The court ruled that the plaintiff did not prove infringement of its patent as the defendants' VCDs did not utilize the patented digital transmission system, and the patent had expired.

% 13.10.2025

INTRODUCTION:

1. The present suit, initially filed as CS(OS) 635/2004, has been instituted seeking an order for permanent injunction restraining the defendants from manufacturing, selling and offering for sale Video Compact Disc (“VCD”) systems and media, amounting to infringement of the plaintiff’s Indian Patent No. 175971 dated 28th May, 1990 for a ‘Digital Transmission System’ (“suit patent”), along with rendition of accounts and damages.

2. By way of the order dated 31st May, 2004, this Court had directed that the defendants would not use the patented process claimed in the suit patent in the manufacture/production of its VCDs, without obtaining the necessary license. Subsequently, the said interim direction of this Court was modified vide order dated 05th October, 2004, wherein, the parties had handed over an application recording a settlement governing the interim relief claimed in the suit. Accordingly, vide order dated 05th October, 2004, the interim order dated 31st May, 2004 was modified in the following manner:

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“1. The defendant claims that it is not infringing Patent No. 175971 of the plaintiff and will not do so till the disposal of the suit.

2. The trial of the suit will be completed within six months from the date of the order and both the parties will assist the Local Commissioner and the Court in adhering to this schedule.

3. In the meantime the defendant will file three monthly accounts of the production and sales of VCDs. The defendant will make sure and undertake that in case they are found to be infringing the patent of the plaintiff they will pay the royalty and will not encumber or alienate properties of appropriate value to ensure this.

4. The evidence in the case will be recorded before a Local Commissioner. The parties shall be at liberty to use technical experts. The defendant No. 2 will disclose the figures of VCD production and sales on affidavit from date of commencement of production till September, 2004 on affidavit.”

This order will govern the proceedings during the pendency of the suit.

The application stands disposed of accordingly.

The application for interim relief being IA No. 3784/2004 also stands disposed of accordingly.

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(Emphasis Supplied)

3. Based upon the pleadings of the parties, the following issues were framed by the Court vide order dated 07th January, 2005:

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1. Whether the plaint has been instituted, signed and verified by a duly authorised person -- O.P.P.

2. Whether the suit is bad for non-joinder of necessary parties, if so, to what effect -- O.P.D.

3. Whether the plaintiff is the proprietor of Patent No. 175971 and whether the same is a subsisting patent -- O.P.P.

4. In case issue No. 3 is proved in the affirmative, whether the technique used by the defendant infringes Indian Patent No. 175971 -- O.P.P.

5. ?Whether there are already different and better-known techniques available that do digital transmission of data and, therefore, negate Indian Patent No. 175971 -- O.P.D.

6. ?Whether the defendant is using a unique technique as claimed by him, if so, to what effect -- O.P.D.

7. Whether the plaintiff is entitled to claim Rs. 20 lakhs as damages as claimed by it -- O.P.P.

8. To what other relief, if any, is the plaintiff entitled.

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4. This Court notes that the suit patent expired during the course of present proceedings on 28th May, 2010, and it was recorded in this Court’s order dated 17th July, 2023, that the only surviving issues relate to infringement and damages.

5. Furthermore, two Local Commissioners were appointed by this Court, vide order dated 31st May, 2004, to visit and inspect the premises of the defendants at BCI Optical Disc Ltd., 2, S.S.I. Industrial Area, G.T. Karnal Road, Delhi – 110033 and 163, HSIDC Industrial Complex, Kundli, Haryana and to take samples of infringing VCDs, prepare inventory of equipment, replicators, etc.

6. Pursuant thereto, two local commissions were conducted at the respective premises o