German company Muhlbauer AG ("the plaintiff") had its tables turned after an action for patent infringement resulted in its patent being revoked after a successful counterclaim by the defendant.
The plaintiff sued Manufacturing Integration Technology Ltd ("the defendant"), for infringing its patent. In February 2009, the High Court instead found the plaintiff's patent to be invalid and revoked its patent on the grounds of lack of novelty and of inventive step.
The defendant, a public listed local company dealing in semiconductors, acknowledged that its flip chip machine infringed all 10 claims of the plaintiff's patent, but successfully argued that the plaintiff’s patent was invalid because it lacked novelty and inventive step. Dismissing the plaintiff's claim, the High Court granted the defendant damages in respect of any loss which they have sustained by the plaintiff's threat of infringement.
The plaintiff's patent was granted on the basis of a Patent Co-operation Treaty (“PCT”) search report, which cited two prior art documents and also stated that all 10 claims of the plaintiff's patent met the criteria of novelty and inventive step. One can rely on such a report on patentability under section 29(2)(e)(ii) of the Patents Act to obtain a Singapore patent. At the trial, the judge accepted the defendant's expert’s opinion that all of the key concepts in the plaintiff's invention have been anticipated by other patents and that they are clearly documented in prior art well before the plaintiff's patent’s priority date. The judge also accepted the view that the inventive concept in the plaintiff's invention was public knowledge and commonly known to a person skilled in the art. He opined that what the plaintiff succeeded in inventing was not that described in its patent claims but a more efficient machine. The plaintiff has since filed an appeal.