A declaration that a patent is essential to a standard is an allegation. In litigation it has to be proved like any other fact, and each step of the proof stands on its own.
On 18 May 2026 a Division Bench of the Delhi High Court, comprising Justice C. Hari Shankar and Justice Om Prakash Shukla, decided K K Bansal and Rajesh Bansal v Koninklijke Philips Electronics NV in RFA(OS)(COMM) 17/2018 and 18/2018. The appellants challenged a Single Judge decree that had found infringement of a Philips patent concerning DVD decoding technology and had awarded royalty on every DVD player sold. The Bench allowed the appeals and set the decree aside.
The judgment is best read as a decision on the evidence in that trial. It does not create a single mandatory format for every standard essential patent case. It does, however, set out with unusual clarity the separate questions a patentee must answer, and the kind of proof each question requires.
What the court decided
The Bench identified four independent reasons for reversing the decree. Essentiality had not been proved by admissible evidence. Infringement by the appellants’ products had not been established. The royalty rate was not supported by comparable licences. Finally, the appellants succeeded on patent exhaustion under section 107A(b) of the Patents Act, 1970. Any one of the first three failures would have been a serious obstacle to the royalty claim. Together with exhaustion, they left the decree without a foundation.
Essentiality needs admissible technical proof
Philips relied on essentiality certificates to show that its patent was essential to the DVD standard. The Bench held that the certificates could not carry that weight. They did not explain the method used to map the patent claims onto the DVD specifications. No representative of the entities that issued them was examined as a witness, and no affidavit or deposition authenticated them. An opinion of this kind is expert evidence. Under section 45 of the Indian Evidence Act, 1872, which governed this trial, it must be proved through a witness who can be tested in cross examination. The corresponding provision for later proceedings is section 39 of the Bharatiya Sakshya Adhiniyam, 2023.
The court also found that no admissible claim chart connected the claims to the standard. That is the core of an essentiality case. A certificate that states a conclusion is not a substitute for the technical reasoning that produces it.
- Construe the asserted claims before any mapping begins.
- Identify the exact version of the standard and the clauses relied on.
- Show that each clause is mandatory for compliance and not one of several permitted options.
- Map every claim limitation to a specific clause with a technical explanation.
- Choose an expert who prepared or can fully defend the analysis in the witness box.
Mapping the standard is not mapping the product
Essentiality and infringement are separate inquiries. A patentee can prove infringement directly by comparing the accused product with each claim limitation. The Bench noted that this product to claim comparison is the classical test for infringement. Alternatively, following the approach in Intex Technologies v Ericsson, a patentee can proceed indirectly. That route requires two links. The patent must be mapped to the standard, and the product must be shown to implement the relevant part of the standard.
Philips established neither route on this record. The expert affidavit on which it relied was not proved by its author. Testing records were not produced. No mapping of the appellants’ products against the claims was undertaken. General assertions that the products played DVDs did not close the gap.
A useful product claim chart identifies each limitation, the corresponding hardware or software behaviour, and the evidence showing that behaviour. Depending on the technology, that evidence may come from teardown reports, protocol traces, source code, datasheets or controlled tests. Whatever its source, a witness must be able to explain it and withstand questioning on it.
A FRAND rate must rest on proved licences
Philips sought royalties at the rate charged under its licensing programme. Its witness accepted that third party licence agreements existed, yet none was produced. The Bench drew an adverse inference from the withholding of those agreements. It held that a rate cannot be accepted as fair, reasonable and nondiscriminatory merely because the patentee describes it as its standard programme rate. Comparable licences must be disclosed and proved so that the court can test whether the rate is fair and whether it treats comparable licensees alike.
Commercial confidentiality is a legitimate concern. Indian courts have mechanisms, including confidentiality clubs, for handling sensitive documents. A party that relies on its licensing history should use those mechanisms rather than withhold the evidence. A rate analysis should also explain comparability. Relevant factors include the licensed patents, territory, term, cross licences, portfolio scope, volume and payment structure.
The royalty base follows the claimed invention
The patented technology resided in a decoding chip or printed circuit board, not in the DVD player as a whole. The Bench therefore held that royalty could not be calculated automatically on the value of the complete player. This finding turned on the asserted claims and the evidence presented. It does not resolve every debate about component and end product royalty bases. It does confirm that a claimant who wants a royalty on the complete device must justify that base with evidence tied to the claims.
Exhaustion succeeded on the supply chain evidence
The appellants had bought MediaTek decoder boards through authorised distributors. Section 107A(b), as amended with effect from 20 May 2003, protects the import of patented products from a person who is duly authorised under the law to produce and sell or distribute them. The Bench held that, after the amendment, the defence does not require proof that the upstream supplier held a licence directly from the patentee. On the evidence, Philips’ rights in the components had been exhausted.
Two practical points follow. Implementers should keep purchase records, distributor authorisations and component identification, because the defence depends on proof of the supply chain. Patentees should consider how licences granted at the component level may affect claims against manufacturers further down the chain.
Practical lessons
For a rights holder, the evidence file should be assembled before a rate is demanded. It should contain construed claims, identified standard clauses with version control, product evidence, essentiality opinions from witnesses who can be examined, and comparable licences that can be produced. For an implementer, each link deserves independent testing. A declared patent may not be essential to a mandatory part of the standard. A compliant product may not use the claimed implementation. A proposed rate may not be supported by any comparable agreement. The components may already be covered by exhaustion.
Patent scope, essentiality, infringement, valuation and exhaustion are distinct questions. A strong answer to one does not relieve a party of proving the others.
Frequently asked questions
Did the court reject standard essential patent enforcement in India?
No. The Bench set aside the decree because the necessary facts were not proved on the trial record. It did not question that a properly proved standard essential patent can be enforced.
Are claim charts required?
The judgment treats admissible claim charts as central evidence, both for mapping the patent to the standard and for comparing the product with the claims. What matters is the technical analysis and the witness who can prove it, not the label on the document.
Does the decision settle the royalty base for all devices?
No. The finding concerned claims directed to a decoding component. A different claim scope and different evidence may justify a different base.