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.

Service matter - Promotions in Army - the Apex court held that whether the respondent can be treated differently even if he is allowed to remain in DGQA, viz. whether not allowing him to take further promotions, which benefit is still available to others whose permanent Secondment is not in dispute, would amount to discrimination or arbitrariness thereby offending Articles 14 and 16 of the Constitution of India. In our opinion, these, and other related issues, will have to be argued and thrashed out for coming to a proper conclusion. As a result, this appeal is allowed. The impugned order passed by the Tribunal is set aside. The matter is remitted to the Tribunal for deciding the OA by a larger Bench by having proper perspective in mind, as discussed in this judgment. Both the sides shall have right to file further documents they want to rely upon.= UNION OF INDIA & ORS. |.....APPELLANT(S) | |VERSUS | | |COL. GS GREWAL |.....RESPONDENT(S) = 2014 (May.Part) http://judis.nic.in/supremecourt/filename=41549

   Service matter - Promotions in Army - the Apex court held that  whether the respondent can be treated  differently  even if he is allowed to remain in DGQA, viz. whether not allowing  him  to  take further promotions,  which  benefit  is  still  available  to  others  whose permanent Secondment is not in dispute, would amount  to  discrimination  or arbitrariness thereby offending Articles 14 and 16 of  the  Constitution  of India.  In our opinion, these, and other related issues,  will  have  to  be argued and thrashed out for coming to a proper conclusion. As a result, this appeal is allowed.   The  impugned  order  passed  by  the Tribunal is set aside.  The matter is remitted to the Tribunal for  deciding the OA by a larger Bench by having proper perspective in mind, as  discussed in this judgment.    Both  the  sides  shall  have  right  to  file  further documents they want to rely upon.=
                 

  2014 (May.Part) http://judis.nic.in/supremecourt/filename=41549    
B.S. CHAUHAN, A.K. SIKRI
                                                    NON–REPORTABLE

                        IN THE SUPREME COURT OF INDIA

                        CIVIL APPELLATE JURISDICTION

                        CIVIL APPEAL NO. 3879 OF 2013


|UNION OF INDIA & ORS.                    |.....APPELLANT(S)              |
|VERSUS                                   |                               |
|COL. GS GREWAL                           |.....RESPONDENT(S)             |


                               J U D G M E N T
A.K. SIKRI, J.
                 This is a statutory appeal, preferred by  Union  of  India,
     as provided under Section 31 of the Armed Forces  Tribunal  Act,  2007
     (hereinafter referred to as the  'AFT  Act').   The  appeal  is  filed
     against the judgment and order dated April  15,  2011  passed  by  the
     Armed Forces Tribunal (hereinafter  referred  to  as  the  'Tribunal),
     Regional Bench Chandigarh, whereby the Tribunal has partly allowed the
     Original Application  (OA)  which  was  preferred  by  the  respondent
     herein.  The appellants have not only challenged the order on  merits,
     but have even questioned the jurisdiction of the Tribunal to deal with
     the subject matter which was brought before it by  the  respondent  in
     the said OA.

In order to understand the nature of challenge laid to the  jurisdiction  of
the Tribunal and the direction given while partly allowing  the  OA  of  the
respondent, it would be necessary to understand the nature of  relief  which
was sought by the respondent in the said OA as well as the background  facts
in which the OA seeking such a relief was filed.

