Delhi High Court - Orders
Interdigital Vc Holdings Inc & Ors vs Guangdong Oppo Mobile ... on 26 May, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~12
* IN THE HIGH COURT OF DELHI AT NEW DELHI
[Corrigendum as per order dated 26th May, 2022]
+ CS(COMM) 707/2021&I.As. 17456/2021, 17457/2021, 17458/2021,
17459/2021
INTERDIGITAL VC HOLDINGS INC & ORS. ..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Vaishali
Mittal and Mr. Siddhant Chamola,
Advocates. (M:8373944051)
versus
GUANGDONG OPPO MOBILE TELECOMMUNICATIONS
CORP. LTD & ORS. ..... Defendants
Through: Ms. Julien George, Ms. N. Parvati &
Mr. Vivek Ayyagiri, Advocates.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 25.04.2022
1. This hearing has been done through hybrid mode.
I.A.17459/20212. This is an application filed by the Plaintiffs seeking discovery by way of interrogatories from the Defendants. Heard ld. Counsel for the parties.
3. The following directions are issued in respect of the questions annexed to the application:
(i) Insofar as Question No.1 is concerned, the parties, with whom the license agreements for the HEVC/H.265 Standard Essential Patents have been entered into, if any, be disclosed. Terms of the said agreements and the copies thereof need not to be disclosed at this stage. If any of the agreements have lapsed, expired or are current, the same would be mentioned without Signature Not Verified Digitally Signed CS(COMM) 707/2021 Page 1 of 7 By:DEVANSHU JOSHI the dates.
(ii) Insofar as Question Nos.2 to 5 & 10 are concerned, the same shall be answered and answers shall be provided to the ld. Counsel for the Plaintiffs.
(iii) Insofar as the Question Nos.6 to 9 & 11 are concerned, the requisite details shall be placed before the Court in a sealed cover. The Court shall peruse the said details and take a decision at the appropriate stage as to whether the same are to be disclosed to the Plaintiffs or not.
4. I.A. 17459/2021 is disposed of in the above terms. I.A.17458/2021 (u/O II Rule 2 CPC)
5. This is an application under Order II Rule 2 CPC filed by the Plaintiffs, seeking leave to add/amend their claims at an appropriate stage of the proceedings.
6. The present suit has been filed seeking permanent injunction restraining the infringement of the Plaintiff's rights in patents, which are claimed to be standards essential to the High Efficiency Video Encoding (HEVC/H.265) standard. The suit relates to patents being nos.IN242248, IN299448, and IN308108. The case of the Plaintiffs is that apart from the above patents, there may be various other patents, which would also be infringed by the Defendants. The patents are merely representative patents as the Plaintiffs' portfolio is very large. Further, the devices which have been impugned in the present suit are mentioned in paragraph 4 of the application as 4(a) to (i). The same are as below:
"(a) Oppo A53,
(b) Oppo A74 5G, Signature Not Verified Digitally Signed CS(COMM) 707/2021 Page 2 of 7 By:DEVANSHU JOSHI
(c) Oppo Reno 5 Pro,
(d) OnePlus 9 Pro,
(e) OnePlus 8,
(f) OnePlus 9R 5G,
(g) Realme 8 5G,
(h) Realme C 25, and
(i) Realme 8 Pro."
7. The Plaintiffs suspect that there would be various other devices which would also be infringing.
8. This Court had an occasion to consider a similar application in CS (COMM) 304/2021 titled Nokia Technologies OY v. Guangdong Oppo Mobile Telecommunications Corp. Ltd. & Ors.
9. In this application, the Plaintiffs inter alia, seek leave to add further patents from their portfolio in respect of which infringement may occur in the future and also seeks leave to add new devices which may be infringing. The present application seeks the following prayers:
"a. Grant leave to the Plaintiffs to add to or amend claims as prayed for in the plaint filed in the present proceedings, including a claim for infringement of additional patents held by the Plaintiffs which are found to be infringed by the Defendants' devices at a later stage in the proceedings;
b. Grant leave to the Plaintiffs to amend their claim for infringement of patents by including additional devices manufactured and/or sold by the Defendants which are found to be infringing at a later stage in the proceedings;
c. Grant leave to the Plaintiffs to enhance its claim for damages at a later stage in the present proceedings; d. Grant leave to the Plaintiffs to amend the plaint by adding a claim for infringement of the Signature Not Verified Digitally Signed CS(COMM) 707/2021 Page 3 of 7 By:DEVANSHU JOSHI (representative) asserted patents in the plaint by virtue of them being essential to standards other than what is currently pleaded;
e. Grant leave to the Plaintiffs to amend the plaint, and include claims for infringement of any additional granted claim(s) of the suit patents - Patent No. IN 242248, IN 299448 and IN308108, which are found to be infringed by the Defendants' devices'"
10. A perusal of the prayers extracted above shows that the Plaintiffs seek leave of this Court to reserve rights in respect of the following:
1) Addition of claim for infringement of additional claims of the suit patents.
