Delhi High Court Denies Interim Relief To Freebit's 'Improved Earpiece', Imposes Cost Of 5 Lakhs For Suppressing Material Facts

The Delhi High Court recently dismissed an application for interim injunction filed by leading supplier of in-ear products “Freebit AS”, observing that it had suppressed material facts and the suit patent was vulnerable to revocation. Referring to the High Court of Delhi Rules Governing Patent Suits, 2022, Justice Prathiba M Singh explicated that, “it is necessary, to the extent possible, for a plaint to include details of corresponding foreign patent applications, as well as information relating to any orders passed by a Court or Tribunal concerning the same or substantially similar invention as asserted in the suit.” In the analysis, the court cited Supreme Court's decision in Arunima Baruah v. Union of India to opine that the principle “He who comes into equity must come with clean hands” is relevant to patent infringement and a plaintiff's failure to disclose revocations or invalidations of corresponding foreign patents has material bearing on the case. The application was filed by Freebit seeking injunction in respect of its “Improved Earpiece”. As per claims, it had designed a “C-Shape earphone interface” and had licensees including Boat, JBL, Skullhandy, Harman, etc. which paid royalties for its patent portfolio. The suit patent was filed in India, claiming priority from a Norwegian Patent Application, and disclosed an ear unit designed for stable and comfortable attachment to the ear. It was granted in 2016. The defendant countered that Freebit had misrepresented and suppressed material facts, inasmuch as corresponding foreign patents had been invalidated/refused in several jurisdictions. It also challenged the validity of the suit patent based on decisions of the corresponding foreign patents. On a perusal of the plaint, the court found that in some countries, where the suit patent had either been revoked, refused, abandoned, or lapsed, the status had been shown by Freebit as either pending or granted. It was held there was a “gross suppression and misrepresentation of material facts” by Freebit, which could have a bearing on the case. So far as Freebit sought to contend that Form-3 data itself had been given in the plaint, the court noted that the data was incorrect as a corresponding Japanese patent had been refused a year before the filing of the Form-3 data. After going through judicial precedents, Justice Singh added that the duty of disclosure upon a plaintiff seeking interim relief in IP suits is not limited to facts that bolster its case; rather, it extends to all information that would aid in fair adjudication of the dispute. “The duty of disclosure encompasses not only the submission of all documents pertinent to the current litigation but also an obligation to inform the Court of any previous litigations between the parties, any previous litigations concerning the suit patent, along with their respective outcomes.” In arriving at the conclusion, the court also considered two decisions which impinged upon the validity of the suit patent. These judgments, it said, could not have been held back by Freebit and not filed on record. “…suppression and misrepresentation would undoubtedly affect the Court's willingness to grant equitable relief, as it contradicts the principle of approaching the court with clean hands.” Being of the view that its conduct could not be ignored, the court imposed a cost of Rs.5 lakhs on Freebit. Advocates Shwetasree Majumder, Tanya Varma, Devyani Nath, and Prithvi Gulati appeared for plaintiff (Freebit) Advocates Gaurav Miglani, Tarun Gandhi, Davesh Vashishtha, Sharabh Srivastav, Mallika Chadha, and Nanki Arneja appeared for defendant (Exotic Mile) Case Title: Freebit AS v. Exotic Mile Private Limited, CS(COMM) 884/2023Citation: 2023 LiveLaw (Del) 1340Click here to read/download judgment

Delhi High Court Denies Interim Relief To Freebit's 'Improved Earpiece', Imposes Cost Of 5 Lakhs For Suppressing Material Facts

Debby Jain

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