ASM Assembly Automation (“ASM”) took action against Aurigin Technology (“Aurigin”) as Aurigin's automated ball-grid array solder ball placement machine was alleged to have infringed their patent which was granted pursuant to s 29(1)(c) and s 29(5) of the Patents Act (Cap 221, 2002, Rev Ed), relying on its corresponding US patent application.
The infringement action however resulted in the revocation of ASM's own patent when Aurigin succeeded in showing that it lacked novelty and inventive step.
After hearing from both parties, the High Court agreed with Aurigin and revoked ASM's patent. In his decision on 16 September 2009, the Judge ruled that ASM's patent involved "nothing more than an aggregation of the known features of a closed top container …, a positioning member located at the end of a template …, a tilting mechanism … and a bi-directional tilting mechanism …". As such, there was no necessity to consider the issue of infringement.
Aurigin also succeeded in counterclaiming for groundless threat of infringement proceedings because ASM’s threats were found to be unjustified. Aurigin was accordingly entitled to relief. The Judge granted an injunction to restrain ASM from continuing to threaten Aurigin, its customers, directors, officers, employees and agents with legal action for infringing ASM's patent. An inquiry as to damages would be conducted and Aurigin is entitled to costs.