This landmark case delves into the intricacies of patent law, particularly concerning the interplay between revocation petitions under Section 64(1) of the Patents Act, 1970, and counter-claims in infringement suits. The decision clarifies whether remedies for patent revocation can be pursued simultaneously in different forums.

Background:
Dr. Aloys Wobben, a renowned inventor in the field of wind turbine generators, held numerous patents, including about 100 in India. He operated through Enercon GmbH, which had a joint venture in India, Enercon India Limited, with Yogesh Mehra and Ajay Mehra. Disputes arose following the termination of licensing agreements, leading to multiple legal proceedings over patent infringement and revocation.

Brief Facts of the Case:

Formation of Joint Venture

• Enercon India Limited was formed in 1994 as a joint venture between Enercon GmbH and the Mehra brothers.

Termination of Licensing Agreements

• The intellectual property license agreements were terminated in 2008 due to alleged non-compliance by Enercon India Limited.

Revocation Petitions

• Enercon India Limited filed 19 revocation petitions before the Intellectual Property Appellate Board (IPAB) challenging patents held by Dr. Aloys Wobben.

Infringement Suits and Counter-Claims

• Dr. Wobben filed multiple patent infringement suits in response, leading to counter-claims by the defendants seeking patent revocation.

Parallel Proceedings

• The crux of the dispute revolved around whether simultaneous proceedings for patent revocation in IPAB and as counter-claims in the High Court were permissible.

Issues Involved

• Can a defendant in a patent infringement suit, having filed a counter-claim for revocation, also pursue a revocation petition before the IPAB?
• Does the Patents Act, 1970, allow for simultaneous remedies under Section 64(1) for revocation of patents?
• What forum has jurisdiction when multiple proceedings for revocation are initiated?

Submissions of the Parties

Appellants (Dr. Aloys Wobben):

• Argued that the Patents Act does not permit simultaneous remedies for patent revocation.
• Asserted that once a counter-claim is filed, jurisdiction rests solely with the High Court.

Respondents (Yogesh Mehra and Ors.):

• Contended that remedies under Section 64(1) are independent and can be pursued concurrently.
• Argued for the continuation of revocation petitions before the IPAB.

Reasoning and Analysis by the Court

• Interpretation of Section 64(1): The Court emphasized that the word "or" in Section 64(1) is disjunctive, prohibiting simultaneous remedies for patent revocation. A party must choose between filing a revocation petition or a counter-claim.
• Jurisdictional Hierarchy: Counter-claims, being part of infringement suits, fall under the jurisdiction of the High Court. Allowing parallel proceedings would create inconsistencies and undermine judicial efficiency.

Decision: The Supreme Court held that once a counter-claim for revocation is filed in response to an infringement suit, the defendant cannot pursue a revocation petition before the IPAB.The revocation petition filed before the counter-claim can proceed, but the counter-claim must be dismissed.The Court set aside the impugned order and disposed of the appeal.

Conclusion:
This judgment reinforces the principle of avoiding multiplicity of proceedings in patent disputes. It clarifies that a defendant must elect a single remedy under Section 64(1) of the Patents Act, thereby streamlining the adjudication of patent revocation and infringement issues.

Case Title:Aloys Wobben and Ors. Vs. Yogesh Mehra and Ors.
Date of Order:June 2, 2014
Case Number:Civil Appeal No. 6718 of 2013
Citation:MANU/SC/0519/2014: AIR 2014 SC 2210: (2014) 15 SCC 360
Court:Supreme Court of India
Judges:Hon'ble Justice A.K. Patnaik and Hon'ble Justice J.S. Khehar

Disclaimer:
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539