ASM Technology v Towa Corporation: Patent Infringement & Modularity

ASM Technology Singapore Pte Ltd appealed to the Court of Appeal of the Republic of Singapore against the High Court's decision in favor of Towa Corporation, regarding the infringement of Towa Corporation's patent for a method and apparatus for moulding resin to seal electronic parts. The High Court had found ASM Technology liable for patent infringement and dismissed ASM Technology's counterclaim for groundless threats of infringement proceedings. The Court of Appeal, consisting of Sundaresh Menon CJ, Andrew Phang Boon Leong JA, and Tay Yong Kwang JA, dismissed the appeal, upholding the High Court's decision.

1. Case Overview

1.1 Court

Court of Appeal of the Republic of Singapore

1.2 Outcome

Appeal Dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

ASM Technology appealed a High Court decision finding infringement of Towa Corporation's patent for moulding resin to seal electronic parts. The Court of Appeal dismissed the appeal.

1.7 Decision Date

4 January 2018

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
TOWA Corporation	Respondent	Corporation	Appeal Dismissed	Won	Low Chai Chong of Dentons Rodyk & Davidson LLP Long Ai Ming of Dentons Rodyk & Davidson LLP Foo Maw Jiun of Dentons Rodyk & Davidson LLP Quek Jie Ying of Dentons Rodyk & Davidson LLP
ASM Technology Singapore Pte Ltd	Appellant	Corporation	Appeal Dismissed	Lost	Lim Ying Sin Daniel of Joyce A Tan & Partners Vignesh Vaerhn of Allen & Gledhill LLP Stanley Lai Tze Chang of Allen & Gledhill LLP

3. Judges

Judge Name	Title	Delivered Judgment
Tay Yong Kwang	Judge of Appeal	Yes
Sundaresh Menon	Chief Justice	No
Andrew Phang Boon Leong	Judge of Appeal	No

4. Counsels

Counsel Name	Organization
Low Chai Chong	Dentons Rodyk & Davidson LLP
Long Ai Ming	Dentons Rodyk & Davidson LLP
Foo Maw Jiun	Dentons Rodyk & Davidson LLP
Quek Jie Ying	Dentons Rodyk & Davidson LLP
Lim Ying Sin Daniel	Joyce A Tan & Partners
Vignesh Vaerhn	Allen & Gledhill LLP
Stanley Lai Tze Chang	Allen & Gledhill LLP

4. Facts

Towa Corporation was granted a patent for a method and apparatus for moulding resin to seal electronic parts.
ASM Technology Singapore Pte Ltd manufactured and sold IDEALmold machines.
Towa Corporation claimed that ASM Technology's IDEALmold machines infringed its patent.
The IDEALmold machine had a 'retrofitting' feature that allowed for the addition or removal of moulding units.
The patent claimed a method and apparatus for moulding resin with detachably mountable moulding units.
The High Court found that the IDEALmold machine infringed Towa Corporation's patent.
ASM Technology appealed the High Court's decision, arguing that its IDEALmold machine did not infringe the patent and that the patent was invalid.

5. Formal Citations

ASM Technology Singapore Pte Ltd v Towa Corporation, Civil Appeal No 9 of 2017, [2018] SGCA 01
Towa Corp v ASM Technology Singapore Pte Ltd and another, , [2017] 3 SLR 771

6. Timeline

Date	Event
1993-07-22	Patent's earliest priority date (based on original patents in Japan)
1994-07-06	Patent filing date in Singapore
1999-02-22	Patent grant date in Singapore
1999-01-01	Appellant began manufacturing and selling the IDEALmold machines
2013-04-19	Respondent filed its writ of summons
2017-08-16	Hearing date
2018-01-05	Judgment reserved

7. Legal Issues

Patent Infringement
- Outcome: The Court of Appeal found that the Appellant had infringed the Respondent's patent.
- Category: Substantive
- Sub-Issues:
  - Scope of patent claims
  - Interpretation of patent specifications
  - Validity of patent
Patent Validity
- Outcome: The Court of Appeal upheld the validity of the patent, finding that it fulfilled the requirements of novelty, inventive step, and sufficiency.
- Category: Substantive
- Sub-Issues:
  - Novelty
  - Inventive step
  - Sufficiency
Interpretation of Patent Claims
- Outcome: The Court of Appeal adopted a purposive construction of the patent claims, interpreting the concept of modularity in the context of the invention.
- Category: Substantive
- Sub-Issues:
  - Purposive construction
  - Modularity

8. Remedies Sought

Injunction
Damages
Account of Profits

9. Cause of Actions

Patent Infringement

10. Practice Areas

Patent Infringement
Intellectual Property Litigation

11. Industries

Technology
Manufacturing

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Towa Corp v ASM Technology Singapore Pte Ltd and another	High Court	Yes	[2017] 3 SLR 771	Singapore	The High Court decision that was appealed against.
First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd	Court of Appeal	Yes	[2008] 1 SLR(R) 335	Singapore	Cited for the principle that the claims themselves are the principal determinants in construing a patent specification.
Bean Innovations Pte Ltd v Flexon (Pte) Ltd	Court of Appeal	Yes	[2001] 2 SLR(R) 116	Singapore	Cited for the principle that a patent specification should be given a purposive construction rather than a purely literal one.
Catnic Components Limited v Hill & Smith Limited	House of Lords	Yes	[1982] RPC 183	United Kingdom	Cited for the principle of purposive construction of patent specifications.
FE Global Electronics Pte Ltd and others v Trek Technology (Singapore) Pte Ltd and another appeal	Court of Appeal	Yes	[2006] 1 SLR(R) 874	Singapore	Cited for the principle that a purposive approach to patent specification balances the rights of the patentee and those of third parties.
Mühlbauer AG v Manufacturing Integration Technology Ltd	Court of Appeal	Yes	[2010] 2 SLR 724	Singapore	Cited for the principle that a piece of prior art anticipates an invention only if the directions therein are so clear that a skilled addressee following those directions must inevitably produce something that would infringe the patentee’s claim.
Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd	Court of Appeal	Yes	[2007] 1 SLR(R) 1021	Singapore	Cited for the principle that the burden of proving anticipation rests on the party resisting a patent claim.
Windsurfing International Inc v Tabur Marine (Great Britain) Ltd	Court of Appeal	Yes	[1985] RPC 59	United Kingdom	Cited for the four-step analysis for determining inventiveness or non-obviousness.
Fabio Perini SPA v LPC Group PLC and Ors	Court of Appeal	Yes	[2010] EWCA Civ 525	United Kingdom	Cited regarding the interpretation of process claims in patent law.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act	Singapore
Patents Act (Cap 221, 2005 Rev Ed)	Singapore
Limitation Act (Cap 163, 1996 Rev Ed)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Patent
Infringement
Modularity
Moulding unit
IDEALmold machine
Retrofitting
Detachably mountable
Resin
Electronic parts
Priority date

15.2 Keywords

Patent infringement
Modularity
Moulding
IDEALmold
Singapore
Intellectual property
Invention

17. Areas of Law

Area Name	Relevance Score
Patents	95
Intellectual Property Law	90
Commercial Disputes	30
Contract Law	20

16. Subjects

Intellectual Property
Patent Law
Technology