Nokia Technologies Oy vs. Guangdong Oppo Mobile Telecommunications Corp Ltd & Ors.

Neutral Citation Number : 2022/DHC/004935

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on 23.12.2021
Pronounced on 17.11.2022
+ CS (COMM) 303/2021, I.A. 7700/2021

NOKIA TECHNOLOGIES OY ..... Plaintiff
Through Mr. Gourab Banerjee, Sr. Adv.
with Mr. Pravin Anand, Ms. Vaishali Mittal,
Mr. Siddhant Chamola, Mr. Rohin Koolwal,
Ms. Pallavi Bhatnagar and Ms. Shraddha
Chauhan, Advs.

Versus


GUANGDONG OPPO MOBILE
TELECOMMUNICATIONS CORP LTD & ORS... Defendants
Through Mr. Saikrishna Rajagopal, Mr.
Sidharth Chopra, Ms. Julien George, Ms.
Anu Paarcha, Mr. Arjun Gadhoke, Mr.
Vivek Ayyagari, Mr. Avijit Kumar, Mr.
Aniruddh Bhatia and Mr. Skanda Shekhar,
Advs.

CORAM:
HON’BLE MR. JUSTICE C. HARI SHANKAR

% J U D G M E N T
17 .11.2022

I.A. 7700/2021 in CS (COMM) 303/2021

[This judgement redacts all figures and details over which
confidentiality has been claimed by the parties. They are, therefore
shown by way of asterisks (*)].

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Neutral Citation Number : 2022/DHC/004935


1. This judgement adjudicates I.A. 7700/2021, filed by the
plaintiff Nokia Technologies (―Nokia‖, hereinafter) against the
defendant Guangdong Oppo Mobile Telecommunications Corp Ltd
(―Oppo‖, hereinafter) in CS (Comm) 303/2021.

2. Nokia is the holder of various patents, of which the present
dispute primarily concerns itself with three. These are (i) Indian
Patent No. 286352 (IN ‘352) titled ―System and Method for Providing
AMR-WB DTX Synchronization‖, (ii) Indian Patent No. 269929 (IN
‘929) titled ―Method Providing Multiplexing for Data Non Associated
Control Channel‖ and (iii) Indian Patent No. 300066 (IN ‘066) titled
―Additional Modulation Information Signaling for High-Speed
Downlink Packet Access‖. According to Nokia, the three suit patents
are Standard Essential Patents (SEPs), which are necessary to work
the technology for making cellular systems 2G, 3G, 4G and 5G
compliant. Inasmuch as the defendant Oppo, in its cellular handsets,
employs 2G, 3G, 4G and 5G technology, Nokia contends, in its plaint,
that Oppo must necessarily be using the technology contained in the
three SEPs forming subject matter of the present dispute. To support
the contention that Oppo is indeed using the suit patents, held by the
plaintiff, Nokia has filed, with the plaint, ―Claim Mapping Charts‖,
which purportedly maps each element of the claim to sections of the
third generation partnership project (3GPP) technical specifications
which form the basis of wireless telecommunications standards
developed within the framework of the European Telecommunications
Standard Institute (ETSI). As is well-known, a patent, to qualify as a
SEP, has to map onto a standard set by the ETSI (or the relevant
Standard Setting Organization/SSO). If the technology used by Oppo
and the suit patents both map onto the same standard in the ETSI, it
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could lead to a legitimate inference that the defendants‘ technology
infringes the plaintiff‘s patents.

3. SEPs form a category of patent sui generis, as has been noted
by this Court in its judgment in Interdigital Technology Corporation
1
v. Xiaomi Corporation , though SEP litigation, at least in this country,
is governed by the same fundamental substantive and procedural
principles that govern any other litigation. Unlike normal patents, the
use, by another of a patent held by one party, does not, ipso facto ,
entitle the party, as a right, to an injunction restraining the other party
from using the patent. This is because SEPs, by their very nature,
constitute standards for operation of technologies which are required
worldwide and form an integral part of telecommunication across the
globe. An inalienable element of public interest, therefore, is
ingrained in allowing accessibility to such patents.

4. No SEP holder is, therefore, entitled to monopolise the SEPs
held by him. He is entitled to hold the SEPs only if he offers the SEPs
to others, who need to use the SEPs for working the concerned
technology at rates, which must be Fair, Reasonable And Non
Discriminatory (FRAND). If a person who desires to use the
technology contained in a SEP held by another, he must be willing to
obtain a licence from the latter on payment of FRAND royalty rates.
Equally, the SEP holder must be willing to offer use of the SEPs held
by him at FRAND rates to every willing licensee. A person, who is
unwilling to pay licence fees at FRAND rates, is, therefore,
condemned as an ―unwilling licensee‖ and is not entitled to use the
SEP.


1
(2021) 277 DLT 396

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5. It is necessary, before proceeding further, to understand the
concept of SEP as well. In telecommunications, interoperability in
instruments is essential. For this, the instruments must be compatible
to one technology. The technical specifications of the technology
used by these instruments must, therefore, conform to a common
design. Industry groups, which set such common standards in
different areas of technology, are known as Standard Setting
Organizations (SSOs). A ―standard‖ is defined by the IPR policy of
the ETSI as meaning ―any standard adopted by ETSI including
options therein or amended versions and shall include European
Standards (ENs), ETSI Standards (ESs), Common Technical
Regulations (CTRs) which are taken from ENs and including drafts of
any of the foregoing, and documents made under the previous
nomenclature ... the technical specifications of which are available to
all MEMBERS, but not including any standards, or parts thereof, not
made by ETSI.‖

6. Certain standards are essential. In order for a standard, on the
basis of which telecommunication technology can be implemented
and operated to be treated as essential, the technology must be
incapable of implementation without using that particular standard. In
other words, a person who employs that technology must necessarily
be using that standard. That standard must, in other words, be
essential for using that particular technology. The IPR policy of ETSI
defines ―essential‖, with respect to a particular standard, as a standard
without which ―it is not possible on technical (but not commercial)
grounds, taking into account normal technical practice and the state of
the art generally available at the time of standardization, to make, sell,
lease, otherwise dispose of, repair, use or operate Equipment or
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Methods which comply with a Standard without infringing that IPR‖.
This is further clarified by postulating that ―in exceptional cases where
a Standard can only be implemented by technical solutions, all of
which are infringements of IPRs, all such IPRs shall be considered
Essential‖. The plaint, in the present case, seeks to simplify this
concept by explaining that ―an essential patent in context of a given
standard, or a standard essential patent implies that it is technically not
possible to manufacture, sell, lease etc. equipment or technology
which complies with such standard without making use of the
patented technology in question‖ In other words, ―it is not possible to
comply with the given standard, without infringing upon the patents
which are essential to that standard‖. This, in my considered opinion,
is a reasonably accurate description of a SEP and, the defendant, too,
in its written statement filed by way of response to the plaint as well
as in its reply to the present application, does not seriously question it.

7. For the purposes of the present application, one need only bear
in mind the following factors:

(i) A SEP is a patent without using which it is impossible to
work a particular technology. For this purpose, the SEP must
map onto the standard set by SSOs and adopted by the ETSI.


(ii) A holder of a SEP is not entitled to any absolute
monopoly on the SEP, as is generally applicable to other
holders of patents. He must necessarily be ready and willing to
allow others to use the SEP on licence basis.

(iii) The license must be made available by the SEP holder on
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FRAND terms.

(iv) No person who is unwilling to take a license from the
holder of a SEP on FRAND terms is entitled to use the SEP.
Such a person would be an unwilling licensee, and any such use
of the technology contained in the SEP would amount to
infringement within the meaning of Section 108 of the Patents
Act, 1970. Such a licensee could be injuncted from the use of
such patent.

8. Essentially, therefore, in any SEP litigation, such as the present,
three primary issues arise for consideration, i.e., whether
(i) the suit patents are SEPs,

(ii) the defendants are using the plaintiff‘s suit patents and
(iii) the rate at which the plaintiff is willing to license the
patents to willing licensees is FRAND.

The present application

9. With that background, one may come to the present application.
2
The application has been moved under Order XXXIX Rule 10 of the
Code of Civil Procedure, 1908 (CPC), by Nokia. It has been moved
even while other interlocutory applications, including an application
under Order XXXIX Rules 1 and 2 of the CPC are pending. The
website of this Court indicates that, till date, the application under
Order XXXIX Rules 1 and 2 of the CPC has not been finally decided,
and I have not been informed, by either party, otherwise. Indeed, one

2
10 . Deposit of money, etc., in Court . – Where the subject-matter of a suit is money or some other
thing capable of delivery and any party thereto admits that he holds such money or other thing as a trustee for
another party, or that it belongs or is due to another party, the Court may order the same to be deposited in
Court or delivered to such last-named party, with or without security, subject to the further direction of the
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of the grounds on the basis of which Nokia has pressed the application
under Order XXXIX Rule 10 of the CPC is that the decision on the
interlocutory application of Nokia under Order XXXIX Rules1 and 2
of the CPC is likely to take time given the intricate technological
issues involved and that Nokia is entitled to be secured in the
interregnum.

10. What, essentially, Nokia seeks in the present application is a
direction to Oppo to deposit, with the Court, an amount which,
according to Nokia, would represent the royalty, at FRAND rates, on
payment of which Oppo could be granted a license to use the suit
patents and to which Nokia, consequently, claims to be entitled.

Averments of Nokia in the Application

11. In its application, Nokia has sought to contend that Oppo had,
earlier, obtained a license from Nokia (―the first FRAND Licence
Agreement‖) for utilizing Nokia‘s SEPs, by paying royalty at FRAND
rates. That licence has expired in 2021. As Oppo has not renewed the
license Agreement or taken any fresh license from Nokia, the
application asserts that the continued use, by Oppo, of Nokia‘s SEPs,
is infringing in nature. It is for this reason, asserts the application, that
Nokia, with its suit, prayed, in its application under Order XXXIX
Rules 1 and 2 of the CPC, that Oppo be restrained from continuing to
infringe the suit patents of Nokia or, in the alternative, that an
alternate interlocutory arrangement be put in place.

12. Adverting to the suit patents, the application avers that the suit
patents protect technology necessary for 2G, 3G, 4G and 5G wireless

Court.
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telecom which was developed within the framework of the ETSI. The
cellular handsets of Oppo, according to the application, are admittedly
in compliance with the technical standards to which the suit patents
conform. This, according to the application, indicates that Oppo is
making use of Nokia‘s SEPs. By continuing manufacture, sale, offer
for sale etc., of its cellular devices, which incorporate the standards
contained in the suit SEPs without obtaining any license from Nokia,
the application alleges that Oppo is infringing the plaintiff‘s SEPs.

13. The application further asserts that Nokia had offered a license
to Oppo to use the suit patents at royalty rates which were FRAND,
but that Oppo has failed to accept the offer. Rather, alleges Nokia,
Oppo is following a policy of ―holding out‖, by entering into extended
and protracted negotiations with Nokia which do not evince any
intent, on Oppo‘s part, to take licenses from Nokia, to utilize the SEPs
at FRAND rates of royalty. As such, asserts the application, it is not
disputed that

(i) Oppo is required to enter into a license for the use of the
Plaintiff‘s SEPs pertaining to the 2G, 3G, 4G and 5G cellular
standards, and
(ii) a fair and reasonable license fee would be required to be
paid by Oppo to Nokia for grant of such a license.

14. Inasmuch as
(i) Oppo had earlier executed a license agreement, on
FRAND terms, for utilising Nokia‘s cellular SEPs,
(ii) during negotiations in respect of the patents covered by
the present suit, the sole dispute raised by Oppo was that the fee
demanded by Nokia was not FRAND, and
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(iii) Oppo, therefore, acknowledged the need to execute
license agreement, on FRAND terms, with Nokia to
manufacture/sell/import/export devices which used the
technologies for the working of which the suit SEPs were
essential,
the application asserts that Nokia has already established a strong
prima facie case for injunction. In these circumstances, the continued
use by Oppo, of the technology contained in the suit SEPs, asserts the
application, tantamounts to infringement.

15. Adverting to the manner in which the amount claimed in the
present application has been quantified, Oppo contends that the
measure of damages, to which a patent holder would be entitled
against an infringer is, it is well settled, to be computed on the basis of
the loss of revenue that the patentee suffers. Nokia relies on an
st

affidavit dated 1 July 2021 of Mr. Patrik Hammaren, Head of
Licensing of Nokia which, according to Nokia, suggests the
methodology for working out the sum to which Nokia would be
entitled as security. The methodology, according to the application, is
based on an analysis of Oppo‘s sale of 4G and 5G compatible devices,
juxtaposed with the offer of Nokia for the second FRAND license
agreement. The execution of the first FRAND license agreement,
submits the application, tantamounts to acceptance, by Oppo, of its
legal obligation to seek a license from Nokia to continue to use the
suit SEPs. Oppo has, thereby, according to the application, admitted
that Nokia would be entitled to compensation, in the form of license
royalty, for use, by Oppo, of the suit SEPs.

16. In these circumstances, given the fact that the considerable time
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is likely to elapse even before any substantive order would be passed
on the application filed by Nokia under Order XXXIX Rules 1 and 2
of the CPC and the necessity of ensuring that Nokia‘s commercial
interests are protected in the interregnum, the application submits that
a clear case for a direction, to Oppo, to make payment in accordance
with Order XXXIX Rule 10 of the CPC is made out. It is sought to be
contended, in the application, that such a direction would not result in
any prejudice to Oppo, as any amount which this Court may direct
Oppo to pay would be adjusted against the final damages to which
Nokia would be found to be entitled in the suit. On the other hand,
denial of the relief sought in this application, according to Nokia,
would result in irreparable prejudice to it, as Nokia would then remain
unsecured till an order is passed on the application filed by it under
Order XXXIX Rules 1 and 2 of the CPC and, in the interregnum, there
is every possibility of Oppo moving its resources and assets beyond
the territorial jurisdiction of this Court, which may result in a fait
accompli .

17. Predicated on the aforesaid factual assertions and allegations,
the application seeks a direction to the Defendants for the payment of
monies directly to the plaintiff, in terms of the amount as calculated in
the confidential affidavit referenced in paragraph 21 of this
application, or any other amount as considered appropriate by this
Hon‘ble Court in order to secure the rights and interests of the plaintiff
during the pendency of the plaintiff‘s interim injunction application.

Reply by defendant to the application

18. The defendant has contested the maintainability, as well as the
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merits, of the plaintiff‘s application under Order XXXIX Rule 10,
CPC, in its reply thereto. The reply has been filed under various
heads, and it would be appropriate to digest the submissions contained
in the reply, head-wise, as it has been filed.

19. The first submission of Oppo is that Nokia‘s application does
not satisfy the requirement of Order XXXIX Rule 10 of the CPC. In
this context, Oppo has highlighted the words ―admits‖ and ―that it
belongs or is due to another party‖ employed in Order XXXIX Rule
10 of the CPC. Oppo further contends that the admission, as would
justify an order under Order XXXIX Rule 10, has to be of a degree
envisaged by Order XII Rule 6 of the CPC. The admission has,
therefore, to be clear and unambiguous, and such as would relieve the
plaintiff of the burden of proof which otherwise would be cast on it.
Inasmuch as the suit instituted by Nokia claims infringement of three
patents held by Nokia and alleged to be SEPs, Nokia, in order to claim
itself to be entitled to an order of deposit under Order XXXIX Rule
10, would have to demonstrate that Oppo admitted not only to the
validity and essentiality of the suit patents, but also that the rates at
which deposit was being claimed by Nokia were FRAND compliant.
Oppo contends that the pre-suit correspondence exchanged between
Nokia and Oppo, and the reply filed by Oppo to IA 7699/2021,
preferred by Nokia under Order XXXIX Rules 1 and 2 CPC, clearly
indicate that Oppo was contesting the validity and essentiality of the
suit patents as well as the assertion, by Nokia, that its assurances were
FRAND.

