The Delhi High Court in the case Freebit AS v. Exotic Mile Private Limited observed and has dismissed an application filed for interim injunction by leading supplier of in-ear products ‘Freebit AS’
The court in the case observed that it had suppressed material facts and the suit patent was vulnerable to revocation.
The bench headed by Justice Prathiba M Singh in the case observed and has explicated that it being necessary to the extent possible, for a plaint to include details of corresponding foreign patent applications, as well as information which relates to any orders passed by a Court or Tribunal concerning the same or substantially similar invention as asserted in the suit.
The court also referred to the Supreme Court decision in the case Arunima Baruah v. Union of India to opine that the principle that he who comes into equity must come with clean hands is relevant to the patent infringement and a plaintiff’s failure to disclose revocations or invalidations of corresponding foreign patents has material bearing on the case.
In the present case, the application was filed by Freebit wherein seeking injunction in respect to its ‘Improved Earpiece’. It has also been designed that as per the claim, the -Shape earphone interface and had licensees which include Boat, JBL, Skullhandy, Harman, etc. which paid royalties for its patent portfolio. Thus, the suit patent was filed in India, claiming priority from a Norwegian Patent Application, and disclosed an ear unit designed for stable and comfortable attachment to the ear. It was granted in 2016.
It has also been countered by the defendant that Freebit had misrepresented and suppressed material facts, inasmuch as corresponding foreign patents had been invalidated or refused in several jurisdictions.
It has also been challenged before the court that validity of the suit patent based on decisions of the corresponding foreign patents.
The court in the case obserevd and has found that in some countries where the suit patent had either been revoked, refused, abandoned, or lapsed, the status had been shown by Freebit as either pending or granted.
It was held before the court that here was a gross suppression and misrepresentation of material facts by Freebit, which could have a bearing on the case.
The court noted that that the data was incorrect as a corresponding Japanese patent had been refused a year before the filing of the Form-3 data.
The bench of Justice Singh stated that the duty of disclosure upon a plaintiff seeking interim relief in IP suits is not limited to facts that bolster its case; rather, it extends to all information that would aid in fair adjudication of the dispute.
The court in the case observed that the duty of disclosure encompasses not only the sub mission of all documents pertinent to the current litigation but also an obligation to inform the Court of any previous litigations between the parties, any previous litigations concerning the suit patent, along with their respective outcomes.
The court in the case observed and has also considered two decisions which impinged upon the validity of the suit patent.
The court stated that these judgements could not have been held back by Freebit and not filed on record.
The court in the case observed and is of the view that it could not be ignored, thus, the court imposed a cost of Rs.5 lakhs on Freebit.
The counsel, Advocates Shwetasree Majumder, Tanya Varma, Devyani Nath, and Prithvi Gulati appeared for plaintiff (Freebit).
The counsel, Advocates Gaurav Miglani, Tarun Gandhi, Davesh Vashishtha, Sharabh Srivastav, Mallika Chadha, and Nanki Arneja represented the defendant (Exotic Mile).
