Parallel remedies for the revocation of patents

Lex Orbis
Swati Setia
[email protected]

The Delhi High Court recently dealt with the question of maintainability of proceedings for the revocation of patents before the Intellectual Property Appellate Board (IPAB). This was filed by the same party whose counter-claim for revocation of same patent is pending before a High Court in a patent infringement suit.

The patentee, Dr Aloys Wobben, moved an application against the defendant, Enercon India, and argued to restrain the defendant from pressing its counter claim for revocation of patent under Section 107 of the Patents Act, 1970 (the Act) in the suit. The question for examination by the court was whether recourse to both the defence of revocation in a suit as well as an application seeking cancellation of the patent in the suit filed by the plaintiff for infringement could be taken at the same time. The Court considered the question as to whether the 'Doctrine of Election' would be applicable under these provisions of the law.

Brief facts of the case are:

The plaintiff, Dr Aloys Wobben, filed a suit before the Delhi High Court for infringement of its four patents. This was in relation to “method of operating and controlling wind power installation” against the Indian subsidiary of Enercon GmbH, a German company of which Dr Wobben was the chairman. The defendants, Enercon India, set up its defence on invalidating Dr Wobben's patent in its written statement and filing a counterclaim in the said suit seeking revocation of those patents under Section 107 of the Act. The defendant also exercised its right provided under Section 64 of the Act and made applications for revocation of the said patents before the IPAB. In a connected matter before the Madras High Court between the same parties, the High Court, while deciding a writ petition, directed the IPAB to complete the hearings in the revocation proceedings on the subject patents. It was at this stage that the patentee moved an application before the Delhi High Court trying the suit for infringement of the patents. This was to restrain the defendants from pressing its application claim for revocation under Section 107 in the suit pending before the court thereby taking recourse of two parallel remedies.

It was the contention of the plaintiff that, once the defendant had availed its statutory right for revocation/rectification of the patent before the IPAB, it was barred from taking the same defence in the suit for infringement. The plaintiff urged that the applications for revocation before the IPAB either be withdrawn or not be considered while the subject suit is pending as it would unnecessarily hamper the progress of the suit. The defendant however contended that the legislature has consciously and independently provided these statutory remedies under the Act and thus it cannot be taken away. It was argued that the Doctrine of Election couldn't waive or oust the statutory remedies. The defendant also referred to the Madras High Court order and pointed out that any such order as sought for by the plaintiff would be conflicting.

In order to ascertain whether the Doctrine of Election would apply to the present case under the scheme of the Act, the Court relied on the Supreme Court landmark judgment in the matter of Andhra Pradesh Financial Corporation V/s Gar Re-rolling Mills [1994 (2) SCC 647 where it was held as follows:

“The Doctrine of Election clearly suggests that when two remedies are available for the same relief, the party to whom the said remedies are available for the same relief, the party to whom the said remedies are available has the option to elect either of them but that doctrine would not apply to cases where the ambit and scope of the two remedies is essentially different…”

The Court also took note of the judgment of Nagubai Ammal & Ors. V/s B. Sharma Rao & Ors. [AIR1956SC593] wherein it was held as follows:

“It is clear from the above observations that the maxim that a person cannot 'approbate and reprobate' is only one application of the doctrine of election, and that its operation must be confined to reliefs claimed in respect of the same transaction and to the persons who are parties thereto.”

The Court went ahead and examined, placing reliance on two Supreme Court judgments of 2004 and 2005 to the effect that the doctrine of election does not apply as an estoppel against the statute. The Court referred to the matters of MD, Army Welfare Housing Organisation V/s Sumangal Services (P) Ltd. [(2004) 9 SCC 619] and Deasahayam (Dead) By Lrs. V/s Savithramma [2005 (7) SCC 653] wherein it was held:

“The doctrine of approbate and reprobate is a species of estoppel. However, there cannot be any estoppel against a statute.”