Summary
Malikie Innovations Ltd., which acquired BlackBerry Limited's cellular Standard Essential Patent portfolio, sued Xiaomi in India after over two years of stalled FRAND licensing negotiations. In a ruling dated 30 April 2026, the Delhi High Court directed Xiaomi to deposit ₹272 crores as pro tem security, finding a prima facie case on validity, essentiality, and infringement of three Indian Suit Patents. The court used an unusual move against Xiaomi: Xiaomi's own FRAND rate-setting filing before a Shenzhen court was treated as a prima facie admission that Malikie owned valid and essential patents. The ruling reinforces that implementers in India cannot freely use patented cellular technology during prolonged litigation without providing security to the patent holder.
Every smartphone sold today runs on technology built to industry-wide standards. The patents that are so fundamental to these standards that every compliant device must use them are called Standard Essential Patents (“SEPs”). In exchange for having their technology included in a standard, SEP holders commit to licensing those patents on Fair, Reasonable and Non-Discriminatory (“FRAND”) terms. When an implementer uses those patents for years and refuses to sign a license, the SEP holder’s only recourse is to go to court.
The Current case:
Malikie Innovations Ltd. (“Malikie”) acquired approximately 32,000 patents from BlackBerry Limited (“BlackBerry”) in May 2023. BlackBerry was a pioneer in cellular technology, and its portfolio had previously been licensed to Samsung, Apple, LG, and Huawei. Through a Patent License Agreement (“PLA”) signed in January 2024, Malikie also obtained the exclusive right to sub-license BlackBerry’s remaining cellular SEPs to specific named companies, including the Xiaomi group. Three Indian patents form the core of this suit: IN 283303, IN 317530, and IN 335982, covering technologies related to signal acknowledgement, device reception, and call establishment in 4G and 5G networks.
Xiaomi Corporation (“Xiaomi”), together with its Indian and Chinese subsidiaries, holds 17.76% of India’s mobile handset market. Malikie first approached Xiaomi in October 2023. Over two years followed: two FRAND offers from Malikie, two counteroffers from Xiaomi, and a Non-Disclosure Agreement renewed multiple times — but no signed license. Malikie filed suit before the Delhi High Court and applied for pro tem security, a temporary court-ordered deposit designed to protect the SEP holder’s interests while the full case proceeds. Just before the order was delivered, a significant new development emerged: on 2 March 2026, Xiaomi filed a FRAND rate-setting suit before the Shenzhen Intermediate People’s Court in China. That filing proved consequential.
Issues for the Court
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- Whether Malikie could bring the suit without impleading BlackBerry as a co-plaintiff, and whether Section 109 of the Patents Act required this.
- Whether Malikie was required to produce comparable Patent License Agreements before pro tem security could be ordered.
- Whether Malikie established a prima facie case on the validity, essentiality, and infringement of the Suit Patents.
- Whether Xiaomi’s FRAND rate-setting filing before the Shenzhen Court amounted to a prima facie admission of the essentiality of Malikie’s SEPs.
- What quantum of pro tem security deposit was appropriate.
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Malikie’s Arguments
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- The Suit Patents were fully assigned to and owned by Malikie. As a patent owner, it could sue under Sections 48 and 108 of the Patents Act without BlackBerry as a co-plaintiff. Section 109 applies only when an exclusive licensee files suit without the patentee, not when the patent owner itself is the plaintiff.
- Malikie had disclosed claim charts, royalty computation methodology, and an offer of binding arbitration to Xiaomi. Xiaomi declined all of these. Throughout two years of negotiations, Xiaomi never disputed its need for a license.
- Xiaomi’s own websites and product packaging declared its devices compliant with 4G and 5G standards, and its failure to disclose any alternative technology in the proceedings indicated prima facie infringement.
- The pro tem threshold is lower than for an interim injunction, and the Division Bench in Nokia Technologies OY v. Guangdong OPPO Mobile Telecommunications Corp. Ltd. (Neutral Citation: 2023:DHC:4465-DB) had confirmed that where challenges to essentiality are raised only in court and not during pre-suit negotiations, they are afterthoughts.
- Comparable PLAs are irrelevant at this stage; the court is not determining the FRAND rate. Xiaomi could use its own licenses with Nokia, Qualcomm, Huawei, and others to assess FRAND rates independently.
- Xiaomi’s Chinese Civil Suit constituted a prima facie admission that Malikie owned valid SEPs and that royalties were payable.
- Xiaomi Technology India Private Limited (Defendant No. 2) faced a seizure of ₹5,551.27 crores under the Foreign Exchange Management Act, 1999, making the Defendants’ financial position precarious.
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Xiaomi’s Arguments
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- BlackBerry was a necessary party to the suit under Section 109 of the Patents Act; without it, the suit was not maintainable.
- No court had yet determined the Suit Patents to be valid, essential, or infringed. Granting pro tem security without such findings would effectively presume patent validity, contrary to Section 13(4) of the Patents Act, which provides that no presumption of validity attaches to a granted patent.
- Relying on Guangdong OPPO Mobile Telecommunications Corp. Ltd. v. Interdigital Technology Corp. (Neutral Citation: 2024:DHC:4547-DB), Xiaomi argued that the correct sequence in a SEP suit requires the court to first assess validity and essentiality, then FRAND compliance, and only then consider willingness to license.
- Malikie had not produced any PLAs; without comparable licenses, the royalty rates had no objective basis, and the assignment of the Suit Patents at a recorded value of merely $100 suggested minimal worth.
- Xiaomi Technology India Private Limited’s net worth stood at ₹5,984 crores, demonstrating financial stability.
- The Chinese Civil Suit was limited to Chinese patents and China-specific sales; it was not an admission about Indian patents, and the Shenzhen Court would still have to determine which Chinese patents were essential.
