Taking the discussion further from
my earlier post on the 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?” ], I now take up the Issue 2,
as mentioned in the said post, viz. Whether
the scope of a counterclaim for revocation (against a suit for infringement)
can travel beyond the scope of the said infringement suit? In other
words, whether a defendant in its counter-claim for revocation can go on to
challenge the validity of even those claims which are not alleged to be
infringed by the defendant in the infringement suit filed by petitioner?
Although this is a sequel to my
earlier post and whatever discussed therein is obviously a prerequisite to
understand the connected issue of this post, I would still like to emphasize
upon one of the findings (of my earlier post) that it is a ‘claim’ (or a set
thereof) which should be dealt as a unit for the purposes of infringement and
revocation proceedings and not the entire ‘patent’ always even though the
relevant provisions in the Act or Rules may loosely refer otherwise [for e.g.
the preamble to section 64(1) etc.]. I believe this holds the key to reach a
logical conclusion for both the issues within the realm of the statute.
In a case where a suit of
infringement of a patent is filed by Petitioner against Defendant, section 107
provides that the defendant shall have, in its defence, all the grounds (of
revocation of patent) enlisted in section 64 of the Patents Act. It need not be
mentioned that these are not the only grounds available for defence in a suit
for infringement, and it is possible for the defendant to simply assert
non-infringement on merits without taking resort to the counterclaims of
revocation viz. it may simply acknowledge the validity and enforceability of the
patent while maintaining its stand that its actions are beyond the scope of the
patent and are thus not infringing the patent. In such cases, the court is required
to first determine the SCOPE of the patent claim (rather than its VALIDITY) -
which is quite similar to the so called Markman’s Hearings in US involving
interpretation of claims followed by infringement analysis. Thus, the Defendant
is free to not to invoke its powers to challenge the validity of the
claims.
The alternative aggressive approach,
which is presumably in fashion today, is to challenge the validity of patent
itself in the suit of infringement on any of the grounds of revocation as
available under section 64(1). A counter-claim for revocation is actually a
fresh suit in itself and is by default clubbed by the Court with the suit of
infringement. The critical questions which arises here is – the suit for revocation of what? Revocation
of the entire patent including all claims therein? Or revocation of only those
claims which have been alleged to be infringed by the defendant?
We shall hypothesize two
situations in order to cover the possibilities. In case 1, lets presume that
the person who is alleged to be infringing the patent doesn’t qualify the
criteria of ‘person interested’, which although seems to be unlikely
(considering that the person is purported to be an infringer), but may
theoretically be possible in cases of contributory infringement or when the
defendant is not the actual manufacturer of the product but only a merchandiser,
importer etc. In such case where the alleged infringer is not a person
interested, it, ipso facto, doesn’t
have any right under the Patents Act to initiate any proceedings for revoking
or invalidating or challenging a patent or a claim thereof (technically after
the date of grant of patent) before any judicial or quasi-judicial forum. It is
because of the fact that once a patent is granted, it can be subject to
challenge (by a third party, other than the government) only through the post
–grant opposition [under section 25(2) before the Controller] or through the
revocation [under section 64(1) before IPAB], and in both cases the statute sets
a pre-requisite of ‘person interested’ to initiate the proceedings. In case,
however, a suit of infringement is filed against such person (who is not a
person interested and doesn’t have the rights to challenge the patent
otherwise), said rights (for challenging the patent) automatically deemed to
stand vested in that person by virtue of section 107(1) of the Patents Act,
1970 immediately upon filing of such suit of infringement. Section 107 is
reproduced herein below:
107.
Defences, etc. in suits for infringement
(1) 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 for defence.
(2) In any suit for infringement of a patent
by the making, using or importation of any machine, apparatus or other article
or by the using of any process or by the importation, use or distribution of
any medicine or drug, it shall be a ground for defence that such making, using,
importation or distribution is in accordance with any one or more of the
conditions specified in section 47.
