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Thursday, June 5, 2014

Sec.25 , sec. 64 of Patents Act - sec.10 and 151 of C.P.C -Jurisdiction- Infringement suits - Counter claims - Revocation petitions - apex court held that Since a “counter-claim” is of the nature of an independent suit, a “counter-claim” cannot be allowed to proceed, where the defendant has already instituted a suit against the plaintiff, on the same cause of action. If the respondents in their capacity as “any person interested”, had filed a “revocation petition” before the institution of an “infringement suit”, they cannot be permitted to file a “counter-claim” on the same cause of action. The natural conclusion in the above situation would be, the validity of the grant of the patent would have to be determined in the “revocation petition”. - the “Appellate Board” would thereafter (after the filing of the “counter-claim” in the “infringement suit”), cease to have the jurisdiction to adjudicate upon the validity of the patent.= Dr. Aloys Wobben and another … Appellants versus Yogesh Mehra and others … Respondents = 2014 (June.Part )http://judis.nic.in/supremecourt/filename=41553

Sec.25 , sec. 64 of Patents Act - sec.10 and 151 of C.P.C -Jurisdiction- Infringement suits - Counter claims - Revocation petitions - apex court held that Since a “counter-claim” is
of the nature of an independent suit, a “counter-claim” cannot be allowed to
proceed, where the defendant has already instituted a suit against the plaintiff, on
the same cause of action. If the respondents in their capacity as “any
person interested”, had filed a “revocation petition” before the institution of an
“infringement suit”, they cannot be permitted to file a “counter-claim” on the same
cause of action. The natural conclusion in the above situation would be, the
validity of the grant of the patent would have to be determined in the “revocation
petition”.  -  the “Appellate Board” would thereafter (after the filing of the “counter-claim” in the “infringement suit”), cease to have the jurisdiction to adjudicate upon the validity of the patent.=

In our considered view, even though some of the
submissions were differently worded, they were premised on exactly the same
legal contentions, namely, that the defendant in an “infringement suit”, having
raised a “counter-claim” seeking revocation of a patent, the validity of such a
challenge can be determined only at the hands of the High Court, i.e., while
dealing with the “counter-claim”. And that, the “Appellate Board” would thereafter
(after the filing of the “counter-claim” in the “infringement suit”), cease to have the
jurisdiction to adjudicate upon the validity of the patent.

In our considered view,

Section 64(1) vests the liberty to raise a challenge to a patent in three different
circumstances. 
Firstly, on a petition by “any person interested”. 
Secondly, on a
petition of the Central Government. 
In case of the above two options, the petition for revocation would lie before the “Appellate Board”. 
Thirdly, by way of a
“counter-claim” in a suit for infringement of a patent. 
The third option is adjudicable only by the jurisdictional High Court.

 A perusal of Section 25 of the Patents Act reveals, that “any person”, and

not just a “person interested” (as in the case of Section 64 of the Patents Act),
can “represent by way of opposition” against an application filed for the grant of a
patent. This opportunity, has been made available, even before a patent has
been granted. This opposition to the grant of a patent materializes, after an
application for the grant of a patent has been published.

Whereas “any person” can “represent by way of opposition”,

to an application for the grant of a patent (under Section 25(1) of the Patents
Act), only a “person interested” can challenge the grant of a patent by issuing a
“notice of opposition” (under Section 25(2) of the Patents Act). On the subject of
locus, therefore, Section 25(2) and Section 64(1), are alike, inasmuch as, the
locus to raise a challenge to a patent granted, lies with “any person interested” in
both of these provisions. A challenge to the grant of a patent can also be raised
by a defendant in a “patent infringement suit”. This can be done by the
defendant by filing a “counter-claim” in a “patent infringement suit”.
A “counter-claim” for all intents and purposes, must be understood as a
suit, filed by one who is impleaded as a defendant. A “counter-claim” is
essentially filed to obstruct the claim raised in a suit. A “counter-claim” is tried
jointly, with the suit filed by the plaintiff, and has the same effect as a cross-suit.
Therefore, for all intents and purposes a “counter-claim” is treated as a plaint,
and is governed by the rules applicable to plaints. The court trying a suit, as well
as, the “counter-claim”, has to pronounce its judgment on the prayer(s) made in
the suit, and also, those made in the “counter-claim”. Since a “counter-claim” is
of the nature of an independent suit, a “counter-claim” cannot be allowed to
proceed, where the defendant has already instituted a suit against the plaintiff, on
the same cause of action. The above conclusion is drawn on the basis of the
accepted principle of law crystallized in Section 10 of the Code of Civil
Procedure, 1908 (hereinafter referred to as, the CPC) read with Section 151 of
the CPC.

Therefore, where an issue is already pending adjudication between the same
parties, in a Court having jurisdiction to adjudicate upon the same, a
subsequently instituted suit on the same issue between the same parties, cannot
be allowed to proceed. A similar question arises for consideration before this
Court, in the present controversy. If the respondents in their capacity as “any
person interested”, had filed a “revocation petition” before the institution of an
“infringement suit”, they cannot be permitted to file a “counter-claim” on the same
cause of action. The natural conclusion in the above situation would be, the
validity of the grant of the patent would have to be determined in the “revocation
petition”. 
Therefore, in the above situation, while the “revocation petition” will
have to be permitted to be pursued, the “counter-claim” cannot be permitted to
be continued. 
Therefore, in the above eventuality, it is apparent that the situation
would be resolved, in the same manner, as it would have been resolved in
cross-suits filed by the rival parties, before different jurisdictional courts. In our
considered view, the above conclusion is imperative for a harmonious
interpretation of the relevant provisions of the Patents Act.
we have accepted the contention advanced at the hands of the learned counsel
for the appellants, that only one out of two remedies available under Section 64
of the Patents Act, can be availed of, so as to assail the grant of a patent.
Accordingly the said remedy may be availed of in the capacity of either “any
person interested”, or in the capacity of a defendant in a “counter-claim”.
 We
have already concluded hereinabove, that having availed of any one of the above
remedies, it is not open to the same person to assail the grant of a patent by
choosing the second alternative available to him. 
In view of our above
conclusion, the instant submission advanced by the learned counsel for the
appellants does not survive for consideration.
31. The impugned order is therefore set aside, in the terms recorded
hereinabove. The appeal is disposed of in the above terms.


2014 (June.Part)http://judis.nic.in/supremecourt/filename=41553
A.K. PATNAIK, JAGDISH SINGH KHEHAR

 “REPORTABLE”
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NO. 6718 OF 2013
Dr. Aloys Wobben and another … Appellants
versus
Yogesh Mehra and others … Respondents
J U D G M E N T
Jagdish Singh Khehar, J.
