Page 38 - A&A Patents&Design Rewind-2016

INJUNCTION ON XIAOMI VACATED FOR

CONCEALMENT OF MATERIAL FACTS BY

ERICSSON said chipsets. The benefits of the license accrue to
purchasers and customers of Qualcomm’s chipsets.
The Delhi High Court on April 22, 2016 Even though the suit involves patents relating to
revoked the interim injunction on Xiaomi
in its ongoing patent tussle with Ericsson.
The Court in its judgement pronounced that CDMA technology, the existence of the agreement

there was a greater onus on Ericsson to disclose was deliberately concealed. Further, the Redmi 1S

material facts, in this case the Multi Product License handset devices manufactured and sold by Xiaomi

Agreement which it had with Qualcomm, especially in India and tested by Ericsson used Qualcomm

when it was seeking an ex-parte injunction. chipsets. Xiaomi further argued that when a party

approaches the Court for grant of a discretionary

In December 2014, Ericsson had filed a suit against relief, it has to come with clean hands by disclosing

Xiaomi in India for the alleged infringement of all facts that have a bearing on the litigation, more

the eight of its Standard-Essential Patents (SEPs). so when the relief sought is at an ex-parte stage.

The Delhi High Court had granted an ex-parte

injunction on the sale, manufacture, advertisement, In it defence, Ericsson argued that Xiaomi was

and import of Xiaomi’s devices. Furthermore, involved in manufacturing, importing, offering for

the Court also directed the Customs Authorities sale, advertising and selling several devices that are

to take note of any consignment of the products AMR, 2G/EDGE and 3G such as Redmi IS, Redmi

undertaken. Note, Redmi etc. for which no license has been

The ex-parte injunction order was challenged obtained by Xiaomi Acceding to Xiaomi’s contention that
before the Division Bench of the High Court, which from Qualcomm.
modified the injunction order of the Single Judge The scope of a party seeking an ex-parte order has a
and allowed Xiaomi to import/sell its Qualcomm- the suit patents heightened duty to disclose all material
chipset based devices in India and no other chipset extends beyond 3G the Court vacated the interim injunction
based devices. The Division Bench further directed
and Xiaomi has not order with respect to the two patented

obtained a license pertaining to CDMA technology.

the Single Judge to, at the first instance, consider for 2G, AMR and

arguments concerning suppression of relevant facts EDGE though the devices are 2G, AMR and EDGE

by Ericsson on documents pertaining to license compliant. Xiaomi has also failed to disclose to

agreements between Ericsson and Qualcomm, the Court that even for the same models at times

alleged by Xiaomi. different chipsets/hardware elements/components

are used. It was further argued by Ericsson that the

In the hearing pertaining to suppression of relevant agreement between Ericsson and Qualcomm is a

facts before the Single Judge, Xiaomi contended conditional agreement limited in scope and cannot

that Ericsson had deliberately concealed the be interpreted to mean that Ericsson has exhausted

existence and contents of a Multi-Product License its rights in all suit patents against Xiaomi. Further,

Agreement dated October 2011, entered between if and when there are any arrangements, which the

Ericsson and Qualcomm. Under the agreement prospective licensees may have, the same are given

Ericsson had granted a license in respect of some due consideration under the standard GPLA of the

of its patents (at least pertaining to the CDMA Plaintiff. But for that Xiaomi must have negotiated

(3G) technology) to Qualcomm which vests in with Ericsson which they failed to do.

Qualcomm the right to make, use, sell and import

mobile device chipsets and devices incorporating Having heard the averments made by both the

38 | Patents & Design