It must be appreciated that these
rights are triggered only when the infringement has been alleged by the
Patentee and are provided as a mere tool to the defendant to defend itself against
such allegation. This conferment of rights does make a lot of sense as it tends
to provide equal opportunities for both the parties. Following the principles
of equity, however, the scope of these special rights so conferred in such
situation must correspond, evenly, to the scope of alleged infringement only viz.
the defendant should be allowed to challenge the validity of only those claims
against which the infringement has been alleged and not any other claim (of the
same patent) for the same reasons he was not entitled to challenge them before
the institution of the suit of infringement. Thus if the petitioner has
contended the infringement of only claims 1-10 (of total 30 claims in the
patent), then the defendant in such case attains the equitable and statutory rights
to challenge the validity of only those allegedly infringing claims viz. claims
1-10 and the defendant is still deficient of the rights to challenge the
validity of the rest of the claims viz. claims 11-30. This seems to be in-line
with my earlier contention that it is the ‘claim’ (or a set thereof) which
constitutes a unit for the purpose of infringement and revocation proceedings and
not always the entire patent (all the claims). It is also possible in such
situation that the defendant challenges the validity of some of the allegedly
infringing claims while only defends otherwise in respect of the rest of the
allegedly infringing claims. In other words, the scope of the Defendant’s
rights to challenge the validity shall not exceed the scope of alleged
infringement, although the Defendant is at liberty to not to exercise it or to
exercise it partially or fully. The benchmark is – the defendant, at the most,
can challenge the validity of only those claims which are alleged to be
infringed. Although this limited scope of challenge may appear to contradict the
reference of the word ‘patent’ in section 107(1), but it seems justified for
the same reasons that the preamble to section 64(1) also refers to the word
‘patent’ only (and as discussed earlier that the grounds make specific
reference to claims etc.). As also discussed in my earlier post, the reference
of ‘patent’ in the relevant sections need not be taken strictly to refer to the
entire patent (viz. all claims) and should, at times, as and when applicable, be
inferred as a subset of claims of the patent.
Proceeding to the case 2, where
the person who is alleged to be infringing the patent is actually a ‘person
interested’ within the meaning of the Act. In such case, the reasoning tendered
above shall apply to the extent of procedural aspects of the rights. As per the
statute, a ‘person interested’ is entitled, even without the institution of a
suit of infringement against it, to challenge the validity of a patent (meaning
thereby even a subset of claims of the patent and not necessarily the entire
set of claims always) either by means of post-grant opposition [under section
25(2), before the Controller within 1 year of the date of publication of grant
of patent] or by means of initiating revocation proceedings [under section 64,
before the IPAB at any time after the grant of patent]. Thus, the institution
of a suit of infringement against such interested person doesn’t seem to be
actually conferring upon the alleged infringer any additional rights. This is
true, however, only to the extent that there is no new right, in terms of
the nature of rights, which has been created towards challenging the
validity of the patent, but the difference in the procedural context is still maintainable
viz. the forum before which such right could be evoked and ultimately adjudicated.
In other words, the defendant in such case shall be entitled to challenge in
its counterclaim before the High Court the validity of only those claims
against which the infringement has been contended by the petitioner, and if
the defendant is desirous of challenging the validity of claims other than
those alleged to be infringed, than it has to take recourse to the corresponding
statutory rights by filing a fresh proceeding under post-grant opposition
before the Controller or a revocation before the IPAB, as the case may be. Such
challenge to the validity of claims falling outside the scope of infringement shall
not or should not be accepted as part of the Counter-claim before the High
Court. Thus, in this case, its is the right to challenge the validity of patent
in a counter-claim before the High Court which is exclusively triggered
and conferred upon the defendant upon filing of a suit of infringement, which
right (to challenge the validity of patent) otherwise allows the defendant only
to raise it before the Controller or the IPAB. This is also in-line with
finding in the earlier post that the proceedings for revocation before IPAB and
counter-claim before the High Court could be maintainable and adjudicated simultaneously
provided that the subject matter of the challenge differs viz. even though it
involves the same patent, then either the set of claims which are subject to
challenge are different or the grounds of challenge (of the same set of claims)
are different or even when the grounds and claims are same, the facts relied
upon to challenge the validity of claims are different (for example reliance
upon different citations for challenging the novelty of the invention etc.). I
am afraid that this would somehow also require a stricter interpretation of
section 104 wherein it is provided that if the counterclaim of revocation is
filed in a suit of infringement before a district court, the matter shall automatically
stands transferred to the High Court. In such matters, I believe, that the
district court must determine the scope of such revocation first – if it falls
within the scope of such infringing claims, then the matter as prescribed
should be transferred to the High Court. In case, however, the Defendant has
attempted to challenge more than what is allowed (viz. outside the scope of
infringement), then the District Court should outright reject the counter-claim
to the extent that it is exceeding the determined scope (of infringement) because
for that the claim is not maintainable before district court (which is not the
appropriate forum) and should have been filed before Controller or the IPAB, as
the case may be.
On a concluding note, I believe
that the scope of counterclaim for revocation cannot exceed the scope of the alleged
infringement in terms of the claims.
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