By virtue of Section 158 of the Patent’s Act, 1970 (hereinafter, “the Act”), a High Court has the power to make rules as regards the conduct and procedure in respect of all patent proceedings before it, so long as the said rules are consistent with the Act. In exercise of the said power, the High Court of Delhi (DHC) becomes the first court in the country to frame draft rules in respect of patent suits, attempting to streamline the form and manner of pleadings as well as the procedure for adjudication of such suits/actions. Realizing the complexities involved in patent matters covering a range of scientific and technological fields and witnessing a huge increase in the number of such suits/actions before the DHC alone, the said rules are a welcome move and the need of the hour.
Accordingly, the draft “High Court Of Delhi Rules Governing Patent Suits, 2020” (hereinafter, “Draft Rules, 2020”), summarized herein below, has been brought into being by the efforts of a committee consisting of HMJs Ms. Prathiba M. Singh, Mr. Navin Chawla, Mr. Sanjeev Narula and a patent attorney Hari Subramaniam. The comments/suggestions on the said rules by the members of the Bar are welcome till 30.10.2020 (by email @ [email protected] ).
- Contents of Pleadings and Documents required in support thereof
Plaint
According to the Draft Rules, 2020, the plaint in an infringement action should contain in brief, the details about the technology and the patent under contention (suit patent), inter alia, a background of the technology, technical details of the invention, details of the suit patent including ownership, prosecution history, any related divisional or pending or withdrawn Indian patent/ applications, any related corresponding international patents/ applications, broadest and narrowest claims granted in any jurisdiction, details of challenge of the suit patent and/or related patents and outcome thereof and facts that demonstrate validity of the suit patent (opposition if any, in India or elsewhere in respect of corresponding foreign patents/applications). Thereafter, the plaint should contain details regarding the Plaintiff’s product, details of its sales and/or statement of royalties qua the working of suit patent, details of the allegedly infringing product or process, manner of infringement, and relationship of the Plaintiff with the Defendant (if any) including details of license(s), past correspondence etc.. It is also required that the plaint demonstrates infringement through a precise chart of granted claims versus product/process is provided. Finally, the plaint is required to spell out the remedy/ relief claimed, quantification of damages, interests, costs etc.
In addition to the documents typically filed in patent suits such as certified copies of the certificate of grant of patent, complete patent specification, past correspondence between parties, decisions/ orders/ actions pertaining to the suit patent as well as related/corresponding patents/applications etc., the Draft Rules additionally prescribe that a summary of the technology in a note or power point presentation format must be annexed, expert report in support of infringement analysis be provided along with laboratory analysis report (if available), license agreements if any must also be annexed with the plaint.
In a suit seeking declaration of non-infringement under Section 105 of the Act and seeking injunction against groundless threats under Section 106 of the Act, apart from the meeting with the requirement of the provision itself, the plaint must additionally contain a claim construction brief of the suit patent breaking down the elements of the claim and meaning thereof and a non-infringement brief differentiating the suit patent from the product/process being used by the Plaintiff, along with a technical report. Where the patent being used to threaten the Plaintiff is being challenged, an invalidity brief (covering grounds under S.64 of the Act) must be made a part of the pleadings.
Written Statement and Counter Claim
The written statement (WS), where it puts up a defence of non-infringement should contain a technical analysis of the invention covered by the suit patent and the product/ process/ technology being used by the Defendant showing non-infringement must be clearly demonstrated. All other defences like challenge to validity of the suit patent, defences for non-grant of injunction, willingness to take a license and the quantum thereof and the like, must also be specified in the WS.
In case of a patent validity challenge, a counter claim (CC) can be filed identifying the precise grounds of Section 64 of the Act on which the revocation is being sought. Where necessary, prior art documents and literature must be supported on grounds like lack of novelty and inventive step, specifically stating the claims which are hit by each of the cited prior art references (with relevant portions culled out).
Documents to be filed with the written statement/counter claim include, copies of any Court decisions or any patent authority relating to the suit patent or a corresponding patent application in any jurisdiction, expert report relied upon, analysis for non-infringement or invalidity, prior art documents being relied upon for invalidity action, documents relied upon for each ground under S. 64 of the Act, laboratory reports, if any amongst other things.
Replication
After first summarizing the Plaintiff’s and Defendant’s case in brief, the replication shall provide the para-wise reply to the contents of the WS.
- Procedure for adjudicating patent suits
First Suit Hearing
At the first hearing, the patentee may seek interim injunction, appointment of a local commissioner for inspection etc. with assistance of technical experts from both parties at the time of execution of commissions, inspection of the manufacturing facilities, and other such orders. The Court may, instead of granting injunction, pass orders directing monetary payments by the Defendant and/or cross undertaking by Plaintiff of costs or security to safeguard other party’s interests on terms that the Court deems fit.
Thereafter, Defendant must be served, email being an acceptable mode. In case of a caveat, such service must be done 48 hours before the first listing.
The admission/denial of documents must be completed prior to the first case management hearing, wherein documents being office records of the patent office (specification, grant certificate etc.) should not be usually denied. Party unjustifiably denying any documents or contents thereof, shall be liable to be burdened with costs.
First Case Management Hearing
The Draft Rules, 2020 introduces the following tools for Court’s assistance during the case management hearing whereby before the hearing –
- both parties shall file their respective claim construction briefs, invalidity briefs and infringement briefs, not exceeding 10 pages each, except upon leave of the Court. Any amendments to the said briefs should be done before the case management hearing.
- the court may direct filing of a technical primer by the parties to understand the basic undisputed technology covering the patent(s) in the form of a note or a power point presentation, preferably in a non-technical language
- the Court may also seek the assistance of an independent technical expert or call experts of the parties or from amongst the panel of scientific advisors maintained by the Court for assistance.
Basis the primer, the briefs and/or expert’s assistance, the Court shall strike the actual issues where there exists a dispute between the parties. After list of witnesses have been submitted by the parties and evidence has been filed, the suit proceeds towards examination.
Second Case Management Hearing
The Draft Rules, 2020 introduces the following tools for Court’s assistance during the second case management hearing whereby cross-examination of witnesses and expert testimony can be done, within fixed and routinely monitored timelines, by –
- Video-conferencing
- engaging agencies for transcription of evidence, upon appropriate directions
- Hot-tubbing
- Consenting to or being directed to record evidence in outstation venues
Third Case Management Hearing
In this hearing, the Court shall review the evidence recorded so far and may proceed to decide any preliminary issues, or alternatively direct the parties to proceed to trial on the remaining issues. At any stage the Court may use tools as follows, depending upon the complexity, facts and circumstances of the case at hand:
- Confidentiality Club formation for preservation of confidential information exchanged between the parties
- If the Court is of the opinion that the parties ought to explore mediation, irrespective of the consent of the parties, the Court may appoint a qualified mediator or panel of mediators including, technical experts to explore amicable resolution of the dispute.
- Panel of Scientific Advisors, for assisting Judges in deciding patent suits can be appointed and suggestions from the parties may be sought for the same.
- Preservation of evidence (audio or video recordings) shall be in a non-editable format (through unique hash values)
Final Hearing
Prior to the final hearing, the court shall direct parties to present a summary of pleadings and evidence along with the specific page numbers of the files. The Court can direct the presence of at least one technical person from each side, to assist the Court during the final hearing.
One is hopeful that the aforesaid rules shall help assist the Courts in managing the complexities that have arisen in dealing with patent suits and actions time and again.