Supreme Court of India
DR. ALOYS WOBBEN & ANR.versusYOGESH MEHRA & ORS.
- Citation
- 2014 INSC 416
- Decided
- 2 June 2014
- Disposal
- Disposed off
- Bench
- A K PATNAIK
Holding
Only one of the two remedies under s.64(1) of the Patents Act – either a revocation petition as "any person interested" or a counter‑claim in an infringement suit – may be pursued, and the later remedy is barred by res judicata.
Summary
Dr. Aloys Wobben, holder of several wind‑turbine patents, sued Yogesh Mehra and others for patent infringement in the Delhi High Court. The respondents filed revocation petitions before the Intellectual Property Appellate Board under s.64(1) of the Patents Act and also raised counter‑claims in the infringement suits seeking revocation of the same patents. The Supreme Court examined whether a party could simultaneously pursue both remedies and whether the later‑filed revocation petitions were barred by res judicata. It held that only one of the two remedies under s.64(1) – either a revocation petition as "any person interested" or a counter‑claim in an infringement suit – may be availed, and once a counter‑claim is filed the revocation petition is untenable. The Court also affirmed the High Court’s consent order consolidating the suits. The impugned order was set aside and the appeal disposed of.
Issues considered
- Can a party simultaneously file a revocation petition under s.64(1) as "any person interested" and a counter‑claim in an infringement suit seeking revocation of the same patent?
- Does filing a counter‑claim bar subsequent revocation petitions on the ground of res judicata?
- Which forum – the Appellate Board or the High Court – has exclusive jurisdiction to adjudicate revocation when a counter‑claim is filed?
- Is the consent order consolidating the infringement suits and counter‑claims valid and enforceable?
- Should provisions of the Trade Marks Act, 1999 be read into the Patents Act to stay parallel revocation proceedings?
Legislation cited
- Code of Civil Procedure, 1908s. 10, s. 151
- Patents Act, 1970s. 10, s. 104, s. 151, s. 2(1)(t), s. 25(2), s. 64(1)
- Trade Marks Act, 1999s. 124
Subjects
patent revocationcounter‑claimres judicataSection 64Section 25intellectual propertyprocedural consolidationconsent orderjurisdiction
Judgment
[2014) 9 S.C.R. 94
A DR. ALOYS WOBBEN & ANR.
v.
YOGESH MEHRA & ORS.
(Civil Appeal No. 671.8 of 2013)
JUNE 2, 2014
B
[A.K. PATNAIK AND JAGDISH SINGH KHEHAR, JJ.]
Patents Act, 1970 - s..64(1), 25(2) - Patent infringement
suits - Revocation of patents - Simultaneous proceedings
C against the patent - Dispute over licensing agreement
between the appellant-patent holder and respondents -
Respondent filing revocation petitions before the Appellate
Board seeking revocation of patents held in the name of
appellant and appellant filing patent infringement suits before
D the High Court - Thereafter, respondents filing counter claims
to.Jhe patent infringement suits and continued to pursqe
.({Jvocation petitions before Appellate Board - Perusal of both
the remedies same time to assail grant of patent -
Entitlement of - Held: Where infringement suits were filed by
E appellant, before the revocation petition were filed by the
respondents, the respondents had the right to file counter-
claim to seek revocation of the patent u/s. 64(1)- Having once
filed a counter-claim, in response to the· infringement suit, it
would not be open to the respondents to file revocation
F petition, it would be barred by the rule of res judicata -
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 for revocation of the patent
shall be adjudicated, while disposing of the counter-claim filed
by the respondents - While counter-claim will have to be
G permitted to be pursued, the revocation petition cannot be
permitted to be continued - Thus, only one out of two
remedies available u/s. 64, can be availed of, so as to assail
_the grant of a patent - Said remedy may be availed of in the
H 94
DR: ALOYS WOBBEN v. YOGESH MEHRA 95
capacity of either 'any person interested', or in the capacity A
of a defendant in a counter-claim - Having consented to one
of the available remedies postulated under law, it would not
be open to either of the consenting parties, to seek redressal
from a forum in addition to the consented forum - On facts,
consent order passed by the High Court that the infringement B
suits and counter claims pending between the parties should
be consolidated, being on the subject of procedure, and
being before a forum which had the statutory jurisdiction to
deal with the same is affirmed and was justified - Res judicata
- Intellectual property. c
Words and phrases: 'any person interested' - Meaning
of, in the context of s. 64(1), 25(2) and 2(1)(t) of the Patents
Act, 1970.
The appellant, scientist-engineer claimed to be owner D
and holder of various intellectual property rights for 2,700
patents in more than 60 countries. The appellant was
carrying on manufacturing process of wind-turbines
under the name of 'EGM'. Appellant entered into a joint 1
venture partnership with respondents. nos. 1 and 2. E
Respondent no. 3-EIL is an Indian enterprise carrying on
the trade and respondent nos. 1 and 2 are its Directors.
Respondent no.3 was originally carrying on its
manufacturing process, in furtherance of licences
granted by the appellant. The licences to use technical F
know-how, were vested by the appellant with respondent
no. 3-'EIL' through intellectual property licence
agreements. The appellant terminated the last agreement
on the ground of non-fulfillment of the obligations
contained in the agreement. Despite the termination of G
the-agreements, respondent nos.1 to 3 continued the use
of the appellant's patents withou.t due authority.
Respondent no. 3 filed 19 revocation petitions before the
Intellectual Property Appellate Board uls. 64(1) of the
Patents Act, 1970 seeking revocation of the patents held
H
96 SUPREME COURT REPORTS [2014) 9 S.C.R.
A in the name of the appellant. Appellant filed patent
infringement suits against respondent no. 1 to 3 before
the High Court. The respondents filed counter-claims in
response to some of the infringement suits. Thereafter,
respondent no. 3 filed four more revocation petitions
B before the Appellate Board. The Appellate Board settled
a number of revocation . petitions filed by the
respondents, whereas, some are still pending
consideration. The respondents re-agitated the same
issues before the High Court, through the counter-
C claims. Hence, the instant appeals .
. Disposing of the appeal, the Court
HELD: 1. Only one out of two remedies available
under Section 64 of the Patents Act, can be availed of,
D so as to assail the grant of a patent. Accordingly the said
remedy may be availed of in the capacity of either "any
person interested", or in the capacity of a defendant in a
"counter-claim". Having availed of any one of the
remedies, it is not open to the same person to assail the
E grant of a patent by choosing the second alternative
available to him. [Para 30] [137-H; 138-A-B]
2.1. Section 64 of the Patents Act, is prefaced by the
words "Subject t.o the provisions contained in this
Act,. .... ". And not by the words, "Without prejudice to the
F provisions contained in this Act.. ... ", or "Notwithstanding
the provisions contained in this Act...". The words with
which the legislature has prefaced Section 64,
necessarily lead to the inference, that the provisions
contained in Section 64 are subservient to all the other
G provisions contained in the Patents Act. This exordium
to Section 64 of the Patents Act mandates, that the
directive contained in Section 64, would be subservient
and deferential, to the other provisions of the Patents Act.
