Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd: Election of Remedies for Patent Infringement

Main-Line Corporate Holdings Ltd sued United Overseas Bank Ltd (UOB) and First Currency Choice Pte Ltd (FCC) in the High Court of Singapore, alleging patent infringement. Main-Line elected an account of profits against UOB and damages against FCC. The Assistant Registrar ordered Main-Line to elect the same remedy against both defendants, but Belinda Ang Saw Ean J disagreed and allowed Main-Line's appeals, holding that UOB and FCC were several tortfeasors causing different damage. The court found the remedies available to Main-Line were cumulative and not alternative.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Appeals Allowed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Main-Line sued UOB and FCC for patent infringement, electing an account of profits from UOB and damages from FCC. The court allowed Main-Line's appeals, disagreeing with the order to elect the same remedy against both defendants.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
United Overseas Bank LtdDefendant, RespondentCorporationAppeal DismissedLost
Main-Line Corporate Holdings LtdPlaintiff, AppellantCorporationAppeals AllowedWon
First Currency Choice Pte LtdDefendant, Respondent, Third PartyCorporationAppeal DismissedLost

3. Judges

Judge NameTitleDelivered Judgment
Belinda Ang Saw EanJudgeYes

4. Counsels

Counsel NameOrganization
Ang Wee TiongTan Kok Quan Partnership
Wong Siew HongInfinitus Law Corporation
Arthur YapATMD Bird & Bird LLP
Koh Chia LingATMD Bird & Bird LLP

4. Facts

  1. Main-Line owns Singapore Patent No. 86037 for a dynamic currency conversion system.
  2. UOB entered into a Multicurrency Exchange Agreement with FCC in October 2001.
  3. FCC created the First Currency Choice System (FCC System), a competing currency conversion system.
  4. Main-Line sued UOB and FCC for patent infringement in 2004.
  5. Tay Yong Kwang J held that the Patent was valid and that both UOB and FCC had infringed it.
  6. Main-Line elected for an account of profits against UOB and damages against FCC.
  7. The Assistant Registrar ordered Main-Line to make a fresh election of the same remedy against both defendants.

5. Formal Citations

  1. Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and Another, Suit 806/2004, RA 327/2008, 328/2008, [2009] SGHC 232

6. Timeline

DateEvent
UOB entered into a Multicurrency Exchange Agreement with FCC.
Main-Line sued UOB for infringement.
FCC applied to be added as a defendant.
Writ of Summons was amended and re-filed.
UOB obtained a declaration that FCC indemnifies UOB.
Court clarified that costs against both defendants were ordered on a joint and several basis.
Main-Line filed Notices of Election.
Judgment issued.

7. Legal Issues

  1. Patent Infringement
    • Outcome: The court upheld the finding of patent infringement against both UOB and FCC.
    • Category: Substantive
    • Related Cases:
      • [2007] 1 SLR 1021
      • [2008] 1 SLR 335
  2. Election of Remedies
    • Outcome: The court held that Main-Line was entitled to elect an account of profits from UOB and damages from FCC, as the remedies were cumulative and not alternative.
    • Category: Procedural
    • Related Cases:
      • [2002] FSR 276
      • (1871) LR 5 HL 1
      • (1873) LR 6 HL 319
      • [1996] 2 WLR 192