20. Oppo further submits, in this context, that, in litigations
involving SEPs, the plaintiff is required to demonstrate, assuming that
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it has been able to establish that the patents are indeed SEPs and that
the defendant was using the said patents in its devices, that (i) the
royalty rates at which license was being offered by the plaintiff was
FRAND and (ii) the defendant was unwilling to take a license at such
rates. Any examination of whether the rates at which licenses were
offered by the plaintiff were FRAND would require the Court to
examine third party licensing agreements. No such third party
licensing agreement having been placed on record by Nokia, Oppo
contends that the most basic parameters, which this Court would have
to examine in order to assure itself that Nokia was offering the
licence to Oppo to exploit the suit patents were in fact FRAND, are
absent in the present case. Besides this, Oppo submits that FRAND
rate determination is a complex exercise which requires consideration
of third-party license agreements, expert evidence and a trial, among
other factors.

21. Nokia, instead, was merely trying to rely on its own assessment
of the possible damages due to it, for a direction to Oppo to make
payment. While doing so, Oppo points out, Nokia had itself admitted
that relief under Order XXXIX Rules 1 and 2 of the CPC could be
granted only after an in-depth examination of the aspect of whether
the suit patents are SEPs, whether Oppo has infringed the patents and
whether the rates at which Nokia has offered licenses are FRAND.
Nokia could not, therefore, seek to short circuit this exercise by
seeking an interim deposit under Order XXXIX Rule 10. That,
according to Oppo, would amount to placing the cart before the horse.

22. The second ground on which Oppo has opposed Nokia‘s
application is that the reliance, by Nokia, on the first FRAND license
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agreement executed between Nokia and Oppo is completely
misconceived. The said agreement, submits Oppo, cannot operate as
an estoppel against the right of Oppo to question the essentiality and
validity of the suit patents. Without prejudice to the said submission,
Oppo further submits that, while Oppo has always been willing to take
a FRAND license from Nokia representing the true value of its patent
portfolio, that value has never been established by Nokia either during
pre-suit communications or even during the currency of the present
suit. Oppo reiterates the fact that, in its reply to the present
application, it has contested the validity and essentiality of the suit
patents.

23. The right of a licensee to challenge the validity and essentiality
of a SEP, even after a license agreement with respect to SEP has been
executed, submits Oppo, stands globally recognized in various
jurisdictions. Reliance has been placed, for this purpose, on the
judgment of the Supreme Court of the UK in Unwired Planet
3
International Ltd. v. Huawei Technologies (UK) Company Ltd .
which, in turn, placed reliance on the decision of the European Court
4
of Justice in Huawei Technologies Co. Ltd. v. ZTE Corp.

24. In fact, contends Oppo, any restraint against a licensee from
challenging the validity of the licensed patent, if contained in the
license agreement, would actually be illegal and void, in view of
Section 140(1)(iii)(d) of the Patents Act. Taking of a license for
permission to use a particular patent does not, therefore, estop the
licensee from contesting the validity of the patent. Oppo further
contends that, if the negotiations with Nokia, after the execution of the

3
2020 UK SC 37
4
[2015] 5 CMLR 14
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first FRAND license agreement, did not fructify in any second
agreement, that was because Nokia was unable to satisfy Oppo
regarding the technical queries raised by it. Without prejudice to this
submission, Oppo also seek to point out that, during the pre-suit
negotiations, with Nokia, Nokia provided merely a few claim charts,
which were insufficient to represent its entire portfolio. Inasmuch as,
after corresponding with Oppo for this entire portfolio, Nokia had
chosen to limit its claim, in the suit, to three patents, Oppo asserted its
right to contest the validity of the said patents.

25. The third limb of the challenge, by Oppo, to Nokia‘s
application, is with respect to the affidavit of Mr. Patrik Hammaren.
Oppo emphasized that, in the affidavit, Mr. Hammaren himself
acknowledges that his calculations were based on assumptions and
presumptions and not on actual data. In any event, submits Oppo, no
direction for deposit of money under Order XXXIX Rule 10 of the
CPC can be made on the basis of such affidavit. No interim
arrangement, submits Oppo, can be put in place under Order XXXIX
Rule 10 , unless Nokia is able to prima facie establish its case.

26. Entertainment of such an application, submits Oppo, would be
fraught with the danger of every patent holder, who files a suit
alleging infringement of patents, seeking interim deposits for securing
its possible claims of future infringement even prior to an
interlocutory adjudication of the claims. This would amount to
coercing the defendant to make payment, without even a prima facie
determination.

27. Besides this, Oppo has also contested the claim of Nokia that, if
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interim deposit is not directed under Order XXXIX Rule 10 of the
CPC, the plaintiff‘s rights may not be secured. Oppo has sought to
emphasize its solvency by pointing out, inter alia , that it has recently
opened a 5G innovation centre at Hyderabad and has multiple offices
and manufacturing units across India which includes a 110 acre
campus valued at approximately ₹ 190 crores, employing 10,000
Indians. India, emphasises Oppo, is the main market for it and there
is, therefore, no chance of Oppo surrendering or placing its assets
outside the jurisdiction of this Court.

28. Oppo has, to corroborate its submissions, relied on an affidavit
dated August 2021 by Ming Li who is Senior IP Counsel of Oppo.

Rival Submissions

29. Detailed arguments were advanced by both sides over several
dates. Mr. Gaurab Banerjee, learned Senior Counsel, argued on behalf
of Nokia while Mr. Saikrishna Rajagopal, learned Counsel, argued on
behalf of Oppo.

30. Comprehensive written submissions have also been placed on
record by both sides, summarizing their contentions at the Bar.

31. It would be worthwhile, for the sake of precision, to enumerate
the submissions advanced by both sides.

Submissions of Nokia

32. Nokia submits as under:

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(i) For using Nokia‘s 2G, 3G and 4G SEPs during the period
# #### #### to ## #### ####, Oppo has paid Nokia, under the
first FRAND license agreement, approximately US$ *,
consequent to negotiations which spanned nearly ##### years.

(ii) Oppo was continuing to sell several of the same 2G, 3G,
4G and 5G enabled devices, which were being sold by them
during the aforesaid licensed period. They have, thereafter,
launched further devices which are also 3G and 4G, and in most
cases, 5G enabled.

(iii) Nokia‘s offer, during its pre-suit negotiations with Oppo,
for a second FRAND license agreement, also covered Nokia‘s
portfolio of 5G SEPs.

(iv) Nokia had based its claim, in its prayer for deposit, in its
application, by calculating the amount on the basis of assertions
st
in the affidavit dated 1 July 2021 of Mr. Patrik Hammaren.
st
Applying the said calculation, for the period upto 31
December 2022, Oppo would be required to secure Nokia by
depositing € *.

(v) Without prejudice to this submission, Nokia submits that
Oppo must make a security payment commensurate with at
least the license fee paid to Nokia for the first agreement, which
is US$ *.

(vi) Having said that, Nokia submits that the figure of US$
* could only be treated as a starting point since, compared
with the first FRAND license agreement, the portfolio of Nokia
has developed considerably thereafter, and the sales of 2G to
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5G mobile devices of Oppo had also increased exponentially.
As such, the figure of US$ *, submits Nokia, is the bare
minimum amount which should be directed to be paid at the
outset in order to secure Nokia‘s interests.

(vii) According to Nokia, the pre-suit communications with
Oppo clearly contained admissions, by Oppo, that they were
liable to pay at least some amount to Nokia. For the use of
Nokia‘s 2G, 3G, 4G and 5G SEPs, Nokia points out that Oppo
voluntarily made three counter offers, in which they valued
Nokia‘s portfolio at US$ *, for which purpose Nokia relies
on the assertions in Mr. Patrik Hammaren‘s affidavit.

(viii) Resultantly, Nokia and Oppo were ad idem on the
following:

(a) Oppo was required to obtain a license from Nokia
for its cellular SEPs.

th
(b) As on 11 June 2021, Oppo admitted the amount
due to Nokia over 36 months between July 2021 to June
2024 to be US$ *.

(c) For directing deposit under Order XXXIX Rule 10,
the Court was entitled to take into account not only
admissions contained in pleadings, but also admissions
which could be inferred from the conduct and past
relationship between the parties. For this purpose, Nokia
relies on the judgment of the High Court Bombay in
Chandrakant Shankarrao Deshmukh v. Haribhau
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5
Tukaramji Kathane .


(ix) The existence of a past license relationship involving
payment of license fee was a valid factor, for the purposes of
Order XXXIX Rule 10 and, in such circumstances, the Court
could, in exercise of the powers conferred by the said provision,
require the defendant to deposit at least the license fee as per the
said past agreement as an interim measure. For this purpose,
6
Nokia relies on Sangeeta Prints v. Hemal Prints , Sanjay
7
Gupta v. Cottage Industries Exposition Ltd and Green Band
8
Apartments Ltd. v. Mint Matrix .

(x) Even after the expiry of the first FRAND license
nd
agreement, Oppo had, in its e-mail dated 22 June 2021,
addressed to Nokia, admitted the following:

(a) Oppo was willing make interim payments to Nokia
st
w.e.f. 1 July 2021.

(b) The interim payments were not intended to be
representative of an assessment of the FRAND rate of
royalty. In fact, it was possible that there would be a
difference between the interim payments and the
negotiated FRAND license fee which could be resolved
through additional payments by Oppo or refund by Nokia
of the additional amount paid in the interim, as case
would be.

5
1983 MhLJ 88
6
AIR 1986 Bom 423
7
102 DRJ 234

8
2021 SCC OnLine Cal 428
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(c) In subsequent discussions between Mr. Adler Feng
of Oppo and Mr. Tiande gong of Nokia, Oppo had agreed
to make interim payments on the above lines and on the
basis of the license fee of the first agreement, i.e. US$
*.

(xi) The sole requirement of Order XXXIX Rule 10, for a
direction for interim payment to be made thereunder, is an
admission by the defendant, explicit or implicit, that money is
owed to the plaintiff. Once such an admission exists, Order
XXXIX Rule 10 does not envisage adjudication of any other
issues, least of all issues involving complex assessments of the
merits of the dispute, as may be relevant while dealing with an
application for interlocutory relief under Order XXXIX Rules 1
and 2 CPC.

(xii) As such, all ingredients of Order XXXIX Rule 10 stand
satisfied in the present case. The admissions of Oppo in the e-
mail exchanged with Nokia, demolished Oppo‘s argument that
interim security could be directed to be paid in the present case,
under Order XXXIX Rule 10, only after FRAND rates were
determined.

(xiii) Oppo was making transparent efforts to hold out, by
entering into protracted negotiations with Nokia without
entering into any firm commitment. Once again, via e-mail
nd
dated 22 June 2021, Oppo proposed interim payment, to
Nokia, of an amount which may, or may not, be commensurate
with the ultimate agreed rate, for the period post expiry of the
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first FRAND licence agreement. This offer was reiterated in
th
the e-mail dated 26 June 2021.

(xiv) The prayer of Nokia, predicated on these admissions by
Oppo, was in tune with the well-established principle that
determination of interim or pro tem security or financial
arrangement, in such cases, did not involve determination of
FRAND terms or review of comparable licenses of the SEP
holder, by the person exploiting the patents.

(xv) It was important to note that, during the negotiations post
the first FRAND license agreement, Oppo categorically refused
to share its own comparable license agreement on multiple
occasions, citing confidentiality concerns. This was an entirely
unreasonable attitude, and estopped Oppo from raising any
grievance regarding lack of transparency on the part of Nokia
with respect to its own license agreements with third parties.

(xvi) Oppo had, therefore,
(a) executed and lived through a #####-#### long
license agreement (the first FRAND license agreement)
on payment of royalty of US$ *,

(b) provided three specific counter offers for a second
agreement and

(c) agreed to make interim deposits for the period for
which they were unlicensed, without requiring Nokia to
disclose any third party license agreement.

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(xvii) This Court has, in several cases, directed such interim
payments, even after itself seeing the comparable license
agreement, without disclosing them to the defendant. By way
of orders in which such pro tem payments had been directed,
th
Nokia has cited order dated 20 September 2010 in Koninklijke
9
Philips Electronics NV v. Bhagirathi Electronics , order dated
th
16 December 2014 by the Division Bench in Xiaomi
10
Technology v. Telefonaktiebolagetlm Ericsson(PUBL) ,
th rd
order dated 27 November 2020 read with order dated 3 June
11
2021 in Koninklijke Philips N.V. v. Xiaomi Inc and order
th
dated 17 November 2020 in Koninklijke Philips N.V v. Vivo
12
Mobile Communication Co. Ltd ,

(xviii) ―An order of payment of monies directly to the plaintiff
or a deposit made in court under Order XXXIX Rule 10 does
not require any admission from the defendant, express or
implied, of validity, infringement or essentiality, the FRAND
nature of the rates, or any determination of these or other issues
on merits, save and except that the money is owed to the
plaintiff‖.

(xix) Oppo, by offering to pay for use of the Nokia‘s SEP
portfolio, admits that the said portfolio contains valid and
essential patents.

(xx) Without prejudice, issues of prima facie validity,
essentiality and FRAND nature of the rates may or may not be
relevant for adjudication of an application under Order XXXIX

9
CS (Comm) 436/2017
10
FAO(OS) 522/2014
11
CS (Comm) 502/2020
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Rules 1 and 2 seeking interlocutory injunction, but are certainly
not relevant for the present application, which is under Order
XXXIX Rule 10 and is predicated on admission of liability by
Oppo.

(xxi) The present application, therefore, is based on admissions
by Oppo, and proposes an estimated security amount owed to
st
Nokia. As per affidavit dated 1 July 2021 of Mr. Hammaren,
the amount would be approximately € *.

(xxii) This calculation was based on the rates offered by Nokia
in November 2020, using sales data and forecast data supplied
to Nokia by reliable, third party sources.

(xxiii) Nokia was, however, as an interim arrangement, willing
to accept an interim security payment of a lower amount,
pending filing of further evidence in the application under
Order XXXIX Rules 1 and 2. It was well enshrined, in
international jurisprudence (for which purpose reliance was
4
placed on Huawei v. ZTE ) that, even if the offer of the SEP
holder was disputed by the defendant, the defendant was
obligated to make a security deposit.

(xxiv) In the present case, the necessity of such deposit was
underscored by the fact that (a) the current financial health of
Oppo was questionable, (b) there were other cases of SEPs
before this Court where Oppo had been found not to have the
financial strength to meet the damages ultimately awarded, (c)
the time required for adjudication of an interim injunction

12
CS (Comm) 383/2020

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application would result in immense loss of licensing income
for Nokia, (d) the absence of any such direction for deposit
would encourage other competitors of Oppo and potential
licensees of Nokia‘s SEPs to seek to reproduce Oppo‘s
successful hold out behaviour and (e) in the long run, equities
would tilt in favour of Oppo.

(xxv) The claim of Oppo that it had not made any admission of
obligation to pay FRAND royalties to Nokia was falsified by
the following facts:

(a) Oppo was an ex-licensee of Nokia, which had sold
mobile devices compliant with 2G, 3G and 4G standards
between # #### #### and ## #### ####, pursuant to the
first FRAND license agreement with Nokia.

(b) Oppo had made clear and unequivocal admissions
that it was required to take a license from Nokia for its
several patents.

(c) Oppo had admitted that the license had a certain
value by way of royalty payment.

