It is not every day that members of the Indian legal fraternity are celebrated at global fora for their contributions to international IP jurisprudence. In a momentous announcement on December 10, Managing IP, a British media platform, included Justices Amit Bansal and Jyoti Singh of the Delhi High Court in its list of “50 Most Influential People in IP 2024.” The platform has lauded Justice Bansal for his ruling in Telefonktiebolaget Lm Ericsson(Publ) v. Lava International Ltd in March, after over 9 years of litigation, and Justice Singh for her judgment in the 14-year-long matter in Communication Components v. Mobi Antenna Technologies in May this year. These high stakes matters were also among the rare instances ultimately resulting in a judgment, albeit after years of litigation.
The honour and the recognition of the judges certainly attest to India’s growing stature in the global IP landscape and the impact on cross-border stakeholders. At the same time, the development opens the window to revisit not just the aspects of their judgments that earned them the accolade but also an array of legal issues and concerns at the heart of their reasoning, as raised in past analyses.
Justice Bansal’s aforesaid landmark decision, where he awarded the highest-ever damages to the tune of INR 244 crores (~USD 29 million) to Ericsson for the infringement of its standard-essential patents (SEPs), has been largely hailed for being India’s first “full-trial determination” of fair, reasonable and non-discriminatory (FRAND) royalties. However, it has also been critiqued for its non-transparent methodology for calculating the said quantum of damages. As highlighted previously by Praharsh Gour and Swaraj Paul Barooah in their two-part analysis (here and here), the judgment running into a bulk of 476 pages prompts questions along both substantial and procedural lines, particularly regarding the inadequately explained classification of Lava as an “unwilling licensee” and the lack of transparency in Ericsson’s third-party agreements leading to negotiations based on an apparent information asymmetry between the parties.
This is not the first time that the focus has converged on the need for transparency in the SEP licensing process. While there appears to be a general absence of critical commentary on the present judgment, reflections on the issue of transparency in SEP licensing systems are in plenty. The Delhi High Court itself in its judgment in Intex v. Ericsson (2018) discussed the need for a ‘candid’ evaluation of relevant information during the negotiation process for the designation of the parties as “willing” (paras 68 to 73). Similarly, Thomas F. Cotter, concurring with Swaraj and Praharsh’s analysis in the present case, points towards similar arguments made in his blog dating back to 2021, where he questioned the existence of confidentiality in prior agreements, in stark contrast with the ideal of openness entailed by FRAND commitments. Barbara Lauriat in her 2023 paper too raised the issue of non-transparency owing to, inter alia, the lack of “access to information from comparable licensing agreements…” Concerns have also been raised around the imbalances in the bargaining power between SEP owners and implementers on Managing IP itself. The extant global discourse around the transparency issue, thus, makes it even more worthy to question how the Court missed out on similar contentions in the instant judgment. Further, the Court’s reliance on the final product value for royalty calculation, rather than the smallest saleable patent-practicing unit (SSPPU), the imposition of global portfolio licensing rates in a relatively limited market and the extension of damages until the last patent’s expiry, have also drawn criticism.
As far as Justice Jyoti Singh’s judgment in Communications Components Antenna is concerned, the platform in its commendation highlights the conclusion of a 14-year-long matter and the the award of INR 217 crores (~USD 26 million) in damages to the plaintiff, the highest-ever in India based on lost profits. The dispute revolved around a patent titled “Asymmetrical Beams for Spectrum Efficiency” (IN 240893), designed to enhance spectrum efficiency for better call quality. After determining that the defendant, Mobi Antenna, infringed the patent, the Court calculated the damages based on a 2011 Total Addressable Market (TAM) Analysis prepared by the plaintiff. It arrived at the plaintiff’s lost sales in India between 2011 and 2014, halving the estimated number of units sold and multiplying them with the estimated profit in 2011.
Praharsh in another piece has shed light on the confounding approach of the Court in this calculation. He highlights the over-reliance of the Court on the plaintiff’s estimates, not actuals, despite the defendant’s affidavit denying sales during the period and its abandonment of proceedings. The lack of detailed reasoning on currency conversion rates and the timeframe for damages adds to the confusion. Moreover, the judgment, relying on the reasoning in Strix Ltd v. Maharaja Appliances Limited (2023), classified the damages as “compensatory” ignoring the distinction from “notional” damages, without much of a justification.
The above criticisms are in no way meant to underplay the significance of the judgments in concluding disputes of such a complex nature. However, in the haste to celebrate their symbolic importance as judicial milestones, one must also factor in their practical implications as they come to gain currency as landmark precedents. While appreciating their conclusive resolution, it is also imperative that they are critically examined so as to ensure that they do not lead to potential errors in the short term and, more gravely, the potential dismissal of fairness at the altar of justice, over a longer period. A more reasoned and equitable approach can ensure that the present streak of recognitions can touch many more heights in the future.