In a recent decision, the Supreme Court of India clarified the position on multiplicity of proceedings with respect to patent cases. On June 2, 2014 in the case of Dr. Aloys Wobben vs. Yogesh Mehra and Others1, a division bench of the Supreme Court comprising of Justice J.S. Khehar and Justice A.K. Patnaik held that a patent revocation proceeding based on similar issues cannot be simultaneously pursued before the Patent Office, the Intellectual Property Appellate Board (IPAB) and the relevant High Court, and if a party initiates revocation proceedings before any one forum, it would be precluded from initiating similar proceedings before the other available forums.
2. FACTUAL BACKGROUND
2.1 Dr. Aloys Wobben (Appellant) is an engineer and holds several patents in India to his credit in the field of wind turbine generators and wind energy convertors. He licensed his patents to the Respondents through Enercon GmbH. The license agreement was terminated by Enercon GmbH due to breach of the agreement by the Respondents, however, even after the termination of the agreement, the Respondents continued the use of the patents, without any due authority.
2.2 The Respondents filed several revocation petitions before the IPAB under Section 64(1) of the Patents Act, 1970 (Act) seeking revocation of the Appellant's patents. The Appellant in retaliation went on to file several patent infringement suits before the High Court of Delhi (High Court). Post filing of the infringement suits by the Appellant, the Respondents filed further revocation petitions before the IPAB. Also, in response to the infringement suits filed by the Appellant, the Respondents filed counter-claims seeking revocation of patents before the High Court. The relief sought by the Respondents in the counter-claims before the High Court and the revocation petitions before the IPAB was identical, i.e. for revocation of the Appellant's patents.
3.1 The Appellant contended that where a counter-claim was instituted in response to a suit for infringement of a patent in the High Court, there could be no further proceedings in the revocation petition filed before the IPAB. The Appellant further contended that it would make no difference, whether such proceedings before the IPAB had been instituted prior to, or after the filing of the suit for infringement.
3.2 The second contention advanced by the Appellant was that the jurisdiction of the High Court to decide a counter-claim for revocation was exclusive and could not be taken away by initiating simultaneous proceedings before the IPAB. The Appellant asserted 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 sub-ordinate forum, viz, the IPAB. This, the Appellant explained, would be for the simple reason that the inferior forum would have to make way for the superior forum.
3.3 Thirdly, the Appellant contended that the jurisdiction to decide a counter-claim seeking revocation of a patent in a suit for infringement vested with the High Court could not be taken away by an independent petition, for revocation of the same patent and on the same grounds, pending before the IPAB. To assert this argument, the Appellant argued that the IPAB is only an administrative tribunal which was neither superior to the High Court nor vested with a status that was equal to that of the High Court. Therefore, any determination by the IPAB, which could be corrected by the High Court (through a writ petition), should not be allowed to disrupt the plea of revocation raised through a counter-claim before the High Court.
4. FINDINGS OF THE SUPREME COURT
4.1 The Supreme Court accepted the contention of the Appellant that a counter claim before the High Court and a revocation petition before the IPAB cannot be availed of simultaneously under Section 64(1) of the Act. The Supreme Court further observed that even though more than one remedies are available to the Respondents under Section 64 of the Act, the word "or" used therein is to be read in a disjunctive manner, which would thus disentitle the Respondents from availing both the remedies, for the same purpose, simultaneously. The Supreme Court further stated that if such an interpretation is not given to Section 64 of the Act, it could lead to a situation wherein the IPAB and the High Court could come up with different conclusions on the same dispute.
4.2 The Supreme Court further examined the issue that if a party is eligible to file either a revocation petition or a counter-claim for revocation of a patent in an infringement suit, which remedy is the correct course for the party to pursue. The Supreme Court analyzed several provisions of the Act but could not deduce an answer to this issue from such deliberation. Therefore, it made a reference to Section 10 of the Civil Procedure Code (CPC), which lays down the principle of res judicata. The Supreme Court observed that a counterclaim must be understood as a separate suit in itself, which is filed by a defendant and is tried jointly with the suit filed by the plaintiff, and has the same effect as a cross-suit. Therefore, for all intent and purposes a counter-claim is treated as a plaint, and is governed by the rules applicable to plaints. The Supreme Court held that as a counter-claim is in the nature of an independent suit, it cannot be allowed to proceed where the defendant has already initiated legal recourse based on the same cause of action in a different forum. 4.3 The Supreme Court stressed that the above conclusion is imperative for a harmonious interpretation of the relevant provisions of the Act and therefore on similar lines, if a counter-claim was filed by the Respondents before the revocation petition, it would not be open for the Respondents to proceed with the later filed revocation petition as the same would be barred by the rule of res judicata.
4.4 Additionally, the Supreme Court also took note of a consent order passed by the High Court, wherein both parties had agreed that all pending suits and counter-claims should be consolidated and adjudicated upon by the High Court. While accepting the contention of the Appellant, the Supreme Court held that having consented to one of the available remedies postulated under the law, it was not open to either of the consenting parties to seek redressal from another forum in addition to the consented forum. Thus, the Supreme Court affirmed the consent order passed by the High Court thereby directing the Respondents to pursue the counter-claims before the High Court while dropping the revocation petitions filed before the IPAB.
5. CONCLUSION & IMPACT
5.1 Multiple forum shopping has been one of the usual tactics of litigants to exert pressure on each other. This decision of the Supreme Court was thus much required to put a curb on such tactics and consequently on multiplicity of proceedings in patent related disputes. Litigants seeking revocation of a patent would now have to carefully plan and choose an appropriate forum to seek redressal.
5.2 Although it is apparent that the Supreme Court, vide this judgment, intends to streamline patent litigation in India, it appears that the court may have overlooked certain connected issues, which still remain unanswered. For one, the court did not address a situation wherein if there is a revocation petition pending before the IPAB and a subsequent infringement suit is filed before a High Court, would the concerned High Court be required to await the decision of the IPAB on the validity of the patent in question? Further, how would a situation be addressed wherein on one hand the defendant is barred from initiating a counter-claim before a High Court (by virtue of a previously filed revocation petition before the IPAB) but on the other hand Section 107 of the Act allows the defendant to raise grounds of revocation as a valid defense (through a written statement as opposed to a counter-claim) in a suit for infringement?
5.3 Absence of clear law on the above mentioned connected issues would in all likelihood lead to anomalous situations. A stay on the later filed proceedings till the prior proceeding is concluded may be the answer. But whether this answer would be provided by another court decision or statutory amendments to the Patents Act, is anybody's guess.
1 Civil Appeal No. 6718 OF 2013
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