4 does not involve an inventive step only because it is anticipated by the three pieces of prior art. Given my findings on the novelty issue, Pecht’s opinion on the inventive step issue also does not assist the defendants, even if the defendants had intended to rely on it. Accordingly, the invention in Claim 4 involves an inventive step.

Does the Patent satisfy the sufficiency requirement?

The law

The sufficiency requirement is also known as the “enabling disclosure” requirement (Law of Intellectual Property of Singapore at para 30.2.1). Under s 80(1)(c) of the Patents Act, a patent may be revoked if its specification “does not disclose the invention clearly and completely for it to be performed by a person skilled in the art”. The burden of proving insufficiency rests on the defendant challenging the validity of a registered patent (Ng Kok Cheng at [48]). In determining whether the specification of a patent is sufficient, a two-step test applies: (a) identify the invention and decide what it claims to enable the skilled man to do; and (b) ask whether the specification enables him to do it (First Currency Choice at [61] following Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 at [103]).

In the present case, the first step has already been addressed (see [18]–[36] above) and it is therefore the second step that remains in issue. In this regard, whether the patent specification discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art is a question of degree, and the question of the sufficiency of the disclosure would be a matter of fact, depending on the nature of the invention and the other circumstances of the case (First Currency Choice at [60]). However, it must be borne in mind that the phrase “clearly and completely” contemplates that the patent specification need not set out every detail necessary for the performance of the invention, but can leave the skilled man to use his skill to perform the invention (First Currency Choice at [60]). In Mentor Corporation and Another v Hollister Incorporated [1993] RPC 7, the English Court of Appeal held (at 10) that:

In addition, regard should also be given to the following two “further considerations” highlighted by the Court of Appeal in First Currency Choice (at [62]):

Analysis

As stated, the first step of the two-step test has already been addressed: the invention in Claim 4, broadly speaking, is the application of the concept of modularity to the moulding units of moulding machines (see [22] above). It is therefore the second step that remains in issue, and the question to be answered is whether the patent specification discloses this invention clearly and completely for it to be performed by a person skilled in the art.

I start by looking at the Patent. In this regard, and in so far as the modularity of moulding units is concerned, two paragraphs and two figures in the Patent are relevant. The two paragraphs read as follows:

As for the figures, the first relevant figure is Figure 3:

The other relevant figure is Figure 7:

The crux of the issue is whether the above references to “engaging means 38” are sufficient to allow a person skilled in the art to achieve modularity of moulding units in moulding machines. In this respect, Tabata accepts that Figure 7 provides an illustration of such engaging means without specifying what such means are. However, Tabata asserts that a person skilled in the art would know that:

(a) The alignment of moulding units in moulding machines can be achieved through the use of alignment bars, guiding pins and fitting holes. These methods and devices are commonplace for automation machines where the precise alignment of the various components/parts of the machine is always necessary to ensure that the automation process can be carried out smoothly. At the date of the Patent, there were also already automated moulding machines with multiple moulding units in the market (eg, the ASA 808K). Persons familiar with such machines would know how the different components need to be aligned for the machine to operate properly.

(b) To connect two moulding units together (with the intention of possible subsequent disconnection), such connection can be easily achieved through the use of nuts/bolts, connecting screws etc. These methods and devices would have been obvious and commonplace to even a lay person, much less a person familiar with machinery.

In these premises, Tabata opines that it was not necessary to stipulate in the Patent what the “engaging means” refer to. Any person familiar with automated moulding machines reading the specification of the Patent as at the date of the Patent would be aware of the methods and devices that make up these “engaging means”, and need not require further specification to be able to perform the invention in the Patent.

If unrebutted, Tabata’s evidence would be sufficient to establish that the Patent satisfies the sufficiency requirement. It is to be recalled that there is no need for the patent specification to set out every detail necessary for the performance of the invention as the skilled man (who does not have to be told what is self-evident, or what is part of common general knowledge) can be left to use his skill to perform the invention (see [66] above). With this in mind, I turn to consider Pecht’s evidence.

As I understand them, Pecht’s views are as follows. First, Pecht argues that there is no enabling disclosure in the Patent as to what the “simple means” (referred to elsewhere in the Patent) comprises. This point harks back to Pecht’s view that Claim 4 excludes machines which require complex and time-consuming attachment/detachment and positioning operations to be performed when increasing/decreasing the number of moulding units (see [29] above). What I understand Pecht to be saying, therefore, is that the Patent does not show how a moulding unit can be “simply” added or removed. However, as I have earlier found that the “simple” addition or removal of a moulding unit is not part of the invention of Claim 4 (see [30] above), it follows that Pecht’s first point on the issue of sufficiency cannot hold water.

Second, Pecht opines that the skilled addressee would know that precise alignment needs to be achieved to make a moulding system functional and reliable. However, there is no enabling disclosure which teaches how precise alignment is to be achieved, notwithstanding the references to “engaging means 38” and Figure 7. Pecht therefore disagrees with Tabata’s view as set out at [70(a)] above. He further asserts that Tabata appears to make reference to common general knowledge, but that no support is given. Parenthetically, I note that Pecht does not dispute Tabata’s view as set out at [70(b)] above and this much was confirmed at trial.

However, the fatal flaw in this aspect of Pecht’s evidence is that Pecht does not explain why a person skilled in the art looking at the Patent would not know how the requisite alignment is to be achieved. Pecht’s evidence is therefore nothing more than a bare and unexplained denial of Tabata’s position. Consequently, Tabata’s position is left unrebutted. Moreover, Pecht’s allegation that Tabata has not supported his reference to common general knowledge does not assist the defendants because the burden of proving insufficiency in the present case rests, not on the plaintiff, but on the defendants (see [65] above). Pecht’s allegation is also rather ironic because Pecht has not even proffered reasons (much less evidence) for his view. In contrast, Tabata has, at the very least, set out the reasons for his position.

I therefore find that the Patent satisfies the sufficiency requirement. As the defendants have failed to establish a lack of novelty, inventive step or sufficiency, the Patent (in particular, Claim 4) is, accordingly, valid.

