From Exhaustion to FRAND Rates: DHC’s InterDigital vs. Oppo Order


The High Court of Delhi recently issued a significant decision in the case of InterDigital Technology Corporation & Ors. vs. Guangdong Oppo Mobile Telecommunications Corp. Ltd. & Ors. [1], which has substantial implications for patent litigation involving Standard Essential Patents (SEPs) and the Fair, Reasonable, and Non-Discriminatory (FRAND) terms. It addresses critical issues such as patent exhaustion, the disclosure of licensing agreements, and the determination of fair royalty rates.

This blog provides an in-depth analysis of the court’s decision, its implications for patent holders and implementers, and what it means for future SEP litigation.


InterDigital Technology Corporation and InterDigital VC Holdings Inc. (the plaintiffs) are prominent holders of SEPs critical for mobile communication technologies. InterDigital sought a permanent injunction to stop Guangdong Oppo Mobile Telecommunications Corp. Ltd. (Oppo) from infringing their SEPs, claiming that Oppo was an unwilling licensee and had not executed a FRAND license agreement.

In defense, Oppo counterclaimed under Section 64 of the Patents Act, 1970, questioning the validity and essentiality of the patents and denying any infringement. A crucial part of Oppo’s defense was the doctrine of exhaustion.

Oppo argued that their use of Qualcomm chipsets, which incorporated InterDigital’s SEPs, exhausted InterDigital’s patent rights. Oppo claimed that since Qualcomm was licensed to use InterDigital’s SEPs, their purchase and use of Qualcomm’s chipsets should not constitute patent infringement. This defense hinged on whether the patented technology was implemented in the chipset (licensed to Qualcomm) or the handset (manufactured by Oppo).

Issues Before the Court

  1. Whether Oppo’s use of Qualcomm chipsets, allegedly incorporating InterDigital’s SEPs, exhausted InterDigital’s patent rights.
  2. The relevance and necessity of disclosing agreements between the parties and third parties (Qualcomm, Ericsson, and Orange SA) to determine the scope of the technology used and to establish FRAND rates.
  3. The appropriateness of establishing a confidentiality club to protect sensitive information while ensuring that relevant documents are disclosed for the case.

Court’s Analysis and Decision

Defendants’ Qualcomm Agreement

1. To Determine Exhaustion:

The plaintiffs argued that Oppo’s reliance on the Qualcomm agreement to claim exhaustion required a thorough examination of the agreement’s terms. They sought production of Oppo’s Qualcomm agreement to disprove the defense of exhaustion and to clarify whether the technology was implemented in the chipset or the handset.

The court agreed that the defendants’ Qualcomm agreement was essential for determining the extent of the licensed technology and whether it covered the patented technology asserted by InterDigital. The agreement would provide insights into whether Qualcomm’s license exhausted InterDigital’s rights over the SEPs when incorporated into Oppo’s devices.

2. Necessity for FRAND Determination:

The plaintiffs needed to establish that the royalties sought were on a FRAND basis. Access to the Qualcomm agreement would help demonstrate the terms under which similar technologies were licensed, supporting the plaintiffs’ claim that their royalty demands were reasonable.

The court acknowledged that understanding the Qualcomm agreement would assist in determining whether the royalties proposed by InterDigital were in line with industry standards and whether Oppo’s counteroffers were reasonable.

3. Confidentiality Concerns:

   – Given the sensitivity of the information contained in the Qualcomm agreement, the court ordered that the agreement be disclosed under a confidentiality club. This measure aimed to protect proprietary information while ensuring that the necessary documents were available for a fair adjudication.

Defendants’ Third-Party License Agreements

1. Ericsson and Orange SA Agreements:

The plaintiffs sought discovery of Oppo’s agreements with Ericsson and Orange SA, arguing that these agreements would provide benchmarks for determining FRAND rates.

However, the court found that these agreements were not directly relevant to the current stage of the proceedings. The court emphasized that the onus was on the plaintiffs to first establish the essentiality and infringement of their SEPs. Only after establishing these points would the terms of third-party agreements become relevant for determining FRAND rates.

Further, the court highlighted concerns about third-party confidentiality, noting that revealing the terms of agreements between Oppo and other SEP holders like Ericsson and Orange SA could infringe on proprietary business information. Consequently, the court denied the plaintiffs’ request for these third-party agreements, focusing instead on agreements directly involving the parties in the current litigation.

Plaintiffs’ Qualcomm Agreement:

1. Overlap and Technology Scope:

The defendants argued that examining InterDigital’s Qualcomm agreement was crucial for understanding the scope of the licensed technology and whether it overlapped with the SEPs asserted in the lawsuit. Despite the agreement having expired, it could still shed light on the 3G standards and the technology licensed to Qualcomm.