1. We are informed that Dr. Aloys Wobben (appellant no.1, hereinafter
referred to as, ‘the appellant’) is a scientist-engineer. It is also the case of the
appellant, that he has to his credit several inventions in the field of wind turbine
generators, and wind energy converters. The appellant claims to be owner and
holder of various intellectual property rights, including approximately 2,700
patents (in more than 60 countries). Out of the aforesaid patents, we are
informed, that the appellant has about 100 patents in India. The appellant is also
engaged in the manufacture of wind-turbines. In the field of wind turbines, he
claims a position amongst the three largest manufacturers in the world. The
aforesaid manufacturing process is carried out by the appellant under the name
of Enercon GmbH. Wobben Properties GmbH, appellant no.2, through an
assignment agreement dated 05.01.2012, has acquired the right, title and
interest in all the Indian registered designs and patents (including the pending2
registrations), belonging to Dr. Aloys Wobben. The appellant’s manufacturing
process, is allegedly, carried out in about 27 countries. The Enercon Group
claims to employ more than 8,000 people, worldwide. Insofar as India is
concerned, Dr. Aloys Wobben has been carrying on the aforesaid manufacturing
process, through a joint venture partnership with Yogesh Mehra and Ajay Mehra,
(respondent nos.1 and 2 herein). The Indian enterprise is carried on in the trade
name of Enercon India Limited (respondent no.3 herein). The name of
respondent No.3, we are informed, has since been changed to Wind World
(India) Limited. However, while dealing with the controversy in hand, we shall
continue to refer to respondent No.3 as Enercon India Limited. In fact, Yogesh
Mehra and Ajay Mehra (aforementioned), are the directors of Enercon India
Limited.
2. Enercon India Limited was formed in 1994 as a joint venture, between
Enercon GmbH and respondent Nos.1 and 2. Enercon India Limited, we are
told, was originally carrying on its manufacturing process, in furtherance of
licences granted by the appellant Dr. Aloys Wobben. According to the appellant,
the licences to use technical know-how, were vested by the appellant with
Enercon India Limited, through written agreements. These agreements were
executed between the parties from time to time, and the last such agreement
was executed on 29.9.2006. These agreements, according to the appellant,
were intellectual property licence agreements. The last agreement dated
29.9.2006, we are informed, superseded all previous agreements (including the
technical know-how agreement of 1994, and the technical know-how agreement3
of 2000). It is also the case of the appellant, that the intellectual property licence
agreement dated 29.9.2006, was terminated by Enercon GmbH, on 8.12.2008. It
is submitted, that non-fulfillment of the obligations contained in the intellectual
property licence agreement dated 29.9.2006, was the reason for such
termination.
3. According to the appellant, Dr. Aloys Wobben, despite the termination of all
intellectual property licence agreements with Enercon India Limited, respondent
nos.1 to 3 herein, continued the use of the appellant’s patents, and as such, the
intellectual property rights belonging to the appellant, without due authority. This
action by respondent nos. 1 to 3 has been of extreme detriment to the appellant,
as his technical know-how was being exploited by the respondents, without
consideration or authorisation. According to the factual position depicted in the
impugned order, passed by the High Court of Delhi (hereinafter referred to as,
the High Court), Enercon India Limited, had filed 19 “revocation petitions” before
the Intellectual Property Appellate Board (hereinafter referred to as the “Appellate
Board”) under Section 64(1) of the Patents Act, 1970 (hereinafter referred to as
the ‘Patents Act’), in January 2009. Through the aforesaid petitions, Enercon
India Limited had sought revocation of the patents held in the name of the
appellant.
4. Dissatisfied with the action of Enercon India Limited, in having approached
the “Appellate Board”, Dr. Aloys Wobben filed a number of “patent infringement
suits”. In these suits, he impleaded, inter alia, Yogesh Mehra, Ajay Mehra and4
Enercon India Limited. We are informed that the first such suit (bearing no. 1349
of 2009) was filed on 27.7.2009. Three other similar suits (bearing nos. 1963 of
2009, 1967 of 2009 and 1968 of 2009) were instituted on 20.10.2009. The fifth
suit (bearing no. 176 of 2010) was instituted on 28.1.2010, the sixth suit (bearing
no. 1305 of 2010) was filed on 2.7.2010. The last suit (bearing no. 1333 of 2010)
was instituted on 5.7.2010. In all 10 “patent infringement suits”, were filed after
Enercon India Limited had already instituted 19 “revocation petitions”, before the
“Appellate Board”.
5. It would be pertinent to mention, that the “patent infringement suits” were
filed by the appellant Dr. Aloys Wobben, before the High Court. In the above
suits, it was open to the contesting respondents, to raise as a “counter-claim”, a
prayer for the revocation of the patent, which constituted the basis of the “patent
infringement suit”. After the appellant had filed the abovementioned
“infringement suits”, the respondents filed “counter-claims” in response to some
of the “infringement suits”. Illustratively, in response to the first suit bearing no.
1349 of 2009, the “counter-claim” was filed on 9.9.2009; to the suit bearing no.
1963 of 2009, the “counter-claim” was filed on 30.1.2010; to the suit bearing no.
176 of 2010, the “counter-claim” was filed on 30.4.2010. Likewise,
“counter-claims” were filed in the other suits as well.
6. Enercon India Limited is stated to have also filed 4 further “revocation
petitions” before the “Appellate Board”, after the appellant’s institution of the
“patent infringement suits” (referred to above). These “revocation petitions” were5
filed by the respondents in 2010 and 2011. The preceding two paragraphs, as
well as the instant paragraph, depict the timing of the filing of the “revocation
petitions” (by the respondents), the “infringement suits” (by the appellant) and the
“counter-claims” (by the respondents).
7. From the narration of the factual position recorded above, it is apparent,
that the contesting respondents filed 23 “revocation petitions” before the
“Appellate Board”, praying for the revocation of the patents held in the name of
the appellant. Exactly the same prayer has been made by the contesting
respondents, by way of the “counter-claims”, filed in response to the “patent
infringement suits”. It is not a matter of dispute, that a number of “revocation
petitions” filed by the respondents, have been settled by the “Appellate Board”,
whereas, some are still pending consideration. Despite the above, the same
issues are being re-agitated by the respondents, before the High Court, through
the “counter-claims”.
8. The main contentions advanced by the learned counsel for the appellants,
emerge from Section 64 of the Patents Act. For a complete understanding of the
said contentions, it is essential to extract Section 64 hereunder:
“Section 64 - Revocation of patents—(1) Subject to the provisions
contained in this Act, a patent, whether granted before or after the
commencement of this Act, may, be revoked on a petition of any person
interested or of the Central Government by the Appellate Board or on a
counter-claim in a suit for infringement of the patent by the High Court on
any of the following grounds that is to say-
(a) that the invention, so far as claimed in any claim of the
complete specification, was claimed in a valid claim of earlier priority6
date contained in the complete specification of another patent
granted in India;
(b) that the patent was granted on the application of a person not
entitled under the provisions of this Act to apply therefor;
(c) that the patent was obtained wrongfully in contravention of the
rights of the petitioner or any person under or through whom he
claims;
(d) that the subject of any claim of the complete specification is
not an invention within the meaning of this Act;
(e) that the invention so far as claimed in any claim of the
complete specification is not new, having regard to what was publicly
known or publicly used in India before the priority date of the claim
or to what was published in India or elsewhere in any of the
documents referred to in section 13;
(f) that the invention so far as claimed in any claim of the
complete specification is obvious or does not involve any inventive
step, having regard to what was publicly known or publicly used in
India or what was published in India or elsewhere before the priority
date of the claim:
(g) that the invention, so far as claimed in any claim of the
complete specification, is not useful;
(h) that the complete specification does not sufficiently and fairly
describe the invention and the method by which it is to be
performed, that is to say, that the description of the method or the
instructions for the working of the invention as contained in the
complete specification are not by themselves sufficient to enable a
person in India possessing average skill in, and average knowledge
of, the art to which the invention relates, to work the invention, or
that it does not disclose the best method of performing it which was
known to the applicant for the patent and for which he was entitled to
claim protection;
(i) that the scope of any claim of the complete specification is not
sufficiently and clearly defined or that any claim of the complete
specification is not fairly based on the matter disclosed in the
specification;7
(j) that the patent was obtained on a false suggestion or
representation;
(k) that the subject of any claim of the complete specification is
not patentable under this Act;
(l) that the invention so far as claimed in any claim of the
complete specification was secretly used in India, otherwise than as
mentioned in sub-section (3), before the priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the
Controller the information required by section 8 or has furnished
information which in any material particular was false to his
knowledge;
(n) that the applicant contravened any direction for secrecy
passed under section 35 or made or caused to be made an
application for the grant of a patent outside India in contravention of
section 39;
(o) that leave to amend the complete specification under section
57 or section 58 was obtained by fraud;
(p) that the complete specification does not disclose or wrongly
mentions the source or geographical origin of biological material
used for the invention;
(q) that the invention so far as claimed in any claim of the
complete specification was anticipated having regard to the
knowledge, oral or otherwise, available within any local or
indigenous community in India or elsewhere.
