I.A. 36658/2024 in CS(COMM) 1222/2018 Page 1 of 23

* IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on: May, 08, 2025

% Pronounced on: July 01, 2025

+ CS(COMM) 1222/2018

COMMUNICATION COMPONENTS ANTENNA INC.

.....Plaintiff

Through: Mr. J. Sai Deepak, Sr. Adv. with

Mr. Mohit Goel, Mr. Sidhant Goel,

Mr. Deepankar Mishra, Mr. Aditya

Goel and Mr. Avinash K. Sharma,

Advs.

Versus

ACE TECHNOLOGIES CORP. AND ORS. .....Defendants

Through: Mr. Suraj Kumar. Singh, Mr.

Bharat Sing and Mr. Abhay Singh,

Advs.

CORAM:

HON'BLE MR. JUSTICE SAURABH BANERJEE

J U D G M E N T

I.A. 36658/2024-By plaintiff for direction to defendants to deposit

Bank Guarantee

Brief facts:

1. The plaintiff has instituted the present suit seeking permanent

injunction restraining the defendants from infringing upon its Indian

Patent No.240893.

2. The plaintiff, Communication Components Antenna Inc, is a private

company incorporated under the laws of Canada with its principal place of

business at 11 Hines Road, Ottawa, Ontario, Canada K2K2K1. The

plaintiff is providing cellular base station products, and its innovative

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 2 of 23

products are designed to allow cellular service providers to get the most

out of their cellular base station investments.

3. The plaintiff’s product groups include Antennas, Amplifiers, Low

Loss Combiners, Tower Mounted Amplifiers (TMA) & Diplexers,

Distributed Antenna System (DAS) Components and Portable Passive

Intermodulation (PIM) Testers.

4. The defendant no.1, M/s. Ace Technology Corporation is a South

Korean company, which is also in the business of manufacturing and

selling antennas for the telecommunication industry. The defendant no.2,

M/s. Shin Ah Ltd., is a Hong Kong based company, and the defendant

nos.3 and 4 are Indian subsidiaries of the defendant no.1.

5. The plaintiff had also filed an application being I.A. 1522/2018

under Order XXXIX rules 1 and 2 read with Section 151 of the Code of the

Civil Procedure, 1908

1

in the present suit seeking an ad interim injunction

restraining the defendants from infringing Indian Patent no.240893 of the

plaintiff, which has since been disposed of vide order dated 12.07.2019

holding as under:-

“80. The Defendants have placed on record, the purchase orders

for the various models of its antennae. Owing to the fact that the

Defendant No.1 which is the manufacturer and seller claims to not

have any assets in India, and in view of the discussion above,

where the Defendants are clearly infringing the Plaintiff’s patent,

the Defendants are liable to deposit some amounts in the Court in

order to continue the sales of these antennae in India. The total

value of the exports made till date, as per the disclosures made by

the Defendants, is as follows:

1

Hereinafter referred to as “CPC”

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 3 of 23

81. Insofar as the sales made prior to date of suit to the tune of

$64,405,583, which, at the current rate of exchange (1 USD =

approx. Rs.68) comes to Rs.437,95,79,644/- the Defendants are

directed to give a Bank Guarantee for a sum of Rs.40 crores, which

is approximately ten percent of the above amount.

82. Insofar as the sales made during the pendency of the suit

are concerned, the total sales are to the tune of $21,835,000, which

come to Rs.148,47,80,000/-, ten percent of which is approximately

Rs.14.5 crores. The Defendants are directed to deposit the Bank

Guarantee and the said sum with the Registrar General of this

Court, within one month from date of judgment. If the Defendants

do not comply with the above directions within one month, the

Defendants shall stand restrained from manufacturing, selling,

offering for sale any models of antennae which infringe suit patent

number IN 240893.”

[Emphasis supplied]

6. In fact, the defendants challenged the order dated 12.07.2019 before

a Division Bench of this Court vide FAO(OS)(COMM) 186/2019 entitled

Ace Technologies Corp. & Ors. vs Communication Components Antenna

Inc. wherein the defendants have filed an application being CM APPL.

35213/2019 seeking stay of the operation of the order dated 12.07.2019.

