R. K. Dewan & Co. | View firm profile
Provisions regarding patent suits are governed by the Patents Act 1970, hereinafter called the Act. They are also governed by the Code of Civil Procedure, 1908 (CPC) as amended by the Commercial Court Act, 2015. The High Court of Delhi is also empowered to make rules regarding procedures for Civil Suits and patent suits. The High Court of Delhi Rules Governing Patent Suits, 2022 were issued through a gazette notification on February 24, 2022. The Rules are in addition to CPC as amended by Commercial Courts Act, 2015, and also the Indian Evidence Act 1872.
After disbanding of the IPAB, about 3000 pending cases were transferred from the erstwhile IPAB to the High Court of Delhi. In order to dispose-off the cases in a time-bound manner, a committee was formed by the Chief Justice of the High Court of Delhi and on the recommendations of the committee, an IP Division (IPD) was created in the High Court of Delhi, the first such division in the country. IPD shall deal with all the matters relating to IP including fresh and pending infringement suits, appeals against the decision of a Controller, revocation/cancellation actions, and rectification of applications of patents/trademarks. Thus, all the patent suits shall be listed before the IPD except those that are to be dealt with by the Division Bench of the High Court.
The Rules, inter alia, specify what all a plaint or a brief should include. It also lays down that a brief should not exceed 10 pages. In case of longer briefs involving multiple patents, then the leave of the Court shall be taken with justification. The Rules also prescribe procedures regarding case management hearings, summary adjudication, and mediation. The Rules further lay down that mediation can go on concurrently along with legal proceedings before the Court. The consent of the parties for mediation is not required.
It is apparent that the procedures and mechanisms proposed under The High Court of Delhi Rules governing Patent Suits – 2022 are directed at the speedier disposal of the cases.
A quick summary of the terms defined by the Rules:
Claim construction brief: Claims to be broken down so that each term is defined and the overall scope and the effect of the claims are clear.
Invalidity brief: Invalidity brief should contain prior art references quoting relevant Para no, Page No, or column in a page which allegedly anticipates or renders the claims obvious and analysis should be provided to show how the novelty or inventiveness is destroyed. In case of non-patentability under section 3 or 4 of the Act, an explanation with reasons is to be provided. Case laws relied upon can also be specified. In case invalidity is pleaded on the grounds of 64 (h) and 64 (i), the brief should clearly specify the claims that have not been sufficiently disclosed or are not supported by or enabled in the specification. Insufficiency with respect to each claim may be specified with an explanation for the same. In case, the invalidity is based on any other ground, the provisions and grounds for the same should be specified in a simple manner. If any of the grounds of invalidity have been dealt with by the patent office, reference to the same should be included.
Infringement brief: The plaintiff shall give a claim construction brief and compare elements of each claim with that of the defendant’s product /process and state the manner in which it infringes the claims relied upon. In case infringement involving Standard Essential Patents (SEP), the infringement brief shall map the patent claims with the standard and state the manner in which the Defendant infringes the patent claims. In other words, a comparison of patent claims, the standard, and the defendant claims need to be mapped and analysis provided with respect to infringement.
Non-infringement brief: A party claiming non-infringement, can draw a comparison of the suit patent claims with its product/process, showing non-infringement. In the case of SEP, Defendant shall first disclose whether its product complies with a standard / alternate technology. A party is also free to provide its own interpretation of the claim construction of the suit patent.
Technical Primer: A basic document either in text or electronic form, including a presentation for explaining basic science or technology covering a patent.
