Delhi High Court
Koninklijke Philips N.V. vs Vivo Mobile Communication Co. Ltd ... on 7 January, 2022
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Pronounced on: 7th January, 2022
+ CS (COMM) 383/2020 & CC(COMM) 4/2021
KONINKLIJKE PHILIPS N.V. ..... Plaintiff
Through: Mr. Chander Lall, Senior Advocate
with Mr. Ashutosh Kumar, Mr.
Swamil Dey, Ms. Vrinda Bagaria,
Mr. Munesh Sharma, Mr. Vinod
Chauhan & Ms. Ananya Chugh,
Advocates
versus
VIVO MOBILE COMMUNICATION CO. LTD & ORS.
.....Defendants
Through: Mr. Saikrishna Rajagopal, Ms.
Julien George, Ms. Anu Paarcha,
Mr. Arjun Gadhoke, Mr. Avijit
Kumar, Mr. Aniruddh Bhatia, Mr.
Skanda Shekhar, Ms. N. Parvati
and Mr. Vivek Ayyagari,
Advocates for D-1 and D-2
Ms. Nupur Aggarwal and Mr.
Maanav Kumar, Advocates for D-3
CORAM:
HON'BLE MS. JUSTICE ASHA MENON
ORDER
I.A. 3048/2021 (by the plaintiff under Order XI, Rules 2 and 14 CPC
as amended by the commercial Courts (Amendment) Act, 2018 read
with Section 151 CPC, seeking discovery by interrogatories and
production of certain documents from the defendants No.l and 2)
1. This application has been filed by the plaintiff under Order XI
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Signed By:MANJEET KAUR
Signing Date:07.01.2022
21:30:23
Rules 2 & 14 CPC as amended by the Commercial Courts (Amendment)
Act, 2018 read with Section 151 CPC seeking discovery by
interrogatories and production of certain documents from the defendants
No.1 and 2.
2. It may be mentioned here that the plaintiff alleges that the
defendants were infringing five of its patents, namely, (i) Indian Patent
Number: IN 275419: A method of operating a radio communication
apparatus and a radio communication apparatus; (expires on 10.8.2026),
(ii) Indian Patent Number: IN 271469: A method of multiplexing data
packets having different assigned priorities; (expires on 4.11.2025), (iii)
Indian Patent Number: IN 228133: A method of operating a radio
communications system; (expires on 20.4.2024), (iv) Indian Patent
Number: IN 221703: A method of operating a radio communication
system; (expired on 8.5.2020 and is being asserted for past infringement),
(v) Indian Patent Number: IN 211041: A radio communication system
and a method for operating the same. (expired on 24.12.2019 and is being
asserted for past infringement).
3. It is stated that the suit patents (including the expired patents) relate
to four different technologies used in the field of telecommunications
namely, (i) Universal Mobile Telecommunication System (UMTS)
technology (sometimes also referred to as 3G or WCDMA), (ii) High-
Speed Packet Access (HSPA) technology, (iii) Evolved High-Speed
Packet Access (HSPA+) technology and, (iv) Long Term Evolution
(LTE) technology. These are all technologies which the plaintiff claims
have been standardized by Third Generation Partnership Project (3GPP)
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Signed By:MANJEET KAUR
Signing Date:07.01.2022
21:30:23
and adopted by various standard setting organizations (SSOs)/Standard
Development Organizations (SDOs) including European
Telecommunications Standards Institute (ETSI). It is also claimed that in
India too, these are the prescribed standard essential patents, which are
usually exploited by manufacturers/importers, including the defendants.
4. The suit has been filed seeking a decree of permanent injunction to
restrain the defendants from manufacturing/assembling, importing,
selling, offering for sale, advertising including through their and third
party websites, mobile phones including the models mentioned in the
plaint and any future or other devices or models, that include UMTS
enhancements (HSPA, HSPA+) and LTE technologies and result in
infringement of the suit patents until the defendants have procured Fair,
Reasonable and Non- Discriminatory (FRAND) license from the plaintiff.
Inter-alia, damages have also been sought for the past use of all the
patents including those that have since expired.
5. Mr. Chander Lall, learned senior counsel appearing for the
plaintiff, has submitted that the defendants in their written statement have
stated that they were not liable to make any payment to the plaintiff even
under FRAND and as they had obtained their chipsets from Qualcomm
and MediaTek, the defendants were not liable for any infringement. It is
in these circumstances, the instant application has been moved for
production of the license agreements executed between the defendants
and Qualcomm and other companies, as it would help to determine the
truth in the claim of the defendants. Thus, the lis could be determined
from the disclosure made. It was submitted that the interrogatories were
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Signed By:MANJEET KAUR
Signing Date:07.01.2022
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therefore to be allowed and the question of relevancy need not be
considered at this stage.
