Delhi High Court Rules on Disclosure of Third-Party Patent License Agreements in Patent Dispute

In a significant development for patent litigation involving Standard Essential Patents (SEPs), the Delhi High Court, presided by Justice Mini Pushkarna, has ruled on the disclosure of third-party Patent License Agreements (PLAs) in the case between InterDigital Technology Corporation and Guangdong Oppo Mobile Telecommunications Corp. Ltd. The court's decision emphasizes the importance of transparency and confidentiality in patent disputes that involve multinational parties and sensitive business information.

The lawsuit, filed by InterDigital against Oppo, revolves around the alleged infringement of five SEPs owned by the plaintiffs. These patents cover technologies essential to wireless telecommunications standards, including 3G, 4G, and 5G. Oppo, a major mobile phone manufacturer, is accused of manufacturing and selling devices that incorporate these patents without securing a Fair, Reasonable, and Non-Discriminatory (FRAND) license, despite ongoing negotiations since 2014.

At the heart of the dispute is how much access the defendants’ in-house representatives should have to the full PLAs between InterDigital and other licensees. The court had earlier constituted a Confidentiality Club that included representatives from both parties. However, the plaintiffs argued that only summaries of these agreements should be provided to the defendants’ in-house representatives, whereas Oppo sought full disclosure to adequately defend its case and determine comparable royalty rates.

The Delhi High Court, after reviewing both parties’ submissions, ruled that the in-house representatives of Oppo, who are part of the Confidentiality Club, are entitled to access the full PLAs. The court noted that this disclosure was vital for a fair determination of the FRAND rate and that the summaries alone were insufficient for the defendants to participate fully in the legal proceedings.

In reaching this decision, the court emphasized that the disclosure would not result in an unfair competitive advantage. The in-house representatives are restricted from engaging in licensing negotiations for two years after reviewing the agreements. This condition was implemented to protect sensitive information and ensure fair play in future negotiations.

The court also directed Oppo to disclose its agreement with Qualcomm, which is relevant to determining the scope of infringement. The ruling marks a step towards aligning Indian litigation practices with international standards, following similar decisions in the United Kingdom, where InterDigital and Oppo are also engaged in parallel proceedings.

With this judgment, the Delhi High Court has set a precedent for the handling of confidential information in patent disputes involving SEPs. This ruling reinforces the court’s commitment to balancing the interests of transparency, confidentiality, and fair competition in complex intellectual property litigation.

The case will continue as both parties now prepare for the trial on the merits of the patent infringement claims.

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