Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd and Another (First Currency Choice Pte Ltd, Third Party)

Belinda Ang Saw Ean J:

[1] The Registrar’s Appeals before me raise an interesting question of election between remedies for patent infringement. In July 2008, the plaintiff, Main-Line Corporate Holdings Limited (“Main-Line”), as the successful party in the liability trial for patent infringement, elected for the remedy of an account of profits against the first defendant, United Overseas Bank Limited (“UOB”), and the remedy of damages against the second defendant, First Currency Choice Pte Ltd (“FCC”). The defendants objected to the elections on the grounds that by claiming both remedies, Main-Line was (a) advancing remedies on a mutually inconsistent basis for the same infringement; and (b) seeking to obtain double recovery for the same loss. The Assistant Registrar agreed with the defendants that Main-Line must elect the same remedy against both defendants. She, therefore, ordered Main-Line to make a fresh election of the same remedy against UOB and FCC for either an account of profits, or for damages. I disagreed with the Assistant Registrar’s order and allowed Main-Line’s appeals. I now furnish reasons for my decision.

[2] Main-Line is the proprietor of Singapore Patent No. 86037 titled “Dynamic Currency Conversion for Card Payment Systems” (“the Patent”). The Patent covered a method and system of determining the operating currency of a payment card (ie, credit cards, charge cards or debit cards) at the point of sale between the merchant and the cardholder. It was essentially an automatic currency conversion system to replace the previous system of manually performing currency conversions. Corresponding patents have also been registered in Europe and Australia. The litigation proceeding in Singapore was just one of many patent suits Main-Line was involved in around the world.

[3] I take up the history of this case at the point in time when both FCC and Main-Line were involved in negotiations with UOB for the provision of an automatic currency conversion system. I should mention that FCC was the creator and proprietor of a competing system, the “First Currency Choice System” (“the FCC System”). Eventually, UOB entered into a Multicurrency Exchange Agreement (“ME Agreement”) with FCC in October 2001.

[4] Under the ME Agreement, UOB would provide its merchant clients with the point of sale terminals to enable them to accept card payments in foreign currencies, that is to say, the “front-end” of the system. On the other hand, FCC was responsible for the FCC System (including the servers and computer operating systems) that processed the transactions routed to it from the point of sale terminals. This formed the “back-end” of the system. FCC earned the foreign currency exchange spread, and UOB was promised a commission from FCC under the ME Agreement.

[5] Main-Line sued UOB for infringement on 5 October 2004. On 1 November 2004, FCC applied to be added as a defendant. The Writ of Summons was amended and then re-filed on 16 November 2004. However, the Statement of Claim and the Particulars of patent infringement remained unchanged. Nonetheless, FCC’s Defence referred to Main-Line’s Statement of Claim and the Particulars as though they referred to FCC as well. Both defendants denied any infringement and they instead claimed that the Patent was invalid.

[8] The defendants’ appeal against Tay J’s decision was dismissed by the Court of Appeal in its judgment dated 31 October 2007 which in the main concentrated on the question of the validity of the Patent (see First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2008] 1 SLR 335 (“Main-Line CA”)).

[9] On 16 July 2008, Main-Line filed and served two Notices of Election; one against UOB for an account of profits and the other against FCC for damages. As stated earlier, the Assistant Registrar set aside both Notices of Election and ordered Main-Line to make a fresh election of the same remedy against both defendants for either an account of profits or damages. The basis of the Assistant Registrar’s decision was that even if Main-Line could have pursued two separate causes of action and thus avoided election, Main-Line’s pleaded case did not distinguish between the defendants’ acts of infringement. I interpose to observe that after a full trial, the parties should be guided by Tay J’s decision rather than the pleadings. Notably, Tay’s J decision (which was upheld on appeal) had clearly defined the nature and extent of the infringement by both defendants (see (“Main-Line HC”) at [73] which is reproduced at [44] below).

[10] The defendants’ submitted that Main-Line’s election contravened s 67(2) of the Act. The defendants relied on the definition of “the same infringement” in Spring Form Inc v Toy Brokers Ltd [2002] FSR 276 (“Spring Form”) to argue that Main-Line was only entitled to elect one remedy against multiple defendants so long as the claim related to the one infringing article or operation of a process. The main plank of their argument was that the FCC System was a single infringement of the operation of a process which had caused damage to Main-Line. In particular, UOB and FCC had entered into the ME Agreement to utilize the FCC System together so that every infringing transaction required the participation of both UOB and FCC. The damage was thus the same and the election of an account of profits against UOB and damages against FCC would offend the double recovery rule.

