[InterDigital Patent Infringement Case] Delhi HC Rejected Plea Of Access License Agreements Of Oppo, RealMe And OnePlus

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Justice Anish Dayal directed both InterDigital and the defendants to submit certain licensing agreements with chipset supplier Qualcomm.

[InterDigital Patent Infringement Case] Delhi HC Rejected Plea of Access License Agreements of Oppo, RealMe And OnePlus

NEW DELHI: The Delhi High Court denied US-based InterDigital Technology’s request to access licensing agreements between Chinese mobile phone manufacturers Oppo, RealMe, and OnePlus, and two Standard Essential Patent (SEP) licensors, Ericsson and Orange SA, in a patent infringement case.

Justice Anish Dayal directed both InterDigital and the defendants to submit certain licensing agreements with chipset supplier Qualcomm.

As per May 31 ruling relates to an ongoing legal battle in India between InterDigital (plaintiff) and Oppo, RealMe, and OnePlus (defendants).

InterDigital has accused the defendants of infringing on its SEPs necessary for providing 3G, 4G, and 5G services, and for playing high-definition videos (H.265 High Efficiency Video Coding/HEVC Standards) on mobile phones.

InterDigital contends that the defendants must procure licenses from them at fair, reasonable, and non-discriminatory (FRAND) rates to use such patented technology.

To support its claim that the defendants were unwilling to procure licenses at FRAND rates, InterDigital requested the Court to order the defendants to disclose their licensing agreements with Ericsson and Orange SA.

The Court rejected this request, stating that these agreements were not relevant for determining the applicable FRAND rates at this stage.

The Court noted that it was InterDigital’s responsibility to demonstrate the FRAND rates agreed upon with other third parties to support its case. Additionally, the Court acknowledged the potential confidentiality concerns of third parties like Ericsson and Orange SA.

The patent infringement suit by InterDigital was filed in 2021, with similar suits filed globally against other manufacturers like Lenovo and Xiaomi. During the Delhi hearings, InterDigital argued that agreements between the defendants and Qualcomm for chipset supplies were relevant to the dispute.

The defendants claimed they couldn’t be sued for patent infringement since InterDigital’s SEPs were licensed to Qualcomm, which then sold chipsets with the patented technology. They argued the doctrine of exhaustion applied, meaning no further license from InterDigital was necessary.

InterDigital countered that its claim involved the use of SEPs in entire mobile handsets, not just chipsets. They insisted on examining the agreements between the defendants and Qualcomm to determine if the exhaustion doctrine applied.

The defendants argued that InterDigital should disclose its agreement with Qualcomm. InterDigital opposed, stating the agreement was irrelevant and covered expired licenses for older technology.

The Court ruled that agreements with Qualcomm from both sides were relevant for determining the applicability of the exhaustion doctrine and to see if there was an overlap in technology licensed to Qualcomm. These agreements will be part of a confidentiality club to protect sensitive information.

In a separate judgment, a Division Bench allowed the defendants to furnish a bank guarantee from an Indian bank to secure InterDigital’s royalty claims, enabling them to continue selling phones without an injunction.

This ruling set aside a single-judge order requiring the defendants to make a court deposit due to difficulties with a Global Bank Guarantee from HSBC Paris. The Division Bench emphasized that pro-tem orders should not be punitive and there was no reason to prevent the defendants from providing a guarantee from an Indian bank.

The main suit will be heard next on July 3 by a single judge, with a decision expected by the end of 2024.

Senior Advocate Gourab Banerji and a team of advocates represented InterDigital, while a team led by Advocates Saikrishna Rajagopal represented the defendants.