Dr Aloys Wobben v Yogesh Mehra (2014)

Summary

The Court recorded that “Enercon India Limited, had filed 19 ‘revocation petitions’ before the Intellectual Property Appellate Board” (para 3) and that “In all 10 ‘patent infringement suits’, were filed after Enercon India Limited had already instituted 19 ‘revocation petitions’, before the ‘Appellate Board’.” (para 4) “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’.” (para 7) The Court framed “the question which arises for determination” as “that having chosen both the above remedies, which one of the two, should the respondents, be permitted to pursue.” (para 23)

The Court held “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.” (para 22) It held that “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” (para 24), and that “‘revocation petitions’ filed later in point of time, than the institution of the ‘infringement suit’, would be unsustainable in law.” (para 25) It affirmed “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.” (para 28) “The impugned order is therefore set aside, in the terms recorded hereinabove. The appeal is disposed of in the above terms.” (para 31)

What the court decided

1. Three routes under section 64(1). The Court held that “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.” (para 10)
2. Locus standi and two fora. “In view of the mandate 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.” (para 10)
3. Locus in pre-grant and post-grant opposition. “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.” (para 15)
4. The forum for each challenge. “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’.” “When a challenge is raised under Section 25(2), it must be raised within one year of the publication of the grant (of patent).” “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” (para 16)
5. The opening words of section 64. “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.” “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, no 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.” (para 17)
6. Effect of a post-grant opposition. “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’” (para 18); and in its conclusions, “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.” (paras 18, 26)
7. Obiter. When the patentee’s right crystallises. “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.” (para 18)
8. Who may counter-claim. “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” “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).” (para 19)
9. Meaning of person interested. “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.” “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.” (para 20)
10. No simultaneous pursuit of remedies. “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.” (para 22)
11. Resort to principles of law. “Since no legitimate solution could emerge from the provisions of the Patents Act, it would be essential, to rely on known principles of law, to resolve the issue.” (para 23)
12. A counter-claim as a suit. “A ‘counter-claim’ for all intents and purposes, must be understood as a suit, filed by one who is impleaded as a defendant.” “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.” (para 24)
13. Revocation petition filed first. “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’.” “In our considered view, the above conclusion is imperative for a harmonious interpretation of the relevant provisions of the Patents Act.” (para 24) In its conclusions the Court held that such a person “would be disentitled in law from seeking the revocation of the patent” “through a ‘counter-claim’.” (paras 24, 26)
14. Counter-claim filed first. “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.” (para 25) In its conclusions the Court held that “the defendant cannot thereafter, in his capacity as ‘any person interested’ assail the concerned patent, by way of a ‘revocation petition’.” (paras 25, 26)
15. Consent to a single forum. “It is now well settled, that rules of procedure are meant to ensure justice to the concerned parties, based on their substantive rights.” “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.” (para 28)
16. The consent order of 2010. “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.” (para 28)
17. One remedy only. “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.” “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.” (para 30)
18. Procedure. Disposition. “The impugned order is therefore set aside, in the terms recorded hereinabove. The appeal is disposed of in the above terms.” (para 31)

What the court did not decide

On the appellants’ contention that under the Trade Marks Act, 1999 “Section 124 gives power to the concerned court to stay the proceedings in a suit for infringement of a trade mark” (para 29) and that “no such protective measure has been provided for by the legislature under the Patents Act” (para 29), the Court held that “In view of our above conclusion, the instant submission advanced by the learned counsel for the appellants does not survive for consideration.” (para 30)

Subsequent treatment

• Explained — In Arunachalaa Enterprises v R. Sukumar (2026) the Madras High Court, of “the judgment of the Hon’ble Apex Court” (not named there), held that “originally the suit for infringement had been filed before the High Court, in which, a counter claim had been made and therefore, there is no question of proviso to Section 104 being applied therein” (para 5).