(d) Oppo proposed to make interim payments while
the parties continued discussion to arrive to a mutually
agreeable FRAND royalty payment.


(e) Oppo had made at least four counter-offers to the
th
offers of Nokia, of US$ * on 9 April 2021, US$
th th
on 24 May 2021, US$ on 11 June 2021
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and US$ * in November 2021.

(xxvi) The dispute could be analogised to one between a
landlord and a tenant in which the tenant disputed the landlord‘s
claim of rent, despite having paid the rent in the past. In such
circumstances, the fact that there was no admission regarding
the quantum of rent payable was irrelevant and could not
impact the Court‘s jurisdiction to pass appropriate orders for
deposit, ex debito justitiae , under Section 151, Order XXXIX
Rules 1 and 2 or under Order XXXIX Rule 10 of the CPC.

(xxvii) The standard of admission, required for an order under
Order XXXIX Rule 10, is less rigorous than that envisaged by
Order XII Rule 6 of the CPC, for which purpose reliance has
been placed on the judgment of this Court in Augmont Gold
13
Pvt. Ltd. v. One97 Communication Ltd. and Rajul Manoj
14
Shah v. Navin Umarshi Shah . Having admitted that, in order
to use Nokia‘s SEPs, Oppo was required to take a license and
that the licence was of considerable value, the value having
been quantified by Oppo in its counter-offers, there was
sufficient material for the Court to invoke Order XXXIX Rule
10 and direct Oppo to make a deposit.

(xxviii) The application was not restricted to three patents
specifically mentioned in the plaint, which was cited merely by
way of example. The plaint, rather, covered the entire SEPs
portfolio of Nokia. The requirement of deposit, under Order
XXXIX Rule 10 related to the subject matter of suit, and not the

13
2021 SCC OnLine Del 4484
14
2018 SCC OnLine Bom 8206
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claim ventilated therein.

Submissions of Oppo

33. Oppo‘s submissions, per contra , as under:

(i) The first FRAND licensing agreement dealt only with
patents relevant to 2G, 3G and 4G standards and did not cover
patents applicable to 5G standards.

(ii) There was no consensus, ad idem , between the parties,
with respect to the FRAND royalty rates chargeable by Nokia
for the portfolio forming subject matter of the present suit,
which included its 5G SEPs. That, in fact, was the reason why
the present suit came to be instituted in the first place.

(iii) While the suit asserted only the three suit patents IN
‘352, IN ‘929 and IN ‘066, interim deposit was being sought,
under the application, to cover the entire patent portfolio of
Nokia.

(iv) ―Admission‖, for the purpose of Order XXXIX Rule 10,
of the CPC had to be of the nature envisaged by Order XII Rule
6 of the CPC. It had to be clear and unambiguous and such as
relieve the opponent of the burden of proof of the fact said to be
admitted. In the present case, there was no admission,
whatsoever, by Oppo, of Nokia‘s claims in the suit. Oppo had,
in its written statement, challenged the very essentiality and
validity of the suit patents, apart from contesting the royalty rate
claimed by Nokia as not being FRAND.
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(v) By virtue of Section 140(1)(iii)(d) of the Patents Act, the
first FRAND license could not estop Oppo from challenging the
validity and essentiality of the suit patents, even if they were
subject matter of the first FRAND licensing agreement. During
the pre-suit communications between Nokia and Oppo, while
Nokia shared the claim charts of some of its patents within its
2G-4G portfolio, including IN ‘929, Nokia and Oppo agreed, ad
idem , that some other designated patents including IN ‘066
would not be discussed, as they were involved in other
litigations.

(vi) Various other communications between Nokia and Oppo
indicated that Oppo had concerns even about the essentiality
and validity of Nokia‘s 2G-4G patents. In this context, the
following passages, from communications between the parties,
were cited:

(a) ##### #### ## ##### ##### # ##### ####:
―#### ######,

######## ###### #### ##### ######## ###
######## ## ### #######.

#### #######,
#####‖

(b) ##### #### ## ##### ##### ## ##### ####:
―#### ###### ,
##### ##### ######## ############ ## ####
######## ##### # #### ######## ## #### #####,
# #### ####### ## ### ## ########

- #### # #### #### # #### ##### (####### ####)/
#### ###### (###), ##### ##, ####
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- ####: #####//####.####.###.##/#/ ###########
- ####### ##: ###########
- ########: #####

##### ### ### #####‘# ####### ### #########
### ######### ######## #### ####. ########
###### #### ### ####### ####### ## # ###### ##
######### ########### ## ### ########. ##
####### #### #### ## ####### ### ######-##
############## ####### ### ######### #####,
########## ########### #### ### ####### ####
#### ### ### ##### #### ## ######## ####### ##
### ######### ######.

####### ####### ## ####### #### ###.

#### #######,
#####‖

(c) ##### #### ## ##### ##### # ##### ####:
―#### ######,

######## ###### #### #####'# ######## ###
######## ## ### #####'# ##############
#######.

#### #######,
#####‖

(e) ##### #### ## ##### ##### ## ##### ####:
―#### ######,

##### ### ### #### #####. ###, ### ######## ###
##### ## # ######## ## ### ####### ### #### ##
### #### ######. ###### #### ##### ## # ######
#### ## ##### ###### ## ##########, ### ####
## ### #### # ########## ## ###### ### #####'#
### ####### ### ############


*

## ######### ### ###### ## ### ####### ##
##### ##, ####, ### #### ####### #### ##
######### ###### ### #, ####. ## ####### ####
### ####### #### ####### ### #######'# #####
######### #### #### ######## #####.
########### #### #### ## ### ##### ######
####### ####### ####### ### #######
########## ## ### ######### #####, ## ###
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##### ##### ######### ## ### #########, ###
####### ####### ### ############ #####
####### #### ### #### # #### ### ##### ####.

#### #######,
#####‖

(f) ##### #### ## ##### ##### # #### ####:
―#### ######,

##### ### ### #### #####.

#### ### ######### ######## ### ######, ## #######
######### # ##### ####### ####### #### ### ########
######### ## ## ######## ## #####. ######## ##### ##
#### ### ### #### ###### ### ###### ## ### ####
#########, ####'# #### ##### ####### # #### ###### ##
#### ## ########## ## #####'# ####### #######, ## ##
### ##### # ######## ## ######## ### #### #### ####
## ### #### ##### ######## ####### #### #### #####
######## ## ### ##### #### #### ## ####### ## ####
### ########.


*

## ###### ##### ## ####### ####### ######## ## ###
### ######## ## # ###### ######.

#### #######,
#####‖

(vii) There were certain patents, such as IN ‗929, for which
royalty at FRAND rate had already been paid by Oppo till ##
#### #### based on the first FRAND license agreement. Nokia
could not seek further payment for the said patent merely on the
ground that it was also relevant to 5G standards. In other
words, there was no justification for Nokia to seek additional
royalty for exploitation of the same patent by Oppo, merely
because the patent was also relevant to 5G standards. Oppo
th th th
had, in its emails dated 17 June 2021, 18 June 2021 and 28
June 2021 to Nokia, clearly disputed the royalty rates claimed
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by Nokia as not being FRAND. Nokia had worked out the
amount that it was claiming from Oppo, in the application, on
the basis of the affidavit of Mr. Patrik Hammaren, which was
predicated on the same rate that Oppo had opposed.

(viii) Despite acknowledging, in the following passage from its
th
email dated 18 June 2021, that third party agreements were
relevant for resolving the valuation dispute with Oppo, interim
deposit was being sought without disclosing such third party
agreements. Reference to third party agreements was
indispensable for FRAND rate fixation.

(ix) As per the protocol which must be followed in all cases
of SEP infringement, the Court is first required to examine
whether the asserted patents are SEPs; secondly, whether the
defendant is exploiting the said SEPs and, thereby, infringing
them; thirdly, whether the plaintiff is willing to license the SEPs
on royalty to willing licensees; and, fourthly, whether the
royalty fee claimed by the plaintiff is FRAND. As such, the
Court could not directly proceed to the issue of FRAND rate of
royalty without, in the first instance, deciding the first three
issues, which require a trial, especially where they were
disputed by the defendant as in the present case.

(x) The pre-suit offers by Oppo were made in good faith, so
as to avoid a litigative exercise. Once Nokia had chosen to
initiate litigation with respect to the suit patents, these offers
lost meaning. Oppo, consequent on the initiation of such
litigation by Nokia, was entitled to challenge Nokia‘s suit on all
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grounds including validity and essentiality of the suit patents
and the aspect of infringement, apart from whether the rate of
royalty claimed by Nokia was FRAND.

(xi) Allowing the prayer of Nokia in the present case would
set an extremely dangerous precedent by which, merely on
filing a suit, a defendant could be mulcted with the liability to
make interim payment even before the Court is able to arrive at
a prima facie conclusion regarding validity and essentiality of
the patent, the aspect of infringement and whether the royalty
rate claimed by the plaintiff is, or is not, FRAND.

(xii) The financial state of health of Oppo was a consideration
completely alien to Order XXXIX Rule 10 of the CPC. Despite
this, Oppo asserted that it was solvent and was financially well
placed.

(xiii) Decisions relating to tenancy and rates of rent were
completely irrelevant, where the issue involved was royalty
rates, which were required to be FRAND and on the basis of
which an SEP holder could license its SEPs.

(xiv) Most of the cases cited by Nokia, in which pro tem orders
were passed, directing interim deposit to be made, were consent
orders. There is hardly any instance in which, on merits, the
Court has directed pro tem payment even before ascertaining
the basic aspects of essentiality, validity and infringement of the

patent, even at a prima facie level.

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Analysis

Certain preliminary observations

34. Though copious submissions, as noted above, were advanced at
the Bar in the present application, I am of the opinion that it is not
necessary, for the purposes to the present application, to enter in detail
into the said submissions. With due respect to the eminence of
learned Counsel who represented Nokia, I am unable to concur with
the manner in which learned Counsel seek to interpret Order XXXIX
Rule 10 of the CPC.

35. Before, however, adverting to Order XXXIX Rule 10 of the
CPC and what, in my opinion, is the actual scope and effect, I deem it
appropriate to deal with the reliance, by Nokia, on Section 151, as that
is one of the provisions which has been invoked in the application
under consideration.

Invocation of Section 151

36. It is a matter of standard practice that interlocutory applications,
irrespective of the main provision of the CPC under which they are
filed, invariably also invoke Section 151 of the CPC. In most such
cases, Section 151 is invoked as a fall-back clause, to cater to a
situation in which the relief sought cannot be granted under the main
provision of the CPC that the application invokes. In my considered
opinion, this is an erroneous practice, which should not be either
encouraged or followed. Section 151 is not to be treated as an
15
akshaya patra , into which one dips when there is no provision of the

15
The inexhaustible vessel stated, in the Mahabharata , to have been given to Pandava King Yudhishtira by
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CPC under which the relief sought can be obtained. It is a provision
engrafted ex debito justitiae , which is meant to be used only where
expedient orders are required in the interests of justice. It cannot
trump the specific provisions of the CPC, or be used as an avenue to
obtain relief which the other provisions of the CPC do not envisage.
One of the most recent pronouncements of the Supreme Court, in this
regard, is My Palace Mutually Aided Co-Operative Society v. B.
16
Mahesh , from which the following passages may be usefully
extracted:

―8. …The inherent powers of the Court are in addition to
the powers specifically conferred on the Court by the Code.
They are complementary to those powers and therefore it
must be held that the Court is free to exercise them for the
purposes mentioned in Section 151 of the Code when the
exercise of those powers is not in any way in conflict with
what has been expressly provided in the Code or against the
intentions of the Legislature. It is also well recognized that
the inherent power is not to be exercised in a manner which
will be contrary to or different from the procedure
expressly provided in the Code.”

(emphasis supplied)

*

28. Section 151 of the CPC can only be applicable if there is no
alternate remedy available in accordance with the existing
provisions of law. Such inherent power cannot override statutory
prohibitions or create remedies which are not contemplated under
the Code. Section 151 cannot be invoked as an alternative to filing
fresh suits, appeals, revisions, or reviews. A party cannot find

Lord Surya, which could provide a never-ending supply of food to the Pandavas.
16
2022 SCCOnLine 1063
17
AIR 1961 SC 218
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solace in Section 151 to allege and rectify historic wrongs and
bypass procedural safeguards inbuilt in the CPC ‖.
(Italics and underscoring supplied)


37. To the same, or cognate, effect, are the following passages from
other decisions on the point, which highlight the legal position that
Section 151 cannot be used as a residuary clause, to seek reliefs which
18
the CPC does not contemplate . In Nain Singh v. Koonwarjee and
19
K.K. Velusamy v. N. Palanisamy the Supreme Court held thus
under:
18
Nain Singh

―4. The High Court, in our opinion, erred in holding that the
correctness of the remand order was open to review by it. The
order in question was made under rule 23, Order 41, Civil
Procedure Code. That order was appealable under Order 43 of that
Code. As the same was not appealed against, its correctness was no
more open to examination in view of Section 105(2) of the Code
which lays down that where any party aggrieved by an order of
remand from which an appeal lies does not appeal therefrom he
shall thereafter be precluded from disputing its correctness. The
High Court has misconceived the scope of its inherent powers.
Under the inherent power of courts recognised by Section 151,
Civil Procedure Code, a court has no power to do that which is
prohibited by the Code. Inherent jurisdiction of the court must be
exercised subject to the rule that if the Code does contain specific
provisions which would meet the necessities of the case, such
provisions should be followed and inherent jurisdiction should not
be invoked. In other words the court cannot make use of the special
provisions of Section 151 of the Code where a party had his
remedy provided elsewhere in the Code and he neglected to avail
himself of the same. Further the power under Section 151 of the
Code cannot be exercised as an appellate power.‖
(Emphasis supplied)

19
K.K. Velusamy

―12. The Respondent contended that Section 151 cannot be used
for re-opening evidence or for recalling witnesses. We are not able
to accept the said submission as an absolute proposition. We
however agree that section 151 of the Code cannot be routinely

18
(1970) 1 SCC 732

19
(2011) 11 SCC 275
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invoked for reopening evidence or recalling witnesses. The scope
of Section 151 has been explained by this Court in several
17
decisions (See: Padam Sen v. State of UP ; Manoharlal Chopra
20 21
v. Seth Hiralal Arjun Singh v. Mohindra Kumar ; Ram Chand
22
and Sons Sugar Mills (P) Ltd. v. Kanhay Lal ; Nain Singh v.
18
Koonwarjee ; The Newabganj Sugar Mills Co. Ltd. v. Union of
23
India ; Jaipur Mineral Development Syndicate v. Commissioner
24
of Income Tax, New Delhi : ; National Institute of Mental Health
25
and Neuro Sciences v. C Parameshwara ; and Vinod Seth v.
26
Devinder Bajaj We may summarize them as follows:

(a) Section 151 is not a substantive provision which
creates or confers any power or jurisdiction on courts . It
merely recognizes the discretionary power inherent in every
court as a necessary corollary for rendering justice in
accordance with law, to do what is 'right' and undo what is
'wrong', that is, to do all things necessary to secure the ends
of justice and prevent abuse of its process.

(b) As the provisions of the Code are not exhaustive,
Section 151 recognizes and confirms that if the Code does
not expressly or impliedly cover any particular procedural
aspect, the inherent power can be used to deal with such
situation or aspect, if the ends of justice warrant it . The
breadth of such power is co-extensive with the need to
exercise such power on the facts and circumstances.