8. Remedies Sought

  1. Injunction
  2. Account of Profits
  3. Damages
  4. Declaration of Patent Validity

9. Cause of Actions

  • Patent Infringement

10. Practice Areas

  • Patent Infringement Litigation
  • Commercial Litigation

11. Industries

  • Banking
  • Finance
  • Technology

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Spring Form Inc v Toy Brokers LtdN/AYes[2002] FSR 276N/ACited for the definition of 'the same infringement' in the context of election of remedies under the Patents Act.
Jameson v Central Electricity Generating BoardN/AYes[1999] 2 WLR 141N/ACited for the proposition that satisfaction of judgment by one tortfeasor would extinguish a plaintiff’s cause of action against a second tortfeasor in respect of the same loss.
Baxtor v Obacelo Pty LtdN/AYes[2001] 205 CLR 635N/ACited to explain the principle that if damages are already recouped in full, no claim can be brought against the second tortfeasor.
General Tire & Rubber Co v Firestone Tyre & Rubber Co LtdN/AYes[1976] RPC 197N/ACited as the leading authority on the question of damages for infringement of an intellectual property right.
Meters Ltd v Metropolitan Gas Meters LtdN/AYes(1911) 28 RPC 157N/ACited to support the principle that a patentee is not confined to assessing damages on the basis of a notional royalty payment if he can prove that he has suffered damages in the way of loss of profits.
Neilson v BettsN/AYes(1871) LR 5 HL 1N/ACited as a patent case where the court could award either damages, or an account of profit upon a decree of infringement of a patent.
De Vitre v BettsN/AYes(1873) LR 6 HL 319N/ACited to discuss the speech in Neilson v Betts and the general principle that the patentee must elect whether he will have an account of profits or an inquiry into damages.
United Australia Ltd v Barclays Bank LtdN/AYes[1941] AC 1N/ACited to contemplate the situation where the same facts support rights to different remedies against the same defendant and in such a case the plaintiff is required to elect between remedies.
Personal Representatives of Tang Man Sit v Capacious Investments LimitedN/AYes[1996] 2 WLR 192N/ACited for the principles of election between alternative remedies and cumulative remedies.
T. Mahesan s/o Thambiah v Malaysia Government Officers’ Co-operative Housing Society LtdN/AYes[1979] AC 374N/ACited to illustrate the principle that a plaintiff who recovers a judgment for damages in fraud against his bribed agent is precluded from recovering a judgment in the amount of the bribe as money had and received.
Celanese International Corp v BP Chemicals LtdN/AYes[1999] RPC 203N/ACited for the principle that there is only one profits 'pot' and the totality of the profits ordered to be paid should not exceed the total profits made by the defendant in that business.
Lim Teck Cheng v Wyno Marine Pte LtdN/AYes[1999] 4 SLR 673SingaporeCited to approve the principles in Tang Man Sit and the principle that where cumulative remedies are available to a plaintiff, the latter cannot recover, in the aggregate, an amount in excess of his loss.
Papps v MahonN/AYes[1966] NZLR 288N/ACited to explain the distinction between an additional cause of action and an alternative remedy.
Catnic Components Ltd v C Evans & Co (Building Merchants) LtdN/AYes[1983] FSR 401N/ACited for the principle that recovery of damages from the manufacturer of an infringing article does not 'frank' the article as legitimate thereafter.
The Electric Furnace Co v Selas Corporation of America (No. 2)N/AYes[1987] RPC 23N/ACited to consider the possibility of alternative remedies against multiple defendants.
Leong Wai Kay v Carrefour Singapore Pte LtdCourt of AppealYes[2007] 3 SLR 78SingaporeCited to approve the passage in In re Cuno (1889) 43 Ch D 12 where Bowen LJ said that in the construction of statutes, you must not construe the words so as to take away rights which already existed before the statute was passed, unless you have plain words which indicate that such was the intention of the legislature.
Main-Line Corporate Holdings Ltd v United Overseas Bank LtdHigh CourtYes[2007] 1 SLR 1021SingaporeThe original High Court decision in this case, defining the nature and extent of the infringement by both defendants.
First Currency Choice Pte Ltd v Main-Line Corporate Holdings LtdCourt of AppealYes[2008] 1 SLR 335SingaporeThe Court of Appeal's decision dismissing the defendants' appeal against the High Court's decision.
Warman International Ltd v DwyerN/AYesWarman International Ltd v Dwyer (1995) 128 ALR 201N/ACited for the principle that the purpose of ordering an account is not to punish the defendant, but to prevent the defendant’s unjust enrichment.
My Kinda Town Ltd v SollN/AYesMy Kinda Town Ltd v Soll (1982) 8 FSR 147N/ACited for the principle that the purpose of ordering an account is not to punish the defendant, but to prevent the defendant’s unjust enrichment.
Codex Corporation v Racal-Milgo LtdN/AYes[1984] FSR 87N/ACited for the principle that an account of profits from an initial infringer does not “frank” the infringing article thereafter as legitimate.
United Telephone Company v WalkerN/AYesUnited Telephone Company v Walker (1887) 4 RPC 63N/ACited for the principle that recovery of damages from the manufacturer of an infringing article does not “frank” the article as legitimate thereafter.
Henderson v HendersonN/AYesHenderson v Henderson (1843) 3 Hare 100N/ACited for the rule that a plaintiff is required to bring forward his whole case against a defendant in one action.
The KourskN/AYesThe Koursk [1924] P 140N/ACited for the circumstances creating joint tortfeasorship.
Unilever Plc v Gillette (UK) LtdN/AYesUnilever Plc v Gillette (UK) Ltd [1989] RPC 583N/ACited for the circumstances creating joint tortfeasorship.
SmithKline Corp v DDSA PharmaceuticalsN/AYesSmithKline Corp v DDSA Pharmaceuticals [1978] FSR 109N/ACited for the principle that Main-Line is not required to prove damage to avail itself to the remedy for damages under s 67(1) of the Act.
In re CunoN/AYesIn re Cuno (1889) 43 Ch D 12N/ACited for the principle that in the construction of statutes, you must not construe the words so as to take away rights which already existed before the statute was passed, unless you have plain words which indicate that such was the intention of the legislature.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Patents Act (Cap 221, 2005 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Patent Infringement
  • Election of Remedies
  • Account of Profits
  • Damages
  • Dynamic Currency Conversion
  • Multicurrency Exchange Agreement
  • Joint Tortfeasors
  • Several Tortfeasors
  • Same Infringement

15.2 Keywords

  • patent infringement
  • election of remedies
  • account of profits
  • damages
  • currency conversion
  • Singapore
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Patents90
Election of Remedies70
Damages50
Breach of Contract30
Contract Law30
Estoppel20

16. Subjects

  • Intellectual Property
  • Patent Law
  • Civil Procedure
  • Remedies