Are the defendants prima facie liable for infringing the Patent?

As the Patent is valid, the next broad issue is whether the defendants are prima facie liable for infringing the Patent. In making this determination, two sub-issues fall for my consideration:

(a) Does the IDEALmold machine fall within the scope of the Patent claims?

(b) If the IDEALmold machine falls within the scope of the Patent claims, have the defendants committed any infringing acts in relation to the IDEALmold machine?

Does the IDEALmold machine fall within the scope of the Patent claims?

Retrofitting

Having already construed the Patent claims (see [18]–[36] above), the answer to the first sub-issue turns primarily on a process known as retrofitting. The defendants do not dispute that retrofitting does in fact allow for an increase and decrease in the number of moulding units on the IDEALmold machine. It is also not disputed that retrofitting was offered as a service to customers who asked for and agreed to pay for it (although, to be fair, the evidence on this point was, strictly speaking, given in the context of retrofitting to add a moulding unit). Retrofitting has in fact been successfully carried out to add moulding units to IDEALmold machines. There has not been any request to remove moulding units; this is because a moulding unit which was not required could simply be deactivated via the software of the IDEALmold machine. On my part, it is clear that modularity of moulding units was envisaged as a feature of the IDEALmold machine and that retrofitting provided for this. The IDEALmold machine, having the feature of modularity of moulding units, therefore falls squarely within the Patent claims.

With respect to the defendants’ first point, the argument goes that as retrofitting has not been pleaded, no evidence of it can be given. Reliance is placed on O 87A r 7(1) of the Rules of Court. It is not entirely clear which edition of the Rules of Court the defendants are relying on (the Suit was commenced in 2013). For the sake of convenience, I shall simply refer to the Rules of Court (Cap 322, R5, 2014 Rev Ed) (“ROC”). In this regard, O 87A r 7(1) of the ROC provides as follows:

In response, the plaintiff refers to O 87A r 2(2) of the ROC, which states as follows:

The plaintiff submits that it has met its obligation: it has identified the IDEALmold machine as the infringing machine, specified the claims in the Patent which the IDEALmold machine infringes, described the infringing acts and provided examples of such acts.

In my view, the defendants’ objection is entirely misconceived. Retrofitting is nothing more than a means which provides for the modularity of the moulding units of the IDEALmold machine. Critically, retrofitting is not the alleged infringement. Indeed, retrofitting cannot be the alleged infringement because the Patent does not concern the means by which modularity is achieved. Rather, the alleged infringement has to do with the IDEALmold machine which has the feature of modularity and it is sufficient if the plaintiff has pleaded that the IDEALmold machine infringes the Patent. In this respect, the plaintiff’s Particulars of Infringement (Amendment No 1) clearly makes reference to the IDEALmold machine as the alleged infringement. There is no need for the plaintiff to further identify the means by which modularity is achieved as this is largely irrelevant.

This analysis (ie, that the alleged infringement is not retrofitting per se) also suffices to deal with the following ancillary submissions of the defendants concerning retrofitting:

(a) That an offer to retrofit or even the act of retrofitting does not fall under any of the pleaded acts of infringement. With respect to Claims 1 and 2 (the process claims), the point seems to be that the retrofitted IDEALmold machine is always operated by the customer, whereas for Claims 4 and 5 (the product claims), the argument appears to be that the IDEALmold machine already belongs to the customer by the time of retrofitting.

(b) That there is no pleading or allegation that retrofitting has been performed in Singapore.

(c) That the IDEALmold machine is not infringing per se, but only potentially infringing if retrofitting is carried out.

All these submissions are premised on the misconception that retrofitting per se is the alleged infringement. To reiterate, retrofitting is not the alleged infringement. Rather, the alleged infringement has to do with the IDEALmold machine which has the feature of modularity.

The defendants go to great lengths to make this point. Wee Kock Hien (“Wee”), the first defendant’s technical manager, stated as follows in his affidavit of evidence-in-chief (“AEIC”):

Wee then goes on to describe the 25 steps purportedly involved in the adding of a fourth moulding press to a three-moulding unit IDEALmold machine before concluding, at step 26, as follows:

In a similar vein, Pecht, referring to Wee’s AEIC, opines that “no molding unit can be added or removed without complex rebuilding, replacement of multiple operational parts, custom alignment and software changes”.

Second, I am inclined to agree with the plaintiff’s submission that it is only the accessorial and peripheral cables, belts, tracks and wirings etc that need to be replaced during retrofitting. These parts were of fixed dimensions, depending on the number of moulding units. At trial, Wee testified that the onloader and offloader remained unchanged. The onloader is the component of the IDEALmold machine that picks up the lead frame and pellet and feeds them into the moulding unit, whereas the offloader serves the converse function after the moulding is done. In my view, these are the key components of the IDEALmold machine and the fact that they remain unchanged during retrofitting is telling.

Finally, I should also add that I am not impressed by Wee’s testimony at trial that the amount of time taken for retrofitting (one week) is similar to the time taken to “configure” a new IDEALmold machine. Even if I were to accept Wee’s evidence, retrofitting does not become time-consuming just because it takes the same amount of time as “configuring” a new IDEALmold machine.

In these circumstances, the IDEALmold machine, by virtue of its retrofitting feature, falls squarely within Claim 4 as well as Claim 5, which is dependent on Claim 4. As Claim 1 simply teaches the process whereby the moulding machine taught in Claim 4 is operated, the IDEALmold machine, in so far as its operation is concerned, also falls within Claim 1. Subject to what will be said in the following section (see [91]–[95] below), it also falls within Claim 2, which is dependent on Claim 1. It should be noted that, apart from the invention in Claim 4 (for which there is a corresponding part in Claim 1 (see [35] above)) as well as what will be said in the following section (see [91]–[95] below), there is no dispute that the IDEALmold machine takes the remaining elements of Claims 1, 2, 4 and 5.

