After a 12-year saga, an Irish technology firm has been awarded $4.79 million in damages from a local rival over the patent breach of a currency conversion system for card payments.
Patent owner Main-Line Corporate Holdings will also keep its earlier $1.96 million payout from a bank, making the award a total of $6.75 million.
The firm had sued both United Overseas Bank (UOB) and First Currency Choice (FCC) for infringing its patent for more than five years. UOB had hired FCC, which offered a similar service to Main-Line.
The High Court had earlier ruled in favour of Main-Line in 2006. That ruling was upheld by the Court of Appeal in 2007.
Related litigation followed and the court decided that UOB should account for profits made, and that damages should be assessed against FCC for sums payable to Main-Line.
The hearing to assess damages was held in the High Court over six days last October. Judge of Appeal Tay Yong Kwang issued a judgment last Thursday.
Besides the issue of damages payable by FCC, the court also looked into the issue of whether there was an outstanding sum that UOB should pay, over and above the payout of $1.96 million that it had made in 2010.
After Main-Line filed its suit against UOB and FCC, the bank had obtained a court order in 2004, indemnifying it from any expense involved in the case.
All parties agreed that the estimated value of the total number of transactions for the infringing period was $627 million. The assessment for damages proceeded on that basis.
Main-Line's patented system allowed a credit card number and the currency involved in a transaction to be identified. It had aimed to use the technology to profit from foreign currency credit card transactions.
The patent protected a system of determining the operating currency of a payment card at the point of sale between a merchant and a cardholder.
The system converts the value of a card transaction from the currency where the point of sale is done to the currency of the card's country of issue. It then allows the cardholder to choose the payment currency.
Judge of Appeal Tay noted that the system contrasts with "common technology where the foreign cardholder has to choose his preferred currency manually at the point of sale terminal, which accordingly carries the potential of operator error".
Because UOB used FCC's services, Main-Line sued both UOB and FCC over the patent breach.
Main-Line's lawyers Wong Siew Hong and Gavin Foo argued that damages payable by FCC should be measured by the profits Main-Line would have made, if it had entered into similar arrangements with UOB.
It also sought $34.5 million in exemplary damages.
FCC's lawyers Koh Chia Ling and Oh Pin-Ping denied the exemplary damages claim and argued that the loss should be recovered from either UOB or FCC only.
UOB's lawyer Eddee Ng argued that no profits were made from new or retained merchants, which could be ascribed to the patent breach, and that no further commissions were owed after the 2010 interim payment was taken into account.
Judge Tay made no further award on Main-Line's claim against UOB.
He also dismissed the claim for exemplary damages against FCC.
The judge computed the damages payable to Main-Line by using FCC's revenue stream under the multi-currency exchange agreement that should have been that of Main-Line's, if not for FCC's infringement of the patent.
The judge derived that the damages payable by FCC to Main-Line for the loss of profits was $4.795 million.
Main-Line's lawyer Mr Wong yesterday said the firm is studying the judgment.
A UOB spokesman said: "We support the court's ruling."
