Delhi High Court
Interdigital Patent Holdings Inc & Anr vs Shenzhen Transsion Holdings Co Ltd & Ors on 1 July, 2026
Author: Tushar Rao Gedela
Bench: Tushar Rao Gedela
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order reserved on: 01.04.2026
Order delivered on: 01.07.2026
+ CS(COMM) 1045/2025, I.A. 24409/2025, I.A. 30455/2025, I.A.
31617/2025, I.A. 2901/2026
INTERDIGITAL PATENT HOLDINGS INC & ANR .....Plaintiffs
versus
SHENZHEN TRANSSION HOLDINGS CO LTD & ORS
.....Defendants
+ CS(COMM) 1046/2025, I.A. 24419/2025, I.A. 30456/2025, I.A.
31616/2025, I.A. 4343/2026 & I.A. 5389/2026
INTERDIGITAL PATENT HOLDINGS INC & ANR .....Plaintiffs
versus
SHENZHEN TRANSSION HOLDINGS CO LTD & ORS
.....Defendants
Advocates who appeared in this case:
For the Plaintiffs : Mr. Pravin Anand, Ms. Vaishali R. Mitttal, Ms.
Gitanjali Sharma, Mr. Siddhant Chamola, Ms.
Pallavi Bhatnagar, & Ms. Prachi Sharma,
Advocates.
For the Defendants : Mr. Saikrishna Rajagopal, Ms. Julien George, Mr.
Vivek Ayyagari, Mr. Arjun Gadhoke, Mr. Ayush
Saxena, Mr. Christo Sabu, Mr. Devanjan
Chakravarty, Mr. Sanskar Dua, Mr. Soumya Singh,
Ms. Priyam Lizmary Cherian and Mr. Vedam Anand
Kumar, Advocates.
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CORAM:
HON'BLE MR. JUSTICE TUSHAR RAO GEDELA
ORDER
TUSHAR RAO GEDELA, J.
I.A. 24410/2025 in CS(COMM) 1045/2025 & I.A. 24420/2025 in
CS(COMM) 1046/2025 (Seeking pro-tem security payment)
1. These are applications filed by the plaintiffs under Section 151 of the
Code of Civil Procedure, 1908 (“CPC“), seeking pro tem security payment.
BRIEF FACTS:
2. The plaintiff no.1 was established in the year 1972. Plaintiff no.2 is the
current parent company and was established under the laws of Pennsylvania,
USA, and is listed on NASDAQ. It claims to be one of the world’s largest
research and innovation companies, uniting wireless communication and
video communication technologies. It further claims to be a leading designer
and developer of technology solutions and intellectual property for the mobile
industry. Plaintiffs assert that they have developed and designed a wide range
of advanced technologies used in digital and wireless products, including 2G,
3G, 4G, 5G and IEEE 802, related products and networks. Plaintiffs claim a
total revenue of about USD 549.9 million in the year 2023.
3. Plaintiffs claim that their technological innovations are currently
protected by more than 31,500 patents and applications worldwide, including
more than 1,000 patents and patent applications in India. Over the last 15
years, they claim to have invested more than USD 1 billion in research and
development activities.
4. Plaintiffs further claim that, owing to its long standing technological
contributions to the telecommunication field, (including 5G patents), they
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have disclosed to ETSI, as potentially standard-essential to wireless
telecommunications standards, more than 150 3G UMTS patent families
comprising more than 3,100 patents and applications, more than 470 4G LTE
patent families comprising more than 6,700 patents and applications, and
more than 450 5G NR patent families, comprising more than 4,600 patents
and applications across multiple jurisdictions and telecommunication
technologies. These patents and applications allegedly cover several key
technologies relating to 3G, 4G and 5G telecommunications standards. They
further claim that they actively contribute to the technical development of
standards pertaining to digital cellular and wireless communications, among
other technologies. As innovators and contributing participants in the wireless
technology industry, the plaintiffs claim to respect and honour their
commitments under the applicable intellectual property policies of the
standards-development organizations of which they are members.
5. Plaintiffs also claim that, in order to make this high-end technology
available to other parties, they have committed to ETSI that they were
prepared to grant licenses to their standard essential patents to implementers
of ETSI wireless communications standards on fair, reasonable and non-
discriminatory (FRAND) terms and conditions. Plaintiffs assert that their
licensing practices are considered exemplary by the industry and they have
been honoured with Licensing Achievement Awards by the Licensing
Executives Society, alongside other winners such as IBM Corporation and
Stanford University. Some of plaintiff’s past and present wireless licensees
include Google, Apple, Asus, Ericsson, Huawei, LG, HTC, Fujitsu, Oppo,
Vivo, Panasonic, Samsung, Seiko, Sony, Kyocera, Wistron, Pegatron, Arima
Communications, Blu Smartphones, Inventec, Fairphone, ZTE, and Xiaomi.
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Licensees through licensing platforms include Audi, BMW, Rolls-Royce,
Skoda and Volkswagen, among others.
6. The defendant no.1/Shenzhen Transsion Holdings Co. Ltd., was
established in Shenzhen, China and is engaged in the business of
manufacturing/selling/exporting smart phones under the brands ITEL,
INFINIX and TECNO. It is stated that the said phones operate in accordance
with 2G, 3G, 4G & 5G mobile standards. It is also stated that defendant no.1
has a presence in more than 70 countries, including India, through defendant
nos.2 to 5.
7. In the 1980s, commercialisation of wireless communication technology
was initiated and the first generation (1G) cellular system, which used
analogue radio signals for voice communication emerged. Due to the lack of
uniform international standards, there was a vast variation in technology and
protocols from country to country. On account of such technological
deficiency, the cellular phones could not operate globally, or even regionally,
because of network incompatibility. In order to resolve this issue, various
organisations commenced investigating the problem. It is stated that, from the
year 2000 onwards, Long Term Evolution (LTE) systems and the standards
were developed for the wireless transmission of high-speed data. The next
generation of wireless technology is 5G, which offers faster speeds, lower
latency, enhanced capabilities and greater reliability. It also allows greater
connectivity across devices.
8. Plaintiffs claim to be among the contributors to the development of
technology that has become essential to the implementation of these
standards.
9. The dispute between the plaintiffs and defendants is regarding use of
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plaintiff’s Standard Essential Patents (SEPs) with respect to 3G, 4G, 5G and
HEVC (video coding) used by the defendants in their mobile phones.
Plaintiffs claim that the defendants have remained unlicensed since launching
their smartphones in the Indian market, atleast since April, 2016. Plaintiffs
allege that the defendants’ mobile phones make unauthorised and unlicensed
use of the plaintiff’s SEPs, amounting to infringement of those SEPs,
including the suit patents. Plaintiffs claim that the defendant no.1 had a
market share of 8.6% as of the closing year 2023. In the present case, the
plaintiffs rely on some of its SEPs from their the entire portfolio which protect
technology pertaining to 3G, 4G and 5G standards.
10. Plaintiffs state that the defendants’ unwillingness to conclude a license
from the plaintiffs would mean that the import, manufacture, sale, offer for
sale and use of the defendant’s products amount to infringement of plaintiffs’
SEPs. They further state that plaintiffs and similar owners of SEPs, have
undertaken an obligation to grant licenses for the use of their SEPs to willing,
end-user device manufacturers on fair, reasonable and non discriminatory
(hereinafter referred to as “FRAND”) terms and conditions.
11. Plaintiffs claim to have made numerous attempts to negotiate and
execute a license agreement for their SEPs with the defendants since their first
correspondence in June, 2019. However, the defendants are stated to have not
shown true willingness to enter into a license agreement on FRAND terms.
12. It is for this reason, the accompanying suit has been filed. While the suit
is pending adjudication, the present applications have been filed seeking the
following reliefs:
“a. A direction to the Defendants for the payment of a pro-tem
security deposit of monies directly to the Plaintiffs, for the
unlicensed manufacture, import and sale of 3G, 4G and 5G
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compliant devices, on the basis of FRAND offer(s) made by the
Plaintiffs to the Defendants, or any other amount as deemed fit by
this Hon’ble Court in order to secure the rights and interests of the
Plaintiffs during the pendency of the Plaintiffs’ interim injunction
application;”
ARGUMENTS OF THE PLAINTIFFS:-
13. Appearing for the plaintiffs, Mr. Anand, learned counsel submitted as
under:
13.1. Mr. Anand, learned counsel gave a brief overview of what a
Standard Essential Patent (hereinafter referred to as “SEP”) is, and
explained the need for the SEPs in the context of wireless
communications globally. He submitted that the SEPs allow
interoperability and compatibility between products made by different
manufacturers to work together seamlessly across various jurisdictions.
Learned counsel submitted that the standards are broadly categorized
based on their source primarily de facto, collaborative and
governmental and those based on access to intellectual property rights
or openness in the development process, primarily open and close
standards.
13.2. Learned counsel elaborated on what are Standard Development
Organisations (SDOs), submitting that these are voluntary and non-
profit organisations that coordinate the development of standards.
Some of the well-known SDOs are DVD Forum; 3GPP; CCSA
(China); EPSI (Europe); ATIS (USA); TTA (Korea); TTC (Japan);
TSDSI (India); IEEE- Institute of Electrical and Electronics Engineers;
ISO- International Standards organization; ITU-T-International
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Telecommunications Union and IEC-International Electrotechnical
Commission.
13.3. Coming to the present case, learned counsel submitted that the
present applications are in respect of a claim for pro tem security
sought by the plaintiffs. He would contend that the basis for pro tem
security emanates from the implementor’s obligation to necessarily
secure the SEP holder and provide a rendition of accounts when
making unlicensed use of its SEPs. He would submit that, unlike a
relief of interim injunction on the ground of infringement, a claim for
pro tem security does not require the Court to assess deeper issues like
validity and essentiality on merits.
13.4. Learned counsel submitted that the plaintiffs had filed four
previous suits, in that, two suits against Xiaomi and two against Oppo
bearing CS (COMM) 295/2020 & CS (COMM) 296/2020 titled
“Interdigital Technology Corporation & Ors. vs. Xiaomi Corporation
& Ors.” decided on 15.11.2021; and CS (COMM) 692/2021 &
CS(COMM) 707/2021 titled “Interdigital Technology Corporation &
Ors. vs. Guangdong Oppo Mobile Telecommunications Corp. Ltd. &
Ors.” decided on 05.11.2024. He submitted that all four suits were
decreed in respect of patents which are identical to the patents in the
present suits. He refers to the final judgment and decree passed in those
suits which are placed at pages 172 and 175 of the Convenience
Compilation handed over the Bench. He also refers to the interim
orders passed in the same suits in respect of the pro tem security sought
by the plaintiffs. Learned counsel also handed over to the Bench the
order passed by the learned Division Bench in FAO(OS)(COMM)
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47/2024 titled “Guangdong Oppo Mobile Telecommunications Corp.
Ltd. & Ors. vs. Interdigital Technology Corporation & Ors” decided
on 31.05.2024.
13.5. Touching lightly upon what according to him is the manner in
which infringement of an SEP may be proved, he explained that it is
done by (i) mapping plaintiff’s patent to the standard to show that the
patent is an SEP and (ii) showing that the defendants’ device also maps
to the standard. This, according to him, is akin to the Law of
Transitivity. In order to demonstrate that the patent maps onto the
standard, courts ordinarily consider claim charts which can be mapped
to the standard and for the purposes of demonstrating that the
defendants’ device conforms to the said standards, the Courts could
also consider test reports which show that the device conforms to the
standard.
13.6. Learned counsel for the plaintiffs submit that the present suits
have been filed essentially based on five patents which are enumerated
as under:
CS(COMM) 1045/2025
13.6.1. Indian Patent No. 295912 (IN’912 patent) titled
“DYNAMIC RESOURCE ALLOCATION, SCHEDULING AND
SIGNALING FOR VARIABLE DATA RATE SERVICE IN LTE” granted
on 19.04.2018.
13.6.2. Indian Patent No. 313036 (IN'036 patent) titled
"METHOD AND SYSTEM FOR A WIRELESS
TRANSMISSION/RECEIPT” granted on 22.05.2019.
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13.6.3. Indian Patent No. 320182 (IN’182 patent) titled
“IMPLICIT DRX CYCLE LENGTH ADJUSTMENT CONTROL IN
LTE_ACTIVE MODE” granted on 10.09.2019.
13.6.4. Indian Patent No. 319673 (IN’673 patent) titled
“METHOD AND APPARATUS FOR ENHANCING DISCONTINUOUS
RECEPTION IN WIRELESS COMMUNICATION SYSTEMS” granted
on 02.09.2019.
13.6.5. Indian Patent No. 262910 (IN’910 patent) titled “A
METHOD FOR TRANSFERRING DATA OVER AN ENHANCED
DEDICATED CHANNEL (E-DCH), A WIRELESS
TRANSMIT/RECEIVE UNIT AND A BASE STATION THEREOF”
granted on 24.09.2014.
CS(COMM) 1046/2025
13.6.6. Indian Patent No. 308108 (IN’108 patent) titled
“METHODS AND APPARATUS FOR IN-LOOP DE-ARTIFACT
FILTERING” granted on 26.02.2019.
13.7. Learned counsel for the plaintiffs drew attention to the field of
invention described in the complete specifications, as well as the
eighteen claims contained therein. Learned counsel has also
painstakingly taken this Court through the claim charts which
demonstrate claim mapping of the Indian patents with the 3GPP
standards for the purpose of essentiality analysis. Learned counsel
submitted that in the last six years, commencing from the year 2019,
the plaintiffs have provided more than 100 claim charts to the
defendants for the purposes of executing FRAND agreement. In order
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to substantiate the essentiality, as an example, learned counsel referred
to IN’036, which corresponds to EP Patent no.2485558 and submitted
that the said patent was subject matter of a lawsuit in the UK Court
between the plaintiffs and Lenovo bearing Case No.HP-2019-000032,
wherein, by the order dated 29.07.2021, the said patent has been held
to be valid and essential to the Release 8 of LTE and that it had been
infringed. Thus, according to him, the essentiality of the patent IN’036
has already been tested and its validity upheld by the UK Court. An
appeal was preferred by the plaintiffs, however, was dismissed by the
Appellate Court vide the judgment dated 19.01.2023.