(c) A Court has no power to do that which is prohibited
by law or the Code, by purported exercise of its inherent
powers. If the Code contains provisions dealing with a
particular topic or aspect, and such provisions either
expressly or necessary implication exhaust the scope of the
power of the court or the jurisdiction that may exercised in
relation to that matter, the inherent power cannot be
invoked in order to cut across the powers conferred by the
Code or a manner inconsistent with such provisions. In
other words the court cannot make use of the special
provisions of Section 151 of the Code, where the remedy or
procedure is provided in the Code.

(d) The inherent powers of the court being
complementary to the powers specifically conferred, a court
is free to exercise them for the purposes mentioned in
Section 151 of the Code when the matter is not covered by

20
AIR 1962 SC 527
21
AIR 1964 SC 993
22
AIR 1966 SC 1899
23
AIR 1976 SC 1152
24
AIR 1977 SC 1348
25
2005 (2) SCC 256
26
2010 (8) SCC 1
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any specific provision in the Code and the exercise of those
powers would not in any way be in conflict with what has
been expressly provided in the Code or be against the
intention of the Legislature.

(e) While exercising the inherent power, the court will
be doubly cautious, as there is no legislative guidance to
deal with the procedural situation and the exercise of
power depends upon the discretion and wisdom of the
court, and the facts and circumstances of the case. The
absence of an express provision in the code and the
recognition and saving of the inherent power of a court,
should not however be treated as a carte blanche to grant
any relief.

(f) The power under Section 151 will have to be used
with circumspection and care, only where it is absolutely
necessary, when there is no provision in the Code
governing the matter , when the bona fides of the applicant
cannot be doubted, when such exercise is to meet the ends
of justice and to prevent abuse of process of court.‖
(Emphasis supplied)

38. The amplitude and sweep of the CPC must not be forgotten
while invoking Section 151. The CPC contains a wide variety of
provisions which ensure that, where the interests of justice so require,
a party secures not only final but also interlocutory remedies. The
legislature must be deemed to have taken into consideration every
possible circumstance in which relief would be required to be granted,
while engrafting the provisions in the CPC, even if the CPC cannot be
regarded as ―exhaustive‖ in the classical sense. The Court must not
lightly presume that there are exigencies which the CPC does not
contemplate and which, therefore, would require invocation of Section
151 in order for complete justice to be done.

39. Even while, therefore, invoking Section 151for granting relief
in a manner for which the CPC does not otherwise provide, the Court
must remain acutely conscious of the scope of the provision. The
Court cannot, therefore, first decide to grant relief and, thereafter, on
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finding no provision under which the CPC so permits, fall back on
Section 151. The correct manner of invocation of Section 151 would,
therefore, be for the Court to, in the first instance, decide whether the
grant of the relief sought is proscribed by any provision of the CPC.
If it is, Section 151 cannot be invoked. If, on the other hand, there is
no such proscription, the Court may invoke Section 151, but, while
doing so, the Court has to balance the considerations of the
entitlement to the relief sought, keeping in mind the consideration of
dispensation of substantive justice, vis-à-vis the power to grant such
relief within the four corners of the CPC.

40. There may, of course, be exceptional cases where grant of relief
is necessary ex debito justitiae and, in the absence of any other
provision in the CPC, Section 151 has to be invoked. All that is
required of the Court is, therefore, care and circumspection in that
regard.

41. Insofar as interlocutory reliefs are concerned, the CPC contains
27
various provisions, including Order XXXVIII Rule 5 , Order XXXIX
28
Rules 1 and 2 and Order XXXIX Rule 10.

27
Where defendant may be called upon to furnish security for production of property –
5.
(1) Where, at any stage of a suit, the Court is satisfied, by affidavit or otherwise, that the
defendant, with intent to obstruct or delay the execution of any decree that may be passed against
him –
(a) is about to dispose of the whole or any part of his property, or
(b) is about to remove the whole or any part of his property from the local limits of
the jurisdiction of the Court,
the Court may direct the defendant, within a time to be fixed by it, either to furnish security, in such
sum as may be specified in the order, to produce and place at the disposal of the Court, when
required, the said property or the value of the same, or such portion thereof as may be sufficient to
satisfy the decree, or to appear and show cause why he should not furnish security.
(2) The plaintiff shall, unless the Court otherwise directs, specify the property required to be

attached and the estimated value thereof.
(3) The Court may also in the order direct the conditional attachment of the whole or any
portion of the property so specified.
(4) If an order of attachment is made without complying with the provisions of sub-rule (1)
of this rule, such attachment shall be void.
28
1. Cases in which temporary injunction may be granted. – Where in any suit it is proved by
affidavit or otherwise –
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(a) that any property in dispute in a suit is in danger of being wasted, damaged or
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42. The present application invokes Order XXXIX Rule 10. The
mere fact that the application states that it has been filed under Order
XXXIX Rule 10 read with Section 151 of CPC, does not persuade me
to examine this application on a canvass larger than that on which
Order XXXIX Rule 10 operates.

43. I intend, therefore, to examine the present application on the
basis of Order XXXIX Rule 10, and not outside the said provision. I
may note, here, that though Section 151 CPC has been invoked in the
heading of the application, arguments before me were essentially
predicated on the basis of Order XXXIX Rule 10. The submissions of
Mr. Gourab Banerjee, learned Senior Counsel for the plaintiff, were
based on the premise that interim deposit, as sought by the plaintiff,
could be directed by this Court Order XXXIX Rule 10 of the CPC.

Order XXXIX Rule 10 of the CPC

44. I may note, here, at the outset – and this is a common feature of
most patent litigations especially involving telecommunication patents
which have a worldwide impact – that a great deal of emphasis is
placed, by the plaintiff-patent holder on the financial stakes involved.


alienated by any party to the suit, or wrongfully sold in execution of a decree, or
(b) that the defendant threatens, or intends, to remove or dispose of his property

with a view to defrauding his creditors,
(c) that the defendant threatens to dispossess, the plaintiff or otherwise cause injury
to the plaintiff in relation to any property in dispute in the suit, the Court may by order
grant a temporary injunction to restrain such act, or make such other order for the purpose
of staying and preventing the wasting, damaging, alienation, sale, removal or disposition
of the property or dispossession of the plaintiff, or otherwise causing injury to the
plaintiff in relation to any property in dispute in the suit as the Court thinks fit, until the
disposal of the suit or until further orders.
2. Injunction to restrain repetition or continuance of breach . –
(1) In any suit for restraining the defendant from committing a breach of contract or other
injury of any kind, whether compensation is claimed in the suit or not, the plaintiff may, at any time
after the commencement of the suit, and either before or after judgment, apply to the Court for a
temporary injunction to restrain the defendant from committing the breach of contract or injury
complained of, or any breach of contract or injury of a like kind arising out of the same contract or
relating to the same property or right.
(2) The Court may by order grant such injunction, on such terms as to the duration of the
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To my mind, the Court, while requiring to remain conscious of the
stakes, cannot allow it to unduly impact its decision. A plaintiff who
sues for a thousand rupees is entitled to the same courtesy, from the
Court, as one who sues for a thousand million. The law does not
differentiate between the two. More often than not, the plaintiff in the
first case may be more impacted by the outcome of his suit than the
latter.

45. That said, there is, as has been judicially recognized on multiple
occasions, an element of urgency in intellectual property disputes.
That element of urgency, however, arises from the very nature of the
property in dispute, and its ―intellectual‖ component, which requires
the Court to ensure putting in place, if not final, at least interlocutory
arrangements, with all due expedition, in order to ensure that
continued infringement or passing off does not take place, and
intellectual property is protected. Where, however, the CPC provides
for such interim arrangements, and prescribes the conditions to be
fulfilled for such an arrangement to be directed, satisfaction of the
conditions is the sine qua non for any interim direction to be issued.
The element of urgency that governs IP litigation cannot, therefore,
extend to issuing directions to the defendant to make deposit in the
Court, unless a clear case of possibility of any ultimate decree that
may come to be passed being frustrated in the event no such direction
for deposit is passed, exists; in which case the provision which would
apply would be Order XXXVIII Rule 5, and not Order XXXIX Rule
10.

46. To cut a long story short, in the present case, if the plaintiff is

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injunction, keeping an account, giving security, or otherwise, as the Court thinks fit.
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able to make out a case for deposit within the four corners of Order
XXXIX Rule 10, he would be entitled to relief as sought in the
application; else, he would not.

47. For this, therefore, it is necessary, at the outset, to understand
the scope and sweep of Order XXXIX Rule 10 of the CPC.

48. Order XXXIX Rule 10 of the CPC applies to a situation in
which ―the subject matter of a suit is money or some other thing
capable of delivery‖. Where the subject matter of the suit conforms to
this requirement, Order XXXIX Rule 10 further requires, for the
provision to apply, admission , by one or the other party to the suit.
The admission must be either that (i) such party holds the money or
other thing as a trustee for the other party, or (ii) such money or other
thing belongs to the other party or (iii) such money or other thing is
due to the other party.

49. The averments in the present application by the Nokia do not
plead the existence of either exigency (i) or exigency (ii). In other
words, the application does not aver that Oppo admits holding money
or another thing as a trustee for Nokia or that Oppo avers that the
money or other thing held by it belongs to Nokia. The application is
predicated on the basis of exigency (iii). What Nokia seeks to assert,
therefore, is that the material on which it relies amounts to an
admission, by Oppo, that it holds money which is due to Nokia.


50. Once the afore-noted two ingredients of Order XXXIX Rule 10
are satisfied, the provision proceeds to deal with the nature of the
order that the Court may pass. It stipulates that, in such
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circumstances, the Court ― may order the same to be deposited in the
court‖, or to be delivered to the other party, with, or without security.
The use of the word ―the same‖ indicates that what may be directed to
be deposited in Court or paid to the opposite party, is only the money
or other thing which is held by one party and admitted to be due to the
other party. In other words, if one of the party holds ₹ x and admits
that ₹ x is due to the other party, the Court may, under Order XXXIX
Rule 10, direct ₹ x to be deposited in Court or paid to the other party.
The power of the Court Order XXXIX Rule 10 does not extend to
directing payment either of ₹ x + y or ₹ x – y. The submission of
Nokia that Order XXXIX Rule 10 merely requires admission of
liability, and not of the quantum of liability, therefore, militates
against the very wording of the provision.

51. Order XXXIX Rule 10 does, however, extend to the Court
directing the other party to furnish security against the deposit or
payment of such amount. The aspect of security, however, does not
arise for consideration in the present case.

Judicial decisions on Order XXXIX Rule 10


52. There is no judgment of the Supreme Court which enlightens on
the scope and ambit of Order XXXIX Rule 10 of the CPC. Mr.
29
Banerjee cited Karan Kapoor v. Madhuri Kumar . Though the said
decision refers to the appellant Karan Kapoor having filed
applications, before the learned District Court under Order XII Rule 6
and Order XXXIX Rule 10 of the CPC, the Supreme Court has
examined the matter only with respect to Order XII Rule 6. The

29
2022 SCC OnLine SC 791
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decision, therefore, does not throw any real light on Order XXXIX
Rule 10, or its scope and effect.

53. The sole other decision which refers, to any extent, to Order
XXXIX Rule 10 is S.D.S. Shipping (P) Ltd. v. Jay Containers
30
Services Co. (P) Ltd. , which, too, however, cannot, with great
respect, said to be of much help. The proceedings in that case arose
out of a suit instituted by the respondent Jay Container Services
(―JCS‖ hereinafter) before the High Court of Bombay, in which the
appellant SDS Shipping Pvt. Ltd. (―SDS‖ hereinafter) was Defendant
1. JCS had leased certain containers to SDS. Despite expiry of the
lease period, the containers were not returned. JCS, therefore, sued
SDS for a sum of ₹ 16113173.14, representing the claim for non-
return of the containers as well as for outstanding rental. JCS also
filed an application for a direction to SDS to deposit ₹ 81,77,632.50
representing arrears of rental along with a direction to deposit rent on
a monthly basis. The application was rejected by a learned Single
Judge of the High Court, who held that the case did not justify
invocation of Order XII Rule 6 of the CPC. The Division Bench of
the High Court, however, reversed the said decision and directed SDS
to deposit ₹ 82,00,000/- within twelve weeks. Aggrieved, SDS
appealed to the Supreme Court.

54. SDS contended, before the Supreme Court, that the Division
Bench had impliedly affirmed the view of the learned Single Judge
that Order XII Rule 6 of the CPC did not apply in the facts of the case.
Nonetheless, the direction for deposit appeared to have been passed
under Order XXXIX Rule 10. [This may be discerned from the
submissions of learned Senior Counsel for SDS (as he then was), as
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cited in para 7 of the report]. SDS contended, before the Supreme
Court, that, having ruled out the application of Order XII Rule 6, it
was not open to the learned Division Bench to invoke Order XXXIX
Rule 10, which operated in an entirely different background. The
Supreme Court disposed of the matter thus (in paras 11 to 14 of the
report):

30
(2003) 9 SCC 439
31
(1975) 3 SCC 108
32
1987) 4 SCC 391
33
AIR 1977 SC 2031
34
(1978) 3 SCR 509
35
(1999) 2 SCC 635
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premise that, being a challenge to an interim order, the case did not
justify invocation of Article 136 of the Constitution of India. There
was, thus, no discussion on merits, on the application of Order
XXXIX Rule 10 or as to whether the judgment of the Division Bench
of the High Court was in tandem with the said provision.

56. A learned Single Judge of the High Court of Madhya Pradesh
36
has, in Balkrishna Agrawal v. Central Bank of India , observed that,
while the admission envisaged by Order XXXIX Rule 10 of the CPC
is ―of the kind which should be akin to the admission of a claim
entitling the Court to pronounce judgment in terms of Rule 6 of Order
XII‖, Order XXXIX Rule 10 is, in its scope, admittedly narrower than
Order XII Rule 6. I respectfully concur with this view.

57. There can, therefore, be no doubt about the fact that the scope
of Order XXXIX Rule 10 is, in any case, not wider than that of Order
XII Rule 6. One may, therefore, profitably refer to certain decisions
which set out the principles governing Order XII Rule 6, and delineate

36
ILR 1984 MP 50
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its peripheries.

29
58. Karan Kapoor , as already noted, does not throw much light
on Order XXXIX Rule 10, but is instructive with respect to Order XII
Rule 6. Paras 16 and 17 of the report in the said case read thus:

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59. The scope of Order XII Rule 6 has also been examined in the
following passages from Hari Steel & General Industries Ltd. v.
37
Daljit Singh :

37
(2019) 20 SCC 425
38
(2011) 15 SCC 273
39
(2000) 7 SCC 120
40
(2010) 4 SCC 753
41
(2010) 6 SCC 601
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42
(2015) 9 SCC 287
43
(1999) 8 SCC 396
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38
60. The decision in Himani Alloys Ltd. v. Tata Steel Ltd
advocates care and caution while passing a decree on admissions
under Order XII Rule 6. The justification for the said note of caution
is that the suit would be finally decided without a trial, if Order XII
Rule 6 were to be invoked. The outcome of invocation of Order XII
38
Rule 6 being, thus, drastic, the decision in Himani Alloys calls for
circumspection while applying the provision.

61. That justification may not apply to Order XXXIX Rule 10, as a
decision under Order XXXIX Rule 10 does not either decree the suit
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or bring the suit proceedings to an end. Even so, an ―admission‖,
which would justify a direction for deposit under Order XXXIX Rule
10, has to be an admission which would at least justify a decree on
admission under Order XII Rule 6. The scope of ―admission‖ in
Order XII Rule 6 and Order XXXIX Rule 10 is, therefore, similar.

62. This would also flow from the basic principle that, where the
legislature uses an expression in two provisions of the same statute,
then, unless a contrary intent is apparent, the word has to be ascribed
44
the same meaning at both places.

