You are known as a “leading light” in India when it comes to SEPs. How has the country established itself as a key venue for global SEP licensing disputes?
India has come a long way since its first post-trail SEP judgment in 2009.
The right to provide relief to SEP owners by granting pro tem relief is specific to India. In Intex v Ericsson and Nokia v OPPO, the Delhi High Court recognised that SEP owners ought to be secured at the negotiation stage. More recently, it has granted pro tem security as early as the first effective hearing date. Such security has become the norm and can even be granted suo moto by the court.
India has also established itself as a key jurisdiction for FRAND determinations.
This showcases India as a key litigation venue for SEP disputes. However, one area that requires change is fast-tracking trials.
What has been your most memorable case to date?
The most memorable aspect of a litigator’s journey is when their cases pave the way for jurisprudential evolution.
Vifor v MSN, for example, involved a product-by-process claim for ferric carboxymaltose (FCM), an iron-deficiency treatment. Vifor’s patent was challenged by defendants that were manufacturing and selling FCM. The single judge denied Vifor’s request for an interim injunction, ruling that a product-by-process claim only covers products made using the specific process described in the patent.
However, the division bench ruled that these claims protect the product, regardless of the manufacturing process. The court emphasised that such claims should be examined based on novelty.
This judgment solidified the scope of product-by-process claims and claim construction under Indian law.
As a litigator, what is your take on using alternative dispute resolution methods in place of patent litigation?
Patent holders can explore arbitration and mediation. However, arbitration is not an option if the infringer and rights holder lack a written agreement – they must have an arbitration clause to initiate a resolution. Arbitration is only available when there is a dispute between two parties that have had an agreement over use of a patent.
To expedite the resolution of commercial disputes, the government enacted the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, which introduced pre-institution mediation. The law also mandates that commercial suits, which include IP cases, cannot be instituted without exploring mediation.
However, this is not an option if a patent holder needs an urgent court order. Mediation can be used to settle with infringers only after obtaining urgent interim orders.
Further, arbitral jurisprudence of IP disputes in India is still in its infancy. While alternative dispute resolution methods are effective tools to end IP disputes, they are not effective when it comes to initiating them.
What are the biggest pressures facing your clients right now, and how are you helping them to overcome these?
Considering India’s size and population, clients face significant pressure to enforce their IP rights. While they protect their assets, they struggle to ensure that they benefit from use of the rights. We help our clients by strategising effective IP protection measures, including monitoring services and taking swift legal action against infringers. We also educate them on infringement and how to proactively prevent it.
When a lawsuit is filed, we strategise with the client’s best interests in mind. Despite India’s overburdened judiciary, we ensure that cases are concluded as quickly as possible. Our jobs do not end by obtaining a court order in the client’s favour – we take additional steps to ensure that the order is implemented to the client’s benefit.
How has being a member of AIPPI, the Asian Patent Attorneys Association (APAA), INTA, the Bar Council of India and the Delhi High Court Bar Association contributed to your professional development?
Being a member of the Bar Council of India and the Delhi High Court Bar Association has helped me stay abreast of developments in jurisprudence and enabled me to offer better solutions to concerns, such as time-bound litigation.
Organisations like AIPPI, the APAA and INTA have significantly contributed to my professional development over the years, and membership opens a broad network. These associations grant access to a wealth of resources, including industry publications, legal updates, research reports and continuing legal education programmes. Staying up to date and accessing resources play a major role in professional growth.
Overall, engagement with these organisations helps to build a well-rounded, informed and credible professional profile, which is essential for success in this competitive field.