13.8. In order to demonstrate that the plaintiffs were willing licensors
and ready to execute an agreement, the plaintiffs had sent a number of
claim charts to the defendants. It was submitted that the aforesaid IN
036 was sent to the defendants along with the claim chart which was
discussed. Learned counsel also referred to a number of
correspondences emanating after the claim was submitted to the
defendants, particularly the letter dated 25.08.2025. Learned counsel
would contend that the letter dated 25.08.2025 is relevant for the
reason that though the plaintiffs’ offer dated 25.05.2025 complied with
the commitment to grant FRAND license in respect of plaintiff’s SEP
portfolio, the defendants continued to question the accuracy of
CounterPoint’s reports.
. He also submitted that the
defendants were also made aware of the determination of royalty for a
patent license between the plaintiffs and Samsung, in which the
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International Chamber of Commerce Arbitrators recognized
approximately USD 131 million of recurring revenue per year for eight
years. However, learned counsel submitted that the defendants
remained unwilling licensee inasmuch as neither did they agree to the
FRAND offer of the plaintiffs nor did they agree to invoke arbitration
to decide the disputes.
13.9. Learned counsel also contended that there are a number of
judgments of this Court whereby it has been held that pro tem security
payment is an ad-interim relief meant to balance equities between the
parties and is the implementor’s obligation in the negotiation phase
itself. He also contended that the threshold for establishing a prima
facie case for pro tem security payment is lower as no detailed
exploration of facts is needed. According to learned counsel, the relief
sought by way of a pro tem security payment is not assessed in the
same manner as an interim injunction since only equities are to be
balanced where the SEP holder stands at a disadvantage vis-a-vis an
implementor.
13.10. Learned counsel would emphasize that the payment of pro tem
security also becomes necessary inasmuch as during the pendency of
the suit, the implementor, i.e. the defendants in this case continue to
sell their devices which use the SEPs in question. Thus, the lack of
security works to the disadvantage of not only the SEP holder like the
plaintiffs, but also other willing licensees who choose to pay license
fees for the same patents. Learned counsel also submitted that there are
a large number of cases where pro tem security has been directed to be
deposited. In fact, according to learned counsel, if the plaintiffs are
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able to prima facie demonstrate validity and essentiality of even one of
the suit patents, the plaintiffs are entitled to pro tem security payment
as against the entire SEP portfolio. He would submit that as
demonstrated above, IN 036, as an example, has not only been held to
be essential and valid by the UK Court between IDC and Lenovo,
case No: HP-2019-000032, Neutral Citation Number: [2021] EWHC
2152 (Pat), but even the defendants therein could not question its
essentiality and validity. Similarly, learned counsel would submit that
the plaintiffs had provided the defendants with more than 100 claims in
the last six years, yet, the defendants for one reason or the other has
been delaying the issue of execution of FRAND License. It is in that
context, learned counsel would submit that the plaintiffs have been
able to demonstrate that the defendants are an unwilling licensee.
13.11. In order to substantiate that the plaintiffs are willing licensors and
that they have complied with the FRAND obligations, learned counsel
would submit that the defendants were approached way back in the
year 2019 and subsequently in the year 2020, which negotiations are
continuing till date. Learned counsel would submit that the
correspondence exchanged between the parties would clearly
demonstrate that the plaintiffs had complied with their FRAND
obligations. In fact, the parties are stated to have exchanged several
offers and counter-offers. The tabulated form of offers and counter-
offers is extracted hereunder:
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1. Plaintiff’s first offer
2. Defendant’s first
counteroffer
3. Plaintiff’s second Offer
4. Defendant’s second
counteroffer
5. Defendant’s third
counteroffer13.12. In order to further demonstrate that defendants are unwilling
licensees, learned counsel also emphasized that in order to resolve the
FRAND licensing rates, the plaintiffs offered resolution through a
neutral and independent third-party Arbitration Tribunal. However, the
defendants are stated to have refused such alternate dispute resolution.
That apart, the plaintiffs have gone to the extent of sharing the list of
patents forming their SEP Portfolio with the defendants under the letter
dated 01.03.2024. Moreover, learned counsel reiterates that the
plaintiffs have shared 100 claim charts for 3G, 4G and 5G SEPs
demonstrating essentiality and infringement of such patents by the
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defendants’ devices vide the e-mails dated 19.03.2024, 30.03.2024,
25.05.2024 and 31.05.2024.Additionally, learned counsel would also
submit that the parties have had atleast twelve extensive meetings
including 4 full-day meetings in China for technical discussions on the
SEP portfolio. The plaintiffs are stated to have also provided detailed
explanations on the rationale and computation of the royalties proposed
in its offers made to defendant no.1 on 03.07.2025 and 25.08.2025. As
asserted above, learned counsel would submit that the e-mails dated
03.07.2025 and 25.08.2025 clearly indicated the royalties that were
being paid by other licensees. However, the non-response by the
defendants to enter into a FRAND license agreement on account of
aforesaid facts, according to the learned counsel, demonstrates that the
defendants are an unwilling licensee.
13.13. In order to buttress that the plaintiff’s SEP portfolio is tried and
tested, learned counsel would submit that the plaintiffs have disclosed
to ETSI several patents covering 3G, 4G and 5G which include (i)
more than 150 3G UMTS patent families comprising more than 3100
patents and applications; (ii) more than 470 4G LTE patent families
comprising more than 6700 individual patents and applications and (iii)
more than 450 5G NR patent families, comprising more than 4600
patents and applications. Learned counsel emphatically stated that for
the very same portfolio of the plaintiffs, companies like Apple, Google,
Oppo, Samsung, Huawei, Lenovo, LG, ZTE, HTC, Kyocera, Sony and
Xiaomi have already accepted licenses which include the suit patents
too.
13.14. Learned counsel would contend that despite requests, particularly
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the request made on 08.05.2025, the defendant no.1 has failed to
disclose the requisite sales data which is usually the action undertaken
by every willing licensee in order to complete the negotiations with
respect to execution of a FRAND License Agreement. He also
contended that the unwillingness of the defendants to obtain license on
FRAND terms is also clear from the fact that no security has been
offered by the defendant no.1 despite six years of continuous
negotiations which is further confirmed by the unreasonably low
counter-offers made by the defendant no.1.
13.15. In order to demonstrate that not only are the defendants unwilling
licensees but also habitual offenders, learned counsel referred to other
litigations filed by SEP holders against defendant no.1 consequent
whereupon, the defendant no.1 settled the matter by executing license
agreements. He also informs that there are other litigations pending not
only in India but in foreign jurisdictions as well.
13.16. In order to strengthen the case of the plaintiffs for payment of pro
tem security, learned counsel would contend that the defendants are in
a precarious financial condition in the following manner:
a. Transsion India faces significant contingent risks,
including a customs duty dispute with the DRI involving
paid under protest.
b. A transfer pricing adjustment of
c. Transsion India has investigations involving a
vendor’s director amounting to freezing of a bank account
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d. A major customer, Defendant no. 5, G Mobiles India
Pvt Ltd. has bad financial health and Transsion India’s
dependence might affect its financial health.
e. Transsion India has no immovable assets in India.”
13.17. Dilating further, learned counsel would also submit that the
defendant no.5- G Mobiles India Private Limited has a negative net
worth and has never been positive for five reporting years. Learned
counsel would contend that the precarious financial condition of
defendants is a good and valid ground for grant of pro tem security as
held by this Court in Nokia vs. Oppo (DB) (supra) and Dolby vs. Lava
(supra).
13.18. To the question of the quantum of pro tem security which needs
to be deposited, Mr. Anand, learned counsel would emphatically
contend that it should be based on the offer of the plaintiffs and not the
counter-offer of the defendants. He would rely on the judgment of
Phillips vs. Oplus, Dolby vs. Lava and Voiceage vs. HMD (German
Decision) for the said proposition. Predicated thereon, learned counsel
would submit that the defendants ought to be directed to deposit a pro
tem security amount based on the plaintiff’s last offer of 07.05.2025
for on all 3G, 4G and 5G compliant devices sold in
India by the defendants.
13.19. In order to demonstrate how various decisions of this Court have
quantified the pro tem security amount to be deposited by defendants,
learned counsel had handed over to the Court a detailed chart which is
reproduced hereunder:
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Sl. Title Technology Form of Whether Whether Quantum of security and
No. type security ex- PLAs shown basis
licensee to Defendant
relationsh before pro-
ip? tem
security?
1. OPPO v. 3G, 4G, 5G, Bank No No Quantum -
InterDigita HEVC Guarantee (****** Figures)
l (DB) Confidential
2024
Basis - 18.75% of global
Counteroffer
(India share)
2. Nokia v. 3G, 4G, 5G Deposit in Yes No Quantum - Confidential
Oppo court (****** Figures)
(DB) - Confidential
2023
Basis -
23% Last-paid royalty
(India share)
3. Xiaomi v. 2G, 3G Deposit in No No Quantum - INR 100 X
Ericsson court devices sold
(DB) 2014
Basis - Ad-hoc and
random figure picked by
the Court
4. Dolby v. Advanced Deposit in No No Quantum 1 - First pro-
Lava 2025 Audio court tem based on Defendants'
Coding (Seen only by counteroffer of INR 5.13
(AAC) the Court. per device
Not the
Defendants' Quantum 2 - Second pro-
counsel or tem based on Plaintiffs' per
representativ device rates, Quantum is
es) confidential
Basis - Dolby's rates.
The Court saw the PLAs
but only for "satisfying the
Court's conscience" that
the similar rates were
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charged to 3rd parties.
Court held that PLAs are
not necessary for deciding
pro-tem.
PLAs were not disclosed
to Defendants.
5. Atlas v. Wi-Fi 6 Deposit in No No Quantum 1 - (******
TP Link court Figures)
2023 Confidential
Basis - 1/5th of
Defendants' counteroffer
Quantum 2 - INR 1 crore
(subsequently revised)
Basis - Ad-hoc figure
6. Philips v. 3G, 4G Deposit in No No Quantum - INR 53 crores
Oplus court
2023 (Seen only by Basis - Plaintiff's rates X
counsel and Defendants' sales
the Court.
Not by party
representativ
es)
7. Philips v. 3G, 4G Real estate No No Quantum - Real Estate
Oppo was attached as security.
2022
Basis - This was an offer
made by Defendants, and
accepted by Plaintiffs.
8. Philips v. 3G, 4G Bank No No Quantum - INR 1000
Xiaomi Guarantee crores
2020
Basis - This was an ad-
hoc amount in the order.
Defendant agreed to secure
the Plaintiff for this
amount on Day 1.
The order was to keep the
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money in a bank account,
and later modified to a
bank guarantee.
9. Philips v. 3G, 4G Real estate No No Quantum - Real Estate
Vivo 2020 was attached as security.
This was an offer made by
Defendants, and accepted
by Plaintiffs.
(Seen by
counsel and
the Court
after grant of
security)
10. Dolby v. Advanced Deposit in No No Quantum - INR 34 per
Das, Audio court device, later reduced to
Dolby vs Coding INR 20 per device.
GDN (AAC)
(Oppo, Later, parties entered an
Vivo) interim arrangement for
INR 30 per device.
Total amounted to at least
INR 91 crores.
Basis - Lower than
Plaintiffs' offer (INR 38
per device) but higher than
Defendants' counteroffer.
11. Philips v. DVD Deposit in No No Quantum - INR 45 per
Bhagirathi court device
and
Philips Basis - Ad hoc
12. Ericsson 2G, 3G Payment to No No Quantum 1-
v. Plaintiff
Mercury (Seen only by (a) GSM: 1.25% of
the Court) NSP
(b) GPRS + GSM:
1.75% of NSP
(c) EDGE + GPRS +
GSM: 2% of NSP
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(d) WCDMA/HSPA:
2% of NSP
(e) Dongles: USD
2.50
Quantum 2:
(a) GSM: 0.8% of
NSP
(b) GPRS + GSM:
0.8% of NSP
(c) EDGE + GPRS +
GSM: 1% to 1.1% of
NSP
(d) WCDMA/HSPA:
1% to 1.1% of NSP
Basis: Ericsson's rates
The Court did not see
PLAs for Quantum 1.
The Court saw PLAs for
Quantum
However, Court clarified
that the determination was
not reflective of FRAND
rates.
13. Ericsson 2G, 3G Payment to No No Quantum 1:
v. Gionee Plaintiff
(a) GSM: 1.25% of
NSP
(b) GPRS + GSM:
1.75% of NSP
(c) EDGE + GPRS +
GSM: 2% of NSP
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2% of NSP
(e) Dongles: USD
2.50
Basis: Ericsson's rates.
Quantum 2:
(a) GSM: 0.8% of
NSP
(b) GPRS + GSM:
0.8% of NSP
(c) EDGE + GPRS +
GSM: 1% to 1.1% of
NSP
(d) WCDMA/HSPA:
1% to 1.1% of NSP
Basis - Interim
arrangement arrived
between parties.
CONTENTIONS ON BEHALF OF THE DEFENDANTS:-
14. Appearing for the defendants, Mr. Saikrishna Rajgopal, learned counsel
handed over the Bench, submissions on behalf of the defendants on aspects
regarding pro tem security and the applicable law. He would submit as under:
14.1. Fundamentally, learned counsel would submit that the Standards
Setting Organizations (SSOs) and its members have an incentive to
push for the inclusion of the technology since such inclusion ensures a
market for such technology. He also contended that the SSOs are under
no obligation to check whether patents declared to be essential or valid
are in fact and therefore primarily all SEP claims are self-declarations
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made by the patentees themselves. Equally, he would submit that the
SSO does not prescribe what the FRAND rates or term would be.