63. No contrary intent being apparent from the CPC, the word
―admission‖, as employed in Order XXXIX Rule 10 would have to be
read analogously to the word ―admission‖ as employed in Order XII
Rule 6.

64. Both Order XXXIX Rule 10 and Order XII Rule 6 used the
word ―may‖. The use of the expression ―may‖ in Order XII Rule 6
has been interpreted, by the Supreme Court, as indicating that the
provision is merely enabling and discretionary in nature and cannot be
claimed as a matter of right. The following passage from the
judgment of the Supreme Court in S.M. Asif v. Virender Kumar
42
Bajaij , elucidates this position:

―9. The words in Order XII Rule 6 Code of Civil Procedure
"may" and "make such order..." show that the power Under Order
XII Rule 6 Code of Civil Procedure is discretionary and cannot be
claimed as a matter of right. Judgment on admission is not a matter
of right and rather is a matter of discretion of the Court. Where the
Defendants have raised objections which go to the root of the case,
it would not be appropriate to exercise the discretion Under Order
XII Rule 6 Code of Civil Procedure. The said rule is an enabling

44
Refer Raghubans Narain Singh v. The Uttar Pradesh Government, AIR 1967 SC 465
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provision which confers discretion on the Court in delivering a
quick judgment on admission and to the extent of the claim
admitted by one of the parties of his opponent's claim. In the suit
for eviction filed by the Respondent-landlord, Appellant-tenant has
admitted the relationship of tenancy and the period of lease
agreement; but resisted Respondent-Plaintiffs claim by setting up a
defence plea of agreement to sale and that he paid an advance of
Rs. 82.50 lakhs, which of course is stoutly denied by the
Respondent-landlord. The Appellant-Defendant also filed the Suit
for Specific Performance, which of course is contested by the
Respondent-landlord. When such issues arising between the parties
ought to be decided, mere admission of relationship of landlord
and tenant cannot be said to be an unequivocal admission to decree
the suit Under Order XII Rule 6 Code of Civil Procedure.‖


65. Where power conferred by a provision is discretionary, there
have to be guidelines to guide the exercise of such discretion. If the
statutory provision does not set out the guidelines, one has to search
for such guidelines from precedents on the point, if any; else the Court
would have to discern the guidelines on its own analysis of the
provision. Quite obviously, exercise of discretion, whether under
Order XII Rule 6 or under Order XXXIX Rule 10, cannot be
uncanalised, as that would give rise to arbitrariness.

66. Certain principles which may said to be governing exercise of
discretion under Order XII Rule 6 do emanate from judicial decisions
on the point. Para 10 of the report in Razia Begum v. Sahebzadi
45
Anwar Begum holds thus:

― 10. It is also clear on the words of the statute, quoted above,
that the grant of a declaration such as is contemplated by Section
42, is entirely in the discretion of the court. At this stage, it is
convenient to deal with the other contention raised on behalf of the
appellant, namely, that in view of the unequivocal admission of the
plaintiff's claim by the Prince, in his written statement, and
repeated as aforesaid in his counter to the application for
intervention by the Respondents 1 and 2, no serious controversy
now survives. It is suggested that the declarations sought in this

45
AIR 1958 SC 886
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XII Rule 6 is to be read with the proviso to Order VIII Rule 5 which,
in turn, is identical to the proviso to Section 58 of the Indian Evidence
Act:
―10. It is also clear on the words of the statute, quoted above,
that the grant of a declaration such as is contemplated by section
42, is entirely in the discretion of the court. At this stage it is
convenient to deal with the other contention raised on behalf of the
appellant, namely, that in view of the unequivocal admission of the
plaintiff's claim by the Prince in his written statement and repeated
as aforesaid in his counter to the application for intervention by
respondents 1 and 2, no serious controversy now survives. It is
suggested that the declarations sought in this case would be granted
as a matter of course. In this connection, our attention was called to
the provisions of r. 6 of O. 12 of the Code of Civil Procedure,
which lays down that upon such admissions as have been made by
the Prince in this case the court would give judgment for the
plaintiff. These provisions have got to be read along with r. 5 of O.
8 of the Code with particular reference to the proviso which is in
these terms:

―Provided that the Court may in its discretion require any
fact so admitted to be proved otherwise than by such
admission.‖

The proviso quoted above is identical with the proviso to section
58 of the Indian Evidence Act, which lays down that facts admitted
need not be proved. Reading all these provisions together, it is
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manifest that the court is not bound to grant the declarations prayed
for, even though the facts alleged in the plaint may have been
admitted. In this connection, the following passage in Anderson's
"Actions for Declaratory Judgments", Vol. 1, p. 340, under art.
177, is relevant :-

"A claim of legal or equitable rights and denial thereof on
behalf of an adverse interest or party constitutes a ripe
cause for a proceeding, seeking declaratory relief. A
declaration of rights is not proper where the defendant
seeks to uphold the plaintiffs in such an action. The
required element of adverse parties is absent."

"In other words the controversy must be between the
plaintiff and the respondent who asserts an interest adverse
to the plaintiff. In the absence of such a situation there is no
justiciable controversy and the case must be characterized
as one asking for an advisory opinion, and as being
academic rather than justiciable."..............

"i.e., there must be an actual controversy of justiciable
character between parties having adverse interest."


68. It is well settled that the admission, whether for the purposes of
Order XII Rule 6 or Order XXXIX Rule 10, has to be clear,
unequivocal and incapable of more than one interpretation, as held in
46
Daljeet Singh Anand v. Harjinder Singh Anand , and Vijendra
47
Kumar v. Shailender Kapoor among others. Where there are
disputed questions of fact or law involved, no decree on admission
48
should be passed under Order XII Rule 6 . While exercising
discretion on whether to pass a decree on admission under Order XII
49
Rule 6, the Court is required to bear in mind interests of justice , as
50
well as the legal effect of the admission . If vexed questions of fact
51
or law are involved , or where the opposite party has raised issues

46
2008 SCC OnLine Del 301
47
2013 SCC OnLine Del 3460
48
Express Towers P.TD v. Mohan Singh , (2007) 7 DRJ 687 (DB)
49
Manisha Commercial Ltd v. N.R. Dongre, AIR 2000 Delhi 176
50
Makali Engg. Works Pvt. Ltd. v. Dalhousie Properties Ltd., 2006 1 CHN 419 (Calcutta)(DB)
51
Manisha Commercial ibid
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52
which go to the root of the matter , or where the questions cannot be
53
decided without evidence , no decree on admissions can be passed
under Order XII Rule 6. While examining whether there is any
―admission‖ as would justify passing a decree on admissions under
Order XII Rule 6, the Court is required to read the documents as a
whole, and it is not permissible to tear out lines from any document,
divorced from the rest of the document, to hold that there is an
54
admission.

69. Having said that, the admission may be oral or in writing, in the
pleadings or in any other document including any cognate
55
proceedings.

70. Once the scope of Order XXXIX Rule 10 of the CPC has thus
been understood, all that is required is for the Court to examine
whether the material, to which the parties have drawn the attention of
the Court, make out a case of unequivocal admission, by Oppo, of any
particular amount as being payable to Nokia apropos the claims in the
present suit.

Material and pleadings relied upon by Nokia

Relevance of experts‘ affidavits at Order XXXIX stage

71. Both sides relied upon affidavits of ―experts‖, with Nokia
relying on an affidavit of Mr. Patrik Hammaren and Oppo relying on
an affidavit of Mr. Ming Li. Neither has Oppo admitted the affidavit
of Patrik Hammaren, nor has Nokia admitted the affidavit of Ming Li.

52
S.M. Asif ibid
53
Parivar Seva Sansthan v. Dr. Veena Kalra, AIR 2000 Delhi 349
54
Vijay Gupta v. Ashok Kumar Gupta, AIR 2007 Delhi 166
55
Delhi Jal Board v. Surendra P. Malik, (104) 2003 DLT 151 (DB)
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For that matter, the competence and expertise of the deponents to the
said affidavits have also not been admitted by either side.

72. I do not see how any order can be passed on the basis of such
affidavits, which are not admitted by the opposite party. Expert
evidence, though given a slightly exalted status under Section 45 of
the Evidence Act, is otherwise relevant, only if it is tested in the
manner envisaged by the CPC and the Evidence Act. At a pre-trial
stage, therefore, I confess my hesitance in relying upon expert
evidence, which is not admitted by either party. One may refer, in this
context to the following passage from the judgment of the Division

Bench of the High Court of Allahabad in Balkrishna Das Agarwal v.
56
Radha Devi , which sets out clearly the status of expert evidence:
―27. In the words of Rogers, an expert in any science, art or
trade is one who by practice and observation has become
experienced therein. An expert, therefore, really means a person
who by reason of his training or experience is qualified to express
an opinion whereas an ordinary witness is not competent to do so.
His evidence is only an opinion evidence which is based on his
special skill or experience. In view of the language of S. 45, it is
necessary that before a person can be characterised as an expert,
it is necessary that there must be some material on the record to
show that he is one who is skilled in that particular science and is
possessed of peculiar knowledge concerning the same. He must
have made special study of the subject or acquired special
experience therein. Thus before the testimony of a witness becomes
admissible, his competency as an expert must be shown, may be, by
showing that he was possessed of necessary qualification or that he
has acquired special skill therein by experience. Apart from the
question that the report of a handwriting expert may be read in
evidence, what is necessary is that the expert should be subjected
to cross-examination because an expert like any other witness is
fallible and the real value of his evidence consists in the rightful
inferences which he draws from what he has himself observed and
not from what he merely surmises.

28. Unfortunately in the present case after the report of the
Handwriting Experts from either side had been submitted for
admission in evidence, a statement was made that their reports may
be read in evidence without formal proof. The question arises

56
1988 SCC OnLine All 868
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whether such a report can ipso facto become opinion evidence in
the case. It has been urged that even though the reports as a
document can be read in evidence but in the absence of the expert
appearing as a witness and being subjected to cross-examination,
his report alone cannot be treated as evidence much less an opinion
evidence. Apart from this even a reading of the report does not
disclose that the person who has given the report was really an
expert in this particular branch or that he had acquired necessary
skill by experience. The letter head on which the report is typed
alone will not prove that the person was an expert. There is thus no
material on the record to show that the persons who have submitted
their reports regarding, the disputed handwriting were qualified as
experts within the meaning of Section 45 of the Evidence Act. In a
situation like this, the reports were not at all admissible in
evidence and the learned trial Court was certainly in error in
placing reliance thereon. The experts' evidence is only a piece of
evidence and the weight to be given to it has to be judged along
with other evidence as evidence of this nature is ordinarily not
conclusive. Such evidence, therefore, cannot be taken as
substantive piece of evidence but is there to corroborate the other
evidence .‖
(Emphasis supplied)

73. Neither Nokia, nor Oppo can, therefore, at this stage, seek to
rely on the affidavits of their respective ―experts‖, to contest the case
of the other side . The affidavit can, nonetheless, be relied upon, even
at a prima facie stage, against the party who chooses to place it on
record, as a party cannot dispute its own evidence.

74. With that prefatory background, one may note, thus, the
material on which the parties before me rely, in support of their
respective stands on the present application:

Material relied upon by Mr. Gourab Banerjee, on behalf of
Nokia


(i) Paras 10 and 36 of Oppo‘s reply to IA 7700/2021, which
read thus:
―10. It is most humbly submitted that the averments of
the Plaintiff, in the application under reply, are completely
false. The Plaintiff has chosen to misrepresent, what it
terms to be the ― First FRAND License Agreement ‖, as an
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admission of the Defendants‘ requirement to take a license
from the Plaintiff for the suit patents.

However, this is not the case, as the Defendants are legally
entitled to challenge the essentiality and validity of the suit
patents and the said agreement cannot operate as a bar or
estoppel against the Defendants in this regard. However,
without prejudice to the Defendants‘ rights and contentions,
it is clarified that the defendants are and have always been
willing to take a FRAND license from the Plaintiff for the
true value of its portfolio, however, the Plaintiff has not
been able to substantiate the same, either during pre-suit
communications or even after instituting the present action.
The specific facts and relevant clauses pertaining to the
aforementioned agreement (hereinafter referred to as ―the
2018 Agreement‖) has been specified in the affidavit of Mr.
Ming Li which will be filed under sealed cover, subject to
the directions of this Hon‘ble Court to maintain
confidentiality of certain facts and information, which is in
the interest of both parties. Further, the validity and
essentiality of the suit patents have been disputed by the
Defendants in their Reply to I.A. No 7699 of 2021, which is
relied upon and not reproduced herein for the sake of
brevity.

*
36. In response to the averments contained in paragraph
12, it submitted that the Defendants are ready to take a
license for the Plaintiff‘s SEPs on FRAND terms, for the
true and correct value of the Plaintiff‘s portfolio. However,
as explained to the Plaintiff even during the course of the
pre-suit negotiations, the new licensing rate sought by the
Plaintiff is unreasonably higher than what was previously
agreed to, since it does not reflect the adjustments that are
required to be made on account of the expired patents and
since the Plaintiff has been unable to substantiate the value
of the 5G portfolio included in the offer. Further, the
Plaintiff‘s conduct throughout the course of the pre-suit
negotiations has not been in compliance of its FRAND
obligations, which is why both parties have been unable to
conclude a license agreement. Also, since the Plaintiff has
selected 3 suit patents from its portfolio to assert in the
present suit, any interim deposits sought ought to be
restricted to the said patents and since the suit patents are
neither valid nor essential it brings to question the
credibility of the Plaintiff‘s entire portfolio. Regardless, it is
clarified that any averments made with respect to non-suit
patents are completely irrelevant for the purposes of the
present lis . Reliance in this regard is placed on the
Preliminary Submissions & Objections of the present Reply
as well as on the Defendants Reply to I.A. No. 7699 of
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2021 the contents of which are not repeated herein for the
sake of brevity.‖

nd
(ii) para 1 of email dated 22 June 2021 from Nokia to
Oppo, which reads as under:
― #### ### ######## # ## ### #########
############ , ## #### #### ## #### #### # ####
# #
## ### ####### ## #### ### ####### ########
. # ## #
#### ##### ## #### ## ######## #### ##
### ## ## ### . ‘#
#### #### ####### ####### ####
# # ## #
######## ## #### ### #### ####### ####
#,
#### ##### ## ######## ### ### #######
####### ### ## ### ### ### ######## ####
#### #, ### ## #### # ### ######## # #### #### #
## #### ‘# ######## ### #### # ######## ### ### ,
## ### #### ### ### # #### # ### .‖


th
(iii) e-mail dated 27 June 2021 from Nokia to Oppo which
reads as under:
―( #### #)
#### #### ### #### # #### ## #### # #### #
#### #### #,
#### # ## #### # ### #### # #### # #### # #### #
#### # #### # #### ## #### # ## #### # #### # ## ###
#### ## #### ###.

# #### # #### ## #### ## ## ### ## #### ##.
- #### # ### ### #### #### # #### . #### ###, #### #
#### #### ## ## ### #### ## #### ### ## # #### #
#### ### #### ### ## #### ### #### #### ### ###
#### # #### ### #### # #### ## ## ### #### ## ##
#### # #### ## ### #### #### ### ### #### # #### ##
###.
####

#### ####, # #### # #### #### #### #### ### #### #
# #
### #### ### #### #### ### ### #### #### ####
## # # ## #
#### #### ### #### #### #### ## ####
# ## #### ##
#### #### ### #### #### #### ###
# ## # # ## ### ## ####
#### #### #### #### #### ####
### ## ### # #‘# ## ## #
#### #### #### #### #### ####
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By:SUNIL SINGH NEGI
Signing Date:22.11.2022
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CS (COMM) 303/2021 Page 56 of 86

Neutral Citation Number : 2022/DHC/004935

# ### ####
### #### ### ### #### #### ### #### ##
#. # ## # # # ###
#### ####‘ ### #### #### #### ####
# ## # # # ##
#### ## #### #### #### #### #### ####
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#### # ### #### ### #### # #### ### #### ##
#### # #### #### #.

