Koninklijke Philips N.V. Versus MAJ (RETD) Sukesh Behl and Another.
Facts
Koninklijke Philips N.V., headquartered in Amsterdam and owner of Indian Patent No. 218255 covering the EFM+ encoding method essential for DVD duplication, alleged that Maj. (Retd.) Sukesh Behl of M/s Pearl Engineering and others in India were infringing this patent by manufacturing DVDs using EFM+ without a license. Although these defendants had licensed Philips’ patents for VCD replication, they failed to obtain a required DVD replication license despite multiple notices from Philips between 2005 and 2010. After discovering infringing DVDs in the market and confirming through expert analysis that they used the patented EFM+ technology, Philips filed suits in the Delhi High Court in 2012 seeking injunctions, damages, and relief for patent infringement.
Arguments of the Plaintiff (Philips):
Philips argued that its Indian Patent No. 218255 was a Standard Essential Patent (SEP) because the DVD standard required the use of the patented EFM+ channel modulation method, making any DVD replication using this standard an infringement. They maintained that the defendants were unlicensed manufacturers who knowingly continued DVD replication despite repeated notices and license offers. Philips contended that even if the defendants outsourced part of the EFM+ process, they were still liable as they controlled and orchestrated the replication, making them vicariously responsible. The plaintiff emphasized the patent’s global validity, having been rigorously examined and upheld in multiple jurisdictions, and compliance with Indian patent law provisions. Philips also highlighted their fair and reasonable licensing policy, arguing the defendants clearly exploited the patented technology without compensation and should be held accountable.
Arguments of the Defendants (Maj. Sukesh Behl & Others):
The defendants denied infringement, claiming they merely performed mechanical duplication of already encoded DVDs, without engaging in the EFM+ encoding step themselves, which they asserted was done by content creators or third parties. They challenged the patent’s validity on multiple grounds under Section 64 of the Indian Patents Act, citing prior art, misrepresentation in patent applications, failure to disclose foreign filings, and lack of sufficient clarity and enablement in the patent specification. They also argued Philips delayed legal action despite long knowledge of their activities, implying acquiescence. Further, the defendants contended that being designated an SEP did not automatically imply infringement unless Philips proved that their patent specifically covered the defendants’ exact replication process.
LEGAL ISSUES
Based on pleadings and evidence, the Delhi High Court framed the following key issues:
Whether the plaintiff is the true and lawful owner of the suit patent (Section 48)? Whether the suit patent is liable to be revoked under Section 64 of the Patents Act?
Whether the defendants infringed the patent directly or indirectly?
Judgment
In its final judgment dated 20 February 2025, the Delhi High Court upheld the validity of Indian Patent No. 218255 held by Koninklijke Philips N.V., declaring it a Standard Essential Patent (SEP) critical to DVD technology. The Court found that the defendants, including Maj. (Retd.) Sukesh Behl and his firm M/s Pearl Engineering, had willfully and continuously infringed the patent by replicating DVDs using the EFM+ modulation process without obtaining a license. Although the defendants contended that they were only outsourcing the process and being passive, the Court refuted these assertions and held them jointly responsible as collaborators in the tort. Furthermore, the Court refused the defendants’ several objections to the validity of the patent under Section 64 of the Patents Act, 1970, on grounds of lack of novelty, misrepresentation, and failure to disclose allied foreign applications, holding that there was not enough evidence in support of such defenses. Although damages were withheld because of the defendants’ denial of sharing financial information, the Court issued a permanent injunction to prevent further infringement and ordered litigation costs of ₹2,00,000. In addition, the Court ordered the Patent Office to grant a confirmation of validity under Section 113 of the Act.