Stated simply, if there is any provision under the Patents
H Act, w:-iich is in conflict with the mandate contained in
DR. ALOYS WOBBEN v. YOGESH MEHRA 97
Section 64, Section 64 of the Patents Act would stand A
eclipsed, and the other provision(s), would govern the
field under reference. Therefore, no interpretation can be
placed on Section 64 of the Patents Act, which will be in
conflict with, any other provision(s) of the Patents
Act.[Para 17] [122-D-G] B
2.2. If any proceedings have been initiated by "any
person interested", under Section 25(2) of the Patents
Act, the same will eclipse the right of the same person to
file a "revocation petition" under Section 64(1) of the C
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). This, would be the natural effect
of the words, "Subject to the provisions contained in this
Act ..... ", appearing at the beginning of Section 64(1) of the D
Patents Act. And if, ·the above meaning is not to be
assigned to the words "Subject to the provisions of this
Act. .... ", they would be redundant and superfluous. The
above situation, is unlikely to ever arise. This is because,
Section 25 of the Patents Act, inter alia, provides for the E
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 F
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 G
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 th.e 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 H
98 SUPREME COURT REPORTS [2014] 9 S.C.R.
A 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 date of publication of the
grant of a patent, the grant would be deemed to have
s crystallized. Thus, only the culmination of procedure
contemplated under Section 25(2) of the Patents Act,
bestows the final approval to the patent. Therefore, it is
unlikely and quite impossible, that an "infringement suit"
would be filed, while the proceedings under Section 25(2)
c are pending, or within a year of the date of publication of
the grant of a patent.[Para 18] [122-H; 123-A-H]
2.3. The defendant party to a suit for infringement,
who seeks to repudiate the charge of infringement, is
allowed to raise a "counter-claim", so as to enable him
D to raise a challenge, to the validity of the patent assigned
to the author of the suit (under Section 64 of the Patents
Act). This is so, because a "counter-claim" can be filed
only by such person, against whom a suit for
infringement has been filed (by the patent-holder). [Para
E 19] [124-A-B]
2.4. A corrective mechanism is also available to "any
person interested", to assail the grant of a patent under
Section 64(1) of the Patents Act. This is in addition, to a
F similar remedy provided to "any person interested",
under Section 25(2) of the Patents Act. The term "person
interested" has been de.fined in Section 2(1)(t) of the
Patents Act. Unless the context otherwise requires, in
terms of Section 2(1)(t) aforementioned, a "person
G interested" would be one who is ... "engaged in, or in
promoting, research in the same field as that to which the ,
invention relates". Simply stated, a "person interested" ,
would include a person who has a direct, present and ·
tangible interest with a patent, and the grant of the patent,
adversely affects his above rights. A "person interested"
H
DR. ALOYS WOBBEN v. YOGESH MEHRA 99
would include any individual who desires to make A
independent use of either the invention itself (which has
been patented), or desires to exploit the process (which
has been patented) in his individual production activity.
Therefore, the term "any person interested" is not static.
The same person, may not be a "person interested" when s
the grant of the concerned patent was published, and yet
on account of his activities at a later point in time, he may
assume such a character or disposition. It is, therefore,
that Section 64 of the Patents Act additionally vests in
"any person interested", the liberty to assail the grant of c
a patent, by seeking its revocation.[Para 20] [124-C-G]
2.5. Even though more than one remedies are
available to the respondents in Section 64 of the Patents
Act, the word "or" used therein separating the different
remedies provided therein, would disentitle them, to avail D
of both the remedies, for the same purpose,
simultaneously.[Para 22] [125-G]
2.6. 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 E
essentially filed to obstruct the claim raised in a suit. A
"counter-claim" is tried jointly, with ttie 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 F
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". Since a "counter-claim"· is of the
nature of·an independent suit, a "counter-claim" cannot G
be allowed to proceed, where the defendant has already
instituted a suit against the plaintiff, on the same cause
of action. The conclusion ·is drawn on the basis of the
accepted principle of law crystallized in Section 10 of the
Code of Civil Procedure, 1908 read with Section 151 of H
100 SUPREME COURT REPORTS [2014] 9 S.C.R.
A the CPC. Therefore, 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. A similar question
B arises for consideration before 'this Court,· in the present ·
controversy. If the respondents in their capacity as "any
person interested", had filed a "revocation petition"
before the institution of an "intringement suit", they
cannot be permitted to file a "counter-claim" on the same
c cause of action. The natural conclusion in the above
situation would be, the validity of the grant of the patent
would have to be determined in the "revocation petition".
Therefore, in the above situation, while the "revocation
petition" will have to be permitted to be pursued, the
"counter-claim" cannot be permitted to be continued.
0
Therefore, in the said eventuality, it is apparent that the
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. The said
conclusion is imperative for a harmonious interpretation
E of the relevant provisions of the Patents Act. [Para 24)
[126-H; 127-A-C-H; 128-A-D]
2.7. In cases where the "infringement suit(s)" was/
were filed by the appellant (as plaintiff in the "infringement
F suit"), before the "revocation petition(s)" wasfwere 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 and
authority emerging from Section 64(1) of the Patents Act.
G Having once filed a "counter-claim", in response to the
"infringement suit(s)", on the same analogy as has been
recorded, it would not be open to the respondents (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
H
DR. ALOYS WOBBEN v. YOGESH MEHRA 101
in point of time, than the institution of the "infringement A
suit", would be unsustainable in law; In such cases, the
prayer for revocation of the patent shall be adjudicated,
while disposing of the "counter-claim" filed by the
respondents. Therefore, while the "counter-claim" will
have to be permitted to be pursued, the "revocation B
· petition" cannot be permitted to be continued.[Para 25]
[128-E-H; 129-A]
2.8. Firstly, if "any person interested" has filed
proceedings under Section 25(2) of the Patents Act, the
same would eclipse all similar rights available to the very C
same person under Section 64(1) of the Patents Act. This
would include the right to file a "revocation petition" in
the capacity of "any person interested" (under Section
64(1) of the Patents Act), as also, the right to seek the
revocation of a patent in the capacity of a defendant o
through a "counter-claim" (also under Section 64(1) of
the Paten~. Act). Secondly, if a "revocation petition" is
filed by "any person interested" in exercise of the liberty
vested in him under Section 64(1) of the Patents Act, prior
to the institution of an "infringement suit" against him, E
he would be disentitled in law from seeking the
revocation of the patent (on the basis whereof an
"infringement suit" has been filed against him) through
a "counter-claim". This denial of the remedy granted to
him by way of a "counter-claim" under Section 64(1) of
the Patents Act, is based on the principle of law narrated. F
Thirdly, where in response to an "infringement suit", the
defendant has already sought the revocation of a patent
(on the basis whereof the "infringement suit" has been
filed) through a "counter-claim", the defendant cannot
thereafter, in his capacity as "any person interested" G
assail the concerned patent, by way of a "revocation
petition". This denial of remedy granted to him by way
of a "revocation petition" under Section 64(1) of the
Patents Act, is also based on the same principle of
law.[Para 26] [129-C-H] H
102 SUPREME COURT REPORTS [2014) 9 S.C.R.
A 2.9. Rules of procedure are meant to ensure justice
to the concerned parties, based on their substantive
rights. It is therefore commonly said, that all rules of
procedure, are nothing but handmaids of justice. In a
matter as the one in hand, if the dispute has to be settled
B stricto sensu, according to the procedure envisaged by
law, the course to be adopted, has already been
delineated. The remedy which will have to be adopted by
the concerned parties, depending upon the date of
institution of proceedings under Section 25(2) of the
c 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
has been.resolved. Based on the factual position, it is
apparent, t.hat the appellant filed at least 19 "infringement
0
suits", and the respondents filed at least 23 "revocation
petitions''. The respondents also filed "counter-claims"
to the "patent infringement suits" filed by the appellant.
