The High Court of Delhi released its draft for the Rules governing patent suits on 9th October, 2020, and has asked for suggestions and feedback on the same. The draft is available on the internet, freely accessible to the public, and has garnered attention of various members of the legal fraternity. In this article, the key points of this Draft have been discussed along with a brief analysis of the possible impact of this Draft on patent litigation in India.
Background
The past decade has seen a significant rise in the number of patent suits filed in the High Court of Delhi, involving disputes of increasingly complex nature. Justice Endlaw in the famous Hoffman la Roche appeals had expressed the need for framing rules which would govern the procedure of adjudication in patent suits filed before the High Court of Delhi. He stated that unlike in other intellectual property disputes, patent suits involve a vast amount of nuanced technical knowledge and are hence, more complex in nature. This makes it necessary to have streamlined and detailed rules for various aspects of a patent suit, from filing to hearing and delivery of judgement. It is against this backdrop that the proposed High Court of Delhi Rules Governing Patent Suits, 2020 have been framed, under section 158 of the Patents Act, 1970.
Complementary legislations
The Draft makes it clear that these Rules shall be applicable in addition to, and not in derogation of relevant provisions of the Code of Civil Procedure, 1908, and the Commercial Courts Act, 2015. It has further been stated that while Delhi High Court (Original Side) Rules, 2018 shall continue to govern all original suits, in case of any inconsistency these Rules shall prevail, in cases of patent disputes.
Key points of the Rules
The Draft contains 15 Rules dealing with definitions, contents of pleadings, conducting of hearings, provisions for mediation and documentation of evidence and experts’ opinions.
Rule 2: Definitions
(2) Patent suit: Any suit filed to seek any/all relief provided for under Sections 48, 105, 106 including counterclaims seeking relief under Section 64.
(3) Claim construction brief: A brief that enumerates all the claims, break down the construction and meaning of each claim as well as explain the overall scope and effect as per the party filing the brief.
(4) invalidity brief: this document shall contain details regarding the precise prior art with date, country of origin, reference number and portion of prior art that results in anticipation or renders the product/process obvious. The brief shall also contain a conclusion of how each item of prior art or their combination renders the patent invalid. Further, if invalidity is claimed on the basis of any ground available under S.3 of the Patents Act, 1970 there needs to be an explanation with scientific reasoning and case law to prove the point.
(5) infringement brief: This brief is to be filed by the Plaintiff along with the claim construction brief, to compare the claims and understand how the infringement is taking place.
(6) non-infringement brief: This brief is to be filed by the Defendant to aid in comparison of suit patent claims with Defendant’s product/process.
(7) technical primer: This is a document either in text form or a powerpoint presentation that explains the undisputed technology forming the crux of the dispute, presented in a preferably non-technical language.
Rule 3: Contents of Pleadings and Rule 4: Documents to be filed
The Draft Rules lay down specific documents to be filed by parties to the suit depending on the nature of the suit. It also lays down the details that are expected to be covered in these documents. Following is a non-exhaustive summary of the same:
- The Plaint shall contain details regarding such as brief foundation of the technology involved, background of innovation, specialised details of the invention and the patent, a brief description of the product/process forming the subject matter, ownership details of the patent and a description of the alleged act of infringement.
- A written statement maybe drafted to put up a challenge to the infringement, or challenge the validity of the patent itself. If non-infringement is being pleaded, a technical analysis along with specifics of the product/process used by the defendant shall be included in the written statement. Further, if the defendant is willing to obtain a licence from the patentee, quantum for the same is to be mentioned. Details of the sales of the allegedly infringing product/process shall also be provided.
- Counter claim filed by the Defendant is expected to be precise and explanatory of one or more grounds under Section 64 of the Act, that are raised in order to seek revocation of the patent. If lack of novelty or inventive step is claimed, prior art documents shall be attached to the counter claim, and specific portions that are relied upon by the Defendant shall be referenced in the main body.
- In case of a declaratory suit filed under Section 105 of the Act for non-infringement of patent, the Plaintiff is expected to file, a claim construction brief , a non-infringement brief, and a technical report. The Plaintiff is expected specify the scope of the claims, their product/process and also mention the technical/legal grounds on which such a declaration is being sought.
- Under Section 106 of the Act, a plaintiff can institute suit for injunction against groundless threats. The Rules elaborate that in such suits, the Plaint shall contain the nature of the threat, whether oral or documentary; details of any challenge made to the validity of the patent and an invalidity brief pursuant to the challenge and details pertaining to correspondence that may have taken place between the parties.
The Plaint shall be accompanied inter alia, with certified copies of certificate of grant of patent, licence agreements, expert opinions and lab reports, if any.
The Written Statement shall be filed inter alia, with copies of previous judgements of judicial and quasi-judicial bodies, expert opinions being relied upon, technical analysis if a non-infringement is being defended, statements of accounts pertaining to allegedly infringed product/process of the Defendant. In the case of pharmaceutical patents, the specific chemical/molecular formula/combination in the prior art documents which defeats the novelty or inventive step of the suit patent should be highlighted.
