Isabella Mariam

The High Court of Delhi Single Bench of Justice Amit Bansal held that the plaintiffs had failed to establish a prima facie case of patent infringement and denied their applications for interim injunction against the defendant's mobile devices. The Court declined to restrain the defendant from manufacturing, importing, and selling mobile devices allegedly incorporating features of the plaintiffs' patented technology. The Court also rejected the plaintiffs' claim that dependent claims of their patent were infringed and found no credible evidence to support immediate relief. While denying the interim relief, the Court directed the defendant to maintain accounts of the impugned devices and file a statement of accounts on a half-yearly basis.

The Court concluded that the plaintiffs could be compensated by damages if successful at final adjudication and noted that the defendant had been selling the products in India since 2014. The Court recorded that there was no material to suggest that the defendant would be unable to satisfy any monetary award in the future. Given the plaintiffs’ failure to demonstrate infringement of essential patent features and the unexplained delay in instituting the suit, the applications for interim injunction were dismissed.

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The plaintiffs initiated the present suit seeking a permanent injunction restraining the defendant from infringing their registered Indian Patent No. 244963 titled "A Communication Device Finder System." The plaintiffs also sought ancillary reliefs. The patent was filed on 17 October 2006 and granted on 28 December 2010. It is valid until 17 October 2026. The suit patent was assigned from Plaintiff No.2, the inventor, to Plaintiff No.1 by way of an assignment deed dated 29 April 2021.

According to the plaintiffs, the invention provides a technology solution to locate lost or stolen communication devices independently of law enforcement assistance. The plaintiff-inventor began developing the invention in 2004 upon identifying inadequacies in existing anti-theft technologies. He developed a method for embedding a security feature into the device, which could not be erased and which could be activated remotely.

The plaintiffs asserted that the invention was commercialised initially on Symbian OS and later on Android OS. Between April 2015 and March 2019, around 15,000 one-year subscriptions of the system were sold online, and approximately 3,000 subscriptions were sold offline between April 2017 and February 2020.

In January 2023, the plaintiffs alleged discovery of the defendant’s mobile devices embedding a feature named 'Find Device' that, they claimed, infringed the patented technology. A legal notice was sent to the defendant on 17 January 2023 offering a non-exclusive license on FRAND terms, followed by a reminder on 14 February 2023. With no response received, the plaintiffs filed the present suit.

Summons were issued in the suit on 29 May 2023, and the parties were referred to mediation, which failed. The plaintiffs filed two applications under Order XXXIX Rules 1 and 2 CPC—one for interim injunction and another seeking deposit of royalties. The defendant opposed both and filed a written statement and counter-claim on 14 August 2023, challenging the validity of the suit patent and seeking its revocation.

The defendant, a leading Indian subsidiary of a global smartphone manufacturer, contended that the patent was invalid for lacking novelty and inventive step. It argued that the plaintiffs were non-practicing entities who had not worked the patent in India, as evident from Forms-27 submitted to the Patent Office. The defendant further alleged that the plaintiffs had delayed filing the suit for nearly nine years, as the accused devices had been available in the Indian market since 2014.

The defendant submitted that its 'Find Device' feature, provided in ROM and accessible via its Mi Cloud website, enabled users to remotely perform three functions: (i) play a sound, (ii) initiate a 'lost mode' to lock the phone and display a message, and (iii) erase data. The defendant asserted that the feature was for user data protection and not for monitoring the device, distinguishing it from the plaintiffs' patented technology.

The plaintiffs’ counsel contended that the defendant’s system used a non-erasable tool in ROM equivalent to the patented element and included functionalities such as sound playback, location tracking, and data deletion—all allegedly covered under various claims of the suit patent. The plaintiffs submitted a claim chart attempting to map the patent's independent and dependent claims to the defendant’s devices.

The defendant countered that the essential features of the suit patent, particularly Elements 2 and 3 of Claim 1, were absent. The feature requiring "auto-answer mode" to receive calls silently and the mechanism for automatic reinstallation of security data were not found in the defendant’s devices. The plaintiffs' mapping was termed inadequate and unsupported by evidence.

The defendant also argued that its ‘Find Device’ feature becomes inoperative upon factory reset, whereas the suit patent involved a mechanism to ensure continued operation through flash memory and ROM, making the defendant’s technology fundamentally different.