The court agreed that this agreement was relevant for addressing the exhaustion defense and for assessing FRAND rates. It would help determine whether Qualcomm’s license covered the patented technology and if Oppo’s use of Qualcomm chipsets exhausted InterDigital’s patent rights.

2. Implementation in Chipset vs. Handset:

The court noted that understanding whether the patented technology was implemented in the chipset or the handset was crucial. The Qualcomm agreement would provide clarity on this issue, aiding in the determination of the infringement scope. Accordingly, it ordered the plaintiffs to disclose the Qualcomm agreement under the confidentiality club, ensuring that sensitive information remained protected.

Our Analysis

The Delhi High Court’s decision in the InterDigital vs. Oppo offers a detailed examination of how patent exhaustion and FRAND commitments interact in the context of modern technology. The court’s balanced approach to transparency and confidentiality, requiring both InterDigital and Oppo to disclose their Qualcomm agreements under a confidentiality club ensured that all pertinent information was available for adjudication without compromising sensitive business data. This move highlights the importance of transparency in patent litigation, providing a comprehensive view of the licensing landscape which is essential for a fair determination of FRAND rates and the applicability of the exhaustion doctrine.

Comparative Analysis

In the U.S., the doctrine of exhaustion has been similarly interpreted in cases like Quanta Computer, Inc. v. LG Electronics, Inc. [2], where the Supreme Court held that the sale of a product that substantially embodies a patent exhausts the patent holder’s rights.

Further, the principles applied by the Delhi High Court in assessing the reasonableness of the proposed royalties and the necessity for transparency in licensing agreements are inherently similar to the Georgia-Pacific factors.

US courts also emphasize the importance of FRAND commitments, as seen in cases like Microsoft Corp. v. Motorola, Inc. [3] However, US courts have been more reluctant to mandate the disclosure of third-party agreements unless directly relevant to the case.

The Delhi High Court’s approach in establishing a confidentiality club reflects a middle ground between protecting proprietary information and ensuring that all relevant facts are available for adjudication. This practice aligns with the broader trend in international patent litigation towards greater transparency and fairness and sets a precedent for other jurisdictions, highlighting the importance of considering third-party agreements and the broader licensing environment in SEP disputes.

Implications for Holders and Implementers

The implications of this decision extend beyond the immediate parties involved. It underscores the need for patent holders and implementers to maintain detailed and clear licensing agreements, anticipating potential litigation scenarios where such documents may need to be disclosed. For patent holders, the ruling emphasizes the importance of clear and transparent licensing agreements that define the scope of the licensed technology and the rights granted to licensees. Documentation and the readiness to disclose licensing agreements in litigation are critical for substantiating claims. For implementers, understanding the scope and limitations of their licensing agreements is essential for defending against infringement claims and invoking the doctrine of exhaustion. Implementers should be prepared to produce relevant agreements to support their defenses, as transparency in these agreements can help establish the legitimacy of their claims.

The Rising Importance of India as a Jurisdiction for SEP Enforcement

India’s legal landscape is increasingly becoming a critical battleground for global technology companies seeking to enforce or defend their patent rights. The Delhi High Court’s detailed and balanced approach in handling SEP-related disputes alone showcases India’s growing capability to adjudicate complex patent issues effectively. In the last 12 months alone, the Delhi High Court has laid down the policy for SEP holders in India [4], held that pro-tem security payments are a necessary facet of license negotiation [5], and awarded approx. 29.9 million USD in damages [6]. Such strong enforcement makes India an attractive forum for patent holders worldwide, contributing to the country’s emerging reputation as a key player in the global IP enforcement arena.


The High Court of Delhi’s decision in InterDigital vs. Oppo provides critical insights into the complexities of SEP litigation, the doctrine of exhaustion, and the determination of FRAND rates. By emphasizing the importance of transparency and detailed documentation, the court has set a precedent that will likely influence future SEP disputes. For patent holders and implementers alike, this decision underscores the need for clear, well-documented licensing agreements and the readiness to disclose relevant information in litigation.


[1] CS(COMM) 692/2021 and CS(COMM) 707/2021

[2] 553 U.S. 617 (2008)

[3] 696 F.3d 872; 104 U.S.P.Q.2d 2000;

[4] Telefonaktibolaget LM Ericsson v. Intex Technologies Pvt. Ltd., FAO(OS) (COMM) 297/2018.

[5] Nokia Technologies Oy v. Guangdong Oppo Mobile Telecommunications Corp Ltd & Ors, 2022/DHC/004935

[6] Lava International Ltd. v. Telefonaktiebolaget LM Ericsson, CS(COMM) 65 of 2016

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