In the instant facts and circumstances, even though the
challenge to the same patent, has been limited to a
E 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
F be convenient fdr the parties concerned, to agree to
reso•ve the same, before a singular adjudicatory
authority. That will also be convenient for the concerned
adjudicatory authority. Accordingly, for convenience of
the parties concerned, it would be open for them by
G consent, to accept one of the remedies, out of the plural
remedies, which they would have to pursue in the
different cases, pending between them, to settle their
dispute .. Having consented to one of the available
remedies postulated under law, it would not be open to
H either of the consenting parties, to seek redressal from a
DR. ALOYS WOBBEN ii. YOGESH MEHRA 103
forum in addition to the consented forum. The consent A
order passed by the High Court being.on the subject of
procedure, and being before a forum which had. the
statutory jurisdiction to deal with the same is affirmed
and was fully justified in the facts and circumstances of
the instant case.. [Para 28] [134-F-H; 135-A-F] B
CIVIL APPELLATE JURrSDICTION : Civil Appeal No(s).
6718 of 2013.
From the Judgment and Order dated 20.01.2012 in FAQ
(OS) No. 7/2011 of the High. Court of Delhi at New Delhi. C
T. R. Andhiyarujina, Sudhir Chandra, Pravin Anand, Hari
Shankar K., Shrawan Chopra, T. Soukshmya, Aditya Verma,
Anshuman Upadhyay, S. Lakshmi, Vibhav Mitthal, Soumik
Ghosal for the Appellants. D
Soli J. Sorabjee, Sudarshan Singh Shekhwat, Ashim
Sood, M.P. Devanath, Mishra Saurabh for the Respondents.
1
The Judgment of the Court was delivered by
, E
JAGDISH SINGH KHEHAR, J. 1. W.e are. informed that
Dr. Aloys Wobben (appellant no.1, hereina'ftec referred to as,
'the appellant') is a scientist-engineer. It is also the-case of the
appellant, that he has to his credit se~eral inventions in the field
of wind turbine generators, and wind energy converters. The
F
appellant claimsJp be owner and holder of various intellectual
property rights, including approximately 2,700 patents (in more
than 60 countries). Out of the aforesaid patents, we are
informed, that the appellant has about 100 patents in India, The
appellant is also engaged in the manufacture of wind-turbines.
In the field of wind turbines, he claims a position amongst the G
three largest manufacturers in the world. The aforesaid ·
manufacturing process is carried out by the appellant under th.e.
name of Enercon GmbH. Wobben Properties GmbH, appellant
no.2, through an assignment agreement dated 05.01.2012, has
H
104 SUPREME COURT REPORTS [2014] 9 S.C.R.
A 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,
B 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 En.ercon India Limited
c (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
D (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 carrying
on its manufacturing process, in furtherance of licences granted
E by the appellant Dr. Aloys Wobben. According to the appellant,
the licences to use technical know-how, were vested by the
appellant with Enercon India Limited, through written
agreements. These agreements were executed between the
parties from time to time, and the last such agreement was
F executed on 29.9.2006. These agreements, according to the
appellant, were intellectual· property licence agreements. The
last agreement dated 29.9.2006, we are informed, superseded
all previous agreements (including the technical know-how
agreement of 1994, and the technical know-how agreement of
G 2000). It is also the case of the appellant, that the intellectual
. property licence agreement dated 29.9.2006, was terminated
by Enercon GmbH, on 8.12.2008. It is submitted, that non-
. fulfillment of the obligations contained in the intellectual property
licence agreement dated 29.9.2006, was the reason for such
H termination.
DR. ALOYS WOBBEN v. YOGESH MEHRA 105
[JAGDISH SINGH KHEHAR, J.]
3. According to the appellant, Dr. Aloys Wobben, despite A
the termination of all intellectual property licence agreements
with Enercon India Limited, respondent nos.1 to 3 herein,.
continued the use of the appellant's patents, and as such, the
intellectual property rights belonging to the appellant, without
due authority. This action by respondent nos. 1 to 3 has been B
of extreme detriment to the appellant, as his technical know-
how was being exploited by the respondents, without
consideration or authorisation. According to the factual position
depicted in the impugned order, passed by the High Court of
Delhi (hereinafter referred to as, the High Court), Enercon India c
Limited, had filed 19 "revocation petitions" before the Intellectual
Property Appellate Board (hereinafter referred to as the
"Appellate Board") under Section 64(1) of the Patents Act, 1970
(hereinafter referred to as the 'Patents Act'), in January 2009.
Through the aforesaid petitions, Enercon India Limited had D
sought revocation of the patents held in the name of the
appellant.
4. Dissatisfied with the action of Enercon India Limited, in
having approached the "Appellate Board", Dr. Aloys Wobben
filed·a number of "patent infringement suits". In these suits, he E
impleaded, inter alia, Yogesh Mehra, Ajay Mehra and Enercon
India Limited. We are informed that the first such suit (bearing
no. 1349 of 2009) was filed on 27.7.2009. Three other 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. F
176 of 2010) was instituted on 28.1.2010, the sixth suit (bearing
no. 1305 of 2010) was filed on 2.7.2010. The lastsuit (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 G
"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
H
106 SUPREME COURT REPORTS [2014] 9 S.C.R.
A to the contesting respondents, to raise as~ "counter-claim", a
prayer for the revocation of the patent, which constitut~d 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
B 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 2010, the "counter-
- claim" was filed on 30.4.2010. Likewise, "counter-claims" were
c filed in the other suits as well. ·
6. Enercon India Limited is stated to have also filed 4
further "revocation petitions" before the "Appellate Board", after
the appellant's institution of the "patent infringement suits"
(referred to above). These "revocation petitions" were filed by
D the respondents in 2010 and 2011. The preceding two
paragraphs, as well as the instant paragraph, depict the timing
of the filing of the "revocation petitions" (by the respondents),
the "infringement suits" (by the appellant) and the "counter-
claims" (by the respondents).
E
7. From the narration of the factual position recorded
above, it is apparent, that the contesting respondents filed 23
"revocation petitions" before the "Appellate Board", praying for
the revocation of the patents held in the name of the appellant.
F Exactly the same prayer has been made by the contesting
respondents, by way of the "counter-claims", filed in response
to the "patent infringement suits". It is not a matter of dispute,
that a number of "revocation petitions" filed by the respondents,
have been settled by the "Appellate Board", whereas, some are
G still pending consideration. Despite the above, the same issues
are being re-agitated by the respondents, before the High
/Court, through the "counter-claims".
8. The main contentions advanced by the learned counsel
for the appellants, emerge from Section 64 of the Patents Act.
H
DR. ALOYS WOBBEN v. YOGESH MEHRA 107
[JAGDISH SINGH KHEHAR, J.]
