This post covers the aspects of infringement as discussed by the Delhi High Court in the Lava v. Ericsson case. The Court noted that the fulcrum of the dispute between the parties in this case was the issue of whether Lava was guilty of infringing Ericsson’s patents or not. It is a well-settled principle in Patent law that the burden of proof to prove infringement lies on the Plaintiff (Ericsson). In line with this principle, the court placed the onus of proof on Ericsson to prove that there was infringement by Lava. Ericsson sought to prove this infringement through a two-step test for infringement which according to Ericsson was prevalent in SEP cases.
Ericsson’s submissions:
Ericsson made several detailed submissions before the Court, however at the core of its submissions Ericsson argued that Lava did not dispute the essentiality of Ericsson’s SEPs including suit patents and the fact that Lava devices were standard compliant, including the optional standards like AMR and EDGE. This was an admission by Lava, of infringement. Lava also did not provide details of any alternate technology being used by it to implement the standards, nor did it counter Ericsson’s claim charts on merits or provide its own claim charts to rebut the claim charts provided by Ericsson. Therefore, Lava had admitted to the essentiality of Ericsson’s patents.
Lava’s submissions:
Lava submitted that it had not made any admissions with regard to the essentiality of Ericsson’s patents or infringement thereof. Ericsson’s suit patents were not incorporated into ETSI (European Telecommunications Standards Institute) technical specifications, as required by the ETSI Policy and no independent expert evidence was led by Ericsson to establish that the suit patents were SEPs. Lava also argued that since the declarations were delayed and insufficient, Ericsson had waived its right to assert the suit patents as SEPs. Relying on the decisions made by the US courts in Core Wireless Licensing SARL v. Apple Inc[i]and Conversant Wireless Licensing SARL v. Apple Inc.[ii], Lava argued that Ericsson’s failure to duly disclose essential IPR in the IPR Information Statement and Licensing Declaration (ISLD) form amounted to an implied waiver of the patentee to assert its patents as SEPs.
Court’s observations:
Prior to deciding on the question of infringement, the court felt it imperative to discuss on the following:
- Whether the declarations filed by Ericsson before ETSI were proper?
- Whether the suit patents qualify as being SEPs in terms of the ETSI IPR Policy?
On question 1, the court was of the view that declarations to the ETSI could be made either in respect of a project or a standard or technical specification. There was no mandatory requirement to make a declaration in relation to a specific ETSI standard or a technical specification or for all applicable standards.
In the present case, Ericsson had made declarations before ETSI at the ‘project level’, which included GSM/UMTS projects. The information supplied by Ericsson in the IPR Information Statement and Licensing Declaration (ISLD) was in alignment with the ETSI’s flexible framework for declarations. In view of these, the declarations submitted by Ericsson could be regarded as adhering to the fundamental stipulations of the ETSI IPR Policy. On the argument of implied waiver, the court noted that ‘unenforceability’ on account of implied waiver, is recognized as a statutory defense under the US patent laws, but not under Indian patent law. The court also reiterated that the doctrine of implied waiver, like the doctrine of inequitable conduct, should only be applied in cases where the patentee’s misconduct results in an unfair benefit. Since nothing was placed on record by Lava to show that Ericsson obtained unfair benefits on account by delaying the filing of the declarations before ETSI, there is no implied waiver in this case.
On question 2, the court referred to the definition of the terms ‘essential’ and ‘standard’ as defined in Articles 15(6) and 15(11) respectively of the ETSI IPR Policy. The court observed that the clauses pertaining to these terms were also the subject matter of consideration before the Division Bench in Intex v. Ericsson[iii]. Based on the correspondences exchanged between Ericsson and Lava, the court noted that Lava was well aware of the essentiality of Ericsson’s patents and had accordingly sought a FRAND license. The last email from Lava to Ericsson only expressed concerns about royalty rates, but nothing on the essentiality.
The fact that Lava negotiated with Ericsson for over a period of three years demonstrated that Lava was conscious of the fact that Ericsson’s devices were standard-compliant.
Claim charts in patent litigation
Ericsson submitted claim charts for each of the 8 patents forming part of the present suit. The court observed that even though Lava had objected to the admissibility of the claim charts, it itself had submitted claim charts in a suit filed by it against Ericsson in Noida.
The court explained that, in the landscape of patent litigation, particularly in cases involving SEPs, claim charts are prepared on the basis of extracts of the asserted claims of the suit patents as against the extracts of the relevant standards to show the mapping of the claims. Claim mapping charts are a key tool in providing clarity on the essentiality of patents to the standards and aiding in transparent licensing practices, thereby playing a vital role in the broader ecosystem of standardization. Hence, it is not relevant as to who prepared/authored the claim charts. What has to be seen is whether the aforesaid mapping has been done in a correct manner or not.
In the absence of cogent evidence by Lava to prove the existence of alternative methods of implementing the same standard as that of Ericsson’s patents, the court was clear that Ericsson had been able to prove the essentiality of the suit patents.
Two-step test for establishing infringement
After discussing the defense of “Doctrine of exhaustion” (which will be covered in a separate post), the court relied on the two-step test as laid down in Fujitsu v. Netgear [iv]by the US Court of Appeals and approved by the Division bench of the DHC in Intex v. Ericsson (Supra). The two-step test for establishing infringement includes:
- Mapping patentee’s patent to the standard to show that the patent is a Standard Essential Patent.
- Showing that the implementer’s device also maps to the standard.
In other words, if A = B and B = C, then A = C, where A = Patent; B = Standard; C = Defendant’s device.
The court stated that the rationale for applying this test in SEP infringement cases lies in its methodical approach, firstly, by using claim charts to establish that the suit patents map onto a standard (A=B), and secondly, by assessing implementer’s device for compliance with the standard (B=C).
Applying the two-step test for infringement to the facts of the present case, there could be no dispute that (i) the suit patents were SEPs and (ii) the devices of Lava were compliant with the ETSI standards as also optional standards. Therefore, the devices of Lava without a doubt infringed on the portfolio of SEPs of Ericsson.
Citation: Lava International Limited v. Telefonaktiebolaget LM Ericsson, High Court of Delhi, 28th March, 2024, CS(COMM) 65/2016, CS(COMM) 1148/2016 and CC(COMM) 14/2017.
[i] Core Wireless Licensing SARL v. Apple Inc., 899 F.3d 1356 (Fed. Cir. 2018)
[ii] Conversant Wireless Licensing SARL v. Apple Inc.,No. 15-cv-05008-NC, 2019
[iii] Intex Technologies (India) Ltd. v. TLM Ericsson, 2023 SCC OnLine Del 1845.
[iv] Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010).
Authored by Gaurav Mishra, Patents Team, BananaIP Counsels
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