The respondent joined the Indian Army as  a  Major.   Indubitably,  in  that
capacity he was subject to the discipline of the Army Act, 1950.   It  is  a
normal practice that the personnel belonging to the  Armed  Forces,  namely,
Army, Air Force or Naval Force, are Seconded to the other offices under  the
Ministry  of  Defence,  which  include  Department  of  Defence  Production,
Department of  Defence  Research  and  Development  and  Department  of  Ex-
Servicemen Welfare.  We  are  concerned  here  with  Department  of  Defence
Production, which has Director  General  of  Quality  Assurances  (DGQA  for
short) as well as Defence Public Sector Undertaking (DPSU).  The  respondent
was Seconded to DGQA on November 06, 2004 in the rank  of  Major.   At  that
time, it was temporary Secondment.
                 It  is  also  relevant  to  mention  here  that  while  the
     respondent was in the rank of Major in the Army, he was considered for
     promotion to  the  next  higher  grade,  namely,  Lieutenant  Colonel.
     However, he could not be promoted because of certain  reasons.   There
     is a provision that if an officer is not able to secure  promotion  to
     the higher rank after particular number of specified attempts,  it  is
     termed as Final Supersession, which means that the said officer  would
     not be considered for  promotion  to  the  higher  status  thereafter.
     Insofar as promotion from the rank of Major to Lieutenant  Colonel  is
     concerned,  three  chances  can  be  availed  by  the  officer.    The
     respondent was finally superseded in the Army, in the rank of Major in
     December 2003.  It is also pertinent to point out at this  stage  that
     when the respondent was Seconded to DGQA  organisation,  there  was  a
     provision in DGQA, in the form of OM  dated  May  04,  1993,  that  an
     officer who is finally superseded in the Army will not be entitled  to
     permanent Secondment and can stay  at  DGQA  temporarily  only,  which
     means, after some time, he would have to go back to the Army.

As pointed out above, the respondent had already been finally superseded  in
December 2003 in the rank of Major when he had joined DGQA on  November  06,
2004.

After considering the case of an Army personnel for promotion to the  higher
rank, there can be supersession on merits.  However, some times even if  the
officer is found to be meritorious and fit for promotion, he would still  be
not able to get the promotion only because he is lower in the seniority  and
the number of posts available in the higher position are less,  which  would
be filled/occupied  by  the  persons  above  him  in  the  seniority.   Non-
promotion for this reason is also  counted  as  'Supersession'.   Therefore,
after availing three chances in the rank of Major for promotion to the  rank
of Lieutenant Colonel,  if  an  officer  is  superseded  even  for  want  of
sufficient number of vacancies in the higher rank,  such  an  officer  would
still be labelled, what is termed as,  'Finally  Superseded'.  According  to
the respondent, the reason for which he was superseded in the Army  was  the
aforesaid one and not that he lacked merit.

Since many officers were not getting promotions to  the  higher  rank  after
they were finally superseded for no fault of theirs and with intent to  make
the Army profile  younger,  A.V.  Singh  Committee  was  constituted,  which
submitted its report known as 'A.V. Singh Committee  Report'.   This  Report
recommended, which recommendation was even accepted, that  all  officers  in
the Army holding the rank of Major, who had completed 13 years  of  service,
were to be promoted to the  rank  of  Lieutenant  Colonel,  irrespective  of
whether such personnel were  finally  superseded  or  not.   Acting  on  the
recommendation of this Report, the respondent, along with many  others,  was
promoted as Lieutenant Colonel on December 16, 2004, when  he  was  in  DGQA
organisation, which he had joined barely a month ago, i.e. on  November  06,
2004.

Policy letter dated January 16, 2005  was  issued  by  M.S.  Branch  whereby
Special Merit Board (SMB) was introduced to give effect to  the  A.V.  Singh
Committee Report's recommendation.  However, within two and  a  half  years,
i.e. on July 18, 2007, M.S. Branch intimated stoppage  of  SMB  Policy  with
immediate effect.  Letter to this effect  was  issued  by  the  M.S.  Branch
discontinuing SMB on the orders of the Government on October 12, 2007.

A new Permanent Secondment and Promotion Policy, which  was  issued  by  the
DGQA on November 16, 2007. Highlights of this Policy are as follows:
      (a)    Permanent  Secondment  will  be  restricted  to  the  rank   of
           Lieutenant Colonel.
      (b)   Upper cut off age for  consideration  for  permanent  Secondment
           will be 44 years, on 1st April of the year in which the  officer
           is being considered, after completion of two years of tenure.
      (c)    Officers  once  permanently  Seconded  will  continue  in   the
           organisation  till  they  retire  and  will  be  considered  for
           promotion to higher grades against their vacancies.