For a complete understanding of the said contentions, it is A
essential to extract Section 64 hereunder:
"Section 64 - Revocation of patents-(1) Subject to the
provisions contained in this Act, a patent, whether granted
before or after the commencement of this Act, may, be
B
revoked on a petition of any person interested or of the
Central Government by the Appellate Board or on a
counter-claim in a suit for infringement of the patent by the
High Court on any of the following grounds that is to say-
(a) that the invention, so far as claimed in any claim of C
the complete specification, was claimed in a valid
claim of earlier priority date contained in the
complete specification of another patent granted in
India;
D
(b) that the patent was granted on the application of a
person not entitled under the provisions of this Act
to apply therefor;
(c) that the patent was obtained wrongfully in
contravention of the rights of the petitioner or any E
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; F
(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 G
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 . H
108 SUPREME COURT REPORTS [2014] 9 S.C.R.
A 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;
8
(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
c Working of the invention as contained in the
complete specification are not by themselves
sufficient to enable a person in India possessing
av.erage skill in, and average knowledge of, the art
to which the invention relates, to work the invention,
D or that it does not disclose the best method of
performing it which was known to the applicant for
the patent and for which. he was entitled to claim
protection;
(i) that the scope of any claim of the complete
E specification is not sufficiently and clearly defined
or that any claim of the complete specification is
not fairly based on the matter disclosed in the
specification;
F 0) that the patent was obtained on a false suggestion
or representation;
(k) that the subject of any claim of the complete
specification is not patentable under this Act;
G (I) that the invention so.far as claimed in any claim of
the complete specification was secretly used in
India, otherwise than as mentioned in sub-section
(3), before the priority date of the claim;
H (m) that the applicant for the patent has failed to
DR. ALOYS WOBBEN v: YOGESH MEHRA 109
[JAGDISH SINGH KHEHAR, J.]
disclose to the Controller the information required A
by section 8 or has furnished information which in
any material particular was false to his knowledge;
(n) that the applicant contravened any direction for
secrecy passed under section 35 or made or B
caused to be made an application for the grant of
a patent outside India in contravention of section
39;
(o) that leave to amend the complete specification
under section 57 or section 58 was obtained by c
fraud;
(p) that the complete specification does not disclose
or wrongly mentions the source or geographical
origin of biological material used for the invention; D
(q) that the invention so far as claimed in any claim of
the complete specification was anticipated having
regard to the knowledge, oral or otherwise,
available within any local or indigenous community
in India or elsewhere. E
(2) For the purposes of clauses (e) and (f) of sub-section
"(1) -
(a) no account.shall be taken of personal document or
F
secret trial or secret use; and
(b) where the patent is for a process or for a product
as made by a process described or claimed, the
importation into India of the product made abroad
by that process shall constitute knowledge or use G
in India of the invention on the date of the
importation, except where such importation has
been for the purpose of reasonable trial or
experiment only.
H
110 SUPREME COURT REPORTS [2014] 9 S.C.R.
A (3) For the purpose of clause (1) of sub-section (1) no
account shall be taken of any use of the invention-
(a) for the purpose of reasonable trial or experiment
only; or
B (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 wh<;>m he derives title having
communicated or disclosed the invention directly or
c indirectly to the Government or person authorised
as aforesaid or to the Government undertaking; or
1
(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-
E 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
F purposes of Governme.nt within the meaning of section 99
upon reasonable terms.
(5) A notice of any petition for revocation of a patent under
this section shall be served on all persons appearing from
the register to be proprietors of that patent or to have
G
shares or interests therein and it shall not be necessary
to serve a notice on any other person."
9. Having extracted the relevant provision dealing with the
revocation of a patent, relied upon by the learned counsel from
H the Patents Act, we shall endeavour to deal with the
DR. ALOYS WOBBEN v. YOGESH MEHRA 111
[JAGDISH SINGH KHEHAR, J.]
submissions advanced at the hands of the learned cou_nsel for A
the appellants. In our considered view, even.though some of
the submissions were differently worded, they were prerriised
. on exactly the same legal conten\ions, namely, that the
defendant in an "infringement suit", having raised a "counter-
claim" seeking revocation of a patent, the validity of such a B
challenge can be determined only at the hands of the High
Court, i.e., while dealing with the "counter-claim". And that, the
"Appellate Board" would thereafter (after the filing of the
"counter-claim" in the "infringement suit"), cease to ha\ ) the
jurisdiction to adjudicate upon the validity of the patent. The C
different submissions advanced at the hands of the learned
counsel for the appellants, on the instant aspect of the matter,
are being summarized hereunder:
. Firstly, it was submitted, that where a "counter-claim" is
instituted in response to a suit for infringement of a patent in D
the High Court, there can be no further proceeding in the
"revocation petition" filed before the "Appellate Board". In this
behalf it was further contended, that it woulcj make no
difference, whether such proceedings had been instituted prior
to, or after the filing of the suit for infringement. E
'•
Secondly, it was contended, that the jurisdiction of a High
Court to decide a "counter-claim" for revocation, was exclusive,
and c:;ould not be taken away, by initiating proceedings
simultaneously, before the "Appellate Board". In this behalf it F
was sought to be explained, 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 subordinate forum (the "Appellate Board"),
for the simple reason, that the inferior forum would have to G
make way for the superior forum.
Thirdly, it was submitted, that the jurisdiction vested with
the High Court, to decide a "counter-claim" seeking revocation
of a patent in a suit for infringement, could not be taken away
by an independent petition for revocation, of the same patent, H
112 SUPREME COURT REPORTS [2014] 9 S.C.R.
A 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
B 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.
c Fourthl1, 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
D "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
E advanced at the hands of the learned counsel for the appellants,
it is important to first analyze the options available for revocation
of a patent under Section 64(1). In our considered view,
Section 64(1) vests the liberty to raise a challenge to a. patent
in three different circumstances. Firstly, on a petition by "any
F person interested". Secondly, on a petition of the Central
Government. In case of the above two options, the petition for
revocation would lie before the "Appeltate Board". Thirdly, by
way of a "counter-claim" in a suit for infringement of a patent.
The third option is adjudicable only by the jurisdictional High
G Court. In view of the mandate contained in the provisions of the
Patents Act, the locus standi for revocation of a patent, is
available to three different entities, namely, "any perron
interested", "the Central Government", and to a defendant in an
"infringement suit" by way of a "counter-claim". Depending on
H the specific part of the provision relied on, such challenge is
DR. ALOYS WOBBEN v. YOGESH MEHRA 113
[JAGDISH SINGH KHEHAR, J.]
permissible before two different fora, i.e., the "Appellate Board", A
or the jurisdictional High Court. Our above determination
emerges from a reading of Sections 64(1) and 104 of the
Patents Act.
11. A perusal of Section 64(1) of the Patents Act reveals, B
that more or less, generally speaking, revocation of a patent
can be sought; if the patent was granted, despite there being
a valid and genuine claim, of earlier priority (sub-section (1 )(a)
of Section 64); or if the patent was granted to a person not
entitled to the same (sub-section (1 )(b) of Section 64); or if the C
patent was granted, wrongfully overlooking the rights of another
(sub-section (1 )(c) of Section 64); or if the patent was granted
in respect of a matter, which is not an invention (sub-section
(1)(d) of Section 64); or if the patent was granted in respect of
a matter, which was not new (sub-section (1)(e) of Section 64);
or if the patent was granted in respect of a matter, which is
0
obvious, or does not involve any inventive step (sub-section
(1 )(f) of Section 64); or if the patent was granted in respect of
a matter, which is not useful (sub-section (1 )(g) of Section 64);
or if the patent is granted in respect of a matter, which does
not fully explain the description, or the working of the invention, E
to a person having a nexus to the subject to which the invention
relates (sub-section (1)(h) of Section 64); or if the patent was
granted in respect of a matter, which 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/ F
portrayal of the matter (sub-section 1G) 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 G
being used in India (sub-section (1 )(I) of Section 64); or if the
patent was granted, despite the failure to disclos.e 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 H
114 SUPREME COURT REPORTS (2014] 9 S.C.R.
A 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 -
B (1)(o) of Section 64); or if the details of the invention, do not
disclose {-Or wrongly disclose), the source or the origin of the
biological material used therein (sub-section (1)(p) of Section
64); or if the details of the invention, were available within any
local or indigenous community in India or elsewhere (sub-
C section (1 )(q) of Section 64).
