Dr. Aloys Wobben & Anr. v. Yogesh Mehra & Ors.

Relevant Acts and provisions

Code of Civil Procedure, 1908

Section 10

Patents Act, 1970

Section 104Section 64

Provisions considered: Sections 64 and 104 of the Patents Act, 1970, read with Section 10 of the Code of Civil Procedure, 1908.

Brief facts

Dr. Aloys Wobben, holder of numerous wind-turbine patents, licensed his technology to Enercon India Limited. After the licence was terminated, Enercon India filed a number of revocation petitions before the Intellectual Property Appellate Board against Wobben's patents. Wobben separately filed patent infringement suits before the Delhi High Court, in response to which Enercon India filed counter-claims seeking revocation of the same patents on the same grounds already pending before the Appellate Board, raising the question whether both proceedings could continue simultaneously.

Issues before the Court

1. Can a person who has already filed a revocation petition before the Appellate Board under Section 64(1) also raise a counter-claim for revocation of the same patent in a later infringement suit?
2. Where revocation of the same patent on the same grounds is sought in both forums, which proceeding should continue?

Court's findings

The Court held that Section 64(1) of the Patents Act confers the liberty to seek revocation of a patent in distinct ways: a petition by a person interested before the Appellate Board, or a counter-claim in an infringement suit before the jurisdictional High Court, and that the word separating these remedies is disjunctive, so the same person cannot pursue two of these remedies simultaneously for the same purpose.

The Court observed that a counter-claim is, for practical purposes, an independent suit, and applied the principle underlying Section 10 of the Code of Civil Procedure that a subsequently instituted proceeding on the same cause of action between the same parties cannot proceed once an earlier proceeding on that cause is already pending.

The Court held that where a revocation petition was filed before the Appellate Board prior to institution of a counter-claim on the same grounds, the earlier-filed revocation petition must continue and the later counter-claim cannot be maintained, and conversely that a counter-claim filed first forecloses a later petition.

Decision

Appeals disposed of, holding that only the earlier-instituted of a revocation petition or a counter-claim on the same grounds between the same parties may proceed.

Keywords

Counter-claim Election of Remedies Patent Litigation Patent Revocation Section 64