The Delhi High Court on 29.03.2023 passed a seminal judgment in favour of Ericsson in cross appeals FAO(OS) (COMM)296-297/2018 preferred against judgment dated 13.03.2015 passed in suit filed by Ericsson against Intex, whereby the Court has prima facie held Intex to be infringing Ericsson’s SEPs, directing direct deposit of interim royalties payable by Intex to Ericsson within 4 weeks from the judgment.

In this landmark judgment, the Court has also laid down guiding principles for dealing with cases relating to SEPs and FRAND, being:

• FRAND is not a one-way street. Both the SEP owner and implementor are obligated to negotiate in good faith aimed at conclusion of a license, in conformance with the FRAND protocol recognised globally.
• Parties’ conduct during negotiation is a relevant factor for determining willingness.
• When negotiations fail, implementors cannot continue to use the technology for free.
• Implementors are mandated to furnish security in favour of the SEP proprietor during pendency of litigation.
• Disclosure of third-party license agreements by an SEP owner during negotiations is not mandatory and implementors can rely upon their own agreements to give an appropriate counter-offer.
• Injunctions (interim and final) can be granted against an implementor who is unwilling.
• Infringement can be established by using claim charts.
• Global Portfolio licensing is FRAND.
• Under the Patent Rules, 2022 courts can direct deposits/ security even on the first date of hearing

The findings have brought about the much-needed clarity for SEP cases and will have significant global impact.

Team involved Saya Choudhary (Partner), Ashutosh Kumar (Partner), Vrinda Bagaria (Senior associate), Vinod Chauhan (Senior Associate) and Radhika Pareva (Associate).