Largan Precision Co Ltd v. Motorola Mobility India Pvt Ltd & Ors.

14. What is the total revenue generated by and/or accrued to the Defendants, from sales in India of Moto G31, Moto G60 and Motorola Edge 30 Pro smartphones in India?

15. What is the total revenue generated by and/or accrued to the Defendants, from export of Moto G31, Moto G60 and Motorola Edge 30 Pro smartphones from India?

16. How many of the camera lenses/imaging lens modules conforming to the Suit Patent have been manufactured/sold thus far by the Defendants?

17. Names and addresses of the contract manufacturers/assembly lines for Moto G31, Moto G60 and Motorola Edge 30 Pro in India.

18. Names and addresses of the suppliers of the camera/imaging lens module contained in Moto G31, Moto G60 and Motorola Edge 30 Pro or any other device incorporating the same camera / imaging lens module as contained Moto G31, Moto G60 and Motorola Edge 30 Pro.Names of the entities importing Moto G31, Moto G60 and Motorola Edge 30 Pro in India on behalf of Defendants Nos. 2-3.

19. Names of the entities exporting Moto G31, Moto G60 and Motorola Edge 30 Pro on behalf of the Defendants Nos. 2-3.

3. I.A. 18874/2022 seeking interrogatories was filed along with the suit and notice in this application was issued vide order dated 21st November, 2022. While directing the defendants to file a reply, the defendants were also directed to file an affidavit disclosing the details as mentioned in paragraph 35(c) of I.A. 18872/2022 (application filed under Order XXXIX Rules 1 and 2 of the CPC) within four (4) weeks. Paragraph 35(c) of the said application is set out below:

exported, from the date of first sale of; iii. Quantity of imports into India along with countries imported from, and date of first import, of; iv. Revenues from sales in India, from the date of first launch / sale of; v. Revenues from exports from India, from the date of first sale of; various individual devices, including but not limited to Moto G31, Moto G60 and Motorola Edge 30 Pro, that infringe the subject matter of Indian Patent No. IN 363203.” 3.[1] Mr. Peeyoosh Kalra, counsel appearing on behalf of the defendants submits that an affidavit in terms of the order dated 21st November, 2022 has been duly filed. As per Mr Kalra in the said affidavit the defendants have given responses to the interrogatories at Sr. Nos.[6] to 12, 14 and 15.

4. Via order passed in the suit on 31st October, 2023, the defendants were further directed to disclose the following information:

4.[1] Subsequently, vide order dated 10th November, 2023, the defendants were directed to file the aforesaid information in a sealed cover. 4.[2] Mr Kalra submits that the aforesaid information has been filed in a sealed cover, which covers responses to interrogatories at Sr. Nos.[1] and

18. However, the defendants oppose the said details being disclosed to the plaintiff as it contains their confidential data.

5. Mr Saikrishna Rajagopal, counsel appearing on behalf of the plaintiff submits that the information sought via the aforesaid interrogatories would be necessary in order to enable the Court to effectually and expeditiously adjudicate the present suit. In this regard, Mr Saikrishna places reliance on the judgment of this Court in Tara Batra v. Punam A Kumar & Ors, 2021 SCC OnLine 4331 and Sharda Dhir v. Ashok Kumar Makhija & Ors, 2002 (64) DRJ 713.

6. Mr Kalra vehemently opposes the application seeking interrogatories. He submits that the Plaintiff is trying to seek confidential and sensitive business information of the defendants which is outside the scope of the present suit. 6.[1] It is submitted that the plaintiff has filed the application seeking interrogatories along with the suit when the defendants had not even filed their defence which reflects the malafide intent of the plaintiff. By way of this application the plaintiff is indulging on a roving and fishing expedition to obtain sensitive and confidential information of the defendants. 6.[2] In this regard, Mr Kalra places reliance upon Sections 106 of the Bharatiya Sakshya Adhiniyam, 2023 (formerly Sections 104 of Indian Evidence Act, 1872). Accordingly, Mr Kalra submits that the burden of proof is on the plaintiff and it was for the plaintiff to have tested the other products of the defendants which according to the plaintiff, would infringe the subject patent.

7. I have heard the counsel for the parties and examined the material on record.

8. It is no longer res integra that the purpose of interrogatories is to cut short the trial and save the cost that may be incurred in producing evidence to prove the case. The only issue to be considered by the Court while adjudicating an application for interrogatories is whether the answer to the interrogatories would have a bearing on the determination of the dispute between the parties. Merely because the interrogatories could be taken up in cross examination cannot be the basis for denying the interrogatories.

