Karnataka High Court Permits Wacom To Gather Evidence From Bengaluru Firm For US Patent Trial, Holds Hague Convention Bar Inapplicable

Karnataka High Court Permits Wacom To Gather Evidence From Bengaluru Firm For US Patent Trial, Holds Hague Convention Bar Inapplicable

Introduction

The Karnataka High Court has permitted Japanese technology company Wacom Company Limited to collect documentary and oral evidence from Bengaluru-based semiconductor manufacturer Cirel Systems Pvt Ltd for use in an ongoing patent infringement suit in the United States.

Justice P. Sree Sudha held that India’s declaration under the Hague Evidence Convention does not bar execution of Letters Rogatory where the documents sought are specifically identified. The Court therefore allowed the request to obtain evidence for proceedings pending before the United States District Court for the Eastern District of Texas.

Factual Background

The dispute originates from a patent infringement suit filed by Wacom against Chinese technology firm Shenzhen Qianfenyi Intelligent Technology Co Ltd in the United States. The suit concerns stylus products allegedly infringing Wacom’s patents.

During the course of the litigation, Wacom identified that Cirel Systems Pvt Ltd, a Bengaluru-based semiconductor manufacturer, had supplied integrated circuits used in the allegedly infringing stylus products. According to Wacom, certain documents, technical data and employee testimony held by Cirel Systems were essential for proving the alleged infringement in the US proceedings. Since these materials were located in India and outside the jurisdiction of the American court, the United States District Court issued Letters Rogatory requesting judicial assistance from Indian courts for collection of evidence.

Procedural Background

Pursuant to the Letters Rogatory issued by the US court, Wacom approached the Karnataka High Court seeking appointment of a Local Commissioner to collect documents, technical evidence and witness testimony from Cirel Systems and its employees. Wacom also sought establishment of a confidentiality mechanism and requested that the proceedings be conducted in camera to safeguard sensitive commercial and technical information. Cirel Systems opposed the request and argued that compliance with the Letters Rogatory would amount to permitting pre-trial discovery, which is restricted under India’s declaration to Article 23 of the Hague Evidence Convention.

Issues

1. Whether India’s declaration under Article 23 of the Hague Evidence Convention barred execution of Letters Rogatory seeking documentary evidence from a non-party.

2. Whether the Bengaluru-based company could be compelled to produce documents and testimony for use in a foreign patent litigation.

3. Whether adequate safeguards were required to protect confidential commercial information during evidence collection.

Contentions of the Parties

Wacom submitted that Cirel Systems and its employees possessed technical information and documents that were crucial for adjudicating the patent infringement dispute in the United States. It emphasised that the Indian company was not being sued in the American litigation and that the request was limited to discovery of evidence necessary for fair adjudication. Wacom further contended that the documents and information had been clearly identified in the Letters Rogatory and therefore did not amount to an impermissible fishing expedition.

Cirel Systems argued that it was not a party to the US proceedings and should not be compelled to disclose confidential trade secrets and technical information. It contended that the request effectively amounted to pre-trial discovery, which India has expressly declined to permit through its declaration under Article 23 of the Hague Evidence Convention. According to the company, granting such relief would expose sensitive business information and create prejudice to a non-party.

Reasoning and Analysis

The High Court examined the scope of India’s declaration under Article 23 of the Hague Evidence Convention and clarified that the restriction applies primarily to broad or unspecified discovery requests typical of common-law jurisdictions. The Court observed that the Letters Rogatory in the present case contained a detailed list of specific documents and questions sought from Cirel Systems. Because the request was narrowly tailored and specifically identified the evidence required, it did not fall within the category of impermissible pre-trial discovery.

The Court further recognised the legitimate concern raised by Cirel Systems regarding protection of confidential technical information and trade secrets. To address this concern, the Court concluded that procedural safeguards could be implemented to ensure that sensitive information is protected during the evidence collection process.

Decision

The Karnataka High Court allowed the petition and permitted execution of the Letters Rogatory. It directed the appointment of an advocate as Local Commissioner to record testimony and collect relevant documents from Cirel Systems and its employees.

The Court also ordered creation of a Confidentiality Club and directed that the proceedings be conducted in camera to safeguard sensitive commercial information. The collected evidence will be kept in sealed cover with the Registrar General and thereafter transmitted to the United States District Court for the Eastern District of Texas.

In this case the appellant was represented by Advocate Chintan Chinnappa. M. Meanwhile the respondent was represented by Advocate Anind Thomas.