1. The following issue framed on 30th September, 2008 and ordered to be treated as preliminary issue is for adjudication:-
“1. Whether a suit for permanent injunction is maintainable by one registered patentee against another registered patentee under the provisions of
Patents Act, 1970? OPDâ€
2. The counsel for the defendants and the senior counsel for the plaintiff have been heard.
3. The plaintiff has sued the defendants for injunction restraining infringement of Patent No. IN 198316 of the plaintiff in relation to a water purifier
and for ancillary reliefs of delivery, rendition of accounts and recovery of damages. The plaintiff, in the plaint itself has pleaded that the defendants
had also applied for and been granted Patent No. IN 195421 for its water purifier which is claimed by the plaintiff to be in infringement of the
plaintiff‟s patent. The plaintiff, in this context has also pleaded that the plaintiff was deprived of an opportunity to oppose the grant of said patent to
the defendants because of the late publication of the Patent Journal and though the plaintiff, within the prescribed time from the publication of the
Patent Journal preferred a pre-grant opposition qua the patent applied for by the defendant but was informed that the defendant had already been
granted the patent and to then avail of the post grant opposition which was then availed of by the plaintiff.
4. The suit came up before this Court first on 3rd May, 2006 when though it was entertained and summons thereof issued but no ex parte injunction as
sought granted.
5. The defendants applied under Order VII Rule 11 of the Code of Civil Procedure, 1908 (CPC) for rejection of the plaint, inter alia on the ground that
no suit for infringement of the patent lies against a registered patentee.
6. The aforesaid contention of the defendants was not accepted vide a detailed judgment dated 10th August, 2007 of dismissal of the application of the
defendant under Order VII Rule 11 of the CPC. It was inter alia reasoned, (i) that Section 48 of the Patents Act, 1970 grants exclusive right to a
patentee to prevent third parties who do not have his consent, from undertaking the making, using, offering for sale, selling etc. the patented product in
India; there is no exclusive right in the patentee to make use of, offer for sale, sell or otherwise exploit the patented product in India; the right of a
patentee is thus an “Exclusionary Rightâ€; (ii) that Section 107 of the Act entitles a defendant in a suit for infringement of patent to defend the suit
on all grounds as are available under Section 64 of the Act for revocation of the patent; a patent can be revoked if it is in respect of an invention
which is the subject matter of an earlier valid patent; this means that even when a subsequent patentee brings an action of infringement against an
earlier patent holder, the earlier patent holder can contend as a ground of defence that it has a valid patent of earlier priority date; this can only be his
defence on merits but not a ground to seek rejection of the plaint at the threshold, on the basis that no suit is maintainable for infringement of patent
against another patentee; (iii) Section 107A of the Act also, while enumerating the acts that do not constitute infringement of a valid patent, does not
provide that use of a patent by a patentee does not constitute infringement of patent; (iv) Section 108 makes available to a plaintiff in a suit for
infringement of patent, the relief of injunction restraining the defendant; (v) if the argument of the defendant were to be accepted, it would mean that
the plaintiff should first pursue its opposition to the patent of the defendant and only after the plaintiff has succeeded in such proceedings finally, would
the plaintiff be entitled to seek the relief of injunction; such an interpretation would lead to absurd results inasmuch as by the time the defendant‟s
patent is revoked/cancelled, the plaintiff‟s suit may itself become barred by time; it also means that in the interregnum, the plaintiff should continue to
suffer without any remedy; and, (vi) Tobu Enterprises Vs. Megha Enterprises 1983 PTC 359 and SS Products of India Vs. Star Class (2001) 21 PTC
835 (Delhi) relating to the Designs Act 1911 holding a suit for infringement by one registered holder of a design against another registered holder of a
design to be not maintainable and relied upon by the counsel for the defendants, were not applicable because under the Designs Act, cancellation
proceedings were maintainable before the Court, unlike the Patents Act where cancellation proceedings have to be before the Intellectual Property
Appellate Board or by way of a Counter Claim by a defendant in a suit filed against the defendant; moreover rights of a patentee are governed by the
Patents Act and not by the Designs Act.
7. The defendants carried the order of dismissal of its application under Order VII Rule 11 of the CPC in appeal before the Division Bench by way of
FAO(OS) No.367/2007. The said appeal was dismissed holding that at the stage of Order VII Rule 11 of the CPC, the averments in the plaint are to
be believed to be correct and the question of law, as had arisen, could not be decided. The question of law was thus left open.
8. The defendant carried the matter to the Supreme Cou rt by way of SLP(C) No.5528/2008 which was also dismissed in limine on 14th March, 2008
observing, that the question was required to be decided as a preliminary issue, uninfluenced by the observations of the judgment dated 10th August,
2007.
9. Thereafter as aforesaid issues were framed on 30th September, 2008 and issue aforesaid ordered to be treated as a preliminary issue and which
has been languishing decision now for the last ten years.
10. On the last date of hearing, the senior counsel for the plaintiff drew attention to Mohan Lal, Proprietor of Mourya Industries Vs. Sona Paint &
Hardwares AIR 2013 Del 143 in relation to the Designs Act, where the Full Bench has held that a suit for infringement is maintainable by one holder
of a registered design against another and contended that the preliminary issue thus has to be decided in favour of the plaintiff.
