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

Main-Line Corporate Holdings Ltd, an Irish company, sued DBS Bank Ltd in the High Court of Singapore on 20 July 2012, alleging infringement of Singapore Patent No 86037, which covers a method and system for dynamic currency conversion. The court, presided over by Andrew Ang J, found DBS liable for infringing Main-Line's patent through its use of the Monex System. The court dismissed DBS's counterclaim that the patent was invalid.

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

Main-Line sued DBS for patent infringement related to dynamic currency conversion. The court found DBS liable for infringing Main-Line's patent.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
DBS Bank LtdDefendantCorporationCounterclaim DismissedLost
Main-Line Corporate Holdings LtdPlaintiffCorporationJudgment for PlaintiffWon

3. Judges

Judge NameTitleDelivered Judgment
Andrew AngJudgeYes

4. Counsels

Counsel NameOrganization
Stanley LaiAllen & Gledhill LLP
Vignesh VaerhnAllen & Gledhill LLP
Tan LijunAllen & Gledhill LLP
Wong Siew HongPrithipal & Associates
Prithipal SinghPrithipal & Associates
Wayne OngPrithipal & Associates

4. Facts

  1. Main-Line owns the patent for "Dynamic Currency Conversion for Card Payment Systems".
  2. The patent covers a method and system that automatically determines the operating currency for card transactions.
  3. The system uses a Bank Reference Table (BRT) to identify the currency based on the card number.
  4. DBS engaged ECS to provide an automatic currency detection service called the Monex System.
  5. Declan Barry used his Australian dollar credit card at The Fullerton and was offered dynamic currency conversion.
  6. The receipt indicated that the acquiring bank was DBS and the Monex system was used.
  7. The European Patent Office revoked Main-Line's European patent on grounds of added subject matter and lack of inventive step.

5. Formal Citations

  1. Main-Line Corporate Holdings Ltd v DBS Bank Ltd, Suit No 367 of 2010, [2012] SGHC 147

6. Timeline

DateEvent
Plaintiff filed an application for a patent for the invention.
Patent for the invention was registered in Singapore as Singapore Patent No 86037.
Plaintiff brought an action for infringement against United Overseas Bank Ltd.
Defendant entered into a Multi-Currency Conversion Services Agreement with E-Clearing Singapore Pte Ltd.
UOB Court of Appeal decision was released.
Declan Gerard Barry noticed dynamic currency conversion at The Fullerton.
Plaintiff's solicitors wrote to the defendant alleging patent infringement.
Plaintiff commenced action against the defendant.
European Patent Office revoked the plaintiff’s European Patent No EP-B-1018 711.
Judgment reserved.

7. Legal Issues

  1. Patent Infringement
    • Outcome: The court found that DBS infringed Main-Line's patent through the use of the Monex System.
    • Category: Substantive
    • Related Cases:
      • [1969] RPC 367
  2. Patent Validity
    • Outcome: The court upheld the validity of the patent, dismissing DBS's counterclaim for invalidation.
    • Category: Substantive
    • Related Cases:
      • [2006] 1 SLR(R) 874
      • [1991] RPC 553
  3. Added Subject Matter
    • Outcome: The court found that the patent did not contain added subject matter.
    • Category: Substantive
    • Related Cases:
      • [2006] 1 SLR(R) 874
      • [1991] RPC 553
  4. Lack of Inventive Step
    • Outcome: The court found that the patent contained an inventive step.
    • Category: Substantive
    • Related Cases:
      • [1985] RPC 59
  5. Lack of Novelty
    • Outcome: The court found that the defendant has not discharged its burden of proof of showing that the Patent ought to be invalidated on the ground of lack of novelty.
    • Category: Substantive

