The case of Dr. Aloys Wobben and Another vs. Yogesh Mehra and Others is a landmark judgment delivered by the Supreme Court of India on June 2, 2014. It addresses critical issues in patent law, particularly concerning the interplay between revocation petitions filed before the Intellectual Property Appellate Board (IPAB) and counter-claims for revocation filed in response to patent infringement suits before a High Court. The case delves into the interpretation of Section 64 of the Patents Act, 1970, and the procedural propriety of pursuing multiple remedies simultaneously to challenge the validity of a patent. The judgment clarifies the legal position on whether a party can pursue both a revocation petition and a counter-claim concurrently and establishes principles to avoid multiplicity of proceedings, thereby ensuring judicial efficiency and fairness.

Detailed Factual Background:
Dr. Aloys Wobben, a scientist-engineer and the first appellant, is renowned for his contributions to wind turbine generators and wind energy converters. He holds approximately 2,700 patents across more than 60 countries, including about 100 in India. Wobben Properties GmbH, the second appellant, acquired the rights to Dr. Wobben’s Indian patents and designs through an assignment agreement dated January 5, 2012. Dr. Wobben is also involved in manufacturing wind turbines through Enercon GmbH, a company among the top three global manufacturers in this field, operating in 27 countries with over 8,000 employees.

In India, Dr. Wobben conducted his manufacturing operations through a joint venture with Yogesh Mehra and Ajay Mehra (respondents nos. 1 and 2), forming Enercon India Limited (respondent no. 3), later renamed Wind World (India) Limited. Established in 1994, this joint venture operated under intellectual property license agreements granted by Dr. Wobben, with the last agreement executed on September 29, 2006, superseding prior agreements from 1994 and 2000. Enercon GmbH terminated this agreement on December 8, 2008, citing non-fulfillment of obligations by Enercon India Limited.

Despite the termination, the respondents continued to use Dr. Wobben’s patented technology, prompting allegations of unauthorized exploitation of intellectual property. In response, Enercon India Limited filed 19 revocation petitions in January 2009 before the IPAB under Section 64(1) of the Patents Act, seeking to revoke Dr. Wobben’s patents. Subsequently, Dr. Wobben initiated multiple patent infringement suits against the respondents, starting with the first suit on July 27, 2009, followed by additional suits filed between October 2009 and July 2010. In response to these suits, the respondents filed counter-claims seeking revocation of the same patents, and later filed four additional revocation petitions before the IPAB in 2010 and 2011.

The simultaneous pursuit of revocation petitions and counter-claims led to a complex legal dispute, with some revocation petitions being resolved by the IPAB while others remained pending. The respondents’ actions raised questions about the permissibility of pursuing multiple remedies for the same purpose, the jurisdiction of the IPAB versus the High Court, and the procedural propriety of such parallel proceedings.

Detailed Procedural Background:

The procedural history of the case is intricate, reflecting the multiplicity of legal actions initiated by both parties.

• In January 2009, Enercon India Limited filed 19 revocation petitions before the IPAB, challenging the validity of Dr. Wobben’s patents.
• Dr. Wobben filed a series of patent infringement suits before the Delhi High Court:
  • Suit no. 1349 of 2009 on July 27, 2009
  • Suits nos. 1963, 1967, and 1968 of 2009 on October 20, 2009
  • Suit no. 176 of 2010 on January 28, 2010
  • Suit no. 1305 of 2010 on July 2, 2010
  • Suit no. 1333 of 2010 on July 5, 2010

  Totaling ten infringement suits.

• The respondents filed counter-claims seeking revocation:
  • September 9, 2009 in suit no. 1349 of 2009
  • January 30, 2010 in suit no. 1963 of 2009
  • April 30, 2010 in suit no. 176 of 2010
• Respondents filed four additional revocation petitions in 2010 and 2011.
• On September 1, 2010, the Delhi High Court passed a consent order consolidating the suits and counter-claims for expedited trial.
• Respondents continued revocation petitions, leading to IPAB revoking six patents.
• Dr. Wobben appealed to the Supreme Court, arguing legal impropriety of parallel proceedings.

Issues Involved in the Case:

• Permissibility of Simultaneous Remedies: Whether a party under Section 64(1) can pursue both a revocation petition before the IPAB and a counter-claim before the High Court?
• Jurisdictional Conflict: Whether a counter-claim in High Court ousts the IPAB’s jurisdiction or vice versa?
• Interpretation of Section 64: Does the word “or” in Section 64(1) mean remedies are mutually exclusive?
• Consent Order’s Binding Nature: Does the September 1, 2010 consent order preclude further IPAB petitions?

Appellants’ Submissions (Dr. Aloys Wobben and Wobben Properties GmbH):

• Exclusive Jurisdiction of High Court: High Court alone should decide validity once a counter-claim is filed.
• Disjunctive Nature of “Or” in Section 64(1): Remedies are mutually exclusive.
• Subservience of Section 64: Section 64 is subordinate to Section 25(2) proceedings.
• Res Judicata and Procedural Bar: Only one remedy should be allowed to avoid conflict; invoked CPC Sections 10 and 151.
• Consent Order’s Binding Effect: Revocation petitions violated the consent order.
• Analogy with Trade Marks Act: Absence of a provision like Section 124 of Trade Marks Act implies no parallel proceedings.

Respondents’ Submissions (Yogesh Mehra, Ajay Mehra, and Enercon India Limited):

• Independent Remedies under Section 64(1): Revocation petition and counter-claim are both valid paths.
• IPAB’s Statutory Jurisdiction: Counter-claims do not bar IPAB from adjudicating revocation petitions.
• No Procedural Bar: Legal framework allows both remedies if done properly in sequence.
• Broader Remedial Scope of Revocation Petitions: More procedural options available compared to counter-claims.
• Consent Order’s Scope: It applied only to High Court proceedings, not to already filed IPAB petitions.

Detailed Discussion on Judgments and Citations:

• Section 64 of the Patents Act, 1970:
  • Context: Allows revocation by IPAB or High Court.
  • Court’s Analysis: “Or” is disjunctive; both remedies cannot be pursued simultaneously.
• Section 25 of the Patents Act, 1970:
  • Context: Governs opposition proceedings.
  • Court’s Analysis: Section 25(2) proceedings prevent future challenges under Section 64(1).
• Section 104 of the Patents Act, 1970:
  • Context: Infringement suits and counter-claims go to High Court.
  • Court’s Analysis: Timing decides which forum has jurisdiction.
• Sections 10 and 151 of CPC, 1908:
  • Context: Stay of proceedings and inherent powers.
  • Court’s Analysis: Prevents multiplicity of proceedings and abuse of process.
• Section 124 of the Trade Marks Act, 1999:
  • Context: Courts may stay trademark suits pending rectification.
  • Appellants’ Argument: Patents Act lacks similar provision, implying bar on parallel proceedings.

Case Title: Dr. Aloys Wobben and Another vs. Yogesh Mehra and Others: Date of Order June 2, 2014:Case No. Civil Appeal No. 6718 of 2013:Neutral Citation AIR 2014 SC 2210, (2014) 15 SCC 360 :Name of Court: Supreme Court of India:Name of Hon'ble Judge Justice Jagdish Singh Khehar and Justice A.K. Patnaik

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539