“  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 pending

2

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 agreement

3

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 and

4

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” were

5

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 priority

6

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 a

9

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 same

10

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  mandate

11

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 definitely

12

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 of

13

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 date

14

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, the

17

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  a

18

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 the

20

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,  no

21

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 a

22

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  “person

23

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 learned

24

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 rely

26

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  the

28

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 through

30

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  singular

34

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  the

35

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 “Appellate

36

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.