The Division Bench of this Court refused to tamper with the order dated

12.07.2019, vide order dated 08.08.2019, stating as under:-

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 4 of 23

“At the same time, we are conscious of the fact that the interest of

the respondent/plaintiff in respect of the suit patent needs to be

protected during the pendency of the suit, more so when the

impugned order notes that the appellant no.1/ defendant no.1 and

the appellant no.2/ defendant no.2 are companies based in South

Korea and Hong Kong respectively and admittedly, they do not

possess any moveable or immovable assets in India, for securing

the interests of the respondent/plaintiff.”

[Emphasis supplied]

7. Furthermore, the defendants preferred an appeal before the Hon’ble

Supreme Court i.e. SLP(C) 21938/2019 entitled Communication

Components Antenna Inc. vs. Ace Technologies Corp.& Ors. challenging

the order dated 08.08.2019 of the Division Bench of this Court, wherein

the Hon’ble Supreme Court vide order dated 20.09.2019 held as under:-

“… …there was absolutely no necessity for the Division Bench, by

way of an interim order, to interfere with the well-reasoned Single

Judge’s order dated 12.07.2019, by which, in the interim, Bank

Guarantee of Rs. 40 crores and deposit of Rs. 14.05 crores was

ordered. This is especially so, as the respondent-company, being a

Korean Company, is not ordinarily subject to our jurisdiction.”

[Emphasis supplied]

8. Thereafter, the Division Bench of this Court, while adjudicating the

appeal i.e. FAO(OS)(COMM) 186/2019

2

in toto, arising inter se the same

parties out of the present proceedings, vide order dated 10.04.2023, held as

under:-

“98. In view of the above, we consider it apposite that the

appellants be granted one more opportunity to produce the

allegedly offending antenna for examination of a court appointed

expert. The appellants may approach the learned Trial Court for

the said purpose and for modification/ vacation of the impugned

judgment. If the Trial Court considers it apposite, it would pass

appropriate orders for appointing an expert for assistance in

determining whether the allegedly infringing antennae emit beam

patterns similar to the Suit Patent and consider the appellants

application for vacation/ modification of the impugned judgment.

2

2023:DHC:2479-DB

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 5 of 23

xxx xxx

100. The appellant had expressed the difficulty in depositing

10% of the sale proceeds to comply with the terms of the impugned

judgment. It is also submitted on their behalf that the said amount

is exorbitant. However, it is noticed that the learned Single Judge

had examined a royalty agreement entered into between the

respondent and another licensee for use of the patent and had

apparently, determined the terms based on the said agreement.

Therefore, we do not find any reason to modify the same. However,

given the difficulty expressed by the appellants, we consider it

apposite to modify the impugned judgment to a limited extent of

permitting the respondents to deposit a bank guarantee for a sum

of 10% of the sale proceeds instead of depositing the same in cash

with the Registrar of this Court.”

[Emphasis supplied]

9. Presently, the suit, inter se the parties herein, is at the stage of

recording of evidence before the learned Joint Registrar.

10. However, in the interregnum and as per plaintiff, considering that

the defendant no.1 has lost more than 64.90% of its share value and the

plaintiff has inhibitions that the object of the present lis will be defeated, if

the defendant no.1 is not ordered to deposit a Bank Guarantee, the plaintiff

has preferred the present application under Section 151 of the CPC

seeking a direction to the defendants to deposit a Bank Guarantee in this

Court because by the time the present lis would reach its conclusion, the

defendants would not be in a financial situation to satisfy any decree

which may be passed against them by this Court.

Submissions on behalf of the plaintiff:

11. Mr. J. Sai Deepak, learned senior counsel for the plaintiff in support

of the present application submitted that since the primary contesting

defendant, i.e. the defendant no.1’s home country is South Korea, which

does not share a reciprocal arrangement with India for recognition and

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 6 of 23

enforcement of decrees under Section 44A

3

of the CPC, if any decree is

passed by this Court against the said defendant no.1 would automatically

not be enforceable, reliance in this regard is placed upon Article 217 of the

Korean Civil Procedure Act

4

. Further, as per Mr. J. Sai Deepak, it is an

3

44A. [Execution of decrees passed by Courts in reciprocating territory

(1) Where a certified copy of a decree of any of the superior Courts of [* * *] any

reciprocating territory has been filed in a District Court, the decree may be executed in

[India] [Substituted by Act 2 of 1951, Section 3, for "the States".] as if it had been passed

by the District Court.