12. We shall now briefly notice, the remedies available to
a person interested for raising a challenge to a patent granted
to an individual or an entity, under the Patents Act, other than
under Section 64. It is critical, in the facts and circumstances
D of this case, to interpret Section 64 of the Patents Act, in
conjunction with the other provisions of the Patents Act,
whereunder, the grant of a patent can also be assailed. In this
behalf, first and the foremost, reference needs to be made to
Section 25 of the Patents Act. Section 25 is being extracted
E herein:
"25. Opposition to the patent- (1) Where an application
for a patent has been published but a patent has not been
granted, any person may, in writing, represent by way of
F opposition to the Controller against the grant of patent on
' the ground-
, (a) thatthe applicant for the patent or the person under or
through whom he claims, wrongfully obtained the invention
or any part thereof from him or from a person under or
G through whom he claims;
(b) that the invention so far as claimed in any claim of the
complete specification has been published before the
priority date of the claim-
H
DR. ALOYS WOBBEN v. YOGESH MEHRA 115
[JAGDISH SINGH KHEHAR, J.]
(i) in any specification filed in pursuance of an A
application for a patent made in India on or
after the 1st day of January, 1912; or
(ii) in India or elsewhere, in any other document:
Provided that the ground specified in sub- B
clause (ii) shall not be available where such
publication does not constitute an
anticipation of the invention by virtue of sub-
section (2) or sub-section (3) of section 29;
c
(c) that the invention so far as claimed in any claim of the
complete specification is claimed in a claim of a complete
specification published on or after the priority date of the
applicant's claim and filed in pursuance of an application
for a patent in India, being a claim of which the priority date 0
is earlier than that of the applicant's claim;
(d) that the invention so far as claimed in any claim of the
complete specification was publicly known or publicly used
in India before the priority date of that claim.
E
Explanation - For the purposes of this clause, an invention
relating to a 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 F
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 G
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 H
116 SUPREME COURT REPORTS [2014] 9 S.C.R.
A 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;
B
(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; ·
c
(i) that in the case of a convention application, the
application was not made within twelve months from the
date of the first application for protection for the invention
made in a convention country by the applicant or a person
D from whom he derives title;
U) that the complete specification does not disclose or
wrongly mentions the source or geographical origin of
. biological material used for the invention;
E (k) that the invention so far as claimed in any claim of the
complete specification is anticipated having regard to the
knowledge, oral or otherwise, available within any local or
indigenous community in India or elsewhere, but on no
other ground,
F
and the Controller shall, if requested by such person for
being .heard, hear him and dispose of such representation
. in such manner and within such period as may be
prescribed.
G (2) At any time after the grant of patent but before the
expiry of a period of one year from the date of publication
of grant of a patent, any person interested may give notice
of opposition to the Controller in the prescribed manner
on any of the following grounds, namely:-
H
DR. ALOYS WOBBEN v. YOGESH MEHRA 117
[JAGDISH SINGH KHEHAR, J.]
(a) that the patentee or the person under or through whom A
he claims, wrongfully obtained the invention or any part
thereof from him or from a person under or through whom
he claims;
(b) that the invention so far as claimed· in any claim of the B
complete specification has been published before the
priority date of the claim-
(i) in any specification filed in pursuance of an
application for a patent made in India on or after
the 1st day of January, 1912; or c
(ii) in India or elsewhere, in any other document:
Provided that the ground specified in sub-clause (ii)
shall not be available where such publication does
0
not constitute an anticipation of the invention by
virtue of sub-section (2) or sub-section (3) of section
29;
(c) that the invention so far as claimed in any claim of the
- complete specification is claimed in a claim of a complete E
specification published on or after the priority date of the
claim of the patentee and filed in pursuance of an
application for a pate~ in India, being a claim of which the
priority date is earlier than that of the claim of the patentee;
F
· (d) that the invention so far as claimed in any claim of the
complete specification was publicly known or publicly used
in India before the priority date of.that claim.
Explanation.- For the purposes oflhis clause, an invention
relating to a process for which a patent is claimed shall G
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; H
118 SUPREME COURT REPORTS [2014] 9 S.C.R.
A (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 prioi'ity date of the
B 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;
c (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
D 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 application for patent was not made within
E twelve months from the date of the first application for
.protection for the invention made in a convention country
or in India by the patentee or a person from whom he
derives title;
F m that the complete specification aoes not disclose or
wrongly mentions the source and geographical origin of
biological material used for the invention;
(k) that the invention so far as claimed in any claim of the
complete specification was anticipated having regard to
G the knowledge, oral or otherwise, available within any local
or indigenous community in India orelsewhere,
but on no oth~:ir ground.
H (3) (a) Where any such notice of opposition is duly given
DR. ALOYS WOBBEN v. YOGESH MEHRA 119
[JAGDISH SINGH KHEHAR, J.]
under sub-section (2), the Controller shall notify the A
patentee.
(b) On receipt of such notice of opposition, the Controller
shall, by order in writing, constitute a Board to be known
as the Opposition Board consisting of such officers as he B
may determine and refer such notice of opposition along
with the documents to that Board for examination and
submission of its recommendations to the Controller.
(c) Every Opposition Board constituted under clause (b)
shall conduct the examination in accordance with such C
procedure as may be prescribed.
(4) On receipt of the recommendation of the Opposition
Board and after giving the patentee and the opponent an
opportunity of being heard, the Controller shall order either
0
to maintain or to amend or to revoke the patent.
(5) While passing an order under sub-section (4) in respect
of the ground mentioned in clause (d) or clause {e) of sub-
section (2), the Controllershall not take into account any
personal document or secrettrial or secret use. ' E
(6) In case the Controller issues an order under sub-section
(4) that the patent shall be maintained subject to
amendment of the specification or any other document, the
patent shall stand amended accordingly."
F
13. A perusal of Section 25 of the Patents Act reveals, that
"any person", and not just a "person interested" (as in the case
of Section 64 of the Patents Act), can "represent by way of
opposition" against an application filed for the grant of a patent.
This opportunity, has been made available, even before a G
patent has bee~ granted. This opposition to the grant of a patent
materializes, after an application for the grant of a patent has
been published. More or less, generally speaking, the grant of
a patent can be opposed, if the applicant for the pa~ent, had
wrongfully obtained the invention, from the representationist, H
120 SUPREME COURT REPORTS [2014] 9 S.C.R.
A 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
B 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 m~tter, which is obvious and does not involve any
c 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
0 it is to be performed (sub-section. (1)(g) of Section 25); or if
the applicant for a patent, has failed to disclose information,
about his prosecuting an application for the grant of a patent,
in a foreign country (sub-section (1 )(h) of Section 25); or if the
application for a patent, is in the nature of a convention
E application, and the application was made after more than one
year, after the first application was made in a convention
country (sub-section (1 )(i) of Section 25); or if the application
for a patent does not disclose (or wrongly discloses), the source
or the origin of the biological material used therein (sub-section
(1 )0) of Section 25); or if the application for an invention, is in
F respect of a matter which can be anticipated, having regard to
the knowledge available within any local or indigenous
community, in India or elsewhere (sub-section (1)(k) of Section
25). /
G 14. A perusal of Section 25(2) reveals that only a "person
interested" and not "any person" (as in the case of Section 25(1)
of the Patents Act) may challenge the grant of a patent, within
one year of the publication of such grant, by issuing a "notice
of opposition" to the "Controlle( The above provision also
H reveals, more or less, generally speaking, such "notice of
DR. ALOYS WOBBEN v. YOGESH MEHRA 121
[JAGDISH SINGH KHEHAR, J.]
opposition" to the "Controller" can be made on the grounds A
depicted in sub-sections (1 )(a), (b), (c), (d), (e), (f), (h), (m), and
(o) of Section 64 of the Patents Act. The remaining grounds
for raising a challenge under Section 25(2), coincide with those
contained in Section 25(1) of the Patents Act.
