Muhlbauer AG v Manufacturing Integration
Court: High Court
Coram: Tay Wong Kwang J
FACTS
The plaintiff was a company incorporated in Germany called Muhlbauer AG, owner of patent number 117982 entitled “Device for Inspecting and Rotating Electronic Components”, of which it is the registered proprietor. The patent, was granted by the Intellectual Property Office of Singapore, and has been in full force in Singapore since the 16th of February 2004.
Description of the plaintiff’s patent
The patent describes a machine for picking and placing electronic components onto printed circuit boards. Due to increasing demand for electronic devices, it was necessary for company’s to increase speed, thus increasing throughput, without decreasing accuracy. Earlier models of the machine involved a two part process before an electronic component was placed on the substrate.
The first part involved the picking up of an electronic component with a single pickup head, and inspection of the component to determine its position and orientation with a camera. This resulted in time wastage due to the need to move the component underneath a camera head for inspection. The second part of the process was the actual placement of the component on the substrate.
The plaintiff’s patent, however, describes a machine, with two pickup heads arranged opposite each other, with one first picking up a component, rotating it 180 degrees, which time inspection is done concurrently, and transferring it to the other pick up head, which then places it on the substrate. Through this method cycle time is greatly reduced, thus increasing throughput.
The allegation
The plaintiff disputes that the defendant, a Singapore company called Manufacturing Integration Technology Ltd infringed on the patent by making, disposing of, offering to dispose of, using or importing the patented product and/or keeping the patented product. The plaintiff also complains that the defendant has manufactured and marketed a device that inspects and rotates electronic components concurrently, a machine that is distributed under the trade mark “CAERUS”.
The defendant’s case
The Defendant acknowledges that it has infringed upon the plaintiff’s patent in that its machine rotates and inspects electrical components concurrently. It, however, disputes that the plaintiff’s patent the critical elements for the validity of the patent, i.e. novelty and the inventive step. As such, it is invalid.
The defendant sought to invalidate the plaintiff’s patents with the use of an expert witness, John Briar. 4 existing patents were relied on: the ASA patent, the Matsushita Patent, the National Semiconductor patent and the Shinkawa Patent. The 4 mentioned patents clearly anticipated the main features of the plaintiff’s patent, thus invalidating it.
The ASA patent describes the use of more than one pickup head and concurrent motion reduces travelling distance and increases throughout, stating that a vision system could be used to inspect the chip, the basic concept behind the plaintiff’s patent, and is well understood and has been clearly documented since the 1990’s.
The Matsushita patent describes the placement of several pickup heads being arranged such that there would be openings between them through which optical inspection could be maintained during inspection.
The National Semiconductor patent describes the use of several pickup heads on a rotary wheel to achieve an increase in speed, and the concept of a vision system that could inspect a component through and opening in the pickup head.
The Shinkawa Patent describes details of flip chip bonding apparatus through which vision alignment could be maintained through the picking up and rotating of a component.
Based on these four existing patents, the defendant, with the help of its witness, argued that the plaintiff’s patent failed on two critical elements governing patentable inventions, in that the concept was not new, thus, lacking novelty, and did not involve an inventive step.
ISSUE
The court had to decide on the issue of novelty. The guiding principles in determining novelty were set out by Justice Lai Kew Chai in Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd (No. 2) (see [16]).
Decision
The court accepted the views of the Defendant’s expert witness. In addition, it was stated that the fact that a product sells well does not mean that it is novel or one involving an inventive step.
It was concluded that the plaintiff’s invention was not, an invention, but an efficient utilisation of technology and concepts that had already been anticipated by former patents, in order to increase speed. The plaintiff’s patent, was thus declared invalid.
The defendant succeeded in its counterclaim that the plaintiff’s patent lacked novelty and an inventive step and the plaintiff was ordered to pay the defendant the costs of the trial on liability.
Commentary
This case indicates the difficulties surrounding patent law and deciding issues of novelty and inventive step. The role of the expert witness in patent cases is often critical, as was in this case.
