Philips won at trial. Eight years later, it lost everything.
On 18 May 2026, a Division Bench of the Delhi High Court allowed RFA(OS)(COMM) 17/2018 and 18/2018, set aside the 12 July 2018 decree, and held that Indian Patent IN-184753, the DVD decoder claim, is no longer enforceable as a Standard Essential Patent. Justice C. Hari Shankar and Justice Om Prakash Shukla quashed a judgment that had stood for nearly a decade as India’s first post-trial SEP ruling.
Two readings of the decision are already circulating and both miss the lesson. The first reads it as a defendant-friendly shift in the Indian courts. It is not. The Division Bench reaffirms Intex and Huawei v. ZTE. A proven SEP holder is still entitled to a FRAND licence and to an injunction against an unwilling licensee. The second reading dismisses it as a product of stale DVD-era facts with no relevance to live 4G and 5G disputes. That reading is also wrong. The Bench applies the 2022 Patent Suit Rules, the 2003 amendment to Section 107A(b), and the 2023 Intex Division Bench framework. Every word of the ratio sits inside the live SEP toolkit and the same reasoning will be applied in the next 4G, 5G and codec appeal that reaches a Division Bench.
What actually failed was not the patent and not the standard. What failed was the proof chain, at five distinct points, each of which was a procedural choice made at the pleading or evidence stage that no one revisited as the law tightened around the case.
Foreign Essentiality Certificates Are Not Evidence
The first and most foundational failure in this SEP litigation India practitioners must absorb concerns the status of foreign essentiality certificates as evidence.
Philips relied on Essentiality Certificates from Proskauer Rose and Cohausz and Florack certifying US 5,777,505 and EP 0 745 254 as essential to the DVD Forum standard. At paragraph 95 the Division Bench held the ECs did not show how the US and EP patents mapped onto the standard. No one from either firm was cited as a witness. There was not even an affidavit from a responsible person at either firm vouchsafing the certificates. The ECs sat in the record for a decade and collapsed on appeal because no examined witness ever stood behind them.
The lesson for every SEP plaintiff relying on foreign essentiality opinions is direct. An opinion from a foreign firm certifying essentiality is not self-proving. It requires a witness who can be examined and cross-examined on the methodology, the mapping exercise, and the conclusions. Without that witness the certificate is a document in the record with no evidentiary weight. In a domestic infringement suit the evidentiary standard applies to everything placed before the court and foreign IP opinions are not exempt from it simply because they come from firms with established reputations.
No Claim to Standard Mapping Means No Indirect Infringement
The second failure goes to the claim chart requirement that the 2022 Patent Suit Rules have now codified explicitly.
Rule 3(A)(ix) requires claim charts including claim chart mapping through standards. No mapping of the suit patent or its US and EP equivalents onto the DVD Forum standard was on record. The consequence was that indirect infringement collapsed entirely at paragraph 169(viii). Without a documented chain connecting each claim element of the suit patent to a specific provision of the standard, and without showing that any implementation of the standard necessarily practices that claim, the indirect infringement case has no foundation. The claim chart is not a procedural formality. It is the structural basis of the SEP case and its absence is fatal.
For SEP practitioners advising plaintiffs in active or contemplated proceedings, the Rule 3(A)(ix) obligation is now an absolute minimum. The claim chart must be on record before the evidence stage closes. It must map the suit patent directly, not only its foreign family members. And it must be prepared by or vouched for by an expert who will enter the witness box.
Affidavits Without Witness Box Testimony Are Worthless
The third failure concerns the expert evidence on infringement and is the finding that has the broadest implications for SEP litigation practice in India.
Ravi Babu’s infringement affidavit was held inadmissible at paragraph 110 because he never entered the witness box. PW-2’s testing was held insufficient at paragraph 115 because the logs of his infringement analysis were never placed on record. The Bench cited Browne v. Dunn and Muddasani to hold that what is not put in cross examination is taken as accepted by the party that failed to put it.
The implication for SEP plaintiffs with outsourced expert opinions is serious. The expert who prepares the infringement analysis must be produced as a witness in chief and must be available for cross examination. An affidavit filed on record but not supported by witness box testimony carries no weight at trial and no weight on appeal. The logs, the test records, the analysis methodology, and the conclusions must all be on the evidentiary record in a form that was available to the opposing party for cross examination. An expert opinion prepared outside the country by a firm that does not participate in the Indian proceedings as a witness is, on this analysis, not evidence at all.