The effect of the  aforesaid  Policy  was  that  officers  once  permanently
Seconded to DGQA had right to continue in the said organisation  till  their
retirement.  They were also made eligible for  promotion  to  higher  grades
against their vacancies.  These promotions, they were to  earn  in  DGQA  as
per  the  aforesaid  Promotion  Policy  dated  November  16,  2007.    Since
supersession clause contained in the earlier Policy dated December 22,  1993
was also removed in this Policy, the effect there of was that there  was  no
bar for permanent Secondment in respect of those officers  who  had  earlier
incurred the disqualification for such permanent  Secondment  by  virtue  of
their  being  finally  superseded.   Benefit  thereof  was  given   to   the
respondent as well. He was permanently Seconded  to  DGQA  in  the  rank  of
Lieutenant Colonel on April 10, 2008.  Not only this, in terms of  Permanent
Secondment and Promotion Policy dated  November  16,  2007,  the  respondent
earned next promotion, i.e. to the rank of Colonel on October 22, 2008.

While things stood thus and the respondent had been working in the  capacity
of Colonel on permanent Secondment to DGQA, Ministry of Defence,  Department
of Department Production, issued Order dated April 23,  2010.   It  is  this
Order which is the  bone  of  contention  and  was  the  subject  matter  of
challenge before the Tribunal.  In this Order, it was stated that since  SMB
had been discontinued by the Army since 2006, the  effect  thereof  was  the
restoration of earlier Policy of 1993  which  contained  bar  for  permanent
Secondment in respect of those officers who  had  incurred  disqualification
because of their final supersession.   In  essence,  it  was  conveyed  that
those who were permanently seconded even after  discontinuation  of  SMB  in
the year 2006 in DGQA, it was a wrong move.  However, at the same  time,  in
respect of those officers where it had already been  done,  it  was  decided
that the same will not be withdrawn.   Likewise,  further  promotions  which
were given were also not required to be withdrawn.  However, it was  decided
that no further promotions would be given to such  officers.   This  was  so
stated in the Order dated April 23, 2010 in the following terms:
             “(a)  On the orders of Central Govt, Special Merit  Board  has
             been discontinued  by  the  Army  since  2006.   Consequently,
             tenure Officers finally non-empanelled (superseded)  will  not
             be considered for grant of permanent secondment in DGQA.


             (b)  Non-empanelled Officers (Lt Cols), who have been  granted
             permanent secondment in the DGQA in the past will  be  granted
             only one promotion to the next higher  rank  of  Col  (TS)  on
             completion of 26 years of service.  However, such officers  in
             DGQA  can  retire  as  per  norms  applicable   to   Permanent
             Secondment Service Officers in DGQA.  An option will be  given
             to such officers, if so desirous, for reversion  to  the  Army
             for their further  management.   This  clause  shall  also  be
             applicable to those  non-empanelled  officers  who  have  been
             granted the rank of Colonel in DGQA.


             (c)  OM No. F6(1)/2007/D(QA) dated 16 Nov 2007, will  be  made
             applicable prospectively for officers inducted on tenure after
             16 Nov 07.


             (d)  QASB for permanent secondment hereafter (with effect from
             2011) will be held taking 01st Oct of the year as the cut  off
             date.”




The respondent, naturally, felt aggrieved by this Order,  which  meant  that
he would not earn any further promotion in DGQA  even  when  the  appellants
did  not  disturb  his  permanent  Secondment  in  DGQA.   The   respondent,
accordingly, approached the Tribunal by filing an OA.

Contention of the respondent was that  the  above  Policy  dated  April  23,
2010,  though  looked  innocuous,  was  conceptually  flawed  and  downright
illegal because of the reason that persons like  the  respondent  and  other
similarly situated, who had been  granted  permanent  secondment  under  the
Policy dated November 16, 2007, were affected thereby.  Further, the  effect
thereof was to operate retrospectively by snatching the  rights  accrued  to
them, which amounted to violation of  Article  14  of  the  Constitution  of
India.  It was argued that as per the settled  law  the  said  Policy  dated
April 23, 2010 could not be applied retrospectively in respect of those  who
had already been permanently Seconded under the Policy  dated  November  16,
2007, which alone determined their conditions of service, including  further
promotions.