9. The amendments carried out in the Code of Civil Procedure, 1908 pursuant to the enactment of the Commercial Courts Act, 2015 have laid great emphasis on disclosure by means of interrogatories and discovery of documents. In respect of commercial suits, a separate Order XI dealing with disclosure, discovery and inspection of documents has been enacted. The primary objective of Order XI of the Code of Civil Procedure, 1908 as applicable to the Commercial Courts Act, 2015 is to assist the parties in clarifying and narrowing down the issues in dispute before the trial begins.

10. Now, a reference may be made to the Delhi High Court Intellectual Property Rights Division Rules, 2022 (‘hereinafter IPD Rules’), enacted on 24th February 2022. The objective of the IPD Rules is to provide practice and procedural directions for effective adjudication of original and appellate intellectual property cases. 10.[1] Rule 17 of the IPD Rules provides that the procedure relating to discovery and disclosure of documents, including by way of interrogatories, shall be governed by the Code of Civil Procedure, 1908 as amended by the Commercial Courts Act, 2015.

11. At this stage, it may be useful to refer to some of the provisions of the High Court of Delhi Rules Governing Patents Suits, 2022 (‘hereinafter Patent Rules’), enacted on 24th February 2022. The object of these Patent Rules is to provide a mechanism for effective and efficient adjudication of patent litigation before the Delhi High Court. 11.[1] Rule 3 of the Patent Rules provides for the content(s) that is required in pleadings in a patent infringement action. The relevant extracts from the said rule are set out below:

11.[2] Rule 4 of the Patent Rules discusses the documents that are to be filed in a patent infringement action. The relevant extracts from the said rule are set out below:

4. Documents to be filed. (A) Documents to be filed along with the Plaint The documents to be filed with the plaint shall, to the extent possible, include, inter alia: …

(vii) Copies of all relevant correspondence;

(viii) In case of license agreements being relied upon, copies of the license agreements redacted or otherwise; (B) Documents to be filed along with the Written Statement/Counter- Claim The documents filed with the Written Statement/Counter-Claim shall, to the extent possible, include, inter alia: …

(v) Any licenses obtained and copies thereof redacted or otherwise; …

(ix) Statement of accounts of quantum and sales of allegedly infringing product(s) or the product(s) obtained from the allegedly infringing process;”

12. A perusal of the aforesaid extracts from the Patent Rules reveals that in patent infringement suits, a higher level of disclosure has been mandated in patent infringement suit both in respect of the plaintiff(s) and the defendant(s). Illustratively, the plaintiff, in the plaint has to give details of license granted qua the suit patent; summary of correspondence exchanged between the parties as well as details of sales/statement of royalty. The plaintiff is also required to file documents in respect of the aforesaid in a redacted form or otherwise.

13. Similarly, defendant(s) in the written statement has to provide details of allegedly infringing products as well as details of manufacture, sale, import, export in terms of quantity as well as revenue. The defendant is also required to provide details of correspondence, other patent applications filed by the defendant and details of licenses/cross licenses entered into by the defendant. Along with the written statement, defendant is also required to file documents in respect of the aforesaid in a redacted form or otherwise.

14. In sum, a party is required to disclose all information and documents in its power and possession that are germane for the adjudication of the suit. A party cannot be heard to say that it will not disclose information or file documents which may go against its interest in the suit proceedings.

15. Naturally, some of the aforesaid information/ documents required to be disclosed by the parties would be highly confidential in nature. To address the concerns of a party with regard to sharing confidential information, Rule 11 of the Patent Rules envisage constitution of Confidentiality Club and/or redaction of confidential information. For ease of convenience Rule 11 of Patent Rules is extracted below:

11. Confidentiality clubs and redaction of confidential information

(i) At any stage in a proceeding, the Court may constitute a confidentiality club or adopt such measures as appropriate, consisting of lawyers (external & in-house), experts as also nominated representatives of the parties, for the preservation and exchange of confidential information filed before the Court including documents, as per the Delhi High Court (Original Side) Rules, 2018. Such nominated representatives of the parties, appointed to the Club, may inter alia, be persons who are not in charge of, or active in, the day-to-day business operations and management of the respective parties so as to maintain the integrity of the information so disclosed. The members so constituting the Club shall be bound to desist from disclosing, sharing or utilizing, including to third parties, the confidential or sensitive information that they may access, or become privy to, in the course of proceedings;

(ii) The Court may, upon a request made by way of an application, direct the redaction of such information (including documents) it deems to be confidential;

(iii) If any redacted pleading/document is sought to be filed as being confidential, a non-redacted version of the same may be filed in a sealed cover along with an application supporting such claim for redaction.”

