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HIGH COURT OF DELHI
KONINKLIJKE PHILIPS N.V. – Appellant
Versus
VIVO MOBILE COMMUNICATION CO. LTD & ORS. – Respondent
CS(COMM)-383/2020
Third-party license agreements and answers to interrogatories can be ordered to be produced in a patent infringement suit involving SEPs to determine whether the defendant's products incorporate the patented technologies and whether the defendant has a licensing arrangement with other companies.
Headnote:
INTELLECTUAL PROPERTY - STANDARD ESSENTIAL PATENTS - DISCOVERY - [The court allowed the plaintiff's application for discovery of third-party license agreements and answers to interrogatories from the defendants in a patent infringement suit involving standard essential patents (SEPs). The court held that the documents and answers sought were relevant to determine whether the defendants' mobile devices incorporated the patented technologies and whether the defendants had a licensing arrangement with Qualcomm and other companies.]
Fact of the Case:
The plaintiff, Koninklijke Philips N.V., filed a suit against the defendants, Vivo Mobile Communication Co. Ltd. and others, alleging infringement of five of its patents related to telecommunications technologies. The plaintiff sought a permanent injunction to restrain the defendants from manufacturing, selling, or offering for sale mobile devices that infringed the patents and damages for past infringement. The defendants denied infringement and claimed that they had obtained their chipsets from Qualcomm and MediaTek, which were not parties to the suit.
Finding of the Court:
The court held that the third-party license agreements executed between the defendants and Qualcomm and other companies would throw light on whether the patents were incorporated in the chipset or the handset and what technology was transferred to the defendants. The court also held that the interrogatories seeking information about the defendants' compliance with ETSI standards and their licensing arrangements with Qualcomm and other companies were relevant to the determination of infringement and FRAND.
Issues: 1. Whether the defendants' mobile devices incorporated the patented technologies. 2. Whether the defendants had a licensing arrangement with Qualcomm and other companies. 3. Whether the third-party license agreements and answers to interrogatories sought by the plaintiff were relevant to the determination of infringement and FRAND.
Ratio Decidendi: 1. The court relied on the provisions of Order XI Rules 2 & 14 CPC as amended by the Commercial Courts (Amendment) Act, 2018, which allow for discovery of documents and answers to interrogatories if they are relevant to the determination of the dispute. 2. The court held that the third-party license agreements and answers to interrogatories sought by the plaintiff were relevant to determine whether the defendants' mobile devices incorporated the patented technologies and whether the defendants had a licensing arrangement with Qualcomm and other companies. 3. The court noted that the defendants' contention that the patents were incorporated in the chipset and not in the handset, while the plaintiff insisted that the SEPs were in the handset, could be settled by the production of the third-party license agreements.
Final Decision: The court partly allowed the plaintiff's application for discovery. The defendants were directed to file an affidavit along with the third-party agreements executed between Qualcomm and the defendants and other companies within three weeks in a sealed cover. The plaintiff was allowed to furnish the names of two experts and eight lawyers who would be authorized to inspect the third-party agreements.
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IN THE HIGH COURT OF DELHI AT NEW DELHI
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Pronounced on: 7th January, 2022
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CS (COMM) 383/2020 & CC(COMM) 4/2021
KONINKLIJKE PHILIPS N.V.
..... Plaintiff
Through:
Mr. Chander Lall, Senior Advocate
with Mr. Ashutosh Kumar, Mr.
Swamil Dey, Ms. Vrinda Bagaria,
Mr. Munesh Sharma, Mr. Vinod
Chauhan & Ms. Ananya Chugh,
Advocates
versus
VIVO MOBILE COMMUNICATION CO. LTD & ORS.
.....Defendants
Through:
Mr. Saikrishna Rajagopal, Ms.
Julien George, Ms. Anu Paarcha,
Mr. Arjun Gadhoke, Mr. Avijit
Kumar, Mr. Aniruddh Bhatia, Mr.
Skanda Shekhar, Ms. N. Parvati
and
Mr.
Vivek
Ayyagari,
Advocates for D-1 and D-2
Ms. Nupur Aggarwal and Mr.
Maanav Kumar, Advocates for D-3
CORAM:
HON'BLE MS. JUSTICE ASHA MENON
O R D E R
I.A. 3048/2021 (by the plaintiff under Order XI, Rules 2 and 14 CPC
as amended by the commercial Courts (Amendment) Act, 2018 read
with Section 151 CPC, seeking discovery by interrogatories and
production of certain documents from the defendants No.l and 2)
1.
This application has been filed by the plaintiff under Order XI
This is a digitally signed Judgement.
NEUTRAL CITATION NO: 2022/DHC/000085
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Rules 2 & 14 CPC as amended by the Commercial Courts (Amendment)
Act, 2018 read with Section 151 CPC seeking discovery by
interrogatories and production of certain documents from the defendants
No.1 and 2.
2.
It may be mentioned here that the plaintiff alleges that the
defendants were infringing five of its patents, namely, (i) Indian Patent
Number: IN 275419: A method of operating a radio communication
apparatus and a radio communication apparatus; (expires on 10.8.2026),
(ii) Indian Patent Number: IN 271469: A method of multiplexing data
packets having different assigned priorities; (expires on 4.11.2025), (iii)
Indian Patent Number: IN 228133: A method of operating a radio
communications system; (expires on 20.4.2024), (iv) Indian Patent
Number: IN 221703: A method of operating a radio communication
system; (expired on 8.5.2020 and is being asserted for past infringement),
(v) Indian Patent Number: IN 211041: A radio communication system
and a method for operating the same. (expired on 24.12.2019 and is being
asserted for past infringement).
3.
It is stated that the suit patents (including the expired patents) relate
to four different technologies used in the field of telecommunications
namely, (i) Universal Mobile Telecommunication System (UMTS)
technology (sometimes also referred to as 3G or WCDMA), (ii) High-
Speed Packet Access (HSPA) technology, (iii) Evolved High-Speed
Packet Access (HSPA+) technology and, (iv) Long Term Evolution
(LTE) technology. These are all technologies which the plaintiff claims
have been standardized by Third Generation Partnership Project (3GPP)
This is a digitally signed Judgement.
NEUTRAL CITATION NO: 2022/DHC/000085
Page 3 of 10
and adopted by various standard setting organizations (SSOs)/Standard
Development
Organizations
(SDOs)
including
European
Telecommunications Standards Institute (ETSI). It is also claimed that in
India too, these are the prescribed standard essential patents, which are
usually exploited by manufacturers/importers, including the defendants.
4.
The suit has been filed seeking a decree of permanent injunction to
restrain the defendants from manufacturing/assembling, importing,
selling, offering for sale, advertising including through their and third
party websites, mobile phones including the models mentioned in the
plaint and any future or other devices or models, that include UMTS
enhancements (HSPA, HSPA+) and LTE technologies and result in
infringement of the suit patents until the defendants have procured Fair,
Reasonable and Non- Discriminatory (FRAND) license from the plaintiff.
Inter-alia, damages have also been sought for the past use of all the
patents including those that have since expired.
5.
Mr. Chander Lall, learned senior counsel appearing
