In the last two decades, India has seen a rising number of patent disputes in several technology fields, including pharmaceuticals, electronics, biotechnology, and telecommunications. In the absence of special IP courts, it is challenging for the Judges to adjudicate technical matters that require expertise in the respective domain. While the Judges are experienced in applying the provisions of the Civil Procedure Code (CPC) and intellectual property rights, the patent disputes require a deeper understanding of the technology and the Patent claims to assess disputes arising out of them. Further, there is limited jurisprudence in patent litigation in India and a lack of consistency in drafting legal claims, making it even more difficult for the courts to unwrap the actual conflict.

Therefore, to streamline patent litigation in India, the Delhi High court has recently framed “High court of Delhi rules governing Patent suits, 2022” to lay down specific procedural steps to bring uniformity in presenting the infringement claims in a patent lawsuit. Currently, the patent suits are governed by the Patents Act, 1970, and the Civil Procedure Code of India, 1908 (CPC) as amended by the Commercial Courts Act, 2015. The Delhi High court had earlier notified the Delhi High court (original side) rules in 2018, which apply to all civil lawsuits filed before the said Court, including intellectual property rights. However, given the technical nature of disputes arising out of infringement of Patents, there was a need for additional provisions specific to patents. Hopefully, the new rules will help fill the gap and provide guidance and tools for effective and efficient case management.

The rules have included provisions to simplify the suit proceedings, provide flexibility and necessary tools to expedite litigation, and save judicial time. The article discusses fundamental changes introduced, focusing on the techniques that will likely significantly change India’s overall governance of patent litigation. A few highlights are:

Clear and concise case briefs: The rules lay down the Court’s expectations from the complaint/infringement claim to contain a) the brief background of technology, b) details of patent ownership, c) other patent applications which are filed, d) brief prosecution history, e) relevant facts to show the validity, and f) other similar and relevant details including infringement analysis.

Similarly, a written statement/response from the contesting party should contain defenses of non-infringement, the grounds seeking revocation, technical analysis, and most importantly, the details and the exact description of products alleged as infringed.

The rules also provide a list of documents to be filed along with the plaint, written statement, counterclaim, and other relevant documents to avoid ambiguity and save the Court’s and litigant’s time lost due to unnecessary adjournments. On the same lines, the rules direct the litigating parties on the Infringement brief to be filed comparing the elements of each of the claims and the way the Defendant’s product/process infringes the claims relied upon and similarly non-infringement brief or claim mapping to be filed by the Defendant explaining how his product/process does not infringe the Plaintiff’s claims.

Case management: After the pleadings are complete, the rules laid out a clear roadmap for the first, second and third case management hearings. Under each heading, there are clear guidelines on the expectations from the parties to the suit and various steps of the litigation process.

Appointment of Scientific advisors: The rules empower the courts to prepare a list of scientific advisors that will assist the Court in adjudicating the patent suits. The list will be subjected to periodical review. Hopefully, this will help fill any technical gaps in the Court’s understanding of the Patent and respective infringement claims. It is not clear if the fees of the scientific advisors will be borne by the litigating parties or funded by the High Court.

Compulsory Mediation: The rules also include provisions for specific techniques that may help expedite the conclusion of the conflicts, including mandatory mediation and Early Neutral Evaluation (ENE). A specific Rule is introduced (Rule12) that provides at any stage of the proceedings if the Court believes that the parties ought to explore mediation. It can appoint a mediator or a panel of mediators and technical experts to study amicable dispute resolution. The Court need not seek the consent of the litigating parties for appointing a Mediator or ENE if it believes that an evaluation or mediation will help early resolution of the matter. Mediation/ENE may occur simultaneously with the legal proceedings to avoid any delays if the mediation/ENE is unsuccessful. Overall, the objective of compulsory mediation is to expedite the resolution of the cases.

Video recording of the evidence: The Court may direct on its own or request any parties for video recording of the evidence. Further, that any video or audio recordings of the evidence will be preserved electronically in a manner that the same is not editable and cannot be tempered with.

Hot-tubbing: Rule 9(iii) of the High Court of Delhi Governing Patent Suits, 2021 provides that the expert testimony may be directed by the Court on its motion or on the request of the parties to be recorded by Hot-tubbing technique under Delhi High Court (Original Side) Rules, 2018 which provide a detailed protocol for Hot tubbing.

