Sterlite Technologies Limited v. Anupam Singh & Ors.

1. This hearing has been done through hybrid mode. I.A. 14613/2022

2. This is an application filed on behalf of Defendant No. 2 seeking condonation of delay of 27 days in filing the reply to the injunction application IA No. 9305/2022 filed on behalf of the Plaintiff. For the reasons stated in the application, the delay is condoned. I.A. 14613/2022 is disposed of.

3. The present suit has been filed on behalf of Plaintiff – Sterlite Technologies Ltd. (hereinafter, ‘Sterlite’) seeking permanent, mandatory injunction and damages against breach of confidence and misappropriation of confidential information and trade secrets against Defendant No.1 – 2022:DHC:3583 Anupam Singh, Defendant No.2 – Akhil Garg and Defendant No. 3 – HFCL Ltd. (hereinafter, ‘HFCL’). Defendant No.1 and Defendant No. 2 are exemployees of Sterlite who resigned on 3rd August 2020, and 1st May 2020 respectively and subsequently joined HFCL.

4. On 27th February, 2020, HFCL filed Indian Patent Application Nos. 202121014389 and 202121008259 (hereinafter, impugned applications) which were published on 11th March 2022. Defendant Nos. 1 and 2 were listed as the inventors in the impugned applications.

5. The Plaintiff’s grievance is that the specification of the said patent applications incorporates its proprietary information, to which Defendant Nos. 1 and 2 had complete access to during their course of employment with Plaintiff company.

6. It is submitted by the Plaintiff that the terms of employment, appointment letter and Confidentiality Letter/ Non-Disclosure Agreements (NDAs) signed by Defendant Nos. 1 and 2 contain standard clauses to safeguard the confidential and proprietary information of the Plaintiff. The NDAs specifically obligated the Defendant Nos. 1 and 2 to not share or disclose any confidential information of the Plaintiff with any person including any competitors. Thus, in addition to their contractual obligations, Defendant Nos. 1 and 2 also owed a duty in common law to the Plaintiff to maintain confidentiality and to not misuse Plaintiff's proprietary information. The relevant paragraphs of the terms of employment signed by Defendant Nos. 1 state as under: “16. Intellectual Property: 16.[1] To the extent permitted by Applicable Law, any and all intellectual property including but not limited to inventions, discoveries, improvements, copyrightable material, trademark ideas, designs and concepts (hereinafter collectively referred to as 'IP'), which you may make or conceive, either solely or jointly with others, during the Term of your employment with the Company, whether in the Company's premises or using the Company's property, or otherwise, shall be deemed to be the exclusive property of the Company and you hereby waive and/or assign any and all right, title, interest and/or ownership in the same in favour of the Company.”

7. The relevant part of the Confidentiality Letter signed by Defendant Nos. 2 state as under:

8. In this background it is noticed that the suit is not numbered as a commercial suit. Ld. counsel for both parties submit that the suit relates to confidential information and thus may not have been numbered as a Commercial suit as it may strictly not constitute a ‘commercial dispute’ as it relates to trade secrets and confidential information.

9. In terms of the order dated 14th December, 2015 passed in CS(OS) 2265/2014 titled Sanofi Winthrop Industrie & Anr. v. Kirti B. Maheshwari & Anr., disputes of this nature relating to trade secrets and confidential information ought to be treated as `commercial disputes’. The relevant part of the order is as follows:

14. Having examined the various articles incorporated in the Development Services Agreement, particularly Article 2, which lays down the scope of the agreement and refers to performance of services by the predecessor-in-title of the defendants, Article 4 that elaborates the performance of the services, Article 5 which specifies the remuneration for the services that may be rendered by Astron, and Article 6 that deals with intellectual property and refers to patent applications and trademarks relating to the said product and the limited licences granted by the plaintiffs to Astron for its Background IP, the results of the development agreement and the proprietary rights therein, there is no manner of doubt that the dispute between the parties squarely falls within the definition of a “Commercial Dispute” as elaborated in Section 2(1)(c)(ix) and (xvi) to (xviii) of the Ordinance.”

10. Considering the nature of the litigation, i.e., one involving trade secrets and confidential information as also subject-matter disclosed in patent applications, the present suit involves a `commercial dispute’ under the Commercial Courts Act. The definition of `commercial dispute’ under Section 2 (c) of the CCA, 2015 reads: “(xvii) intellectual property rights relating to registered and unregistered trademarks, copyright, patent, design, domain names, geographical indications and semiconductor integrated circuits;”