Moulding the law into practice
This judgement by Singapore’s High Court1 reaffirms its approach in claim construction for the purposes of assessing patent validity and infringement. Some pertinent aspects of this case are discussed in our summary below.
Towa Corp, is the proprietor of Singapore Patent No 49740 (Patent). The Patent concerns moulding technology and machines for use in encapsulating electronic circuity within plastic resin.
Towa (Plaintiff) filed claims against ASM Technology Singapore (1st Defendant) and ASM Pacific Technology (2nd Defendant) alleging infringement of the Patent. The alleged infringing acts relate to a product known as the IDEALmold machine offered by the Defendants.
Consequently, the Defendants challenged the validity of the Patent and filed a counterclaim against the Plaintiff for making groundless threats.
Issues before the Court
1) The Proper Construction of the Claims
The Court reaffirmed the technicalities of patent claim construction based on the Singapore Patents Act (Act) and precedent case law. Accordingly, the following points may be used as a guide:
a) The claims are the principal determinant, while the description and drawings may assist in the construction of the claims2. It is not permissible to alter the plain meaning of the claims so as to make them mean something different by relying on a statement or the language used in the body of the specification.
b) A purposive approach is to be adopted in constructing the claims rather than a purely literal one2,3. However, caution is to be applied in this approach and one may not disregard clear and unambiguous words describing the essential features of the claim nor write words into a claim that are not there or give a meaning to a term of a claim that is contrary to its language3.
c) Claims are to be constructed through the eyes of the person skilled in the art2.
The Court also noted that as the Patent was translated from Japanese to English, an interpretation that is too literal should be avoided.
2) Do the Acts Constitute Infringement?
The Defendants attempted to distinguish the act of retrofitting on the IDEALmold machine from the feature of modularity as described in the Patent. As such, they argued there is no act of infringement. The Court clarified that the act of retrofitting is not the alleged infringement, but rather the alleged infringement is providing the feature of modularity of moulding machines.
In considering the evidence, the Court noted that the key components of the IDEALmold machine remained unchanged during the act of retrofitting, even though accessory parts and the moulding units were added. Additionally, the feature of modularity is not limited by the process, cost and time. As such, the Court found that the IDEALmold machine falls within the scope of the Patent.
It should also be noted that when determining if the Defendant was aware of the Plaintiff's proprietary processes, the Court considered the size of the Defendant’s R&D team (30 to 50 people) and the small number of companies in the same industry. Based on this assessment, the Court deemed that the 1st Defendant would have had knowledge of the Plaintiff's proprietary processes, and thus, knowingly acted within the scope of the Patent.
The Defendants sought to rely on the 'delay' defence of laches and acquiescence (among others). Laches refers to the delay of the Plaintiff taking action, while acquiescence refers an absence of action that induces the Defendant to believe that the Plaintiff assents to an infringement of their patent. In both cases, two elements need to be considered: the length of the delay and whether such delay caused any prejudice or injustice. In determining the length of the delay, the clock starts when the Plaintiff first becomes aware of the infringing act.
The Court found that even though the Plaintiff was aware of the IDEALmold machine in 2005, conclusive evidence of infringement was only available in July 2011. Thereafter, the Plaintiff took steps to engage the Defendants, and as such there was no delay. In addition, as the Defendants could not demonstrate that they had suffered prejudice as a result of the delay, the 'delay' defences were not available to them.
4) Groundless Threat of Infringement
As the 2nd Defendant was found not to be liable for infringement, the issue arose as to whether there was groundless threat of infringement. The 2nd Defendant claimed to be an aggrieved person because it had to devote time to answering the threats, which was a distraction from its business. The Court found these facts insufficient to substantiate the groundless threats ground as the facts did not 'implicate the more specific kind of commercial interests'. In addition, the Court ruled that the threats were not completely baseless and unfounded due to the nameplates stipulating that the 2nd Defendants were manufacturers of the infringing machine.
Take home points:
- Purposive claim construction should be applied for determining a monopoly and scope of a patent.
- The Court is conscious that issues can arise during translation of documents into English, but care should still be applied when reviewing the translated work product as there is no guarantee that the Court will be generous with regard to translation errors in a patent specification.
- When determining the extent of background knowledge of a company, it appears that a company with a sizeable R&D team in an industry with few competitors will typically be viewed by the Court to possess requisite background knowledge. This places an onus on such companies to be aware of the possibility of infringement to avoid issues if such companies are involved in patent infringement actions initiated by their competitors.
- The determination of the delay for laches and acquiescence is taken to start from the time a patent owner first became aware of an infringing act. This highlights the importance of promptly acting if market surveillance detects any infringing act by third parties.
- The Court does not mandatorily provide a finding of groundless threats after finding non-infringement unless the commercial interests of the affected party are adversely impacted . In addition, if the Court perceives that the threats were not completely baseless and unfounded, it is unlikely that the Court will uphold a groundless threats action.
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