B
15. A challenge to the grant of a patent, through a "notice
of opposition" is available, on all the grounds of challenge
permitted to oppose, an application for the grant of a patent
under sub-section (1) of Section 25. There is however a
substantial difference in the locus, for raising such a challenge, C
after the patent has been granted. Whereas "any person" can
1
1 "represent by way of opposition", to an application for the grant
of a patent (under Section 25(1) ofthe Patents Act), only a
"person interested" can challenge the grant of a patent by
issuing a "notice of opposition" (under Section 25(2) of the
Patents Act). On the subject of locus, therefore, Section 25(2) D
and Section 64(1), are alike, inasmuch as, the locus to raise a
challenge to a patent granted, lies with "any person interested"
in both of these provisions. A challenge to the grant of a 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" E
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 F
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" G
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
H
122 SUPREME COURT REPORTS [2014) 9 S.C.R.
A 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".
B If in response to an "infringement suit", the defendant files a
"counter-claim" seeking the revocation of the concerned patent,
the said process of adjudication would lie before the
jurisdictional High Court (see, the proviso to Sections 64(1) and
104 of the Patents Act).
c 17. Having heard learned counsel, and having examined
the different provisions of the Patents Act, relating to revocation
of patents, we shall now endeavour to examine the controversy
in hand. In our considered view, Section 64 of the Patents Act
needs a close examination. Section 64 aforementioned, is
D prefaced by the words "Subject to the provisions contained in
this Act, ..... ". And not by the words, "Without preiudice to the
provisions contained in this Act. .... ", or "Notwithstanding-the
provisions contained in this Act...". The words with which the
legislature h~s prefaced Section 64, necessarily lead to the
E inference, that the provisions contained in Section 64 are
subservient to all the other provisions contained in the Patents
Act. This exordium to Section 64 of the Patents Act mandates,
that the directive contained in Section 64, would be subservient
and def!'lrential, to the other provisions of the Patents Act.
F Stated simply, if there is any provision under the Patents Act,
which is. in conflict with the mandate contained in Section 64,
Section 64 of the Patents Act would stand eclipsed, and the
other provision(s), would govern the field under reference.
Therefore, no interpretation can be placed on Section 64 of the
G Patents Act, which will be in conflict with, any other provision(s}
of the Patents Act.
18. If any proceedings have been initiated by "any person
interested", under Section 25(2) of the Patents Act, the same
will eclipse the right of the same person to file a "revocation
H
DR. ALOYS WOBBEN v. YOGESH MEHRA 123
_, [JAGDISH SINGH KHE_HAR, J.]
petition" under Section 64(1) of the Patents Act. And also, to A
invoke the right grar:ited 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). This, in our view, would be
the natural effect of the words, "Subject to the provisions
contained in this Act. .... ", appearing at the beginning of Section B
64(1) of the Patents Act. And if, the above meaning is not to
be assigned to the words "Subject to the provisions of this
Act. .... ", they would be redundant and superfluous. It is however
not necessary to pay a serious thought to the situation referred
to above. The above situation, in our considered view, is unlikely c
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 0
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 E
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 F
alone, be stated to have crystallized. Likewise, if no notice of
opposition is preferred, within one year of the date of publication
of the grant of a patent, the grant would be deemed to have
crystallized. Thus, only the culmination of procedure
contemplated under Section 25(2) of the Patents Act, bestows G
the final approval to the patent. Therefore, it is unlikely and quite
impossible, that an "infringement suit" would be filed, while the
proceedings under Section 25(2) are pending, or within a year
of the date of publication of the grant of a patent.
H
124 SUPREME COURT REPORTS [2014] 9 S.C.R.
A 19. The defendant party to a suit for infringement, who
seeks to repudiate the charge of infringement, is allowed to
raise a "counter-claim", so as to enable him to raise a
challenge, to the validity of the patent assigned to the author of
the suit (under Section 64 of the Patents Act). This is so,
B because a "counter-claim" can be filed only by such person,
against whom a suit for infringement has been filed (by the
patent-holder). The grounds of such challenge have already
been enumerated above.
20. A corrective mechanism is also available to "any
C person interested", to assail the grant of a patent under Section
64(1) of the Patents Act. This is in addition, to a similar remedy
provided to "any person interested", under Section 25(2) of the
Patents Act. In the above scenario, it is necessary to first
appreciate the true purport of the words "any person
D interested". The term "person interested" has been defined in
Section 2(1 )(t) of the Patents Act. Unless the context otherwise
requires, in terms of Section 2(1 )(t) aforementioned, a "person
interested" would be one who is ... "engaged in, or in promoting,
research in the same field as that to which the invention relates".
E Simply stated, a "person interested" would include a person
who has a direct, present and tangible interest with a patent,
and the grant of the patent, adversely affects his above rights.
A "person interested" would include any individual who desires
to make independent use of either the invention itself (which
F has been patented), or desires to exploit the process (which
has been patented) in his individual production activity.
Therefore, the term "any person interested" is not static. The
same person, may not be a "person interested" when the grant
of the concerned patent was published, and yet on account of
G his activities at a later point in time, he may assume such a
character qr disposition. It is, therefore, that Section 64 of the
Patents Act additionally 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
H above.
DR. ALOYS WOBBEN v. YOGESH MEHRA 125
[JAGDISH SINGH KHEHAR, J.]
21. Based on the two remedies contemplated under A
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 B
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 c
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 0
appellants, that in the present case the respondents, by
assuming the position and posture of "any person interested",
have filed "revocation petition(s)" to assail the same patent,
which have at the same time been assailed by filing "counter-
claims". The above "counter-claims" have been filed in response
E
to the "infringement suit(s)", preferred by the appellant. It is the
submission of the learned counsel for the appellants, that the
respondents must choose only one, of the above remedies. The
course of action adopted by the respondents, according to the
learned counsel for the appellants, could lead to one finding in
the "revocation petition", and a different finding in the "counter- F
claim".
22. We do not have the slightest hesitation in ·accepting
the above contention (fifth in the series of contentions), that even
though more than one remedies are available to the G
respondents in Section 64 of the Patents Act, the word "o(
used therein separating the different remedies provided
therein, would disentitle them, to avail of both the remedies, for
the same purpose, simultaneously. On principle also, this would
be the correct legal position. H
126 SUPREME COURT REPORTS [2014] 9 S.C.R.
A 23. Keeping in view the submissions advanced at the
hands of the learned counsel for the appellants (as have been
noticed in the foregoing paragraphs), the question which arises
for determination is, that having chosen both the above
remedies, which one of the two, should the respondents, be
B permitted to pursue. The answer to the above query, will, if
possible, have to be determined from the provisions of the
Patents Act itself. In this. behalf we may at the outset record,
that learned counsel for the rival parties, did not invite our
attention to any provision from the Patents Act, which would
c provide a clear pointer, to the course to be adopted. Whilst it
was undoubtedly submitted, on the one hand, that the choice
should fall in favour of the superior forum. Details about the
locus, in respect of other challenges have been narrated in
paragraph 16 hereinabove. We may in the passing record, that
the determination of the "counter-claim" would be with the
0
superior forum, i.e., the jurisdictional High Court.(Sections 64(1)
and 104 of the Patents Act). The above submission was sought
to be countered, on the other hand, by pointing out, that the
opportunities provided by the legislature to assail the order(s)
passed under the Patents Act, could not be reduced. In this
E behalf, 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
F 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.