8. Remedies Sought

  1. Injunction
  2. Damages
  3. Account of Profits

9. Cause of Actions

  • Patent Infringement

10. Practice Areas

  • Patent Infringement
  • Commercial Litigation

11. Industries

  • Banking
  • Financial Services

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Main-Line Corporate Holdings Ltd v United Overseas Bank LtdHigh CourtYes[2007] 1 SLR(R) 1021SingaporeThe court relied on the findings of validity and infringement in the UOB High Court decision.
Windsurfing International Inc v Tabur Marine (Great Britain) LtdN/AYes[1985] RPC 59EnglandCited for the four-step approach to determine if an invention involves an inventive step.
First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appealCourt of AppealYes[2008] 1 SLR(R) 335SingaporeThe court relied on the findings of validity and infringement in the UOB Court of Appeal decision.
Genelabs Diagnostics Pte Ltd v Institut Pasteur and anotherN/AYes[2000] 3 SLR(R) 530SingaporeCited regarding the assumption of novelty when considering the obviousness of an invention.
Symbian Ltd v Comptroller-General of PatentsEnglish Court of AppealYes[2009] RPC 1EnglandCited for the position in England where courts aim to follow the EPO on matters of law.
Conor Medsystems Inc v Angiotech Pharmaceuticals IncN/AYes[2008] RPC 28N/ACited regarding the desirability of uniformity between national courts and the EPO in interpreting the European Patent Convention.
FE Global Electronics Pte Ltd v Trek Technology (Singapore) Pte Ltd and another appealCourt of AppealYes[2006] 1 SLR(R) 874SingaporeCited for the three-fold test for determining whether an amendment results in the specification of a patent disclosing additional subject matter.
Bonzel (T) and another v Intervention Ltd (No 3)N/AYes[1991] RPC 553EnglandCited for the three-fold test for determining whether an amendment results in the specification of a patent disclosing additional subject matter.
Rodi & Wienenberger AG v Henry ShowellN/AYes[1969] RPC 367N/ACited for the principles to determine whether a particular article or process has infringed a patent.
Main-Line Corporate Holdings Ltd v United Overseas BankHigh CourtYes[2010] 1 SLR 189SingaporeCited regarding the separate liability of UOB and FCC for patent infringement.
Go Dante Yap v Bank Austria Creditantsalt AGCourt of AppealYes[2011] 4 SLR 559SingaporeCited as a caution against excessively voluminous written cases.
Mühlbauer AG v Manufacturing Integration Technology LtdCourt of AppealYes[2010] 2 SLR 724SingaporeCited as a caution against excessively voluminous written cases.
Monex Group (Singapore) Pte Ltd v E-Clearing (Singapore) Pte LtdHigh CourtYes[2010] SGHC 63SingaporeCited to show that the court in that case was not making a finding that the Monex system had been in use before the Priority Date, but was merely stating MXS’s position.
Peng Lian Trading Co v Contour Optik IncN/AYes[2003] 2 SLR(R) 560SingaporeCited regarding the significance of a step forward, even if it seems Lilliputian.
Shoketsu’s PatentN/AYes[1992] FSR 184N/ACited regarding the consideration of obviousness without knowledge of the invention.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Patents ActSingapore
Section 66(1)(b) of Patents ActSingapore
Section 80(1)(d) of the Patents ActSingapore
s 15 of the Patents ActSingapore
s 107 of the Patents ActSingapore

15. Key Terms and Keywords

15.1 Key Terms

  • Dynamic Currency Conversion
  • Bank Reference Table
  • Primary Account Number
  • Identifier Code
  • Monex System
  • Issuing Bank
  • Acquiring Bank
  • Merchant Discount Rate
  • Patent Infringement

15.2 Keywords

  • patent infringement
  • dynamic currency conversion
  • DBS
  • Main-Line
  • Monex System
  • Singapore
  • intellectual property

17. Areas of Law

Area NameRelevance Score
Patents95
Patent Infringement80
Dynamic Currency Conversion70
Contract Law40
Commercial Disputes30
Civil Procedure20

16. Subjects

  • Patent Law
  • Intellectual Property
  • Banking
  • Currency Conversion