Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd: Patent Infringement & Dynamic Currency Conversion

Main-Line Corporate Holdings Ltd, an Irish company, sued United Overseas Bank Ltd (UOB) and First Currency Choice Pte Ltd (FCC) in the High Court of Singapore, alleging infringement of its Singapore Patent No. 86037 concerning dynamic currency conversion for card payment systems. UOB and FCC counterclaimed for revocation of the patent, arguing lack of novelty and inventiveness. Tay Yong Kwang J. found the patent valid and infringed by both defendants, granting judgment for Main-Line Corporate Holdings Ltd and dismissing the counterclaims.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Judgment for Plaintiff

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Patent infringement case concerning dynamic currency conversion for card payments. The court found the patent valid and infringed by the defendants.

1.7 Decision Date

20 December 2006

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
United Overseas Bank Ltd	Defendant	Corporation	Counterclaim Dismissed	Lost	Ang Wee Tiong of Tan Kok Quan Partnership Kannan Ramesh of Tan Kok Quan Partnership
Main-Line Corporate Holdings Ltd	Plaintiff	Corporation	Judgment for Plaintiff	Won	Wong Siew Hong of Infinitus Law Corporation G Radakrishnan of Rada & Associates
First Currency Choice Pte Ltd	Defendant	Corporation	Counterclaim Dismissed	Lost	Lionel Tan of Rajah & Tann Quentin Loh of Rajah & Tann Brenda Chong of Rajah & Tann Benjamin Cheong of Rajah & Tann

3. Judges

Judge Name	Title	Delivered Judgment
Tay Yong Kwang	Judge	Yes

4. Counsels

Counsel Name	Organization
Ang Wee Tiong	Tan Kok Quan Partnership
Kannan Ramesh	Tan Kok Quan Partnership
Wong Siew Hong	Infinitus Law Corporation
G Radakrishnan	Rada & Associates
Lionel Tan	Rajah & Tann
Quentin Loh	Rajah & Tann
Brenda Chong	Rajah & Tann
Benjamin Cheong	Rajah & Tann

4. Facts

Plaintiff is the proprietor of Singapore Patent No. 86037 titled DYNAMIC CURRENCY CONVERSION FOR CARD PAYMENT SYSTEMS.
The patent covers a method and system to determine the operating currency for card transactions at the point of sale.
UOB entered into an agreement with FCC to offer the FCC system, a card currency recognition system, to UOB's merchants.
The plaintiff alleged that the FCC System infringes the patent.
The defendants challenged the patent's validity based on lack of novelty and inventive step.
UOB claimed an indemnity from FCC in the event it was found liable for infringement.

5. Formal Citations

Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and Another, Suit 806/2004, [2006] SGHC 233

6. Timeline

Date	Event
1999-07-12	Priority date of the patent
1999-09-06	Non-Disclosure Agreement signed between Global Dutifree Ltd and UOB
2001-10-11	UOB and FCC made an agreement
2003-06-30	Patent granted to the plaintiff
2004-10-05	Plaintiff commenced action against UOB for patent infringement
2004-12-17	UOB obtained judgment against FCC for indemnity
2006-03-01	Opposition proceedings in New Zealand dismissed
2006-12-21	Judgment reserved

7. Legal Issues

Patent Infringement
- Outcome: The court found that the defendants infringed the plaintiff's patent.
- Category: Substantive
- Sub-Issues:
  - Scope of defence of innocent infringement
  - Validity of patent
Patent Validity
- Outcome: The court upheld the validity of the plaintiff's patent.
- Category: Substantive
- Sub-Issues:
  - Lack of novelty
  - Lack of inventive step
  - Insufficiency of disclosure
Defence of Innocent Infringement
- Outcome: The court found that UOB had the requisite knowledge of the patent and could not rely on the defence of innocent infringement after 10 May 2002.
- Category: Substantive

8. Remedies Sought

Injunction against further infringement
Damages or an account of profits

9. Cause of Actions

Patent Infringement

10. Practice Areas

Patent Infringement Litigation
Intellectual Property Litigation

11. Industries

Banking
Finance
Technology

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Merck & Co Inc v Pharmaforte Singapore Pte Ltd	Court of Appeal	Yes	[2000] 3 SLR 717	Singapore	Cited for the principle that a prior publication must enable a skilled person to make or obtain the invention.
Genelabs Diagostics Pte Ltd v Institut Pasteur	Court of Appeal	Yes	[2001] 1 SLR 121	Singapore	Cited for the principle that a prior publication must enable a skilled person to make or obtain the invention.
Woodland Trust v Flowertree Nursery Inc	US Court of Appeals, Federal Circuit	Yes	47 USPQ 2d 1363	United States	Cited for the principle that there is a heavy burden to be met by one challenging validity where the only evidence is the oral testimony of interested persons and their friends, particularly as to long-past events.
Kavanagh Balloons Pty Ltd v Cameron Balloons Ltd	Not Available	Yes	[2004] RPC 5	Not Available	Cited as providing good, practical guidance when it comes to assessing the value of evidence of prior user in patent cases.
Windsurfing International Inc v Tabur Marine (Great Britain) Ltd	English Court of Appeal	Yes	[1985] RPC 59	England and Wales	Cited for the four-step approach to determine obviousness.
Institut Pasteur & Anor v Genelabs Diagnostics Pte Ltd & Anor	High Court	Yes	[2000] SGHC 53	Singapore	Cited for the principle that anticipation does not include vague disclosures or near misses but must be found within the document in issue.
MK (Project Management) Ltd v Baker Marine Energy Pte Ltd	Court of Appeal	Yes	[1995] 1 SLR 36	Singapore	Cited for the principle that the law of pleading requires only material facts to be pleaded and not the legal result arising from those facts or the applicable statutory provision.
Boustead Trading (1985) v Arab-Malaysian Merchant Bank	Federal Court	Yes	[1995] 3 MLJ 331	Malaysia	Cited for the principle that where there is no pleaded case of estoppel, but there is let in, without any objection, a body of evidence to support the plea, and argument is directed upon the point, it is the bounden duty of a court to consider the evidence, and the submissions and come to a decision on the issue.
Lux Traffic Controls Limited v Pike Signals Limited	Not Available	Yes	[1993] RPC 107	Not Available	Cited for the factual scenario where a grace period was submitted by the defendant and accepted by the plaintiff.

13. Applicable Rules

Rule Name
Order 18 rule 8(1) of the Rules of Court

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act	Singapore
Section 66(1) Patents Act	Singapore
Section 69(1) Patents Act	Singapore
Section 13 Patents Act	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Dynamic Currency Conversion
Patent Infringement
Patent Validity
Bank Reference Table
Issuer Identifier Number
Primary Account Number
FCC System

15.2 Keywords

patent
infringement
dynamic currency conversion
card payment systems
Singapore
intellectual property

17. Areas of Law

Area Name	Relevance Score
Patents	95
Patent Infringement	90
Patent Validity	85
Intellectual Property Law	80
Innocent Infringement	70
Dynamic Currency Conversion	60
Commercial Disputes	30
Contract Law	20

16. Subjects

Patent Law
Intellectual Property
Banking
Finance
Technology