#### #### #### # #### # #### ### #### # ## ### ####
#### # #### ## #### # #### # #### # #### ##. ####
#### ## #### #### ### #### #- #### ### #### # #### ##
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## #### # #### ## #### # ## # #, ## ## # ## # ## ###
#### # ## #### ## ### #### #‘# #### ## #### ## ###
####. #### #### ### #### ## # # #### # ## #### ##
#### #### # #### # #### ## #### # #### ## #### ##
# #. # , ### ## #
#### #### #### #### #### #### ###
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#### #### #### #### ### #### ####
### ### ###, # # ### ####.
#### #### #### ####

- # # ## ## ## , #
#### ## #### #### #### #### ####
### # #### ## # ###
#### #### #### #### #### ####
#### ## # ## ### #### ## ###, #
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# #### # # # ##
#### #### #### ####‘ #### #### ####
#### # #### # ### # #### #### # ### #### ### #### , #
#### #### ### #### ### ## #### ### #### #### ###
### ### #### #### #### ### ### ### ## ### . #
#### ## #### ### ### #### ####.

#### # ## ### #### # #### # #### # #### , # #### ###
#### ### #### #### #### ### ### ### #### ###.

#### ##‖
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th
(iv) counter-offers for (a) US$ *, made on 9 April
th
2021, (b) US$ * made on 24 May 2021 and (b) US$
th
* made on 11 June 2021.

th
(v) counter-offer of US$ * made vide email dated 5
December 2021, which reads as under:
―Dear Sir,

We wish to clarify that our client confirms to do the
following:

*

Our client however, wishes to clarify that the above
undertaking is being given in the light of applicable
German Laws and is in no manner to be construed as an
admission of any of Nokia‘s claims made in any of the
multiple jurisdictions that it has chosen to make a claim of
infringement— i.e., UK, India, France and Spain.

*

However, since our client is required to submit a bank
guarantee before the German Court on the value of the
counter offer given for the SEP holder‘s global portfolio,
our client wished to inform this fact to the Delhi High
Court, as it renders I.A. No. 7700/2021 infructuous and our
client did not wish to waste the Hon‘ble Court‘s precious
time on this issue.

Accordingly, it is clarified that our client is not willing to
make any bank guarantees in India, in the light of legal
position under Indian laws.

Best Regards,
Julien‖

Documents and pleadings relied upon by Mr. Saikrishna
Rajagopal


(i) Prayers (i) and (vii) in para 116 of the plaint filed by
Nokia, which read thus:
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―(i) A decree of permanent injunction restraining the
Defendants, their associate and group companies, their
directors, employees, officers, servants, agents and all
others acting for and on their behalf from using, making,
selling, distributing, advertising, exporting, importing and
offering for sale, or in any other manner, directly or
indirectly, dealing in its Oppo A74 5G, Realme X50 Pro
5G, Oppo A53, OnePlus 9 Pro, OnePlus 9R, Realme Narzo
1 0A and Realme X7 Pro 5G or in any product that
infringes the subject matter of Indian patents no. 286352,
269929 and 300066, or any of them, or any other patents as
the Plaintiff may add in the present proceedings;

*
(vii) A decree for damages, both compensatory and
punitive, as may be ascertained in the present suit to be paid
by the Defendants on account of infringement of the Indian
patents no. 286352, 269929 and 300066, or any of them, or
any other patents as the Plaintiff may add in the present
proceedings, and their mala fide conduct, payable to the
Plaintiff;‖

(ii) Para 44 of the rejoinder filed by Nokia to Oppo‘s reply to
the present application, which reads thus:
―44. There is nothing in the present application which
indicates that the Plaintiff seeks to pre-empt or estop the
Defendants from challenging the validity, essentiality and
infringement of the Plaintiff‘s suit patents, in the interim or
the final stages. In fact, it is a matter of record that the
Defendants in their reply to the Plaintiff‘s interim
injunction application have already taken detailed grounds
of invalidity, non-essentiality and non-infringement of the
suit patents, which application would be adjudicated upon
by this Hon‘ble Court in due course. The present
application has been filed only to avoid grave prejudice
which may be caused to the Plaintiff should it remain
unsecured for the pendency of the injunction application,
while the Defendants continue reaping the rewards of its
nonchalant misuse of the Plaintiff‘s intellectual property.‖

(iii) para 28 of the said rejoinder of Nokia to Oppo‘s reply to
the present application, reads thus:
―28. In fact, ____________________ and they are now
looking to mislead this Hon‘ble Court and to capitalize on
the present litigation by using it as a route to get access to
the Plaintiff‘s confidential third party licenses, many of
which contain confidential commercial information of the
direct competitors of the Defendants, which the Defendants
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is likely to use to gain an unfair advantage.‖

rd
(iv) notice of production dated 23 August 2021, from Oppo
to Nokia, requiring Nokia to provide its third party licence
agreements.

nd
(v) para 24 of affidavit dated 2 September 2021 of Patrik
Hammaren,

st
(vi) the first FRAND license agreement dated 1 July 2018 to
the extent it covers thousands of patents, which have not been
asserted in the present suit,

th
(vii) e-mail dated 26 June 2021 from Nokia to Oppo which
reads thus:


― #### #### #,

#### # ### ## #### ### ### #### # #### ###
#### # #### # #### #.

## #### # #### , #### # ## #### ### ## #### # # ####
#### ## ## #### ## # #### #### ## ### #### # #### ###
## ### #### # #### ## ### #### #- #### #### ##
#### ###. ## #### #### ## ### ## ## #### ###:

 ### #### ### #### # ## #### ### # #### # #### #
#### #### ## #### ### ### #### ### ## #### ####
# ## ### ## ###. ##
#### #### #### #### ### ####
# ## ## #### # ##
### #### #### #### #### ####
#### ## ### ####, # ##
#### ### #### #### ####
# # # #
#### #### #### ### ### #### ## ## ##
#### ## #### ### #### # #### , ### # # # # # ## #
#### ## #### ## #### # #### ### #### ###
#### # #### ## #### # ### ## ## #### ####
 ### #### # #### ## #### ## #### ### ### ## ###
### ## #### #### ### #### ##.

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Neutral Citation Number : 2022/DHC/004935

 # ### #
## ## #### #### ## #### ## ##
# , ### #
#### #### ### #### #### ## #### ###
## # ## # ####
#### ## #### #### #### ####
# ## # #.
#### #### ### #### #### ###
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#### #### # ### #### ### #### ####. ###
#### # #### ## #### #### #### # #### ## ## ###
#### ## ## ### ### ## #### #### #### ##
#### # #### #### ##. ### #### # #### ## #### ###
#### ## #### ### ## #### #### ###. #### ## ###
#### #### ## ### #### # #### ## #### #### ####
#### # #### #### ### #### #### ## ### ####
#### # ## #### # ### #### #### # #### #### # ##
#### # #### #### .

 #### ### #### # ## #### # #### # #### # ## ###
#### ## #### ## #### # #### / #### # #### ## #### #
### #### .

 #### ### #### # #### # #### ## #### ( #### ###
### #### ###) ## #### # ## #### ### ## ### #### #
### #### # ## ## ## ## # ### # # ## ### # ####
### #### # ( ### #### ### #### ## #### ## ## #
#### # #### ).

# ### # #### #### #### #### ### #### #### ## ## ##
#### # ### #### ## #### # #### # #### ###
#### # #### ## ### ### ## #### #### , #### # #### ###
### .
#### #### ###

# #### # ## #### #### ## ### ### #### ### ####
#### ##### ## #### #### ### ## #### #### ### ####
### # # ### ###
#### ### #### ## ## #### ## ### ####
## # . # #
#### #### #### #### #### #### ### ## ##
# ## # # # ###
#### ### #### #### #### ### #### ####
.
####

## # # # #. #
#### #### ### ### #### #### #### ####
### ## # ### .
#### #### #### #### ####

##,
#### ####

#‖
####

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Signing Date:22.11.2022
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th
(viii) e-mail dated 27 June 2021 from Oppo to Nokia already
reproduced supra ,

st
(ix) the following passage from e-mail dated 1 July 2021
from Oppo to Nokia, which suggested decision, by a suitable
Court of the FRAND rate of royalty or a solution of interim
payments as a professional way to resolve the dispute:

― #### ###, # #### # #### ## #### ### #### ## ###
#### ## #### #### #### ## ## #### #‘# #### ##
#### # #### ### #### #### #### ### #### # #### #
#### ### #### ####.

- #### # #### ## # #### #### . ## #### # #### #### #
#### ## # #### #### ## ### ## ####### #### ## #
#### #### #### ## # #### ##### ###, ## ### #### ##
### #########, ### ## ##### ############ #### ######
#####. #### # ## #### ### #### ### #### ####,
#### ###### ## #### #### #### ##### #### #######
##### ### ## # ####### ## ###### #####‘# ####### ##
###### #####‘# #### ####### ## ###### # ####### ###
######## #######, ## #### ####### ## ######## ####
########### ## ########## #### ### ##### ########.
## ###### #### ##### ## ########## ## #### ### ####
### #### ### ##### ### #### ####### ## ##### ####
####### ## ### ######## ## #### ######. #######
######### ##### ####, #### ### ### ######## ###
########## ######## ######### ##### ### ##### ##
########. ## ###### ## ### #### #### ### ##### ####
## ####### ### ######### ### ## ##### ### ## ### ##
### ### ####### ### ########### #### ## ###

- ########### . ##### ######## ####### ########### ##
## ######## ### ### ######### ### ####### ## ###
######### ## ###### ## ### #########. ## ########
########### ## ####, ##### ### ############ ###
####### ##### ####### ## ### ##### ### #### #
########## ## ######### ######## ######## ###
####### #######. ## ## ########### ### #### ###
######## #### ######## ####### ##########
#########. ‖

(x) paras 21 to 23 of the rejoinder filed by Nokia to the reply
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of Oppo to the present application, which read thus:

―21-23. The contents of the present paragraph are denied
as being incorrect and misleading. It is denied that the
Plaintiff‘s request for payment of security is without any
basis or that it is grossly disproportionate to its claim in the
present suit. It is submitted that while the Plaintiff has
asserted three of its SEPs in the present suit, they are
representative of its portfolio, which practice is well
recognized in such matters in many jurisdictions. It is also
submitted that the use of even one patent of the Plaintiff
requires the Defendants to take a license from the Plaintiff.
The license offered by the Plaintiff to the Defendants is a
portfolio license for all its SEPs, which industry practice
even as per decisions cited by the Defendants themselves,
has been recognized as being FRAND. Moreover, the
deposit sought in the present application is to secure the
Plaintiff during the time that the Defendants remain
unlicensed as well as unrestrained by an order in the interim
injunction application. In fact, the security sought in the
present application is entirely proportionate to the potential
harm to the interests of the Plaintiff, as the loss of licensing
income of the Plaintiff is in respect of the entire license fee
for its portfolio of SEPs in India and not with respect to a
license for just the three suit patents. Accordingly, it is not
correct to state that the security sought by the Plaintiff must
also be limited to only the suit patents, just because the
consequential relief of damages which has been sought in
the Plaint has been limited to the suit patents. The use of
representative patents cannot be objected to by the Plaintiff,
since even the Defendants while executing the First
FRAND License Agreement ______ It is denied that the
Plaintiff is trying to coerce the Defendants in India to
submit interim payment or deposits at unjustified or
excessive rates. As explained above, the loss of licensing
income which would be suffered by the Plaintiff is in
respect of the entire license fee for its portfolio of SEPs and
not with respect to a license for just the three suit patents.
Accordingly, it is not correct to state that the security
sought by the Plaintiff or the rates applied for the
calculation thereof must be limited to only the suit patents.
It should be noted that the Plaintiff is only seeking security
with respect to its portfolio for the Defendants‘ sales in
India. It is also not correct to state that the Plaintiff has tried
to conceal from the Defendants the suits which were filed
against the Defendants in multiple countries, insofar as the
Plaintiff has been proactive in informing the Defendants of
all related actions filed internationally. In fact, as a pure
courtesy, _______________, The Defendants‘ reliance on
the decision of this Hon‘ble Court dated 3rd May 2021 in
Signature Not Verified
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By:SUNIL SINGH NEGI
Signing Date:22.11.2022
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CS (COMM) 303/2021 Page 63 of 86

Neutral Citation Number : 2022/DHC/004935

InterDigital Technology Corporation & Ors. Vs. Xiaomi
Corporation & Ors., CS (COMM) No. 295/2020 is grossly
misplaced insofar as in said case, this Hon‘ble Court sought
to distinguish the relief sought in the Indian suit versus the
relief of global rate determination sought in China.
Therefore, the context is extremely relevant to appreciate
said decision, particularly in view of established precedent
which permits the use of representative patents to seek
security for the entire portfolio. Without prejudice to the
above, it is submitted that the paragraphs cited and relied
upon by the Defendants are merely obiter dicta , and not a
finding, and thus cannot act as a precedent for this Hon‘ble
Court even when deciding a similar issue. Reliance is
placed on the preliminary submissions.‖


75. Referring to the aforesaid pleadings and correspondences, and
at the cost of some repetition, the submissions of Mr. Banerjee,
learned Counsel for Nokia and of Mr. Saikrishna Rajagopal, learned
Counsel for Oppo may be enumerated as under:

Submissions of Mr. Gourab Banerjee, learned Senior Counsel
on behalf of Nokia

(i) Oppo, by entering into the first FRAND license
st
agreement dated 1 July 2018, had acknowledged the fact that it
was liable to pay royalty to Nokia for utilization of its SEPs
conforming to 2G, 3G and 4G standards.

(ii) Paras 10 and 36 of Oppo‘s reply to the present
application admitted the fact that Oppo had to take a licence
from Nokia for use of its SEPs.

nd th
(iii) The e-mails dated 22 June 2021 and 27 June 2021
from Oppo to Nokia proposed making of interim payments even
while Nokia and Oppo continued discussions to arrive at
mutually agreeable FRAND royalty payments.
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th
(iv) Oppo had made counter offers on 9 April 2021 for US$
th th
, 24 May2021 for US$ and 11 June 2021 for
US$ *, for obtaining a licence to use Nokia‘s global
portfolio of 2G, 3G, 4G and 5G SEPs.

th
(v) Oppo had, by its subsequent e-mail dated 5 December
2021, advanced a counter-offer of US$ *, without any
cross-licensing stipulation, for obtaining a licence to use
Nokia‘s SEP portfolio.

(vi) The situation could be analogized to that in which a
tenant disputed the landlord‘s claim for rent after having paid
rent in the past. In such circumstances, the Court could, by
invoking its jurisdiction under Order XXXIX Rule 10, Order
XII Rule 6 and Section 151 of the CPC direct interim payment
at all, by the tenant, of the rent paid in the past. For this
purpose, Nokia relies on Chandrakant Shankarrao
5 6 7.
Deshmukh , Sangeeta Prints and Sanjay Gupta

(vii) Admission of the need to execute a licence carries with it
an implicit admission of the necessity to pay royalty.

