Patents

Revoked but Not Extinguished: Court Refuses to Kill Laser Patent Infringement Suits

Gaurav Mishra · · 9 min read

Illustrated legal and procedural concept showing two domino-like panels labeled “Order 1” and “Order 2” standing on a desk, with a judge’s gavel placed beside them. A hand is positioning the first order, symbolizing how an earlier judicial or administrative decision can influence subsequent proceedings and outcomes. Blue-toned professional legal graphic with a clean, modern style. Featured image for: Revoked but Not Extinguished: Court Refuses to Kill Laser Patent Infringement Suits

Summary

Bharat Bhogilal Patel, holder of two laser engraving patents granted in 2003, filed infringement suits against TVS Electronics Ltd. and Kalelkar Surgicals Pvt. Ltd. before the Bombay High Court. The defendants sought to have the suits thrown out before trial, arguing that two IPAB revocation orders, which BBP had never challenged, independently extinguished the patents and left no cause of action. The Bombay High Court disagreed, finding that both subsequent orders were entirely premised on an earlier IPAB order that had already been set aside, and that the Controller of Patents had never been notified of the revocations, leaving the patents continuously renewed and "in force" on the e-Register. All four applications for dismissal were rejected with costs of Rs. 1 lakh. The ruling is a pointed reminder that the legal effect of a patent revocation in India depends on far more than the text of the order alone.

Background

Two patents, two decades of procedural skirmishing, and one foundational question the Indian patent system had not cleanly answered: can a patent revoked by the IPAB but never removed from the register sustain an infringement suit?

Bharat Bhogilal Patel (“BBP”) holds Patent No. 188787, titled “Improved laser marking and engraving machine,” and Patent No. 189027 for the “Process of manufacturing engraved design articles on metals or non-metals” (together, “the said Patents”), both granted in 2003. He filed Commercial IP Suit No. 359 of 2017 against TVS Electronics Ltd. (“TVS”) and Commercial IP Suit No. 927 of 2018 against Kalelkar Surgicals Pvt. Ltd. (“Kalelkar”) before the Bombay High Court for infringement of the said Patents. The defendants responded not with pleadings on the merits but with applications seeking to have the suits dismissed before trial.

The revocation history is layered. Following the grant of the said Patents, multiple applications were filed before the Intellectual Property Appellate Board (“IPAB”) in Chennai seeking revocation. By an order dated 12 June 2012 (the “First Order”), the IPAB allowed an application filed by Aditi Manufacturing Company and revoked both patents. BBP challenged the First Order before the Madras High Court, which stayed it on 19 November 2012. While that stay was in force, the IPAB passed two further revocation orders: one dated 14 March 2013 (the “Second Order”) and another dated 7 March 2014 (the “Third Order”), each allowing separate applications that had also sought revocation of the said Patents. The Madras High Court disposed of BBP’s writ petitions in October 2014 for want of jurisdiction, but kept the stay alive and granted liberty to approach the Bombay High Court. BBP filed Writ Petition (L) No. 2867 of 2014 before the Bombay High Court, and on 3 September 2015 the court set aside the First Order by consent and remanded the matter to the IPAB for a fresh hearing. BBP did not challenge the Second or Third Orders before any forum.

Throughout this period, the Controller of Patents continued to accept renewal fees and maintained both patents as “in force” on the e-Register of Patents. When TVS and Kalelkar filed their dismissal applications in 2019, those applications then sat undecided for over seven years before finally coming up for hearing.

Issues

      • Whether the Second Order (14 March 2013) and Third Order (7 March 2014) of the IPAB constituted independent orders of patent revocation, or were consequential orders premised entirely on the First Order, such that the setting aside of the First Order also effaced them
      • Whether, given the absence of any challenge to the Second and Third Orders, BBP had a subsisting cause of action to maintain the infringement suits
      • Whether, in view of the continued renewal of the said Patents and their status as “in force” on the e-Register throughout the revocation proceedings, the suits raised triable issues that could only be resolved at trial

TVS and Kalelkar’s Arguments

      • The Second Order expressly recorded that “the invention was known, that there is neither any novelty nor any inventive step,” and the Third Order incorporated those reasons; both orders independently assessed and disposed of the revocation on the merits, independently of the First Order.
      • BBP had never challenged the Second or Third Orders before the IPAB or any court, and those orders had therefore attained finality and were binding; a party cannot treat a subsisting order as void without having it set aside by a competent authority.
      • Payment of renewal fees after revocation was a purely ministerial act by the Patent Office and could not override or nullify the operative effect of the revocation orders.
      • The Affidavit of the Assistant Controller confirmed that continued renewal of a revoked patent amounted to misrepresentation, and that the legal effect of renewal fees is nullified upon revocation by a competent authority.
      • BBP had deliberately suppressed the Second and Third Orders in the plaint, asserting the patents were valid without disclosing the full revocation history, and could not be permitted to take advantage of that suppression.