(2) Together with the certified copy of the decree shall be filed a certificate from such

superior Court stating the extent, if any, to which the decree has been satisfied or

adjusted and such certificate shall, for the purposes of proceedings under this section, be

conclusive proof of the extent of such satisfaction or adjustment.

(3) The provisions of section 47 shall as from the filing of the certified copy of the decree

apply to the proceedings of a District Court executing a decree under this section, and the

District Court shall refuse execution of any such decree, if it is shown to the satisfaction

of the Court that the decree falls within any of the exceptions specified in clauses (a) to (f)

of section 13.

[Explanation I.-"Reciprocating territory" means any country or territory outside India

which the Central Government may, by notification in the Official Gazette, declare to be

a reciprocating territory for the purposes of this section; and "superior Courts", with

reference to any such territory, means such Courts as may be specified in the said

notification.

Explanation II.-"Decree" with reference to a superior Court means any decree or

judgment of such Court under which a sum of money is payable, not being a sum payable

in respect of taxes or other charges of a like nature or in respect of a fine or other

penalty, but shall in no case include an arbitration award, even if such an award is

enforceable as a decree or judgment.] [Substituted by Act 71 of 1952, Section 2, for

Explanations 1 to 3.]

4

Article 217 (Recognition of Foreign Country Judgments)

(1) A final and conclusive judgment rendered by a foreign court or a judgment

acknowledged to have the same force (hereinafter referred to as "final judgment, etc.")

shall be recognized, if all of the following requirements are met: (Amended by Act No.

12587, May 20, 2014)

1. That the international jurisdiction of such foreign court is recognized under the

principle of international jurisdiction pursuant to the statutes or treaties of the Republic

of Korea;

2. That a defeated defendant is served, by a lawful method, a written complaint or

document corresponding thereto, and notification of date or written order allowing

him/her sufficient time to defend (excluding cases of service by public notice or similar),

or that he/she responds to the lawsuit even without having been served such documents;

3. That the approval of such final judgment, etc. does not undermine sound morals

or other social order of the Republic of Korea in light of the contents of such final

judgment, etc. and judicial procedures;

4. That mutual guarantee exists, or the requirements for recognition of final

judgment, etc. in the Republic of Korea and the foreign country to which the foreign

country court belongs are not far off balance and have no actual difference between each

other in important points.

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 7 of 23

admitted position that the defendant no.2 is also a Hong Kong based

company and the defendant nos.3 and 4 are Indian subsidiaries of the

defendant no.1.

12. Further, Mr. J. Sai Deepak went onto submit that since the plaintiff

by leading evidence has been able to show that the damages presently qua

the defendants, are approximately Rs.1160 Crores (approximately USD

140 Million), which is surmounting and moreover, since the defendants

themselves in their affidavit dated 12.11.2024 have stated that the

defendants have, a) cash of approximately Rs.5.68 Crores in India; b)

depreciating machinery and equipment of about Rs.4 to 5 Crores; and c) a

land which is self-assessed to the tune of Rs.18 Crores, the defendants do

not have sufficient assets in India to satisfy any decree that may be passed

by this Court in respect of the (surmounting) damages of Rs.1160 Crores

(approximately USD 140 Million) claimed by the plaintiff.

13. Mr. J. Sai Deepak submitted that while dealing with similar

circumstances in Communication Components Antenna Inc. vs. Mobi

Antenna Technologies (Shenzhen) Co. Ltd. & Ors.

5

instituted by the very

same plaintiff qua the same patent, this Court has already granted a decree

for damages in favour of the plaintiff to the tune of Rs.217 Crores. Mr. J.

Sai Deepak submitted that, however, since the defendant therein was a

China based entity and which is not a reciprocating territory with India,

the decree has been rendered as infructuous, leaving the plaintiff with no

means of recovery.

