It may be appreciated that our company last previously wrote on this Singapore High Court action in the early part of last year whereby the Court ruled in favour of the defendant that the plaintiff held an invalid patent in SG 117982 “Device for Inspecting and Rotating Electronic Components”. In our previous article, it was evinced that the High Court Judge had allowed the defendant/respondent’s counterclaim that the appellant’s patent be declared invalid for want of both novelty as well as an inventive step. Accordingly then, the plaintiff/appellant’s claim for infringement was dismissed.
A year on, and the plaintiffs has appealed against the ruling at the apex of Singapore’s judiciary system, the Court of Appeal.
The Court of Appeal has not upheld the decision of the High Court that the patent was an invalid one. It has in fact ruled that the Patent is both novel and non-obvious vis-à-vis the prior art in the sphere of die handling. Accordingly, full protection should be accorded to this valuable contribution to the state of the art by the Appellant. The appeal is therefore allowed with costs and a certificate of contested validity in respect of the Patent is awarded.
As a refresher, the appellant, Mühlbauer AG, is a company incorporated in Germany. It is the registered proprietor of Singapore patent No 117982 entitled “Device for Inspecting and Rotating Electronic Components” (“the Patent”), filed in Singapore in December 2005. The Patent, which describes a machine for inspecting, picking up and placing electronic components onto printed circuit boards or tape and reel packaging, was in force in Singapore, with its priority date being 16 February 2004.
The respondent, Manufacturing Integration Technology Ltd, is a Singapore company alleged to have infringed the Patent pursuant to s 66(1)(a) of the Patents Act by having manufactured and marketed a device under the trademark or name “CAERUS” which infringed the Patent. The Respondent’s “CAERUS” device is also a machine that facilitates the inspection and rotation of electronic components.
Although the Court of Appeal has decided that the Appellant’s patent was novel and inventive over the prior art, the issues surfaced in the appeal proceedings raised a few eyebrows as a number of significant (and broader) issues were raised, including the role of characterisation in the context of deciding patent disputes as well as the (no less important) role of experts in the same context. Particular attention shall be paid on the role of experts in this write up.
The Role of Experts
The choice of an expert in litigation proceedings cannot be left to chance, especially in Singapore where the courts are heavily reliant on the advice provided by experts.
It may be recalled that last year the High Court had preferred the opinion of the Respondent’s expert, over that of the Appellant’s expert, with respect to the state of the art, the Judge found that the Patent failed on two of the three conditions governing patentable inventions, namely, that the invention must be new and must involve an inventive step. In arriving at this conclusion, the Judge was careful to highlight the fact that while the Respondent’s expert had “extensive experience in flip chip packaging technology and equipment development for use in the semi-conductor industry” and possessed “personal knowledge and experience of what the state of the art was at the material time”, the Appellant’s expert who was an academic in a local university, was not in the semiconductor industry and was unfamiliar with flip chip machines prior to receiving his instructions from the Appellant. It would appear that prima facie that in this case, practical industrial experience opinion would override scholarly textbook academics.
In the appeal proceedings, the Court of Appeal expressed the view that the current expert system was inadequate and required a thorough review. The Court of Appeal stated that the choice of experts could hinge on the following few considerations and factors below.
Firstly, it is important to ascertain what precisely constituted the basis for the respective expert reports (ref Singapore High Court decision of Khoo Bee Keong v Ang Chun Hong and another  SGHC 128). In the current appeal proceedings, the Court of Appeal stated that ‘it is both logical and commonsensical that if the basis or starting-point is either shaky or (worse still) flawed, the conclusion arrived at will be of little or no use to the court. Indeed, if there is in fact something untoward in the starting-point, even the most impeccable reasoning process will be of no avail in so far as the quest for a fair and just result is concerned. This principle is of particular importance with respect to expert reports generally – and especially in the present context of traffic accidents. Unfortunately, however, the general provisions with respect to expert evidence, ss 47 and 48 of the Evidence Act do not furnish us with specific guidance in this particular regard’.
S47 of the Evidence Act articulates ‘When the court has to form an opinion upon a point of foreign law or of science or art, or as to the identity or genuineness of handwriting or finger impressions, the opinions upon that point of persons specially skilled in such foreign law, science or art, or in questions as to the identity or genuineness of handwriting or finger impressions, are relevant facts while S48 states ‘Facts not otherwise relevant are relevant if they support or are inconsistent with the opinions of experts when such opinions are relevant’.
