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TMI Blog2014 (6) TMI 994X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 Limited, we are told, was originally carr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... her 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 suffi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ken 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 u ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... uld 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 "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 appellant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 ori ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 appli ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 "infring ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o 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 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 da ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nally 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 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 responde ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f, 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 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". S ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt 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 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 2 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ing 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. 5. The parties agree that the schedule as mutually set above will be complied with to enable expedi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... er Section 25(2) of the Patents Act, the date of institution of a "revocation petition" under Section 64(1) of the Patents Act, as also, the date of institution of a counter-claim in an "infringement suit", under Chapter XVIII of the Patents Act. Based on the factual position noticed at the beginning of the instant order, it is apparent, that the appellant has filed at least 19 "infringement suits", and the respondents have filed at least 23 "revocation petitions". The respondents have also filed "counter-claims" to the "patent infringement suits" filed by the appellant. In the present facts and circumstances, even though the challenge to the same patent, by our above determination, has been limited to a specific singular challenge, as against multiple challenges as at present, yet the same are to be pursued before different fora. In the instant case, the disputation is of the same nature, and between the same parties, even though it may be in respect of different patents. As such, it would be convenient for the parties concerned, to agree to resolve the same, before a singular adjudicatory authority. That will also be convenient for the concerned adjudicatory authority. Accordingl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... low, 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 p ..... X X X X Extracts X X X X X X X X Extracts X X X X
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