G
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
H suit filed by the plaintiff, and has the same effect as a cross-
DR. ALOYS WOBBEN v. YOGESH MEHRA 127
[JAGDISH SINGH KHEHAR, J.]
suit. Therefore, for all intents and purposes a "counter-claim" A
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". Since a "counter-
claim" is of the nature of an independent suit, a "counter-claim" B
cannot be allowed to proceed, where the defendant has already
instituted a suit against the plaintiff, on the same cause of
action. The above conclusion is drawn on the basis of the
accepted principle of law crystallized in Section 10 of the Code
of Civil Procedure, 1908 (hereina"fter referred to as, the CPC) c
read with Section 151 of the CPC. Both the above provisions
are being extracted hereunder:-
"10. Stay of suit.- No Court shall proceed with the trial
of any suit in which the matter in issue is also
directly and substantially in issue in a previously D
instituted suit between the same parties, or
between parties under whom they or any of them
claim litigating under the same title where such suit
is pending in the same or any other Court in India
having jurisdiction to grant the relief claimed, or in E
any Court beyond the limits of India established or
continued by the Central Government and having
like jurisdiction, or before the Supreme .Court.
Explanation- The pendency of a suit in a foreign F
Court does not preclude the Courts in India from
trying a suit founded on the same cause of action.
151. Saving of inherent powers of Court.- Nothing in this
Code shall be deemed to limit or otherwise affect
the inherent power of the Court to make such orders G
as may be necessary for the ends of justice or to
prevent abuse of the process of the Court."
Therefore, where an issue is already pending adjudication
between the same parties, in a Court having jurisdiction to H
128 SUPREME COURT REPORTS [2014] 9 S.C.R.
A adjudicate upon the same, a subsequently instituted suit on the
same issue between the same parties, cannot be allowed to
proceed. A similar question arises for consideration before this
Court, in the present controversy. If the respondents in their
capacity as "any person interested", had filed a "revocation
B petition" before the institution of an "infringement suit", they
cannotbe permitted to file a "counter-claim" on the same cause
of action. The natural conclusion in the above situation would
be, the validity of the grant of the patent would have to be
determined in the "revocation petition". Therefore, in the above
c situation, while the "revocation petition" will have to be
permitted to be pursued, the "counter-claim" cannot be
permitted to be continued. Therefore, in the above eventuality,
it is apparent that the 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
0
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
E by the appellant herein (as plaintiff ii) 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
F emerging from Section 64(1) of the Patents Act. Having once
med 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
G 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 for revocation of the patent shall
be adjudicated, while disposing of the "counter-claim" filed by
H the respondents. Therefore, in the above situation, while the
DR. ALOYS WOBBEN v. YOGESH MEHRA 129
[JAGDISH SINGH KHEHAR, J.]
"counter-claim" will have to be permitted to be pursued, the A
"revocation petition" canno! be permitted to be continued.
26. Having examined the four contentions advanced at the
hands of the learned counsel' for the appellants (delineated in
paragraph 9 of the instant judgment) and the fifth contention B
(noticed in paragraph 21 of our instant determination), we are
of the view that the following conclusions emerge therefrom:
Firstly, if "any person interested" has filed proceedings
under Section 25(2) of the Patents Act, the same would eclipse
all similar rights available to the very same person under Section C
64(1) of the Patents Act. This would include the right to file a
"revocation petition" in the capacity of "any person interested"
(under Section 64(1) of the Patents Act}, as also, the right to
seek the revocation of a patent in the capacity of a defendant
through a "counter-claim" (also under Section 64(1) of the D
Patents Act).
Secondly, if a "revocation petition" is filed by "any person
interested" in exercise of the liberty vested in him under Section
64(1) of the Patents· Act, prior to the institution of an E
"infringement suit" against him, he would be disentitled in law
from seeking the revocation of the patent (on the basis whereof
an "infringement suit" has been filed against him) through a
"counter-claim". This denial of the remedy granted to him by way
of a "counter-claim" under Section 64(1) of the Patents Act, is
F
based on the principle of law narrated in paragraph 24 above.
Thirdly, where in response to an "infringement suit", the
defendant has already sought the revocation of a patent (on the
basis whereof the "infringement suit" has been filed) through a
"counter-claim", the defendant cannot thereafter, in his capacity G
as "any person interested" assail the concerned patent, by way
of a "revocation petition". This denial of remedy granted to him
by way of a "revocation petition" under Section 64(1) of the
Patents Act, is also based on the same principle of law
expressed in paragraph 24 above. H
130 SUPREME COURT REPORTS [2014] 9 S.C.R.
A 27. The sixth contention advanced at the hands of the
learned c;:ounsel for the appellants was, that insofar as the
present controversy is concerned, the same was liable to be
governed by the consent order, which was passed by the High
Court on 1.9.2010, wherein the respondents (as defendants)
B 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
c 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 I
D 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
E 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.,
F 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.
G
(O.S.) 1963 of 2009;
(e) Aloys Wobben v. Savita Oil Technologies Limited
& Ors., C.S. (O.S.) 1333 of 2010;
H (f) Aloys Wobben v. KS Oils Limited & Ors., C.S.
DR. ALOYS WOBBEN v. YOGESH MEHRA 131
[JAGDISH SINGH KHEHAR, J.]
(O.S.) 1335 of 2010; A
(g) Aloys Wobben v. Amtech (India) Electronics Ltd.
& Ors., C.S. (O.S.) 176 of 2010;
(h) Aloys Wobben v. Vayu (India) Power Corporation
Limited, C.S. (O.S.) 1501 of 2010. B
2. The plaintiffs' interim injunction applications in the above
suits are not prepared at present; the parties are agreeable that
all the suits should be tried expeditiously. The plaintiffs therefore
submit that the following interim injunction applications under c
Order XXXIX Rules 1 and 2 of the Code of Civil Procedure
(CPC) be disposed off, with liberty to move the Court for such
relief, if necessary.
(a) I.A. no. 9431 of 2009 in C.S. (O.S.) no. 1349 of
2009
0
(b) I.A. no. 13460 of 2009 in C.S. (O.S.) no. 1967 of
2009
(C) I.A. no. 13463 of 2009 in C.S. (O.S.) no. 1968 of E
2009
(d) I.A. no. 13448 of 2009 in C.s. (O.S.) no. 1963 of
2009
{e) I.A. no. 8368 of 2010 in C.S. (O.S.) no. 1333 of F
2010
(f) I.A. no. 8467 of 2010 in C.S. (O.S.) no. 1335 of
2010
(g) I.A. no. 9753 of 2010 in C.S. (O.S.) no. 1501 of G
2010
3. The applications filed by the parties for contempt of
orders of this Hon'ble Court are also not being pressed at
H
132 SUPREME COURT REPORTS [2014] 9 S.C.R.
A present. The parties pray that the following applications be
disposed of:
(a) C.C.P. no. 11 of 2010 under Section 11 of the
Contempt of Courts Act arising out of C.S. (O.S.)
1349 of 2009.
B
(b) I.A. no. 4096 of 2010 (filed under Order 39 Rule 2A
of the-Code of Civil Procedure) in C.S. (O.S.) 1968
of 2010.
c The parties further state that the issues that arise in the
above applications be treated as issues in the main suit.
4. The parties agree that the foUpwing schedule is to be
followed for expedited trial iJl-{lfe above suits:
D (a) Completion of pleadin~n all 8 suits including the
corresponding to counter ylaims within 8 weeks i.e.,
on or before 25th October, 2010 (all replies to be
filed within 3 weeks, i.e,,20th September, 2010 and
all rejoinders to befile<j within five weeks thereafter
E i.e. 25th October, 2o10).
(b) Additional documents, if any; n~cessary for the
adjudication of the present suit will be filed within
four weeks thereaf,,ter i.e., on or before 25th
November, 2010.