Secondly, another point relates to the alleged bias on the part of the expert concerned. It would surprise no one simply because, apart from court-appointed experts, every expert is appointed (and remunerated) by the party who has engaged his or her services. The Court of Appeal reminded the parties that the expert concerned has, in the final analysis, an overriding duty to objective justice and to the court embodied, in the local context, in O 40A r 2 of the Rules of Court, as follows:
Expert’s duty to the Court (O. 40A, r. 2)
2.—(1) It is the duty of an expert to assist the Court on the matters within his expertise.
(2) This duty overrides any obligation to the person from whom he has received instructions or by whom he is paid.
In the present appeal, the Appellant emphasised that the issue in relation to the possible (or even probable) bias of experts is an especially significant one in patent cases and suggested that a new system involving impartial assessors might be a possible solution. We note that one of the Appellant’s main arguments is centred on the alleged bias on the part of Mr Briar, the expert provided by the Respondent/defendant. In particular, Appellant noted that he was one of the actual inventors of the machine which constituted the subject matter of the Respondent’s (and, more importantly, opposing) patent. Indeed, as we demonstrated, it appeared that during the High Court judge had accepted wholly this particular expert’s views without more.
To this charge, the Court of Appeal observed in the Singapore High Court decision of Asia Hotel Investments Ltd v Starwood Asia Pacific Management Pte Ltd  SGHC 50 at –, for the purposes of determining whether the evidence of an expert should be discounted, the relevant test is one of actual partiality, rather than merely the appearance of partiality. In any event, however, there is insufficient evidence on the record to demonstrate that the Judge did not discount the views of Mr Briar accordingly. The mere acceptance (even in its entirety) of such views does not necessarily entail the absence of such a discount. As it turns out, however, the Court of Appeal opined that the views by the experts appointed by both parties were not, in their view, critical, except in so far as they enabled this court to understand what were the precise claims in the respective patents. To this end, both the experts’ views were helpful, bearing in mind that it is, in the final judgement, the court which decides whether or not the requisite legal criteria have (or have not) been satisfied.
In the meantime, should the issue of partiality of the experts be questioned, the objecting parties may find recourse in applying to the court to appoint an impartial and objective expert (whose views they would agree to abide by) pursuant to O 40 r 1 of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) (which permits the court to appoint one or more independent experts on the application of any party which, under O 40 r 1(2) “shall, if possible, be a person agreed between the parties and, failing agreement, shall be nominated by the Court”). It should, however, also be noted that this same Rule also permits the court to appoint one or more independent experts “on its own motion”, although, in the nature of things (particularly in patent disputes), this particular avenue has been found to be less than practical.
Thirdly, in the choice of experts, it should be borne in mind that the expert evidence is in so far as the issues as to whether the Patent is novel and/or whether an “inventive step” exists vis-à-vis the state of the art itself subject to the legal criteria contained in ss 14 and 15 of the Act, respectively. In particular, the court must bear in mind the fact that the legal criteria just set out in the preceding paragraph does not (in the context of whether there is an inventive step within the meaning of s 15) assume knowledge and expertise that goes beyond what a reasonable person “skilled in the art” would possess (FE Global Electronics). This is not a trivial issue, as many experts would not themselves fall within this particular category of persons “skilled in the art” as they would possess extraordinary knowledge as well as expertise. The Court of Appeal then proceeded to remind the sitting that it is therefore important for such experts to bear this particular point in mind when they tender their evidence before the court in future. It would also be wise for counsel (and, if necessary, the court) to remind the experts concerned of this point if they have forgotten it.
Lastly, there is the issue of the respective qualifications of the expert. Certifications are seemingly not imperative (see the oft-cited Singapore Court of Criminal Appeal decision of Leong Wing Kong v PP  2 SLR 54 at 59, ).
According to the Court of Appeal, all the issues discussed above point to the fact that the area of expert evidence generally is in need of re-examination. Fortunately, none of the issues raised had any impact on the resolution of the present proceedings. The Court of Appeal felt that the case was a relatively straightforward one, where the expert evidence proffered was not particularly helpful.
Since the Court of Appeal has expressed their disconcerting views on the current expert system, the Singapore legal system may well improve the current deficiencies and this case could be on the cusp of this exciting new development.
Source: Mühlbauer AG v Manufacturing Integration Technology Ltd  SGCA 6