Justice Tejas Karia, Delhi High Court
Delhi High Court Orders Xiaomi To Deposit $28.7 Million In Patent Dispute With Blackberry And Malikie Over Unlicensed Use Of Cellular SEPs
|Standard Essential Practices cover technologies necessary to meet industry standards like 4G/5G, & must be licensed on FRAND terms to ensure fair competition.
The Delhi High Court has directed Xiaomi to deposit $28.7 million as pro tem security in a landmark patent infringement suit initiated by BlackBerry and Malikie Innovations Ltd over the use of cellular Standard Essential Practices (SEPs). The Bench observed that Xiaomi’s decision to pursue a FRAND (Fair, Reasonable, and Non-Discriminatory) rate-setting adjudication in a Chinese court served as a prima facie admission of the standard essentiality of the patents in question.
SEPs, essentially cover technologies necessary to meet industry standards like 4G/5G, and must be licensed on FRAND terms to ensure fair competition. Given Xiaomi’s failure to disclose an alternative technology for 4G and 5G connectivity and the "precarious" financial standing of its Indian subsidiary due to ongoing regulatory seizures, the Court determined that the deposit was necessary to safeguard the plaintiffs' interests during the pendency of the litigation.
Justice Tejas Karia observed, “Since the Defendants have failed to provide information of use of any alternative technology or failed to explain to this Court that how its devices conform with the 4G and 5G standards without implementing the Suit Patents, this Court at this prima facie stage, based on the submissions made and the documents placed on record by the Plaintiffs, establishes that the Plaintiffs have been able to prove the infringement”.
Advocate Pravin Anand appeared for the plaintiff and Advocate Arjun Gadhoke appeared for the defendants.
Malikie Innovations Ltd and BlackBerry (the Plaintiffs) had instituted a commercial suit against Xiaomi (the Defendants) for the unlicensed manufacture, import, and sale of 4G and 5G compliant devices.
The Plaintiffs asserted a portfolio of Standard Essential Patents (SEPs), specifically IN 283303, IN 317530, and IN 335982, which were acquired or licensed from BlackBerry. Despite negotiations commencing in October 2023 and technical discussions involving claim charts, the Defendants failed to execute a FRAND license.
The Plaintiffs moved an application under Section 151 CPC seeking a pro tem security deposit based on their FRAND offers.
During the pendency of this application, it was brought to the Court’s attention that Xiaomi had filed a rate-setting suit against Malikie before the Shenzhen Intermediate People's Court in China. The Defendants resisted the Indian application, arguing that the Chinese suit was limited to territorial patents and that no prima facie case of infringement or validity had been established in India.
The Court relied heavily on Nokia Technologies OY v. Guangdong OPPO Mobile Telecommunications Corp. Ltd. & Ors. 2023:DHC:4465-DB, holding that a pro tem order is a temporary arrangement aimed at preventing an implementer from deriving an unfair competitive edge by using technology without payment.
Regarding infringement, the Court noted that Xiaomi’s own website and packaging declared its devices as 4G and 5G compliant. Under the Delhi High Court Rules Governing Patent Suits, 2022, the failure of a defendant to disclose an "alternative technology" used to achieve the standard leads to a prima facie inference of infringement.
“…the Plaintiffs have established a prima facie case on the validity, essentiality and infringement of the Suit Patents. Further, while deciding the Application for pro tem, the detailed exploration of merits is not required. The Division Bench of this Court, in Nokia Technologies OY (supra) emphasised that to pass a pro tem order is a temporary arrangement and, therefore, detailed exploration of merits is not required”, the Bench observed.
Furthermore, the Court highlighted the financial risks, noting the Enforcement Directorate’s seizure of over ₹5,551.27 crores from Xiaomi’s Indian subsidiary, which rendered the Plaintiffs’ potential future decree vulnerable.
Accordingly, it allowed the application for pro tem security, directing the Defendants to deposit a portion of the royalty amount to secure the Plaintiffs’ interests. The Court clarified that non-furnishing of third-party license agreements (PLAs) by the Plaintiffs at this stage is not a bar to granting pro tem relief, as the Court is not yet determining the final FRAND rate.
Cause Title: Malikie Innovations Ltd & Anr. v. Xiaomi Corporation & Ors. (Neutral Citation: 2026:DHC:3671)
Appearances:
Plaintiffs: Pravin Anand, Vaishali Mittal, Siddhant Chamola, Gitanjali Sharma, Prachi Sharma, Gursimran Singh Narula and Jitesh Prakash Gupta, Advocates.
Defendants: Saikrishna Rajagopal, Julien George, Arjun Gadhoke, Dr. Victor Vaibhav Tandon, Ayush Saxena and Christo Sabu, Advocates.