The appellants' refutation to the aforesaid plea of the respondent  was  not
only on merits but  contest  was  also  laid  to  the  jurisdiction  of  the
Tribunal to entertain the OA with such a relief.  It  was  argued  that  the
Tribunal had no jurisdiction to entertain the said OA as the impugned  order
dated April 23, 2010 was passed by the  Department  of  Defence  Production,
Ministry of Defence and the Tribunal could not deal  with  the  validity  of
such orders, which was outside its scope.  The appellants had also  referred
to the judgment passed by the Principal  Bench  of  the  Tribunal  in  Major
General S.B. Akali etc. etc. v. Union of India & Ors. (TA Nos. 125  and  221
of 2010, decided on April 09, 2010), where similar OA, albeit by an  officer
who was Seconded to DRDO, had been dismissed for want of jurisdiction.

The Tribunal, after hearing the  parties,  rendered  the  impugned  judgment
dated April 15, 2011.  It brushed aside the objection of the  appellants  to
the maintainability of the OA.  While doing so, the Tribunal  differed  with
the view expressed by the Principal Bench in the case of Major General  S.B.
Akali (supra) in somewhat curious manner, as would be noted later.

On merits, it accepted the contention of the respondent herein that  revised
Government Policy dated April 23,  2010,  which  fundamentally  changes  the
prospects of promotion of  the  respondent,  was  discriminatory.   It  also
amounted to retrospective amendment to the  promotion  policy,  which  could
not be to the detriment of an employee thereby taking the rights accrued  to
him by virtue of the Policy governing his terms and  conditions  of  service
as earlier  applicable  to  him.   Thus,  allowing  the  OA  partially,  the
Tribunal has directed the appellant authorities that  the  respondent  shall
be governed by the  provisions  of  DGQA  Policy  dated  November  16,  2007
without incorporating the provisions of the impugned Policy dated April  23,
2010 and he would be considered for further promotions in terms  of  earlier
Policy dated November 16, 2007.

The appellants filed appeal against this judgment under Section  31  of  the
AFT Act.  However, the said appeal was dismissed on April 16,  2012  on  the
ground that no civil appeal would be maintainable  unless  leave  to  appeal
was obtained under Section 31 of the AFT Act.  The appellants,  accordingly,
filed applications for leave to  appeal  before  the  Tribunal.   Leave  was
granted by the Tribunal vide orders dated August 24, 2012.  Armed  with  the
said leave, present appeal has been filed by the appellants questioning  the
validity of the impugned judgment,  both  on  jurisdiction  as  well  as  on
merits.

First and foremost  submission  of  Mr.  K.  Radhakrishnan,  learned  senior
counsel appearing for the appellants, was that in view of  the  judgment  of
the Principal Bench in Major General S.B. Akali (supra), it was not open  to
the Tribunal to have taken a different view, ignoring the said judgment  and
proceeding to consider the case on merits.   He  argued  that  even  if  the
concerned Bench was of the opinion that the  view  taken  by  the  Principal
Bench in Major General S.B. Akali (supra)  was  not  correct,  a  coordinate
Bench could, at the most, refer  the  matter  to  the  larger  Bench.   Even
otherwise, argued Mr. Radhakrishnan, the view  taken  by  the  Tribunal  was
totally perfunctory and without any cogent reasons.  Further, reasons  which
were given by the Principal Bench in the case of Major  General  S.B.  Akali
(supra) were not even dealt with by the Tribunal in the impugned judgment.