The technique involves recording experts’ evidence in each other’s presence and before the judge who asks the same questions. This process helps focus on the issues of the dispute. The discussion provides more clarity and helps the judge better understand the facts and technology. However, the experts must be fully prepared to explain their evidence better and counter the evidence produced by the opposite party.

As per Rule 8 of the draft rules, the Court may employ hot-tubbing even at the beginning of the trial i.e. even before framing the issues, and need not wait for the stage of evidence and witness cross-examination. This may help the judges frame trial issues and skip those that do not require leading of the evidence.

The concept of hot-tubbing was first discussed in India in the case of Micromax Informatics Ltd. v/s Telefonaktiebolaget LM Ericsson. This case was filed under the Indian Competition Act. Micromax is a major mobile handset manufacturer and owns several patents, including several Standard Essential Patents (SEP). While disposing-off the Appeal, the Delhi High Court made certain observations regarding the concept of ‘Hot-tubbing’. It recommended the ‘Hot-tubbing’ procedure upon acceptance of the parties involved. The Court also discussed the nature and scope of ‘Hot-tubbing’ where it stated that such a procedure can be used to make faster and smoother dispute resolution. It also stated that in patent disputes where the involvement of an expert is a must, adopting the hot-tubbing procedure will be helpful.

Confidentiality Club:

So far in India, the concept of Confidentially Clubs has been adopted in two cases, Telefonaktiebolaget LM Ericsson (PUBL) v/s Xiomi Technology & others, and Pfizer Inc v/s Unimark Remedies Limited. In Telefonaktiebolaget LM Ericsson (PUBL) v/s Xiaomi Technology & others, the Delhi High Court allowed the set-up of ‘confidentiality club’ and an EEO (External Eyes Only) where the parties were able to access the documents only through this club. In Pfizer Inc. v/s Unimark Remedies Ltd., the Bombay High Court also allowed the set-up of ‘confidentiality club’ and further ordered that these proceedings shall be held ‘in-camera’. These clubs consisted of the parties, the counsels, the experts, and the judge.

Observing the need for confidentiality clubs, the new rules (Rule 11) provide for a provision for the same and redaction of the confidential information on request by the parties. Generally, the infringement proceedings are held in open Court, and all the parties involved in the suit can access the documents and evidence. As per Rule 11, the Court may constitute a confidentiality club to preserve and exchange confidential information filed before the Court at any stage of the suit. A Confidentiality Club consists of specified counsel, technical experts, and the concerned parties only. The arguments of the suits are not disclosed to any other person. To maintain such confidentiality, the involved persons are bound to sign an undertaking to not disclose the information.

Summary judgment: Under Rule 16, In addition to the provisions in the Commercial Courts Act, 2015 for Summary judgment, Summary Adjudication of Patent suits can be undertaken in the following conditions.

• Where the remaining term of the Patent is five years or less;
• A certificate of validity of the said Patent has already been issued or upheld by the erstwhile Intellectual Property Appellate Board, High Court, or the Supreme Court;
• If the Defendant is a repeat infringer of the same or related Patent;
• If the Patent’s validity is admitted and only infringement is denied.

Conclusion

The new rules implemented by the Delhi High court to govern patent litigation seemed promising and were the need of the hour. Currently, due to the technical nature of the patent suits, there are challenges in interpreting the Patent, related infringement claims, and several other related issues resulting in delays for the cases to conclude satisfactorily. The detailed outline in the rules on the pleadings, list of documents, infringement brief, invalidity brief, etc., will help avoid any confusion and reduce unnecessary adjournment to obtain the requisite information from the litigants. Hopefully, these will help simplify patent litigation, reduce delays, and overall efficient management of cases. In addition, the formal introduction of video conferencing, hot-tubbing, appointment of scientific advisors, confidentiality club, and compulsory mediation will help streamline the trial process.  Overall, the rules are nothing short of a step-by-step manual for filing patent litigation in India.  Hopefully, these will give the patent owners clarity and confidence to enforce their rights in India and build trust in India’s commitment to protecting Intellectual Property.