[Editor’s note: Due to the large number of queries around this – I would like to point readers to this other post here which explains why orders such as this present one are problematic and probably bad in law]
[Edit 2: The order is now available here]
Yesterday, the Delhi High Court granted an ex parte injunction order against Chinese operator Xiaomi for infringement of Ericsson’s patents. The patents in question are Standard, Essential Patents (SEPs) which are subject to FRAND (Fair, Reasonable and Non-Discriminatory) terms. However, they may also be the same patents which are the subject matters of litigation Ericsson has mounted against Micromax, Gionee and Intex. As Shamnad Sir noted earlier today, while Ericsson has largely favourable orders against Micromax and Gionee, the same cannot be said for its case against Intex. Therefore, when the same patents are potentially in question under other cases as well, there was no need for the Courts to rush to grant an injunction against a new defendant, namely Xiaomi.
At this juncture, it is more interesting to note the reasons provided for granting the said injunction. One factor that the Court found persuasive was that Xiaomi had not responded to Ericsson’s repeated communications (6 in number from July 2014). However, it must be questioned whether Xiaomi’s purported laxity in this matter is a sufficient reason to grant an injunction against them. More so, when an alternative remedy in the form of damages is available which is one of the cardinal principles that goes against the granting of injunctions.
This ex parte order injuncts Xiaomi from selling, advertising, manufacturing or importing devices that infringe the SEPs in question. The judge also directed the Customs officials to stop the imports under the IPR Rules, 2007. Moreover, local commissioners have been appointed to visit Xiaomi officers to ensure the implementation of these orders.
This leads us to the question of whether the TRIPS Rules, 2007 are over-reaching in their mandate. Article 51, TRIPS agreement only stipulates border control mechanisms for copyright and trademark related matters and not for patents. However, the same appear to be included under India’s IPR Rules, making them TRIPS plus.
Moreover, even under domestic law, the Patent Act read with the Civil Procedure Code requires patent suits to be decided by a District Judge at the lowest level and the High Court to have jurisdiction if there is a counterclaim to the suit. Therefore, the Customs Officers do not have the jurisdiction to decide the issues of infringement or validity. The High Court has previously acknowledged that other officials such as the Drug Controller General of India did not possess the technical expertise to deal with matters relating to patentability and patent infringement. (Bayer Corporation v. UOI dated August 18, 2009).
Therefore, it appears that this order of the Delhi High Court’s injunction order is not in conformance either with international practice or domestic case law.