Finally, it is the National Courts globally who determine all the
aforesaid aspects of an SEP portfolio. He would contend that,
therefore, there is no presumption attached to essentiality or validity of
an SEP or a patent comprising such a portfolio. According to him, in
the lack of such positive authentication and verification, the question of
claim of pro tem deposit, that too on an assumption and the self-
serving statement of the plaintiffs that its suit patents or the SEP
portfolio are in fact essential and valid, does not arise.
14.2. Elaborating further, he would submit that ETSI, the SSO in the
present case has clearly stated that it has not checked the validity of the
information nor the relevance of the identified patents/patent
applications to the ETSI standards and thus, cannot confirm or deny
that such patents are either essential or potentially essential. Thus,
unless such parameters are first established by the plaintiffs in
accordance with law, no such order of payment of pro tem security can
be passed by this Court. In support of the aforesaid contention, learned
counsel relied upon Unwired Planet International Ltd and Anr. Vs
Huawei Technologies (UK) Co Ltd.; [2020] UKSC 37 and Intex
Technologies (India) Ltd. vs. Telefonaktiebolaget LM Ericsson
(PUBL); 2023: DHC:2243-DB.
14.3. According to learned counsel for the defendants, the plaintiffs are
obliged to demonstrate that (i) the patent maps to the standard through
claim charts and (ii) the impugned devices manufactured and sold by
the defendants conform to the asserted standard. Learned counsel
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would submit that in the present case, both are lacking. In the first
instance, the defendants have, in their reply, challenged the claim of
the plaintiffs that the claim charts of the patents, do map onto the
Standard. This fulfils the requirement of Rule 2(f) of the High Court of
Delhi Rules Governing Patent Suits, 2022. And in the second, learned
counsel would submit that the plaintiffs have failed to provide any test
reports of the defendants’ devices in the suit pertaining to
smartphones/mobiles and the test report provided in the HEVC suit is
flawed. He further contended that the claim chart filed by the plaintiffs
assert certain specific standards, however, the defendants have
nowhere in its technical specifications acceded to any compliance with
the said standards. Therefore, it would be imperative for the plaintiffs
to first test the defendants’ devices to ascertain as to whether the
technologies can exist outside the asserted standards as well.
According to learned counsel, only when both the aforesaid steps are
demonstrated by the plaintiffs, will it be in a position to establish
infringement of its claimed SEP. Consequently, as per the learned
counsel, the issue of pro tem security deposit, till prima facie
establishment of infringement of patents is reached, cannot be
considered or appreciated.
14.4. Referring to a number of judgments, learned counsel would
submit that what can be carved from the ratio laid down therein is that
even for grant of pro tem, a prima facie establishment of essentiality
and validity has to be made out. He would contend that reliance indeed
can be placed on certain surrounding factors, however, such factors
need to be undisputed by both the parties. He submitted that the
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determination of quantum or pro tem deposit should be based on
objective material which may be relied upon by the Court. In the
absence of any such surrounding factors or objective material coupled
with the requirement of prima facie establishment of essentiality and
validity, no orders for grant of pro tem security can be passed.
14.5. Differing from the arguments addressed by Mr. Pravin Anand,
learned counsel, in respect of the judgment in Nokia Technologies OY
versus Gwangduang Oppo; 2023:DHC:4465, learned counsel
emphasized on the factual differences arising in both the cases. He
would submit that in Nokia Technologies (supra), the defendants Oppo
((i) was an ex-licensee of Nokia for the patents asserted in the suit and
was negotiating to renew its licensing arrangement; (ii) had made an
offer to render interim payments to Nokia; (iii) had filed a FRAND rate
setting suit in China, which was construed to be a prima facie
admission that Nokia did own SEPs, which OPPO was required to
license; (iv) In 11 out of 13 proceedings filed globally, Courts had
found OPPO to be infringing Nokia’s SEPs; (v) There was objective
material to determine the quantum of the pro tem security – the past
license agreement and (vi) OPPO’s financial health was precarious in
nature. In contradistinction, in the present case, the vital factual
differences are that (i) no prior licensing arrangement between the
parties; (ii) no such offer has been made by Transsion; (iii) No such
proceedings has been filed by Transsion and (iv) No such adverse
finding has come against Transsion. However, Plaintiff’s claimed SEPs
has been held to be non-essential in the past and the corresponding
foreign patent of two of the suit patents have been held to be invalid in
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China; (v) There is no objective material on record. Plaintiffs have not
even filed their third party license agreements and (vi) Defendant no.4
has immovable assets in India, which are valued at
Transsion is of robust financial health with net profits for the year
2024-2025 being as follows: a) Defendant No. 2 (Ismartu) –
in 2024-2025; b) Defendant No. 4 (G Mobile) - in
2024-2025 and c) Defendant no.5 (S Mobile) - in 2024-
2025. Relying on the said judgment, learned counsel submitted that in
the said case the Court had, before it, objective material to determine
the quantum of pro tem deposit, in the form of previous licensing
arrangement between the parties. Whereas, no such objective material
is available in the present suits.
14.6. The defendants rely upon the judgment of this Court in Oppo vs.
IDG of the learned Division Bench reported in 2024:DHC:4547-DB,
particularly para 96 and 99 wherein it was held that it would be
necessary in a contested case for the Court to form a prima facie view
before granting any interim relief and simultaneously had noted the
facts in the judgment in Nokia Technologies (supra) and observed that
in that case there was an objective material which may have propelled
the Court to direct deposit of pro tem security. Learned counsel stated
that the learned Division Bench in Oppo (supra) held that the decision
in Nokia Technologies (supra) is not an authority for the proposition
that pro tem deposits can be ordered without even considering the
defences raised by the defendants and taking a prima facie view. The
Court also held that pro tem deposits cannot be punitive in nature.
14.7. Similarly, learned counsel also assailed the reliance of the
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plaintiffs on the judgment of this Court in Dolby vs. Lava,
2025:DHC:5426 to submit that the Court was impelled to grant pro
tem for the reason that (i) the defendants Lava’s technical expert had
admitted that Dolby’s patents are essential to the asserted standard and
(ii) the plaintiff’s third-party licenses which were filed by Dolby were
also considered. However, in the present case, learned counsel would
contend that the defendants had neither admitted the plaintiff’s
essentiality nor validity of the patents as SEPs, rather, the same has
been challenged by the defendants. Moreover, in the present case,
learned counsel contends that plaintiffs have refused to file any of its
third party license agreements (hereinafter referred to as “TPLAs”)
despite the defendants issuing notice of production dated 13.11.2025.
In fact, according to learned counsel, an adverse inference against such
non-production ought to be drawn by this Court against the plaintiffs.
On similar grounds, the reliance of the plaintiffs in CS(COMM)
575/2023 titled “Atlas Global Technologies LLC versus TP Link
Technologies Co. Ltd. and Ors.” decided on 28.08.2023 [vide order
dated 13.10.2023, the Court reduced the 1/5th of the counteroffer] was
also distinguished and differentiated on facts.
14.8. The case of CS(COMM) 574/2019 titled “Koninklijke Phillips
N.V. v/s Oplus Mobitech India Private Limited and Others” decided
on 20.12.2023, relied upon by the plaintiffs have been sought to be
differentiated on facts. Learned counsel contended that the rates quoted
by Phillips had already been judicially determined as FRAND in
foreign jurisdictions and accordingly, were applied with slight
adjustment in India. In that case, Oplus neither negotiated nor provided
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a counter-offer. Learned counsel also submitted that Oplus neither
made a categorical statement that it does not use the technology
covered by the suit patents nor did it have any assets in India. Phillips
had placed third-party licences along record and access to the same
was provided to the counsel for the defendants and lastly the Court had
relied on the FRAND finding of a foreign court. According to learned
counsel, in contradistinction, it is claimed that defendant no.1 had been
continuously negotiating in good faith and making counter-offers;
taken a categorical stand that suit patents are not essential as they do
not map to the asserted standards; defendant no.4 has immovable assets
in India valued at ; despite notice of production plaintiffs
have failed to file or produce third-party license agreements and that
there has been no FRAND determination for the HEVC portfolio and
the offers of the plaintiffs have been held to be contrary to FRAND
terms by the UK High Court in Interdigital vs. Lenovo. Learned
counsel copiously read a number of paragraphs of the judgement in
Interdigital vs. Lenovo rendered by the UK High Court to emphasize
that the plaintiffs are guilty of not having complied with FRAND
offers as its rates were found to be more than double the FRAND rate.
In fact, it is submitted that the decision found Interdigital guilty of
Maximum Revenue Extraction. Taking support from the said
observations, learned counsel would submit that the plaintiffs latest
offer dated 07.05.2025 on which the pro tem security deposit is
predicated, has been found to be four times higher (opinion of the
economic expert of the defendants) when compared to the effective
rate determined by the UK Court of Appeals in Interdigital vs. Lenovo
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[(2024) EWCA Civ 743]. It is also contended that the plaintiffs failed
to provide the computational basis of the offer made on 07.05.2025 nor
have they given any valuation for the suit patents or their Indian
portfolio.
14.9. Contrary to the assertions made on behalf of the plaintiffs that the
EP counterparts of 2 of the 4 asserted suit patents have been held to be
essential by the UK Court of Appeals, learned counsel would
vehemently contend that the plaintiffs are guilty of suppression of the
fact that the Chinese counterparts of the very same patents have been
invalided in another jurisdiction. The details are mentioned below:
a. IN 262910 – Supreme People’s Court of People’s Republic of
China held that the Chinese equivalent is invalid as it lacks
inventive step by decision dated 17.12.2024.
b. IN 313036 – one of the Chinese counterpart i.e.
ZL200780004185.1 was invalidated by CNIPA in Notification of
Decision of Invalidation 48997 dated 19.02.2021.
14.10. In view of the above, learned counsel would contend that this
Court, therefore, needs to apply its mind as to whether the views of the
Supreme Court of China are to be endorsed or that of the UK Court of
Appeals. Additionally, he would contend that the aforesaid
invalidations by itself would demonstrate that the suit patents need to
be technically reviewed and the claims of essentiality or validity ought
not to be accepted at face value. In furtherance to the said submission,
learned counsel also relies upon the judgment in Nokia Cooperation
vs. Interdigital Technology Cooperation [(2007) EWHC 3077 (Pat)]
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wherein the Court in para 134 concluded that 3 out of 4 patents in issue
before it are not essential to the standard, leaving the issue for a
decision on the evidence to be adduced at trial.
14.11. The other contention of Mr. Saikrishna Rajgopal, learned counsel
is as to whether any direction for deposit of pro tem can be passed
without verifying what are the royalties being paid by other
competitors of the defendants. In other words, he would contend that in
the absence of any TPLA entered into by the plaintiffs with the
similarly placed competitor and ascertaining the rates that might have
been fixed there, the question of pro tem deposit would not arise at all.
He would submit that every party would have its own peculiar terms
and conditions in respect of commercial transactions surrounding the
sale of their devices. Surely, according to him, commercial terms not
agreed to by other parties, cannot be saddled upon the defendants. This
would ensure a level playing field. Relying on Dolby vs. Lava-
2025:DHC:5426, he would submit that when there are a significant
number of competitors, some of whom may be in a better bargaining
position, that by itself may be a relevant factor to be taken into
consideration. He also relied upon certain judgments like Dolby
International AB and Anr. vs. Das Telecom Private Limited and
Ors.- CS(COMM) 1426/2016 decided on 10.12.2019 and
Telefonaktiebolaget LM Ericsson (PUBL) vs. Mercury Electronics
and Anr.- CS(OS) 442/2013 decided on 19.03.2013, to submit that
SEP holders consistently seek higher rates than what is FRAND.
Equally, he insisted that third-party license agreements are also
fundamental to suits like the present one. He insisted that the plaintiffs
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failed to place on record TPLAs and also failed to furnish a copy to the
defendants despite the defendants issuing disclosure notice dated
13.11.2025.
14.12. Dilating further on the aforesaid issue, learned counsel referred
to many foreign judgments to submit that what was initially offered by
SEP claimants as FRAND rates were found to be not within the
FRAND terms and the said courts interfered and reduced the rates
drastically. Thus, according to him, the rates quoted by plaintiffs
without testing the veracity and the assertion of the suit patents as to
whether those are essential and valid, cannot be relied upon to quantify
pro tem security.
14.13. Citing three cases namely, InterDigital vs. OPPO (supra),
Koninklijke Philips N.V. Vs VIVO Mobile Communication Co Ltd &
Ors., CS(COMM) 383/2020 decided on 17.11.2020 and Nokia
Technologies vs. Hisense Group Holdings Co. Ltd & Anr;
CS(COMM) 645/2025 decided on 22.09.2025, learned counsel would
submit that the relevance and importance of the TPLAs needs to be
underscored. In that, he would contend that the aforesaid three cases
were quickly resolved on the basis of disclosure of TPLAs to the
defendants in those cases, one of which was a suit filed by the present
plaintiffs itself. Thus, according to him, in the absence of TPLAs, the
quantification of pro tem and a direction to deposit that cannot be
passed.
14.14. Referring to the cases of Nokia vs. Oppo (DB), Dolby vs. Lava
(supra), Atlas vs. TP Link (supra) and Philips vs. OPlus- 2023,
learned counsel would submit that in most of the cases the Court had
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the benefit of TPLAs before passing any direction or quantifying pro
tem. He would also contend that as per the High Court of Delhi Rules
Governing Patent Suits, 2022, monetary payment would be permissible
only in exceptional situations and only upon infringement being prima
facie established. He also relied upon Rule 4A(viii) of the High Court
of Delhi Rules Governing Patent Suits, 2022, which mandate the
plaintiffs to file TPLAs on record to submit that the plaintiffs have
deliberately not filed such TPLAs on record. Nor has the plaintiffs
filed the TPLAs despite notice of production dated 13.11.2025 issued
by the defendant no.1.