(viii) The test for deposit of money under Order XXXIX Rule
10 of the CPC was less rigorous than the test for obtaining a
judgment on admissions under Order XII Rule 6 of the CPC, for
which purpose, reliance has been placed on para 22 of the report
14 13
in Rajul Manoj Shah and the report in Augmont Gold

(paras 68 to 71).
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(ix) Directions for deposit under Order XXXIX Rule 10 could
be issued even where the quantum payable by the defendant to
the plaintiff was in dispute.

(x) There was no prior precedent in which, in a suit asserting
SEPs, no pro tem payment had been directed by this Court. For
this purpose, Nokia has referred to various interlocutory orders
passed by this Court in which pro tem payment was directed.

(xi) The plaint was not restricted to the three suit patents, but
covered the entire portfolio of 2G, 3G, 4G and 5G SEPs held by
Nokia. Reference to (IN ‘352), (IN ‘929) and (IN ‘066) was
only by way of example. Even if the claim in the suit was to be
read as restricted to the three patents mentioned therein, the
subject matter of the suit covered infringement of Nokia‘s entire
SEP portfolio.

Submissions of Mr. Saikrishna Rajagopal, learned Counsel on
behalf of Oppo

(i) The suit instituted by Nokia asserted only three patents,
namely, IN ‘352, IN ‘929 and IN ‘066. Nokia could not,
therefore, under Order XXXIX Rule 10 of the CPC, seek
interim deposit, by Oppo, for its entire SEP portfolio.

(ii) The counter offers made by Oppo to Nokia were only to
facilitate good faith negotiations between the parties in
accordance with FRAND principles.

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(iii) Such counter offers could not be regarded as admission
of any patent claims by Nokia, as they were always made
without prejudice to Oppo‘s right to challenge the essentiality
and validity of Nokia‘s SEPs.

(iv) Section 140(1)(iii)(d) of the Patents Act rendered terms
and conditions of any license which prevented the licensee from
challenging the validity of the patents, null and void. This
would include the right to challenge their validity on the ground
of essentiality, where the patents were allegedly SEPs.

nd
(v) Para 24 of the affidavit dated 2 September 2021 of
Patrik Hammaren admitted that some of the patents covered by
the first FRAND license agreement have expired.

(vi) The first FRAND license covered thousands of patents,
which have not even been asserted in the present suit.

(vii) The interim payments offered by Oppo after the first
FRAND license agreement had expired, was subject to Nokia
avoiding litigation, as a good faith gesture.

(viii) Nokia‘s submission that, after the expiry of the first
FRAND license agreement, Oppo had agreed to continue to
make interim payments on the same level, was incorrect. In
th
fact, Nokia had suggested, by its email dated 26 June 2021,
that interim payments be continued to be made by Oppo on the
same level, as envisaged by the first FRAND license agreement.
th
Oppo, by its response dated 27 June 2021, did not agree to the
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suggestion and, rather, suggested discussing the quantum of
interim deposit. After the expiry of the first FRAND license
agreement interim payments were proposed to evidence good
faith and in the interest of an amicable resolution of the dispute
between the parties.

(ix) The financial state of health of Oppo was not a relevant
consideration, under Order XXXIX Rule 10 of the CPC.

(x) The pro tem orders passed by this Court, on which Nokia
relies, were all consent orders, in lieu of ex parte ad interim
injunction.

Examination of rival contentions on merits

76. The decision of the UK Supreme Court of the United Kingdom
3
in Unwired Planet International Ltd v Huawei Technologies (UK) ,
which is arguably one of the most authoritative pronouncements,
world over, on SEPs and infringement thereof and the FRAND
licensing policy in that regard, explains the legal position thus:
―5. Telecommunications SSOs have been established in China,
Europe, India, Japan (two), South Korea and the United States. The
first telecommunications SSO was the European
Telecommunications Standards Institute (―ETSI‖), which is a
French association formed in 1988 and which has adopted an
intellectual property rights (―IPR‖) policy and contractual
framework governed by French law. ETSI is recognised as the
SSO in the European Union telecommunications sector. It has over
800 members from 66 countries across five continents. Its
purposes, as set out in article 2 of its Statutes (5 April 2017),
include the production of ―the technical standards which are
necessary to achieve a large unified European market for
telecommunications [etc]‖ and ―to contribute to world-wide
standardization‖ in that field. SSOs bring together industry
participants to evaluate technologies for inclusion in a new
standard. ETSI is the relevant SSO as the patents which are the
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subject of these appeals are the UK designations of European
patents (―UK patents‖) which have been declared to ETSI as
essential. The relevant standards in these appeals are
telecommunications standards for 2G (GSM), 3G (UMTS) and 4G
(LTE) telecommunications equipment and devices. The seven
SSOs have cooperated to form the 3rd Generation Platform
Partnership (3GPP) to develop and oversee those standards. ETSI
through its secretariat manages the process by which its members
contribute to the development of international standards.
Participants in SSOs have an incentive to put forward their
technology as a component of a proposed standard as inclusion in
the standard ensures a market for the technology. Alternative
technologies which are not included in a standard may well
disappear from the market. Participants also accept obligations to
declare IPRs which might potentially have an effect on the
implementation of standards developed by the SSOs.

6. Although it is necessary to examine the arrangements in
more detail below, it may be useful to give an overview of how
ETSI deals with ―Essential IPRs‖, a term which we equate with
SEPs, when it devises those standards. Owners of patented
inventions which might be used in a telecommunications industry
standard, which is under preparation, declare their patents to ETSI.
When considering whether to include a technology in a standard,
ETSI requires the patent owner to enter into an irrevocable
undertaking or contract with it to allow implementers of the
standard to obtain a licence to use the relevant patented technology
on fair, reasonable and non-discriminatory (―FRAND‖) terms. If
the declared patented invention is included in a standard and it is
not possible to make, sell, use or operate etc equipment or methods
which comply with the standard without infringing that IPR, it is
treated as an ―Essential IPR‖. The irrevocable undertaking to give
a licence on FRAND terms to implementers applies to any such
Essential IPRs. But ETSI is not under an obligation to check
whether patents declared to be essential are in fact essential. Nor
does ETSI make any binding judgment on the validity or status of
any such patents (ETSI Guide on IPRs (19 September 2013) (―the
Guidance‖) para 3.2.1). Those are matters for the relevant national
courts. ETSI leaves it to the relevant parties, if they so wish, to
resolve those questions by court proceedings or alternative dispute
resolution: the Guidance para 4.3.

7. The purpose of the ETSI IPR Policy is, first, to reduce the
risk that technology used in a standard is not available to
implementers through a patent owner‘s assertion of its exclusive
proprietary interest in the SEPs. It achieves this by requiring the
SEP owner to give the undertaking to license the technology on
FRAND terms. Secondly, its purpose is to enable SEP owners to
be fairly rewarded for the use of their SEPs in the implementation
of the standards. Achieving a fair balance between the interests of
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implementers and owners of SEPs is a central aim of the ETSI
contractual arrangements.

*

10. The policy statements which provide the internal context
include the objectives set out in clause 3 of the IPR Policy. They
include the statement in clause 3.1 that the IPR Policy:


―seeks to reduce the risk to ETSI, MEMBERS, and others
applying ETSI STANDARDS and TECHNICAL
SPECIFICATIONS, that investment in the preparation,
adoption and application of STANDARDS could be wasted
as a result of an ESSENTIAL IPR for a STANDARD or
TECHNICAL SPECIFICATION being unavailable.‖

That statement clearly reveals a policy of preventing the owner of
an Essential IPR from ―holding up‖ the implementation of the
standard. But that policy is to be balanced by the next sentence of
clause 3.1 which speaks of seeking a balance, when achieving that
objective, ―between the needs of standardization for public use in
the field of telecommunications and the rights of the owners of
IPRs.‖ The importance of protecting the rights of the owners of
IPRs is declared in the second policy objective (clause 3.2) in these
terms:

―IPR holders whether members of ETSI and their
AFFILIATES or third parties, should be adequately and
fairly rewarded for the use of their IPRs in the
implementation of STANDARDS and TECHNICAL
SPECIFICATIONS.‖

This objective seeks to address the mischief of ―holding out‖ by
which implementers, in the period during which the IPR Policy
requires SEP owners not to enforce their patent rights by seeking
injunctive relief, in the expectation that license terms will be
negotiated and agreed, might knowingly infringe the owner‘s
Essential IPRs by using the inventions in products which meet the
standard while failing to agree a license for their use on FRAND
terms, including fair, reasonable and non-discriminatory royalties
for their use. In circumstances where it may well be difficult for
the SEP owner to enforce its rights after the event, implementers
might use their economic strength to avoid paying anything to the
owner. They may unduly drag out the process of licence
negotiation and thereby put the owner to additional cost and
effectively force the owner to accept a lower royalty rate than is
fair.

11. Having looked at context, we turn to the operative clauses
of the IPR Policy. A member of ETSI is obliged to use its
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reasonable endeavours to inform ETSI in a timely manner of
Essential IPRs during the development of a standard or technical
specification. If a member submits a technical proposal for a
standard or technical specification it is obliged to inform ETSI of
its IPRs which might be essential (clause 4.1). Clause 4.3 confirms
that this obligation of disclosure applies to all existing and future
members of a ―patent family‖ and deems the obligation in respect
of them to be fulfilled if an ETSI member has provided details of
just one member of the patent family in a timely manner, while
also allowing it voluntarily to provide information to ETSI about
other members of that family. A ―patent family‖ is defined as ―all
the documents having at least one priority in common, including
the priority document(s) themselves‖ and ―documents‖ in this
context means ―patents, utility models, and applications therefor‖
(clause 15(13)). The patent family thus extends to patents relating
to the same invention applied for and obtained in several
jurisdictions. It shows an intention for the arrangement to apply
internationally. This is important because the undertaking to grant
a license under clause 6, to which we now turn, extends to all
present and future Essential IPRs in that patent family.

*
14. It appears from this brief review of the IPR Policy in its
context that the following conclusions may be reached. First, the
contractual modifications to the general law of patents are designed
to achieve a fair balance between the interests of SEP owners and
implementers, by giving implementers access to the technology
protected by SEPs and by giving the SEP owners fair rewards
through the license for the use of their monopoly rights. Secondly,
the SEP owner‘s undertaking, which the implementer can enforce,
to grant a license to an implementer on FRAND terms is a
contractual derogation from a SEP owner‘s right under the general
law to obtain an injunction to prevent infringement of its patent.
Thirdly, the obtaining of undertakings from SEP owners will often
occur at a time when the relevant standard is being devised and
before anyone may know (a) whether the patent in question is in
fact essential, or may become essential as the standard is
developed, in the sense that it would be impossible to implement
the standard without making use of the patent and (b) whether the
patent itself is valid. Fourthly, the only way in which an
implementer can avoid infringing a SEP when implementing a
standard and thereby exposing itself to the legal remedies available
to the SEP owner under the general law of the jurisdiction
governing the relevant patent rights is to request a licence from the
SEP owner, by enforcing that contractual obligation on the SEP
owner. Fifthly, subject only to an express reservation entered
pursuant to clause 6.2, the undertaking, which the SEP owner gives
on its own behalf and for its affiliates, extends to patents in the
same patent family as the declared SEP, giving the implementer
the right to obtain a license for the technology covering several
jurisdictions. Finally, the IPR Policy envisages that the SEP owner
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and the implementer will negotiate a license on FRAND terms. It
gives those parties the responsibility to resolve any disputes as to
the validity of particular patents by agreement or by recourse to
national courts for determination.‖


77. It becomes clear, from a reading of the aforesaid passages from
3
the pronouncement in Unwired Planet that, before arriving at a
decision that a defendant, accused of having infringed SEPs owned by
the plaintiff, is required to take a license from the plaintiff on payment
of royalty at a particular rate, the Court has to satisfy itself, in the first
instance, that (i) the asserted suit patent is in fact a SEP, (ii) the
technology used by the defendant infringes the SEP, (iii) the royalty
rate at which the plaintiff is willing to license its SEP is FRAND, and
(iv) the defendant is unwilling to take the license at the said FRAND
rate. Unless all these four factors coalesce, the Court cannot call upon
a defendant to pay any amount as royalty to the plaintiff for obtaining
a license from the plaintiff for exploiting the suit patents.

78. There is, both jurisprudentially and etymologically, a clear
distinction between an admission and an offer. Amounts offered
during negotiations unequivocally cannot be treated as admitted
unless, in the communications relating to such negotiations
unequivocal admission of liability is found to exist.

79. I have already emphasized, hereinbefore, the necessity of any
admission, on the basis of which an order for deposit under Order
XXXIX Rule 10 of the CPC can be passed, having to be clear,
unambiguous and unequivocal. It must not be hedged in by caveats or
conditions. It must amount to a clear admission of liability of the
defendant towards the plaintiff. Of course, the Court exercising
jurisdiction under Order XXXIX Rule 10 or, for that matter, Order XII
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Rule 6 of the CPC, would be within its authority in not allowing itself
to be misdirected by adroit drafting. If, therefore, properly read, the
communications or pleadings of the defendant on which the plaintiff
relies, make out a case of admission of liability by the defendant, the
Court can still proceed to pass an order under Order XXXIX Rule 10
of the CPC and Order XII Rule 6 of the CPC even if the defendant is
not willing, in so many words, to admit liability. To that extent, the
Court may be empowered to read between the lines of the assertions
of the defendant as contained in the material on which the plaintiff
relies. If, however, the defendant is clearly unwilling to admit the
liability, and seeks to contest it, the plaintiff cannot seek, as a matter
of right, an order for interim deposit under Order XXXIX Rule 10 of
the CPC.

80. It must also be remembered that Order XXXIX Rule 10 of the
CPC, unlike Order XXXVIII Rule 5 of the CPC, does not envisage
any direction for furnishing security. Order XXXVIII Rule 5 of the
CPC envisages a situation in which, where the defendant is likely to
fritter away its assets or place itself in a position in which any decree
that may finally be passed against it would become impossible to
execute, the Court could, in order to safeguard the plaintiff‘s interest,
direct furnishing, by the defendant, of an appropriate security. For
that, however, as per the judgment of the Supreme Court in U.O.I. v.
57
Raman Iron Foundry , it is necessary for the plaintiff to establish
not only the existence of liability on the part of the defendant, but also
a concerted effort on the defendant‘s part to frustrate the execution of
any decree which may come to be ultimately passed against it. Order
XXXVIII Rule 5 of the CPC, therefore, does not deal so much with

57
(1974) 2 SCC 231
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admission of liability on the part of the defendant as with the
unwholesome conduct of the defendant, in seeking to impede the due
process of administration of justice.

81. Nokia has not invoked Order XXXVIII Rule 5 of the CPC.
Nonetheless, it is necessary to refer to the said provision only because
of the reliance, by Nokia, on the allegedly precarious financial
condition of Oppo. Though Oppo has denied the allegation, of Nokia,
that it is in financial doldrums, Mr. Rajagopal is correct in his
contention that the financial status of Oppo is not a relevant
consideration for Order XXXIX Rule 10 of the CPC. To reiterate yet
again, Order XXXIX Rule 10 of the CPC does not envisage furnishing
of security. The provision is essentially aimed at a speedy resolution
of the dispute by directing a deposit of any amount which is admitted
by the defendant to be due and payable, by it, to the plaintiff.

82. In the backdrop of the above legal position, I am of the
considered opinion that Nokia has not been able to make out a case of
any direction to Oppo to make a deposit in terms of Order XXXIX
Rule 10 of the CPC for the following reasons:

(i) The first FRAND license agreement was on cross-
licensing basis. In order words, Oppo was required, under the
said agreement, to pay royalty, to Nokia, on the terms as set out
in the agreement, subject to Nokia paying, reciprocally, royalty
to Oppo for use of Oppo‘s SEPs. The agreement being, as Mr.
Rajagopal correctly phrased it, not a one way street, it is not
possible for this Court to rely on the said agreement as a basis
to direct deposit by Oppo of any amount in terms of Order
XXXIX Rule 10 of the CPC. I may note, in this context, that,
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in the present application, Nokia does not even visualize, much
less suggest, any cross-licensing arrangement; it merely seeks a
unilateral deposit by Oppo.