(2) For the purposes of clauses (e) and (f) of sub-section (1) –
(a) no account shall be taken of personal document or secret trial
or secret use; and
(b) where the patent is for a process or for a product as made by
a process described or claimed, the importation into India of the
product made abroad by that process shall constitute knowledge or
use in India of the invention on the date of the importation, except
where such importation has been for the purpose of reasonable trial
or experiment only.8
(3) For the purpose of clause (1) of sub-section (1) no account shall be
taken of any use of the invention—
(a) for the purpose of reasonable trial or experiment only; or
(b) by the Government or by any person authorised by the
Government or by a Government undertaking, in consequence of
the applicant for the patent or any person from whom he derives title
having communicated or disclosed the invention directly or indirectly
to the Government or person authorised as aforesaid or to the
Government undertaking; or
(c) by any other person, in consequence of the applicant for the
patent or any person from whom he derives title having
communicated or disclosed the invention, and without the consent or
acquiescence of the applicant or of any person from whom he
derives title.
(4) Without prejudice to the provisions contained in sub-section (1) a
patent may be revoked by the High Court on the petition of the Central
Government, if the High Court is satisfied that the patentee has without
reasonable cause failed to comply with the request of the Central
Government to make, use or exercise the patented invention for the
purposes of Government within the meaning of section 99 upon
reasonable terms.
(5) A notice of any petition for revocation of a patent under this section
shall be served on all persons appearing from the register to be proprietors
of that patent or to have shares or interests therein and it shall not be
necessary to serve a notice on any other person.”
9. Having extracted the relevant provision dealing with the revocation of a
patent, relied upon by the learned counsel from the Patents Act, we shall
endeavour to deal with the submissions advanced at the hands of the learned
counsel for the appellants. In our considered view, even though some of the
submissions were differently worded, they were premised on exactly the same
legal contentions, namely, that the defendant in an “infringement suit”, having
raised a “counter-claim” seeking revocation of a patent, the validity of such a9
challenge can be determined only at the hands of the High Court, i.e., while
dealing with the “counter-claim”. And that, the “Appellate Board” would thereafter
(after the filing of the “counter-claim” in the “infringement suit”), cease to have the
jurisdiction to adjudicate upon the validity of the patent. The different
submissions advanced at the hands of the learned counsel for the appellants, on
the instant aspect of the matter, are being summarized hereunder:
Firstly, it was submitted, that where a “counter-claim” is instituted in response to
a suit for infringement of a patent in the High Court, there can be no further
proceeding in the “revocation petition” filed before the “Appellate Board”. In this
behalf it was further contended, that it would make no difference, whether such
proceedings had been instituted prior to, or after the filing of the suit for
infringement.
Secondly, it was contended, that the jurisdiction of a High Court to decide a
“counter-claim” for revocation, was exclusive, and could not be taken away, by
initiating proceedings simultaneously, before the “Appellate Board”. In this
behalf it was sought to be explained, that the proceedings before the High Court
in furtherance of the “counter-claim”, would negate all similar proceedings
against the same patent, on the same grounds, before the subordinate forum
(the “Appellate Board”), for the simple reason, that the inferior forum would have
to make way for the superior forum.
Thirdly, it was submitted, that the jurisdiction vested with the High Court, to
decide a “counter-claim” seeking revocation of a patent in a suit for infringement,
could not be taken away by an independent petition for revocation, of the same10
patent, and on the same grounds, pending before the “Appellate Board”. In this
behalf it was submitted that the “Appellate Board” was only an administrative
tribunal, which was neither superior to the High Court nor vested with a coequal
status (as that of the High Court). Accordingly it was submitted, that the
determination by the “Appellate Board” which could even otherwise be corrected
by the High Court (in an appropriate case, through writ proceeding) could not be
allowed to derail the plea of revocation raised through the “counter-claim”, before
the High Court.
Fourthly, it was contended that once a “counter-claim” for revocation was
instituted, the High Court alone would be vested with the charge for determining
the merits of the plea of revocation. Placing reliance on the proviso to Section
104 of the Patents Act, it was sought to be asserted that once a “counter-claim”
had been filed in a suit for infringement, the same was liable to be transferred to
the High Court for determination.
10. Before we venture to deal with the submissions advanced at the hands of
the learned counsel for the appellants, it is important to first analyze the options
available for revocation of a patent under Section 64(1). In our considered view,
Section 64(1) vests the liberty to raise a challenge to a patent in three different
circumstances. Firstly, on a petition by “any person interested”. Secondly, on a
petition of the Central Government. In case of the above two options, the petition
for revocation would lie before the “Appellate Board”. Thirdly, by way of a
“counter-claim” in a suit for infringement of a patent. The third option is
adjudicable only by the jurisdictional High Court. In view of the mandate11
contained in the provisions of the Patents Act, the locus standi for revocation of a
patent, is available to three different entities, namely, “any person interested”,
“the Central Government”, and to a defendant in an “infringement suit” by way of
a “counter-claim”. Depending on the specific part of the provision relied on, such
challenge is permissible before two different fora, i.e., the “Appellate Board”, or
the jurisdictional High Court. Our above determination emerges from a reading
of Sections 64(1) and 104 of the Patents Act.
11. A perusal of Section 64(1) of the Patents Act reveals, that more or less,
generally speaking, revocation of a patent can be sought; if the patent was
granted, despite there being a valid and genuine claim, of earlier priority
(sub-section (1)(a) of Section 64); or if the patent was granted to a person not
entitled to the same (sub-section (1)(b) of Section 64); or if the patent was
granted, wrongfully overlooking the rights of another (sub-section (1)(c) of
Section 64); or if the patent was granted in respect of a matter, which is not an
invention (sub-section (1)(d) of Section 64); or if the patent was granted in
respect of a matter, which was not new (sub-section (1)(e) of Section 64); or if
the patent was granted in respect of a matter, which is obvious, or does not
involve any inventive step (sub-section (1)(f) of Section 64); or if the patent was
granted in respect of a matter, which is not useful (sub-section (1)(g) of Section
64); or if the patent is granted in respect of a matter, which does not fully explain
the description, or the working of the invention, to a person having a nexus to the
subject to which the invention relates (sub-section (1)(h) of Section 64); or if the
patent was granted in respect of a matter, which is not distinctly and definitely12
ascertainable (sub-section (1)(i) of Section 64); or if the patent was granted, on
the basis of an inaccurate depiction/portrayal of the matter (sub-section 1(j) of
Section 64); or if the patent was granted in respect of a matter, which could not
have been granted if the matter had been fully and completely disclosed
(sub-section (1)(k) of Section 64); or if the patent was granted in respect of a
matter, which was already secretly being used in India (sub-section (1)(l) of
Section 64); or if the patent was granted, despite the failure to disclose the
information of prosecuting an application for the grant of a patent, in a foreign
country, or if such information had been wrongly furnished (sub-section (1)(m) of
Section 64); or if the directions of secrecy, issued under the Patents Act, have
been violated, or if an application has been made by a person resident in India
for the grant of a patent outside India (sub-section (1)(n) of Section 64); or if the
amendment to the specification of the patent was obtained by fraud (sub-section
(1)(o) of Section 64); or if the details of the invention, do not disclose (or wrongly
disclose), the source or the origin of the biological material used therein
(sub-section (1)(p) of Section 64); or if the details of the invention, were available
within any local or indigenous community in India or elsewhere (sub-section (1)
(q) of Section 64).