Double-storage step

A second string to the defendants’ bow is the submission that the IDEALmold machine does not have the double-step storage purportedly referred to in Claim 2. This submission is based on the part of Claim 2 that reads as follows:

Reference is also made to the following part of the Patent:

The argument is that there are two storage steps mentioned in Claim 2: one in “lead frame storage unit 12” and one in “stock magazines 37”. In contrast, the IDEALmold machine does not have a double-storage step for the lead frames. Pecht’s evidence is that “[a]fter the electronic parts are molded and the IDEALmold [machine] degates the parts, it drops (not picks) the molding lead frames parts into a single location (a stack magazine) which holds the [lead frames]”.

In light of my finding at [90] above, it is not strictly necessary for me to make a finding on this issue of the double-storage step. Even if I were to find in favour of the defendants, the IDEALmold machine would still fall within Claims 1, 4 and 5. Notwithstanding, I am of the view that there is, in fact, no double-storage step referred to in Claim 2.

In this respect, I agree with the plaintiff’s submission that Pecht has confused the first step of transferring sealed lead frames to “lead frame storage unit 12” to be a storage step in itself when, in this step, there is no actual storage. Rather, the actual storage is only done in the last step, when the sealed lead frames are stored in “stock magazines 37”. There are two steps only because Claim 2 describes: (a) moving the sealed lead frames to “lead frame storage unit 12”; and (b) storing the sealed lead frames in “stock magazines 37” within “lead frame storage unit 12”. The plaintiff further refers to the following paragraphs of the Patent:

It seems to me that the sealed lead frames, after being transferred to “lead frame storage unit 12”, are picked up by “pickup mechanism 36” before actually being stored in “stock magazines 37”. In my judgment, it would be a literary strain to say that the transfer of sealed lead frames to “lead frame storage unit 12” is a step of storage. Storage, in the ordinary sense of the word, only occurs in “stock magazines 37”. This interpretation is further supported by the fact that “stock magazines 37” are actually found within “lead frame storage unit 12” (see the part of the quote at [93] above which says that “lead frame storage unit 12 is provided with stock magazines 37”). It does not make sense to have two storage areas, one found within the other.

In these premises, I reject the plaintiff’s submission concerning double-step storage. My findings at [90] above therefore remain unchanged: the IDEALmold machine falls within Claims 4 and 5 and, in so far as its operation is concerned, also falls within Claims 1 and 2.

Have the defendants committed any infringing acts in relation to the IDEALmold machine?

As the IDEALmold machine falls within the scope of the Patent claims, I now turn to consider whether the defendants have committed any infringing acts in relation to the IDEALmold machine. For present purposes, the relevant list of infringing acts is found in ss 66(1)(a) and (b) of the Patents Act, which state as follows:

I have earlier set out the infringing acts which the plaintiffs plead the defendants have committed (see [9] above). For ease of reference, this is set out in tabular form as follows:

Pleaded infringing acts

First defendant

Claims 1 and 2

(process claims)

Offered for use

Claims 4 and 5

(product claims)

Made

Disposed of

Offered to dispose of

Kept

Second defendant

Claims 4 and 5

(product claims)

Made

Kept

Both defendants

(joint tortfeasorship by common design)

Claims 1 and 2

(process claims)

Offered for use

Claims 4 and 5

(product claims)

Made

Disposed of

Offered to dispose of

Kept

First defendant

(1) Claims 4 and 5 (product claims)

I start by looking at the infringing acts alleged against the first defendant in relation to Claims 4 and 5. As these are product claims, the relevant provision is s 66(1)(a) of the Patents Act. There is little dispute over this issue. The defendants plead that the first defendant has been in the business of manufacturing and selling IDEALmold machines “since on or around 1999/2000”. At trial, Yuen Chun On (“Yuen”), the first defendant’s senior sales manager accepted that the first defendant has manufactured (ie, made), sold (ie, disposed of), offered for sale (ie, offered to dispose of) and kept the IDEALmold machine. It can also be safely inferred that these infringing acts were done in Singapore (as s 66(1) of the Patents Act requires) as the first defendant is a Singaporean company and this point is, in any event, not disputed by the defendants. Accordingly, I find that the first defendant has infringed Claims 4 and 5 by making, disposing of, offering to dispose of and keeping the IDEALmold machine.

(2) Claims 1 and 2 (process claims)

As Claims 1 and 2 are process claims, the relevant provision is s 66(1)(b) of the Patents Act. The infringing act alleged against the first defendant in relation to Claims 1 and 2 is that of offering for use.

A difficulty arises because the plaintiff does not actually allege that the first defendant had offered the allegedly infringing process (ie, the operation of the IDEALmold machine) for use. Rather, the plaintiff relies on the first defendant’s selling and offering for sale of the IDEALmold machine and submits that, as a matter of law, selling and offering for sale a product which incorporates an infringing process is equivalent to offering the infringing process for use. The basis for this submission is the decision of the English Patents Court in Tamglass Ltd OY v Luoyang North Glass Technology Co Ltd and another [2006] EWHC 65 (Ch) (“Tamglass”). The court in Tamglass found (at [15]–[16]) that the machine in question had infringed the patent in that case. As the first defendant in Tamglass had imported the machine and supplied it to the second defendant, the first defendant had infringed in relation to the product claim in the patent by importing for the purposes of s 60(1)(a) of the UK Patents Act 1977 (c 37) (UK) (“the UK Patents Act”) (which is similar to s 66(1)(a) of the Patents Act) (at [35]). The court then went to state (at [36]), in a passage relied on by the plaintiff, as follows:

The court then cited (at [37]) two instances where the first defendant had made what the court considered to be offers for what appears to be the sale of the machine.

The defendants submit that this approach dilutes and renders meaningless the division between the different infringing acts of product patents and process patents in s 66 of the Patents Act. Moreover, there was no argument and reasoning set out for this approach in Tamglass.

Given my earlier finding that Claims 4 and 5 have been infringed by the first defendant, it is, strictly speaking, not necessary for me to make a determination on this point. It is apparent that the exact same machines are involved in both sets of claims and a finding that the first defendant has also infringed Claims 1 and 2 is unlikely to have any practical implication.

