Before
proceeding to the main issues in this series of posts, I would first like to
highlight a few seemingly obvious but fundamental features of a patent. These
may literally sound too overt and basic to one, but are essentially critical to
stick by while analyzing the issues involved. These basic features are identified
as below [The image is taken from here]:
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A patent is primarily a claim
or a set of claims wherein each claim tends to be either determinative or
assertive of the claimed territory of protection.
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It is possible that in an
infringement case, only a single claim or a subset of claims of a patent is
infringed by a person while other claims are not infringed.
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It is possible that in a
revocation proceeding (either before IPAB or in a counter-claim before High
Court) one may challenge only a subset of claims of a patent and only those (or
some of those) are revoked while other claims are held intact and valid (as is
or after amendment).
-
It is possible that a claim or
a set of claims are challenged and invalidated on one ground (of several
grounds of revocation enlisted in section 64) while another claim or set of
claims are challenged and invalidated on some other ground of revocation.
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At the same time, it is also
possible that the different set of claims are revoked or invalidated on the
same ground but with different issues involving different facts, such as for
example the reliance on new fact or document (discovered later) while relying
on the same ground of novelty/obviousness.
-
It is possible that different
set of claims are revoked or invalidated in the same proceeding or even different
proceedings at different points of time and in those different proceedings, it
is possible that the parties are same, related or different.
I believe all
the above mentioned presumptions to be correct in view of the principles of
patent law as well as within the framework of Indian Patents Act, 1970. I
welcome any objections on these presumptions. Some of them are also supported
in the arguments below. In light of these, we will now take up the issues:
Issue 1. Can a
counterclaim for revocation in a suit of infringement before High Court be
allowed to proceed hand-in-hand with a revocation proceeding before the IPAB
involving the same patent and same parties?
One would easily
correlate this issues with the one purported to be dealt and resolved by the
Delhi High Court in its judgment dated January 20, 2012 in the ongoing
multi-faceted Enercon patent
litigation. In particular, this was precisely the issue framed by the Court to
be decided in the matter and I believe the Court did not do justice to the
issue (not exactly the case in hand) in its judgment, which I did not found to
be impressive enough to be set as a precedent.
A significant
portion of the judgment deals with the applicability of the Doctrine of Election with its basic
tenets and precedents. Although the elements of the doctrine were well
identified, its applicability in this case is misplaced. Firstly, at the time
of filing of the revocation proceedings (in 2009), the defendant had only one
option viz to file for revocation of patents before IPAB and it could not have
filed Counterclaim at High Court (as there was no infringement proceeding
pending), so there is no point of election which could arise at that time.
Subsequently, it is only after the infringement suits which were filed (in
2010), the defendants preferred to take the defence under section 107(1), which
requires filing of a counterclaim of revocation of patent. As an alternative,
the defendants could have asked the High Court to stay the infringement suit
until disposal of the pending revocation proceedings at the IPAB, but it seems
that such action doesn’t find any support in the statute. Defendants,
therefore, followed the natural course of action to avoid prejudicing their case
before IPAB as well as High Court. So the so called option of “Election” was
technically neither available nor exercised by the defendants and they had just
pursued according to what has been prescribed by the statute. It was the
Court’s duty to decide judiciously on the issue by going a bit deeper into the
subject rather than sweeping it superficially.
I believe that
the Court should have better looked on the grounds (and perhaps the facts)
raised and relied upon in the revocation proceeding of every patent before IPAB
and compared them with the corresponding grounds (with facts) relied upon by
the defendant in its counter-claim of revocation for respective patents. If the
grounds are found to be entirely different (without any overlap), it would not be
inappropriate for the Court to allow both the proceedings to run
simultaneously; however, if the grounds are found to be identical or similar or
overlapping, then it’s the duty of the court to device some way to avoid the
parallel proceedings by staying the latter one (viz. the counter-claim and the
clubbed infringement suit) until disposal of the revocation proceedings before
IPAB which were already on fast track or so called ‘Rocket Docket’ (for readers of ‘The
Litigators’). This would be appropriate to avoid any possibility of
eventually conflicting findings and decisions from two different forums on the
same issue (involving same subject/claims with same grounds of revocation and
facts), which would result in an awkward situation for everyone. In this context,
the plaintiff rightly argued before the court that there are several powers
conferred upon the court, which allow the court to administer the proceedings
in the action filed before it, so as to are borne in mind the convenience of
parties, hierarchy of courts, and avoidance of conflicts between courts of co-
equal jurisdiction or between a superior and subordinate courts, and to secure
for the litigant an orderly, timely and just disposal of the cause. Some
examples cited in this regard are: power to consolidate suits (Section 151);
order separate trials (Order 2 Rule 6); to stay parallel proceedings, (Section
10 and Section 151); transfer of proceedings from one subordinate court to
another or to itself (Section 24) etc. and the availability of such powers were
indeed acknowledged and accepted by the Hon’ble Court.