5

2022/DHC/000855

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 8 of 23

14. Mr. J. Sai Deepak then submitted that since this Court vide order

dated 12.07.2019, as reproduced hereinabove, prima facie found that the

defendants are indeed infringing the suit patent, which has also been

upheld by the Hon’ble Division Bench of this Court vide order dated

10.04.2023. As such, prima facie, there being determination of

infringement of the suit patent, the present application needs to be

allowed.

15. Mr. J. Sai Deepak also submitted that the present application could

only be moved under Section 151 of the CPC and not under Order

XXXVIII Rule 5 of the CPC since the provisions thereof are inapplicable

due to the factum that the defendants do not have sufficient assets in India

as such, there is no question of there being an apprehension that the

defendants will dissipate them. Reliance in this regard was placed upon

M. Ramachandra Rao vs. Varaprasad Rao

6

, wherein the Karnataka High

Court under similar circumstances held that the Court would not have

jurisdiction under Order XXXVIII Rule 5 of the CPC, but only under

Section 151 of the CPC. Further, reliance was also placed upon Nokia

Technologies vs. Guangdong Oppo Mobile Telecommunications Corp.

Ltd. & Ors.

7

, wherein this Court directed the defendants to furnish

security deposit, which was subsequently upheld by the Hon’ble Supreme

Court to secure the ends of justice.

16. In view of the foregoing, Mr. J. Sai Deepak lastly submitted that in

the interest of justice for securing the claim of the plaintiff, this Hon’ble

Court may be pleased to direct the defendants to furnish a Bank Guarantee

6

MANU/KA/0811/1999

7

2023 SCC Online Del 3841

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 9 of 23

to the extent of 25% of the total amount as claimed by the plaintiff on the

basis of the evidence placed on record as also in view of the factual matrix

involved herein.

Submissions on behalf of the defendants:

17. Per Contra, Mr. Suraj Kumar Singh, learned counsel for the

defendants submitted that defendant no.1’s home country recognises and

enforces foreign judgments under its domestic law under Article 217 of

the Korean Civil Procedure Act and just because South Korea is not

notified as a “reciprocating territory” under Section 44A of the CPC, the

plaintiff cannot be allowed to seek coercive reliefs against the defendant

no.1.

18. Mr. Suraj Kumar Singh submitted that Nokia Technologies (supra)

does not apply to the facts of the present case since the same was/ is

relating to Standard Essential Patents and the defendant therein was a prior

licensee, however, in the present case, the plaintiff has not yet been able to

prove any technical infringement since no claim mapping has been done

yet. Furthermore, the defendants herein have already deposited

approximately Rs.70 Crores with the Registrar General of this Hon’ble

Court, pursuant to the order dated 12.07.2019 passed by this Court.

19. Mr. Suraj Kumar Singh then submitted that reliance by the plaintiff

upon the order dated 12.07.2019 of this Court is misplaced since it was

passed at a stage when the parties were yet to lead their respective

evidence(s). Moreover, in appeal against the order dated 12.07.2019 i.e.

FAO(OS)(COMM) 186/2019, the Hon’ble Division Bench of this Court

vide order dated 10.04.2023, has emphasised the need for expert evidence

and further examination before any conclusive finding on infringement

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 10 of 23

can be made. In fact, prior thereto also, the Hon’ble Supreme Court vide

order dated 20.09.2019 in SLP(C) 21938/2019, arising between the same

parties, never upheld any findings of infringement therein.

20. Mr. Suraj Kumar Singh then submitted that it is only in rare and

exceptional cases that interim relief(s) to final relief(s) can be granted,

which is not the case herein, particularly since the defendants have a

strong prima facie case with balance of convenience and irreparable harm

overwhelming in their favour. Reliance in this regard is placed upon

Deoraj vs State of Maharashtra & Ors

8

. wherein it is held that such

interim relief(s) be granted only if the Court is satisfied that withholding

of it would prick its conscience and it would do violence to the sense of

justice.

21. Mr. Suraj Kumar Singh also submitted that the defendant no.1 is a

South Korea based entity, as such it does not have sufficient assets in

India, it’s role is limited to manufacturing of antennas in South Korea,

which were directly sold to Reliance Jio pursuant to purchase orders and

the discontinuation of sale of antennas was due to the lack of further

orders from Reliance Jio and therefore the aforesaid situation is not the

final condition of the defendants. Also, the evidence lead by the plaintiff

for damages to the tune of Rs.1160 Crores (approximately USD 140

Million) is yet to be proved.

