Main-Line Corp v UOB & First Currency Choice: Patent Infringement, Damages Assessment
In a case before the High Court of Singapore, Main-Line Corporate Holdings Ltd sued United Overseas Bank Ltd (UOB) and First Currency Choice Pte Ltd (FCC) for infringement of Singapore Patent No 86037. The court had previously found UOB and FCC liable for infringement. The current judgment concerns the assessment of damages. The Plaintiff elected an account of profits against UOB and damages against FCC. The court determined that UOB had already satisfied its liability through an interim payment. The court ordered FCC to pay damages of S$4,795,000 to the Plaintiff.
1. Case Overview
1.1 Court
High Court of the Republic of Singapore1.2 Outcome
Judgment for Plaintiff against First Currency Choice Pte Ltd; No further award against United Overseas Bank Ltd.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
The High Court assessed damages for patent infringement by UOB and First Currency Choice, concerning dynamic currency conversion. The court determined the compensation.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| United Overseas Bank Ltd | Defendant | Corporation | No Further Award | Neutral | |
| Main-Line Corporate Holdings Ltd | Plaintiff | Corporation | Partial Judgment | Partial | |
| First Currency Choice Pte Ltd | Defendant | Corporation | Judgment for Plaintiff | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tay Yong Kwang | Judge of Appeal | Yes |
4. Counsels
4. Facts
- The Plaintiff is the proprietor of Singapore Patent No 86037 titled “Dynamic Currency Conversion for Card Payment Systems”.
- The Defendants, UOB and FCC, were found to have infringed the Plaintiff’s patent.
- The Plaintiff elected an account of profits against UOB and damages against FCC.
- UOB and FCC entered into a multicurrency exchange agreement (MEA) on 11 October 2001.
- The estimated value of the total number of infringing transactions for the infringing period was S$627m.
- The infringing application of the Patent by the FCC system relocated the Uplift from the Issuer bank to the Acquirer bank, UOB.
- UOB received commissions from FCC under the MEA.
5. Formal Citations
- Main-line Corporation v United Overseas Bank Ltd and another, Suit No 806 of 2004 (Assessment of Damages No 23 of 2016), [2016] SGHC 285
6. Timeline
| Date | Event |
|---|---|
| Priority date of the Patent | |
| UOB entered into negotiations with the Plaintiff | |
| Negotiations between UOB and the Plaintiff ended | |
| UOB and FCC signed a multicurrency exchange agreement | |
| FCC system first offered for use at UOB’s merchant outlets | |
| No communication between UOB and Plaintiff until this date | |
| UOB liable for infringement of the Patent from this date | |
| Patent granted | |
| Suit commenced against UOB and FCC | |
| Trial on liability concluded, judgment given for the Plaintiff | |
| UOB liable for infringement of the Patent until this date | |
| Assessment Hearing commenced | |
| Oral arguments heard | |
| Judgment reserved |
7. Legal Issues
- Patent Infringement
- Outcome: The court found that First Currency Choice Pte Ltd infringed the Plaintiff's patent and was liable for damages.
- Category: Substantive
- Related Cases:
- [2007] 1 SLR(R) 1021
- [2008] 1 SLR(R) 335
- Assessment of Damages
- Outcome: The court assessed the damages payable by First Currency Choice Pte Ltd to the Plaintiff at S$4,795,000.
- Category: Substantive
- Related Cases:
- [1975] 1 WLR 819
- Account of Profits
- Outcome: The court determined that United Overseas Bank Ltd had already satisfied its liability through an interim payment.
- Category: Substantive
- Related Cases:
- [2015] 3 SLR 961
- Exemplary Damages
- Outcome: The court dismissed the Plaintiff's claim for exemplary damages against First Currency Choice Pte Ltd.
