Delay Of Almost 9 Years In Filing Suit: Delhi High Court Refuses To Grant Interim Injunction Against Xiaomi In Alleged Patent Infringement Case
The Delhi High Court said that the fact that the suit patent has hardly been worked in India would also be one of the factors for refusing to grant an interim injunction.
Justice Amit Bansal, Delhi High Court
The Delhi High Court has refused to grant interim injunction to a company namely Conqueror Innovations Private Limited against Xiaomi Technology India Private Limited, alleging patent infringement.
The Court was deciding Applications filed under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).
A Single Bench of Justice Amit Bansal observed, “Notably, the suit patent was granted in favour of the plaintiffs on 28th December, 2010. It has specifically been averred in the Written statement that the defendant has been selling its devices with the impugned ‘Find Device’ feature in India since the year 2014 (See: paragraph 11 of the Written Statement). There is no explanation provided by the plaintiffs as to the delay of almost nine years in filing the present suit.”
The Bench said that the fact that the suit patent has hardly been worked in India would also be one of the factors for refusing the grant of an interim injunction in favour of the Plaintiffs.
Senior Advocate Swathi Sukumar appeared on behalf of the Plaintiffs while Advocate L. Badrinarayanan appeared on behalf of the Defendant.
Brief Facts
The Suit was filed by the Plaintiffs seeking relief of permanent injunction, restraining the Defendant from infringing its registered patent titled as “A Communication Device Finder System” (suit patent) along with other ancillary reliefs. The Plaintiff company was a duly recognised start-up and a recognised Micro, Small and Medium Enterprises (MSME) company. It was the first owner of the suit patent. The invention of the suit patent relates to an embedded security feature and its activation. The suit patent was filed in 2006 and was granted in 2010. In 2023, the Plaintiffs got to know that the Defendant was manufacturing, offering for sale, importing and selling online and offline mobile devices, tablets, etc., operating on Android OS and the said devices had the “anti-theft kill switch tool” embedded in them, which allowed a user to download and install the anti-theft application/software modules.
Being aggrieved by the alleged unauthorized use of its patented technology, the Plaintiff issued a legal notice and informed the Defendant about its statutory rights in the subject patent, its SEP status, and the infringement resulting from the Defendant’s manufacture, sale, and import of listed products without consent. It also offered to grant a non-exclusive license on FRAND terms. Upon receiving no response, a follow-up notice was sent. Despite due delivery, the Defendant failed to reply to the same and being aggrieved by this, the Plaintiffs filed the Suit before the High Court.
Reasoning
The High Court in view of the above facts, noted, “It is a settled position of law that the independent Claims are the widest in scope and the dependent Claims limit the scope of the independent Claims. Therefore, if the defendant’s devices do not infringe the independent Claim, there cannot be any infringement of the dependent Claims.”
The Court remarked that since the Defendant’s devices do not satisfy or infringe the independent Claim 1 of the suit patent, the Plaintiffs cannot sustain an infringement claim based on the claims dependent on independent Claim 1 either.
“Even though the plaintiffs have asserted in the plaint that it has sold various subscriptions via the Google Play Store in respect of the suit patent, nothing has been placed on record to substantiate the same. The defendant has placed on record Forms-27 filed by the plaintiffs with the Patent Office from 8th April 2011 till 23rd September 2022, to show that the suit patent has not been worked since the grant of the patent”, it said.
The Court further noted that the invention, which is the subject matter of the suit patent, has been worked in India only to a limited extent during the Financial Year 2019-20.
“The Division Bench of this Court in Franz Xaver Huemer v. New Yash Engineers has categorically held that a registered patentee who has not used the patent in India cannot seek an interim injunction against a party”, it added.
The Court also refused to accept the submission of the Plaintiffs that they became aware of infringing devices only in January 2023. It was of the view that this inordinate delay in filing the suit is yet another factor that dissuades the Court from granting an interim injunction in favour of the Plaintiffs at this stage.
Conclusion
The Court, therefore, held, “In view of the aforesaid discussion, the plaintiffs have failed to establish a prima facie case of infringement against the defendant. Balance of convenience is also in favour of the defendant as the defendant’s products have been sold in India since 2014. Irreparable injury and undue hardship would be caused to the defendant if an interim injunction is granted in favour of the plaintiffs, restraining the defendant from selling their devices in India.”
The Court clarified that in the event the Plaintiffs succeed at the time of final adjudication of the suit, they can be suitably compensated by way of damages.
“There is nothing on record to suggest that the defendant is not in a good financial condition or that the defendant would not be in a position to satisfy a decree for damages that may be passed against the defendant upon final adjudication of the suit”, it concluded.
However, the Court directed that the Defendant shall maintain complete accounts of the manufacture and sale of the impugned devices and file the statement of accounts on a half yearly basis.
Accordingly, the High Court dismissed the Applications and refused to grant interim injunction against Xiaomi.
Cause Title- Conqueror Innovations Private Limited & Anr. v. Xiaomi Technology India Private Limited (Neutral Citation: 2025:DHC:5233)
Appearance:
Plaintiffs: Senior Advocate Swathi Sukumar, Advocates Siddharth Sharma, Nikhil Sharma, Davesh Vashishtha, and Rishub Agarwal.
Defendant: Advocates L. Badrinarayanan, Prashant Phillips, Ankur Garg, Vindhya S. Mani, and Bhuvan Malhotra.