The Court observed, "In infringement proceedings, the Complete Specification of the suit patent is sacrosanct and plays an important role in construing Claims of a patent." Referring to Supreme Court precedent, the Court noted that it was necessary to interpret the suit patent’s claims in the context of its Complete Specification to determine the invention’s core inventive concept.

The Court stated, "The invention claimed in the suit patent is addressing the problem in the prior art of locating and recovering a stolen device from a thief who might remove the SIM card or attempt to disable the security feature by deleting its software or altering the message center number."

Further, the Court recorded that the key objective of the patent was to provide a "non-erasable security feature installed in the device, which enables location of lost communication device independent of a specific mobile network service provider." It also noted that the suit patent included a "security activation element for activating and bringing into auto answer mode said communication device finder."

The Court analysed the independent Claim 1 and stated, "A perusal of the aforesaid independent Claim 1 of the suit patent highlights that Elements 2 and 3, following the term ‘characterized in that’, are the novel features." It identified these features as auto-reinstallation of deleted data and silent auto-answering of calls, both absent in the defendant’s devices.

The Court referred to the plaintiffs’ claim mapping and noted, "The Claim mapping refers only to ‘non-erasable anti-theft tool’. It does not make any reference whatsoever to other elements covered in independent Claim 1." The Court recorded that the defendant’s feature lacked the ROM-based reinstallation function and the silent call receiving mechanism.

It stated, "When a phone is put into ‘auto answer mode’, it enables an incoming call to be answered automatically in a silent manner without the unauthorised user/thief getting to know about the call. This feature is absent in the defendant’s devices."

On this basis, the Court concluded, "The plaintiffs' Claim mapping is fundamentally flawed as it fails to identify or demonstrate the presence of all essential features of the suit patent in the defendant’s devices."

Regarding dependent claims, the Court held, "If the defendant’s devices do not infringe the independent Claim, reliance on the dependent Claims alone cannot establish infringement." It cited Teledyne McCormick Selph v. United States, recording that a dependent claim cannot be infringed if the independent claim is not.

On the issue of non-working, the Court noted, "Forms-27 filed by the plaintiffs before the Patent Office would clearly demonstrate that the invention... has been worked in India only to a limited extent during the Financial Year 2019-20." It further stated, "A registered patentee who has not used the patent in India cannot, in equity, seek temporary injunction against a party."

Addressing delay, the Court recorded, "There is no explanation provided by the plaintiffs as to the delay of almost nine years in filing the present suit." Referring to an April 2015 Form 27, the Court stated, "The plaintiffs have acknowledged their awareness of several global smartphone manufacturers allegedly infringing the suit patent."

The Court directed, "In view of the aforesaid discussion, the plaintiffs have failed to establish a prima facie case of infringement against the defendant."

The Court ordered, "Irreparable injury and undue hardship would be caused to the defendant if an interim injunction is granted in favour of the plaintiffs, restraining the defendant from selling their devices in India."

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Further, it held, "The plaintiffs can be suitably compensated by way of damages... There is nothing on record to suggest that the defendant is not in a good financial condition or that the defendant would not be in a position to satisfy a decree for damages."

The applications for interim injunction were dismissed. The Court, however, instructed the defendant to maintain and submit accounts: "The defendant shall maintain complete accounts of the manufacture and sale of the impugned devices and file the statement of accounts on a half-yearly basis."

The Court clarified, "The observations made herein are only for the purpose of deciding the present applications and shall have no bearing on the final outcome of the suit and the counter claim."

The matter has been listed before the Joint Registrar on 12 August 2025.

Advocates Representing the Parties:

For the Plaintiffs: Ms. Swati Sukumar, Senior Advocate with Mr. Siddharth Sharma, Mr. Nikhil Sharma, Mr. Davesh Vashishtha & Mr. Rishub Agarwal, Advocates

For the Defendant: Mr. L. Badrinarayanan, Mr. Prashant Phillips, Mr. Ankur Garg, Ms. Vindhya S. Mani and Mr. Bhuvan Malhotra, Advocates

Case Title: Conqueror Innovations Private Limited & Anr. v. Xiaomi Technology India Private Limited
Neutral Citation: 2025: DHC:5233
Case Number: CS(COMM) 361/2023
Bench: Justice Amit Bansal