Mr. Radhakrishnan is perfectly justified  in  his  argument  that  the  only
course open to the Chandigarh Bench, which passed the  impugned  order,  was
to refer the matter to  the  larger  Bench  when  it  wanted  to  charter  a
different course than the one  adopted  by  the  Principal  Bench  in  Major
General S.B. Akali's case (supra).  In Sub-Inspector Rooplal & Anr.  v.  Lt.
Governor through Chief Secretary, (2000) 1 SCC 644, this Court  had  settled
this very issue in the following manner:
           “12. At the outset, we must express our serious  dissatisfaction
           in regard to the manner in  which  a  Coordinate  Bench  of  the
           Tribunal has  overruled,  in  effect,  an  earlier  judgment  of
           another Coordinate Bench of the same Tribunal. This  is  opposed
           to all  principles  of  judicial  discipline.  If  at  all,  the
           subsequent Bench of the Tribunal was of  the  opinion  that  the
           earlier view taken by the Coordinate Bench of the same  Tribunal
           was incorrect, it ought to have referred the matter to a  larger
           Bench  so  that  the  difference  of  opinion  between  the  two
           Coordinate Benches on the same point could have been avoided. It
           is not as if the latter Bench was unaware of the judgment of the
           earlier Bench but knowingly it proceeded to  disagree  with  the
           said judgment against all known rules of precedents.  Precedents
           which  enunciate  rules  of   law   form   the   foundation   of
           administration  of  justice  under  our  system.   This   is   a
           fundamental  principle  which  every  presiding  officer  of   a
           judicial forum ought to know, for consistency in  interpretation
           of law alone can lead  to  public  confidence  in  our  judicial
           system. This Court has laid down time and again  that  precedent
           law must be followed by all concerned; deviation from  the  same
           should be only on a procedure known to law. A subordinate  court
           is bound by the enunciation of law made by the superior  courts.
           A Coordinate Bench of a Court cannot pronounce judgment contrary
           to declaration of law made by another Bench. It can  only  refer
           it  to  a  larger  Bench  if  it  disagrees  with  the   earlier
           pronouncement.  This  Court  in   the   case   of   Tribhovandas
           [pic]Purshottamdas Thakkar v. Ratilal Motilal Patel, AIR 1968 SC
           372, while dealing with a case in which  a  Judge  of  the  High
           Court had failed to follow the  earlier  judgment  of  a  larger
           Bench of the same Court observed thus:


             “The judgment of the Full Bench of the Gujarat High  Court  was
             binding upon Raju, J. If the learned Judge was of the view that
             the decision of Bhagwati, J., in Pinjare Karimbhai case, (1962)
             3 Guj LR 529 and of Macleod, C.J., in Haridas  case,  AIR  1922
             Bom 149(2) did  not  lay  down  the  correct  law  or  rule  of
             practice, it was open to him to recommend to the Chief  Justice
             that the question be considered by  a  larger  Bench.  Judicial
             decorum, propriety and discipline required that he  should  not
             ignore it. Our system of  administration  of  justice  aims  at
             certainty in the law and that can be achieved only if Judges do
             not ignore decisions by courts of coordinate  authority  or  of
             superior authority. Gajendragadkar, C.J., observed  in  Bhagwan
             v. Ram Chand, AIR 1965 SC 1767:


              ‘It is hardly necessary to emphasise that  considerations  of
              judicial propriety and decorum  require  that  if  a  learned
              Single Judge hearing a matter is inclined to  take  the  view
              that the earlier decisions of the High Court,  whether  of  a
              Division Bench or of a Single Judge, need to be reconsidered,
              he should not embark upon that inquiry sitting  as  a  Single
              Judge, but should refer the matter to a Division  Bench,  or,
              in a proper case, place the relevant papers before the  Chief
              Justice to enable him to constitute a larger Bench to examine
              the question. That is the proper and traditional way to  deal
              with such matters and it is founded on healthy principles  of
              judicial decorum and propriety.’ ”


           13.   We are indeed sorry to note the attitude of  the  Tribunal
           in this case which, after noticing the  earlier  judgment  of  a
           Coordinate Bench and after noticing the judgment of this  Court,
           has still thought it fit to  proceed  to  take  a  view  totally
           contrary to the view  taken  in  the  earlier  judgment  thereby
           creating a judicial uncertainty in regard to the declaration  of
           law involved in this case.  Because  of  this  approach  of  the
           latter Bench of the Tribunal in this case,  a  lot  of  valuable
           time of the Court is wasted and the parties to  this  case  have
           been put to considerable hardship.”


We are conscious of the fact that  in  Rooplal's  case  (supra),  the  Court
itself chose to decide the controversy therein, because there  were  weighty
reasons to do so, as mentioned in para 14 of the  said  judgment.   However,
after hearing the parties at length, we prefer to refer the matter  back  to
the Tribunal to decide this issue by constituting a  larger  Bench.   Reason
is that the parties intend to rely upon  documents  which  were  not  placed
before the Tribunal.  Even matter has not been  thrashed  out  in  a  proper
perspective.  Therefore, some discussion is needed on this aspect, which  is
detailed hereinafter.

