TaxTMI 
TaxTMI 
2014 (6) TMI 994
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....e 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 pending 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 Lim....
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.... 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 ....
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....for; (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 ins....
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....date of the importation, except where such importation has been for the purpose of reasonable trial or experiment only. (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 ....
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....eason, 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 same 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....
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....tter, 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 definitely 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 outsid....
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....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 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; (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 de....
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....ed 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; (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 A....
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....ngly." 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 respe....
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.... 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 considerat....
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.... 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 sam....
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....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 s....
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....m. 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 rely 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 ....
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....ted", 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 the patent, under the str....
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....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 through their counsel, after securing instructions, agree that the course is acceptable. After hearing them, the Court....
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....ed 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 appoi....
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.... cause of action, between the same parties, was impermissible in law. 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 "inf....
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.... in relation to the plaintiff's or defendant's trade mark are pending before the 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 b....