14.15. Learned counsel referred to Clause 7 of the Non-Disclosure
Agreement (hereinafter referred to as ‘NDA’) to submit that the parties
were ad idem that the confidential information being shared inter se is
provided ‘as is’ with no warranties expressed or implied. He would
contend that it is on this basis that the plaintiffs shared its patent lists
with the defendants on the categorical stand that the plaintiffs makes
no representation as to its accuracy or to the essentiality of the patents.
In other words, learned counsel would contend that the plaintiffs itself
was unsure as to whether the patents comprising the list were essential
or not. If that be so, learned counsel would contend that the premise on
which the pro tem security is sought, itself, is without any stable
foundation and cannot be granted.
14.16. Learned counsel categorically asserted that the defendant no.1
had engaged in technical evaluation of plaintiff’s claim, earnestly. He
would submit that analysis of about 50 claim charts were furnished by
defendant no.1 to the plaintiffs between 17.06.2024 and 30.10.2024.
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He would submit that between January 2024 and July 2025, the parties
had engaged in about a dozen meetings, however, the plaintiffs did not
provide any basis to verify the FRAND claims for the offers made by
them. That apart, plaintiffs did not also give any computational basis or
objective material to verify the FRAND claims particularly the offers
made on 10.10.2024 and 05.05.2025. He would submit that defendant
no.1 repeatedly requested the plaintiffs to be reasonable in the offers
made by them as defendant no.1 was operating in developing countries
like Africa and South-East Asia. However, the plaintiffs failed to
revise its offers substantially.
14.17. So far as counter-offers made by defendant no.1 is concerned,
learned counsel would submit that the said counter-offers were without
prejudice and cannot be made the basis of an admission for the
purposes of quantifying pro tem. He would contend that this Court vide
judgment dated 13.10.2025, in Philips vs. M. Bathla and Anr.-
2025:DHC:9079 observed that correspondences between the parties
are without prejudice to the rights and contentions that might be raised
by a defendants in suits pertaining to SEP portfolios. Thus, according
to him, the counter-offers cannot be considered as admissions and
resultantly, cannot form the edifice whereon pro tem security is either
quantified or directed to be deposited. On the issue of delay, learned
counsel vehemently contended that contrary to the false submission
that delay in negotiations were on account of defendants’ willful and
deliberate inaction on the negotiations, the plaintiffs itself kept silent
for 18 consecutive months i.e. 23.04.2021 to 03.11.2022. Thus, it is the
plaintiff which is blameworthy of the delay caused in both the parties
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negotiating FRAND terms.
14.18. Relying on Intex Technologies (India) Ltd vs
Telefonaktiebolaget LM Ericsson (PUBL), Neutral Citation –
2023:DHC:2243-DB, (DB) learned counsel would submit that a
licensor like the present plaintiffs, will be considered as a willing
licensor only if it gives a FRAND offer and if it offers a supra-FRAND
offer, such plaintiffs are likely to be considered an unwilling licensor.
He further contended that the Court needs to assess whether prima
facie the patent is infringed apart from assessing whether the implentor
is an unwilling licensee and whether the royalty sought is on FRAND
terms. According to him, unless the aforesaid conditions are prima
facie fulfilled, no order on pro tem deposit can be passed.
14.19. Contrary to a false and frivolous submission of the plaintiffs that
defendant no.1 is under financial distress, learned counsel asserted that
defendant no.1 has a robust financial health which is evidenced by the
financial statements for FY 2024-25 and that the defendants companies
are operationally sound and profitable entities. According to learned
counsel, the latest balance sheets of defendant no. 2, 4 and 5
demonstrate that these defendants are profitable and have a positive net
worth of Rs.244 Crores, Rs.28 Crores and Rs.157 Crores respectively.
He submitted that defendant no.2 has assets in India. In fact, he would
submit that the plaintiff’s CA report itself admits that defendant no.1
has good and sound financial health. Thus, there being no distress
financial or otherwise of any of the defendants including defendant
no.1, the question of inability of the defendants together or defendant
no.1 to make good any direction by this Court of payment of any
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monies or royalties at a later stage or after the judgment and decree, if
any, is passed, is a mirage and untrue. Thus, the defendants being in
pink financial health, there is no occasion for this Court to pass any
orders directing deposit of pro tem security.
14.20. Without prejudice to the rights and contentions of the defendants,
learned counsel next argued on the quantification or computation of the
pro tem deposit. He would submit that the plaintiff’s demand a pro tem
deposit of of their offer of for a period of
years. However, the plaintiff’s offer cannot form basis of the pro tem
deposit as (i) plaintiffs have failed to provide any computational basis
for such offer ever during negotiations nor has it provided such basis
despite notice dated 13.11.2025 issued by defendant no.1; (ii) the
prayer of pro tem being based on the claim that the offers made by the
plaintiffs are FRAND, it was incumbent on the plaintiffs to produce
TPLAs and provide access to the same to this Court as well as the
defendants; and (iii) the plaintiff’s offer was for the entire portfolio
which comprise patents with no corresponding protection in India and
thus, cannot be the basis to direct pro tem security deposit against the
defendants. Learned counsel would contend that unless the plaintiffs
provides valuation of the suit patents or its Indian portfolio, no such
direction for deposit of pro tem security can either be quantified or
directed. He would submit that as per the term sheet provided by
plaintiffs vide the e-mail dated 26.08.2025, apparently, out of
only was payable annually till while the
remaining was attributable to past sales. Therefore, he would contend
that even going by the offer of the plaintiffs at the highest, it could
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have sought security for defendant no.1’s India sales percentage of
on an annual basis.
14.21. Without prejudice to the aforesaid submission, he would submit
that the defendants are willing to give a security in the form of, Option
1- on the basis of defendants’ economic expert report, for cellular suit
patents and for HEVC suit patents,
from the date of the filing of the present suit and Option 2
being, a bank guarantee for an amount equivalent to of the last
counter-offer of made by the defendants.
14.22. Learned counsel would submit that the aforesaid options are
completely without prejudice to their rights and contentions including
the challenge to the validity and essentiality of the suit patents and
without the same being considered as an admission of any
infringement of any of the suit patents.
14.23. Mr. Saikrishna Rajgopal, learned counsel would also contend that
this Court needs to also appreciate the provisions of Section 48 of the
Patents Act which grants certain rights to the patentees. It was his
endeavour to convince this Court that at best or at the highest, and
without admitting, the plaintiffs could lay claim against the defendants
in respect of only those patents which are registered in India under the
said Act and the protection is extended to such patents under Section
48 of the Act. In other words, those patents which may form part of the
SEP portfolio but not protected under Section 48 of the Act, cannot
form part of the suit claim. Thus, viewed from that perspective,
according to him, the direction to deposit pro tem security for the
alleged entire SEP portfolio may not have any legal basis or foundation
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to stand on. Thus, the applications being bereft of legal foundation,
ought to be rejected and dismissed in limine.
REJOINDER ON BEHALF OF THE PLAINTIFFS
15. In rejoinder, Mr. Pravin Anand, learned counsel for the plaintiffs submit
as under:
15.1. To the argument of the defendants that even for passing orders
directing deposit for payment of pro tem security, a prima facie case
for establishing essentiality and validity of the SEP portfolio is
necessary, learned counsel contends that the same is contrary to the
law laid down by the Division Bench of this Court in Nokia vs. OPPO
which was ultimately upheld by the Supreme Court too. He relies on
para 59 of the said judgment in support of his contention. To the issue
of essentiality and validity to be established prima facie, learned
counsel relies upon Nokia vs. Oppo (DB) (supra) and Intex vs.
Ericson (DB)(2023) (supra) particularly para 114 of Intex vs. Ericson
which is as under:
“114. Further, the learned Single Judge in Nokia vs Oppo (supra)
has set an impossibly high bar for admission in a case of Standard
Essential Patent FRAND infringement, i.e., there has to be an
unequivocal admission on (i) essentiality and validity of the suit
patents (ii) fact of utilization (iii) fact that such utilization, absent
payment of liability would amount to infringement (iv) that the
royalty rate proposed by the plaintiff was FRAND. If there was an
unequivocal admission on all four counts, there would be no
necessity to file a suit for infringement at all and otherwise also,
same would mean seeking/passing of a final decree at the interim
stage!”
15.2. Learned counsel asserts that plaintiffs had extensively discussed
atleast three suit patents during technical discussions with defendant
no.1 and had proven a prima facie case of essentiality and validity.
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Despite this, learned counsel would submit that defendant no.1 had
never challenged the suit for patents any time prior to filing of the suit.
The three suit patents being IN 036, IN 673 and IN 182. Relying on
para 58 of Nokia vs. Oppo (DB) (supra), learned counsel would
contend that a pro tem order being a temporary arrangement can be
passed without a detailed explanation on merits. He would contend that
even in Dolby vs. Lava (supra), this Court had made similar
observations in para 38 to 40 of its judgment.
15.3. So far as ‘surrounding factors’ are concerned, learned counsel
would contend that even on that score there is enough material to
demonstrate that the plaintiffs have (i) executed more than 50
worldwide licenses for its telecommunication SEP portfolio; (ii)
enforced the same patents against third-parties like Oppo and Xiaomi;
(iii) obtained previous orders directing deposit of pro tem for the same
patents against third parties like Oppo; (iv) executed licenses with
parties like Apple, Xiaomi, Google etc. who are much larger than the
defendants; (v) considered the counter-offers provided by defendants
while consistently stating that they respect plaintiff’s IP and are willing
to take license; and (vi) the precarious financial condition of the
defendants. Thus, the parameters in respect of “surrounding factors”
are complete and satisfied.
15.4. Learned counsel also would contend and reiterate that TPLAs are
not a prerequisite for the grant of pro tem deposit. Relying on Intex vs.
Ericson (DB) (supra), learned counsel would contend that the
defendants have no right to seek furnishing of the TPLAs before any
direction for pro tem security deposit is made. Moreover, the TPLAs, if
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at all, may be a relevant consideration at a time when the Court is
required to draw FRAND terms and conditions. Thus, FRAND terms
are not sine qua non for the computation or direction to deposit pro
tem.
15.5. Apart from the aforesaid, learned counsel stoutly contended that
during the pendency of the present applications, the Brazilian Court
vide order dated 30.01.2026 has upheld the validity and essentiality of
counter parts of two of the suit patents i.e. IN 673 and IN 036. Learned
counsel also submitted that the UK High Court had vide the order
dated 29.07.2021, upheld the validity and essentiality of the EP (UK)
2485558 which is the same as IN 036 in Case no. HP-2019-000032
titled “Interdigital Technology Corporation vs. Lenovo Group Ltd”.
He also submitted that the appeal filed thereagainst was dismissed by
the Appellate Court on 19.01.2023. Thus, according to him, the
essentiality and validity one of the suit patents i.e. IN 036 has been
upheld by a court of competent jurisdiction. In another proceeding, the
UK Court of Appeal overturned the decision of the UK High Court
invalidating the EP (UK) counterpart of IN 910 which is the suit patent
vide order dated 09.02.2023.
15.6. Learned counsel reiterated that the plaintiffs have filed claim
charts in respect of each of the suit patents to demonstrate that the
relevant claims of the suit patents map onto the ETSI/3GPP standards.
Additionally, it is stated that the plaintiffs have filed invention
declarations in respect of each of the suit patents before the SSO-
ETSI/3GPP.
15.7. Learned counsel also reaffirmed that the plaintiffs have verified
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that the defendants’ devices are conforming to the 3G, 4G and 5G
standards as per the technical specifications displayed by the
defendants themselves. Learned counsel would forcefully assert that
though there was no obligation, yet the plaintiffs have also conducted
technical analysis and testing of the defendants’ devices to establish
that those devices conform to the 3G, 4G and 5G standards and
implement the suit patents. Thus, even on that aspect, there is a reliable
report confirming the mapping of the claim chart of the suit patents
with the actual devices.
15.8. Learned counsel next relied and reaffirmed the submissions that
defendant no.1 is an unwilling licensee. He relied upon the extensive
correspondences exchanged between the parties in the last many years
of negotiations to contend that the unwillingness to obtain a license is
apparent from the language used by the defendants in their
correspondences. He would contend that the defendants were also
informed and furnished copies of the US annual reports in which the
plaintiffs are mandated under US Law to disclose the license fee
publicly, so as to ensure that the defendant no.1 has an informed choice
as to what were the rates entered into by the plaintiffs with other third-
parties. He further contended that it was only upon such information
having been provided to defendant no.1 under the e-mail dated
25.08.2025 that defendant no.1 vide the e-mail dated 20.09.2025 gave
its third counter-offer which was an increase to the extent of
over the last offer. He submitted that in the said e-mail, defendant no.1
yet again reiterated its willingness to obtain license of the plaintiff’s
patents while at the same time disagreeing to refer the dispute to
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Arbitration.
15.9. To the argument of the defendants that the suit patent IN 420806
is also a subject matter of another suit bearing CS No. 1146/2026
pending consideration before the Coordinate Roster Bench whereby
the same plaintiffs are seeking injunction without averring that the said
IN 420806 is an SEP and thus, there is contradiction between the two
suits, Mr. Anand, learned counsel, would demonstrate the distinction
between the two suits by the following table:-
S.No. Suit Number Asserted Patent(s) Technology Whether an
SEP or not?