We note from the judgment of the  Principal  Bench  in  the  case  of  Major
General S.B. Akali (supra)  that  the  main  reason  for  holding  that  the
Tribunal did not have jurisdiction to deal with  the  matter  was  that  the
petitioner in that case, after he was Seconded to DRDO, was governed by  the
service conditions regulated by the provisions of  Office  Memorandum  dated
November 23, 1979 of the Government of India, Ministry of  Defence  and  the
controlling authority was the DRDO.  That was a case where  the  petitioner,
who was Seconded to DRDO in the rank of Major on February 21, 1981 and  rose
to the rank of Major General with effect from March 06, 2002, was not  given
further promotion to the post of Lieutenant  General.   It  is,  thus,  non-
promotion in DRDO which was the subject matter of challenge.  Though he  had
filed the writ petition  in  the  Delhi  High  Court  challenging  his  non-
selection and promotion, after the constitution of  Armed  Forces  Tribunal,
the matter was transferred to the Tribunal.  The Tribunal noted  that  since
the petitioner  was  permanently  seconded  to  DRDO  and  he  was  claiming
promotion to the post of Lieutenant General in DRDO, which was  governed  by
the Office Memorandum dated November  23,  1979  containing  the  provisions
relating to promotions in DRDO and it had nothing to do with the  Army  Act,
the Tribunal lacked the jurisdiction  to  entertain  the  matter.   Relevant
portion of the order passed by the Tribunal reads as under:
             “12.  We have bestowed our best of consideration and we are of
             the opinion that as per Section 2 read with  Section  3(o)  of
             the Armed Forces Tribunal Act, 2007, this Tribunal has limited
             jurisdiction to deal with the service conditions of  the  Army
             Act and Rules, but, the present case, which  relates  to  non-
             selection of the petitioner by the DRDO for the  rank  of  Lt.
             General and it is not  supersession  under  the  Army  Act  or
             Rules, it is under the DRDO Rules  of  the  Office  Memorandum
             dated 23rd November, 1989.  As such, this Tribunal cannot  sit
             over the  selection  by  DRDO  to  decide  the  issue  whether
             petitioner has been correctly superseded  or  not,  since  the
             service conditions of the seconded officers under the DRDO  is
             regulated by Office Memorandum dated 23rd November,  1979  and
             it is not under the  Army  Act  and  Rules.   Therefore,  this
             Tribunal will have no jurisdiction  to  decide  this  case  of
             supersession of petitioner for promotion to the  rank  of  Lt.
             General.


             13.  In this view of the matter,  we  uphold  the  preliminary
             objection of the learned counsel for the respondent and direct
             the Principal Registrar to remit this  case  back  to  Hon'ble
             Delhi High Court to decide the matter in accordance with law.


             14.  On the same lines is the case of Brig PJS Rangar  &  Brig
             Anand Solanki  (TA  No.  221  of  2010).   In  this  case  the
             incumbents were permanently seconded to  Director  General  of
             Quality Assurance.  It is  also  governed  by  OM  dated  28th
             October, 1978, as amended from time to  time.   In  this  case
             also the petitioners prayer is to  quash  the  OM  dated  18th
             February, 2008, letter dated 15th May,  2008  and  empanelment
             order dated 16th June, 2008 and direct the respondents to give
             effect to the empanelment order dated 31st  January  2008  and
             promote them to the rank of Major General in  accordance  with
             their seniority in the panel.


             15.  The service conditions are governed by the OM dated  28th
             October, 1978 and the non-selection of the petitioners are  by
             Director General Quality Assurance  of  Ministry  of  Defence.
             There is no breach of any service conditions  under  the  Army
             Act and Rules.  The non-selection  of  the  petitioner  is  on
             account of the service conditions as  mentioned  in  OM  dated
             28th October, 1978, as amended from time to time.   Therefore,
             the  objection  raised  by  the  learned   counsel   for   the
             respondent, in this case is also upheld and consequently it is
             held that this Tribunal has no jurisdiction  to  interfere  in
             this matter and direct the Principal Registrar to  remit  this
             case back to Hon'ble Delhi High Court to decide the matter  in
             accordance with law.”




