This post was first published on 24th July, 2014.<\/p>\n
Case Analysis of\u00a0<\/strong>Dr. Aloys Wobben and another vs. Yogesh Mehra and others.<\/em><\/p>\n Facts:\u00a0<\/strong>Dr. Aloys Wobben (Appellant) owns approximately 2,700 patents in more than 60 countries of which 100 patents are in India in the field of wind turbine generators and wind energy converters. Appellant was\u00a0carrying out the manufacturing process in India through a joint venture partnership with the Yogesh Mehra and Ajay Mehra (Enercon India Limited) (Respondents).<\/p>\n Intellectual Property licence agreements to use the technical know-how of the inventions, was granted to Enercon India Ltd. by the Appellant and further terminated due to the non-fulfillment of the obligations contained in the IP\u00a0licence agreement.\u00a0Respondents continued to use the Appellant’s patents without authorization and also filed 19 revocation petitions<\/strong>\u00a0before the Intellectual Property Appellate Board.\u00a0Thereafter, the Appellant filed a few infringement suits before the High Court for which the Respondents filed their counter claim<\/strong>. Further, four other revocation petitions were filed by the Respondents\u00a0before the IPAB.\u00a0On January 20, 2012, the Delhi High Court held that both counter claim and revocation petition could be explored simultaneously against the same patent.<\/p>\n Whether a party can seek a counter claim before the High Court and a revocation before IPAB simultaneously as a remedy?<\/em><\/p>\n Even though several remedies\u00a0are available to the Respondents under section 64 of the Patents Act, the word \u201cor\u201d is clearly disjunctive and would dis-entitle them to avail of both remedies for the same purpose simultaneously, as they would likewise be barred by the rule of res judicata. <\/em>A\u00a0different cause of action would lead to different findings.<\/p>\n Whether jurisdiction vested with the High Court, to decide a \u201ccounter-claim\u201d seeking revocation of a patent in a suit for infringement, could be taken away by an independent petition for revocation, of the same patent, and on the same grounds, pending before the \u201cAppellate Board\u201d?<\/em><\/p>\n 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.<\/p>\n With respect to the order passed by the High Court on September 1, 2010, wherein it was agreed that the suits and counter claims should be consolidated and heard by the High Court itself. It was not open to either of the consenting parties to seek redressal from a forum in addition to consented forum. The consent order passed by the High Court was fully justified in the facts and circumstances of the present case as the High Court was a forum which had statutory jurisdiction to deal with the same.<\/p>\n Rights derived out of granted patents is not absolute. It is subjected to opposition under Section 25(2)<\/strong> and revocation proceedings under Section 64(1)<\/strong>. A challenge to the grant of 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<\/strong> in a patent infringement suit.<\/p>\n On the subject of locus, Section 25(2) and Section 64(1) are alike, the locus to raise a challenge to a granted patent lies with \u201cany person interested\u201d in both provisions.\u00a0If any proceedings have been initiated by \u201cany person interested\u201d, under Section 25(2) of the Patents Act, the same will eclipse the right of the same person to file a \u201crevocation petition\u201d 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).<\/p>\n Setting aside the impugned order, the Supreme Court held that when more than one remedy is available to the respondents under section 64, they are disentitled to avail of both the remedies (revocation and counter claim) for the same purpose simultaneously. Simply put,\u00a0understanding if the respondents in their capacity as \u201cany person interested\u201d had filed a revocation petition before the institution of an \u201cinfringement suit\u201d, they cannot be permitted to file a counter claim on the same cause of action and vice versa.<\/p>\n The\u00a0Supreme Court relied on the known principles of law in the silence of the Indian Patents Act on the issue in question. A counter claim is a defense for a person in a suit for infringement. Hence a counter claim cannot be allowed to proceed where the defendant has already instituted separate proceedings against the plaintiff on the same cause of action. According to the Supreme Court having once filed a counter claim in response to the infringement suits, it would not be open to the respondents to file a revocation petition as they would be barred by the rule of res judicata<\/em>. The word \u201cor\u201d\u00a0used in section 64 of the act would disentitle the respondents from availing both the remedies for the same purpose simultaneously.<\/p>\n The Supreme Court has clarified the long standing controversial issue regarding revocation and counter claim. Through this decision the Supreme Court has taken a step forward to prevent multiplicity of proceedings on the same issue before different forums.<\/p>\n <\/p>\n","protected":false},"excerpt":{"rendered":" The Supreme Court has clarified that parties cannot pursue both revocation and counter claim remedies simultaneously for the same patent under Indian law. This decision aims to prevent multiple proceedings on identical issues before different forums.<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":63,"footnotes":""},"categories":[6,14],"tags":[10266,422,5,199,5619,50,71,3239],"class_list":["post-14386","post","type-post","status-publish","format-standard","hentry","category-intellectual-property","category-patents","tag-counter-claim","tag-indian-patents-act","tag-intellectual-property","tag-ipab","tag-legal-analysis","tag-patent-law","tag-patent-revocation","tag-supreme-court-of-india"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/14386","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=14386"}],"version-history":[{"count":3,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/14386\/revisions"}],"predecessor-version":[{"id":139566,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/14386\/revisions\/139566"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=14386"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=14386"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=14386"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}CIVIL APPEAL NO. 6718 OF 2013<\/strong><\/h2>\n
Issues raised and Analysis of each issue:<\/strong><\/h3>\n
Relevant provisions of Patent Law:\u00a0<\/strong><\/h3>\n
Holding:\u00a0<\/strong><\/h3>\n
Ratio decidendi: <\/strong><\/h3>\n
Conclusion:\u00a0<\/strong><\/h3>\n