1 CS(COMM) IN 295912 Cellular (3G, YES
1045/2025 IN 313036 4G, 5G)
IN 320182
IN 319673
IN 262910
2 CS(COMM) IN 308108 HEVC YES
1046/2025
3 CS(COMM) IN 420806 AVI and VP9 NO
1146/2025
SURREJOINDER ON BEHALF OF THE DEFENDANTS:
16. In surrejoinder, Mr. Saikrishna Rajagopal, learned counsel would
submit as under:
16.1. Mr. Saikrishna Rajagopal, learned counsel would submit that in
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previous occasions this Court has directed deposit of pro tem on
perusing the TPLAs and in those cases where such agreements were
not available has proceeded to quantify and direct deposit of pro tem
on the basis of counter-offers made by the defendants. Thus, according
to him, since no TPLAs have been filed on record by the plaintiffs, if at
all the Court has to pass any orders on pro tem, though without
prejudice to and independent of all other contentions, the Court has to
examine the said issue by the counter-offer made in this case.
16.2. Out of five suit patents, he would contend that four suit patents
have been held to be invalid in China and therefore, if at all any
computation has to be done, the basis can only be on one suit patent
which has not been held to be invalid. Learned counsel had handed
over the Bench a chart indicating the suit patent and the issue of
validity or essentiality upheld or denied by other foreign courts. The
same is taken on record.
16.3. To the argument that defendant no.1 is facing ED proceedings,
learned counsel had handed over the Bench an order dated 31.08.2024
of the High Court of Allahabad in M/s Ismartu India Private Limited
vs. State of UP and Anr.: Neutral citation 2024:AHC:141124
whereby the HDFC Bank bearing account no.00880330002032 was
directed to be de-freezed to submit that the said account is operational.
Thus, the contention that the defendants are facing any such
proceedings which puts a question mark on their financial viability is
unfounded.
ANALYSIS AND FINDINGS:
17. This Court has heard lengthy and extensive arguments of Mr. Pravin
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Anand, learned counsel for the plaintiffs and Mr. Saikrishna Rajgopal, learned
counsel for the defendants on a number of days. With their valuable
assistance, the voluminous documents on record as also the judgments
referred and relied upon by the parties have been considered. At the outset this
Court also appreciates the supporting teams of both learned counsel, who have
rendered excellent assistance which is apparent from the crisp written notes,
charts, convenience compilations and meticulous preparation of slides.
18. The requirement of maintaining standards in wireless
telecommunications needs to be underscored inasmuch as the said standards
allow interoperability or compatibility between different devices
manufactured by different manufacturers with different operating systems and
softwares so as to ensure that consumers are able to operate and use their
smartphones seamlessly in different countries across the world. That apart, it
appears that the standards which are usually uniform globally, do also impact
the pricing of the mobile devices both for the companies as well as the
consumers. Ordinarily, it appears that the standards are set by the market
forces as also by governments wherever the compliance of law is required.
19. It further appears that such requirements of standardisation had given
impetus to voluntary and non-profit organisations commonly called Standard
Development Organisations or Standard Setting Organisations. Certain formal
SDOs have specific structures, formal policies and try to balance the interest
of developers and implementers. There are a number of such SDOs all over
the world.
20. Given the aforesaid background, this Court would now examine the
present controversy. The plaintiffs in the present case have filed the
applications under consideration seeking deposit of pro tem security by the
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defendants. Both parties have placed before this Court a number of judgments
which need to be considered and appreciated and may be applied to the facts
of the present case, should the need arise.
Jurisprudence on Pro Tem:
21. In the opinion of this Court, it may be relevant to consider as to whether
at the time of consideration of a direction to deposit pro tem security amount,
the Court needs to necessarily consider the issue on merits or in other words,
conduct an exploration of facts in order to reach a conclusion. The judgment
in the case of Dolby vs. Lava (supra), clearly held that when a Court is
examining an issue relating to pro tem security deposit, it need not explore the
facts deeply in the manner as may be required when the Court needs to
appreciate an application seeking interim injunction based on allegations of
infringement of patents. In para 23, 24 and 32 of the said judgment, it was
held as under:
“23. From a plain reading of the aforesaid extracts, it is abundantly
clear that the Court has the power, in order to balance the equities
between the parties, to pass a pro tem order as a temporary
arrangement without a detailed examination of the merits of the
case. The Division Bench highlighted the difference between the
level of scrutiny required for the purposes of passing a pro tem order
and an order of interim injunction.
24. The underlying principle, as emphasised by the Division Bench,
is that while the implementor has a right to enjoy the benefits of the
invention of the SEP holder, it has to pay reasonable compensation
or furnish an appropriate security in the interregnum.
**** **** ****
32. Placing reliance on the judgements of the Division Bench in
Intex v. Ericsson (supra) and Nokia v. Oppo (supra), the Coordinate
Bench held that in order to balance equities between the parties,
Court has the power to pass orders and put in place a temporary
arrangement, without a detailed explanation on merits.”
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22. It is to be borne in mind that at the stage of consideration of pro tem
security deposit, it is the balance of equities between the parties which is the
paramount consideration and thus, only a prima facie understanding of
whether the patents are essential and valid are to be considered. What such
parameters and considerations would be, is entirely dependent upon the facts
arising in each case and cannot be applied across the board as a straightjacket
formula. This is for the reason that the SEP holders on one hand, and the
implementers on the other are largely trans border commercial entities, co-
existing in a commercial ecosystem having diverse commercial interests,
globally. What may be a relevant economic consideration for a particular
country in Asia may not be relevant at all in a country in Europe or for that
matter in Africa. It may also vary depending on the country’s economic
policies, telecommunication regime, availability of a robust eco system in
respect of interoperability of various softwares and applications required, all
of which may have a direct or an indirect impact on the prices of the mobile
devices. Thus, the considerations of or directions for deposit of pro tem
security cannot be made subject matter of a straightjacket formula.
23. It must also be kept in mind that the SEP holders base their claim on
SEP portfolio in respect of 3G, 4G or 5G technologies in the absence whereof
it may not be possible to achieve the optimum functionality of a particular
device of a manufacturer. Thus, when SEP holders place on record the claim
charts of their patents comprising the SEP portfolio and attempt to map the
same with the technical specifications of the manufacturers supported by
either an expert’s affidavit or a technical evaluation report, the depth of
consideration and evaluation for the purposes of passing orders for deposit of
pro tem security may not be at the same threshold at which a Court may be
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evaluating in order to pass interim injunction orders on the allegations of
infringement of suit patents. Therefore, the said evaluation for pro tem deposit
would be at a lower threshold.
24. As to what are the obligations and responsibilities cast upon the SEP
holders on one hand and the implementors on the other, as envisaged by the
SEP regime, the learned Division Bench of this Court in Intex vs Ericsson
(DB) (supra) has succinctly laid down as under:
“68. Accordingly, the Standard Essential Patent regime envisages a candid
and transparent negotiation between a willing licensor (Patentee) and
willing licensee (implementer).
69.A licensor will be considered a willing licensor only if it gives a
FRAND offer and in certain situations provides information necessary,
subject to confidentiality agreement, for a licensee to offers a supra-
FRAND offer i.e. exorbitant royalty rates, it will not be considered a
willing licensor.
70.Similarly, an implementer has no right of silence or inaction at this
stage. It is not correct to suggest that without access to other agreements
executed by the Patentee no counter-offers can be made.
Normally, an implementer can take recourse to its own license agreements
executed with other Standard Essential Patent proprietors/licensors, to
determine an appropriate FRAND rate that it would be willing to pay or to
determine if the rate offered by an Standard Essential Patent proprietor is
FRAND or not. This is evident from the judgment of the Dutch Court of
Appeal in Koninklijke Philips N.V. v. Wiko SAS [Case Number
200.219.487/01 decided on 02.07.2019] wherein it has been held as
under:-
“4.37. Wiko pointed out that it does not have the licence agreements that
Philips concluded with other parties for the same patent portfolio, so
that Wiko is unable to demonstrate that Philips’ proposal is not FRAND.
Even apart from the fact that according to the above findings, Wiko
failed on several points to substantiate its arguments and furnish
evidence of its arguments and its defence should already fail on this
basis, this point of view does not hold, Wiko concluded licence
agreements for UMTS and LTE portfolios with Qualcomm, Huawei and
Nokia. By providing insight into the fees and stipulations agreed upon
with those parties in relation to (the value of) the SEPs held by those
parties, Wiko could have substantiated (a suspicion of) the alleged fact
that Philips’ offer was not FRAND and the alleged fact that its own
counter-offer was FRAND; however, Wiko failed to do this. Under those
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circumstances, the Court of Appeal does not see any reason to reverse
the burden of proof or to assume an increased duty to contend facts and
circumstances for Philips, as Wiko argued.”
*** *** ***
72.Further, the implementer has to either accept the licensor’s offer or
give a counter offer along with an appropriate security in accordance
therewith to prove its bonafides as in the interregnum it cannot freely sell
its devices using such Standard Essential Patents. If no ad-hoc royalty is
paid during the interregnum, such party benefits, to the disadvantage of
other willing licensees, and gets an unfair competitive edge in the market.
73.Accordingly, FRAND obligations have been interpreted to impose a
burden not just on Standard Essential Patent holders, but on
implementers as well. The Standard Essential Patents regime incorporates
mutual reciprocal obligations on both the Essential Patent holder and the
implementer. It is not a ‘one way street’ where obligations are cast on the
Essential Patent holder alone. Consequently, the Standard Essential
Patents regime balances the equities between the Patentee and the
implementer and ensures a level playing field. This Court is also of the
view that the conduct of the parties during negotiations is one of the key
factors to be kept in mind while assessing whether a potential licensor and
licensee were a willing licensor or a willing licensee. The said finding is
normally fact sensitive.
*** *** ***
114. Further, the learned Single Judge in Nokia Vs. Oppo (supra) has set an
impossibly high bar for admission in a case of Standard Essential Patent
FRAND infringement, i.e., there has to be an unequivocal admission on (i)
essentiality and validity of the suit patents (ii) fact of utilization (iii) fact that
such utilization, absent payment of liability would amount to infringement
(iv) that the royalty rate proposed by the Plaintiff was FRAND. If there was
an unequivocal admission on all four counts, there would be no necessity to
file a suit for infringement at all and otherwise also, same would mean
seeking/passing of a final decree at the interim stage!
115. In the opinion of this Court, the four-fold test casts an onerous burden
upon the Standard Essential Patentee and that too at the interim stage itself.
In fact, the said burden is completely alien to the patent jurisdiction and
does not apply even in normal patent suits.
116. It is also pertinent to mention that the learned Single Judge in Nokia
Vs. Oppo (supra) judgment does not consider or discuss the Delhi High
Court Rules Governing Patent Suits 2022, even when the said rules
specifically empower this Court to pass deposit orders even on the first date
of hearing.
117. Moreover, if the four-fold test stipulated in paragraph 77 of the Nokia
Vs. Oppo (supra) is applied, then effectively there will be no interim order
like a temporary injunction or conditional order of deposit in the Standard
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Essential Patent suits. Such a view, in the Court’s opinion, would be
contrary to Section 48 of Patents Act, Code of Civil Procedure as well as
Standard Essential Patent regime which is aimed at achieving a uniform
standard in technologies. If the four-fold test is accepted, there will be no
incentive to innovate and it will have a ‘Domino Effect’ as pointed out
hereinabove.
Consequently, the four-fold test in Nokia vs. Oppo (supra) is neither
applicable at Order 39 Rule 10 CPC stage nor at Order 39 Rules 1 and 2
CPC stage.”
[emphasis supplied]
25. It is apparent from a reading and understanding of the aforequoted
paragraphs of the Intex judgment that there are certain obligations cast upon
the implementer as also SEP holders under the SEP regime. Essentially, the
learned Division Bench unequivocally held that the SEP regime primarily
balances the equities between the SEP holders and the implementers, purely to
ensure a level playing field. In fact, it was also held that the conduct of the
parties during negotiations would be one of the key factors to assess whether
the potential licensor and a licensee were a willing licensor or a willing
licensee. The learned Division Bench was also of the opinion that the four
fold tests propounded by the learned Single Judge in Nokia vs. Oppo, cast an
onerous burden upon the SEP holders and that too at the interim stage itself
which was not proper. It was also held that the said burden is completely alien
to the patent jurisdiction and does not even apply in normal patent suits. In
other words, the implementer too has obligations which cannot be wished
away or be evaded by reference to non availability of TPLAs.
26. It may be significant to note that this Court in Dolby vs Lava (supra)
held that the Court is empowered to pass pro tem orders as a temporary
arrangement without a detailed examination of the merits of the case.
27. It may be of some relevance to take into account the ratio laid down by
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the learned Division Bench of this Court in Nokia vs. Oppo (supra) where it
was held that ordinarily a pro tem deposit should be directed after a prima
facie finding of essentiality as well as validity of the suit patents. However, in
case it appears to the Court after considering various facts surrounding the
case that such challenge is merely an after thought, in such situations the facts
pleaded by the plaintiffs may sufficiently justify directions for deposit of pro
tem security without a full prima facie, adjudication on essentiality and
validity. The relevant paragraphs are extracted hereunder:
“81. Normally speaking, a pro-tem deposit should be directed only after a
prima facie finding of essentiality and validity of the suit patents has been
recorded, but in the present case where Oppo itself licensed the Standard
Essential Patents of Nokia against royalty payments running into XXXXXXX
under the 2018 Agreement over a three year period and admitted its
obligation in law to secure a new licence agreement commencing July, 2021
for Standard Essential Patents of Nokia, there arises a prima facie
presumption that the challenge to essentiality and validity of Nokia’s patents
is merely an afterthought. This Court is in agreement with learned counsel
for Nokia that at this prima facie stage it would be fair to infer that no one
pays good money for generally disputed patents. In fact, it was Oppo‘s case
in its pleading before the learned Single Judge that during the course of
pre-suit negotiations, the new licensing rate offered by Nokia was
unreasonably higher than what was previously agreed to.”
Validity and Essentiality of the Suit Patents:-
28. Having regard to the aforesaid this Court now proceeds to examine the
issue of validity and essentiality of suit patents.
