First Currency Choice v Main-Line: Dynamic Currency Conversion Patent Dispute

The Singapore Court of Appeal heard appeals by United Overseas Bank Limited (UOB) and First Currency Choice Pte Ltd (FCC) against the High Court's decision in favor of Main-Line Corporate Holdings Limited regarding the infringement of Singapore Patent No 86037, "Dynamic Currency Conversion for Card Payment Systems." The court upheld the trial judge's decision, finding the patent valid and infringed by the appellants. The court dismissed both appeals with costs.

1. Case Overview

1.1 Court

Court of Appeal

1.2 Outcome

Appeals dismissed with costs.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Court of Appeal case involving First Currency Choice and Main-Line Corporate Holdings over patent infringement for dynamic currency conversion. The court upheld the patent's validity and infringement.

1.7 Decision Date

30 October 2007

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
United Overseas Bank Limited	Appellant	Corporation	Appeal Dismissed	Lost	Ang Wee Tiong of Tan Kok Quan Partnership
Main-Line Corporate Holdings Ltd	Respondent	Corporation	Judgment for Respondent	Won	Wong Siew Hong of Rada & Associates G Radakrishnan of Rada & Associates
First Currency Choice Pte Ltd	Appellant	Corporation	Appeal Dismissed	Lost	Arthur Yap of Alban Tay Mahtani & de Silva Koh Chia Ling of Alban Tay Mahtani & de Silva Alban Kang Choon Hwee of Alban Tay Mahtani & de Silva

3. Judges

Judge Name	Title	Delivered Judgment
Belinda Ang Saw Ean	Judge	Yes
Andrew Phang Boon Leong	Justice of the Court of Appeal	Yes
V K Rajah	Justice of the Court of Appeal	Yes

4. Counsels

Counsel Name	Organization
Ang Wee Tiong	Tan Kok Quan Partnership
Wong Siew Hong	Rada & Associates
G Radakrishnan	Rada & Associates
Arthur Yap	Alban Tay Mahtani & de Silva
Koh Chia Ling	Alban Tay Mahtani & de Silva
Alban Kang Choon Hwee	Alban Tay Mahtani & de Silva

4. Facts

FCC provides dynamic currency conversion payment services to retailers.
UOB employed the FCC system provided by FCC since 11 October 2001.
Main-Line Corporate Holdings is the proprietor of Singapore Patent No 86037.
The patent was granted in Singapore on 30 June 2003, with a priority date of 12 July 1999.
UOB and Main-Line negotiated a license for the patent between July 1999 and June 2000, but negotiations failed.
The patent covers a method and system of determining the operating currency of a payment card at the point of sale.
The FCC system performs automatic currency identification.

5. Formal Citations

First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and Another Appeal, CA 4/2007, 5/2007, [2007] SGCA 50

6. Timeline

Date	Event
1999-07-12	Priority date of the patent.
1999-09-01	Patent application filed in New Zealand.
2001-10-11	UOB entered into an agreement with FCC.
2001-12-01	FCC system first offered for use at merchant outlets.
2002-02-19	Singapore patent application published.
2002-05-10	Respondent informed UOB of the European Patent and pending Singapore patent application.
2003-06-30	Patent granted in Singapore.
2004-10-24	Notice of opposition filed in New Zealand by Multi-Currency Management Services Limited.
2006-03-13	Decision by Assistant Commissioner of Patents of IPONZ.
2006-09-26	Hearing held on 26 and 27 September 2006.
2007-07-13	Australian decision released.
2007-10-31	Judgment reserved.