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Court’s Analysis
What is pro-tem security?
The court began from a well-established baseline: a pro tem order is not an injunction. It does not stop the defendant from manufacturing or selling products. Its purpose is narrower, which is to ensure that the SEP holder can recover royalties if the suit eventually succeeds, and to prevent the implementer from gaining an unfair competitive advantage over other players who are already paying. The Division Bench in Intex Technologies (India) Ltd. v. Telefonaktiebolaget LM Ericsson (2023:DHC:4465-DB) had firmly established that FRAND obligations are mutual: neither an implementer nor an SEP holder operates in a “one-way street.” An implementer who neither accepts a FRAND offer nor provides a counteroffer with security gains a market advantage at the expense of both the SEP holder and other willing licensees. The court confirmed that the threshold for a pro tem order is therefore lower than for an interim injunction, and that a detailed exploration of merits is not required.
Maintainability and Patent License Agreements
On the BlackBerry non-joinder argument, the court held that Section 109 of the Patents Act requires the patentee to be joined only when an exclusive licensee, not the patent owner itself, files the suit. Since Malikie owned the Suit Patents by assignment, no such requirement applied. The objection was therefore rejected.
On PLAs, the court followed the Division Bench rulings in Nokia Technologies OY (supra) and Dolby International AB v. Lava International Limited (Neutral Citation: 2025:DHC:5426) and observed that the production of comparable PLAs is irrelevant at the pro tem stage because the court is not determining the FRAND rate. Xiaomi, which held licenses from Nokia, Qualcomm, Huawei, and Interdigital, had access to benchmarks from which it could assess whether Malikie’s offer was FRAND. It could not simultaneously refuse to engage and demand third-party agreements as a precondition for any security.
Xiaomi’s Shenzhen Filing was a Self-Inflicted Admission
On essentiality, Malikie had made ETSI declarations and filed claim charts. But the decisive factor was the Chinese Civil Suit. On 2 March 2026, Xiaomi’s subsidiary asked the Shenzhen Court to confirm Malikie’s obligation to license its SEPs and to set a FRAND rate for devices sold in China. Xiaomi argued this was limited to Chinese patents only and had no bearing on Indian proceedings.
The court rejected that distinction. Following Nokia Technologies OY (supra), which had treated OPPO’s FRAND filing in China as a prima facie admission that Nokia owned valid SEPs requiring a license, the court held that asking any court to set a FRAND rate presupposes the patents in question are essential and that royalties are payable. Whether the action was for the full global portfolio or a subset, the admission carried the same logical force. Since Malikie’s portfolio had counterpart patents in both India and China, the Shenzhen filing supported prima facie essentiality for the Indian Suit Patents as well. Essentiality was accordingly established.
Burden of infringement on Xiaomi
Xiaomi’s own websites declared 4G and 5G compliance across its Xiaomi, Redmi, and POCO device series. Malikie filed test reports showing the devices implemented the features claimed in the Suit Patents. Rule 3(B)(vi) of the Delhi High Court Rules Governing Patent Suits, 2022 requires a defendant raising a non-infringement defence to disclose the alternative technology it uses. Xiaomi disclosed nothing. Following Dolby International AB (supra), the court held that the burden to prove use of an alternative technology lies with the implementer. That burden went undischarged. Prima facie infringement was made out.
Quantum: A Formula from the Negotiations
Three of the four Xiaomi defendants had no assets in India, and the Indian subsidiary faced ₹5,551.27 crores in seizures under FEMA (Foreign Exchange Management Act). The court found a genuine risk that any final decree could become unenforceable. For the quantum, the court took the arithmetic mean of Malikie’s second lump-sum offer and Xiaomi’s second counteroffer, then applied Xiaomi’s India market share of 19.12%, arriving at $28.7 million, approximately ₹272 crores at the exchange rate prevailing on 30 April 2026.
Findings
In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:
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- Malikie, as the owner of the Suit Patents by assignment from BlackBerry, was entitled to maintain the suit without impleading BlackBerry. Section 109 of the Patents Act applies only to suits filed by exclusive licensees, not patent owners.
- Production of comparable PLAs is not required at the pro tem stage; the court is not determining the FRAND rate, and an implementer may assess FRAND from its own licenses with other SEP holders.
- Malikie established a prima facie case of validity, essentiality, and infringement of the Suit Patents, based on ETSI declarations, claim charts, product compliance declarations, test reports, and Xiaomi’s failure to disclose any alternative technology under Rule 3(B)(vi) of the Delhi High Court Rules Governing Patent Suits, 2022.
- Xiaomi’s filing of the Chinese Civil Suit before the Shenzhen Court constitutes a prima facie admission that Malikie owns Standard Essential Patents and that royalties are payable on FRAND terms.
- The Defendants’ financial position, with three entities holding no assets in India and the Indian subsidiary subject to a major FEMA seizure, warranted a security deposit to ensure any eventual decree is not rendered illusory.
- The Defendants were directed to deposit ₹272 crores with the Registrar General of the Delhi High Court within six weeks, in an interest-bearing fixed deposit on auto-renewal mode; alternatively, Xiaomi may furnish an unconditional Bank Guarantee from an Indian bank for the same amount.
- If the deposit or Bank Guarantee is not provided in time, Malikie may apply for an interim injunction or other suitable relief.
- The order does not constitute a final finding on infringement or liability, and does not make Malikie’s proposed licensing rate binding.
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Case Citation: Malikie Innovations Ltd. & Anr. v. Xiaomi Corporation & Ors., CS(COMM) 734/2025 & I.A. 17510/2025, High Court of Delhi, decided on 30 April 2026. Available at https://indiankanoon.org/doc/45308178/
Authored by Gaurav Mishra, Patent Attorney, BananaIP Counsels