[11] Mr Koh Chia Ling acting for FCC (and UOB represented by Mr Ang Wee Tiong adopted Mr Koh’s arguments), explained further that the measure of damages against FCC was best quantified on a reasonable royalty basis. Main-Line would be compensated with damages equivalent to a royalty fee for exploiting the Patent in Singapore without consent. The quantum of damages to be paid by FCC would take into account FCC’s subsequent dealings with UOB. Regardless of the number of defendants down the supply chain, Main-Line suffered the same damage, ie, the value of the hypothetical licence fee. If on top of that, so the argument continued, Main-Line was awarded an account of profits from UOB, there would be double recovery as both FCC and UOB caused the same damage to Main-Line represented by the licence fee.

[12] Mr Koh sought to reinforce his argument by citing Jameson v Central Electricity Generating Board [1999] 2 WLR 141 (“Jameson”) for the proposition that the satisfaction of judgment by one tortfeasor would extinguish a plaintiff’s cause of action against a second tortfeasor in respect of the same loss. On account of this risk of extinguishing the second cause of action, by necessity, so he reasoned, Main-Line must elect between inconsistent remedies to avoid double recovery. Mr Koh maintained that the proposition extended and applied to cases of joint torts and concurrent torts causing the same damage. I make two comments to dispose of this last argument. First, Jameson is not helpful authority as the principle applies where there has been satisfaction of one tortfeasor’s cause of action which was not the situation here on the facts of the present case. Second, damage in that case (unlike infringement under the Patent Act) was an essential element of the cause of action without which the claim against another tortfeasor would fail. In short, if damages are already recouped in full, no claim can be brought against the second tortfeasor. Gleeson CJ and Callinan J in Baxtor v Obacelo Pty Ltd [2001] 205 CLR 635 at 656 explained:

[13] Main-Line’s case as advanced by its counsel, Mr Wong Siew Hong, is that UOB and FCC had separately infringed the Patent. Specifically, UOB was liable for offering the FCC System for use to the public via its merchant clients, and in the alternative, liable for the use of the FCC System. UOB’s liability began only in May 2002. FCC, on the other hand, was liable because it “actually used” the infringing FCC System by performing the Patent process on its server, and in the alternative, FCC would have been liable for offering UOB the use of the FCC System. FCC was liable once it created the FCC System in 2001. Mr Wong pointed out the defendants’ liability as joint tortfeasors were never pleaded and Tay J could not and did not find them liable as joint tortfeasors.

[14] Main-Line further argued that there was no question of double recovery because the present appeals are concerned with cumulative and not alternative remedies. In order to demonstrate that the damage from the infringement was not the same, Mr Wong explained that the damage caused by UOB was the loss of business from one bank whereas the damage caused by the FCC System was the worldwide infringement of Main-Line’s Patent. In other words, the remedy of damages even though normally based on reasonable royalty did not represent Main-Line’s total loss against FCC. Furthermore, the quantum of UOB’s liability in accounting for profits was also a subset of Main-Line’s total loss. If anything, FCC’s indemnity to UOB was a commercial risk FCC had undertaken voluntarily and therefore irrelevant.

[15] Mr Wong cautioned that Spring Form is doubtful authority and should not be followed as it did not consider the full range of authorities. Disagreeing with the decision, Mr Wong submitted that every “dealing” should constitute an act of infringement thereby attracting separate liability. Contrary to Mr Koh’s argument, there was no “franking” of the product by the establishment of liability earlier up the chain of infringement. Finally, since UOB and FCC were not joint tortfeasors, Main-Line could have brought separate causes of action against UOB and FCC in two actions, in which case there would be no prohibition against electing different remedies.

[16] I begin the discussions by setting out s 66 of the Act:

[17] Section 67(1) of the Act provides the remedies available to the proprietor of a patent whose rights have been infringed, and they are: (a) an injunction restraining the defendant from any apprehended act of infringement; (b) for an order for the defendant to deliver up or destroy any infringing article; (c) damages in respect of the infringement; (d) account of the profits derived from the infringement; and (e) a declaration that the patent is valid and has been infringed. Section 67(2) reads:

[18] Patent infringement is a statutory tort. A plaintiff whose rights have been infringed may seek damages arising from the infringement or an account of profits.