That said, I am in general agreement with the plaintiff’s submission, although I do think that it could have been phrased more clearly. As I see it, the plaintiff’s submission is really that offering an infringing process for use includes the selling and offering for sale of a product which incorporates the infringing process. Subject to the proviso that that product must be intended to be used by the offeree, there are two reasons why I agree with this submission.

First, this submission is a self-evident one: a defendant who sells or offers for sale a product which incorporates an infringing process must, if that product is intended to be used by the offeree, be taken to have offered the incorporated infringing process for use. In this regard, I fail to see how there is, as the defendants claim, a dilution or rendering meaningless of the different infringing acts of product patents and process patents. The focus here is still on the “offer for use” limb of s 66(1)(b) of the Patents Act and, in my view, the wording of this limb is broad enough to include the scenario set out in the plaintiff’s submission (subject to the proviso).

Second, the defendants have not cited any authority to the contrary. I accept that the decision in Tamglass is bereft of argument and reasoning in so far as this point is concerned. However, if, as I have held at [104] above, the plaintiff’s submission is a self-evident one, then there really would have been no need for anything further to have been said about it. In this connection, I note that Tamglass has been discussed without criticism in two paragraphs of a leading patents textbook (Colin Birss et al, Terrell on the Law of Patents (Sweet & Maxwell, 18th Ed, 2016) at paras 14-92–14-93).

As such, I find that offering an infringing process for use includes the selling and offering for sale of a product which incorporates the infringing process, provided that that product is intended to be used by the offeree. It follows from [98] above that the first defendant has offered Claims 1 and 2 for use in Singapore.

This, however, is not the end of the matter as there are two further requirements under s 66(1)(b) of the Patents Act that must be satisfied in order for liability to attach. First, the offer must not only be made in Singapore but must also relate to the use of the infringing process in Singapore (Institut Pasteur and Another v Genelabs Diagnostics Pte Ltd and Another [2000] SGHC 53 at [225]; Law of Intellectual Property of Singapore at para 33.2.2). There is unfortunately little evidence on this point. For the purposes of ascertaining liability, however, I am prepared to infer that this was the case. Although Yuen in his AEIC stated that the first defendant offers the IDEALmold machine for sale to its customers which are “from all over the world”, he also said at trial that he had given presentations on the IDEALmold machine both locally and overseas. As such, at least some of the first defendant’s customers were probably based in Singapore and the offer for use would have related to the use of the IDEALmold machine in Singapore.

The second further requirement is that the first defendant must have known, or it would have been obvious to a reasonable person in the circumstances, that the use of the IDEALmold machine would have been infringing. I find this requirement to be satisfied on the evidence. The application for the Patent was published on 15 June 1998; the IDEALmold machine was sold by the first defendant from “at least 1999/2000”. Wee gave evidence that in 1998, the research and development team dedicated to automoulding machines was staffed with 30 to 50 persons. He agreed that, as a team, they would be looking out at the industry for the latest innovations and trends. Moreover, there was also evidence that there are not many companies in the moulding machine industry because the manufacture of moulding machines is an endeavour that has high barriers to entry and requires highly-specialised technical skills and technology. Against this image of a highly-competitive industry with few players, I find that even if the first defendant did not know of the Patent and, consequently, that the use of the IDEALmold machine would have been infringing, these would have been obvious to a reasonable person in the circumstances.

Accordingly, I find that the first defendant has infringed Claims 1 and 2 by offering for use the operation of the IDEALmold machine.

Second defendant

The plaintiff’s claim against the second defendant relates only to Claims 4 and 5. The infringing acts identified in the pleadings pertain to the second defendant’s alleged making and keeping of the IDEALmold machine. However, the plaintiff’s closing submissions refer only to the former.

The plaintiff’s case against the second defendant rests solely on the fact that the nameplates of some IDEALmold machines stipulate “ASM Pacific Technology” as the manufacturer. Photographs of these nameplates were adduced in evidence. In contrast to the nameplates in these photographs, the nameplates in the other photographs in evidence indicate “ASM Technology Singapore” as the manufacturer. The plaintiff says that “ASM Pacific Technology” is the corporate name of the second defendant.

On the other hand, the defendants explain that the use of “ASM Pacific Technology” on the nameplates was the result of a restructuring exercise. In 2010, there were plans to restructure the group of companies owned by the second defendant (“the ASMPT Group”) into a “Principal Company Structure”. In connection with the restructuring, the chief executive officer of the second defendant, Lee Wai Kwong (“Lee”), decided that the ASMPT Group should adopt a common identity or brand for the companies in the ASMPT Group. In an email dated 12 May 2010, Lee decided that the brand name “ASM Pacific Technology” would be used to identify the products emanating from entities in the ASMPT Group. However, the first defendant continued to manufacture and sell the IDEALmold machine as it had always done, although the nameplates were changed to refer to “ASM Pacific Technology” pursuant to the objective of realising a common brand identity.

In my judgment, the nameplates alone are an insufficient basis for me to conclude that the second defendant has infringed Claims 4 and 5 by making and/or keeping the IDEALmold machine. The evidence, as a whole, supports the defendants’ explanation.

First, there is documentary evidence which directly supports the defendants’ explanation. In particular, the email from Lee dated 12 May 2010 unequivocally expresses the desire for a common identity or brand and in fact directs that implementation should follow. The email reads as follows:

The plaintiff casts doubt on the veracity of the defendants’ explanation but does not put forth an alternative interpretation of this email. Neither does it suggest that this email is a fabrication. This being the case, a strong piece of evidence is left unchallenged.

Apart from this email, another piece of documentary evidence which supports the defendants’ explanation is Yuen’s name card. Yuen is an employee of the first defendant and his name card unsurprisingly bears the name of the first defendant in full, ie, “ASM Technology Singapore Pte Ltd”. However, Yuen’s name card also has a stylised logo bearing the words “ASM Pacific Technology”. This strongly suggests that “ASM Pacific Technology” is really nothing more than a brand name.

I accept, however, that there is some documentary evidence which is inconsistent with the defendants’ explanation. For instance, the first defendant’s letter template continued to comprise a stylised logo bearing the words “ASM Technology Singapore” even as late as November 2012. (Oddly, this template also has a reference to “ASM Pacific Technology Group”.) Marketing materials used by the first defendant in October 2011 also bore the words “ASM Pacific Technology Ltd” in the copyright notice. Yuen’s evidence is that the inclusion of “Ltd” was made in error, but I find this to be a rather convenient excuse. However, these inconsistencies could well have been a result of imperfect implementation. More importantly, they do not account for the documentary evidence which does suggest that there was in fact a branding exercise.

Second, the nameplates themselves are consistent with the defendants’ explanation. The nameplates also state the manufacturing date of the machine in question. Among the photographs of the nameplates which are in evidence, the four which bear a later manufacturing date state “ASM Pacific Technology” as manufacturer, while the four which bear an earlier manufacturing date state the manufacturer as “ASM Technology Singapore”. Admittedly, there is some lag time: Lee’s email was sent on 12 May 2010 but “ASM Technology Singapore” is still stated as manufacturer on a nameplate bearing a manufacturing date of July 2010. However, I do not consider this to be fatal as it is only expected that some lag time would be involved in the implementation of what appears to me to be a fairly large-scale branding exercise. Furthermore, although “ASM Pacific Technology” is stated as the manufacturer on some of the nameplates, the address on these nameplates remains that of the first defendant. This point is not that strong as there was some indication at trial that the second defendant (which has its registered address in Hong Kong) had some presence at the first defendant’s address. Nonetheless, it is still of some probative value when considered alongside the rest of the evidence.

Third, the defendants’ pleaded case is that the second defendant is an investment holding company that was, at all material times, not involved in manufacturing. Yuen said in his AEIC that the second defendant was and is not a manufacturer and he confirmed at trial that the second defendant was never ever a manufacturer of the IDEALmold machine. All this is objectively and squarely supported by the second defendant’s 2010 Annual Report, which states as follows:

I note that the Hong Kong Stock Exchange’s website states the second defendant’s principal activities as including the manufacture of machines. However, I give greater weight to the description of the second defendant’s principal activities as stated in its 2010 Annual Report as this emanated from the second defendant itself and is therefore likely to be a more accurate representation of the second defendant’s activities.

Finally, it is also doubtful if “ASM Pacific Technology” is even a reference to the second defendant in the first place. The second defendant’s full name is “ASM Pacific Technology Limited”. I do accept, however, that the earlier nameplates of the IDEALmold machine simply state “ASM Technology Singapore” as manufacturer (see [111] above), and this is also not the first defendant’s full name.

All things considered, the defendants’ explanation is, in my view, believable. Although there are some inconsistencies in the evidence, I find that, on balance, these inconsistencies do not detract from the overall veracity of the defendants’ explanation. Accordingly, I am of the view that the reference to “ASM Pacific Technology” on the nameplates of some IDEALmold machines is not a reference to the second defendant and that the second defendant was not the manufacturer of these machines. Accordingly, the second defendant has not infringed Claims 4 and 5.

Joint tortfeasorship by common design

(1) The law

The law on joint tortfeasorship can be divided into two broad categories: (a) where one party conspires with the primary party or induces the commission of the tort; and (b) where two or more persons join in a common design pursuant to which the tort is committed (Trek at [35]). The plaintiff’s claim for joint infringement concerns the latter category.

In this regard, the High Court in Trek approved (at [37]) the following passage from Morton-Norwich Products Inc and Others v Intercen Limited [1978] RPC 501 (at 512):

Referring to Unilever Plc v Gillette (UK) Limited [1989] RPC 583, the High Court further noted (at [38]) that for parties to operate in furtherance of a common design, it is not necessary for them to have mapped out a plan; tacit agreement will also suffice.

In Bradley Lomas Electrolok Ltd and another v Colt Ventilation East Asia Pte Ltd and others [1999] 3 SLR(R) 1156 (“Bradley Lomas”), the respondents, Colt Ventilation East Asia Pte Ltd (“Colt VEA”), Colt International Limited (“Colt Intl”) and Colt Group Limited (“CG Ltd”) were companies within the Colt group of companies. The appellants originally sued Colt VEA for patent infringement, the alleged infringement relating to a product which was being sold in Singapore by Colt VEA. However, the appellants later obtained an order to add Colt Intl and CG Ltd as defendants. Colt Intl and CG Ltd then applied to set aside the order. By the time the matter reached the Court of Appeal, the only issue was whether CG Ltd should be made a defendant. The Court of Appeal held (at [23]) that it was clearly not enough to merely point to the fact that Colt VEA and CG Ltd were closely related to one another either by shareholding or otherwise; some other evidence of CG Ltd’s actual involvement in furthering the common design of infringement had to be shown. The Court of Appeal then held (at [26]) as follows:

I accept that the Court of Appeal in Bradley Lomas was not concerned with the merits of a joint tortfeasorship claim per se. However, there is no reason why this should make a difference. As such, the threshold for a finding of joint tortfeasorship by common design is a high one. Indeed, it has been observed that such a finding “requires the discharge of a heavy evidentiary burden on the part of the plaintiff” (Susanna H S Leong, Intellectual Property Law of Singapore (Academy Publishing, 2013) at para 19.045).

(2) Analysis

The plaintiff’s claim for joint infringement rests on various alleged agreements and arrangements between the defendants. Although this claim is pleaded as being against both defendants, it is clear from the pleaded infringing acts (which are the same as those alleged against the first defendant), as well as the thrust of the plaintiff’s submissions, that this claim is really directed at the liability of the second defendant for its purported involvement in the first defendant’s infringing acts, which have already been discussed at [98]–[109] above. I find, however, that the plaintiff’s claim for joint infringement is not established.

First, a number of the plaintiff’s submissions can be dismissed outright even without a consideration of their truth or their substantive merits. Bearing in mind the caution in Bradley Lomas (see [123] above), it is insufficient for the plaintiff to point to: (a) Yuen’s apparent agreement that the defendants were “practically … the same company”; (b) the apparent fact that the first defendant’s executive staff were on the second defendant’s payroll; (c) the apparent fact that some of the top management personnel of the second defendant were stationed in Singapore at the first defendant’s premises; (d) the apparent fact that the name cards of the employees of the first and second defendants bore the same reference to “ASM Pacific Technology” and made no distinction between the defendants; or (e) the apparent fact that the second defendant’s representatives were present at trade shows where the first defendant marketed the IDEALmold machine. All these fall far short of establishing the second defendant’s actual involvement in furthering the common design of infringement.