7. Legal Issues

Patent Infringement
- Outcome: The Court of Appeal upheld the trial judge's finding that the patent was infringed by the appellants.
- Category: Substantive
- Sub-Issues:
  - Invention
  - Inventive Step
  - Obviousness
  - Sufficiency of Disclosure
  - Essential Integers
Patent Validity
- Outcome: The Court of Appeal upheld the trial judge's finding that the patent was valid.
- Category: Substantive
- Sub-Issues:
  - Inventive Step
  - Obviousness
  - Sufficiency of Disclosure
Innocent Infringement
- Outcome: The Court of Appeal agreed with the trial judge's finding that UOB's liability for damages commenced from 10 May 2002 onwards.
- Category: Substantive

8. Remedies Sought

Declaration of patent validity
Injunction against further infringement
Damages or account of profits

9. Cause of Actions

Patent Infringement

10. Practice Areas

Patent Infringement
Commercial Litigation

11. Industries

Banking
Financial Services
Technology

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd	High Court	Yes	[2007] 1 SLR 1021	Singapore	The judgment under appeal; the Court of Appeal upheld the trial judge's decision.
Electric & Musical Industries Ld v Lissen Ld	N/A	Yes	(1938) 56 RPC 23	N/A	Cited for the principle that the monopoly and scope of protection granted by a patent is defined by its claims.
Bean Innovations Pte Ltd v Flexon (Pte) Ltd	N/A	Yes	[2001] 3 SLR 121	Singapore	Cited for the principle that the monopoly and scope of protection granted by a patent is defined by its claims.
Merck & Co Inc v Generics (UK) Ltd	N/A	Yes	[2004] RPC 31	N/A	Cited for the principle that the purpose of a patent is to convey to the public what the patentee considers to be his invention and what monopoly he has chosen to obtain.
Rosedale Associated Manufacturers Ld v Carlton Tyre Saving Coy Ld	N/A	Yes	[1960] RPC 59	N/A	Cited for the principle that the claims should be construed as part of the whole specification.
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 claims.
Kirin-Amgen Inc v Hoechst Marion Roussel Ltd	N/A	Yes	[2005] RPC 9	N/A	Cited for the principle of purposive construction of patent claims.
FE Global Electronics Pte Ltd v Trek Technology (Singapore) Pte Ltd	N/A	Yes	[2006] 1 SLR 874	Singapore	Cited for the principle of purposive construction of patent claims.
Pfizer Ltd’s Patent	N/A	Yes	[2001] FSR 16	N/A	Cited for the definition of the notional skilled person.
Dyson Appliances Ltd v Hoover Ltd	N/A	Yes	[2001] RPC 26	N/A	Cited for the definition of the notional skilled person.
Ng Kok Cheng v Chua Say Tiong	N/A	Yes	[2001] 3 SLR 487	Singapore	Cited for the qualities of the notional skilled person.
PLG Research Ltd v Ardon International Ltd	N/A	Yes	[1995] RPC 287	N/A	Cited for the rationale underpinning the requirement of obviousness.
Genelabs Diagnostics Pte Ltd v Institut Pasteur	N/A	Yes	[2001] 1 SLR 121	Singapore	Cited regarding the assumption that the invention is novel when considering obviousness.
Lux Traffic Controls Limited v Pike Signals Limited	N/A	Yes	[1993] RPC 107	N/A	Cited for the requirement of novelty.
Technograph Printed Circuits Limited v Mills & Rockley (Electronics) Limited	N/A	Yes	[1972] RPC 346	N/A	Discusses the distinction between novelty and obviousness.
Windsurfing International Inc v Tabur Marine (Great Britain) Ltd	English Court of Appeal	Yes	[1985] RPC 59	England	Cited for the four-step Windsurfing test for inventive step.
Merck & Co Inc v Pharmaforte Singapore Pte Ltd	N/A	Yes	[2000] 3 SLR 717	Singapore	Cited for adopting the Windsurfing test.
Wheatley v Drillsafe Ltd	English Court of Appeal	Yes	[2001] RPC 7	England	Cited for the failure to follow the structured Windsurfing approach.
DSM NV’s Patent	N/A	Yes	[2001] RPC 35	N/A	Cited for the structured approach in determining whether an invention involves an inventive step.
Vickers, Sons And Co, Limited v Siddell	N/A	Yes	(1890) 7 RPC 292	N/A	Cited for the test of whether an invention lacked an inventive step.