[19] In the context of patent infringement, the purpose of ordering an account is not to punish the defendant, but to prevent the defendant’s unjust enrichment (see Warman International Ltd v Dwyer (1995) 128 ALR 201 at 208 (“Warman”); My Kinda Town Ltd v Soll (1982) 8 FSR 147 at 149 and 156). The remedy therefore obliges the defendant to disgorge benefits. Furthermore, the remedy (which retains its equitable characteristics) will be defeated by equitable defences such as estoppel, laches, acquiescence and delay (see Warman at 210).

[20] Whitford J in Codex Corporation v Racal-Milgo Ltd [1984] FSR 87 (“Codex v Racal-Milgo”) held that an account of profits from an initial infringer does not “frank” the infringing article thereafter as legitimate because taking an account does not condone any subsequent infringements. Additionally, upon an injunction being granted against continuing infringement, every subsequent manufacture, use and sale must be considered an infringement (at p 93).

[21] As for the remedy of damages in patent infringement cases, it is a compensatory remedy to put the injured party as far as possible in the same position as he would have been in if he had not sustained the wrong. The leading authority on the question of damages for infringement of an intellectual property right is the speech of Lord Wilberforce in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1976] RPC 197 at 212 – 214. That case concerned the amount of damages payable in respect of the infringement of a patent relating to an oil-extended rubber. Lord Wilberforce gleaned from the reported cases three approaches to damages. The first situation, appropriate to manufacturers who exploit their inventions, is the profit which would have been realised by the patentee if the sales had been made by him. The second situation, appropriate to those who exploit their inventions by licensing others to use them, is the amount the infringer would have had to pay by way of royalty for a licence legalising the infringements. The third is where it is not possible to prove either that there is a normal rate of profit, or that there is a normal, or established licence royalty. In such cases, the plaintiff will have to adduce evidence to guide the court as to the considerations to be taken into account to determine the measure of loss. Lord Wilberforce noted (ibid, at 214) that:

[22] A patentee is not confined to the method of assessing damages on the basis of a notional royalty payment in respect of infringing use if he can prove that he has suffered damages in the way of loss of profits. Lord Wilberforce approved (at 214), a passage in the judgment of Fletcher Moulton LJ in Meters Ltd v Metropolitan Gas Meters Ltd (1911) 28 RPC 157 at 165 which concluded:

[23] It is further noted that recovery of damages from the manufacturer of an infringing article does not “frank” the article as legitimate thereafter; that is to say, the patentee is entitled to pursue a claim of infringement against the customers of the initial infringer (United Telephone Company v Walker (1887) 4 RPC 63 and Catnic Components Ltd v C Evans & Co (Building Merchants) Ltd [1983] FSR 401, (“Catnic Components”)).

[24] The rationale for the principles of election between alternative remedies is to prevent double recovery since a plaintiff should not be permitted to recover more than he has lost. The other reason (associated with equitable election) is that the plaintiff is not permitted to approbate and reprobate. What this means is that the plaintiff cannot take the benefits without the burdens.

[25] An account of profits is an example of an alternative remedy known to the law which will give rise to the need for a plaintiff to elect between it and a remedy of damages which is a compensatory remedy. Main-Line’s submission in essence is that it is not necessary to elect where the remedies to which it is entitled are cumulative as opposed to alternative, and in that connection, I have been referred, in particular, to the discussion of the matter which appears in the opinion of Lord Nicholls in Personal Representatives of Tang Man Sit v Capacious Investments Limited [1996] 2 WLR 192 (“Tang Man Sit”).

[26] It is not disputed that the authorities make it clear that damages and an account of profits are alternative remedies and the aggrieved party is required to elect which remedy to pursue. Lord Nicholls in Tang Man Sit stated the principles as follows (at 196-197):

[27] Tang Man Sit itself was a case of alternative inconsistent remedies. There, the plaintiff was awarded at first instance both an account of profits and damages for breach of trust. The Hong Kong Court of Appeal held that the remedies were inconsistent; but since the defendant had already paid the plaintiff some of its secret profits, the plaintiff was deemed to have elected an account of profits instead of damages. The Privy Council disagreed, holding that there was no real election made, and the plaintiffs could still recover damages but with credit to the secret profits already paid out.