11. The counsels have been heard.
12. The counsel for the defendants has argued, (i) that while it is open to a defendant in a suit for relief on the ground of infringement of a patent to, in
his defence or by way of Counter Claim, challenge the validity of the patent of the plaintiff, it is not open to a plaintiff to institute a suit in this Court for
challenging the validity of the patent of the defendant or for cancellation thereof and the only remedy of the plaintiff is before the Registrar of Patents;
(ii) that grant of injunction is a equitable relief and no injunction in equity jurisdiction can be granted in contravention of the statutory rights of the
defendant under Section 48 of the Patents Act; (iii) that what has been held in Mohan Lal qua Designs Act cannot be applied to Patents Act inasmuch
as the scheme of the two Acts is entirely different; while before grant of patent, a publication is required to be made and opportunity given to oppose
the grant of patent, no such procedure is prescribed before the grant of registration of a design; attention is invited to paras 17, 17.1 & 18 of Mohan
Lal; and, (iv) there is no presumption of validity of a patent unlike that of a registered trade mark.
13. On enquiry as to grant of patent in whose favour is earlier in point of time, it is stated that though the plaintiff applied earlier than the application of
the defendants but the grant in favour of the defendants is earlier in point of time to the grant in favour of the plaintiff. It is however stated that per
Section 45 of the Patents Act, the grant in favour of the plaintiff, though later in point of time to the grant in favour of the defendant, would relate back
to the date of application and thus the grant of patent in favour of the plaintiff is earlier in point of time.
14. The patent of the plaintiff is informed to be valid till June, 2022 and the patent of the defendants is stated to be valid till 29th March, 2024.
15. On further enquiry as to what is the defence of the defendants on merits, it is stated that the defendants claim their process to be different from
that of the plaintiff.
16. Per contra the senior counsel for the plaintiff has argued, (i) that his arguments remain largely the same which prevailed with this Court in
dismissal of the application of the defendants under Order VII Rule 11 of the CPC on the same grounds; (ii) that while the defendants themselves
were earlier relying upon the judgments under the Designs Act holding a suit for infringement to be not maintainable by one holder of a registered
design against another, contending the provisions of the two statutes to be pari materia, the defendants interestingly now are contending otherwise on
the larger Bench, in relation to the Designs Act, holding a suit for infringement to be maintainable; (iii) that the language of Section 48 of the Patents
Act defining the rights of the patentees is same as the language of Section 22 of Designs Act, with differences which are not material; (iv) that
Section 48 does not restrict the exclusionary rights conferred on a patentee only to those not having a patent and applies to those holding a patent also;
(v) similarly Section 107A of the Patents Act, while defining what does not constitute infringement, does not include use by another patentee as would
have been the case had the legislative intent been that use by a holder of another patent does not constitute infringement; (vi) wherever the legislature
desired to not confer the right of infringement against those who also held a registration, it has provided so, as in the case of Section 28(3) of the
Trade Marks Act, 1999; and, (vii) that Tobo Enterprises supra has been expressly overruled in Mohan Lal.
17. The senior counsel for the plaintiff, on enquiry as to the provisions relating to priority date, has drawn attention to Section 11 read with Section 45
of the Patents Act.
18. The counsel for the defendants, in rejoinder has drawn attention to Sections 22(4) & (5) of the Designs Act, to contend that there is no equivalent
provision in the Patents Act.
19. I have enquired from the counsel for the defendants, whether not, to hold that a patentee cannot maintain a suit for infringement against another
patentee would lead to deprivation of such a patentee from the reliefs claimed, without first obtaining the revocation of the patent of the defendants,
amounting to a total defeat of rights of such patentee considering the life of the patent to be limited to maximum twenty years.
20. The counsel for the defendants states that though it will be so but it is a legislative lacuna which is to be filled up by the legislature and not by the
Courts.
21. I am unable to agree. Even if it is a case of the legislative lacuna, though in my opinion it is not, it is the duty of the Courts to fill up the said lacuna
by interpreting the provisions of the statute purposively and not to allow the right sought to be conferred by the enactment to be defeated and/or
rendered unenforceable.
22. Otherwise, without being influenced in any manner whatsoever by the reasoning given in the judgment dated 10th August, 2007 of a Coordinate
Bench of this Court which has since been set aside else, I am entirely in agreement therewith and do not wish to add to the length of this judgment by
indulging in repetition. It is unfortunate that in spite of the purely legal question subject matter of the preliminary issue aforesaid being decided nearly
twelve years back while rejecting the application under Order VII Rule 11 CPC, owing to technicalities of procedure, no progress has been made in
the suit in the past nearly twelve years. The counsel of the defendants, even today has been unable to make a dent on the reasoning which prevailed
for dismissal of the application under Order VII Rule 11 of CPC. The only thing which has changed in the last twelve years is the view of this Court
qua maintainability of a suit for infringement of a design against another registrant. Though there is no estoppel against law but one cannot help but
notice the change in stand of the counsel for the defendants.While earlier it was the contention that the Patents Act is pari materia to the Designs Act,
now it is contended that the schemes of two are different. The said change itself reflects the fallacy and fickleness of the said argument.
23. No merit is found in the other contentions of the counsel for defendants. No provision in bar of a suit for infringement against another patentee has
been cited. In the absence of such a bar, a patentee is certainly entitled to maintain a suit to stop another from infringement of the patent, even if such
another has also obtained registration. Without any such bar being shown, the suit for injunction cannot be said to be a contravention of any statutory
rules. Equity rather rests with the plaintiff. It is not disputed that the patent of the defendants got registered without opposition from the plaintiff owing
to late publication of the Patent Journal. The same is rather found to be a violation of the statute and statutory Rules and should have been corrected
administratively also, by undoing the registration. Even though there is no presumption of validity of patent but the same is not relevant to
maintainability of the suit for infringement. The said factor is irrelevant to, whether the defendant itself is a patentee or otherwise. As far as reference
to availability of opportunity under the Patents Act to oppose grant is concerned, as aforesaid, it is not controverted that the plaintiff has been deprived
thereof.
24. The preliminary issue is thus decided in favour of the plaintiff and against the defendants.