22. Mr. Suraj Kumar Singh further submitted that the defendants are in

a healthy financial position to satisfy any potential decree that may be

passed, which is also evident from the affidavit dated 20.01.2025 of the

CFO of the defendant no.1. In any event, the plaintiff has failed to show

8

(2004) 4 SCC 697

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 11 of 23

any real or imminent risk of the defendants fleeing the jurisdiction of this

Court to frustrate any potential decree, moreover, the defendants have

already deposited more than Rs.70 Crores in pursuance of the interim

order which shows bona-fides of the defendants. In view thereof, reliance

placed by the plaintiff on Mobi Antenna Technologies (supra) is

misplaced since the facts therein were different from the present one, as

the defendant therein had abandoned the suit proceedings.

23. In view thereof, Mr. Suraj Kumar Singh prayed for dismissal of the

present application.

Reasonings, discussions and analysis:

24. This Court has heard Mr. J. Sai Deepak, learned senior counsel for

the plaintiff as also Mr. Suraj Kumar Singh, learned counsel for the

defendants and perused the relevant documents on record as also adverted

to the judgments cited by them.

25. Based on the above, the whole issue is revolving around the factum

of depositing 25% of the damages by the defendants, as claimed by the

plaintiff, to meet the ends of justice under Section 151

9

of the CPC, and

that too, whence the suit is to be finally adjudicated by this Court.

26. Adjudication of a relief by a Court of law in India is based on the

prevalent Statute(s) in India, which are equally applicable for all parties

appearing before it. The ‘Court of Law’ can be any Forum(s)/ Court(s)/

Judicial Authority(s)/ Presiding Officer(s); the ‘prevalent Statute(s)’ can be

any Act(s)/ Rule(s)/ Regulation(s)/ Guideline(s); the ‘parties’ can be any

person/ entity/ concern/ company of any National or International origin.

9

Section 151. Saving of inherent powers of Court- Nothing in this Code shall be deemed

to limit or otherwise affect the inherent power of the Court to make such orders as may be

necessary for the ends of justice, or to prevent abuse of the process of the Court.

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 12 of 23

However, the applicability of each of the above is/ are dependent upon the

facts and circumstances involved and there is no hard and fast rule

therefor.

27. Section 151 of the CPC is about “Saving of inherent powers of

Court” whereby the Court is empowered to pass all such “necessary”

order(s) as is deemed fit, proper and appropriate for meeting “... the ends

of justice or to prevent abuse of the process of the Court.” Though, Section

151 of the CPC gives sufficient and wide discretionary powers to the

Court to exercise, however, there is no qualm that a general provision of

law like Section 151 of the CPC is to be exercised sparingly by the Court,

with caution and circumspection. But, at the same time, there is also no

qualm that exercising such powers is/ are dependent upon the situation

when/ where it is felt appropriate and when/ where the situation so

demands, especially, to meet the ends of justice and where it is pricking

the conscience of the Court. Also, the other key factors playing major role

are where an effected party is prima facie able to convince the Court that

the balance of convenience is heavily tilting in its favour and also that if

an appropriate order is not passed in its favour at an appropriate stage then

it may/ shall result in causing irreparable harm, loss and injury to the

party, for which it cannot be compensated financially.

28. No doubt, for exercising its powers under Section 151 of the CPC,

the Court may be faced with a situation where granting an interim relief to

an effected party may tantamount to granting the final relief itself,

however, when faced with such a situation, it will be relevant for the Court

to consider if it will be too late when the time comes for granting final

relief, no execution will be possible despite decree in its favour. In such a

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 13 of 23

scenario, for proper dispensation of due justice and to meet the ends of

justice, attempt to grant (sufficient) protection to the effected party, the

Court should proceed to grant appropriate relief, be it under Section 151 of

the CPC. At that time, under the given circumstances, the Court has to be

convinced/ persuaded by the effected party that there is a prima facie case

made out in its favour wherein the balance of convenience lies in its

favour and where it may face irreparable harm, loss and injury, if an

appropriate order is not passed in its favour.