Furthermore, additional documents which either parties consider as relevant to the suit, can be filed.
The Draft Rules segregate the suit adjudication into three case management hearings, apart from the first listing, namely First Case Management Hearing, Second Case Management Hearing, and Third Case Management Hearing. The Rules enumerates specific directions that may be given by the Court at each stage, and also provide guidelines on when certain specific documents may be filed, officers may be appointed, etc.
Under Rule 5, directions that maybe issued by the Court at the First hearing are discussed. The Court is empowered to appoint a local commissioner for inspection of the premises where the alleged act of manufacturing a product or carrying out a process is being conducted. This appointment can be made by the court suo motu or on an application by the plaintiff. At the first hearing, the court may issue an interim injunction at the applicant’s behest, or direct monetary payments to be made instead.
Rule 6 contains an important stipulation regarding service of defendant. The Rules specifically approve email as an accepted mode of service. Further, if the defendant is on caveat it is mandatory that he be served by email at least 48 hours to the first listing of the case.
Rule 7 deals with filing of affidavits of admission or denial, and other briefs. Certain documents have been named, which shall not be usually denied. In the event that there is a denial, affidavits shall be filed and if the denial made is unjustifiable, costs shall be imposed on the respective party.
Post the filing of admission/denial affidavits and prior to the First Case Management Hearing, both parties shall file their respective briefs, each brief being limited to a maximum length of ten pages. However, the Court may grant leave for filing longer briefs, in cases where more than one patent is involved.
The Court may, at this stage ask for a technological primer to be filed by the parties, for easy understanding of the technology involved in the suit.
Rules 8, 9, and 10 deal with the three case management hearings. In the first of such hearings, the Court shall peruse the briefs and arrive at the issues at stake, with the help of independent experts, if needed. Directions are to be issued by the court regarding filing of lists of witnesses and experts, and evidence. In the second case management hearing, the Court would peruse the evidence and draw a schedule for cross-examination. Examination and cross-examination of witnesses may be done through video conferencing and the Court may issue orders for the same, suo motu or on an application made by either party. An important provision under Rule 9(ii) is the acceptance of the ‘Hot-tubbing’ is a method of examination of expert witnesses where experts from both sides are examined by the Judge simultaneously, in order to overcome the bias of allegiance to either side. The same question is put by the Judge to both witnesses at the same time, and they’re made to answer these question of expertise in the presence of each other. Starting from 2019, Hot-tubbing was allowed by the High Court of Delhi in commercial suits and now, with this Draft, the same is sought to be introduced into patent suits as well.
Rule 11 confers on the court the power to constitute a confidentiality club at any stage of the adjudication process , with the aim of preserving confidential information exchanged by the parties during the suit proceedings.
Rule 12 empowers the Court to direct both parties to submit themselves to compulsory mediation to be presided by a single qualified mediator or a panel of such mediators. The consent of the parties is not required for the Court to issue such directions, and the Court can do so at any stage when it is of the opinion that the parties ought to explore this option. The mediator(s) appointed by the Court ought to be of scientific, economic or legal expertise.
Under Rule 13 the court can draw up a list of scientific advisors to assist the Court in adjudication of patent suits and the list would be subjected to periodical review. The advisor when called to assist on a case will have to submit a declaration of integrity and impartiality.
Rule 14 mandates that audio and video recording of witnesses made during the suit proceedings be assigned a hash value and preserved in a non-editable format.
General Comments
The Draft Rules exhibit adaptability to the evolution of technology in today’s world as also to the increasing need for flexibility in procedural law to simplify litigation. The contents of the pleadings and the other documents, mandatory and optional in nature have been specified. This leaves little room for confusion, as all information required by the Courts can be obtained from the parties at the first instance. Further, the enumeration of mandatory documents to be filed helps litigants be prepared with documents and thus saves time wasted in adjournments for lack of availability of documents.
The acceptance of video conferencing as a method of witness examination and collection of expert opinions is a welcome step. Similarly, the extension of the hot-tubbing method of expert examination to the realm of patent litigation is a step in the right direction.
Limiting the length of the briefs filed reduced volume of paperwork and saves judicial time, while providing for the filing of a technical primer makes the case more comprehensible for the Judges. Such streamlining would improve quality of judgements delivered by the court in patent suits.
While the Draft seems to have gotten many things right, a major problem that plagues all litigation in India remains unaddressed, lengthy proceedings. While the Draft has divided the hearings into five stages, there is no fixed timeline for the same. It would serve well to set maximum time gaps permissible between the different hearings and an overall period of time within which a patent suit has to be disposed off. This would further help the parties save momentum which is necessary in intellectual property disputes.
These are Draft Rules and the Court is currently receiving suggestions and feedback from various stakeholders. It remains to be seen how the final Rules would shape up.