DBS infringed card currency identification patent: Judge

An Irish technology firm scored a major victory over patent infringement claims it brought against DBS, a second local bank accused of violating its patent for a currency identification system for credit cards.

Just five years ago, the Singapore Court of Appeal upheld a High Court ruling that the patent held by Main-Line Corporate Holdings, a Singapore unit of Fintrax Group, was valid and had been infringed by United Overseas Bank and a local company.

Main-Line, which is represented in both cases by Wong Siew Hong of Eldan Law LLP, received $1.9 million from UOB last year as part of an "account of profits" or money it would have made if its patent had not been infringed.

But that is a fraction of Main-Line's total claim, which it estimates at potentially up to $21 million in lost profits and damages.

UOB and First Currency Choice System, which infringed Main-Line's patent by providing a similar currency identification system to merchants in UOB's credit card network, are fighting over what constitutes the correct basis for assessment.

In finding that Main-Line's patent is valid and was infringed by DBS, High Court Justice Andrew Ang, in a 55-page decision released last week, downplayed a revocation of the company's patent last year by the European Patent Office (EPO), saying the decision by the EPO's Board of Appeal was "bereft of detailed reasoning".

DBS, in its defence, had argued that the EPO's move supported the bank's claims that Main-Line's patent was always invalid.

But Justice Ang disagreed. "Despite the EPO's revocation ..., I continue to be bound by the UOB Court of Appeal decision, especially since Singapore, not being part of the (European Patent Convention), is under a different legal and regulatory regime for patents and thus in certain areas may apply different legal principles," he wrote.

He awarded costs of the trial to Main-Line, with costs of the inquiry on damages or account of profits to be reserved to the registrar conducting the inquiry.

Damages are expected to run into several millions of dollars, Mr Wong said.

DBS, which is represented by Senior Counsel Stanley Lai of Allen & Gledhill LLP, said yesterday it was "currently considering the decision and is in discussion with its lawyers".

Justice Ang also dismissed DBS's counterclaim to invalidate the patent because the bank failed to provide evidence to prove that the Monex system had been commercially used in Europe prior to July 12, 1999, when Main-Line filed the first patent application for its invention.

According to Main-Line, its Dynamic Currency Conversion (DCC) system automatically identifies the cardholder's card-billing currency and converts the payment sum into the card-billing currency at the point of sale.

This allows the cardholder to pay either in the card's billing currency or in other currencies.