Aloys Wobben Vs. Yogesh Mehra: Scope of Simultaneous Counterclaims and Patent Revocation
Case Title:Aloys Wobben and Ors. Vs. Yogesh Mehra and Ors.
Date of Order:June 2, 2014
Case Number:Civil Appeal No. 6718 of 2013
Citation:MANU/SC/0519/2014: AIR 2014 SC 2210: (2014) 15 SCC 360
Court:Supreme Court of India
Judges:Hon’ble Justice A.K. Patnaik and Hon’ble Justice J.S. Khehar
Introduction: This case is a landmark ruling on patent law in India, addressing the legal conflict between patent infringement suits and revocation petitions under the Patents Act, 1970. The Supreme Court examined whether a party could simultaneously pursue a patent revocation petition before the Intellectual Property Appellate Board (IPAB) and a counterclaim for revocation in a patent infringement suit before the High Court. The judgment clarified the mutual exclusivity of these remedies and established a precedent for handling patent disputes in India.
Factual Background:
Dr. Aloys Wobben’s Patents and Business Interests: Dr. Aloys Wobben, a German scientist and entrepreneur, owned over 2,700 patents worldwide, including 100 patents in India related to wind turbine technology.He operated Enercon GmbH, a leading manufacturer of wind turbines.
Formation of Joint Venture:In 1994, Enercon GmbH entered into a joint venture with Yogesh Mehra and Ajay Mehra (respondents), forming Enercon India Ltd.The company operated under license agreements, the last of which was signed on September 29, 2006.
Dispute Between the Parties:On December 8, 2008, Enercon GmbH terminated the license agreement, citing breaches by Enercon India Ltd.The respondents, however, continued using Wobben’s patents, prompting multiple patent infringement suits.
Procedural Background:
Revocation Petitions:In January 2009, Enercon India Ltd. filed 19 revocation petitions before the IPAB, challenging Wobben’s patents under Section 64 of the Patents Act, 1970.In 2010-2011, they filed four additional revocation petitions, totaling 23 revocation petitions.
Patent Infringement Suits:Between 2009 and 2010, Wobben filed 10 patent infringement suits in the Delhi High Court.Counterclaims Filed by Respondents:In response, the respondents filed counterclaims for revocation of the patents in the infringement suits.Delhi High Court’s Ruling:The High Court ruled that revocation petitions before the IPAB and counterclaims in infringement suits could proceed simultaneously.Dr. Wobben appealed this decision to the Supreme Court.
Issues Involved:Can a defendant in a patent infringement suit simultaneously pursue a revocation petition before the IPAB and a counterclaim for revocation before the High Court?Does filing a counterclaim in an infringement suit bar the defendant from maintaining a revocation petition before the IPAB?How should Section 64 of the Patents Act, 1970, be interpreted—whether the remedies of revocation petition and counterclaim are mutually exclusive?
Submissions of the Parties:
Appellants (Dr. Aloys Wobben and Wobben Properties GmbH):Exclusive Jurisdiction of High Court in Counterclaims:Once a counterclaim is filed under Section 64(1) of the Patents Act, the High Court alone has jurisdiction to decide patent revocation.The IPAB loses jurisdiction over revocation petitions for the same patents.Avoiding Conflicting Judgments:Simultaneous proceedings before the IPAB and High Court could result in contradictory decisions.IPAB as an Administrative Tribunal:The High Court, being a constitutional court, has wider jurisdiction and greater authority than the IPAB.
Respondents (Yogesh Mehra and Others):Right to Multiple Remedies:The Patents Act allows independent remedies—a revocation petition before the IPAB and a counterclaim in an infringement suit.No Express Prohibition on Parallel Proceedings:There is no statutory bar on pursuing both remedies.
Reasoning and Analysis of the Supreme Court:Mutually Exclusive Remedies:The Supreme Court interpreted Section 64 strictly, holding that once a counterclaim is filed, a revocation petition on the same patent cannot be pursued.Avoiding Jurisdictional Conflicts:If simultaneous proceedings were allowed, contradictory judgments could arise, creating legal uncertainty.Preference for High Court Adjudication:Since counterclaims are adjudicated by the High Court, they take precedence over administrative proceedings before the IPAB.
Final Decision:Bar on Simultaneous Proceedings:If a party has filed a counterclaim in response to an infringement suit, they cannot pursue a separate revocation petition before the IPAB for the same patent.Revocation Petitions Filed Before Counterclaims:If a revocation petition was already filed before an infringement suit, then the counterclaim cannot be pursued.Delhi High Court’s Decision Overruled:The Supreme Court overturned the High Court’s ruling, holding that only one remedy (revocation petition or counterclaim) is available per patent.
Conclusion: The Supreme Court’s decision in Dr. Aloys Wobben vs. Yogesh Mehra established a clear legal precedent on the mutual exclusivity of revocation petitions and counterclaims under Section 64 of the Patents Act, 1970. The ruling prevents forum shopping, reduces conflicting judgments, and ensures judicial consistency in patent litigation in India.Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
High Court of Delhi
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