VALIDITY
INDIAN PATENT NO. 295912 (“IN’912”)
29. The invention claimed under IN’912 relates to wireless communication
systems and more particularly, the present invention is related to a method and
apparatus for dynamic resource allocation, scheduling as well as signalling
for variable data rate service in long term evolution (LTE) systems. Under the
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first preferred embodiment, high-level information including radio access
bearer (RAB) and logical channel/ data flow ID and HARQ process ID are
only transmitted at the configuration stage of an RTS data flow. The sequence
numbers for the RTS data flow are assigned at the radio link control (RLC)
Iayer in order to avail the reordering of packets at a receiver are handled at
higher layers.
30. The UE as claimed in Claim 1 of the patent is as follows:
“We Claim:
1. A wireless transmit/receive unit (WTRU) comprising:
receiver for receiving a first allocation of resources for uplink
communications; transmitter for transmitting uplink communications in
response to the first allocation of resources; receiver for receiving control
information indicating a second allocation of resources for uplink
communications different from the first allocation of resources; and
transmitter for transmitting uplink communications in response to the
second allocation of resources for a single time duration and transmitting
uplink communications at the first allocation of resources after the single
time duration.”
INDIAN PATENT No. 313036 (“IN’036”)
31. IN’036 is titled as “METHOD AND SYSTEM FOR A WIRELESS
TRANSMISSION/RECEIVER” and pertains to a wireless communication
system. More particularly, the present invention pertains to a method and
apparatus for providing as well as utilising a non-contention-based channel in
a wireless communication system.
32. It is a wireless communication system which comprises at least one
evolved Node-B (eNB), a plurality of wireless transmit/receive units
(WTRUs), and a non-contention-based (NCB) channel is established,
maintained, and utilised. The non-contention based (NCB) channel is
allocated for use by one or more WTRUs in the system for the purpose of
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utilisation in different functions, and the allocation is communicated to the
WTRUs. The wireless communication system analyses the allocation of the
NCB channel as required, and the NCB channel is reallocated as required.
33. The IN ‘036 patent is valid, in force, and has been renewed regularly.
The plaintiffs have filed the copies of the registration certificate, complete
specification, and the E-Register maintained by the Patent Office in the
present proceedings.
34. The Claims 1 of IN ‘036 of the patent, is as follows:
“A wireless transmit/receive unit (WTRU) comprising a processor (125)
configured to: receive, through a receiver (126), a first allocation from an
evolved Node B (eNB), wherein the first allocation is an allocation of a non-
contention based (NCB) uplink control channel, the first allocation
comprises a configuration for transmitting scheduling requests over the
NCB uplink control channel, and the configuration indicates a periodicity at
which physical resources of the NCB uplink control channel are dedicated
to the WTRU for transmitting scheduling requests;
transmit, through a transmitter (127), a scheduling request over the NCB
uplink control channel in accordance with the first allocation, wherein the
transmitted scheduling request comprises a transmission burst, and
presence of the transmission burst on NCB uplink channel resources
assigned to the WTRU by the first allocation is indicative of a request for
uplink transmission resources by the WTRU;
monitor a downlink control channel;
detect that a transmission on the downlink control channel is intended for
the WTRU based on a WTRU identifier indicated in the transmission on the
downlink control channel, wherein the transmission on the downlink control
channel comprises a second allocation, the second allocation being an
allocation of an uplink shared channel; and transmit, through said
transmitter (127), data over the uplink shared channel in accordance with
the second allocation.”
INDIAN PATENT No. 320182 (“IN’182”)
35. The invention is titled as “Implicit DRX Cycle Length Adjustment
Control In LTE_Active Mode” and pertains to the field of wireless
communication. As per Specification of IN’182, a method and apparatus are
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disclosed in order to control discontinuous reception in a WTRU. The method
may include defining a plurality of DRX levels in which each DRX level
includes a respective DRX cycle length, as well as transitioning between DRX
levels based on a set of criteria. Transitioning may be triggered by implicit
rules, and the triggering may be invoked by a measurement event/a timer/a
counter or a downlink command, for example. The transition between DRX
states may also occur without explicit signalling.
36. The Claim 1 of IN’182 is as follows:
“We Claim:
l. A method for controlling discontinuous reception, DRX, in a wireless
transmit/receive unit, WTRU (402), the method comprising:
the WTRU receiving a DRX configuration in a radio resource
control, RRC message (406), the DRX configuration comprising a first
DRX cycle length, a second DRX cycle length, and a value for a WTRU
timer (418) to trigger a transition of DRX cycle length;
the WTRU operating using the second DRX cycle length (a08);
the WTRU receiving a trigger 412);
the WTRU operating using the first DRX cycle length based on
receiving the trigger (412);
the WTRU starting the WTRU timer (418) upon beginning DRX
operation using the first DRX cycle length;
the WTRU determining that the WTRU timer (418) has expired;
and responsive to determining that the WTRU timer has expired, the
WTRU transitioning (422) from the first DRX cycle length to the second
DRX cycle length the second DRX cycle length being a multiple of a first
DRX cycle length.”
INDIAN PATENT No. IN 319673 (“IN’673”)
37. IN’673 is titled as “Method And Apparatus For Enhancing
Discontinuous Reception Wireless Systems”. The claimed invention under
IN’673 relates to wireless communication systems and, more particularly, a
method and apparatus is disclosed for enhancing discontinuous reception
(DRX) in wireless systems.
38. The claimed method preferably includes a WTRU receiving DRX
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setting information over a radio resource control (RRC) signal, and the
WTRU receiving DRX activation information over a medium access control
(MAC) signal. The claimed method may also include the WTRU grouping
DRX setting information into a DRX profile and determining a DRX profile
index associated with it.
39. The Claim 1 of IN’673 is reproduced as follows:
“We Claim:
1.A method of discontinuous reception, DRX, for use in a wireless
transmit receive unit, WTRU,(602), the method comprising:
the WTRU (602) receiving DRX configuration information in a
radio resource control (RRC) message, the DRX configuration information
comprising a DRX cycle periodicity and a minimum active period;
while in a RRC_CONNECTED state, the WTRU (602) receiving a
data indication signal during the minimum active period of a DRX cycle;
responsive to receiving the data indication signal, the WTRU (602)
remaining in active time;
the WTRU receiving a DRX activation signal in a medium access
control, MAC, message; and
the WTRU (602) resuming DRX using the received DRX
configuration information in response to receiving the DRX activation signal
in the MAC message.”
INDIAN PATENT No. 262910 (“IN ‘910”)
40. In IN ‘910 is titled as “A METHOD FOR TRANSFERRING DATA
OVER AN ENHANCED DEDICATED CHANNEL (E-DCH), A
WIRELESS TRANSMIT/RECEIVE UNIT AND A BASE STATION
THEREOF”. The claimed invention under IN’910 pertains to wireless
communications and, more particularly, relates to enhanced uplink (EU)
transmission.
41. As per the specification of IN ‘910, the claimed invention relates to
quantising the amount of multiplexed data allowed by grants to match a
selected E-TFC transport block size.
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42. The scheduled and/or non-scheduled data allowed to be transmitted is
increased/decreased relative to the grants so that the amount of data
multiplexed into a MAC-e PDU closely matches the selected E-TFC transport
block size.
43. The claim 1 of the IN ‘910 is as follows:
“WE CLAIM
1. A wireless transmit/receive unit (WTRU) (1414) comprising:
a receiver configured to receive at least one serving grant (1406)
and at least one non-scheduled grant (1407), wherein the at least one
serving grant (1406) is a grant for scheduled data transmission and the at
least one non-scheduled grant (1407) is a grant for non-scheduled data
transmission;
characterized by
a multiplexing device (MUX) (1410) configured to multiplex data
of medium access control-dedicated channel (MAC-d) flows (1403) into a
medium access control enhanced dedicated channel (MAC-e) protocol
data unit (PDU) (1411); wherein the MAC-e PDU (1411) has a size not
greater than the size of the largest enhanced dedicated channel transport
format combination (E-TFC) that does not exceed a first size based at
least on the at least one serving grant (1406) and the at least one non-
scheduled grant (1407), wherein the multiplexed data includes scheduled
data for transmission;
an E-TFC selection device (1405) configured to select an E-TFC for
transmission of the MAC-e PDU (1411), wherein the selected E-TFC does
not exceed the first size; and
a transmitter configured to transmit the MAC-e PDU (1411)
processed in accordance with the selected E-TFC.”
INDIAN PATENT NO. 308108 (“IN ‘108”)
44. IN’108, is titled as “Methods And Apparatus for In-Loop De-Artifact
Filtering” generally relates to video encoding and decoding and, more
particularly, to methods and apparatus for in-loop de-artifact filtering. An
apparatus includes an encoder (300) in order to encode an image region.
The said encoder has at least two filters (365, 344) to perform in-loop
filtering to respectively reduce at least a 1st and a 2nd type of quantisation
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artifact.
45. The claim 1 of IN’108 is reproduced as follows:
“We Claim:
1. A method comprising:
encoding an image region, wherein the encoding includes performing in-
loop filtering to reduce at least a first and a second type of coding
artifact using at least two filters in succession, the at least two filters
including a deblocking filter for performing a first pass to reduce
blocking artifacts and an adaptive sparse de-noising filter for performing
a second pass to reduce noise, wherein the adaptive sparse de-noising
filter is selectively enabled or disabled at a given level, the given level
being at least a macroblock level, a slice level, a picture level or a
sequence level.”
46. The Plaintiffs in their arguments have also made submissions regarding
the status of the corresponding patents of the Suit Patents in foreign
jurisdictions. It may be important to note that in Philips v Oplus, at para 26,
the Court observed that even if the validity of one patent is made out, a prima
facie case in respect of validity generally is taken to have been established.
47. The Plaintiffs have cited and relied upon the Case No: HP-2019-
000032, Neutral Citation Number: [2021] EWHC 2152 (Pat). This trial
concerns European Patent (UK) No. 2 485 558. The UK High Court, the
European Counterpart EP 2 485 558 has been held to be valid, essential and
infringed by the Lenovo Group. The Court under paragraphs 297 and 298
held as follows:
“Infringement
297. No separate issue arose in respect of infringement. Lenovo uses LTE
and therefore infringes the Patent.
Conclusion
298. The Patent is valid, essential to Release 8 of LTE and is infringed.
InterDigital’s conditional application to amend the Patent falls away.”
48. Thereafter, in appeal bearing Case No: CA-2021-003431 decided on
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19.01.2023, the UK Court of Appeals upheld the validity of European Patent
(UK) No. 2485558 which corresponds to the Indian Patent No. 313036
(IN’036 patent). This suit is between InterDigital Technology Corporation &
Ors as Claimants/ Respondent and Lenovo Group Ltd & Ors. as
Defendants/Appellants. The matter was decided by the Royal Courts of
Justice, Strand, London, WC2A 2LL on 19/01/2023. This appeal relates to
patent EP (UK) 2 485 558, which is titled “Method and apparatus for
providing and utilising a non-contention-based channel in a wireless
communications system”. The relevant paragraphs are reproduced as follows:
“Lord Justice Birss :
1. This appeal relates to patent EP (UK) 2 485 558 entitled “Method and
apparatus for providing and utilizing a non-contention-based channel in a
wireless communications system” and claiming priority from January 2006.
The patent belongs to the respondents (“InterDigital”), who contend it is
essential to the 4G/LTE standard. The patent forms part of a portfolio of
InterDigital patents said to be essential to various telecoms standards (so
called Standard Essential Patents or SEPs). In the proceedings InterDigital
contend that the appellants (“Lenovo”) infringe the patents and ought to take
a FRAND licence under the portfolio. The overall dispute was managed into
a series of technical trials dealing with individual patents and a separate
FRAND trial to identify the licence terms. The validity and essentiality of this
patent was addressed in the judgment of HHJ Hacon sitting as a judge of the
Patents Court dated 29 July 2021 ([2021] EWHC 2152 (Pat)) following a
trial in March 2021. The trial was the first technical trial.
2…..The judge decided that the patent was essential and rejected all the
various challenges to validity. The amendment would have added matter, but
was not necessary. The only case pursued on appeal is obviousness over
Samsung.
3. Permission to appeal was given by Arnold LJ, who remarked in doing so
that although he was satisfied Lenovo’s grounds had a real as opposed to
fanciful prospect of success, nevertheless they faced an uphill task on this
appeal.
The appeal overall
82. I have been through the grounds of appeal individually and rejected
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them. Standing back and looking at the judge’s conclusions rejecting
Lenovo’s case of obviousness, they are conclusions amply supported by the
evidence, involving no error with which this court could interfere and the
judge reached a result which was well within the range of outcomes open to
him. I would dismiss this appeal. There is no need to consider the
respondent’s notice.”
49. In another proceeding between IDC and Lenovo, the UK Court of
Appeal in Case No: CA-2022-001060 upheld the decision on the essentiality
and infringement of the counterpart of the suit patent IN’910 by the decision
dated 09.02.2023. For clarity, relevant paras are reproduced as follows:
“Essentiality and infringement
86. My conclusion as to construction does not affect the judge’s decision
that the claims are essential and infringed. The only relevant non-
essentiality and non-infringement issue before the judge was the temporal
issue I have considered in the context of paragraphs 1 and 3 of Lenovo’s
respondents’ notice. Counsel for Lenovo submitted that the judge had not
decided whether the claims were essential and infringed on the
construction advanced by Inter Digital in this Court. I disagree. So far as
is material to essentiality/infringement there is no difference between the
judge’s construction and the construction I have adopted.
Novelty
87. The judge rejected Lenovo’s first case because Fihatrault did not
disclose step 2 on the right-hand side of X3, that is to say, it did not
disclose selecting the next smaller E-TFC for use as a multiplexing limit.
He nevertheless held the claims lacked novelty over Filiatrault because
DXX/14 showed that, with certain MAC-d PDU sizes and grants,
Filiatrault produced the result required by integer IF
88. In my judgment the judge was mistaken about this. It appears that he
was beguiled by a sleight of hand in the cross-examination of Mr
Townend. As counsel for InterDigital pointed out, the key question was
whether “the UE would limit the amount of MAC-d.”