Second, other submissions by the plaintiff are purely speculative. For example, the plaintiff refers to Yuen’s evidence that the final IDEALmold machine comprises of parts that are purchased and parts that are fabricated. The purchased parts are bought by the first defendant from a subsidiary of the second defendant which specialises in central purchasing, while the fabricated parts are fabricated by subsidiaries of the second defendant. The plaintiff submits that instructions to these subsidiaries “can only come” from the second defendant. However, this submission is simply not borne out by the evidence. In fact, Yuen testified, quite to the contrary, and at least in relation to central purchasing, that where the IDEALmold machine was concerned, the subsidiary actually took instructions from the first defendant.

A similar submission by the plaintiff relates to the sale of the IDEALmold machine. There was evidence that although such sale was generally made by the first defendant, there were occasions when it was made in the name of other subsidiaries of the second defendant. Yuen said that he was not aware of how the sales receipts were accounted for internally within the ASMPT Group. From this, the plaintiff submits that such accounting “can only be directed and controlled” by the second defendant. Quite plainly, this submission is based more on speculation than evidence.

Third, the remaining submissions by the plaintiff also do not withstand scrutiny. For instance, the plaintiff refers to marketing materials used by the first defendant and points to the reference to “ASM Pacific Technology Ltd” in the copyright notice. However, Yuen’s evidence is that all these materials were created and used by the first defendant. These marketing materials therefore do not implicate the second defendant at all. A further point made by the plaintiff vis-à-vis these marketing materials relates to Yuen’s evidence at trial that the template for these materials belonged to the second defendant and the first defendant had no choice but to use it. However, these marketing materials do not all relate to the IDEALmold machine. In fact, although not entirely clear, Yuen’s evidence on this point appears to relate to a set of materials for another machine. Consequently, I do not think that what appears to be a general direction by the second defendant to the first defendant concerning the use of templates for the latter’s marketing materials suffices to establish the second defendant’s actual involvement in furthering the common design of infringement.

The plaintiff also points to the second defendant’s website, which features and offers the IDEALmold machine for sale and which lists the first defendant as the contact point in Singapore. The plaintiff further refers to how Yuen had agreed that the second defendant has “absolute control” over the contents of its website. However, there is no evidence as to what this “absolute control” entailed. The second defendant has over a hundred subsidiaries around the world. In light of this, I do not think that when Yuen agreed that the second defendant has “absolute control” over the contents of its website, he meant to say that the second defendant provided or even approved the detailed content that went onto its website. This is all the more so given Yuen’s evidence that the website was managed by employees of the first defendant and that the information on the IDEALmold machine on the website was received by the team responsible for the website from the automoulding department before being included on the website. In these premises, any “control” exercised by the second defendant would have, at most, been in the form of general oversight and I do not think that this sufficiently establishes the second defendant’s actual involvement in furthering the common design of infringement.

Lastly, the plaintiff also draws my attention to Lee’s email of 12 May 2010 (see [114] above). However, the plaintiff’s submission that Lee had given directions to the first defendant on the branding of the IDEALmold machine in this email is completely without merit because the email makes no specific mention of the IDEALmold machine at all. Similar to the reasoning at [129] above, Lee’s general direction concerning the branding exercise does not suffice to establish the second defendant’s actual involvement in furthering the common design of infringement.

Accordingly, I find that the plaintiff’s claim for joint tortfeasorship by common design is not established.

Summary on prima facie liability for infringement

At this juncture, it is appropriate to summarise my findings on prima facie liability for infringement. These are set out in the following table:

Pleaded infringing acts

First defendant

Claims 1 and 2

(process claims)

Infringement

Claims 4 and 5

(product claims)

Infringement

Second defendant

Claims 4 and 5

(product claims)

No infringement

Both defendants

(joint tortfeasorship by common design)

Claims 1 and 2

(process claims)

No infringement

Claims 4 and 5

(product claims)

No infringement

Accordingly, the first defendant is prima facie liable for infringing Claims 1, 2, 4 and 5. There is no liability for infringement on the part of the second defendant.

Given these findings, a further point arises. This relates to a rather peculiar submission made by the defendants. This submission is as follows:

Although no reference is made to any particular part of the plaintiff’s pleadings, it appears that the defendants have in mind the following part of the plaintiff’s Particulars of Infringement (Amendment No 1):

The plaintiff, on the other hand, refers to O 87A r 2(2) of the ROC (see [80] above), which requires the plaintiff to give an instance of the defendants’ infringing acts. The plaintiff submits that giving an instance in a particular year does not mean that the plaintiff is only claiming for that instance of infringement.

I agree with the plaintiff’s submission. O 87A r 2(2) of the ROC requires a plaintiff to serve particulars of infringement: (a) showing which of the claims in the specification of the patent are alleged to be infringed; and (b) giving at least one instance of each type of infringement alleged. In the present case, it is not, and it cannot be, disputed that (a) has been done. As for (b), the part of the plaintiff’s Particulars of Infringement (Amendment No 1) referred to at [134] above merely sets out instances of the alleged infringement which are not intended to be, and which are not required to be, exhaustive. I therefore reject the defendants’ submission accordingly.

Are there any defences available to the first defendant?

As I have found that the first defendant is prima facie liable for infringing the Patent, the next broad issue is whether there are any defences available to the first defendant. In the present case, the defendants rely on two categories of defences: (a) “delay” defences; and (b) “remedy” defences.

