2014 (6) TMI 994 - SC - Indian Laws

Exclusive Jurisdiction on Patent Validity; Consolidated Suits Binding

The Supreme Court held that a party cannot simultaneously pursue a revocation petition and a counter-claim for the same patent. The jurisdiction to decide ... Proceedings initiated by “any person interested”, under Section 25(2) of the Patents Act - Held that:- 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 singular 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. 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. Issues Involved:1. Validity of the revocation petitions filed by Enercon India Limited.2. Jurisdiction of the High Court vs. the Appellate Board in patent revocation cases.3. Interpretation of Section 64 of the Patents Act.4. Legitimacy of simultaneous proceedings for patent revocation.5. Impact of a consent order on pending suits and counter-claims.6. Applicability of Section 124 of the Trade Marks Act to patent cases.Detailed Analysis:1. Validity of the Revocation Petitions Filed by Enercon India Limited:The appellant, Dr. Aloys Wobben, claimed that despite the termination of intellectual property license agreements, Enercon India Limited continued using his patents without authorization. Enercon India Limited had filed 19 revocation petitions before the Intellectual Property Appellate Board (Appellate Board) under Section 64(1) of the Patents Act, seeking revocation of the appellant's patents. The appellant responded by filing patent infringement suits against Enercon India Limited and its directors.2. Jurisdiction of the High Court vs. the Appellate Board in Patent Revocation Cases:The main contention was whether the High Court or the Appellate Board had jurisdiction to decide on the validity of a patent when a counter-claim for revocation is filed in an infringement suit. Section 64(1) of the Patents Act allows for revocation petitions to be filed either before the Appellate Board or as a counter-claim in an infringement suit before the High Court. The court observed that once a counter-claim is filed in response to an infringement suit, the High Court has exclusive jurisdiction to decide the validity of the patent.3. Interpretation of Section 64 of the Patents Act:Section 64(1) of the Patents Act provides for revocation of a patent on various grounds, either through a petition to the Appellate Board or as a counter-claim in an infringement suit before the High Court. The court emphasized that the use of the word 'or' in Section 64(1) indicates that a person cannot simultaneously pursue both remedies for the same purpose. The court further clarified that the provisions of Section 64 are subservient to other provisions of the Patents Act, meaning that if a person has initiated proceedings under Section 25(2) (opposition to the patent), they cannot later file a revocation petition or a counter-claim under Section 64(1).4. Legitimacy of Simultaneous Proceedings for Patent Revocation:The court held that if a person has already filed a revocation petition before the Appellate Board, they cannot file a counter-claim for revocation in an infringement suit, and vice versa. This principle is based on the rule of res judicata, which prevents the same issue from being litigated multiple times between the same parties. The court concluded that the validity of the patent should be determined in the forum where the proceedings were first initiated.5. Impact of a Consent Order on Pending Suits and Counter-Claims:A consent order dated 1.9.2010 was passed by the High Court, consolidating various suits and counter-claims for expedited trial. The court affirmed that the consent order was justified and binding, as it was based on mutual agreement and aimed at procedural convenience. The court emphasized that parties should adhere to the agreed procedural framework to avoid multiplicity of proceedings.6. Applicability of Section 124 of the Trade Marks Act to Patent Cases:The appellants argued that a similar provision to Section 124 of the Trade Marks Act, which allows for the stay of infringement proceedings pending rectification, should apply to patent cases. The court noted that the Patents Act does not contain a similar provision. However, the court's interpretation of Section 64 of the Patents Act ensures that only one remedy can be pursued at a time, thereby addressing the appellants' concern about simultaneous proceedings.Conclusion:The Supreme Court set aside the impugned order, holding that:- A person cannot simultaneously pursue a revocation petition and a counter-claim for the same patent.- The jurisdiction to decide the validity of a patent lies with the forum where the proceedings were first initiated.- The consent order consolidating suits and counter-claims is binding and should be adhered to by the parties.The appeal was disposed of in these terms, ensuring clarity on the procedural aspects of patent revocation and infringement suits.