29. Be that as it may, if a situation so arises where there is/ are hardly

any choice(s) left for the Court but to follow the rare and exceptional route

of exercising the discretionary remedy under Section 151 of the CPC.

Reliance in this regard is placed upon Deoraj (supra) wherein, the

Hon’ble Supreme Court, after being satisfied of it being a foolproof case,

granted interim relief and held as under:-

“Situations emerge where the granting of an interim relief would

tantamount to granting the final relief itself. And then there may be

converse cases where withholding of an interim relief would

tantamount to dismissal of main petition itself; for, by the time the

main matter comes up for hearing there would be nothing left to be

allowed as relief to the petitioner though all the findings may be in

his favour. In such cases the availability of a very strong prima

facie case of a standard much higher than just prima facie case, the

considerations of balance of convenience and irreparable injury

forcefully tilting the balance of case totally in favour of the

applicant may persuade the Court to grant an interim relief though

it amounts to granting the final relief itself. Of course, such would

be rare and exceptional cases. The Court would grant such an

interim relief only if satisfied that withholding of it would prick the

conscience of the Court and do violence to the sense of justice,

resulting in injustice being perpetuated throughout the hearing,

and at the end the Court would not be able to vindicate the cause of

justice. Obviously such would be rare cases accompanied by

compelling circumstances, where the injury complained of is

immediate and pressing and would cause extreme hardship. The

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 14 of 23

conduct of the parties shall also have to be seen and the Court may

put the parties on such terms as may be prudent.

The present one is a case where we are fully satisfied that a

foolproof case for the grant of interim relief was made out in

favour of the petitioner in the High Court on the basis of the

material available before the Court.”

30. The Hon’ble Supreme Court in Rahul S. Shah vs. Jinendra Kumar

Gandhi & Ors.

10

while adverting to the powers of a Court under the

provisions of Section 151 of the CPC held as under:-

“….42. All Courts dealing with suits and execution proceedings

shall mandatorily follow the below-mentioned directions:

9. In a suit for payment of money, before settlement of issues,

the Defendant may be required to disclose his assets on oath, to the

extent that he is being made liable in a suit. The Court may further,

at any stage, in appropriate cases during the pendency of suit,

using powers Under Section 151 Code of Civil Procedure, demand

security to ensure satisfaction of any decree….”

[Emphasis supplied]

31. In fact, under such circumstances and to meet the ends of justice,

the most effective recourse is the inherent powers under Section 151 of the

CPC which enables the Court to pass appropriate orders in situations

where no express provision exists to secure the necessary relief. This

Court finds able support from M. Ramachandra Rao (supra), wherein the

learned Single Judge held as under:-

“…9. The only other source of power that could be thought of is

Section 151 Civil Procedure Code. The limits of the exercise of the

power under Section 151 Civil Procedure Code, is clearly defined

M/s. Ram Chand and Sons Sugar Mills Pvt. Limited v. Kanhaya

Lal, 1966(3) SCC 856: MANU/SC/0263/1966: AIR 1966 SC 1899

and the relevant portion reads as follows:

The inherent power of a Court is in addition to and complementary

to the powers expressly conferred under the Code. But that power

10

(2021)6 SCC 418

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 15 of 23

will not be exercised if its exercise is inconsistent with, or comes

into conflict with, any of the powers expressly or by necessary

implication conferred by the other provisions of the Code. If there

are express provisions exhaustively covering a particular topic,

they give rise to a necessary implication that no power shall be

exercised in respect of the said topic otherwise than in the manner

prescribed by the said provisions… ”

32. Interestingly, a Division Bench of this Court in Nokia Technologies

(supra), while dealing with a suit for infringement of Standard Essential

Patent and of which the undersigned was a part, specifically held as

under:-

“73. In any event, this Court is of the view that in exercise of its

inherent power under Section 151 CPC as an interim measure, it

can pass a pro-tem order for balancing the equities with a view to

aid a party.

xxxx

78. Consequently, a combined result of Section 151, Order XII

Rule 6, Order XXXIX Rule 10 CPC is that the Courts have the

power to pass orders for deposit of money pending decision in a

suit, if the facts so warrant. Section 151 CPC can be called in aid

to cover cases which are analogous to these principles but may not

be directly covered by the express words in the Code.”