12. We shall now briefly notice, the remedies available to a person interested
for raising a challenge to a patent granted to an individual or an entity, under the
Patents Act, other than under Section 64. It is critical, in the facts and
circumstances of this case, to interpret Section 64 of the Patents Act, in
conjunction with the other provisions of the Patents Act, whereunder, the grant of13
a patent can also be assailed. In this behalf, first and the foremost, reference
needs to be made to Section 25 of the Patents Act. Section 25 is being extracted
herein:
“25. Opposition to the patent— (1) Where an application for a patent has
been published but a patent has not been granted, any person may, in
writing, represent by way of opposition to the Controller against the grant
of patent on the ground-
(a) that the applicant for the patent or the person under or through
whom he claims, wrongfully obtained the invention or any part
thereof from him or from a person under or through whom he claims;
(b) that the invention so far as claimed in any claim of the
complete specification has been published before the priority date of
the claim-
(i) in any specification filed in pursuance of an application for a
patent made in India on or after the 1st day of January, 1912;
or
(ii) in India or elsewhere, in any other document:
Provided that the ground specified in sub-clause (ii) shall not
be available where such publication does not constitute an
anticipation of the invention by virtue of sub-section (2) or
sub-section (3) of section 29;
(c) that the invention so far as claimed in any claim of the
complete specification is claimed in a claim of a complete
specification published on or after the priority date of the applicant's
claim and filed in pursuance of an application for a patent in India,
being a claim of which the priority date is earlier than that of the
applicant's claim;
(d) that the invention so far as claimed in any claim of the
complete specification was publicly known or publicly used in India
before the priority date of that claim.
Explanation - For the purposes of this clause, an invention relating to
a process for which a patent is claimed shall be deemed to have
been publicly known or publicly used in India before the priority date14
of the claim if a product made by that process had already been
imported into India before that date except where such importation
has been for the purpose of reasonable trial or experiment only;
(e) that the invention so far as claimed in any claim of the
complete specification is obvious and clearly does not involve any
inventive step, having regard to the matter published as mentioned
in clause (b) or having regard to what was used in India before the
priority date of the applicant's claim;
(f) that the subject of any claim of the complete specification is
not an invention within the meaning of this Act, or is not patentable
under this Act;
(g) that the complete specification does not sufficiently and clearly
describe the invention or the method by which it is to be performed;
(h) that the applicant has failed to disclose to the Controller the
information required by section 8 or has furnished the information
which in any material particular was false to his knowledge;
(i) that in the case of a convention application, the application was
not made within twelve months from the date of the first application
for protection for the invention made in a convention country by the
applicant or a person from whom he derives title;
(j) that the complete specification does not disclose or wrongly
mentions the source or geographical origin of biological material
used for the invention;
(k) that the invention so far as claimed in any claim of the
complete specification is anticipated having regard to the
knowledge, oral or otherwise, available within any local or
indigenous community in India or elsewhere, but on no other ground,
and the Controller shall, if requested by such person for being heard, hear
him and dispose of such representation in such manner and within such
period as may be prescribed.
(2) At any time after the grant of patent but before the expiry of a period
of one year from the date of publication of grant of a patent, any person
interested may give notice of opposition to the Controller in the prescribed
manner on any of the following grounds, namely:-15
(a) that the patentee or the person under or through whom he
claims, wrongfully obtained the invention or any part thereof from
him or from a person under or through whom he claims;
(b) that the invention so far as claimed in any claim of the
complete specification has been published before the priority date of
the claim-
(i) in any specification filed in pursuance of an application
for a patent made in India on or after the 1st day of January,
1912; or
(ii) in India or elsewhere, in any other document:
Provided that the ground specified in sub-clause (ii) shall not
be available where such publication does not constitute an
anticipation of the invention by virtue of sub-section (2) or
sub-section (3) of section 29;
(c) that the invention so far as claimed in any claim of the
complete specification is claimed in a claim of a complete
specification published on or after the priority date of the claim of the
patentee and filed in pursuance of an application for a patent in
India, being a claim of which the priority date is earlier than that of
the claim of the patentee;
(d) that the invention so far as claimed in any claim of the
complete specification was publicly known or publicly used in India
before the priority date of that claim.
Explanation.- For the purposes of this clause, an invention
relating to a process for which a patent is claimed shall be deemed
to have been publicly known or publicly used in India before the
priority date of the claim if a product made by that process had
already been imported into India before that date except where such
importation has been for the purpose of reasonable trial or
experiment only;
(e) that the invention so far as claimed in any claim of the
complete specification is obvious and clearly does not involve any
inventive step, having regard to the matter published as mentioned
in clause (b) or having regard to what was used in India before the
priority date of the applicant’s claim;16
(f) that the subject of any claim of the complete specification is
not an invention within the meaning of this Act, or is not patentable
under this Act;
(g) that the complete specification does not sufficiently and clearly
describe the invention or the method by which it is to be performed;
(h) that the patentee has failed to disclose to the Controller the
information required by section 8 or has furnished the information
which in any material particular was false to his knowledge;
(i) that in the case of a patent granted on a convention
application, the application for patent was not made within twelve
months from the date of the first application for protection for the
invention made in a convention country or in India by the patentee or
a person from whom he derives title;
(j) that the complete specification does not disclose or wrongly
mentions the source and geographical origin of biological material
used for the invention;
(k) that the invention so far as claimed in any claim of the
complete specification was anticipated having regard to the
knowledge, oral or otherwise, available within any local or
indigenous community in India or elsewhere,
but on no other ground.
(3) (a) Where any such notice of opposition is duly given under
sub-section (2), the Controller shall notify the patentee.
(b) On receipt of such notice of opposition, the Controller shall, by
order in writing, constitute a Board to be known as the Opposition
Board consisting of such officers as he may determine and refer
such notice of opposition along with the documents to that Board for
examination and submission of its recommendations to the
Controller.
(c) Every Opposition Board constituted under clause (b) shall
conduct the examination in accordance with such procedure as may
be prescribed.
(4) On receipt of the recommendation of the Opposition Board and after
giving the patentee and the opponent an opportunity of being heard, the17
Controller shall order either to maintain or to amend or to revoke the
patent.
(5) While passing an order under sub-section (4) in respect of the
ground mentioned in clause (d) or clause (e) of sub-section (2), the
Controller shall not take into account any personal document or secret trial
or secret use.
(6) In case the Controller issues an order under sub-section (4) that the
patent shall be maintained subject to amendment of the specification or
any other document, the patent shall stand amended accordingly.”
