Vaishali Mittal

Career

Vaishali Mittal has more than 20 years’ experience in Intellectual Property Litigation where she has played leadership roles in some of

the most complex and extremely decisive matters in the IP domain.

Vaishali is clearly one of the most sought-after IP litigator with emphasis on Standard Essential Patents.

Her practice is both transactional and litigation. Vaishali has enabled the firm to secure India’s first judgement on Product-by-Process

Patent, Country’s first Protem security order infavour of Nokia, first Anti-Anti-Suit Injunction in InterDigital Corp & Ors v Xiaomi Corp &

Ors; nation’s first final judgment on the issue of Standard Essential Patents in Philips v. KK Bansal; Philips v. Rakesh Bansal; landmark

judgment on highest ever quantum of damages in a copyright, trademark and design infringement case in Philips v. Amazestore & Ors;

first judgement recognising a colour combination (green and yellow) a well-known trademark in Deere & Co. & Anr. v. Mr. Malkit Singh

& Ors.

She also led from the front in the high-stake face-off between Nokia and Lenovo resulting in a multi-year, multi-technology Patent

Cross-license Agreement between the two tech giants, and settlement of all pending patent litigation worldwide.

Also to her credit are the landmark judgement on issue of trans-border reputation; judgment providing much-needed relief to patent

holders from strict liability under the disclosure regime of section 8 of the Patents Act, 1970 and also the judicial recognition that

“trade-secret” disputes can be considered as “commercial disputes” under the Commercial Courts Act, 2015 despite lack of

statutory recognition of trade secrets as intellectual property in India. She also represented Vifor Pharma International (Galenica

Group), in Vifor v. High Court of Delhi in a writ petition before the Delhi High Court resulting in, to the relief of scores of intellectual

property owners, a stay of the transfer of at least 20,000 intellectual property lawsuits (valued under INR 1 crore) from the High Court

to subordinate district courts, in the aftermath of the promulgation of the Commercial Courts Act, 2015.

When not on her legs, Vaishali chooses the medium of writing to advance the cause of IP through articles in leading national and

international publications like Managing IP, Kluwer Patent Blog, Asia IP, Vantage Asia, Chambers and Partners, Expert Guides,

Thomson Reuters, Lexology etc. She has also co-authored ‘IPONOMICS’, a picturesque coffee table book compiling celebrated IP

matters, and ‘Origami’, an in-house knowledge manual on Best Practices and Procedures of IP practice in India, for law firms and

companies.

CAREER/ WORK HIGHLIGHTS

The following is a partial listing of some of the path-breaking representative matters handled by Vaishali in the Patent and SEP space:

• Vifor International v MSN Labs & Ors – India’s first judgement on Product-by-Process Patent

• Nokia v Oppo – India’s first protem security order

• InterDigital Corp & Ors v Xiaomi Corp & Ors – India’s first Anti-Anti Suit injunction

• Multi-year, Multi-technology Patent Cross-license Agreement between Nokia and Lenovo, and settlement of all pending patent

litigation worldwide.

• Nokia Technologies Oy v. Guangdong Oppo Mobile Telecommunication Corp – Ongoing matter with Pravin and team sharing a

‘Global Arbitration Proposal’ for breakthrough in cross-jurisdiction SEP disputes.

INDIA

• Interdigital v Oppo – Ongoing matter recognising need for implementor to furnish financial security to safeguard the interest of

the SEP holder during the pendency of the suit.

• Represented Koninklijke Philips N.V. before the Delhi High Court in two heavily contested patent battles namely: Philips v. KK

Bansal; Philips v. Rakesh Bansal, securing India’s first final judgment on the issue of Standard Essential Patents.

• Represented Nokia in various pre-suit mediation claims concerning infringement of Standard Essential Patents before the Delhi

High Court.

• Represented Koninklijke Philips N.V. before the Delhi High Court in two landmark heavily contested design and infringement of

trademark lawsuits namely: Philips v. Amazestore & Ors. and Philips v. Amitkumar Kantilal Jain & Ors, securing a landmark

judgment on the highest ever quantum of damages in a copyright, trademark and design infringement case in India.

• Represented Astrazeneca AB before the Delhi High Court against leading pharmaceutical companies Emcure Pharmaceuticals

Limited and MSN Laboratories Limited in a highly contested patent infringement lawsuit, securing an ad interim injunction in

favor of Astrazeneca.

• Represented Koninklijke Philips N.V. in Maj. Sukesh Behl v. Philips; securing a landmark judgment providing much-needed relief

to patent holders from strict liability under the disclosure regime of section 8 of the Patents Act, 1970.

• Represented Sanofi S.A., a pharmaceutical company in Sanofi v. Kirti B. Maheshwari before the Delhi High Court, which saw the

first instance of judicial recognition that “trade-secret” disputes could be considered as “commercial disputes” under the

Commercial Courts Act, 2015. This is despite there being no statutory recognition of trade secrets as intellectual property in

India.

• Represented Vifor Pharma International (Galenica Group), a pharmaceutical company in Vifor v. High Court of Delhi in a writ

petition before the Delhi High Court resulting in, to the relief of scores of intellectual property owners, a stay of the transfer of at

least 20,000 intellectual property lawsuits (valued under INR 1 crore) from the High Court to subordinate district courts, in the

aftermath of the promulgation of the Commercial Courts Act, 2015.

PROFESSIONAL INVOLVEMENT

• Member of AIPPI

• Member of APAA

• Member of INTA

• Bar Council of India

• Delhi High Court Bar Association

AWARDS & RECOGNITION:

Recognitions at firm level:

• Vifor CCI matter – IBLJ Deal of the Year 2022

• InterDigital vs Xiaomi – IBLJ Deal of the Year 2020 and MIP India Case of the Year at Asia Pacific Awards 2023

• Nokia and Lenovo Multi-year, Multi-technology Patent Cross-license Agreement - IBLJ Deal of the Year 2021

Individual Recognitions

›› Year 2024

• Ranked in IP Litigation department of Chambers and Partners Asia Pacific Guide 2024

• WTR 1000 recommended individual

• IBLJ A-List 2023-24

›› Year 2023

• IBLJ A list lawyer 2022-23

• Lexology Client Choice Award

• Ranked in IP Litigation department of Chambers and Partners Asia Pacific Guide 2023

• Leading Individual – Legal 500 Asia Pacific Rankings 2023

• ALB India Top IP Lawyers 2022

• IAM Patent 1000 2023 (Gold Band)

›› Year 2022

• Ranked in IP Litigation department of Chambers and Partners Asia Pacific Guide 2022