“Delay” defences

With respect to the “delay” defences, the defendants rely on s 6 of the Limitation Act as well as the defences of estoppel, delay, laches and acquiescence. At trial, counsel for the plaintiff accepted that the Limitation Act applied and that the plaintiff is “only entitled to go back six years”. The same concession is also made in the plaintiff’s closing submissions. It is therefore not necessary for me to make any finding on this issue. As for the remaining defences, despite the many words used by the defendants, it is clear from their reliance on Dynasty Line Ltd (in liquidation) v Sia Sukamto and another [2013] 4 SLR 253 that only two defences are being relied upon, viz, acquiescence and laches.

The law

The equitable principle of laches was examined in considerable detail by the High Court in Tan Yong San v Neo Kok Eng and others [2011] SGHC 30 (“Tan Yong San”). The High Court observed (at [98]) that the general principle is that laches would operate to bar the grant of equitable relief, whether or not the underlying claim originated in common law or equity. In Tan Yong San, the plaintiff’s claim was founded on s 216 of the Companies Act (Cap 50, 2006 Rev Ed) (“Companies Act”), which also makes available a range of remedies to an aggrieved complainant. As the remedies sought by the plaintiff were derived from statute and not from equity, the prima facie position was that laches did not bar his right to claim for relief under s 216 of the Companies Act (at [101]). However, the High Court opined (at [101]) that this view would be too simplistic: although a claim under s 216 of the Companies Act was statutory in nature, the principles on what constituted oppressive or unfairly prejudicial conduct were heavily influenced by considerations of fairness and equity. Thus, the High Court held (at [105]) that the court in an action under s 216 of the Companies Act could take into account equitable defences such as laches in determining whether there had been oppressive conduct and in awarding any consequential relief.

The High Court then noted (at [109]) the Court of Appeal’s holding in Management Corporation Strata Title Plan No 473 v De Beers Jewellery Pte Ltd [2002] 1 SLR(R) 418 that there were two elements to consider when raising the defence of laches: (a) the length of the delay; and (b) whether such delay had caused any prejudice or injustice. With respect to the first limb, the High Court referred (at [109]) to the proposition in Beale v Kyte [1907] 1 Ch 564 (at 566) that:

The High Court further noted (at [110]) that in Genelabs Diagnostics Pte Ltd v Institut Pasteur and another [2000] 3 SLR(R) 530, the Court of Appeal had, in computing the length of delay, only took into account the period starting from when the plaintiffs first became aware of the infringing acts.

The defence of acquiescence was also examined by the High Court in Tan Yong San. In this respect, the High Court referred (at [112]) to the following passage from Halsbury’s Laws of England vol 16 (Butterworths, 4th Ed Reissue, 1992) (at para 924) (the same passage is now found in Halsbury’s Laws of England vol 47 (LexisNexis, 5th Ed, 2014) at para 252):

The High Court then went on to caution (at [113]) that although acquiescence is frequently pleaded together with the defence of laches, the two are separate and distinct defences with different consequences. The High Court explained (at [114]) that:

Analysis

(1) Laches

With regard to the defence of laches, the threshold issue is whether the remedies sought by the plaintiff are equitable in nature, so as to allow for the operation of this defence. The plaintiff submits that the reliefs it seeks are statutory reliefs provided for by s 67(1) of the Patents Act and that it is therefore unclear what legal basis the defendants have for relying on this defence. This is a valid contention. Although the High Court in Tan Yong San was willing to extend the operation of the laches defence to a claim under s 216 of the Companies Act (see [139] above), I do not think that the reasoning in that case is capable of applying vis-à-vis a claim for patent infringement, which is of a rather different character altogether. In any event, I am of the view that the two elements referred to in Tan Yong San (see [140] above) are not established on the facts of the present case.

With respect to the first element (ie, the length of the delay), Hiroyuki Kanamaru, a senior manager of the plaintiff’s product planning department, gave evidence as follows:

(a) Around 2001, the plaintiff became aware of the defendants. However, the plaintiff did not pay much attention to the defendants because the plaintiff saw the defendants as a relatively unknown company with a very small market share.

(b) Around 2003/2004, the plaintiff started receiving feedback from its customers that the defendants were marketing moulding machines to them. However, the plaintiff did not have any substantive details of these machines. There was also no reason for the plaintiff to incur the time and costs of seeking such details because the plaintiff still saw the defendants as a relatively unknown company with a very small market share.

(c) Around 2005/2006, the plaintiff started receiving feedback from its customers that the defendants were selling the IDEALmold machine and at a lower price as compared to the plaintiff. However, the plaintiff still did not have any substantive details of the IDEALmold machine. There was also still no reason for the plaintiff to incur the time and costs of seeking such details because the plaintiff still saw the defendants as a relatively unknown company with a very small market share.

(d) Around 2009, the plaintiff’s engineers saw the IDEALmold machine at the premises of a customer. However, there was still no reason for the plaintiff to incur the time and costs of seeking detailed information of the IDEALmold machine.

(e) In 2010, the defendants and the IDEALmold machine emerged as a serious competitor to the plaintiff. This prompted the plaintiff to conduct research and investigations to better understand the IDEALmold machine.

(f) It was only sometime in July 2011, after evaluating the results of the investigations, that the plaintiff came to the view that the IDEALmold machine infringed the Patent. On 25 July 2011, the plaintiff wrote to the second defendant to register its objections.

Thereafter, letters were exchanged between the parties up till 6 November 2012. On 4 March 2013, a letter of demand was sent by counsel for the plaintiff to the first and second defendants. A series of letters between counsel for the plaintiff and counsel for the defendants (who, it seems, was only acting for the first defendant then) then followed, the latest of which (which is in evidence) was sent on 26 April 2013. The writ of summons was filed on 19 April 2013 but only served on the first defendant on 2 May 2013 and on the second defendant on 22 May 2013.

The plaintiff accepts that it was aware of the IDEALmold machine from as early as 2005. However, it submits, and I agree, that this is irrelevant as time only starts running from the point at which the plaintiff was aware that the IDEALmold machine infringes the Patent (see [140] above). But this was only in July 2011 (see [144(f)] above). Thereafter, the plaintiff took steps to engage the defendants and parties were in correspondence with each other until the writ was served. In these premises, I do not see how it can be said that there was any delay on the part of the plaintiff from the time it was aware that the IDEALmold machine infringes the Patent.

