Ericsson’s SEP triumph ‘paves way’ for future litigation in India
Landmark case sees the Swedish smartphone firm win record damages against Indian tech rival | Dispute concerned standard-essential patents covering 2G, 3G and Edge technologies | Judgment will ‘pave the way’ for future SEP litigation in the country, Ericsson counsel tells WIPR.
Swedish smartphone manufacturer Ericssonhas prevailed at the Delhi High Court against an Indian tech company, in a first-of-its-kind standard-essential patent (SEP) judgment.
In a court document running to nearly 500 pages, Justice Amit Bansal concluded that Lava International had infringed seven out of eight SEPs covering 2G, Edge (technology used to improve the data transmission rate of a mobile phone network), and 3G.
Ericsson was also awarded record damages of Rs 244 crore (approximately $29 million)—the highest awarded in any patent case in India to date—along with an interest rate of 5% per annum until the damages are paid in full.
Notably, Bansal ordered that damages are “payable for all devices that comply with the relevant standards, not just the tested devices”.
Upon examination on the merits of subject matter eligibility, novelty and inventive step, Bansal affirmed the validity of seven patents.
But—in a small concession to Lava—he found one of Ericsson’s eight patents to be invalid (number IN 203034), agreeing in part with Lava’s counterclaim that it lacked novelty.
Unusually for courts in any jurisdiction in a post-trial SEP case—and unprecedented for a court in India—Bansal also determined the fair, reasonable, and non-discriminatory (FRAND) rate.
Saya Choudhary Kapur, a senior partner at Singh & Singh in New Delhi, India, was among the team representing Ericsson.
“The Ericsson/Lava judgment is truly groundbreaking in many ways and shall set the way for future SEP litigation in India,” she told WIPR.
“With this judgment, India has become one of the very few jurisdictions where, post-trial in a SEP matter, the court has determined FRAND rates. Justice Bansal has awarded the highest quantum of damages in any patent matter in India to date.
"The judgment not only affirms India’s position as a jurisdiction where IP rights are recognised and protected, but resounds the same emphatically.”
Justice Bansal set the royalty rate at 1.05% of the net sales value of the devices sold by Lava, applicable to a period of almost nine years between November 2011 and May 2020.
He said: “I have highlighted the necessity of negotiating FRAND rates in good faith, while holding that since SSOs [standard-setting organisations] do not assess patent validity or essentiality, alleged infringers have a right to challenge patents during or even after negotiations.
“At the same time, patent owners can seek legal remedies, including damages for past use, if infringers fail to respond in good faith to a FRAND offer.
“Lava has been held to be an unwilling licensee due to its failure to negotiate with Ericsson in good faith, consistently delaying licensing negotiations, and failing to respond to offers or present any counteroffer.”
He added that Lava’s apparent failure to accept the same royalty rates as offered by Ericsson to tech firm Micromax “further demonstrates [Lava’s] unwillingness to engage constructively in the licensing process.”
Lava claims ‘inequitable conduct’
The dispute began when Lava filed a lawsuit in 2015 in an Indian district court asking that Ericsson waive its right to enforce its Indian patents and/or patent applications which it claimed to be essential to 2G and/or 3G standards.
Citing “inequitable conduct” by Ericsson, Lava asked that it agree not to enforce its patents which it claims to be essential to 2G and/or 3G standards against Lava.
Ericsson promptly filed a suit at the Delhi High Court against Lava claiming that it was infringing its eight patents (numbers IN 203036, IN 234157, IN 203686, IN 213723, IN 229632, IN 240471, IN 241747 and IN 203034).
Lava counterclaimed, arguing that the patents were invalid and non-essential, and denied infringement.
But in 2016, the Delhi High Court passed an interim injunction against Lava, which sells mobile phones, dongles, storage devices and tablets that are primarily manufactured in China and imported to India.
The judgment follows two other big cases heard in the Delhi High Court so far in 2024. Nokia and Oppo settled their global SEP dispute in January, which had been heard in multiple jurisdictions, including India.
And in February, the Delhi High Court ordered Oppo to pay an undisclosed sum to Interdigital as an interim deposit in their SEP dispute.
Representing Lava was Arun Kumar Varma, independent senior advocate, with Abhay Raj Varma, Priyanka Ghosh and Arjun Rekh of Prima Carta Law Offices; and Nishant Nandan, head of legal department at Lava, and Kush Srivastava, senior legal counsel at Lava.
Ericsson was represented by Sandeep Sethi, senior advocate, with Saya Choudhary Kapur, Ashutosh Kumar, Devanshu Khanna, Vrinda Bagaria, Vinod Chauhan, Radhika Pareva, Vivek Ranjan, Vikram Singh Dalal and Tanvi Tewari of Singh & Singh.
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