In recent times, the Delhi High Court (hereinafter referred to as ‘High Court’) has noted an upsurge in the number of patent infringement actions across several sectors. In the backdrop of the same, in order to address the evolving complexities pertaining to patent suits and actions, the High Court released the final draft of High Court of Delhi Rules Governing Patent Suits, 2021 (hereinafter referred to as the ‘Rules’).
The Rules are framed by the virtue of power that the High Court has under Section 158 of the Patents Act, 1970 (hereinafter referred to as the ‘Act’) and will govern the patent infringement disputes that shall lie before the High Court. In case of any inconsistency, the Rules will prevail over the Delhi High Court (Original Side) Rules, 2018 and the Delhi High Court Intellectual Property Division Rules, 2021.
As per Rule 2(b) of the Rules, a Patent suit means “a suit which seeks relief as provided for under Section 48, Sections 105, 106 including counterclaims under Section 64, Section 108, 109, 114 and all reliefs claimed thereunder.”
The Rules provide a demarcation between the briefs for infringement and the briefs pertaining to non-infringement. Rule 2(e) stipulates that in case of Standard Essential Patents (SEP), the infringement brief must include claim charts and the description of the manner in which the Defendant infringes the patent.
On the contrary, with regards to non-infringement, the Rules state that in cases of SEP where the party raises Gillette Defense, such party shall disclose whether its products comply with the standard or the alternate technology/patent being implemented by it.
The concept of ‘Gillette Defense’ developed from Gillette Safety Razor Co v. Anglo American Trading Co. Ltd. [(1913), 30 RPC 465] which is used by the Defendant in a suit for patent infringement to say that the product/process used or implemented by it, is covered by some prior art.
Rule 3 of the Rules discusses about the Content of Pleadings and the same is segregated into three parts, namely, Plaint, Written Statement, Counter Claim and Replication.
Rule 3(A) discusses about the contents of a plaint wherein it is stated that the plaint shall contain all the necessary descriptions which includes brief background of the said technology, technical details pertaining to the invention along with the description of the product or process, if any.
In addition to the above mentioned, it is important to state the ownership details of the patent, whether any other patent applications have been filed, the current status of the previous applications, if any, etc.
Rule 3(B) states that when a written statement in an infringement action is submitted, it shall include the defences of non-infringement or the grounds for revocation of the patent suit, response to the Plaintiff’s claim chart, technical analysis, details and description of the alleged products, details of sale/import/export etc., information about any other patent applications filed in India or internationally, etc.
Rule 3(C) stipulates that in a counterclaim, the grounds raised must be precise in nature and must be substantiated with relevant documents and evidences wherever required.
Rule 3(D) talks about one of the primary aspects of patent action, i.e., replication. It says that the replication shall initially summarize both the Plaintiff’s case as well as the Defendant’s case, after which a para-wise reply shall be given to the written statement.
Additionally, details of any prior arts cited by the Defendant to allege invalidity of the suit patent should be provided in the replication if that prior art has been considered during prosecution of the patent or during the opposition proceedings.
Furthermore, Rule 3(G) mentions that for a suit that is under Section 106 of the Act, i.e., cases of groundless threats of infringement proceedings, the plaint shall contain the following descriptions:
i. Nature of the threat, whether oral or documentary;
ii. If the threat concerns a patent which has been granted and if its validity is being challenged, and if so, an invalidity brief to accompany the Plaint;
iii. Any responses and correspondence exchanged between the parties.
Patent suits can be technical in nature and usually involve technical or scientific terms. In the light of the same, Rule 7 states that before the filing of the first case management hearing, a Technical Primer might be jointly filed by the parties to understand the basic science/technology covering the patent(s).
As per Rule 2(i), a ‘Technical Primer’ is a document that provides a basic overview of the science and/or technology covered by the patent(s) in a non-technical manner, either in written or electronic form (such as a PowerPoint presentation or an audio or video file).
The Rules categorize the hearings of the case in three management hearings. Case management gives the Court a chance to prepare a timeline and fix dates for the proceedings of the matter. Rule 8 states that the Court would peruse the pleadings, invalidity and infringement briefs, and strike the actual issues where there exists a dispute between the parties in the first management hearing.
The Court may also call upon an independent technical expert from the panel of scientific advisers maintained by the Court to help the Court in resolving challenges. Additionally, the Court may decide on an issue that does not require evidence at any point in the process.
Moving forward, Rule 9 states that in second case management hearing, the Court shall refer to the affidavits in evidence and fix the required time frame for cross-examination of the witnesses.
Rule 10 discusses about the third case management hearing that shall be a concluding hearing wherein the Court shall decide upon any preliminary issues or direct the parties to proceed to trial pertaining to the remaining issues.
A pivotal aspect which has been dealt in the Rules is the concept of ‘Hot-Tubbing’. It says that an expert testimony may be directed by the Court on its own motion or on the application by a party to be recorded by Hot-Tubbing technique guided by Rule 6, Chapter XI, Delhi High Court (Original Side) Rules, 2018.
Hot-Tubbing is also referred to as concurrent evidence wherein the respective expert witnesses of the parties are cross examined. Hot-Tubbing is done with the aim to narrow down the differences between the parties.
One of the interesting topics discussed in the Rules is the ‘Confidentiality Club’. Rule 11 talks about the Confidentiality Club wherein it is stated that the Court can set up a Confidentiality Club at any stage in the suit to preserve and exchange the confidential information, filed before the Court, such as documents as per Delhi High Court (Original Side) Rules, 2018.
The High Court encourages Alternative Dispute Resolution measures like mediation at any stage in the suit. Rule 12 states that if the parties want to explore mediation or Early Neutral Evaluation (ENE), the Court may appoint a competent mediator or panel of mediators to explore alternative solutions.
If the Court is of the opinion that an amicable solution can be explored, the consent of the parties is not required. Additionally, mediation or ENE proceedings may proceed concurrently with the legal proceedings before the Court, so as not to delay adjudication.
Rule 13 empowers the High Court to prepare a panel of scientific advisors who shall assist in the proceedings. However, such panel should be different from the one constituted under the Delhi High Court Intellectual Property Rights Division Rules, 2021.
Lastly, Rule 16 lays down the categories of the cases in which a summary adjudication can be considered by the Court, in addition to the provisions in The Commercial Courts Act, 2015 for Summary Judgment. The conditions for summary adjudication are mentioned hereunder:
i. Where the remaining term of the patent is 5 years or lesser,
ii. A certificate of validity has already been issued or upheld by the High Court, Supreme Court or the erstwhile Intellectual Property Appellate Board,
iii. Pertaining to the same patent or the Defendant is a repeat infringer,
iv. If the validity of the patent is admitted and only the infringement has been denied.
During the last decade, there has been a rise in the number of patent infringement actions filed before the Courts. The Delhi High Court deals with the maximum number of patent litigation, followed by the Bombay High Court. These Rules will definitely aid the Courts as well as the parties to the patent litigation.
In the Intellectual Property matters pertaining to patents, there is technicality and complexity involved. Having access to scientific advisors or technical experts, would be an advantage. However, at the same time, it can also be a drawback as there is always a risk of presence of a cognitive bias in the minds of scientific advisors or technical experts.
In addition to the aforementioned, the Rules don’t define all the terms used in it. One such example is the definition of Gillette Defense. Such lack of specific definitions leaves room open for interpretation, which can be both a boon or a bane.
-Team AMLEGALS assisted by Ms. Pragya Dhanjika (Intern)
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