Section 3 in High Court Of Delhi Rules Governing Patent Suits, 2022
3. Content of Pleadings
A. PlaintThe Plaint in an infringement action shall, to the extent possible, include the following aspects:(i)Brief background of the technology, technical details, description of the suit patent(s) and the invention covered by the suit patent, description of the Plaintiff’s product or process, if any;(ii)Ownership details of the patent(s), the details of the patent(s) granted in India including the date of the application;(iii)Any other patent applications filed, withdrawn or pending including divisional applications related to, or emanating from, the suit patent or the priority patent application in India;(iv)Brief summary of international corresponding applications/patent(s) and grant thereof including details of worldwide protection for the invention;(v)Brief prosecution history of the suit patent(s(vi)Details of any challenge to the suit patent(s) and outcome thereof;(vii)Details of orders, if any, passed by any Indian or international court or tribunal, upholding or rejecting the validity of the suit patent or a patent which is for the same or substantially the same invention;(viii)Information as to whether the patent(s) is being enforced for the first time in India;(ix)Precise claims versus product (or process) chart mapping or in the case of SEPs, claim chart mapping through standards;(x)Infringement analysis explained with reference to the granted claims in the specification. Details of the allegedly infringing product or process, the manner in which infringement is being alleged including, if available, a description of the defendant’s process;(xi)Details of licenses granted qua the suit patent or the Plaintiffs relevant portfolio, to the extent feasible;(xii)Summary of the relevant correspondence entered into between the parties relating to the suit patent(s) or relevant portfolio;(xiii)Preliminary list of experts, if any;(xiv)Details of sales by Patentee and/or statement of royalties received qua the suit patent(s) or the portfolio, wherever feasible and if relied upon by Plaintiff;(xv)The remedy/relief which the Plaintiff seeks and quantification of damages (could be based on estimated loss whether due to lost profits and/or royalties incurred by the Plaintiff), interest and costs.B. Written StatementThe Written Statement in an infringement action shall, to the extent possible, include the following aspects:(i)Defences of non-infringement and/or grounds for invalidity of the suit patent, if any, shall be pleaded. In addition, if revocation of the suit patent is being sought, a separate counter-claim shall be filed;(ii)To support non-infringement, the written statement shall contain a response to the Plaintiff’s claim chart as also a technical analysis. It may be accompanied by a technical report;(iii)Other defences for non-grant of injunction and damages shall be raised in the written statement;(iv)Details of any challenge to the suit patent either at the stage of pre-grant opposition/post-grant opposition or by way of revocation;(v)If the Defendant is willing to take a license, the quantum of royalty shall also be specified. This shall be without prejudice to the Defendant’s stand on issues of non-infringement and invalidity;(vi)If the Defendant raises a case of non-infringement, the products/process/technology being used by the Defendant would also be specified. Onus of proving infringement would, however, be in terms of Section 104A of the Act;(vii)The written statement may also contain details and the exact description of the allegedly infringing products and details of manufacture, sale, import, export, in terms of quantity as well as revenue of the allegedly infringing products or products made from the allegedly infringing process;(viii)Details of any relevant correspondence relating to the suit patent or relevant portfolio;(ix)Details of any steps taken for seeking regulatory approval and the status thereof, in respect of the product qua which infringement is alleged;(x)Details of any patent applications filed in India or internationally, by the Defendant, its group companies, affiliates, relating to the allegedly infringing product/process;(xi)Details of any licenses and cross licenses entered into by the Defendant, its group companies, affiliates etc. relevant to the allegedly infringing product including royalties paid or received.C. Counter ClaimThe Counter-claim shall be precise as to the grounds that are raised under Section 64 of the Act. The grounds as to lack of novelty or inventive step shall be supported by relevant prior art documents. The said documents would be listed in the counter-claim and the specific extracts relied upon shall be referenced. All the prior arts and literature shall be attached to the counter- claim. The prior art documents have to be precise and the counter-claim shall contain a chart as to which specific claims are hit by which prior art or combinations thereof. If a counter-claim is filed seeking reliefs on the ground of non-infringement, then the requirements for a Suit under Section 105 of the Act shall be followed.D. ReplicationThe Replication to be filed shall briefly summarise the Plaintiff’s case and the Defendant’s case. Thereafter, it shall give a para-wise reply to the written statement. If any of the prior arts cited by the Defendant to allege invalidity of the suit patent have been considered during the prosecution of the patent, or during opposition proceedings, details thereof shall be provided in the Replication.E. Written statement to the Counter-claim and Replication in the Counter-claim shall follow a similar pattern as per Clause B or Clause C above, as may be applicable.F. In a suit under Section 105 of the Act seeking declaration of non-infringement, the Plaintiff shall specify the scope of the claims, the product/process being implemented by the Defendant claimed to be non-infringing and the technical/legal basis on which declaration is being sought.In such a case, a claim construction brief and a non-infringement brief shall accompany the suit along with a technical report. The Plaintiff shall also provide details of any proceeding(s) filed by the patentee against the Plaintiff in respect of the same, or substantially the same, invention.G. In a suit under Section 106 of the Act for injunction against groundless threats, the Plaint shall contain the following:(i)Nature of the threat, whether oral or documentary;(ii)If the threat concerns a patent which has been granted and if its validity is being challenged, an invalidity brief to accompany the Plaint;(iii)Any correspondence exchanged between the parties.H. Original petitions under Section 64 of the Act seeking revocation of patents shall follow a similar pattern as a counter-claim seeking revocation with modifications mutatis mutandis.