The Rules lay down contents of pleadings and are as under:
Content of pleadings (Rule 3)
Plaint: A plaint in an infringement action should begin with a brief of the technology, description of the suit patents along with details of the priority and other relevant information. The following information also needs to be included in the plaint:
- Brief details of the corresponding international application, if any, and prosecution history;
- Any other patent application filed, withdrawn or pending, including a divisional application related to the suit patent or the priority date application;
- Any order passed by Indian / International Court or tribunal rejecting or upholding the validity of the suit patent;
- Details of licenses granted or Plaintiff’s relevant portfolio;
- Correspondence between the parties relating to the suit patent;
- Preliminary list of experts, if any;
- Details of sales by a Patentee and or statement of royalties wherever feasible; and
- The remedy or relief including quantification of damages which the Plaintiff seeks,
Written Statement: A written statement of a Defendant shall include the following, to the extent possible:
- Explanation of non-infringement and or the grounds on which a suit patent is held to be invalid;
- Response to the claim chart of a Plaintiff and also a technical analysis and if possible, include a technical report;
- In case of revocation, a separate counter-claim is to be filed;
- Details of the challenge at pre-grant / post-grant stage or by way of revocation, if any;
- If the defendant is willing to take a license, the quantum of royalty is to be specified. This shall be without any prejudice to the Defendant’s stand on non-infringement and invalidity;
- In case a Defendant claims non-infringement, the product/process used by a Defendant shall be disclosed. However, the onus of proving non-infringement shall be decided in terms of Section 104A of the Act;
- Details of sales of the Plaintiff with respect to the allegedly infringing products;
- Details of any relevant communication between the parties;
- Details of any regulatory approval of infringing product/process and status thereof; and
- Details of any licenses or cross-licenses entered into by the Defendant and its group companies in respect of suit patent.
Counter Claim: The counterclaim shall be precise and as per the grounds available under section 64 of the Act. The grounds related to lack of novelty / inventive step shall be appropriately supported by prior art documents and a reference drawn to the specific extracts from the prior art documents. The counterclaim should be supported by a chart drawing a comparison of the claims and clearly showing which claims are hit by prior documents either alone or in combination allegedly destroying novelty or inventive step of the claim(s).
If a counterclaim is filed under Section 105 for seeking relief on the grounds of non-infringement, then the requirements under the section shall have to be followed. It may be mentioned that Section 105 allows any person to institute a suit for declaration that the use by him of any process /product does not or would not constitute an infringement of a claim of a patent against a patentee or the holder of an exclusive license.
Replication: Replication is to be filed, summarizing briefly first the Plaintiff’s case and the Defendant’s case. It shall be followed by a para-wise reply to the written statement. If any of the prior art documents cited by the defendant have also been considered during the prosecution process of the patent or during opposition proceedings, details of the same shall be included in the Replication.
Written statement to the counterclaim and replication in the counterclaim shall follow a similar pattern as given hereinabove under Written Statement or Counter Claim as applicable.
If a counterclaim is filed under Section 105 for the declaration of non-infringement, the Plaintiff shall specify the scope of the invention and describe the technical or legal basis on which the Defendant is claiming non-infringement. A claim construction brief and a non-infringement brief shall accompany the suit patent along with a technical report. Details regarding any proceedings filed shall also be incorporated.
Injunction sought on groundless threats
A plaint, in case of groundless threats of a patentee, can be filed under Section 106 of The Act and shall contain the following:
- Nature of threat, whether oral or written;
- If the threat concerns a granted patent but whose validity is being challenged, an invalidity brief should accompany the plaint. If any correspondence has been exchanged in this context, the same needs to be shared.
Petition for revocation of a patent under section 64 of the Act
Original petition for revocation of a patent under Section 64 of the Act shall follow a similar pattern as a plaint for a counterclaim as described hereinabove.
Documents to be filed with a plaint (Rule 4)
- Certified copies of a granted patent along with an annual renewal fee paid for the same. In case certified copies are not filed, an undertaking may be submitted to furnish the same before the date of the First Case Management Hearing;
- A copy of the complete application including drawings, if any;
- A list of the corresponding application in major jurisdictions of the world. If a decision has been given by any patent authority or a court, a link to the same may be provided in the standard table format given below:
- Details of related patent applications/patents to the suit patents including divisional application/patent of addition in India shall also be furnished in a tabular form along with their current status;
- A summary of the patented invention and alleged infringement shall be annexed as a note or a PowerPoint presentation printed with two slides per page;
- Copies of all relevant correspondence;
- Copies of license agreements, FRAND pricing (under sealed cover), if any;
- Note on the justification of license fee, if claimed;
- Laboratory reports if any; and
- Any other document material to the issue of infringement.