16. Now I shall deal with judicial precedents with regard to the scope of interrogatories. Plaintiff has relied upon the judgment passed by this Bench in Tara Batra (supra), wherein a similar defence was taken by the defendant that the plaintiff cannot be allowed to collect evidence and make fishing and roving inquiry by filing an application under Order XI Rule 2 of the CPC. 16.[1] This Court, relying upon the judgments in Canara Bank v. Rajiv Tyagi & Assn, 2010 SCC OnLine Del 87 and Sharda Dhir (supra), came to the conclusion that the only criteria which the Court has to consider while deciding an application seeking interrogatories is whether the interrogatories would be necessary for the fair adjudication of the suit. 16.[2] The object of the interrogatories is to shorten the trial and limit the scope of cross examination and, therefore, the Court should be liberal for allowing request for interrogatories. The relevant extract from Tara Batra (supra) is set out below:

on the ground that the said interrogatories are scandalous in nature or are not relevant or not bona fide for the purposes of the suit or on the ground of privilege. The objections on the grounds above have to be taken on affidavit. It is at the that stage that the Court has to consider which of the questions in the interrogatories the party should be compelled to answer.”

17. In Sharda Dhir (supra), which was relied upon by me in Tara Batra (supra), the Court held that interrogatories cannot be disallowed merely because the party interrogating has other means of proving the facts in question.

18. The issue of disclosure by way of interrogatories and production of documents in the context of a patent infringement suit came up before a Coordinate Bench of this Court in Koninklijke Philips N.V. v. VIVO Mobile Communication Co. Ltd. & Ors., 2022 SCC OnLine Del 53. In the said case also, a similar defence was taken by the defendant that the burden was on the plaintiff to prove its case and the onus could not be shifted on to the defendant by means of interrogatories. 18.[1] The Court, while acknowledging that the purpose of interrogatories was to cut short trial and expenses, held that the interrogatories sought by the plaintiff in the case before it, had a bearing on the determination of the dispute and would have to be answered by the defendant.

19. From the discussion above, it is clear that Courts should adopt a liberal approach in allowing request for interrogatories as well as production of documents, especially in commercial cases. The only factor the Court has to consider is whether the disclosure/ document sought by the party would have a bearing on the determination of the dispute between the parties. The issue of whether the said disclosure/ document would be against the interest of a party in the suit is wholly irrelevant.

20. To be noted, along with the suit, I.A. 18875/2022 was also filed on behalf of the plaintiff under Order II Rule 2 of the CPC. 20.[1] Via the said application, the plaintiff sought leave of the Court to add further products of the defendants from their product portfolio, which may be found to be infringing the suit patent. 20.[2] In the original suit, only the following three products of the defendants were identified as infringing products:

(i) Moto G31,

(ii) Moto G60 and

(iii) Motorola Edge 30 Pro.

21. Vide order dated 6th July, 2023 passed by the Predecessor Bench, it was noted that during the pendency of the suit, the defendants may launch new models of the mobile phones which infringe the subject patent. Taking note of the above and in order to avoid multiplicity of proceedings, the plaintiff was given liberty to assert the same by means of separate affidavits along with test reports. The order also states that if the issues have already been framed in the suit, additional models/devices may be asserted by means of an affidavit in evidence or asserting additional claims qua the suit patent. 21.[1] The relevant observations of this Court in paragraph 12, 13 and 14 of the order dated 6th July, 2023 are set out below:

new devices/models which may be found infringing by the Plaintiff qua the suit patent in the existing suit itself. The said need is felt by the Court considering the nature of patent infringement suit where the suit is filed based upon certain patents, which are asserted qua certain devices which may be found to be infringing in order to avoid the multiplicity of proceedings.

13. Accordingly, insofar as the adding of further devices/models qua the suit patent are concerned, the Plaintiffs are given liberty to assert the same by means of a separate affidavit which may be filed by the Plaintiff with test reports, if any, prior to framing of issues. If the issues have already been framed in the suit, then the same may be asserted by means of affidavit in evidence, which may be filed by the Plaintiff. In response to such an affidavit of the Plaintiff, the Defendant would be given liberty to rebut the same at the appropriate stage.

14. Accordingly, the present application is disposed of with the direction that the Plaintiff is at liberty to avail of its remedies in accordance with law in respect of any additional model/devices, which it may wish to assert against the Defendant. The Plaintiff is at liberty to file an affidavit in accordance with the directions issued above, adding the said models/devices or asserting additional claims qua the suit patent, in the present suit itself.”