Moreover, even if there was any such delay, the defendants have not adduced any evidence to show that the first defendant has suffered prejudice or injustice as a result of the delay. Accordingly, the second element (ie, whether such delay has caused any prejudice or injustice) would not, in any event, be satisfied.

(2) Acquiescence

As to the defence of acquiescence, the defendants submit as follows:

In my opinion, the defendants’ suggestion is rather fanciful. What the defendant is saying is that the plaintiff had “allowed” the first defendant to “grow unhindered”, only to now suddenly take action against it in the Suit. Perhaps more importantly, acquiescence is where a person, having a right, and seeing another person about to commit, or in the course of committing, an act infringing that right, stands by in such a manner as really to induce the person committing the act, and who might otherwise have abstained from it, to believe that he assents to its being committed (see [141] above). As I have already stated, the plaintiff only became aware that the IDEALmold machine infringes the Patent in July 2011 and thereafter took steps to engage the defendants (see [146] above). Certainly, there could not have been any acquiescence on the part of the plaintiff post-July 2011. As for the period up to July 2011, I do not see how the plaintiff, without even being aware that the IDEALmold machine infringes the Patent, can be said to have stood by “in such a manner as really to induce” the first defendant to believe that it assented to the infringing acts being committed.

Accordingly, I find that the first defendant cannot avail itself of the “delay” defences of laches and acquiescence.

“Remedy” defences

In addition to the “delay” defences, the defendants also rely on a number of “remedy” defences.

First, the defendants rely on s 69(1) of the Patents Act, which provides that damages shall not be awarded and no order shall be made for an account of profits against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed. For the same reasons set out at [108] above, this defence is not open to the first defendant.

Second, the defendants rely on s 70 of the Patents Act, which provides for relief for the infringement of partially valid patents. Given my conclusion at [75] above that the Patent is fully valid, it is obvious that this section does not apply in the present case.

Third, the defendants submit that in view of the delay and “other bad behaviour” demonstrated by the plaintiff, the plaintiff should be deprived of the option to seek an account of profits. I have already considered and rejected the defendants’ submissions on the issue of delay (see [146] above). As for the plaintiff’s supposed “other bad behaviour”, it appears that this would refer to the defendants’ various allegations including, inter alia, that the plaintiff was aware of the prior art and that the plaintiff had undermined discovery, the court’s fact-finding function and the duty of its expert to the court. However, even apart from the somewhat baseless and irrelevant nature of these allegations, I do not consider these allegations, even if true, to be sufficient to deprive the plaintiff of the option of an account of profits on the facts of the present case.

Finally, although not raised as a defence per se, the defendants submit that the measure of damages must always be what is directly attributable to the Patent, and there must be proper apportionment between the Patent and other technologies. The point here seems to be that there are other patents in the plaintiff’s Y-series machine (which apparently embodies the Patent) and these also contribute to the sales of the Y-series machine. This submission is somewhat surprising given the defendants’ earlier claim, in its closing submissions, that the Y-series machine is “strictly not relevant at all in these proceedings”. In any event, the defendants do not cite any authority for this proposition and do not suggest how apportionment should be done.

Accordingly, I find that none of the “remedy” defences relied on by the defendants are available to the first defendant.

Is the plaintiff liable for making groundless threats of infringement proceedings?

As I have found that the second defendant is not liable for infringement, the final broad issue to be considered is whether the plaintiff is liable for making groundless threats vis-à-vis the second defendant. In this regard, s 77 of the Patents Act states as follows:

Wee’s evidence, as set out in his AEIC, is as follows:

The plaintiff does not appear to dispute that threats of infringement proceedings were indeed made. Rather, its main contention is that the defendants have not proved that they were aggrieved by the threats. In this regard, the plaintiff submits that Wee’s evidence is not substantiated by any other documents or evidence. I also note that, in the first sentence of Wee’s evidence as set out above, Wee is referring only to the first defendant. What is left is therefore Wee’s evidence that the second defendant had to “devote much time to answering the threats, distracting [it] from its business”. The issue is whether this is sufficient to establish that the second defendant is a “person aggrieved” under s 77 of the Patents Act.

In Patrick John Brain v Ingledew Brown Bennison and Garrett (a firm) and another (No. 3) [1997] FSR 511, Laddie J said the following concerning the legislative intent behind the inclusion of “person aggrieved” in s 70(1) of the UK Patents Act (which is similar to s 77(1) of the Patents Act) (at 519):

Subsequently, he further held (at 520) that:

The upshot of these passages is that s 77 of the Patents Act is concerned with the commercial interests of a plaintiff who brings a claim under the section. Specifically, the section only covers those who are affected by such threats due to the nature of their business. However, by the defendants’ own case (see [11(f)] above) (which I have accepted (see [118] above)), the second defendant is an investment holding company and was not involved in manufacturing or sales operations at all material times. In these premises, I cannot see how the plaintiff’s threats involving the IDEALmold machine could have affected the conduct of the second defendant’s business (ie, its commercial interests) in any way.

I appreciate that Wee’s evidence is limited to the second defendant having to “devote much time to answering the threats, distracting [it] from its business”. However, this does not seem to implicate the more specific kind of commercial interests protected by s 77 of the Patents Act. In any event, I am in agreement with the plaintiff that this claim is not substantiated by any other evidence.

Consequently, I find that the second defendant is not a “person aggrieved” under s 77 of the Patents Act. It follows that the plaintiff is not liable to the second defendant for making groundless threats of infringement proceedings.

Conclusion

In conclusion, I find that the Patent has been infringed by the first defendant. As against the first defendant, the plaintiff is therefore entitled to: (a) a declaration that the Patent has been infringed by the first defendant; (b) an inquiry as to damages or, alternatively, at the plaintiff’s option, an account of profits and an order for payment of all sums found due upon making such inquiry or account; and (c) interest at 5.33% per annum.

There is no liability for infringement on the part of the second defendant and the Suit is dismissed in so far as it is concerned. There is also no liability for making groundless threats of infringement proceedings on the part of the plaintiff.