[28] There are a number of other examples of alternative remedies known to the law which give rise to the need for an election. The Privy Council decision in T. Mahesan s/o Thambiah v Malaysia Government Officers’ Co-operative Housing Society Ltd [1979] AC 374 (“Mahesan”) illustrates 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. The appellant who was the director and employee of a housing society was bribed by a real estate agent, one Manickam, and the appellant then caused the society to buy land at an overvalue. The agent was sued for money had and received (for the amount of the bribe paid in breach of the agent’s fiduciary duty) as well as in tort (for the loss suffered by the society for the overvalued land because of the agent’s fraud). These two remedies were in the alternative and the principal had to elect between them. The housing society elected the larger claim for damages for the loss it sustained as a result of the appellant’s wrongdoing.

[29] A patent case is Neilson v Betts (1871) LR 5 HL 1. That case concerns certain patent infringement actions brought by a Mr Betts in respect of his patent for the manufacture of a metal alloy that could be used to cap bottles. There was only one act of infringement – the defendant sent bottles of beer which infringed the patent to an agent in England who then shipped it to other customers in England. The plaintiff was successful and was awarded a decree giving him both damages and an account of profit. On appeal to the House of Lords, Lord Westbury held that the court could award either damages, or an account of profit upon a decree of infringement of a patent. Lord Westbury said (at 22):

[30] In the related case of De Vitre v Betts (1873) LR 6 HL 319, Lord Cairns discussed Lord Westbury’s speech in Neilson v Betts as follows (at 325):

[31] Lord Chelmsford said (at 321):

[32] The examples above are of cases where a plaintiff must elect between two alternative and inconsistent claims against one defendant. The case where a plaintiff has different claims against more than one defendant for the same amount is the Privy Council decision in United Australia Ltd v Barclays Bank Ltd [1941] AC 1 (“United Australia”). In that case, the appellant’s secretary endorsed a cheque in favour of a third party, MFG, without authority. The appellant brought an action against MFG for money lent or had and received, but the action was eventually discontinued. The appellant (United) then sued the bank for damages for conversion of the cheque, or alternatively, for negligence. The Privy Council held that United was not prevented from succeeding in its action in tort against the bank by the earlier proceeding against MFG. However, in the context of a discussion on alternative causes of action (and remedies) against the one tortfeasor, Viscount Simon LC’s comments 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. Viscount Simon LC said (at 19):

[33] As indicated, United Australia concerned different causes of action against different parties as distinct from alternative remedies against one party. The question before the Privy Council was what would prevent a plaintiff from pursuing a good cause of action against one party to judgment. In that context, it is distinguishable from cases such as the two Betts cases where there are alternative bases of monetary relief in respect of one cause of action.

[34] No election is necessary when the remedies are cumulative. Thus, there is no conflict when a claimant seeks different remedies against several tortfeasors causing different damage, or cumulative remedies against the same person for distinct claims. In Tang Man Sit, Lord Nicholls observed as follows (at 198):

[35] Similarly, where the cumulative remedies are of an account of profits, Laddie J in Celanese International Corp v BP Chemicals Ltd [1999] RPC 203 at 219 held:

[36] The principles in Tang Man Sit were approved by our Court of Appeal in Lim Teck Cheng v Wyno Marine Pte Ltd [1999] 4 SLR 673. The appellate court held, inter alia, that where cumulative remedies are available to a plaintiff, the latter cannot recover, in the aggregate, an amount in excess of his loss (see also Tang Man Sit at 198).

[37] I now move away from the common law position to consider the question of what is meant by “the same infringement” in s 67(2) of the Act. The defendants relied on Spring Form for the meaning of “same infringement” in s 67(2) of the Act. In that case, the plaintiffs, the patentee and the exclusive licensee of the patent, sued Worlds Apart for the infringement of its patent. Separately, the plaintiffs commenced an action against two of Worlds Apart’s customers. Additionally, the plaintiffs commenced an action against two other defendants, Toy Brokers and its controlling mind Brennan, but this action was settled by a consent order in which the plaintiffs received an account of profits from the defendants. One of the issues addressed by Pumfrey J was whether the exclusive licensee and the patentee could claim both profits and damages. The other was how the account of profits worked where there was a chain of distribution. In answering the first question, Pumfrey J examined s 61(2) of the Patents Act 1977 (c 37) (UK) (“the English Patents Act 1977”), which is in pari materia to our s 67(2), as follows (at 287):

Pumfrey J concluded that the exclusive licensee has to make the same election as the patentee because the exclusive licensee shares a common cause of action with the patentee.