Glaxo Group Ltd’s Patent	N/A	Yes	[2004] RPC 43	N/A	Cited for the importance of striking the apposite balance between encouraging and stifling innovation.
Peng Lian Trading Co v Contour Optik Inc	N/A	Yes	[2003] 2 SLR 560	Singapore	Cited for the principle that simplicity is not equivalent to obviousness.
The General Tire & Rubber Company v The Firestone Tyre And Rubber Company Limited	N/A	Yes	[1972] RPC 457	N/A	Cited for the principle that individual patent specifications and their contents do not normally form part of the notional skilled person’s common general knowledge.
Innovative Scuba Concepts, Inc v Feder Industries, Inc	N/A	Yes	26 F 3d 1112	United States	Cited for the principle that clear and satisfactory evidence is necessary to establish a claim of prior user or prior art.
Mentor Corporation v Hollister Incorporated	N/A	Yes	[1993] RPC 7	N/A	Cited for the principle that the patent specification need not set out every detail necessary for the performance of the invention.
Biogen Inc v Medeva plc	N/A	Yes	[1997] RPC 1	N/A	Cited for the principle that if the invention discloses a principle capable of general application, the claims may be in correspondingly general terms.
Monsanto Co v Merck & Co Inc	N/A	Yes	[2000] RPC 709	N/A	Cited for the principle that the claim must not be co-extensive with the embodiments specifically disclosed by the patentee in his specification.
Genentech Inc’s Patent	N/A	Yes	[1989] RPC 147	N/A	Cited for the principle that where the specification of a patent is sufficient, any potential ambiguity or undue breadth of a claim is not in itself a ground of revocation.
British Thomson-Houston Company Ld v Corona Lamp Works Ld	House of Lords	Yes	(1922) 39 RPC 49	United Kingdom	Cited for the proposition that a patent is not necessarily invalid for want of definition merely because relative terms are used in its specification.
Rodi & Wienenberger AG v Henry Showell Ltd	N/A	Yes	[1969] RPC 367	N/A	Cited for the essential integers of a claim.
Lancer Boss Ltd v Henley Forklift Co Ltd	N/A	Yes	[1975] RPC 307	N/A	Cited for the statutory test for determining whether an infringer was aware or should have had reasonable grounds for supposing that the patent in dispute existed is an objective one.
John Khalil Khawam And Company v K Chellaram & Sons (Nig) Limited	N/A	Yes	[1964] 1 WLR 711	N/A	Cited for the prevailing disposition of the English courts has been to look at whether the infringing party made “the necessary investigation which a prudent man of business in the same circumstances would have made”.
Benmax v Austin Motor Coy Ld	N/A	Yes	(1953) 70 RPC 143	N/A	Cited for the principle that a defendant who seeks to avail himself of the protection afforded by Sec. 59(1) [of the Act, the then English equivalent of s 69(1) of the Act] must plead and prove a complete ignorance of the existence of the patent monopoly during the period in which the wrongful acts were being done.
Wilbec Plastics Limited v Wilson Dawes (Sales and Contracts) Limited	N/A	Yes	[1966] RPC 513	N/A	Cited for the plea of innocent infringement is not available to an infringer who has been informed of the existence of a patent application in respect of the article in question.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Patents Act (Cap 221, 2005 Rev Ed)	Singapore
Patents Act 1949 (c 87) (UK)	United Kingdom
Patents Act 1977 (c 37) (UK)	United Kingdom
Patents Act 1953 (NZ)	New Zealand
Patents Act 1990 (Cth)	Australia

15. Key Terms and Keywords

15.1 Key Terms

Dynamic currency conversion
Patent infringement
Inventive step
Obviousness
Sufficiency of disclosure
Bank Reference Table
Primary Account Number
Bank Identification Number
Issuer code
Identifier code
Automatic currency detection

15.2 Keywords

patent
infringement
dynamic currency conversion
Singapore
intellectual property
UOB
First Currency Choice
Main-Line

17. Areas of Law

Area Name	Relevance Score
Patents	90
Contracts	30
Civil Procedure	10
Contract Law	10

16. Subjects

Patent Law
Intellectual Property
Banking
Finance
Technology