50. This Court also notes that the US counterparts of the suit patent IN
313036, which is US 8619747 and US 9203580, were challenged in an inter
partes review before the US Patents and Appeals Office. The said petition was
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denied.
51. This Court also notes that the corresponding patent application of the
IN’182 patent in China, CN 200880003644.9, was maintained as valid in a
decision of the National Intellectual Property Administration, PRC, dated
3.12.2019.
52. It may also be of some relevance to note that in an inter party decision
dated 25.03.2026 in a lawsuit filed by the plaintiffs, the Court of Justice,
Judicial District of the Capital, 3rd Business Court, Brazil in Case
No.3014729-98.2025.8.19.0001, two of the corresponding/counterpart
patents which are PI10716323 corresponding to IN’773 and PI0706896
corresponding to In’036 of the suit patents were held essential and valid.
53. At the risk of repetition, this Court must note that the foreign Court
decisions have been alluded to only as aligning aspects to the observations
made by this Court. That too, only for the purposes of arriving at a holistic
and just decision on the relief of pro tem security deposit.
54. Ergo, predicated on the above discussion, this Court, at this stage, is of
the prima facie view that the plaintiffs have established the validity of the Suit
Patents.
ESSENTIALITY
55. The European Telecommunication Standard Institute (ETSI) is a
leading SDO for the Information and Communication Technology (ICT)
sector, which provides a consensus-driven platform for its members to work
together towards producing Standards and Technical Specifications for
enabling global interoperability of ICT systems and services. ETSI and its
members, in collaboration with the International Third Generation Partnership
Project (3GPP), are involved in developing 3G / 4G / 5G mobile
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communications standards. ETSI’s standardisation activities can be gleaned
from its official website, which is www.etsi.org.
56. As submitted by the plaintiffs, this court also notes that the plaintiffs
have filed invention disclosures relating to the claimed inventions under IN
295912, IN 313036, IN 320182 and IN 319673 before the SSO. Further, the
invention declaration, in respect of the following suit patents, is also filed by
the plaintiffs before the SSO, ETSI/3GPP.
57. Apart from the above, during the course of hearing the plaintiffs had
handed over the Bench, certain test reports claimed to have been generated by
an institute by the name DEKRA Testing and Certification S.A.U. For
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convenience, the said test results for Techno Pova 6 Neo is extracted
hereunder:
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58. The aforesaid reports purport to have compiled 3GPP conformance
results of the technical tests and analysis claimed to have been conducted on
the products of Tecno and Itel devices which are alleged to implement the
cellular standards and are subject matter of the suit patents, namely, (i) Tecno
Pova 6 Neo, (ii) Itel Color Pro 5G, (iii) Infinix Note 50X and (iv) Tecno Spark
Go1. The plaintiffs claim that the aforesaid test reports corroborate that the
said devices not only conform to the 3G, 4G and 5G standards but also
implement the suit patents as set by ETSI/3GPP.
59. Further, as per the submissions of the plaintiffs, at least one claim of the
suit patent maps and directly corresponds to a specific portion of a standard,
and therefore the patent is essential to said standard. The plaintiffs have
placed on record the Essentiality Analysis of its Claims of IN 036. The same
reads thus:
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60. As discussed above, the UK counterpart (EP 2 485 558 B1) of the
Indian Patent which is the Suit Patent, namely, IN 313036 was upheld by the
UK High Court, and in an appeal thereagainst, the UK Court of Appeals has
upheld the essentiality and validity of the UK counterpart.
61. Though the test reports generated by DEKRA are yet to be tested for
their probative value in accordance with law, however, in the opinion of this
Court, for the purposes of prima facie finding that the claim charts of the suit
patents, forming part of the SEP portfolio, map on to the technical
specifications provided by the defendants of their devices, such test reports,
constitute sufficient material. Of course, the defendants shall have all rights
reserved to question and challenge the test report in accordance with law.
However, for the purposes of the Court to pass necessary orders for deposit of
pro tem security, the said test reports may prima facie validate the plaintiffs’
claim on that account. It is made clear that this Court has not given any
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definitive conclusion one way or the other as to the correctness or probative
value of the test reports. It has to be borne in mind that the issue of essentiality
apart from the aforesaid observations has also been upheld by foreign Courts
as mentioned in the aforesaid paragraphs. Though, the findings and the
conclusions reached by the foreign Courts may not be binding precedents,
however, at the stage of considering interim arrangements of deposit of pro
tem security, the rationale in such judgments/decisions can be considered and
appreciated, provided this Court is satisfied about the existence of other
factors. In other words, this Court finds reiteration of its own prima facie
observations from the observations made in the foreign decisions.
62. Having regard to the aforesaid discussions, this Court is of the view that
the plaintiffs have been able to, prima facie, also establish the essentiality of
the Suit Patents based on the documents placed on record by the Plaintiffs.
63. So far as the issue of infringement is concerned, this Court is clearly of
the opinion that the said issue cannot be considered in a summary manner in
which the opinion on validity and essentiality has been prima facie, formed. In
this context, it would be relevant to recall the observations of the learned
Division Bench in Intex Technologies where the four fold tests propounded by
the learned Single Judge in Nokia vs. Oppo was essentially not accepted. In
fact, it was also observed that in case the said four fold tests is insisted upon,
it would cast an onerous burden upon the SEP holders and that too at the
interim stage itself.
Pre-suit correspondences between the parties
64. The parties in the present case were ad idem that there were numerous
meetings held to discuss the technical and commercial aspects of the SEP
portfolio of the plaintiffs in respect of 3G, 4G, 5G and LTE technologies. It is
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not disputed that the parties have been in constant negotiations since the year
2019. Equally, it is undisputed that the plaintiffs had furnished to the
defendant no.1, claim charts of atleast 100 claims which according to it form
part of its entire portfolio. The parties are also not at dispute that in respect of
50 such claims, defendant no.1 has carried out technical analysis and
verifications. It is also admitted by the parties that the said negotiations are
still continuing. However, the plaintiffs and the defendants rely upon certain
correspondences which may be relevant for this Court to consider in order to
assess whether the plaintiffs was a willing licensor or offering well defined
and reasonable FRAND terms. Similarly, the correspondences may reflect the
intention of the defendants whether it was a willing licensee. In order to
appreciate the overall factors, it is found relevant to extract hereunder the
following correspondences exchanged between the parties. The emails dated
19.03.2024, 29.03.2024, 02.08.2024, 09.12.2024, 23.12.2024, 26.12.2024 and
03.07.2025 read thus:
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65. This court also notes that, during the technical discussion, at least three
of the suit patents were discussed during the negotiations before filing the
present suit.
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66. Further, DB of this court in Intex v Ericsson (supra), while rejecting
the views of Nokia v OPPO (SB) (supra) emphasised that, to grant the pro
tem in favor of the plaintiffs, there is no need show an unequivocal admission
with respect to following four factors including that the royalty rate proposed
by the Plaintiffs were FRAND:
“114. Further, the learned Single Judge in Nokia Vs. Oppo (supra) has set an
impossibly high bar for admission in a case of Standard Essential Patent
FRAND infringement, i.e., there has to be an unequivocal admission on (i)
essentiality and validity of the suit patents (ii) fact of utilization (iii) fact that
such utilization, absent payment of liability would amount to infringement (iv)
that the royalty rate proposed by the Plaintiff was FRAND. If there was an
unequivocal admission on all four counts, there would be no necessity to file a
suit for infringement at all and otherwise also, same would mean
seeking/passing of a final decree at the interim stage!
115. In the opinion of this Court, the four-fold test casts an onerous burden
upon the Standard Essential Patentee and that too at the interim stage itself.
In fact, the said burden is completely alien to the patent jurisdiction and does
not apply even in normal patent suits.”
[emphasis supplied]
67. From the aforesaid, it can be inferred that the defendant no.1 has shown
its willingness to obtain license of the SEP portfolio, of course on FRAND
terms and has, though resisted the offer made by the plaintiffs at its program
rates, given three counter offers, the third one being higher than the
second counter offer. Even if this Court were to take note of the argument that
these are not admissions and are offers without prejudice to their rights, at this
stage, having regard to the correspondences exchanged, may be a relevant
consideration for the purposes of balancing equities and passing orders for a
reasonable pro tem deposit to secure the interest of the plaintiffs.
68. That said, much was argued on the purported precarious financial
condition of the defendants and that there is a criminal proceeding by the
Enforcement Directorate whereby the bank account of defendant no.1 was
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frozen. However, learned counsel for the defendants contended that all the
defendants are in pink financial health and there is no economic financial
distress any of the defendants are facing. This Court finds that the plaintiffs
have given certain details, basis whereof, it is apprehending financial distress
so far as the defendants are concerned. To the said details the defendants have
rebutted in an omnibus manner and have answered only with respect to the
ED proceeding and that all the defendants have robust financial health.
69. Be that as it may, in the considered opinion of this Court while a
precarious financial condition of the defendants may be a factor propelling the
Court to pass orders for deposit of pro tem security, however, if the ultimate
considerations for the deposit of pro tem security is to balance equities and
ensure security to the plaintiffs, the financial condition may be one of the
factors only and not the only factor. Thus, looked at any which way, the
financial condition of the defendants are claimed to be robust, which actually
propels this Court to presume that the defendants shall have no qualms in
making a pro tem deposit since the same acts in tandem to provide security to
the plaintiffs.
70. The correspondence referred to above coupled with the fact that the
defendants have indeed made counter offers and simultaneously extending to
demonstrate its willingness, can be a relevant consideration for the purpose of
pro tem security deposit. Essentially, this is so because, while an implementer
continues to sell its devices without any restraint, which may possibly be
functioning on the 3G, 4G, 5G technologies comprising the SEP portfolio of
the plaintiffs, apparently it is the plaintiffs which is being put to some
financial distress and loss. The overall consideration of the correspondence
exchanged between the parties gives an impression that on the one hand the
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defendant no.1 claims to be ready and willing to obtain necessary license,
while on the other, the negotiation is getting delayed for one reason or the
other. Although, the delay may not necessarily be fully attributable to the
defendant no.1, however, is indeed resulting in financial loss to the plaintiffs.
Moreover, during the period of negotiations, defendant no.1 has not secured
the financial interests of the plaintiffs despite showing willingness. Thus, the
need to balance equities. It cannot be fathomed that a party can continue to
sell its products; continue negotiations; continue technical evaluation of the
claims; not provide any security to the SEP holder; not disclose the alternate
technology that might be used in its products; not demonstrate how the
technologies are being used without infringing the standards and SEP
portfolio, and still insist that there is no requirement for the Court to pass
orders for deposit of pro tem security. In the understanding of this Court, the
words “interim arrangement” and “balance of equities” as used by the learned
Division Bench of this Court in the aforesaid judgments are based on
equitable consideration of factors in respect of both the parties.
71. Another consideration which would be relevant is the non filing of the
TPLAs by the plaintiffs. However, it is also significant to note that on its part
even the defendant no.1 did not disclose to the plaintiffs the annual sales of its
products in India. In the opinion of this Court, had the defendants disclosed its
sales in India, that too, in view of the NDA between both the parties, it is
probable that the plaintiffs may have been able to offer FRAND terms which
may be acceptable to the defendants. Though the plaintiffs did not disclose the
TPLA terms to the defendants or to this Court, however, the e-mails dated
03.07.2025 and 25.08.2025 did indeed refer to certain public figures arrived at
between the plaintiffs and third parties which could have been ascertained by
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the defendant no.1. The defendant no.1 being in the commercial sphere surely
cannot feign ignorance of how to assess or ascertain the figures relevant to it,
while negotiating FRAND terms. Thus, this Court is unable to appreciate the
contention of the defendants that no orders for pro tem security deposit can be
made unless the plaintiffs furnishes TPLAs and is made accessible either to
the Court or the defendant no.1. The said submission is unmerited.
72. That apart, the question as to whether TPLAs are required to determine
the pro tem quantum is no more res integra. The learned Division Bench of
this Court in Nokia vs. Oppo (supra) held as under:
“NON-FURNISHING OF COMPARABLE PLAs IS IRRELEVANT AT THIS
STAGE
88. As regards non-furnishing of comparable PLAs is concerned, this
Court is of the view that the said issue is irrelevant as the Court is not
directing Oppo to pay the FRAND rate at this stage. Even the learned
Single Judge has not held that Nokia ought to have supplied its PLAs to
Oppo.”
[emphasis supplied]
73. Additionally, this view was reiterated by a single bench of this court in
Dolby vs Lava (supra) the said opinion was echoed in the following manner:
“27. The Division Bench specifically held that non-furnishing of the
comparable third-party license agreements is irrelevant as the Court, at
the stage of determining the pro tem deposit, is not determining FRAND
rate. The relevant paragraph is set out below: –
“88. As regards non-furnishing of comparable PLAs is concerned,
this Court is of the view that the said issue is irrelevant as the Court
is not directing Oppo to pay the FRAND rate at this stage. Even the
learned Single Judge has noted held that Nokia ought to have
supplied its PLAs to Oppo.””
**** **** ****
38. From an analysis of the aforesaid judgements passed by the Division
Benches of this Court in Intex v. Ericsson (supra), Nokia v. Oppo (supra)
and Guangdong Oppo v. Interdigital Technology (supra), the following
legal principles can be culled out: –
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I. The SEP cases are different from normal patent infringement cases to the
extent that an SEP holder does not have the right to claim an injunction
against an implementor without holding negotiations with the implementor,
as per the FRAND protocol;
II. Indian courts are empowered to pass a direction for a pro tem deposit,
and this power can be exercised under Section 151 of the CPC, without
filing a separate application for the same;
III. Pro tem orders are in the nature of ad-interim orders, which operate
till the time an application for interim injunction is decided by the Court;
IV. Pro tem deposits are granted to balance the SEP holders’ right to
receive value for the use of their technology with the implementor’s right to
contest the patent. This ensures that the implementor does not unfairly
benefit from the use of patented technology during the course of a
potentially lengthy litigation, where the issues such as validity, essentiality
and FRAND terms have to be determined;
V. Normally speaking, a pro tem order should be directed only after a
prima facie finding on essentiality and validity of the suit patents.