Documents to be submitted with counterclaims:
- Copies of any decisions of a Court or any patent authority relating to the suit patent or a corresponding patent application in any jurisdiction;
- Expert or technical report relied upon;
- Analysis for non-infringement or invalidity;
- Copies of prior art documents. In case of commentaries, technical papers extract from the books, internet retrieved documents and the like, details regarding author, title, date, and the like along with the date of the printout of these documents;
- In the case of a pharmaceutical product, the specific formula/molecule/composition in the prior art documents which destroys the novelty or inventive step;
- Laboratory analysis report if any;
- Statement of accounts of quantum and sales of the allegedly infringing products;
- Documents relied upon for each of the grounds of Section 64; and
- Any other document material to the issue of infringement.
First Hearing of the Suit (Rule 5):
A patentee may seek an injunction at the first hearing and also request for the appointment of a Local Commissioner for inspection. The Court can also direct inspection of manufacturing facilities. The commissioner may be accompanied by technical experts from both sides and any confidential information may be shared in a sealed envelope. The defendant may get two working days’ notice to be ready with any document to oppose the grant of interim relief on the first hearing.
In exceptional cases, when the infringement is prima-facie established, the Court may pass an order for monetary compensation instead of injunction on the terms and conditions specified by the Court.
In case of interim injunction, the Court may direct the Plaintiff to give an undertaking of a security if it loses at the trial stage or if the patent is held invalid.
First Case Management Hearing (Rule 8):
Taking into consideration pleadings, claim construction briefs, invalidity, infringement, and damages/accounts of profit briefs, the court may identify the actual issues and pinpoint disputes between the parties. The court may seek the assistance of a technical expert from among the panel of Advisors maintained by the Court or call an expert of the parties to assist the court. Hot-tubbing may also be resorted to, if necessary. In case evidence is considered necessary, the Court shall direct the parties to file their list of witnesses including the names of expert witnesses and filing of affidavits. The Court shall direct the order in which the trial is to be conducted, i.e., the court shall direct whether the trial of infringement or trial of invalidity shall be taken up first. The Court may direct the leading of evidence regarding any issue that is likely to expedite the case.
Second Case Management Hearing (Rule 9):
After considering and perusing the affidavits submitted, the Court shall fix time, venue, and duration for the cross-examination of witnesses. Video conferencing of evidence can also be directed. The hot-tubbing technique may also be used. Recording of evidence by the Local Commissioner may also be directed.
Third Case Management Hearing (Rule 10):
Taking into consideration the evidence recorded thus far, the Court may settle some of the preliminary issues or direct the parties to go to trial on the remaining issues. The Court may pass directions as can be passed in the second management Hearing case.
Confidentiality Club and redaction of confidential information (Rule 11):
In order to preserve confidential information filed and exchanged during the trial, the Court may constitute a confidentiality club consisting of lawyers and experts and nominated representatives of the parties. The members of the club may not be involved in the day-to-day management and business operations of the parties. The confidential information may be redacted as and when necessary and an application in this context can be submitted to the court for redaction.
Mediation or Early Neutral Evaluation (Rule 12):
The Court, at any stage of the trial, may appoint a mediator or a panel of mediators or a qualified independent evaluator for exploring amicable resolution. The proceedings of such a resolution can occur concurrently with the legal proceedings before the court and the court does not require the consent of the parties for the mediation.
Panel of Advisors (Rule 13):
The Delhi High Court shall draw up a panel of Advisors in order to assist the Judges in patent suits. The Adviser may be a scientist, academician, economist, accountant, legal expert, qualified patent with subject expertise, an officer of an IPO, and the like.
Final Hearing (Rule 15):
The Court shall direct the parties to present a summary of pleadings and evidence and refer to specific page numbers of the files. The Court may direct at least one technical witness from each side to assist the court during the final hearing. Timelines may be fixed for oral submissions.
Summary adjudication in Patent Cases (Rule 16):
Provisions for summary judgment are contained in Commercial Courts Act 2015. However, the Court may adopt Summary Adjudication in cases falling in any one of the following categories:
- the remaining term of the patent is 5 years or less than 5 years;
- certificate of validity upheld by erstwhile IPAB, High Court or Supreme Court;
- the defendant is a repeat infringer of the same patent or related patent; and
- validity of the patent is admitted and only infringement is denied.