13. A perusal of Section 25 of the Patents Act reveals, that “any person”, and
not just a “person interested” (as in the case of Section 64 of the Patents Act),
can “represent by way of opposition” against an application filed for the grant of a
patent. This opportunity, has been made available, even before a patent has
been granted. This opposition to the grant of a patent materializes, after an
application for the grant of a patent has been published. More or less, generally
speaking, the grant of a patent can be opposed, if the applicant for the patent,
had wrongfully obtained the invention, from the representationist, who opposes
the grant of the patent (sub-section (1)(a) of Section 25); or if the application for
the patent is published, before the priority date of the claim (sub-section (1)(b) of
Section 25); or if the application for a patent in respect of an invention is
published, after an application for the same invention, has already been
published (sub-section (1)(c) of Section 25); or if an invention, in respect whereof
a patent is sought, was publicly known or used before the priority date
(sub-section (1)(d) of Section 25); or if an application is in respect of a matter,
which is obvious and does not involve any inventive step (sub-section (1)(e) of
Section 25); or if an application for a patent has been made in respect of a18
matter, which is not an invention (sub-section (1)(f) of Section 25); or if an
application for a patent, has been made in a manner which does not clearly
describe the invention, or the method by which it is to be performed (sub-section
(1)(g) of Section 25); or if the applicant for a patent, has failed to disclose
information, about his prosecuting an application for the grant of a patent, in a
foreign country (sub-section (1)(h) of Section 25); or if the application for a
patent, is in the nature of a convention application, and the application was made
after more than one year, after the first application was made in a convention
country (sub-section (1)(i) of Section 25); or if the application for a patent does
not disclose (or wrongly discloses), the source or the origin of the biological
material used therein (sub-section (1)(j) of Section 25); or if the application for an
invention, is in respect of a matter which can be anticipated, having regard to the
knowledge available within any local or indigenous community, in India or
elsewhere (sub-section (1)(k) of Section 25).
14. A perusal of Section 25(2) reveals that only a “person interested” and not
“any person” (as in the case of Section 25(1) of the Patents Act) may challenge
the grant of a patent, within one year of the publication of such grant, by issuing a
“notice of opposition” to the “Controller”. The above provision also reveals, more
or less, generally speaking, such “notice of opposition” to the “Controller” can be
made on the grounds depicted in sub-sections (1)(a), (b), (c), (d), (e), (f), (h), (m),
and (o) of Section 64 of the Patents Act. The remaining grounds for raising a
challenge under Section 25(2), coincide with those contained in Section 25(1) of
the Patents Act.19
15. A challenge to the grant of a patent, through a “notice of opposition” is
available, on all the grounds of challenge permitted to oppose, an application for
the grant of a patent under sub-section (1) of Section 25. There is however a
substantial difference in the locus, for raising such a challenge, after the patent
has been granted. Whereas “any person” can “represent by way of opposition”,
to an application for the grant of a patent (under Section 25(1) of the Patents
Act), only a “person interested” can challenge the grant of a patent by issuing a
“notice of opposition” (under Section 25(2) of the Patents Act). On the subject of
locus, therefore, Section 25(2) and Section 64(1), are alike, inasmuch as, the
locus to raise a challenge to a patent granted, lies with “any person interested” in
both of these provisions. A challenge to the grant of a patent can also be raised
by a defendant in a “patent infringement suit”. This can be done by the
defendant by filing a “counter-claim” in a “patent infringement suit”.
16. When a challenge is raised at the pre-grant stage, under Section 25(1) of
the Patents Act, the same is liable to be determined at the hands of the
“Controller”. An order passed by the “Controller” can be assailed by way of an
appeal before the “Appellate Board”. When a challenge is raised under Section
25(2), it must be raised within one year of the publication of the grant (of patent).
The same has to be examined, in the first instance, by an “Opposition Board”
contemplated under Section 25(3). The recommendations made by the
“Opposition Board” are then to be placed before the “Controller” for
consideration. After issuing notice to the patent-holder, and after affording an
opportunity of hearing to the patent-holder, the “Controller” is required to pass the20
final order, on a notice of opposition filed under Section 25(2). Such order
passed by the “Controller” is assailable by way of an appeal, before the
“Appellate Board”. A challenge raised by “any person interested”, under Section
64(1), is liable to be adjudicated, at the very first instance, by the “Appellate
Board”. If in response to an “infringement suit”, the defendant files a
“counter-claim” seeking the revocation of the concerned patent, the said process
of adjudication would lie before the jurisdictional High Court (see, the proviso to
Sections 64(1) and 104 of the Patents Act).
17. Having heard learned counsel, and having examined the different
provisions of the Patents Act, relating to revocation of patents, we shall now
endeavour to examine the controversy in hand. In our considered view, Section
64 of the Patents Act needs a close examination. Section 64 aforementioned, is
prefaced by the words “Subject to the provisions contained in this Act,…..”. And
not by the words, “Without prejudice to the provisions contained in this Act…..”,
or “Notwithstanding the provisions contained in this Act…”. The words with which
the legislature has prefaced Section 64, necessarily lead to the inference, that
the provisions contained in Section 64 are subservient to all the other provisions
contained in the Patents Act. This exordium to Section 64 of the Patents Act
mandates, that the directive contained in Section 64, would be subservient and
deferential, to the other provisions of the Patents Act. Stated simply, if there is
any provision under the Patents Act, which is in conflict with the mandate
contained in Section 64, Section 64 of the Patents Act would stand eclipsed, and
the other provision(s), would govern the field under reference. Therefore, no21
interpretation can be placed on Section 64 of the Patents Act, which will be in
conflict with, any other provision(s) of the Patents Act.
18. If any proceedings have been initiated by “any person interested”, under
Section 25(2) of the Patents Act, the same will eclipse the right of the same
person to file a “revocation petition” under Section 64(1) of the Patents Act. And
also, to invoke the right granted under Section 64(1) of the Patents Act, to file a
“counter-claim” (in response to an “infringement suit”, to seek the revocation of a
patent). This, in our view, would be the natural effect of the words, “Subject to
the provisions contained in this Act…..”, appearing at the beginning of Section
64(1) of the Patents Act. And if, the above meaning is not to be assigned to the
words “Subject to the provisions of this Act…..”, they would be redundant and
superfluous. It is however not necessary to pay a serious thought to the situation
referred to above. The above situation, in our considered view, is unlikely to ever
arise. This is because, Section 25 of the Patents Act, inter alia, provides for the
procedure, for the grant of a patent. The procedure commences with the filing of
an application. The second step contemplates publication of the details of the
patent sought. The next step envisages, the filing of representations by way of
opposition (to the grant of the patent). This advances into a determination by the
“Controller”, to grant or refuse the patent. The decision of the “Controller”, leads
to the publication of the grant (of the patent). This process finalises the decision
of the grant of the patent. All the same, it does not finally crystalise, the right of
the patent holder. After the grant is published, “any person interested”, can issue
a notice of opposition, within one year of the date of publication of the grant of a22
patent. If and when, challenges raised to the grant of a patent are disposed of
favourably, to the advantage of the patent holder, the right to hold the patent can
then and then alone, be stated to have crystallized. Likewise, if no notice of
opposition is preferred, within one year of the date of publication of the grant of a
patent, the grant would be deemed to have crystallized. Thus, only the
culmination of procedure contemplated under Section 25(2) of the Patents Act,
bestows the final approval to the patent. Therefore, it is unlikely and quite
impossible, that an “infringement suit” would be filed, while the proceedings
under Section 25(2) are pending, or within a year of the date of publication of the
grant of a patent.
