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A Telecom Patent Conflict on Procedural Turf

Issued: July 01 2011

An ex-parte injunction in a case involving intellectual property would mean that, on a request from the holder of an IP right, an injunction against the alleged infringer may be issued in summary proceedings without the alleged infringer being heard. Although the legal basis for such orders under India’s Civil Procedure Code is that the object of granting the injunction should not be defeated by delay, ex-parte injunctions do not hold much water in cases of patent infringement; the requirements of urgency and legal foundation of the case are stricter than for normal interpartes summary proceedings. It has to be prima facie plausible that the patent is both valid and infringed, with both validity and infringement issues requiring thorough examination and technical expertise. This renders the fulfillment of the prima facie criterion usually unable to be realized.

Lately, the Delhi High Court, while disposing an appeal in TenXc Wireless v. Andrew LLC & Ors [(FAO No 697/2010) Delhi High Court], filed by TenXc Wireless against suspension of the ex-parte ad-interim injunction in its favour, set aside the suspension and gave directions that the single judge may decide the application under Order XXXIX Rule 4 of the Civil Procedure Code (CPC), to vacate the ex-parte adinterim injunction afresh after giving an opportunity to hear the patent holder. TenXc is a supplier of performance-enhancing antenna products to wireless service providers and Andrew is in the field of creating wireless networks.

TenXc had preferred a suit for permanent injunction, delivery up, rendition of account of profit and damages against infringement of its registered Indian patent for the invention titled “Asymmetrical Beams for Spectrum Efficiency” against Andrew and others.

The single judge granted an ex-parte ad-interim injunction when the application for interim injunction (under Order XXXIX Rules 1 and 2 of the CPC) came up for hearing. Andrew preferred a Letters Patent Appeal, which remanded the case back for compliance of provision under Order XXXIX of the CPC. Consequentially, an application under Order XXXIX Rule 4 of the CPC was moved by Andrew, which was disposed of by vacating the ex-parte ad-interim injunction.

Rule 4 of Order XXXIX of the CPC empowers the court to vacate an order of injunction if the party has made a false or misleading statement in relation to a material particular and the injunction was granted without giving notice to the opposite party.

TenXc appealed against the suspension of the ex-parte ad-interim injunction order on its grievance that the Single Judge had incorrectly viewed the filing of the patent specification downloaded from the official website of Indian Patent Office instead of relying on certified copies as a deliberate act to present filtered and selective information, suppress material particulars, misstate facts and gain undue benefit, even though the patent certificate was issued earlier.

TenXc contended that there is a time lag of around 20 to 40 days to get certified copies of the granted patent specification, and therefore it was not feasible for it to wait that long as it was praying for an urgen ex-parte ad-interim injunction order. It was submitted that the specification filed by TenXc, along with the Plaint, was never represented as a certified copy of the granted specification and the source from which it was obtained was prominently mentioned on the document itself, therefore there was neither any withholding of information nor was there any forgery or making false or misleading statements.

In continuum, TenXc also contended that it was not afforded the opportunity to file a written response to the application under Order XXXIX Rule 4 nor its affidavit, comparing the corresponding claims between the complete specification downloaded from the official website of the Indian Patent Office and the complete specification as granted, filed with a view to satisfy the Single Judge that TenXc had not gained any undue benefit by filing the downloaded specification as against the certified copy of the granted specification, was considered by the Single Judge.

However, Andrew contented that the Court is not to go into the merits of the case and that once a party is found to have made a false or misleading statement in relation to a material particular, the injunction order is bound to be vacated. Andrew had also alleged in its application under Order XXXIX Rule 4 of the CPC that TenXc had had entered into an agreement with it for using its technology called “Remote Electrical Tilt,” and therefore TenXc was aware that Andrew had been using the impugned product for the last more than two years before filing of the infringement suit.

The Court was of the view that:

(1) Andrew’s application under Order XXXIX Rule 4 of the CPC levels very serious allegations against TenXc, and in absence of a written response from it, the Court is unable to appreciate the contentions of the parties and also the findings of the Single Judge; and

(2) The records of the proceedings are reticent on the point that fervent requests were made by TenXc to file a reply and the Single Judge ignored the same. Since the pervading perception of the Single Judge was that the Plaintiff had knowingly made false or misleading statements in relation to material particulars, the Plaintiff should have been afforded an opportunity to controvert the Defendant’s statements.

The Court factored in the above views to set aside the order of the Single Judge suspending the ex-parte ad-interim injunction order and while observing that the interest of justice may be undermined if an opportunity to controvert or respond to vital facts is not given.

LEX ORBIS Intellectual Property
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About the Author

Manisha Singh Nair is a  partner at Lex Orbis in New Delhi. She has the distinction of practicing in both the prosecution and enforcement arenas, and has extensive experience in the post-lodgment prosecution of patents, trademarks and designs.


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