[Emphasis supplied]

33. In fact, a learned Single Judge of this Court, who rendered the

judgment dated 12.07.2019 in the present proceedings, in Rxprism Health

Systems Private Limited & Anr. vs. Canva Pty Limited & Ors.

11

, in

factually similar context involving a forging entity, took into account the

aspects of sales figures, revenue generated, current operations in India and

the overall financial condition of the defendants/ infringers, while

directing deposit of specified amount by way of Bank Guarantee and/ or

Fixed Deposit Receipt to secure the interest of the plaintiff/ patent holder

therein, holding as under:-

11

2023 SCC OnLine Del 4186

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 16 of 23

“…97. This Court also notices that Defendant 1 is an Australian

company and Defendants 2 and 3 are the senior officials in the said

company. The defendant has no assets in India and also do not

have a physical business in India. Accordingly, considering the

revenue and sales figures of the users who have used the "Present

and Record" feature in India at least once as per the defendant

themselves, till 30-6-2022 Defendant 1 Canva Pty. Ltd. is directed

to deposit a sum of Rs 50 lakhs with the Registrar General of this

Court, which shall be kept in the form of a FDR, as a security for

the plaintiff's claims for past use of the infringing

feature in India..”

[Emphasis Supplied]

34. Factually, the present proceedings are, admittedly, emanating from

and are involving, a private party who is primarily the defendant no.1

which is a Korean based entity and the defendant no.2 is also a Hong

Kong based company and the defendant nos.3 and 4 are only Indian

subsidiaries of the defendant no.1. In fact, in the affidavit dated

12.11.2024, the authorised representative of the defendants has stated as

under:-

“Defendant no.3

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 17 of 23

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 18 of 23

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 19 of 23

Defendant no.4

”

35. In effect, the aforesaid affidavit filed on 12.11.2024 clearly reflects

that the defendant no.1 has limited assets in India. Additionally, it is also

the case of the defendants that they have stopped their operations in India

due to no further orders from Reliance Jio.

36. Under such circumstances, this Court finds, barring invoking

Section 151 of the CPC, the plaintiff was left remediless, with no other

remedy available to it under law for exercising its rights under the given/

existing factual scenario. Therefore, the plaintiff has rightly exercised its

rights to file the present application under Section 151 of the CPC, which

is maintainable in the present form, particularly, whence there is no bar

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 20 of 23

and/ or impediment therefor. Thus, this is a fit case for this Court to allow

the plaintiff to exercise its rights under Section 151 of the CPC as

appropriate orders are called for in the present given scenario and that too,

at this stage.

37. Though, Order XXXVIII Rule 5 of the CPC was/ is another remedy

available to the plaintiff, however, the same is of no relevance under the

facts and circumstances involved since the invocation thereof was/ is only

contingent upon the existence of property belonging to the defendants

which was/ is amenable to attachment as the existence of such attachable

property is a condition precedent for exercise of jurisdiction under this

provision. In the absence of any such property of the defendants capable

of being attached available within India, passing of any order under Order

XXXVIII Rule 5 of the CPC would become ineffective and fall outside the

ambit of the said provision. Taking into account that there is no substantial

property of any of the defendants in India, as also considering that the

defendants have no active business in India, Order XXXVIII Rule 5 of the

CPC, having no applicability, cannot come to the aid of the plaintiff.

38. Moreover, as per Article 217 of the Korean Civil Procedure Act, a

decree passed by a Foreign Court shall be enforceable within the Republic

of South Korea only upon the satisfaction of the condition of reciprocity.

Such reciprocity must be established, inter alia, by entering into a bilateral

agreement and/ or treaty. In the absence of such reciprocity, a foreign

decree shall not be deemed capable of being enforced within the

jurisdiction of South Korea. Therefore, only if/ when reciprocity is present

in the aforesaid modes/ forms, then only such a decree passed by the India

Court(s) will be enforceable in South Korea. There would, thus, be no

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 21 of 23

sanctity to a decree passed by a Court of Law in India, which, in any event

will be liable for scrutiny once again.

