LexDR. ALOYS WOBBEN & ANR. versus YOGESH MEHRA & ORS.
Open in Lexace · Ask the AI about this caseJudgment (excerpt)
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 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
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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
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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
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