19. The defendant party to a suit for infringement, who seeks to repudiate the
charge of infringement, is allowed to raise a “counter-claim”, so as to enable him
to raise a challenge, to the validity of the patent assigned to the author of the suit
(under Section 64 of the Patents Act). This is so, because a “counter-claim” can
be filed only by such person, against whom a suit for infringement has been filed
(by the patent-holder). The grounds of such challenge have already been
enumerated above.
20. A corrective mechanism is also available to “any person interested”, to
assail the grant of a patent under Section 64(1) of the Patents Act. This is in
addition, to a similar remedy provided to “any person interested”, under Section
25(2) of the Patents Act. In the above scenario, it is necessary to first appreciate
the true purport of the words “any person interested”. The term “person23
interested” has been defined in Section 2(1)(t) of the Patents Act. Unless the
context otherwise requires, in terms of Section 2(1)(t) aforementioned, a “person
interested” would be one who is…“engaged in, or in promoting, research in the
same field as that to which the invention relates”. Simply stated, a “person
interested” would include a person who has a direct, present and tangible interest
with a patent, and the grant of the patent, adversely affects his above rights. A
“person interested” would include any individual who desires to make
independent use of either the invention itself (which has been patented), or
desires to exploit the process (which has been patented) in his individual
production activity. Therefore, the term “any person interested” is not static. The
same person, may not be a “person interested” when the grant of the concerned
patent was published, and yet on account of his activities at a later point in time,
he may assume such a character or disposition. It is, therefore, that Section 64
of the Patents Act additionally vests in “any person interested”, the liberty to
assail the grant of a patent, by seeking its revocation. The grounds of such
challenge, have already been enumerated above.
21. Based on the two remedies contemplated under Section 64 of the Patents
Act, the fifth contention of the learned counsel for the appellants was, that the
use of the word “or” in Section 64(1) demonstrates, that the liberty granted to any
person interested to file a “revocation petition”, to challenge the grant of a patent
to an individual, cannot be adopted simultaneously by the same person, i.e.,
firstly, by filing a “revocation petition”, and at the same time, by filing a
“counter-claim” in a suit for infringement. It is the submission of the learned24
counsel for the appellants, that the word “or” is clearly disjunctive, and cannot be
read as conjunctive. The above remedies, expressed in Section 64(1) of the
Patents Act, according to learned counsel, cannot be availed of by the same
person, simultaneously. According to learned counsel, the concerned person
must choose one of the above remedies. It is the pointed assertion of the
learned counsel for the appellants, that in the present case the respondents, by
assuming the position and posture of “any person interested”, have filed
“revocation petition(s)” to assail the same patent, which have at the same time
been assailed by filing “counter-claims”. The above “counter-claims” have been
filed in response to the “infringement suit(s)”, preferred by the appellant. It is the
submission of the learned counsel for the appellants, that the respondents must
choose only one, of the above remedies. The course of action adopted by the
respondents, according to the learned counsel for the appellants, could lead to
one finding in the “revocation petition”, and a different finding in the
“counter-claim”.
22. We do not have the slightest hesitation in accepting the above contention
(fifth in the series of contentions), that even though more than one remedies are
available to the respondents in Section 64 of the Patents Act, the word “or” used
therein separating the different remedies provided therein, would disentitle them,
to avail of both the remedies, for the same purpose, simultaneously. On principle
also, this would be the correct legal position. 25
23. Keeping in view the submissions advanced at the hands of the learned
counsel for the appellants (as have been noticed in the foregoing paragraphs),
the question which arises for determination is, that having chosen both the above
remedies, which one of the two, should the respondents, be permitted to pursue.
The answer to the above query, will, if possible, have to be determined from the
provisions of the Patents Act itself. In this behalf we may at the outset record,
that learned counsel for the rival parties, did not invite our attention to any
provision from the Patents Act, which would provide a clear pointer, to the course
to be adopted. Whilst it was undoubtedly submitted, on the one hand, that the
choice should fall in favour of the superior forum. Details about the locus, in
respect of other challenges have been narrated in paragraph 16 hereinabove.
We may in the passing record, that the determination of the “counter-claim”
would be with the superior forum, i.e., the jurisdictional High Court (Sections
64(1) and 104 of the Patents Act). The above submission was sought to be
countered, on the other hand, by pointing out, that the opportunities provided by
the legislature to assail the order(s) passed under the Patents Act, could not be
reduced. In this behalf, it was submitted, that the remedies provided by the
legislature, where a “revocation petition” is filed, were far in excess of the
remedies, in case revocation was sought through a “counter-claim”. The
legitimate inference derived from the former submission, was thus equally
legitimately, repudiated by the latter contention. Since no legitimate solution
could emerge from the provisions of the Patents Act, it would be essential, to rely26
on known principles of law, to resolve the issue. We shall therefore attempt to
resolve the issue, on accepted principles of law.
24. A “counter-claim” for all intents and purposes, must be understood as a
suit, filed by one who is impleaded as a defendant. A “counter-claim” is
essentially filed to obstruct the claim raised in a suit. A “counter-claim” is tried
jointly, with the suit filed by the plaintiff, and has the same effect as a cross-suit.
Therefore, for all intents and purposes a “counter-claim” is treated as a plaint,
and is governed by the rules applicable to plaints. The court trying a suit, as well
as, the “counter-claim”, has to pronounce its judgment on the prayer(s) made in
the suit, and also, those made in the “counter-claim”. Since a “counter-claim” is
of the nature of an independent suit, a “counter-claim” cannot be allowed to
proceed, where the defendant has already instituted a suit against the plaintiff, on
the same cause of action. The above conclusion is drawn on the basis of the
accepted principle of law crystallized in Section 10 of the Code of Civil
Procedure, 1908 (hereinafter referred to as, the CPC) read with Section 151 of
the CPC. Both the above provisions are being extracted hereunder:-
“10. Stay of suit.- No Court shall proceed with the trial of any suit in
which the matter in issue is also directly and substantially in issue in
a previously instituted suit between the same parties, or between
parties under whom they or any of them claim litigating under the
same title where such suit is pending in the same or any other Court
in India having jurisdiction to grant the relief claimed, or in any Court
beyond the limits of India established or continued by the Central
Government and having like jurisdiction, or before the Supreme
Court.
Explanation- The pendency of a suit in a foreign Court does not
preclude the Courts in India from trying a suit founded on the same
cause of action.27
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.”
Therefore, where an issue is already pending adjudication between the same
parties, in a Court having jurisdiction to adjudicate upon the same, a
subsequently instituted suit on the same issue between the same parties, cannot
be allowed to proceed. A similar question arises for consideration before this
Court, in the present controversy. If the respondents in their capacity as “any
person interested”, had filed a “revocation petition” before the institution of an
“infringement suit”, they cannot be permitted to file a “counter-claim” on the same
cause of action. The natural conclusion in the above situation would be, the
validity of the grant of the patent would have to be determined in the “revocation
petition”. Therefore, in the above situation, while the “revocation petition” will
have to be permitted to be pursued, the “counter-claim” cannot be permitted to
be continued. Therefore, in the above eventuality, it is apparent that the situation
would be resolved, in the same manner, as it would have been resolved in
cross-suits filed by the rival parties, before different jurisdictional courts. In our
considered view, the above conclusion is imperative for a harmonious
interpretation of the relevant provisions of the Patents Act.