F
(c) Admission/denial of documents by way qf affidavit
be filed within two weeks thereafter aftenthe filing
of additional documents, i.e., on or before 9th
December, 201 o.
G
(d) Common issues shall be framed in ihe above
mentioned suits within the, two weeks thereafter, i.e.
by 24th December, 2010.
(e) List of Witnesses and affidavits by way of evidence
H
DR. ALOYS WOBBEN v. YOGESH MEHRA 133
[JAGDISH SINGH KHEHAR, J.]
of such witnesses will be filed six weeks thereafter A
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, B
1908 for recording oral evidence.
(g) Cross examination of the plaintiffs witnesses will
be conducted in a period of eight weeks i.e. by 1st
April, 2011.
c
(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
D
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.
0) The suits shall be listed for final arguments before
the Court, after the completion of the above E
procedure.
5. The parties agree that the schedule as mutually_ set
above will be complied with to enable expedited trial in the
above suits.
F
6. This C.ourt directs that the parties shall follow the
procedure indicated in para 5 above and adhere to the
schedule outlined therein. The Court also directs disposal'
of the applications mentioned in paras 2 and 3 above, w_ith
appropriate liberty, mentioned in para 2. G
7. List all the suits for directions on 16th November, 2010
and again on 24th December, 2010."
It was also the submission of the learned counsel for the
H
134 SUPREME COURT REPORTS [2014] 9 S.C.R.
A appellants, that the above consent order was given effect to,
inasmuch as, the High Court had framed issues in the
"infringement suits" and "counter-claims", on 20.9.2011. It was
submitted, that even after the above consent order dated
1.9.2010 was passed by the High Court, the respondents had
B continued to pursue their "revocation petitions" before the
"Appellate Board". Consequent upon the aforesaid course
having been adopted by the respondents, it was submitted, that
orders of revocation had been passed in respect of six patents
granted to the appellant. It was submitted, that all the above
c patents were also subject to consideration in "counter-claims",
pending before the High Court. It was also t.Qe contention of the
learned counsel for the appellants, that the course adopted by
the respondents amounted to misuse of the judicial process. It
was accordingly submitted, that lhe above course adopted by
the respondents being wrong and illegal, should not be
0
permitted. In this behalf, it was also the contention of the learned
counsel for the appellants, that pursuing multifarious
proceedings, in respect of the same cause of action, between
the same parties, was impermissible in law.
E 28. We have given our thoughtful consideration to the sixth
contention advanced on behalf of the learned counsel for the
appellants. It is now well settled, that rules of procedure are
meant to ensure justice to the concerned parties, based on their
substantive rights. It is therefore commonly said, that all rules
F of procedure, are nothing but handmaids of justice. In a matter
as the one in hand, if the dispute has to be settled stricto sensu,
according to the procedure envisaged by law, the course to be
adopted, has already been delineated by us above. We have
resolved in our conclusions recorded hereinabove, the remedy
G which will have to be adopted by the concerned parties,
depending upon the date of institution of proceedings under
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
H suit", under Chapter XVIII of the Patents Act. Based on the
DR. ALOYS WOBBEN v. YOGESH MEHRA 135
[JAGDISH SINGH KHEHAR, J.]
factual position noticed at the beginning of the instant order, it A
is apparent, that the appellant has filed at least 19 "infringement
suits", anc:I 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 B
the same patent, by our above determination, has been limited·
to a specific singular challenge, as against multiple challenges
as at present, yetthe 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 c
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. Accordingly, for
convenience of the parties concerned, it would be open for them 0
by consent, to accept one of the remedies, out of the plural
remedies, which they would have to pursue in the different
cases, pending between them, to settle their dispute. Having
consented to one of the available remedies postulated under
law, it would not be open to either of the consenting parties, to
E
seek redressal from a forum in addition to the consented forum.
We, therefore hereby affirm, that the consent order passed by
th~ High Court on 1.9.2010, being on the subject of procedure,
and being before a forum which had the statutory jurisdiction
to deal with the same, W?S fully justified in the facts and
circumstances of the present case. F
29. The next and the last contention advanced at the hands
of the learned counsel for the appeltants, was based on
Section 124 of the Trade Marks Act, 1999 (hereinafter referred
to as, 'the Trade Marks Act'). Section 124 aforementioned is G
being extracted hereunder:-·
"124. Stay of proceedings where the validity of registration
of the trade mark is questioned, etc.-
(1) Where in any suit for infringement of a trade mark- H
136 SUPREME COURT REPORTS [2014] 9 S.C.R.
A (a) the defendant pleads that registration of the plaintiffs
trade mar.k is invalid; or
{b) the defendant raises a defence under clause (e) of sub-
section (2) of section 30 and the plaintiff pleads the
invalidity of registration of the defendant's trade mark,
B
the court trying the suit (hereinafter referred to as the court),
shall,-
(i) if any proceedings for rectification of the register in
c relation to the plaintiffs or defendant's trade mark
are pending before the Registrar or the Appellate
Board, stay the suit pending the final disposal of
such proceedings;
(ii) if no such proceedings are pending and the court
D is satisfied that the plea regarding the invalidity of
the registration of the plaintiffs or defendant's trade
mark is prima facie tenable, raise an issue
regarding the same and adjourn the case for a
period of three months from the date of the framing
E of the issue in order to enable the party concerned
to apply to the Appellate Board for rectification of
the register.
(2) If the party concerned proves to the court that he has
F made any such application as is referred to in clause (b)
(ii) of sub-section (1) within the time specified therein or
within such extended time as the court may for sufficient
cause allow, the trial of the suit shall stand stayed until the
final disposal of the rectification proceedings.
G (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
H the suit in regard to the other issues fn the case.
DR. ALOYS WOBBEN v. YOGESH MEHRA 137
[JAGDISH SINGH KHEHAR, J.]
(4) The final order made in any rectification proceedings A
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.
B
(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 C
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 present controversy, has been dealt with by the
legislature under the Trade Marks Act, inasmuch as, Section D
124 gives power to the concerned court to stay the proceedings
in a suit for infringement of a trade mark, pending final disposal
of proceedings, for rectification of the trade mark, initiated by
the defendants before the "Appellate Board". It was accordingly
the contention of the learned counsel for the appellants, that E
even though a similar situation, as the one catered to under the
Trade Marks Act, could arise out of a disputed grant of a patent
under the Patents Act, no sud\ protective measure has been
provided for by the legislature under the Patents Act.
30. It is necessary to keep in mind, that the instant F
submission was advanced at the hands of the learned counsel
for the reason, that the appellants did not desire two
proceedings, on the subject of revocation of the same patent,
to be continued simultaneously before different fora. In our
discussion recorded while dealing with the submission G
advanced by the learned counsel for the appellants, we have
accepted the contention advanced at the hands of the learned
counsel for the appellants, that only one out of two
remedies
available under Section 64 of the Patents Act, can be availed
of, so as to assail the grant of a patent. Accordingly thE! said H
138 SUPREME COURT REPORTS [2014]9 S.C.R.
A remedy may be availed of in the capacity of either "any person
interested'', or in the capacity of a defendant in a "counter-
claim". We have already concluded hereinabove, that having
availed of any one of the above remedies, it is not open to the
same person to assail the grant of a patent by choosing the
B second alternative available to him. In view of our above
conclusion, the instant submission advanced by the learned
counsel for the appellants does not survive for consideration.
31. The impugned order is therefore set aside, in the terms
C recorded hereinabove. The appeal is disposed of in the above
terms.
Nidhi Jain Appeal disposed of.
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