However, for passing pro tem orders, no detailed exploration of merits of
the case is required, as is required for purposes of grant of an interim
injunction;
VI. The four-fold test laid down by the Single Bench in Nokia v. Oppo
(supra) would not apply for purposes of grant of a pro tem order;
VII. The Court can form a prima facie view based on surrounding factors.
Where the Court is of the view that the challenge to essentiality and
validity of the SEP is merely an afterthought, it would be a relevant factor
in determining the question of prima facie essentiality and validity of the
suit patents. Therefore, determination of pro tem would depend upon the
facts and circumstances of a case;
VIII. Conduct of the parties during negotiations is one of the key factors to
be kept in mind while determining whether a potential licensor and
licensee were willing licensors or willing licensees, respectively. An
unwilling licensee cannot be permitted to freely sell its devices using the
SEPs of the patent owner, without making a pro tem security deposit;
IX. There is no requirement for the patent owner to furnish any third
party licensing agreements to the implementor at the stage of
negotiations or at the stage of determining pro tem deposit.
**** **** ****
47. From an analysis of the aforesaid correspondence exchanged
between the parties, the following aspects can be discerned:
…..-vii. Lava kept on insisting that Dolby should provide third-party
confidential licensing agreements to Lava, which was unjustified….
[emphasis supplied]
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74. Thus, the overwhelming law in this regard is against any mandatory
requirement for the plaintiffs to furnish TPLAs, particularly at the stage of
consideration of pro tem deposit. This Court is also of the considered opinion
that furnishing of TPLAs may obviate a delayed or protracted trial and bring
the disputes to a closure. It is possible that in certain cases the Court may, if it
is of the opinion that such documents are required, direct the parties to
produce TPLAs. The opinion rendered by the learned Division Bench ought
not to be construed as if it forecloses the power of the Court to direct a party
to furnish TPLAs if it is of the opinion that to determine the payment of pro
tem security, such material would be a factor which needs to be considered
before any such direction is passed.
75. So far as the argument of Mr. Saikrishna Rajagopal that 4 out of 5 suit
patents have been held to be invalid by Supreme Court of China is concerned,
the chart furnished by Mr. Saikrishna Rajagopal very fairly also disclosed that
other foreign courts in countries like USA, UK and Germany, have upheld
either the validity or the essentiality or in certain cases, both, of the respective
counterparts of some of the suit patents. Though no doubt one foreign Court
may have invalided certain suit patents, however, largely, globally different
courts of different jurisdiction appear to be in alignment with the finding, even
if prima facie, that the counterparts of some of the suit patents are either
essential or valid or both. Notwithstanding the prima facie finding of this
Court on essentiality and validity, if one were to take the general analysis or
average of the foreign courts, it cannot be concluded with conviction that the
suit patents are invalid or not essential to the standards. Therefore, the
argument in this context may be a factor, however, having regard to other
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decisions of foreign courts favouring the plaintiffs, is unpersuasive and
unmerited.
76. As held in Nokia vs OPPO DB (supra) and discussed earlier that
granting pro tem security does not confer any advantage to the licensor/SEP
holder, rather, it only balances the asymmetric advantage that an implementor
has over a SEP holder. For better clarity, the relevant para is reproduced as
follow:
“A PRO-TEM SECURITY ORDER CANNOT BE LIKENED TO AN
INJUNCTION
59. This Court is further of the opinion that a pro-tem security order
cannot be likened to an injunction order because unlike an injunction order
it does not stop or prevent the manufacturing and sale of the infringing
devices. The intent of a pro-tem security order is to either ensure
maintenance of status-quo or to retain the Courts’ power and ability to
pass appropriate relief at the time of disposal of the injunction
application under Order XXXIX Rules 1 and 2 or at the final stage. In
the facts of the present case, the pro-tem security order does not confer
any advantage upon Nokia as it only balances the asymmetric advantage
that an implementer has over a Standard Essential Patent holder. This
Court in Intex vs. Ericsson (supra) has held as under:-
“72. Further, the implementor has to either accept the licensor’s
offer or give a counter offer along with an appropriate security in
accordance therewith to prove its bonafides as in the
interregnum it cannot freely sell its devices using such Standard
Essential Patents. If no ad-hoc royalty is paid during the
interregnum, such party benefits, to the disadvantage of other
willing licensees, and gets an unfair competitive edge in the
market.””
[emphasis supplied]
77. Further, this Court also notes that the plaintiffs have executed more
than 50 licenses for their telecommunication SEP portfolio, which are
worldwide in scope and also cover India. Many companies such as Apple,
Google, Oppo, Vivo, Samsung, Huawei, Lenovo, LG, Sony, Xiaomi, ZTE,
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HTC, Kyocera, have entered into agreements to license plaintiffs’ portfolios
of SEPs relating to telecommunications, which include the Suit Patents.
78. Additionally, this court also notes that the plaintiffs have enforced the
suit patent against third parties in Interdigital Technology Corporation &
Ors. vs Guangdong OPPO Mobile Telecommunications Corp. Ltd. & Ors.,
CS(COMM) 692/2021, and Interdigital VC Holdings Inc & Ors. Vs
Guangdong OPPO Mobile Telecommunications Corp. Ltd & Ors.,
CS(COMM) 707/2021. In CS(COM) 692/2021, the court, in the said
proceedings directed the OPPO to furnish a Bank Guarantee with this
Hon’ble Court as pro-tem security. It is important to note that all 5 suit patents
in question in CS(COM) 692/2021, while in CS(COMM) 707/2021, the suit
patent IN’108 was in question. The plaintiffs have also relied on the
Interdigital Technology Corporation & Ors. vs Xiaomi Corporation &
Ors., CS(COMM) 295/2020, to support their argument of enforcement of the
suit patents against third parties. However, this suit examines the trans border
jurisdiction and anti-enforcement injunction, and does not talk about the
validity, essentiality, therefore, this court believes that this decision is not
relevant to rely on at this stage.
79. In Dolby vs Lava (supra), this Court emphasised that in order to
balance the equities between the parties, the court has the power to pass a pro-
tem order being a temporary arrangement without a detailed exploration of
merits, if the facts so warrant. The Court further emphasized that in order to
arrive at a prima facie finding regarding the essentiality and validity of the
patents in question, the court can refer the surrounding factors like “the
number of licenses entered into by SEP owners in respect of the portfolio of
SEPs relating to the same technology; enforcement of the said SEPs before
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competent Courts; pro tem orders passed by the courts relation to the said
SEPs.” The court noted that these would be relevant factors if it found that
there are a significant number of competitors/players in the market, including
those having a better bargaining position on account of their volumes/market
share, and are paying royalties for such SEPs. For clarity, the relevant
paragraphs are reproduced hereunder:
“39. In my considered view, the expression, used by the Division Bench in
Nokia v. Oppo (supra) in paragraph 81, “Normally speaking, a pro-tem deposit
should be directed only after a prima facie finding of essentiality and validity of
the suit patents has been recorded” has to be reconciled with the observations
made in paragraph 58 that “Consequently, to balance the equities between the
parties, this Court has the power, if the facts so warrant, to pass a pro-tem
order being a temporary arrangement without a detailed exploration of
merits.”. Therefore, even though the Court is required to give a prima facie
finding of essentiality and validity of the suit patents, the level of scrutiny would
depend upon the facts and circumstances of the case. Where the conduct and
actions of the implementor during the negotiations stage indicates no serious
challenge to the essentiality and validity of the suit patents, the Courts may not
get into a detailed exploration of merits. To arrive at a prima facie finding with
regard to the essentiality and validity of the suit patents the Court can look at
the surrounding factors such as the number of licenses entered into by SEP
owners in respect of the portfolio of SEPs relating to the same technology;
enforcement of the said SEPs before competent Courts; pro tem orders passed
by the courts relation to the said SEPs. Where it is found that a significant
number of competitors and players in the market, including entities that are in a
better bargaining position on account of their volumes or market share, are
paying royalties for such SEPs, it would be a relevant factor.
40. If in every case the Court were to conduct an in-depth examination of issues
relating to the essentiality and validity of the suit patents, the whole objective
behind a pro tem deposit would be defeated. Judicial notice can be taken of the
fact that once in litigation, the implementors take all possible defences relating
to essentiality, validity and non-infringement even though these have not been
raised during the negotiations. Therefore, in my considered view, the
determination of pro tem deposit has to be very factcentric. In cases where the
implementor has not made a credible challenge to the essentiality and validity
of the suit patent during the negotiations stage and makes a challenge only
during the litigation as an afterthought, the Court can look at the surrounding
factors to determine prima facie validity and essentiality of the suit patents.
Otherwise, the threshold for deciding a pro tem deposit would become the same
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as that for deciding an interim injunction application. This is not to say that the
Court does not have to examine the aspects of validity and essentiality of the
suit patents at all.”
80. Learned counsel for the defendants had also argued that having regard
to the protection conferred upon the patentees under section 48 of the patents
Act, 1970, the said protection can extend only to those patents which are
registered under the Indian law. In other words, and without admitting to the
validity and essentiality of the suit patents, evaluation of pro tem security can
be based only on those patents which are registered in India and not the entire
SEP portfolio of the plaintiffs containing other patents as well.
81. Though, the said argument appears to be attractive and logical,
however, in view of the peculiar manner in which the 3G, 4G and 5G
technologies work, the assessment and quantification of pro tem security
cannot be compartmentalised and insulated from other patents forming part of
the SEP portfolio. From what has been argued and shown to this Court, it
appears that the technologies are so well enmeshed, entrenched, interwoven,
intertwined and interdependent that even if one of the minor or trivial
technologies or aspects are ignored or overlooked or taken away from the
entire, the technology might fail or not work at its optimum best. How one
patent and its process is inter linked and intrinsically connected or dependent
with another, cannot be gauged or ascertained with certainty. Thus, to expect
eschewing of suit patents from the rest of the SEP portfolio, though may be an
academic exercise, but far from reality. Law cannot be applied de hors reality.
Moreover, the parties, in their correspondence have nowhere negotiated prices
or rates etc on patent to patent basis, or a country specific patent manner, but
the entire portfolio. It is apparent that the parties are clear on how the
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technologies work. Thus, such an argument cannot be appreciated.
QUANTIFICATION OF PRO TEM DEPOSIT:
82. As noted above, the plaintiffs have not placed on record TPLAs nor
have the defendants placed record of its sales of the mobile smartphones. That
however, would not mean that the Court is at some disadvantage from passing
an order directing deposit of pro tem security as there are other relevant
considerations available.
83. The plaintiffs had given its first offer at for the
period against which the defendants had given its first counter
offer at . It appears after further negotiations that the
plaintiffs have revised its offer to for the period of
years as noted above, against which the defendant no.1 gave its enhanced
counter offer at . Further negotiations resulted in the
defendant no.1 giving its third enhanced counter offer of
.
84. It is clear from the aforesaid that the gap between both the offers and
counter offers is very wide and thus, there cannot be a mid way between the
two. In the absence of any TPLA, it is difficult to quantify the pro tem
security. In such circumstances, it would be in alignment with the aforesaid
observations and analysis that the quantification can be ascertained from the
counter offer made by defendant no.1.
85. It is pertinent to note that the third counter offer dated 20.09.2025 of
is an enhancement to the extent of of the second
counter offer which was pegged at . A perusal of the
written statement indicates that the defendants had not furnished any details
with regard to any alternate technology that might have been used in the
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products, which appears to be in contravention of Rule 2(f) of the High Court
of Delhi Rules Governing Patent Suits 2022. Equally, the written statement
does not appear to be specific in terms of the requirement of Rule 2(d) and
Rule 3B(ii) & (vi) of the Rules, 2022.
86. Learned counsel for defendant no.1 had, without prejudice to the rights
and contentions of defendant no.1 submitted two options to satisfy the pro tem
security. One of such options was based on the economic expert’s report of
the defendant no.1 offering in respect of the cellular suit
patent and in respect of the HEVC Suit Patents from the
date of filing of the suit. The other option was an offer of a bank guarantee for
an amount equivalent to of the last counter offer of
made by the defendants.
87. Since the counter offer of was on an annual basis, the
period for which the plaintiffs have sought execution of FRAND agreement
being the years , the cumulative total for this period would
approximately be more than . As such, it appears to this Court
it would be fair and in the interests of justice to direct the defendants to
deposit 1/5th of which comes to . The
deposit so directed has to be calculated in INR as per the exchange rate
prevailing as on date.
88. Accordingly, the following directions are passed:
(a) The defendants shall deposit a sum of or the
equivalent in Indian Rupees with the Registrar General of this Court
within a period of eight weeks from date. The said sum shall be kept in
an interest bearing FDR in the name of the Registrar General, with
auto renewal mode.
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(b) In the alternate, the defendants would be at liberty to submit an
unconditional bank guarantee for a sum of or the
equivalent in Indian Rupees to the satisfaction of the Registrar General
of this Court within the same period as noted in direction (a) above.
89. It is made clear that the observations and analysis made hereinabove
shall not tantamount to any final expression on merits.
90. The applications are disposed of accordingly.
91. Parties are at liberty to apply for unredacted copy of this order, which
may be furnished forthwith.
CS (COMM) 1045/2025 and CS (COMM) 1046/2025
92. List on 24.08.2026, the date already fixed.
93. Copy of the order be given Dasti under the signature of Court Master to
both the parties.
TUSHAR RAO GEDELA
(JUDGE)
JULY 01, 2026/lr/ak
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