Section 107A(b) Exhaustion Now Reaches Authorised Upstream Sellers
The fourth failure concerns the Section 107A(b) exhaustion defence and the Division Bench’s reading of the 2003 amendment that every device importer and their counsel must now understand.
Before 2003, the exhaustion defence available to an importer was limited to situations where the seller was directly authorised by the patentee. The 2003 amendment extended the protection to importation from a person duly authorised under the law to sell the product. The Bansals had purchased the chip from Shuntak and Sheen Land, registered vendors of MediaTek, who held legal rights to the technology in mainland China. Paragraph 144 expressly overrules the single judge’s contrary reading. Paragraph 145 holds that international exhaustion bars Philips from enforcing the patent against the Bansals.
The consequence is that the Section 107A(b) defence is now available to any device importer who can document the upstream chain. The importer does not need a direct authorisation from the patentee. It needs evidence that the seller from whom it purchased was duly authorised under the relevant law to sell the product. For companies importing devices containing standard-essential components, the practical obligation is to build and maintain the documentation of the upstream authorisation chain as a standard part of procurement practice.
The Royalty Base Is the Chip, Not the Device
The fifth failure is the single most commercially consequential finding in the judgment and the one that will force the most immediate revision of existing SEP licensing models.
The suit patent claimed a decoding device. Paragraphs 164 to 167 hold that Philips could not have computed royalty or damages on the entire DVD player. The line is drawn at the patented component. Device-level royalty models that apply the royalty rate to the price of the entire product, rather than to the price of the chip or component that implements the standard-essential functionality, are inconsistent with this holding.
Every SEP licensing programme built on a device-level royalty base has to be reassessed against this ruling. The appropriate royalty base is the smallest saleable patent-practising unit, which on the facts of this case was the MediaTek chip rather than the complete DVD player. The commercial significance of this distinction in a sector where device prices may be ten to twenty times the component price is obvious. Licensing counsel advising SEP holders on India-facing royalty structures must now account for this as a binding constraint, not a theoretical risk.
FRAND Is a Protocol, Not a Phrase in a Notice Letter
The thread connecting all five failures is what the Division Bench says at paragraph 146 about the FRAND obligation. The Bench codifies the four-step Huawei v. ZTE sequence. The SEP holder must alert the implementer to the specific manner of infringement. It must extend a written FRAND offer with the royalty amount and the basis of computation. It must receive and engage with the implementer’s response. It must then prove the implementer was unwilling. Each step must be documented and each document must be on the evidentiary record.
No third-party comparable licence agreement was on record despite PW-2’s claim to possess such licences. Pre-suit negotiation rates cannot substitute for proof of FRAND compliance at trial. The FRAND protocol is not satisfied by a notice letter that uses the word FRAND. It is satisfied by a documented sequence of offers, responses, and engagements that a court can examine step by step and find compliant with each element of the Huawei v. ZTE framework.
What This Means for Active and Future SEP Cases in India
The signal from the Division Bench decision is precise. India is not hostile to SEP holders. The reaffirmation of Intex and Huawei v. ZTE makes that clear. India is a sophisticated SEP forum where the patentee must carry every step of the proof chain in writing, with examined witnesses, on a per-chip royalty basis, with a documented FRAND protocol, and with claim charts that map the suit patent directly to the standard and that survive appellate scrutiny.
For SEP holders with active proceedings in India, the immediate priority is an audit of the pleadings and evidence record against each of the five failure points the Division Bench has identified. Foreign essentiality certificates without examined witnesses behind them. Claim charts missing from the record or not filed in compliance with Rule 3(A)(ix). Expert affidavits from witnesses who have not entered the witness box. Royalty models built on device prices rather than component prices. FRAND correspondence that does not document each step of the Huawei v. ZTE protocol.
Each of these is a gap that can be addressed if identified before the evidence stage closes. After the evidence stage closes it becomes the appellate record and the Division Bench will examine it with the rigour this judgment demonstrates.
The cost of a pleading and evidence audit conducted before the trial is a fraction of the cost of an eight-year decree set aside on appeal. The claim chart that maps the suit patent to the standard, drafted before the evidence stage opens, is the document that prevents the cascade of failures this judgment records.
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