When we traverse through the impugned order passed by the  Tribunal  in  the
instant case, we find that the aforesaid  judgment  in  Major  General  S.B.
Akali (supra) has been specifically taken note of.   However,  the  Tribunal
felt it appropriate not to rely upon on the said judgment,  which  it  could
not do so, having regard to the ratio in Rooplal's case  (supra).   What  is
intriguing is the reasons for coming  to  a  different  conclusion.   It  is
stated:
             “We have perused the evidence on record and heard the  learned
             counsels of both sides.   At the very  outset  we  proceed  to
             resolve the matter with regard to jurisdiction over the  case.
             Notwithstanding the fact that terms and conditions of  service
             of DGQA officers are inherently different from  those  of  the
             officers in their parent service, the subject  matter  in  the
             instant case bears an intricate connection  between  the  two.
             In fact, the policy  changes  brought  about  vide  Government
             letter dated 23-04-2010 are virtually a mirror  image  of  the
             changes brought about in the Army  sequel  to  the  system  of
             Selection Merit Board being revoked by the  Government.   This
             policy also gives option to the officers to revert back to the
             Army in the event of the changes not being found acceptable by
             them.   Further,  Regulations  for  the  Army,  1987  (Revised
             Edition) lay down at Pars 67 and 76 certain aspects  of  terms
             and conditions of service with regard to permanently  seconded
             officers in Inspection Organisations, the  former  designation
             of DGQA, suggesting a degree of  duality  of  jurisdiction  on
             certain matters.  As such, with due  deference  to  the  cited
             judgment of the Hon'ble Principal Bench  and  without  setting
             any precedence,  we  are  inclined  to  admit  this  case  for
             adjudication by this Tribunal.”




22) The aforesaid approach  cannot  be  countenanced.   First  of  all,  the
reasons given by the Principal Bench in the  case  of  Major  General  S.B.
Akali (supra) are not dealt with at all.  It is strange on the part of  the
Tribunal to proceed with the matter on merits by observing that it  was  so
done 'without setting any precedence'.  If a  Tribunal  lacks  jurisdiction
then there is no question of proceeding with the matter  in  a  given  case
taking umbrage under the facade of not treating it as a precedence.   In  a
matter of jurisdiction,  there  are  only  two  alternatives.   Either  the
Tribunal has the jurisdiction or it has no jurisdiction.  There is no third
alternative to proceed with the matter with the statement that it will  not
be treated as precedent.


23) We would like to mention here that Gp. Capt. Karan Sing  Bhati,  learned
counsel who appeared for the respondent, had argued at length that such  an
OA was maintainable and the Tribunal had the  necessary  jurisdiction.   In
support, he referred to statutory provisions, namely, Section 2 of the Act,
as per which AFT Act applies to all persons subject to the Army  Act,  1950
and argued that since the respondent was subject to the Army Act,  AFT  Act
was applicable to him.  He also submitted that  the  respondent  was  still
subject to the Army Act insofar as matter relating to court  martial,  etc.
were concerned.  He also referred to the definition of Section 3(o),  which
defines 'Service Matters' and submitted that it was couched in a very  wide
language and would include the subject matter of the  instant  proceedings.
He also took support from the provisions contained in Section 3(n)  of  the
AFT Act, which defines 'Service' to mean  the  service  within  or  outside
India and submitted that even if the respondent was Seconded to DGQA,  that
would not make any difference.  Some provisions of the Army Act as well  as
certain Regulations framed under the Army Act were also relied  upon.   Mr.
Bhati also referred to various official documents in support.