39. In view thereof, as also bearing in mind the substantial decline of

65% (approximately) in the valuation of defendant no.1, ends of justice

would be adequately met by directing primarily the defendant no.1 to

deposit 25% of the amount claimed by the plaintiff as damages, more so,

since the same is derived on the basis of Rs.1160 Crores (approximately

USD 140 Million). Also, in view of the depreciating financial position of

defendant no.1 which is, admittedly, a foreign (Korean) entity, as also in

view of Article 217 of the Korean Civil Procedure Act and the

apprehensions of the plaintiff qua inability of the defendants to pay the

damages, the aforesaid measure is not only fair and reasonable, but rather

practical as well. Taking all these as, unless adequate safeguards are put in

place, at this stage, the very purpose/ interest of justice shall be rendered

otiose.

40. Also, the factual circumstances involved justify grant of security

deposit as an interim arrangement; and that too without entering into an

elaborate discourse on merits at this stage. This is, especially, with a view

to uphold/ protect the rights of a registered patent holder like the plaintiff;

as also to promote a progressive patent regime that incentivizes

innovation/ creativity and intellectual advancement. While maintaining a

conducive framework for dissemination of knowledge, and keeping in

view the object of adjudicatory process to ensure that when/ if the ultimate

decree or relief is granted, the same should not become incapable of being

enforced and should be in the form of an effective relief, the plaintiff has

been able to make out a case in its favour.

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 22 of 23

41. At this juncture, it is imperative to note that while the exact

quantification of damages remains to be adjudicated, this Court, vide order

dated 12.07.2019, prima facie found that the defendants are indeed

infringing the suit patent, which has also been upheld by the Hon’ble

Division Bench of this Court vide order dated 10.04.2023 and which has

attained finality. Further, in pursuance to the order dated 12.07.2019 of

this Court and also by the Hon’ble Supreme Court vide order dated

30.09.2019, the defendant no.1 has cumulatively deposited Rs.70 Crores

@ 10% of the revenue generated from sales as a continuing obligation of

the proceeds accruing from the infringing use of the plaintiff’s patent.

Both the aforesaid orders have neither been altered/ modified/ changed

and as such are final and binding upon the defendants even as of today.

42. Despite the aforesaid, since it is the case of the defendants that there

had been no sales in the preceding year, no deposits had been made before

this Court, the same, in addition to the other factors coupled with the

continued non-compliance with the directions of this Court, reflect that the

financial position of the defendant no.1, is indeed in a precarious state.

The apprehension raised by the plaintiff regarding the defendants’ inability

to satisfy the decree, if ultimately passed, considering the facts and

circumstances of the present lis will turn into a reality, if appropriate

order(s) is/ are not passed, at this stage.

43. Collectively taking all the aforesaid, the plaintiff has been able to

convince/ persuade this Court to exercise its inherent powers under

Section 151 of the CPC. As such, this Court is of the view that a prima

facie case has been made out in favour of the plaintiff and against the

defendants with the balance of convenience in its favour for grant of an

I.A. 36658/2024 in CS(COMM) 1222/2018 Page 23 of 23

appropriate relief, at this stage, as the defendants currently do not have

any ongoing business operations in India and the absence thereof, indeed

undermines and puts at risk the rights/ interests of the plaintiff. Moreover,

if the plaintiff’s apprehension regarding the defendant’s inability to satisfy

the decree materializes, great irreparable harm, loss and injury is likely to

occur against the plaintiff, and the entire objective of the captioned lis

shall be rendered otiose.

44. Accordingly, in the interest of justice and particularly to secure the

interests of the plaintiff during the pendency of the present proceedings,

the defendant no.1 is hereby directed to furnish and deposit an amount

equivalent to 25% of the damages of Rs.1160 Crores (approximately USD

140 Million) as claimed by the plaintiff i.e. Rs.290 Crores, in addition to

all the monies already deposited by the defendant no.1 in pursuance to

previous order(s) of the Court(s) from time to time, either by way of a

Bank Guarantee issued by a scheduled commercial bank or in the form of

a Fixed Deposit Receipt in the name of the Registrar General of this Court

within a period of four weeks from today.

45. Accordingly, the present application is allowed and disposed of.

SAURABH BANERJEE, J

JULY 01, 2025/So