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Permission Notice: A modified form of this article has been accepted for publication in Journal of Intellectual Property Law and Practice ©: [2014] [Someshwar Banerjee] Published by Oxford University Press. All rights reserved

Name/citation of relevant case:
Dr. Aloys Wobben and another V. Yogesh Mehra and others (Civil Appeal No. 6718 OF 2013)

Summary:
In a landmark decision, which should go a long way in streamlining the procedural aspects of patent litigation cases, the Supreme Court of India addressed the issue of multiplicity of proceedings in patent opposition, invalidation and revocation cases.

Legal context:
Under the Indian Patent law, the validity of a patent can be challenged in three different ways:

  • by way of a pre-grant or post-grant opposition,
  • by way of a revocation proceeding before the Intellectual Property Appellate Board (IPAB),
  • by way of a counter-claim in an infringement suit before a High Court.

Under Section 25(1) of the Indian Patent Act, any person can file a pre-grant opposition. This is to be done before the grant of the patent. Once the patent is granted, there are two options:

  • under Section 25(2), a ‘person interested’ can file a post grant opposition within a year of the grant of the patent,
  • under Section 64, a ‘person interested’ can initiate revocation proceedings any time during the lifetime of the patent.

Section 64 provides two options to the ‘person interested’:

  • the revocation proceedings can be initiated in the IPAB,
  • the revocation proceedings are initiated as a counter-claim in an infringement suit. In this case, only High Courts and above have the jurisdiction.

Facts of the case:
The Enercon dispute is an exemplary case in which the multiplicity of proceedings in patent litigation cases took epic proportions. In all, Enercon India Limited had filed 23 revocation petitions, under Section 64, before the IPAB. Thereafter, Aloys Wobben had filed 10 patent infringement suits before the High Court, in response to which Enercon India Limited filed counter-claims seeking invalidation of the patents being enforced by Aloys Wobben.
Interestingly, identical prayer(s) had been made in both the revocation petitions and the counter-claims. Further, some of the revocation petitions, which have already been settled by the IPAB, were being re-agitated by Enercon India Limited before the High Court on identical grounds.
The appellants moved to the Supreme Court seeking relief from fighting out the same issues in multiple forums.

Analysis:
In the present case, the Supreme Court held that the remedies available under Section 64, i.e., a) by way of a revocation proceeding before the Intellectual Property Appellate Board (IPAB) and b) by way of a counter-claim in an infringement suit before a High Court were not conjunctive and the applicant has to make a choice between the two remedies. The Court stated that the use of the word “or” in Section 64 of the Indian Patent Act clearly demonstrated that the 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 individual, i.e., firstly, by filing a “revocation petition”, and at the same time, by filing a “counter-claim” in a suit for infringement.
The Court agreed with the appellant’s arguments that even though a plurality of remedies are available to the respondents under Section 64 of the Indian Patent Act, the word “or” used therein, separating the different remedies, barred the respondents from availing both the remedies, for the same purpose, simultaneously. The Court also commented that purely on principle this would be the correct legal position.
The Court also noted that the opening words of Section 64 are “Subject to the provisions contained in this Act”, which, according to the Court, basically meant that the provisions contained in Section 64 are subservient to other provisions of the Indian Patent Act. Therefore, if any proceeding has been initiated by “a person interested”, under Section 25(2), the same will eclipse the right of the same person to file a revocation petition under Section 64 or to file a counter-claim, to seek the revocation of a patent, in response to a patent infringement suit.
The Court ruled that in case both the forums, i.e., the IPAB for revocation proceedings and the High Court for a counter-claim, have already been approached, then the following rules applied:

  • if a revocation petition is filed before the filing of a counter-claim in an infringement suit, the defendant will be barred from seeking revocation of the patent in the infringement suit through a counter-claim;
  • if revocation of a patent has already been sought in an infringement suit through a counter-claim, the defendant will not be able to file a revocation petition before the IPAB.

The Court, in absence of any clear answers or guidelines in the Indian Patent Act, based its reasoning on settled principles of law. According to the Court a counter-claim is essentially a suit filed by the defendant and for all intents and purposes has to be treated like a plaintiff. Since a counter-claim is an independent suit, it cannot be allowed to proceed, where the defendant has already initiated action in another forum, on the same cause of action as per Sections 10 and 151 of the Civil Procedure Code.

Practical significance:
The ruling of the Supreme Court will go a long way in streamlining patent litigation cases. However, certain grey areas still remain. As per the ruling of the Supreme Court, when a defendant is sued for infringement, he will not be allowed to file a counter-claim in the High Court if he has already initiated a revocation proceeding before the High Court. So is the High Court supposed to await the IPAB’s decision on the validity of the patent? If no, then it is not clear on what will happen if the High Court grants an injunction and on a later date the IPAB revokes the patent. We will have to wait for future decisions of the courts, in this regard, for the answers.