Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and Another

Lee Seiu Kin J:

[1] The plaintiff, a company incorporated in Ireland, is the registered proprietor in Singapore of patent no 86037 (W/O 01/04846) entitled “Dynamic Currency Conversion for Card Payment Systems” (“the Patent”). The first defendant is a bank incorporated in Singapore. The second defendant is a company that provided a system, called the FCC System, that generated a certain amount of income for the first defendant.

[2] The plaintiff’s claim against the defendants is for damages arising from infringement of the Patent by the first defendant in relation to the operation of the FCC System. The trial was heard by Tay Yong Kwang J (“Tay J”) who, in his judgment of 21 December 2006, found that the Patent was infringed by the defendants. In respect of the first defendant, Tay J ordered an inquiry by the Registrar on damages or an account of profits by reason of the infringement, with the plaintiff required to make its election before the inquiry. As against the first defendant, the plaintiff elected for an account of profits and against the second defendant, the plaintiff elected for damages. The present matter pertains to the plaintiff’s claim against the first defendant for an account of profits.

[3] On 14 May 2009, the plaintiff filed summons no 2556 of 2009 (“the Summons”) which prayed for the following:

[4] The ground for the Summons was set out in para 5 of the affidavit of Declan Gerard Barry (“Declan”) filed 14 May 2009, which stated as follows:

[5] On 4 June 2009, the assistant registrar (“AR”) heard the Summons and, pursuant to O 29 r 12 of the Rules of Court (Cap 322, R5, 2006 Rev Ed), ordered the first defendant to pay into court the sum of $1,962,424.30 by 18 June 2009 as interim payment to the account of first defendant’s profits in respect of the plaintiff’s claims against the first defendant. The first defendant appealed in registrar’s appeal no 228 of 2009 and prayed for the Summons to be dismissed. The plaintiff appealed against that order in registrar’s appeal no 225 of 2009 and prayed for an order requiring the first defendant to pay the full sum of $3,135,236.40. After hearing counsel for the parties on 13 July 2009, I allowed the first defendant’s appeal and set aside the AR’s order for interim payment. I also dismissed the plaintiff’s appeal. The plaintiff has since lodged an appeal against my decision and I now give my grounds of decision.

[6] The ground for the Summons is found in Declan’s affidavit filed on 14 May 2009 at para 5. He referred to the affidavit of Gan Ai Im (“Gan”), which was filed on 6 March 2008, in particular to Exhibit “GAI-1” (“the Exhibit”) therein. The Exhibit is referred to in para 10 of Gan’s affidavit in which she deposed as follows:

The first defendant did not dispute that it had received the sum of $3,135,236.40 from the second defendant as commission. However the first defendant pointed out that in an account of the profit, it was necessary to consider the cost incurred by the first defendant in respect of the transaction that resulted in the receipt of this commission.

[7] The AR was persuaded by this argument. However the plaintiff pointed out that Cheang Kok Chew (“Cheang”), the first defendant’s vice president, in his affidavit filed on 2 June 2009, had, at para 20, exhibited a table marked “CKC-1” and had stated at para 21 that:

[8] The AR was also persuaded by this submission and ordered that this sum be paid into court. Counsel for first defendant contended that this statement was misinterpreted. Firstly, it was important to bear in mind the context in which it was made. Gan had filed the affidavit of 6 March 2008 in response to Gerard Joseph Barry’s affidavit filed on 29 January 2008 in support of the plaintiff’s application in summons no 5347 of 2007 for pre-election discovery of documents. Gan’s exact words in paras 25 and 26 of her affidavit were as follows:

[10] As for Cheang’s affidavit of 2 June 2009, it was made in response to Declan’s affidavit of 14 May 2009 made in support of this application for interim payment. Cheang reiterated Gan’s admission that UOB had received total commission of $3,135,236.40 from the second defendant. However he said at para 18 that:

[11] Cheang went on to explain the purpose of Gan’s affidavit and at para 20 he gave a revised table to the one exhibited in GAI-4, updated with the expense/income ratio from the recently released 2007 annual report, as well as making certain corrections in the earlier exhibit. It is in this context that the statement in para 21 of Cheang’s affidavit must be seen. Indeed Cheang continued further at para 22 as follows: