Koninklijke Philips N.V. v. Maj. (Retd.) Sukesh Behl & Anr.

Relevant Acts and provisions

Patents Act, 1970

Section 108Section 3(k)Section 48Section 8

Provisions considered: Sections 3(k), 8, 48 and 108 of the Patents Act, 1970, in suits for infringement of a standard essential patent.

Brief facts

Philips sued several DVD disc and drive manufacturers and traders for infringing its Indian patent covering a channel-coding method declared essential to the DVD standard. The defendants resisted on the ground that the claims covered an unpatentable computer programme or mathematical method under Section 3(k), and separately alleged that Philips had failed to disclose corresponding foreign applications as required by Section 8. Philips maintained the patent was valid, essential and infringed, and sought a permanent injunction together with damages.

Issues before the Court

1. Did claims to the channel-modulation method fall foul of the Section 3(k) bar on computer programmes and mathematical methods?
2. Did any deficiency in the plaintiff's Section 8 disclosures warrant revocation?
3. Was the patent essential to the standard and infringed, and what relief followed?

Court's findings

The Court held that although parts of the claims engaged with signal-processing methods, the patent as a whole disclosed a technical effect in signal modulation for data storage that was essential to compliance with the DVD standard, and infringement followed from the defendants' manufacture of standard-compliant products.

The Court held that the plaintiff had not deliberately or wilfully suppressed material foreign-prosecution information under Section 8, treating the disclosure lapses as adequately explained and not amounting to a ground for revocation.

The Court held that because the patent was essential to an industry standard, the defendants' unlicensed exploitation of the format necessarily infringed it, and used the applicable royalty rate for the standard to assess damages rather than treating essentiality as a bar to relief. It awarded compensatory damages calculated on the defendants' sales, together with aggravated damages reflecting continued infringement after notice.

Decision

Permanent injunction granted against the defendants, with compensatory and aggravated damages plus interest awarded to Philips.

Keywords

Damages FRAND Patent Infringement Section 3(k) Standard Essential Patent