No doubt, it is open to Mr. Bhati to refer to the  statutory  provisions  in
the AFT Act or even the Army Act in support  of  his  submission.  But  many
other documents of which the learned counsel is relying upon were  not  part
of the record before the Tribunal.  Secondly, as already pointed out  above,
no such aspects are  considered  either  by  the  Chandigarh  Bench  in  the
impugned judgment or by the Principal Bench in Major  General  S.B.  Akali's
case (supra). We may  point  out  that  merely  because  the  respondent  is
subject to Army Act would not by itself be sufficient to conclude  that  the
Tribunal has the jurisdiction to deal with any case  brought  before  it  by
such a person.  It would depend upon the subject  matter  which  is  brought
before the Tribunal and the Tribunal is also required  to  determine  as  to
whether such a subject  matter  falls  within  the  definition  of  'Service
Matters', as contained in Section 3(o) of the AFT  Act.   In  Major  General
S.B. Akali's case (supra),  the  Principal  Bench  primarily  went  by  this
consideration.  The subject matter was promotion to the rank  of  Lieutenant
General and this promotion was  governed  by  the  Rules  contained  in  the
Policy of DRDO and not under the Army Act.  Therefore, in the instant  case,
it is required to be examined as to whether the relief claimed  is  entirely
within the domain of DGQA or for that matter, the Ministry of Defence or  it
can still be treated as Service Matter under Section 3(o)  of  the  AFT  Act
and two aspects are intertwined and  inextricably  mixed  with  each  other.
Such an exercise is to be taken on the basis of documents produced  by  both
the sides.  That has not been done.  For this reason, we deem it  proper  to
remit the case back to the Tribunal to decide the question  of  jurisdiction
keeping in view these parameters.

If the Tribunal holds that it is vested with the necessary  jurisdiction  to
entertain the OA, the Tribunal will obviously go  into  the  merits  of  the
case  as  well.   For  that  purpose,  some  aspects  which  shall   require
determination also need to be spelled out,  inasmuch  as,  in  the  impugned
order the focus of the Tribunal was limited and the  material  and  relevant
aspects of the issue have not been gone into.

As pointed out above,  the  Tribunal  has  partly  allowed  the  OA  of  the
respondent primarily on the  ground  that  the  decision  contained  in  the
Government  order  dated  April  23,  2010  amends  the   promotion   policy
retrospectively thereby taking  away  the  rights  already  accrued  to  the
respondent in terms of the earlier policy.  It is also  mentioned  that  the
revised  policy  fundamentally  changes   the   applicant's   prospects   of
promotion.  What is ignored is that the promotions already  granted  to  the
respondent  have  not  been  taken  away.   Insofar  as  future  chances  of
promotions are concerned, no vested right accrues as chance of promotion  is
not a condition of service.  Therefore, in the first instance, the  Tribunal
will have to spell out as to what was the vested  right  which  had  already
accrued to the respondent and that is taken  away  by  the  Policy  decision
dated April 23, 2010.  In this process, other thing which  becomes  relevant
is to consider that once the respondent is permanently seconded in DGQA  and
he is allowed to remain  there,  can  there  be  a  change  in  his  service
conditions vis-a-vis others who are his  counterparts  in  DGQA,  but  whose
permanent Secondment is not in cloud?  To put it otherwise, the sole  reason
for issuing Government Policy dated April 23,  2010  was  to  take  care  of
those cases where permanent Secondment to DGQA was wrongly  given.   As  per
the appellants, since the respondent had  suffered  Final  Supersession,  he
was not entitled to be Seconded permanently to DGQA.  This  is  disputed  by
the respondent.  That aspect will have to be  decided  first.   That  apart,
even it be so, as contended by  the  appellants,  the  appellants  have  not
reccalled the permanent Secondment order.  They have allowed the  respondent
to stay in DGQA maintaining his promotion as  Colonel  as  well,  which  was
given pursuant to this Secondment.  The  question,  in  such  circumstances,
that would arise is whether the respondent can be treated  differently  even
if he is allowed to remain in DGQA, viz. whether not allowing  him  to  take
further promotions,  which  benefit  is  still  available  to  others  whose
permanent Secondment is not in dispute, would amount  to  discrimination  or
arbitrariness thereby offending Articles 14 and 16 of  the  Constitution  of
India.  In our opinion, these, and other related issues,  will  have  to  be
argued and thrashed out for coming to a proper conclusion.

As a result, this appeal is allowed.   The  impugned  order  passed  by  the
Tribunal is set aside.  The matter is remitted to the Tribunal for  deciding
the OA by a larger Bench by having proper perspective in mind, as  discussed
in this judgment.    Both  the  sides  shall  have  right  to  file  further
documents they want to rely upon.
                 There shall, however, be no order as to costs.



                             .............................................J.
                                                          (DR. B.S. CHAUHAN)



                             .............................................J.
                                                                (A.K. SIKRI)

New Delhi;
May 28, 2014.