INDIA Trends and Developments Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
a measure against potential misuse of the pat- ent system. Ericsson v Lava In 2024, the Delhi High Court also pronounced the first post-trial decision in a cellular SEP dis- pute (and second post-trial SEP judgment). This judgment was a significant turning point in the already evolving SEP jurisprudence in India. It outlined the Delhi High Court’s approach to key issues that usually arise in an SEP dispute, such as a determination of validity and essentiality of patents, calculation of damages and the FRAND obligations imposed on parties. In this judgment, the Delhi High Court set forth the two-fold step for establishing infringement in SEP cases – ie, mapping the patent to the standard and mapping the impugned product to the standard. Further, the court also remarked that the claim mapping charts are the “key tool” in providing clarity on essentiality of patents. The Court acknowledged the principles laid down in Huawei Technologies Co Ltd v ZTE Corp and Another and in Unwired Planet International Ltd v Huawei Technologies Co Ltd and Others on the issue of FRAND determination and negotiations between the parties. On the issue of determining royalties and dam- ages, the Court clarified that the comparable licence approach was more beneficial than the top-down approach for calculation of royalties, since the comparable approach would rely on the FRAND rates negotiated under similar condi- tions. Further, these royalties would be calculat- ed on the end product rather than on one com- ponent of the product – ie, a chipset. Damages in this case were calculated on the basis of the lost FRAND royalty – and that too for the entire patent portfolio, not just the asserted patents in the suit. These findings clearly indicate that here
the Delhi High Court attempted to align with the principles governing SEPs as laid down in other jurisdictions, to develop a neutral jurisdiction for resolving SEP disputes. IDG v OPPO (2024: DHC: 4610) This judgment of the Delhi High Court dealt with the issue of importance of third-party agree- ments in an SEP dispute. The Court herein clari- fied that, in an SEP dispute for determination on the issue of FRAND, the implementer’s third-par- ty licence agreements have no relevance, and it is only the plaintiff’s third-party agreements that are required for this purpose. The Court also outlined the hurdles to be crossed by the plaintiff in an SEP litigation, since the onus is on the SEP holders to show infringement by the implementer/defendant. Therefore, positive evi- dence has to come from the plaintiff rather than the defendant. This judgment was re-affirmed by way of another order by the Delhi High Court, wherein the Court once again clarified that, in order to confirm the veracity of FRAND claims as stated by a plaintiff and to assess whether the defendant has been an unwilling licensee, the plaintiff’s third-party licence agreements are vital. Additionally, the Delhi High Court has upheld the jurisprudence first propounded in IDG v Xiaomi , and held that disclosure of third-party licence agreements should not be restricted only to external attor- neys of the defendant, but that access must be given to in-house members of the defendants, albeit under the aegis of a confidentiality club and thereby eliminating any concerns of breach of confidentiality and ensuring a transparent mechanism for FRAND resolution. Conclusion These trends represent significant developments in Indian patent jurisprudence, with practical
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