6. On the other hand, learned counsel for the defendants has
submitted that an application under Order XI Rules 2 & 14 CPC as
amended by the Commercial Courts (Amendment) Act, 2018 read with
Section 151 CPC cannot be routinely allowed and the court had to
consider whether the answers and documents sought were necessary for
the determination of the dispute. It was submitted that since it was the
case of the plaintiff that their patents were standard essential patents, it
was necessary to disclose and explain every stage of such mapping of the
industry standards with their patents. The burden was on the plaintiff to
prove its case and the onus could not be shifted by asking questions that
also infringed on industry confidentiality, by means of the present
application.
7. The learned counsel submitted that the services that it had
advertised as being available on its handset were derived from the chips
which were sourced from Qualcomm and MediaTek. Therefore, if there
was any infringement, the plaintiff had to question these two companies,
who have, however, not been made parties to the present case. The more
important question would be whether the plaintiff had any arrangement
with Qualcomm and/or MediaTek and if there was such an agreement, the
patent would be exhausted and the plaintiff would be foreclosed from
claiming further licenses downstream i.e. from manufacturing entities like
the defendants.
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Signed By:MANJEET KAUR
Signing Date:07.01.2022
21:30:23
8. It is also argued by the learned counsel for the defendants that the
plaintiff under the FRAND obligation had to make disclosures before
demanding a certain license fee from the defendants to establish that its
demand was fair. However, in the present suit, there has been no such
disclosure made. The defendants had moved I.A. 8259/2020 for
production of third-party comparable patent license agreements in a
sealed cover, which was still pending constitution of a confidentiality
club.
9. Thus, it was the contention of the learned counsel for the
defendants that the interrogatories and documents were not relevant and
the application was liable to be dismissed. It was also submitted that in
any case, a detailed reply had been submitted by the defendants in
response to the application, where it was clearly mentioned that the
defendants did not know the composition of the chip with regard to its
software and nothing further was required to be answered.
10. I have heard the submissions and have perused the record including
the judgments relied upon by both sides.
11. The interrogatories are intended to cut short trial. Time and
expenses can be saved by interrogatories being served upon the
adversary. While it is trite that one who asserts must prove and that the
burden of proof never shifts, however, interrogatories may be served
upon the adversary if the document or information in its possession and
the production of documents and answers to the interrogatories, would
have a bearing on the determination of the dispute. In determining
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Signed By:MANJEET KAUR
Signing Date:07.01.2022
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whether a document should be disclosed or questions answered, it would
be seen whether the document/questions are relevant or would throw
some light on the resolution of the dispute.
12. It is to be noted that even with the amendment of the CPC pursuant
to the enactment of the Commercial Courts Act, there is an obligation on
parties to produce all documents in their possession and to answer every
plea, giving reasons as to why a stand contrary to the plea was being
taken. The salutary provisions are intended only to expedite disposal of
commercial suits. The only precaution to be taken by the court while
exercising its discretion under Order XI Rules 2 & 14 CPC is to ensure
that the applicant is not embarking on a roving or fishing inquiry. So long
as the document sought to be produced would throw light on the subject
matter of the suit and the answers sought would assist in the fair disposal
of the suit, the same ought to be allowed.