22. In terms of the aforesaid order, the application filed on behalf of the plaintiff under Order II Rule 2 was allowed and the plaintiff was granted liberty to avail remedies in accordance with law concerning additional model/devices which it may wish to assert against the defendants.

23. The interrogatories at Sr Nos. 1 to 5 seek details/information with regard to other devices/models which incorporate the same or similar camera module as contained in the Moto G31, Moto G60 and Motorola Edge 30 Pro devices, which allegedly infringes the subject patent. 23.[1] If the aforesaid interrogatories are answered, the same would reduce the time taken as well as costs incurred by the plaintiff, as, in the trial, the plaintiff would not be required to prove infringement of the suit patent by the other devices. It would also save costs that the plaintiff would be required to incur in testing all the other allegedly infringing devices. This would be consistent with the objectives and intent of the Commercial Courts Act, 2015 and the Patent Rules, as discussed above.

24. The interrogatories at Sr Nos. 13 and 16, seek details/ information regarding quantum of sales and stock of the allegedly infringing devices mentioned in the plaint i.e., the Moto G31, Moto G60 and Motorola Edge

30 Pro devices. 24.[1] In terms of Rule 4 of the Patent Rules, the defendant has to disclose details with regard to sales carried out by them in respect of allegedly infringing products mentioned in the plaint.

25. As regards interrogatories at Sr Nos. 17, 18 and 19, the plaintiff has a legitimate concern in knowing the details of the contract manufacturers/ assembly lines /suppliers/ importers/ exporters of the allegedly infringing devices/models so that plaintiff can take appropriate action against the entities.

26. In view of the discussion above, I am of the view that the interrogatories in respect of which responses are sought by the plaintiff are materially relevant for effectually and expeditiously adjudicating the case. Therefore, I am unable to accept the submissions of the defendant that the aforesaid interrogatories are in the nature of roving and fishing enquiry to obtain sensitive and confidential information.

27. Accordingly, the response to interrogatories Sr. Nos.[2] to 5 and 13, 16, 17 and 19 shall be filed by the defendants by way of the prescribed affidavit within six (6) weeks, in a sealed cover.

28. I.A. 38011/2024 has been filed on behalf of the plaintiff under Rule 11 of the Patent Rules seeking constitution of a confidentiality club. 28.[1] This application has been filed in order to secure the concerns of the defendants with regard to the confidentiality of the responses to the interrogatories being preserved. 28.[2] The details of the members nominated by the plaintiff in the confidentiality club, as detailed in paragraph 7 of the aforesaid application, are as follows: a. Ms. Sneha Jain (Counsel for the plaintiff) b. Mr. Saif Rahman Ansari (Counsel for the plaintiff) c. Ms. Shruti Jain (Counsel for the plaintiff) d. Mr. Sheng-Lien Wang (Assistant Vice President of the plaintiff)

29. Mr. Kalra expresses reservations about Mr. Sheng-Lien Wang, who is the Assistant Vice President of the plaintiff/company and is actively involved in the business affairs. 29.[1] Mr. Saikrishna submits that the plaintiff shall provide an alternate name of a person who is not involved in day-to-day affairs of the plaintiff/company, within two (2) weeks with a copy to the counsel for the defendants.

30. Taking into account the confidential/ commercially sensitive information sought by way of the interrogatories, in accordance with Rule 11 of the Patent Rules and Chapter VII Rule 17 of the Delhi High Court (Original Side) Rules, 2018, I direct formation of a confidential club consisting of the members as detailed in paragraph 28.[2] – (a) to (c). 30.[1] Upon plaintiff providing an alternate name, the same may be added to the aforesaid confidentiality club.

31. It is made clear that the said members shall be bound by the protocol prescribed in Annexure F Chapter VII Rule 17 prescribed in the Delhi High Court (Original Side) Rules, 2018.

32. The access of the information already filed by the defendants in a sealed cover, as well as to be filed in terms of this order shall be provided to the members of the confidentiality club.

33. The mode of sharing the aforementioned documents/ information, shall be agreed upon among the parties within two (2) weeks.

34. The applications stand disposed of. I.A. 45955/2024 (under Chapter XI and XII of the Delhi High Court (Original Side) Rules, 2018

35. In terms of the order passed by this Court on 22nd November 2024, the Local Commissioner has passed necessary directions.

36. Accordingly, the present application is infructuous and disposed of.

37.

38. List on 10th March, 2025. AMIT BANSAL, J DECEMBER 06, 2024 Corrected and uploaded on: 11th December 2024 Vivek/-