Standard Essential Patent Owners Can Pray For Interim And Final Injunctive Relief If Infringer Deemed To Be An ‘Unwilling Licensee’: Delhi High Court

Observing that the new technology has blurred national boundaries and given a boost to the international trade as well as infringement, the Delhi High Court has said that global doctrinal interdependence — referring to foreign Court decisions, is an effective and practical way of facilitating harmonization of basic principles of laws, especially when there is nothing contrary in the national laws. In its decision on the appeals against a single judge decision that held Telefonaktiebolaget LM Ericsson's eight suit patents prima facie valid and further ruled that Intex Technologies (India) Limited has prima facie infringed Ericsson's patent, the division bench of Justice Manmohan and Justice Saurabh Banerjee said rapid developments in the technology have posed unprecedented challenges to intellectual property laws."The case at hand illustrates the universally acknowledged truism that ‘law always lags behind technology’," said the court.The court further said intellectual property laws have always been recognised and regarded as territorial, but in today’s world where borders of countries have ceased to have any relevance for trade purposes, enforcement of patent rights and court orders have become a challenge.Intex's principal argument before the court was that the concept of Standard Essential Patents is unknown to India law and that since the Standard Setting Organizations do not check which patents are actually essential and the declarants do not provide any proof of essentiality, the patents in question cannot be presumed to be standard or essential. It was further argued that Single Judge could not have directed it to pay as well as deposit royalty at the interim stage since Standard Essential Patent owners’ only entitlement, even according to law laid down by foreign Courts, is royalties at the end of the trial."Even if the eight suit patents registered in India ... in Ericsson’s portfolio were truly essential, which was yet to be tested in a Court of law, there could be no presumption of essentiality of the entire portfolio of thirty three thousand (33,000) patents on the basis of review of only a handful of patents and there could also be no direction to make payment with regard to the other thirty three thousand (33,000) patents claimed by Ericsson especially when they are not even registered in India," Intex's counsel submitted.Ericsson argued that Intex had acknowledged Ericsson’s patent to be Standard Essential Patent and a licence from Ericsson was required to be taken by Intex. It was duly offered by Ericsson in terms of licence of Standard Essential Patent to Intex, the company said.Standard Essential PatentThe court in the ruling explained that a standard in simple terms is a prescribed list of features or technical specifications in relation to a particular technology. The purpose of the standard is to ensure that every product manufactured as per the standard has certain common design or features in it, so as to ensure compatibility and interoperability of devices or products, it added.The court also said that Standard Essential Patent is “a patent claiming technology that is essential to an industry standard’s use. 'Essential' in the facts of the present case means that a patent is essential to a standard i.e. it is not possible on technical grounds to comply with the standard without infringing the patent, it added."Standard Essential Patents are treated differently from non-Standard Essential Patents- in at least in one respect i.e., the rights of a patentee in case of a Standard Essential Patents are circumscribed by its contractual commitment made to a SSO/SDO to make the patent available to all those who are willing licensees while the term of the patent is subsisting," the court said.---Observing that one will have to adapt foreign jurisprudence with respect to Standard Essential Patent keeping in view the Indian realities, in particular that the judge-population ratio is extremely poor in this country and expeditious disposal of patent suits cannot be expected at the cost of other suits, the court said:"One also cannot lose sight of the fact that legal regimes that do not preserve a reasonable expectation of injunctive relief against infringers in Standard Essential Patent litigations will have a counterproductive “domino effect” that shifts bargaining leverage to implementers in all Standard Essential Patent licensing negotiations, devaluing existing patent-protected technologies and disincentivising firms from developing new technologies".The court said though the Standard Essential Patents are not spoken of in the Patents Act, 1970, but the decision of the high court have long recognised the concept and have adjudicated claims for infringement, security and damages. It referred to Telefonktiebolaget LM Ericsson (PUBL) v. Lava International Ltd and Koninklijke Philips N.V. v. Bhagirathi Electronics & Ors. "The Delhi High Court’s Rules Governing Patent Suits 2022 have...

Standard Essential Patent Owners Can Pray For Interim And Final Injunctive Relief If Infringer Deemed To Be An ‘Unwilling Licensee’: Delhi High Court

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Foreign Jurisprudence On ‘Standard Essential Patent’ Has To Be Adapted In Indian Realities As India’s Judge Population Ratio Extremely Poor And Expeditious Disposal Of Patent Suits Not Expected: Delhi HC

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