25. In cases where the “infringement suit(s)” was/were filed by the appellant
herein (as plaintiff in the “infringement suit”), before the “revocation petition(s)”
was/were filed by the respondents (as defendants in the “infringement suit”), the
respondents had the right to file “counter-claim(s)” to seek revocation of the28
patent, under the strength and authority emerging from Section 64(1) of the
Patents Act. Having once filed a “counter-claim”, in response to the “infringement
suit(s)”, on the same analogy as has been recorded above, it would not be open
to the respondents herein (the defendants in the “infringement suits”) to file
“revocation petition(s)”, as they would likewise be barred by the rule of res
judicata. As such, “revocation petitions” filed later in point of time, than the
institution of the “infringement suit”, would be unsustainable in law. In such
cases, the prayer for revocation of the patent shall be adjudicated, while
disposing of the “counter-claim” filed by the respondents. Therefore, in the
above situation, while the “counter-claim” will have to be permitted to be pursued,
the “revocation petition” cannot be permitted to be continued.
26. Having examined the four contentions advanced at the hands of the
learned counsel for the appellants (delineated in paragraph 9 of the instant
judgment) and the fifth contention (noticed in paragraph 21 of our instant
determination), we are of the view that the following conclusions emerge
therefrom:
Firstly, if “any person interested” has filed proceedings under Section 25(2) of the
Patents Act, the same would eclipse all similar rights available to the very same
person under Section 64(1) of the Patents Act. This would include the right to file
a “revocation petition” in the capacity of “any person interested” (under Section
64(1) of the Patents Act), as also, the right to seek the revocation of a patent in
the capacity of a defendant through a “counter-claim” (also under Section 64(1)
of the Patents Act).29
Secondly, if a “revocation petition” is filed by “any person interested” in exercise
of the liberty vested in him under Section 64(1) of the Patents Act, prior to the
institution of an “infringement suit” against him, he would be disentitled in law
from seeking the revocation of the patent (on the basis whereof an “infringement
suit” has been filed against him) through a “counter-claim”. This denial of the
remedy granted to him by way of a “counter-claim” under Section 64(1) of the
Patents Act, is based on the principle of law narrated in paragraph 24 above.
Thirdly, where in response to an “infringement suit”, the defendant has already
sought the revocation of a patent (on the basis whereof the “infringement suit”
has been filed) through a “counter-claim”, the defendant cannot thereafter, in his
capacity as “any person interested” assail the concerned patent, by way of a
“revocation petition”. This denial of remedy granted to him by way of a
“revocation petition” under Section 64(1) of the Patents Act, is also based on the
same principle of law expressed in paragraph 24 above.
27. The sixth contention advanced at the hands of the learned counsel for the
appellants was, that insofar as the present controversy is concerned, the same
was liable to be governed by the consent order, which was passed by the High
Court on 1.9.2010, wherein the respondents (as defendants) had agreed, that the
suits and “counter-claims” pending between the parties should be consolidated,
and should be heard by the High Court itself. The above consent order is being
extracted hereunder:-
“This Court, had, in previous proceedings, required the parties to ascertain
whether the trial in all the suits could be consolidated, as they involved
determination of common questions of fact and law. The parties through30
their counsel, after securing instructions, agree that the course is
acceptable. After hearing them, the Court records their consent and
determines that the following schedule and procedure would be followed in
deciding the above suits and proceedings connected with them.
1. The following lawsuits, involving common parties and common
issues, be consolidated for the sake of convenience-
(a) Dr. Aloys Wobben v. Enercon India Limited, C.S. (O.S.) 1967
of 2009;
(b) Enercon GmbH v. Enercon (India) Ltd. & Anr., C.S. (O.S.)
1968 of 2009;
(c) Aloys Wobben v. Yogesh Mehra & Ors., C.S. (O.S.) 1349 of
2009;
(d) Aloys Wobben v. Yogesh Mehra & Ors., C.S. (O.S.) 1963 of
2009;
(e) Aloys Wobben v. Savita Oil Technologies Limited & Ors., C.S.
(O.S.) 1333 of 2010;
(f) Aloys Wobben v. KS Oils Limited & Ors., C.S. (O.S.) 1335 of
2010;
(g) Aloys Wobben v. Amtech (India) Electronics Ltd. & Ors., C.S.
(O.S.) 176 of 2010;
(h) Aloys Wobben v. Vayu (India) Power Corporation Limited, C.S.
(O.S.) 1501 of 2010.
2. The plaintiffs’ interim injunction applications in the above suits are
not prepared at present; the parties are agreeable that all the suits should
be tried expeditiously. The plaintiffs therefore submit that the following
interim injunction applications under Order XXXIX Rules 1 and 2 of the
Code of Civil Procedure (CPC) be disposed off, with liberty to move the
Court for such relief, if necessary.
(a) I.A. no. 9431 of 2009 in C.S. (O.S.) no. 1349 of 2009
(b) I.A. no. 13460 of 2009 in C.S. (O.S.) no. 1967 of 2009
(c) I.A. no. 13463 of 2009 in C.S. (O.S.) no. 1968 of 2009
(d) I.A. no. 13448 of 2009 in C.S. (O.S.) no. 1963 of 2009
(e) I.A. no. 8368 of 2010 in C.S. (O.S.) no. 1333 of 2010
(f) I.A. no. 8467 of 2010 in C.S. (O.S.) no. 1335 of 2010
(g) I.A. no. 9753 of 2010 in C.S. (O.S.) no. 1501 of 2010
3. The applications filed by the parties for contempt of orders of this
Hon’ble Court are also not being pressed at present. The parties pray that
the following applications be disposed of:
(a) C.C.P. no. 11 of 2010 under Section 11 of the Contempt of
Courts Act arising out of C.S. (O.S.) 1349 of 2009.31
(b) I.A. no. 4096 of 2010 (filed under Order 39 Rule 2A of the
Code of Civil Procedure) in C.S. (O.S.) 1968 of 2010.
The parties further state that the issues that arise in the above applications
be treated as issues in the main suit.
4. The parties agree that the following schedule is to be followed for
expedited trial in the above suits:
(a) Completion of pleadings in all 8 suits including the
corresponding to counter claims within 8 weeks i.e., on or
before 25th October, 2010 (all replies to be filed within 3
weeks, i.e. 20th September, 2010 and all rejoinders to be filed
within five weeks thereafter i.e. 25th October, 2010).
(b) Additional documents, if any, necessary for the adjudication of
the present suit will be filed within four weeks thereafter i.e.,
on or before 25th November, 2010.
(c) Admission/denial of documents by way of affidavit be filed
within two weeks thereafter after the filing of additional
documents, i.e., on or before 9th December, 2010.
(d) Common issues shall be framed in the above mentioned suits
within the two weeks thereafter, i.e. by 24th December, 2010.
(e) List of Witnesses and affidavits by way of evidence of such
witnesses will be filed six weeks thereafter i.e., on or before 4th
February, 2011.
(f) A Local Commissioner, whose fees will be shared jointly by
both parties, shall be appointed under Order 26 Rule 1 of the
Code of Civil Procedure, 1908 for recording oral evidence.
(g) Cross examination of the plaintiff’s witnesses will be
conducted in a period of eight weeks i.e. by 1st April, 2011.
(h) That the cross examination of the defendants’ witnesses will
be conducted in a period of eight weeks i.e. by 27th May, 2011.
