Telefonaktiebolaget LM Ericsson (Publ) v. Intex Technologies (India) Ltd.

Relevant Acts and provisions

Code of Civil Procedure, 1908

Section Order XXXIX Rule 1

Patents Act, 1970

Section 108Section 48

Provisions considered: Sections 48 and 108 of the Patents Act, 1970, applied to interim relief for standard essential patents.

Brief facts

Ericsson sued Intex for infringing several Indian patents essential to telecommunications standards after Intex declined to take a licence on fair, reasonable and non-discriminatory terms despite prolonged negotiation. The Single Judge held there was a prima facie case of infringement and essentiality, found Intex an unwilling licensee, and directed it to deposit interim royalty pending trial. Both Ericsson and Intex cross-appealed the interim order to a Division Bench.

Issues before the Court

1. Were Ericsson's licensing offers and Intex's conduct consistent with obligations to license on fair, reasonable and non-discriminatory terms?
2. Was the method of proving essentiality and infringement of a standard essential patent sound at the interim stage?
3. Could the Single Judge require interim security partly in cash?

Court's findings

The Court held that the obligation to license on fair, reasonable and non-discriminatory terms is reciprocal: a patentee shows willingness by making a good-faith licence offer, while an implementer must engage diligently and back any counter-offer with meaningful security rather than remain a holdout while continuing to sell infringing devices. It rejected the contention that the patentee had to prove infringement of every asserted patent before any interim relief could issue, holding that prima facie infringement of a representative standard essential patent, established through claim charts mapping the patent to the standard and the standard to the accused device, suffices at the interim stage.

The Court held that confining holders of standard essential patents to post-trial damages would reward prolonged infringement and undermine the incentive to negotiate, so interim monetary protection pending trial is an appropriate equitable remedy. It found no infirmity in requiring a substantial cash component in the deposit given the implementer's conduct through the litigation.

The Court declined to reappraise the disputed technical findings on essentiality recorded by the Single Judge, treating those as appropriately made at the interim stage.

Decision

Both cross-appeals dismissed; the Single Judge's interim order directing Intex to pay royalty as security was upheld in substance.

Keywords

FRAND Interim Injunction Patent Infringement Standard Essential Patent Unwilling Licensee