[38] The definition of “infringement” in Spring Form seemingly departs from the existing common law principle that claimants in patent infringement cases must elect between the remedies of damages and an account of profits. As noted earlier, the remedy for an account of profits originated from common law (in the case of Neilson v Betts) and was apparently only introduced in statutory form in the English Patents Act 1949 (c 67) (UK). There was no statutory rule requiring an election until the English Patents Act 1977. Cornish and Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (Sweet & Maxwell, 6 Ed, 2007) commented as follows (at 79-80):

What comes to mind here is the established principle of statutory interpretation that the legislature is not presumed to take away existing rights except where it is expressly spelled out in the provision itself or by necessary implication. Notably, the Court of Appeal in Leong Wai Kay v Carrefour Singapore Pte Ltd [2007] 3 SLR 78 at [13] approved the passage in In re Cuno (1889) 43 Ch D 12 where Bowen LJ said (at 17):

[39] Section 67(2) has to be construed with this established principle of statutory interpretation in mind. If analysed in the way explained by Pumfrey J, the Spring Form definition would lead to the rather implausible result that separate torts would nonetheless bind the plaintiff to the same remedy. To reiterate, this would be a departure from the common law position where alternative and inconsistent remedies were from two separate causes of action originating from the same set of facts (see Lord Diplock’s speech in Mahesan at p 382). Papps v Mahon [1966] NZLR 288 at 292 helpfully explains the distinction between an additional cause of action and an alternative remedy. Wilson J said:

[40] The concern that prompted Pumfrey J to define “the same infringement” as a single defendant’s activities in respect of a single infringing article or operation of a process was the fact that while manufacture and sale were two separate acts of infringement, the patentee’s loss or the defendant’s profit stemmed from “the whole course of the infringer’s dealing”. To Pumfrey J, it made no sense to allow an account of profits for the unauthorized manufacture of a patented product but damages for the sale of that same product. This is a valid concern. However, this concern alone should not be reason for defining “the same infringement” in such a wide manner contrary to the established rule of statutory interpretation (see [38] above).

[41] One problem identified by Pumfrey J is that it may not be possible to draw a line between what damages or profits can be attributed to one act of infringement and the other when the two are so tightly bound together. That is a quantification problem that does not self-evidently constitute double recovery. When it is alleged that the claims overlap with each other to the extent that they infringe the compensatory principle, it is necessary to look carefully at the basis of each claim, and at whether two lots of compensation are indeed claimed for the same loss. I am satisfied that that is not this case though the limits of the losses claimed will need careful scrutiny in the future, not now. Ultimately, the limit a plaintiff may recover is based on the actual loss suffered by him or the actual profits earned by the defendant, whichever is the greater sum (see Lim Teck Cheng v Wyno Marine Pte Ltd at [38] above). As to the present issue of election, Pumfrey J’s interpretation of the meaning of “same infringement” is wider than the common law position.

[42] Although Pumfrey J considered “the same infringement” to be only a single defendant’s activities in respect of an infringing article or operation of a process, he went on to use that definition in discussing accounts against successive infringers. Pumfrey J said (at 289-290):

[43] Mr Wong pointed out that Pumfrey J’s attention was perhaps not brought to cases in which the claimant obtained damages from the first defendant but an account of profit against the customer of the first defendant. In Catnic Components, the claimant initially sued Hill & Smith Ltd in another action and recovered damages partly on a loss of profits basis and partly on a notional royalty basis. However, the claimant went on to sue the customers of Hill & Smith Ltd, the defendants. Falconer J considered that since there was no “franking” of an infringing article and therefore the claimant was free to pursue any successive purchasers of an infringing product; the claimants were awarded an account of profits from the defendants. Although not in issue, Slade LJ also considered the possibility of alternative remedies against multiple defendants in The Electric Furnace Co v Selas Corporation of America (No. 2) [1987] RPC 23 (CA) at 33 where he said:

Notwithstanding what was said in the passage quoted above, in my view, the question is very much confined to whether a plaintiff can recover damages against one defendant and an account of profits against another in respect of the “same infringement”.