(i) A Scientific advisor shall be appointed to assist the court (if
necessary) by way of filing a technical report and the parties
may be allowed to examine the advisor on the basis of his
report.
(j) The suits shall be listed for final arguments before the Court,
after the completion of the above procedure.32
5. The parties agree that the schedule as mutually set above will be
complied with to enable expedited trial in the above suits.
6. This Court directs that the parties shall follow the procedure
indicated in para 5 above and adhere to the schedule outlined therein.
The Court also directs disposal of the applications mentioned in paras 2
and 3 above, with appropriate liberty, mentioned in para 2.
7. List all the suits for directions on 16th November, 2010 and again on
24th December, 2010.”
It was also the submission of the learned counsel for the appellants, that the
above consent order was given effect to, inasmuch as, the High Court had
framed issues in the “infringement suits” and “counter-claims”, on 20.9.2011. It
was submitted, that even after the above consent order dated 1.9.2010 was
passed by the High Court, the respondents had continued to pursue their
“revocation petitions” before the “Appellate Board”. Consequent upon the
aforesaid course having been adopted by the respondents, it was submitted, that
orders of revocation had been passed in respect of six patents granted to the
appellant. It was submitted, that all the above patents were also subject to
consideration in “counter-claims”, pending before the High Court. It was also the
contention of the learned counsel for the appellants, that the course adopted by
the respondents amounted to misuse of the judicial process. It was accordingly
submitted, that the above course adopted by the respondents being wrong and
illegal, should not be permitted. In this behalf, it was also the contention of the
learned counsel for the appellants, that pursuing multifarious proceedings, in
respect of the same cause of action, between the same parties, was
impermissible in law.33
28. We have given our thoughtful consideration to the sixth contention
advanced on behalf of the learned counsel for the appellants. It is now well
settled, that rules of procedure are meant to ensure justice to the concerned
parties, based on their substantive rights. It is therefore commonly said, that all
rules of procedure, are nothing but handmaids of justice. In a matter as the one
in hand, if the dispute has to be settled stricto sensu, according to the procedure
envisaged by law, the course to be adopted, has already been delineated by us
above. We have resolved in our conclusions recorded hereinabove, the remedy
which will have to be adopted by the concerned parties, depending upon the date
of institution of proceedings under Section 25(2) of the Patents Act, the date of
institution of a “revocation petition” under Section 64(1) of the Patents Act, as
also, the date of institution of a counter-claim in an “infringement suit”, under
Chapter XVIII of the Patents Act. Based on the factual position noticed at the
beginning of the instant order, it is apparent, that the appellant has filed at least
19 “infringement suits”, and the respondents have filed at least 23 “revocation
petitions”. The respondents have also filed “counter-claims” to the “patent
infringement suits” filed by the appellant. In the present facts and circumstances,
even though the challenge to the same patent, by our above determination, has
been limited to a specific singular challenge, as against multiple challenges as at
present, yet the same are to be pursued before different fora. In the instant case,
the disputation is of the same nature, and between the same parties, even
though it may be in respect of different patents. As such, it would be convenient
for the parties concerned, to agree to resolve the same, before a singular34
adjudicatory authority. That will also be convenient for the concerned
adjudicatory authority. Accordingly, for convenience of the parties concerned, it
would be open for them by consent, to accept one of the remedies, out of the
plural remedies, which they would have to pursue in the different cases, pending
between them, to settle their dispute. Having consented to one of the available
remedies postulated under law, it would not be open to either of the consenting
parties, to seek redressal from a forum in addition to the consented forum. We,
therefore hereby affirm, that the consent order passed by the High Court on
1.9.2010, being on the subject of procedure, and being before a forum which had
the statutory jurisdiction to deal with the same, was fully justified in the facts and
circumstances of the present case.
29. The next and the last contention advanced at the hands of the learned
counsel for the appellants, was based on Section 124 of the Trade Marks Act,
1999 (hereinafter referred to as, ‘the Trade Marks Act’). Section 124
aforementioned is being extracted hereunder:-
“124. Stay of proceedings where the validity of registration of the trade
mark is questioned, etc.—
(1) Where in any suit for infringement of a trade mark—
(a) the defendant pleads that registration of the plaintiff’s trade
mark is invalid; or
(b) the defendant raises a defence under clause (e) of
sub-section (2) of section 30 and the plaintiff pleads the invalidity of
registration of the defendant’s trade mark,
the court trying the suit (hereinafter referred to as the court), shall,—
(i) if any proceedings for rectification of the register in relation to
the plaintiff’s or defendant’s trade mark are pending before the35
Registrar or the Appellate Board, stay the suit pending the final
disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied
that the plea regarding the invalidity of the registration of the
plaintiff’s or defendant’s trade mark is prima facie tenable, raise an
issue regarding the same and adjourn the case for a period of three
months from the date of the framing of the issue in order to enable
the party concerned to apply to the Appellate Board for rectification
of the register.
(2) If the party concerned proves to the court that he has made any
such application as is referred to in clause (b) (ii) of sub-section (1) within
the time specified therein or within such extended time as the court may for
sufficient cause allow, the trial of the suit shall stand stayed until the final
disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so
specified or within such extended time as the court may allow, the issue as
to the validity of the registration of the trade mark concerned shall be
deemed to have been abandoned and the court shall proceed with the suit
in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in
sub-section (1) or sub-section (2) shall be binding upon the parties and the
court shall dispose of the suit conformably to such order in so far as it
relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this
section shall not preclude the court from making any interlocutory order
(including any order granting an injunction directing account to be kept,
appointing a receiver or attaching any property), during the period of the
stay of the suit.”
It was the vehement contention of the learned counsel for the appellants, that a
similar situation, as the one which has arisen in the present controversy, has
been dealt with by the legislature under the Trade Marks Act, inasmuch as,
Section 124 gives power to the concerned court to stay the proceedings in a suit
for infringement of a trade mark, pending final disposal of proceedings, for
rectification of the trade mark, initiated by the defendants before the “Appellate36
Board”. It was accordingly the contention of the learned counsel for the
appellants, that even though a similar situation, as the one catered to under the
Trade Marks Act, could arise out of a disputed grant of a patent under the
Patents Act, no such protective measure has been provided for by the legislature
under the Patents Act.
30. It is necessary to keep in mind, that the instant submission was advanced
at the hands of the learned counsel for the reason, that the appellants did not
desire two proceedings, on the subject of revocation of the same patent, to be
continued simultaneously before different fora. In our discussion recorded while
dealing with the submission advanced by the learned counsel for the appellants,
we have accepted the contention advanced at the hands of the learned counsel
for the appellants, that only one out of two remedies available under Section 64
of the Patents Act, can be availed of, so as to assail the grant of a patent.
Accordingly the said remedy may be availed of in the capacity of either “any
person interested”, or in the capacity of a defendant in a “counter-claim”. We
have already concluded hereinabove, that having availed of any one of the above
remedies, it is not open to the same person to assail the grant of a patent by
choosing the second alternative available to him. In view of our above
conclusion, the instant submission advanced by the learned counsel for the
appellants does not survive for consideration.
31. The impugned order is therefore set aside, in the terms recorded
hereinabove. The appeal is disposed of in the above terms.37
 …..…………………………….J.
 (A.K. Patnaik)
 ..………………………………..J.
 (Jagdish Singh Khehar)
New Delhi;
June 2, 2014.

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