- Category: Substantive
8. Remedies Sought
- Account of Profits
- Damages
- Exemplary Damages
9. Cause of Actions
- Patent Infringement
10. Practice Areas
- Patent Infringement
- Damages Assessment
11. Industries
- Finance
- Banking
- Technology
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and another (First Currency Choice Pte Ltd, third party) | High Court | Yes | [2007] 1 SLR(R) 1021 | Singapore | Established UOB and FCC's liability for patent infringement. |
| First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd and another appeal | Court of Appeal | Yes | [2008] 1 SLR(R) 335 | Singapore | Upheld the High Court's finding of liability against UOB and FCC. |
| Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and Another | High Court | Yes | [2009] SGHC 212 | Singapore | Set aside the order for UOB to pay an interim payment. |
| Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd | Court of Appeal | Yes | [2010] 2 SLR 986 | Singapore | Reversed the High Court's decision and ordered UOB to pay an interim payment to the Plaintiff. |
| Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and another (First Currency Choice Pte Ltd, third party) | High Court | Yes | [2010] 1 SLR 189 | Singapore | Allowed the Plaintiff's election of different remedies against UOB and FCC. |
| Bosch Corp v Wiedson International (S) Pte Ltd and others and another suit | High Court | Yes | [2015] 3 SLR 961 | Singapore | Cited for the principle that an account of profits is concerned with the actual profit made by the infringer and that profits can be reduced by deducting costs and expenses or by apportionment. |
| Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd | High Court | Yes | [2011] SGHC 268 | Singapore | Cited for the principle that profits that are accountable can be reduced by deducting costs and expenses and by apportionment of profits. |
| Celanese International Corp v BP Chemicals Ltd | English Patents Court | Yes | [1999] RPC 203 | England | Cited for the principle that the court is trying to find out what profits have been made in fact by the defendant, not the profits he could have made. |
| In re Charge Card Services Ltd | English Court of Appeal | Yes | [1989] Ch 487 | England | Cited to argue that there were separate and independent contracts in place between the parties in the Ecosystem. |
| Gerber Garment Technology Inc. v Lectra Systems Ltd and another | Court of Appeal | Yes | [1997] RPC 443 | England | Cited for the principle that damages are intended to be compensatory. |
| General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd | House of Lords | Yes | [1975] 1 WLR 819 | England | Cited for the essential principles in valuing a claim for patent infringement. |
| Ong Seow Pheng and others v Lotus Development Corp and another | Court of Appeal | Yes | [1997] 2 SLR(R) 113 | Singapore | Cited for the approval of the principles enunciated in General Tire. |
| Cordlife Group Ltd v Cryoviva Singapore Pte Ltd | Singapore High Court | Yes | [2016] SGHCR 5 | Singapore | Cited for the observation that there is no general bar against an award of exemplary damages in Singapore. |
| Cassell & Co v Broome and another | House of Lords | Yes | [1972] AC 1027 | England | Cited for the basis to seek exemplary damages from FCC on the basis that FCC made a calculated decision to infringe the Patent and did so with “guilty knowledge”. |
| Ramzam v Brookwide Limited | England and Wales Court of Appeal (Civil Division) | Yes | [2011] 2 All ER 38 | England | Cited as an example of a case where exemplary damages are appropriate given FCC’s deliberate and contumelious disregard for the rights of the Plaintiff. |
| Paramount Pictures Corporation v Hasluck | Australian Federal Court | Yes | [2006] FCA 1431 | Australia | Cited for the argument that if Parliament intended for there to be exemplary damages for patent infringement, it would have introduced an equivalent section in the Patents Act. |
| Catnic Components Ltd and another v Hill & Smith Ltd | High Court | Yes | [1983] FSR 512 | England | Cited as binding authority in Singapore as it was delivered before the repeal of s 5 of the Civil Law Act. |
| Rookes v Barnard | House of Lords | Yes | [1964] AC 1129 | England | Cited as the landmark case before which exemplary damages had never been awarded for patent infringement. |
| Kuddus v Chief Constable of Leicestershire Constabulary | House of Lords | Yes | [2002] 2 AC 122 | England | Cited as a subsequent development in English law doubting the decision in Catnic. |
| Autodesk Inc, Autodesk Australia Pty Limited, Microsoft Corporation and Microsoft Pty Limited v Michael Yee and Peter Leung | Federal Court of Australia | Yes | (1996) 139 ALR 735 | Australia | Cited for the interpretation of the Australian Copyright Act 1968. |
| Li Siu Lun v Looi Kok Poh and another | Court of Appeal | Yes | [2015] 4 SLR 667 | Singapore | Cited for the repeated approval of the categories set out in Rookes v Barnard by the local courts. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Patents Act (Cap 221, 2005 Rev Ed) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
| Application of English Law Act (Cap 7A, 1994 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Dynamic Currency Conversion
- Patent Infringement
- Account of Profits
- Damages Assessment
- Multicurrency Exchange Agreement
- Uplift
- Settlement Proceeds
- Merchant Discount Rate
- Interchange Reimbursement Fee
- Ecosystem
15.2 Keywords
- patent infringement
- damages
- dynamic currency conversion
- account of profits
- UOB
- First Currency Choice
- Singapore
- intellectual property
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Patent Infringement | 95 |
| Assessment of Damages | 90 |
| Patents | 90 |
| Damages | 85 |
| Dynamic Currency Conversion | 70 |
| Contract Law | 40 |
| Commercial Disputes | 30 |
16. Subjects
- Patent Law
- Intellectual Property
- Banking
- Finance