[44] I begin with reiterating the two important aspects of this case. First, UOB and FCC were several tortfeasors causing different damage. The second matter is the contractual relationship created by the ME Agreement for the use of the FCC System. Despite that contractual relationship, Tay J found the defendants separately liable for patent infringement. Tay J at [73] held:

[46] Spring Form is distinguishable for another reason. The Patent was for a process (it covered a method and system for automatic currency conversion) and Main-Line was not a manufacturer. Since the infringement here was of a process, the analysis of Pumfrey J in Spring Form was not helpful. Even if the Spring Form definition of “the same infringement” is accepted, it has no application here because Pumfrey J’s consideration of a situation involving multiple defendants clearly envisaged a single infringing article passing down the distribution chain. The present appeals cannot be compared to a distribution chain where a product is manufactured and then sold.

[47] The distinction mentioned in [46] above is best illustrated by briefly going through the series of events. FCC initially created the FCC System without the consent of Main-Line. The FCC System performed automatic currency identification in essentially the same manner as the Patent although there were minor variations in method. No royalties were paid to Main-Line. At this time, UOB was not involved in the infringement. However, the damage to Main-Line did not end there. Following the creation of the FCC System, FCC negotiated with UOB for the provision of an automatic currency conversion system. FCC succeeded in reaching a deal with UOB and the ME Agreement was inked. In a distribution chain, the manufacturer would not earn any profit after the initial sale of its product. Here, not only had FCC caused damage by failing to pay any royalties to Main-Line in the creation of the FCC System, FCC was also, as argued by Mr Wong, in direct competition with Main-Line for the provision of an automatic currency conversion system to UOB.

[48] The defendants put forward the FCC System as a singular infringement of an operation of a process which caused no additional damage after its creation by FCC. The essence of the defendants’ argument, even though it was not framed that way, was that the FCC System had been “franked” because the quantum of damages took into account FCC’s subsequent dealings with UOB. However, as stated, the Patent was of a process and Main-Line was not a manufacturer; thus there could be no “franking” (see Codex v Racal-Milgo at [20] above). UOB later used and offered for use to its merchant clients the point of sale terminals linked to the FCC System, thereby infringing the Patent itself. This was a fresh infringement. As argued in Catnic Components (at p 421), each infringing act potentially causes damage, although the establishment of damages was a question for the enquiry proper.

[49] Since UOB’s wrongdoing (ie, the use and offer for use to its merchant clients) was separate from FCC’s wrongdoing, Main-Line was entitled to ask for an account of profits from UOB despite its election to ask for damages from FCC. The election in s 67(2) of the Act has no application here as the remedies are cumulative. At any rate, the “same infringement” referred to in s 67(2) of the Act is not as broad as Pumfrey J suggested in Spring Form. In addition, the occasion to scrutinise whether the claims overlap with each other to the extent that they infringed the principle against double recovery, if at all, is at the assessment stage. As a matter of law, the claims seemed to me to be arguable, and I saw no reason why this remedy for an account could not be available to Main-Line if it wished to pursue it against UOB and, at the same time, pursue against FCC a different remedy for damages. Sustaining each remedy is another matter depending on the evidence as to whether, for instance, the whole of the profit (if any) made by UOB is attributable to the infringement. For purposes of the Registrar’s Appeals, given the common ground that UOB obtained commission from FCC, on the face of it, UOB was enriched to the extent that the commission was earned in breach of s 66(1)(b) of the Act. UOB took a benefit to which it was not entitled and by way of redress, it is proper to ask UOB to restore it. On the other hand, Main-Line is not required to prove damage to avail itself to the remedy for damages under s 67(1) of the Act (see Buckley LJ’s speech in SmithKline Corp v DDSA Pharmaceuticals [1978] FSR 109 at 114).

[50] For completeness, as Mr Wong rightly pointed out, the joint tortfeasorship of the defendants was not pleaded. At any rate, the evidence did not support the circumstances creating joint tortfeasorship, namely, principal and agent, master and servant, and “two persons who agree on common action, in the course of, and to further which, one of them commits a tort” (per Scrutton LJ in The Koursk [1924] P 140 at 155). In infringement of patent cases, a third party who had a common design with the defendant may also be a joint infringer (see generally Unilever Plc v Gillette (UK) Ltd [1989] RPC 583). As stated above, there was a substantial period of time in which FCC was infringing on the Patent through its design and manufacture of the FCC System, of which UOB did not play a part in.