(ii) The e-mails exchanged between Oppo and Nokia, too, do
not disclose any unequivocal admission, on Oppo‘s part, of any
specific liability, for being permitted to exploit Nokia‘s SEP
nd
portfolio. The email dated 22 June 2021 from Oppo to Nokia,
even while conveying Oppo‘s willingness to renew the first
FRAND license agreement with Nokia, clearly indicated that
Oppo had its reservations regarding the rate of royalty sought
by Nokia being FRAND. It is clearly stated, in the said
communication, that, despite Oppo‘s willingness ―the gap
relating royalty fee now is too big‖. An agreement, at the end of
the day, is an agreement, and no more. Unless the agreement
spells out, in express terms, admission of liability, no such
inference can flow from the mere fact that the agreement was
executed. Where stakes are huge, parties often choose to arrive
at agreed terms, which cannot be read as admission of liability.
nd
Para 3 of the communication dated 22 June 2021, in fact, goes
on to convey the willingness of Oppo to make interim payments
st
to Nokia w.e.f. 1 July 2021, subject to actual license fee
payable being determined pursuant to further negotiations .
Para 3 of the communication which is of substantial
significance and reads thus:
―3. I have said that Oppo as a willing licensee, still will
try its best to facilitate the conversation and would like to
make a license deal with Nokia soon. In order to continue
the partnership of two parties, Oppo is willing to pay a
certain amount to Nokia annually as interim payment from
July 1, 2021 (Vincent can discuss with Susana about
specific payments). However, the actual licensee fee shall
be subject to the result of our further negotiation . Nokia
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need to refund the excessive payments to Oppo if the actual
licensee fee is less than our interim payments, and vice
versa.”

nd
(iii) From para 3 of the communication dated 22 June 2021,
it becomes clear that (a) Oppo was only willing to pay a
―certain amount‖ to Nokia annually as interim payment, (b) the
amount that Oppo would thus pay to Nokia had to be
determined after discussion between the representatives of
Oppo and Nokia, (c) the actual license fee payable by Oppo to
Nokia, if any, would be subject to further negotiations and (d)
in the event that actual license fee was different from the
amount of interim payment that Oppo would pay Nokia, the
differential would have to be paid or refunded, as the case
would be.

(iv) Even thereafter, the communication stated that, if the
mechanics of the proposals as suggested therein were agreeable
to Nokia, the global royalty rate could be fixed by referring the
matter to the Chinese Courts.

th
(v) Referring, next, to the email dated 26 June 2021 from
Nokia to Oppo, the email opens with the acknowledgement of
the fact that there was a ―disagreement on the valuation of
Nokia-Oppo patent license‖, between Nokia and Oppo. To
resolve this disagreement, Nokia suggested referring the dispute
to a third party mediator, with whose support, the party may
―agree on financial terms in the renewal of the patent license
agreement‖. In the event that no agreement could be arrived at
with the intervention of the mediator, the email envisaged
referring the dispute to an international Arbitral Tribunal,
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whose outcome would be binding on both parties. During the
pendency of such arbitral proceedings, Nokia suggested that
Oppo continue to make quarterly interim payments, as were
st
being made under the first FRAND agreement w.e.f. 1 July
2021. The email also suggested that the representatives of the
parties meet to finalize the terms of the resolution. By
following this protocol, the email expressed the hope that the
parties would be able to reach at an amicable resolution of the
disputes. Oppo‘s consent to the suggestion was, therefore,
th
sought. Oppo‘s response to Nokia on the very next day, i.e. 27
June 2021, expressed misgivings regarding the possibility of the
dispute being resolved by mediation or arbitration. Oppo
expressed doubts as to whether a mediator or an arbitrator
would be able to evaluate the reasonability of the royalty fee
subject to payment of which Nokia was seeking to license its
5G patent portfolio. Rather, suggested the email, bilateral
discussions between Nokia and Oppo would possibly be more
productive. The email also conveyed Oppo‘s impression that
the cross-license structure had to be followed, to arrive at a
viable agreement, and that each party would have to offer a fee
for exploiting the other parties‘ patents. Nokia was called upon,
by the e-mail, to ―recognize Oppo patent portfolio real value not
ignoring Oppo patent portfolio directly‖.

st
(vi) Oppo again wrote to Nokia on 1 July 2021. The
communication reveals that Oppo had given an offer for annual
payment for exploitation of Nokia‘s SEP of less than US$
* which Nokia characterized as ―unreasonable‖.
Expressing dismay at this stand of Nokia, Oppo once again
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reiterated its suggestion, in the said email, that the FRAND rate
at which Nokia could license its portfolio, or a solution for
interim payments, could be decided by a Court. In this context,
th th
it is also relevant to refer to emails dated 17 June 2021, 18
th
June 2021 and 28 June 2021 cited in para 33 ( supra ), as they
evince the refusal of Oppo to accept royalty rates proposed by
Nokia as FRAND during pre-suit communications.

th st th
(vii) The emails dated 7 February 2021, 1 March 2021, 19
th th th st
March 2021, 9 April 2021, 29 April 2021, 5 May 2021, 1
th
July 2021 and 20 February 2021, to which reference has been
made in para 33 ( supra ) indicate that the confabulations
between Nokia and Oppo did not even include all the patents
forming subject matter of the present suit, inasmuch as certain
designated patents including IN ‗066 were, by agreement,
excluded from discussions.

(viii) These communications also indicate that Oppo was
contesting, even in its correspondences with Nokia, the very
essentiality and validity of 2G, 3G and 4G patent portfolio of
Nokia.

(ix) These communications, therefore, clearly indicate that (a)
the figures, which were being exchanged between Nokia and
Oppo, were in the nature of offers and counter offers, (b) Oppo
was not willing to agree to any interim payments, or even any
royalty payments to Nokia, except on cross-licensing basis, (c)
there was disagreement between Nokia and Oppo even
regarding the scope of the first FRAND license agreement and
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(d) any interim payment payable by Oppo to Nokia, even if a
figure in that regard were ultimately to be arrived at, would be
without prejudice to the royalty rate, if any, which would
ultimately be found to be payable and subject to adjustment
from such royalty, positively or negatively.

(x) Neither Nokia nor Oppo disputes the fact that the
question of whether the royalty rate proposed by an SEP holder
is, or is not, FRAND, would require examination of license
agreements between the SEP holder and third party. No such
license agreements have been placed on record. In any event,
the decision of whether, on the basis of such license
agreements, the proposed royalty rates are, or are not, FRAND,
is an intricate and evolved exercise which cannot be done by the
Court while exercising jurisdiction under Order XXXIX Rule
10 of the CPC.

th
(xi) The email dated 5 December 2021, on which Nokia
places special reliance seems, in my opinion, to drive the final
nail in the coffin of Nokia, insofar as the present application
under Order XXXIX Rule 10 of the CPC is concerned. This e-
mail indicates that
(a) Oppo suggested an amount, in the e-mail, merely
by way of a counter-offer, which was rejected by Nokia,
(b) the undertaking by Nokia to deposit the said
amount in the German court was in view of the laws
applicable in Germany,
(c) offers made by Oppo were not to be construed, in
any manner, as admissions of Nokia‘s claims in India,
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(d) Oppo continued to assert that no deposit could be
directed to be made by it in the present application, as
(i) there was no admission by Oppo of any
liability towards Nokia and
(ii) Oppo retained the right to contest the
essentiality and validity of the patents asserted by
Nokia.

83. The issue of whether there exists, or does not exist, any
―admission‖ of monies due to the plaintiff, by the defendant, so as to
justify directing deposit of such amounts under Order XXXIX Rule
10, cannot be decided by isolated references to one document or the
other. This is, in fact, a classic case to understand the working of the
provision where there are protracted and high-level confabulations
between the parties regarding the possibility at arriving at mutually
acceptable terms. While applying Order XXXIX Rule 10 to such a
case, the Court must bear, in mind two pristine considerations. The
entire body of communications and correspondences is like an
intricate painting, with a veritable chiaroscuro of light and dark. The
communications and exchanges between the parties have to be seen as
a whole. The Court cannot, therefore, pick out one communication, or
another, from the entire body of communications, to hold that there is
an admission of liability. What has to be seen is whether, seen as a
whole, such an admission of liability, by either party to the other,
exists. The second is that such admission of liability must be clear,
unequivocal, and uncorseted by any caveats or conditions. It must
divest the opposite party of the liability to prove the fact. For such
admission to exist, ordinarily, in a case of SEP Frand infringement
litigation, there must be unequivocal admission of (i) the essentiality
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and validity of the suit patents, i.e. that they are, in fact, SEPs (which
would include, by its very nature, admission that, without utilizing the
plaintiff‘s SEPs, the defendants‘ devices would not function as they
should, i.e. the aspect of ―essentiality‖), (ii) the fact of utilization, of
the said SEPs by the defendant, (iii) the fact that such utilization,
absent any payment of royalty, would amount to infringement and (iv)
that the royalty rate proposed by the plaintiff was FRAND.

84. By no stretch of imagination can it be said that these admissions
are forthcoming from Oppo‘s communications to Nokia, or even from
the first FRAND licence agreement. There cannot be said to emerge,
from the entire slew of correspondence, any unconditional
acknowledgment, by Oppo, that Nokia‘s patents were SEPs or that
there was a legal liability on Oppo to pay royalty at any rate to Nokia.
There is no unequivocal admission , as would meet the settled
standards of Order XXXIX Rule 10, or even of Order XII Rule 6 of
the CPC, as would justify grant of the prayers of Nokia in the instant
application.

85. The entire application is, clearly, fundamentally misconceived.
The first FRAND Agreement has admittedly expired by efflux of
time. The Agreement was, moreover, on counter-licensing basis and
did not, therefore, indicate any admission, by Oppo, of any liability
towards Nokia, in the absence of a corresponding liability of Nokia
towards Oppo. In any event, the amounts fixed under a reciprocal
agreement can hardly constitute admission of any kind of liability by
either party to the other. This is apparent even from the conduct of the
parties, as they continued to remain in mutual negotiation for fixing
the terms for entering into a fresh FRAND Agreement, which never
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nd
crystallized. Patrick Hammaren, in para 24 of his affidavit dated 2
September 2021 acknowledged that some of the patents covered by
the first FRAND Licensing Agreement had expired. The patent
portfolio of Nokia that Oppo now exploits – assuming the allegation
of Nokia to that effect to be correct – is, therefore, not the same as the
portfolio covered by the first FRAND Licensing Agreement. There is,
in fact, absolutely nothing forthcoming, on record, on the basis of
which this Court could, in exercise of the jurisdiction vested in it by
Order XXXIX Rule 10 of the CPC, hold that any amount stood
admitted by Oppo, as payable to Nokia, against the claim of Nokia in
the present suit, the deposit of which could be directed under the said
provision.


86. Amounts ―offered‖ can never constitute the basis for an order
under Order XXXIX Rule 10, unless, with the offer, there is an

unequivocal admission of liability. Close to a century ago, the
High Court of Allahabad had, in Shibcharan Das v. Gulabchand
58
Chhotey Lal , observed as under:

Dealing with the jurisprudential contours of an ―offer‖, the Supreme

58
AIR 1936 All 157
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59
Court, in Consolidated Coffee Estate v. Workmen , held thus:

possible agreement or settlement, cannot, therefore, in the absence of
any unequivocal evidence of consensus ad idem , constitute the basis
for a direction for deposit under Order XXXIX Rule 10 of the CPC.
Barring offers and counter-offers – in fact, counter-offers by Oppo to
offers by Nokia – there is, really, no peg on which Nokia can seek to
hang its case in the present application, as would bear its weight. The
contention of Nokia that Oppo should ―at least‖ be directed to deposit
US$ *, is alien to Order XXXIX Rule 10. The Court cannot,
under the said provision, direct a party to at least deposit a particular

59
(1970) 2 LLJ 576 (SC)
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amount. If there is an admission, by either party, of its liability to the
other, that amount can be directed to be deposited. In the absence of
any such admission, the application must inexorably fail.

87. In the light of the above, I do not deem it necessary to burden
this decision with any further discussion on the dynamics of the
proposals and counter proposals between Nokia and Oppo for two
reasons. The first is that the Court in the present case is seized only
with the application under Order XXXIX Rule 10 of the CPC, which
requires a clear, categorical and unequivocal admission that the
defendant is holding monies of the plaintiff or that certain monies are
due from the defendant to the plaintiff. For the reasons already
elucidated hereinabove, no such unequivocal admission of liability
can be said to exist in the present case. Though there may be
substance even in the contention of Mr. Rajagopal that the present suit
is essentially restricted to three patents, I do not deem it necessary to
return any categorical finding in that regard, as it is not necessary, in
my opinion, to do so. Suffice it to state, that even if the present plaint
were to be considered as encompassing the entire SEP portfolio of
Nokia, no case for directing interim payment under Order XXXIX
Rule 10 of the CPC can be said to exist. The first FRAND license
agreement has, admittedly, expired. There has been no consensus, ad
idem , between Nokia and Oppo on the terms at which, the agreement
is to be extended or continued further. Oppo has, in its
communications, clearly stated that it had reservations regarding the
reasonability of the terms at which Nokia was seeking to grant a
license to Oppo to exploit its patent portfolio and as to whether they
were actually FRAND. Oppo has, at all times, reserved its right to
question the essentiality of the suit patents, as also the liability of
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Oppo to pay royalty to Nokia for the exploitation thereof, at any rate.

88. Besides, and secondly, in the written statement, filed by way of
response to the plaint instituted by Nokia, Oppo has contested Nokia‘s
case at all levels. It has disputed Nokia‘s contention that the suit
patents are SEPs, as also that it was exploiting the said suit patents and
that the royalty rate at which Nokia was willing to permit such
exploitation were FRAND.

89. These are all matters which require trial and on which, in the
absence of a trial, it would be hazardous to venture even a prima facie
opinion, as the present application would require this Court to return.
I am unable to glean, from the material on which Nokia has sought to
place reliance, any admission of liability of Oppo‘s part, as would be
sufficient to justify an order under Order XXXIX Rule 10 of the CPC.
The offers and counter offers between Nokia and Oppo are no more
than what they purport to be, i.e. offers and counter offers. In its
th
email dated 5 December 2021, Oppo has laid to rest any impression
that Nokia may have had, to the effect, by extending such offers or
counter offers, Oppo was admitting its liability to take a license from
Nokia for operationalizing its devices.

Conclusion

90. For the aforesaid reasons, I am not convinced that Nokia has
been able to make out a case for issuance of a direction to Oppo,
under Order XXXIX Rule 10 of the CPC, to make any deposit, at this
stage of the proceedings.

91. I.A. 7700/2021 filed by Nokia under Order XXXIX Rule 10 of
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the CPC is accordingly dismissed.

92. I hasten to clarify that the present order merely adjudicates on
Nokia‘s application under Order XXXIX Rule 10 of the CPC and on
the basis of the material available and forthcoming on record till this
point of time. The observations and findings in this judgment are to
be read as only intended for the said purpose, and are not to be read as
an expression of opinion, even tentative regarding the rival claims of
the parties before me for any other purpose.

93. The application accordingly stands dismissed with no order as
to costs.

C.HARI SHANKAR, J
NOVEMBER 17, 2022

kr/rb/ dsn
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