The recent ruling by the Supreme Court of India lays down clear guidelines on the course of action to be followed in patent litigation to avoid multiplicity of proceedings In a recent case, the Supreme court was required to consider whether a patent could be challenged through multiple proceedings i.e. by way of an opposition, revocation and/or counter claim in...
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The recent ruling by the Supreme Court of India lays down clear guidelines on the course of action to be followed in patent litigation to avoid multiplicity of proceedings
In a recent case, the Supreme court was required to consider whether a patent could be challenged through multiple proceedings i.e. by way of an opposition, revocation and/or counter claim in infringement proceedings or whether the right to challenge a patent should exhaust with only one of the options available. More specifically, if the Defendant in an "infringement suit" files a "counter-claim" seeking revocation of a patent as a defense, is he precluded from pursuing the same relief in a revocation action. The counter claim in an infringement action is obviously filed at the High Court (where infringement proceedings are pending). In such a case, does the Intellectual Property Appellate Board (IPAB) cease to have the jurisdiction to adjudicate upon the validity of the patent considering a higher forum is hearing the same subject matter? The question becomes important considering under the current system, where a patent can be challenged through multiple proceedings i.e. by way of an opposition, revocation and/or counter claim in infringement proceedings instituted simultaneously or at different points in time.
The Appellant's case was that Dr. Aloys Wobben (Dr. Aloys) is a scientist-engineer who had to his credit several inventions in the field of wind turbine generators, and wind energy converters. The appellant claimed to be owner of approximately 2,700 patents (in more than 60 countries) out of which about 100 patents were in India. Wobben Properties GmbH, (Wobben) through an assignment agreement dated 05th January, 2012, had acquired the right, title and interest in all the Indian registered designs and patents (including the pending registrations), belonging to Dr. Aloys. Wobben is engaged in the manufacture of wind-turbines and claims to be among top three manufacturers in the world. The aforesaid manufacturing process is carried out by Wobben under the name of Enercon GmbH (Enercon). The appellant claims that its manufacturing process is carried out in about 27 countries. In India, Enercon had been carrying on the aforesaid manufacturing process, through a joint venture partnership with Yogesh Mehra and Ajay Mehra, (Mehra) carrying out business in the name of Enercon India Limited (EIL).
EIL was formed in 1994 as a joint venture, between Enercon and Mehra. According to the Enercon, the licences to use technical know-how were given to EIL through license agreements executed between the parties from time to time, and the last such agreement was executed on September 29, 2006, which was terminated by Enercon, on December 8, 2008, due to non-fulfilment of the obligations contained in the said agreement.
According to Enercon, despite the termination of all agreements, Mehra continued the use of Enercon Patents belonging to Enercon without due authority.
EIL filed 19 "revocation petitions" before the Intellectual Property Appellate Board (IPAB) under Section 64(1) of the Patents Act, 1970, in January 2009. Aggrieved by EIL action, Wobben/Enercon filed a number of "patent infringement suits". In all, 10 "patent infringement suits" were filed after EIL had already instituted 19 "revocation petitions", before the IPAB. EIL in the above suits filed "counter-claims" as defense in response to some of the "infringement suits".
The main contentions put forward by Enercon were
Basically allows for the stay of certain proceedings on the grounds that the same issues, under the same title and parties are pending before another Court. The doctrine is summarised under Section 10 of the Civil Procedure Code of India which applies to civil suits and also Section 124 of the Trademarks Act which requires trial courts to stay all proceedings in an infringement suit if in case the trademark itself is challenged before the Appellate Board. However, the Indian Patents Act, 1970 does not have a provision in this respect and therefore the doctrine did not apply.
As per provisions of the Indian Patent Act, a patent can be annulled:
As the main contentions advanced by the learned counsel for the Enercon, emerge from Section 64 of the Patents Act, in order to address this, the Court made an endeavour to examine the controversy and the wording of Section 64 of the Patent Act which governs the circumstances for revoking a granted patent and provides grounds on which a revocation of a granted patent could be sought.
As per Section 64 (1) of the Patent Act, "Revocation of patents which leads, 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".
Therefore, as per the wordings of the Section 64(1) of the Patent Act, a Patent can be revoked either on an application made before the Appellate board or on a counter-claim in a suit for infringement. In the present case, the court observed that the words with which the legislature has prefaced Section 64, necessarily leads to the inference that the provisions contained in Section 64 are subservient to all other provisions contained in the Patents Act. The court accepted Enercon's contention that the use of the word "or" in Section 64(1) demonstrated 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. The Court stated that even though more than one remedy is available to the Respondents under Section 64 of the Patents Act, the word "or" used therein separating the different remedies provided therein, would disentitle them, to avail both the remedies, for the same purpose, simultaneously.
Finally, the Supreme Court culled out the following principles of law based upon the factual matrix of the case -
This is a welcome decision and would considerably reduce the multiple challenges mounted by parties in different forums thus delaying the final outcome. The ruling has laid down clear guidelines on the course of action to be followed in patent litigation to avoid multiplicity of proceedings.
Disclaimer - The views expressed in this article are the personal views of the author and are purely informative in nature.