The Court on the
contrary, was found to be highly inspired by the circumstances in reaching its
conclusion rather than focusing on point of law. The Hon’ble Court erroneously
relied upon the expedited proceedings before IPAB to state that since they
would be decided soon viz. much before the proceedings before High Court, there
is no possibility of any clash. In fact the Hon’ble Court went on to state to
the extent that:
“The aforesaid circumstances would show that
the continuation of the proceedings before the two forums has not yet reached a
stage of collision, as apprehended by Dr. Wobben.”
Reliance on the
pace of proceedings to determine such critical issue of maintainability of the
proceedings (involving same issue) before two forums is preposterous. Now with
this, I would expect one to catch the basic points (enlisted in the beginning)
in my argument, which is that there exists a possibility of a plurality of
proceedings, simultaneous or otherwise, before the same forum or otherwise,
involving the same patent and same parties but different grounds/issues/facts
relied upon for challenging the validity of claims of a patent. So, the issue
of maintainability of the revocation proceeding at IPAB and a Counter-claim for
revocation in the High Court (or hypothetically even a separate revocation
proceeding before IPAB) should be determined by the subject, in particular on
the grounds raised and facts presented.
Now let us see
if this finds a place in the statute. Section 104 mentions ‘infringement of patent’ and not claims,
but this I believe is absolutely alright and is not contrary to the basic
presumptions and arguments above, because infringement of any claim of the
patent would be termed as infringement of patent itself. Secondly, section
107(1) states that “In any suit for
infringement of a patent every ground on which it may be revoked under section
64 shall be available as a ground of defence.” This section also specifies
patent and not claims, but the word ‘revocation’ used herein should be
interpreted to include even partial revocation where only a claim or set of
claims are revoked while others are held valid and intact. This is perfectly
supported by referenced section 64 (grounds of revocation), wherein most of the
grounds are directed to claims instead of entire patent. In fact, this is the
scheme and fundamental aspect of the patent law that every claim is to be
treated independently. I also support my contention with the fact that at least
one provision of the Patents Act which provides deterrence against notorious
and frivolous challenges to the validity of patent, particularly qualify
claims. Section 113, which provides for certificate of validity states that
once “the validity of any claim of a
specification is contested and that claim is found by the Appellate Board or
High Court to be valid, the Appellate Board or the High Court may certify that
the validity of that claim was contested in those proceedings and was upheld.”
Section 113(2) further provides that:
Where any such certificate has been granted, then, if
any subsequent suit before a court for infringement
of that claim of the patent or in any subsequent proceeding for revocation of the patent in so far as it relates to
that claim, the patentee or other person relying on the validity of the
claim obtains a final order or judgment in his favour, he shall be entitled to
an order for the payment of his full costs, charges and expenses of and
incidental to any such suit or proceeding properly incurred so far as they
concern the claim in respect of which the certificate was granted, unless the
court trying the suit or proceeding otherwise directs:
PROVIDED that the costs as specified in this
sub-section shall not be ordered when the party disputing the validity of the
claim satisfies the court that he was not aware of the grant of the certificate
when he raised the dispute and withdrew forthwith such defence when he became
aware of such a certificate. (emphasis added)
Thus it is
evident that in such proceedings, it is the claims which are treated as a
‘unit’ and not the entire patent. In such case, if different claims are subject
matter of different revocation proceedings at different forums, there is no
harm in letting those proceedings continue simultaneously.
Conclusively, if
the grounds of revocation are different in the revocation proceeding at IPAB
and in the Counter-claim in an infringement suit at High Court, then even
though the parties and the subject patent is same, the proceedings can
definitely go simultaneously. Else, it is the duty of court to stay the
proceeding initiated later in time even in absence of any direct provision like
section 124 in Trade Marks Act, 1999 where the Court proceedings are stayed until
disposal of rectification proceedings before IPAB.
The difference
in issues could emerge from difference in the grounds raised or facts presented
or the claims involved. The last portion viz. difference in the claims
involved, leads to another reasonable doubt (Issue 2) – whether the scope of counterclaim can travel beyond the
scope of infringement suit. In other words, whether the defendant in its
counter-claim for revocation go on to challenge the validity of even those
claims which are not alleged to be infringed by the defendant in the suit filed
by petitioner? I will take this issue in my next post, coming soon!
