# 9 S.C.R. 94 DR. ALOYS WOBBEN & ANR v. YOGESH MEHRA & ORS

- **Citation:** [2014] 9 S.C.R. 94
- **Court:** Supreme Court of India
- **Decided:** 2014-06-02
- **Case number:** Civil Appeal No. 671.8 of 2013
- **Bench:** A.K. Patnaik, Jagdish Singh Khehar
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/9-s-c-r-94-dr-aloys-wobben-anr-v-yogesh-mehra-ors-30234
- **Pages:** 45

## Headnote

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 counterclaim 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 1 a joint
venture partnership with respondents. nos. 1 and 2.
Respondent no. 3-EIL is an Indian enterprise carrying on
E
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
know-how, were vested by the appellant with respondent
no. 3-'EIL' through intellectual property licence
agreements. The appellant terminated the last agreement
F
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

## Text

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A
B
[2014) 9 S.C.R. 94
DR. ALOYS WOBBEN & ANR.
v.
YOGESH MEHRA & ORS.
(Civil Appeal No. 671.8 of 2013)
JUNE 2, 2014
[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 counterclaim 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 1 a joint
venture partnership with respondents. nos. 1 and 2.
Respondent no. 3-EIL is an Indian enterprise carrying on
E
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
know-how, were vested by the appellant with respondent
no. 3-'EIL' through intellectual property licence
agreements. The appellant terminated the last agreement
F
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 counterC 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
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
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
E
F
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
0 "counter-claim" cannot be permitted to be continued.
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 "counterclaim(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
0
apparent, t.hat the appellant filed at least 19 "infringement
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
1 Respondents.
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
F
of wind turbine generators, and wind energy converters. The
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 knowhow 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 "counterE
claims" (by the respondents).
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".
H
8. The main contentions advanced by the learned counsel
for the appellants, emerge from Section 64 of the Patents Act.
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
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 sayB
(a)
(b)
(c)
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
that the patent was granted on the application of a
person not entitled under the provisions of this Act
to apply therefor;
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
A
8
c
D
E
F
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[2014] 9 S.C.R.
was publicly known or publicly used in India or what
was published in India or elsewhere before the
priority date of the claim:
(g)
that the invention, so far as claimed in any claim of
the complete specification, is not useful;
(h)
that the complete specification does not sufficiently
and fairly describe the invention and the method by
which it is to be performed, that is to say, that the
description of the method or the instructions for the
Working of the invention as contained in the
complete specification are not by themselves
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,
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
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;
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
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
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
fraud;
(p)
that the complete specification does not disclose
or wrongly mentions the source or geographical
origin of biological material used for the invention;
(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.
(2) For the purposes of clauses (e) and (f) of sub-section
"(1) -
(a)
no account.shall be taken of personal document or
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
A
B
c
D
E
F
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
B
c
E
F
G
account shall be taken of any use of the invention-
(a)
for the purpose of reasonable trial or experiment
only; or
(b)
by the Government or by any person authorised by
the Government or by a Government undertaking,
in consequence of the applicant for the patent or
any person from wh<;>m he derives title having
communicated or disclosed the invention directly or
indirectly to the Government or person authorised
as aforesaid or to the Government undertaking; or
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 subsection (1) a patent may be revoked by the High Court on
the petition of the Central Government, if the High Court
is satisfied that the patentee has without reasonable cause
failed to comply with the request of the Central Government
to make, use or exercise the patented invention for the
purposes of 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
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 "counterclaim" 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,
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)
B
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);
0
or if the patent was granted in respect of a matter, which is
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,
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
E
the patent was granted, on the basis of an inaccurate depiction/
portrayal of the matter (sub-section 1 G) 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
F
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 (subC
section (1 )(q) of Section 64).
12.