2) Addition of further patents which may be found to be infringing by the Defendants as per the Plaintiffs.
3) Addition of further devices/models which may be found to be infringing, which may be already in existence or that may be launched by the Defendants in future.
11. In patent infringement suits, this Court notices that suits are filed on the basis of the claims/patents asserted in respect of devices which may be readily available on which testing is done to check infringement. During pendency of the suit, the Defendant may launch new models or the Plaintiffs may realize that further patents or claims are also infringed. However, in every such case, filing of fresh suits or moving amendment applications under Order VI Rule 17 CPC would delay and complicate the adjudication of the suit. There is, therefore, a need to give some flexibility in terms of addition of new devices/models which may be found infringing by the Plaintiffs qua the suit patent in the existing suit itself. The said need is felt by the Court considering the nature of a patent infringement suit where the Signature Not Verified Digitally Signed CS(COMM) 707/2021 Page 4 of 7 By:DEVANSHU JOSHI suit is filed based upon certain patents, which are asserted qua certain devices which may be found to be infringing in order to avoid the multiplicity of proceedings.
12. Accordingly, insofar as the assertion of additional claims or adding of further devices/models qua the suit patents are concerned, the Plaintiffs are given liberty to assert the same by means of a separate affidavit which may be filed by the Plaintiffs with test reports, if any, prior to framing of issues. If the issues have already been framed in the suit, then the same may be asserted by means of affidavit in evidence, which may be filed by the Plaintiffs. In response to such an affidavit of the Plaintiffs, the Defendants would be given liberty to rebut the same at the appropriate stage.
13. Insofar as addition of further patents is concerned, if the Plaintiffs wish to assert infringement of other patents, a fresh suit would have to be filed by the Plaintiffs. However, the Plaintiffs would be at liberty to pray for consolidation at the appropriate stage.
14. Accordingly, the present application is disposed of with the direction that the Plaintiffs are at liberty to avail of its remedies in accordance with law in respect of any additional patents, which it may wish to assert against the Defendants. As far as addition of model/devices that are found to be infringing the suit patents is concerned, the Plaintiffs are at liberty to file an affidavit in accordance with the directions issued above, adding the said models/devices or asserting additional claims qua the suit patents, in the present suit itself. Both the parties have no objection to the above directions being passed.
15. The application under Order II Rule 2 CPC being I.A. 17458/2021 is disposed of in the above terms.
Signature Not Verified Digitally Signed CS(COMM) 707/2021 Page 5 of 7 By:DEVANSHU JOSHICS(COMM) 707/2021 & I.As. 17456/2021 (for stay) & 17457/2021
16. These are applications filed by the Plaintiffs seeking stay and payment on money by the Defendants till the decision in the stay application.
17. The submission of Mr. Anand, ld. Counsel for the Plaintiffs, is that negotiations have been going on between the parties for the last several months. Offers and counter-offers are being exchanged between the parties. He further submits that considering the financial standing of the Defendants, a pro-tem arrangement ought to be put in place binding the Defendants at least to deposit the admitted counter offer amount. He submits that the Defendants' financial situation is precarious owing to the assets and liabilities, which the Defendants have in India. Reliance is placed upon the report of the chartered accountant M/s. S. Ramanand Aiyar & Co. to show that despite the fact that the revenue of the Defendants is increasing and for the year ending 31st March, 2020, the revenues are in the range of Rs.38000 crores, however the Defendants are shown to be making losses. He further submits that the liabilities of the Defendants as against their assets is higher and thus, the admitted amount ought to be deposited by the Defendants in Court.
18. On the other hand, Ms. Julien George, ld. Counsel for the Defendants, submits that the Defendants have a large amount of immovable assets in India and she would like to file an affidavit stating the number of assets and their actual value. Let the said affidavit of assets be filed on behalf of all Defendants, within two weeks.
19. Ld. Counsel for the Defendants submits that the Written Statement is under objections due to delay in filing the same. The delay is condoned, let Signature Not Verified Digitally Signed CS(COMM) 707/2021 Page 6 of 7 By:DEVANSHU JOSHI the Written Statement be taken on record. Let the Replication be filed within 6 weeks.
20. List before Joint Registrar on 22nd July, 2022.
21. List for further hearing on the pending applications, on 26th May, 2022.
PRATHIBA M. SINGH, J.
APRIL 25, 2022 dj/sk Signature Not Verified Digitally Signed CS(COMM) 707/2021 Page 7 of 7 By:DEVANSHU JOSHI