BBP’s Arguments

      • The Second and Third Orders were not independent: both were expressly passed “in view of” the First Order and contained no independent reasoning; once the First Order was set aside, the subsequent orders fell with it, applying the established principle that consequential orders cannot survive the order on which they rest.
      • Under Section 117D(2) of the Patents Act, the IPAB was required to communicate any revocation order to the Controller of Patents; since no such communication occurred, the patents were renewed and maintained as “in force” on the e-Register without any qualification under Section 67(1)(c) of the Patents Act, confirming the subsequent orders were never enforced.
      • The Controller’s own affidavit, filed before the Delhi High Court in proceedings initiated by Samsung India Electronics Pvt. Ltd. (“Samsung India”), confirmed that the patents continued to remain in force in view of subsisting court orders, a position reiterated in the affidavit filed in these proceedings.
      • The Delhi High Court, in Samsung India’s proceedings, had specifically kept BBP’s right to sue open for the period when the patents were valid, which further confirmed that the revocation orders had not extinguished that right.
      • None of the defendants had taken steps under Section 71(c) of the Patents Act, to seek deletion of the patents from the register, which demonstrated their own understanding that the subsequent orders had no operative effect.
      • The defendants had filed their dismissal applications in 2019 and allowed them to lie undecided for over seven years, defeating the very purpose of expeditious adjudication of commercial IP disputes.

Court’s Analysis

The Consequential Orders Doctrine: Were the Second and Third Orders Independent?

The court found that the defendants’ contention that the Second and Third Orders were independent of the First Order needed only to be stated to be rejected. The court noted that a plain reading of the operative parts of both subsequent orders disclosed their dependence on the First Order beyond any doubt: the Second Order recorded that it was allowed “in view of the order dated 12th June 2012 passed in ORA 5 & 6 of 2008 relating to the same patents,” while the Third Order stated it was passed because the Board had “already passed orders dated 12th June 2012 and 14th March 2013 revoking the subject patents.”

The court observed that although the Second Order mentioned findings on novelty and inventive step, it was wholly bereft of any independent reasoning to support those findings. The court further observed that the IPAB had, in both subsequent orders, expressly granted BBP liberty to challenge them depending on the outcome of the Madras High Court proceedings – a grant of liberty that was itself inconsistent with the orders being genuinely independent. The court held that once a primary order is set aside, any consequential action taken on its basis falls to the ground, and this principle applied squarely to the Second and Third Orders.

What the Patent Register Reveals: The Significance of Section 117D(2)

The court found that a decisive question was whether the subsequent revocation orders had ever been given operative effect, and the answer was no. The court noted that under Section 117D(2) of the Patents Act, the IPAB was obligated to communicate any revocation order to the Controller of Patents. The court observed that this had plainly not occurred: the patents had been renewed from 2013 onwards and were shown continuously as “in force” on the e-Register of Patents, extended without any qualification under Section 67(1)(c) of the Patents Act. The court reasoned that had the subsequent orders been communicated and enforced, the register would have reflected their effect, yet it did not.

The court further observed that the Controller’s own affidavit, filed before the Delhi High Court in Samsung India’s proceedings, had confirmed that the patents remained in force in view of the subsisting stay orders, and that this position was reiterated in the affidavit filed in the present proceedings. On this record, the court held, it was not possible at this stage to accept that BBP’s patents had been extinguished.

The Defendants’ Own Conduct

The court observed that despite being aware of the subsequent orders, none of the defendants had taken any steps under Section 71(c) of the Patents Act, to seek deletion of the said Patents from the register. The court reasoned that this conduct was telling: if the defendants genuinely believed the patents were extinguished, seeking deletion from the register was the obvious next step, yet they took none. The court found this demonstrated the defendants’ own implicit understanding that the subsequent orders had not effectively revoked the patents, and that their dismissal applications were “a shot in the dark.”

No Case for Dismissal: Triable Issues Remain

The court held that the patent revocation question was not one that could be resolved without evidence. Several genuinely triable issues arose for determination: whether the Second and Third Orders were truly consequential or independent; the legal effect of the various stay orders on those orders; what consequence, if any, the continued renewal of the patents post-revocation carried; and whether BBP had suppressed material facts in the plaint. The court found that BBP had a real prospect of success on the central question of whether the said Patents were valid and subsisting, and that the suits must proceed to trial.

The court also observed that the defendants had filed their dismissal applications in 2019 and allowed them to remain unheard for over seven years, conduct directly contrary to the purpose of expeditious adjudication of commercial IP disputes. This, combined with the absence of any credible legal or factual foundation for the applications, warranted an award of costs against the defendants.

Findings

In view of the observations and the arguments presented by both the parties, the Bombay High Court held that:

      • The Second Order dated 14 March 2013 and the Third Order dated 7 March 2014 of the IPAB were consequential orders entirely premised on the First Order dated 12 June 2012 and contained no independent reasoning; they fell when the First Order was set aside by the court’s consent order of 3 September 2015.
      • The subsequent revocation orders were never given operative effect: the Controller of Patents made no communication under Section 117D(2) of the Patents Act, 1970, the said Patents were continuously renewed without qualification under Section 67(1)(c), and both were maintained as “in force” on the e-Register throughout.
      • The suits raised multiple genuine triable issues on patent revocation that could only be resolved at trial; the applications for summary dismissal were accordingly rejected.
      • All four dismissal applications – Notice of Motion CD Nos. 820 of 2018, 1604 of 2019, 1602 of 2019, and 1593 of 2019 – were dismissed with costs of Rs. 1,00,000 (Rupees One Lakh only), payable within eight weeks, with interest at 8% per annum in the event of non-payment.
      • The suits are to proceed to trial.

Case Citation: Bharat Bhogilal Patel v. M/s. TVS Electronics Ltd. & Ors., Notice of Motion CD Nos. 820 of 2018, 1604 of 2019, 1602 of 2019 & 1593 of 2019 in Commercial IP Suit Nos. 359 of 2017 & 927 of 2018, Bombay High Court (Ordinary Original Civil Jurisdiction), decided on 7 May 2026. Available at http://indiankanoon.org/doc/114329174/

Authored by Gaurav Mishra, Patent Attorney, BananaIP Counsels

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