13. Before proceeding further, it may be seen as to what are the
documents sought by the plaintiff from the defendants and what are the
questions to which answers have been sought. The plaintiff had sought
the third-party license agreements entered into by the defendants with
Qualcomm and other companies, relating to 3G (UMTS) or 3.5 (HSPA
and HSPA+) or 4G (LTE) technologies. The questions and the
interrogatories to which the answers have been sought are :
(a) Whether the defendants' mobile devices comply with the following
ETSI Standards relating to UMTS (including HSPA/HSPA+) and LTE
technologies-
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Signed By:MANJEET KAUR
Signing Date:07.01.2022
21:30:23
SUIT PATENT ETSI STANDARDS
1. ETSI TS 125 211 V4.6.0
IN 211041 (2002-2009)
2. ETSI TS 125 214 V4.6.0
(2003-03)
3. ETSI TS 125 101
V4.13.0 (2006-2012)
1. ETSI TS 125 211 V4.6.0
IN 221703 (2002-2009)
2. ETSI TS 125 214 V4.6.0
(2003-03)
3. ETSI 125 331 V4.21.0
(2012-01)
1. ETSI TS 125 211
IN 228133 V6.10.0 (2009-09)
2. ETSI TS 125 214
V6.11.0 (2006-12)
3. ETSI TS 125 212
V6.10.0 (2006-12)
1. ETSI TS 125 211
IN 275419 V7.10.0 (2010-10)
2. ETSI TS 125 214
V7.17.0 (2011-01)
3. ETSI TR 125 903 V7.0.0
(2007-03)
1. ETSI TS 136 321
IN 271469 V8.12.0 (2012-03)
2. ETSI TS 136 300
V8.12.0 (2010-04)
(b) Whether the defendants' mobile devices launched since the date of
incorporation of the defendant No.2, support/comply with the following
features of ETSI Standards-
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Signed By:MANJEET KAUR
Signing Date:07.01.2022
21:30:23
i. Whether defendants' mobile devices are capable of
supporting LTE Logical Channel Prioritization procedure as
specified in 3GPP TS 36.321;
ii. Whether defendants' mobile devices are capable of
supporting UMTS Compressed Mode as specified in TS
25.214 and TS 34.121-1;
iii. Whether defendants' mobile devices show behavior of the
uplink E-DPDCH, the uplink DPDCH and the uplink
DPCCH transmit power before and after the mobile handset
reaches a threshold transmit power according to UMTS
standard as detailed in technical documents being TS 25.214;
iv. Whether defendants' mobile devices are capable of
supporting UMTS UL DPCCH Slot Format 4 and whether
the same is in conformance with TS 25.211 and TS 25.903;
v. Whether defendants' mobile devices support the behavior of
the uplink power change when receiving TPC (Transmit
Power Control) commands in different patterns, and whether
the same was in conformance with the UMTS standard as
detailed in technical documents being TS 25.214 and TS
25.331.
(c) Provision of details as to whether the defendants have entered into
a licensing arrangement with Qualcomm and other companies, only after
the licensors provided evidence of direct infringement/feature by feature
demonstration of infringement of each and every patent in their respective
portfolio.
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Signed By:MANJEET KAUR
Signing Date:07.01.2022
21:30:23
(d) Provision of details as to whether defendants' license agreement(s)
with Qualcomm and other companies, were executed only after Vivo
representatives as well as its appointed external economic expert
analyzed ALL third-party license agreements entered into by concerned
licensors.
14. Since it has been the consistent stand of the defendants, that the
patents are incorporated in the chipset and not in the handset, whereas the
plaintiff has insisted that the standard essential patents are in the handset,
the third-party license agreements executed between the defendants and
Qualcomm and other companies would definitely throw light on this
question.
15. The contention of the learned counsel for the defendants that it is
for the plaintiff to map their patents on to the standard essential features
would also be settled by the production of this agreement, as it would be
evident as to whether the patents work on the chipset or handset and what
was the technology transferred by Qualcomm and others to the
defendants. Of course, keeping the necessity of industry confidentiality,
these documents need not be brought out into the open. However, as
suggested in respect of I.A. 8259/2020, moved by the defendants for
production of third-party agreements by the plaintiff, to determine
FRAND, a confidentiality club can be constituted even in respect of these
agreements.
16. With regard to the interrogatories, the interrogatories No.(c) and
(d) seem to be interrogatories that do not lead anywhere and are therefore
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Signed By:MANJEET KAUR
Signing Date:07.01.2022
21:30:23
disallowed. With respect to the interrogatories No.(a) and (b), since they
have a direct bearing on the technologies used by the defendants which in
turn would have a bearing on the question of infringement as well as
FRAND, it is considered appropriate to direct the defendants to answer
these interrogatories by way of an affidavit.
17. The application is thus, partly allowed. The affidavit alongwith the
third-party agreements executed between Qualcomm and the defendants
and other companies be filed within three weeks in a sealed cover with a
copy to the learned counsel for the plaintiff. Once the affidavit is filed,
the plaintiff may furnish the name of two experts and eight lawyers who
would be authorised to inspect the said third-party agreements.
18. The application stands disposed of.
19. The order be uploaded on the website forthwith.
(ASHA MENON)
JUDGE
JANUARY 7th, 2022
ck
Signature Not Verified
Signed By:MANJEET KAUR
Signing Date:07.01.2022
21:30:23
