Patent Revocation Through Counterclaims: Trends And Practices In India

We at Khurana & Khurana, have received numerous queries regarding the filing of counterclaims to evoke revocation of patents in India. To address the same, Utkarsh Mishra & Abhijeet, our interns have analyzed a few exemplary judgments to make the trend and the position clear with respect to such revocations. It is pertinent to mention here that all the grounds available to challenge the validity of the patent are available as defense against an infringement action. For this reason, it’s observed that a Defendant alleged to be infringing on a Plaintiff’s patent, usually resorts to the grounds mentioned under section 64 to revoke the plaintiff’s patent. It should also be noted that section 64 does not restrict grounds to be used in revocation to only those provided in section 64, but also considers the grounds for post-grant opposition as mentioned in section 25(2). The table below discusses a few exemplary cases in which revocation was pleaded by way of counter-claim or appeal and the grounds laid down by the Courts in adjudicating revocation petitions.

S.No. Name of the Case Court Decision Ground(s) Judgment/Order
1
Dhanpat Seth and Ors. Vs. Nilkamal Plastic Ltd, IN THE HIGH COURT OF HIMACHAL PRADESH AT SHIMLA, Civil Suit No. 69 of 2005 and Counter Claim No. 20 of 2006
Himachal Pradesh HC
Revocation Granted
The revocation was granted on the Ground that “Kilta” a device used for the purpose of storage or collection of agricultural produce does not qualify as an invention as it does not include any “inventive step” and as a result does not lead to any technological advancement or any economic significance. It was held by the Hon’ble Court that mere replacement or substitution, of, the patented product, reinforcingly, does not either add or enhance, the traditional knowledge, with, respect to manufacturing of Kilta. The “Kilta” which was patented by the plaintiffs’ was a traditional knowledge, which the plaintiffs’ have converted into a new form without any enhancement in its efficacy.
2
Nuziveedu Seeds Ltd . and Ors . vs . Monsanto Technology LLC and Ors . ( 11 . 04 . 2018 – DELHC )
Delhi HC
Revocation Granted
The revocation was granted by the Hon’ble Court by relying on Section 3(j) of the Patents Act, 1970 and the observation to that effect which stated that considering the nature of the invention, it should be protected under Plant Variety Act and not under the Patent Act.
3
UPL Limited v. Pradeep Sharma and Ors.  (21.02.2018 – DELHC)
Delhi HC
Revocation Not Granted
The Revocation was not granted in this case and the Delhi High Court observed that the Defendant’s product is very similar to the product of the Plaintiff except that it does not contain the stabilizing agent and the Court after analyzing the facts, evidence and circumstances held that the balance of convenience lies in favour of the plaintiff and restrained the defendants’ to indulge in any activity which infringes the plaintiff’s registered Patent.
4
Merck Sharp and Dohme Corp. and Ors. Vinod Jadhav and Ors., CS(OS) 3132/2014, CC 71/2015, I.A. 20105/2014 and 14072/2015
Delhi HC
Revocation Not Granted
The revocation was not granted in this case by virtue of a decree granted in favour of Plaintiff in Merck Sharp & Dohme & Anr. v Glenmark Pharmaceuticals Ltd. CS(OS) 586/201 because of which a certificate of validity under section 113 of the Patents Act, 1970 was issued. The Hon’ble Court relied on this certificate and held that the balance of convenience is in favour of plaintiffs.
5
K. Manivannan vs. The Chairman Intellectual Property Appellate Board and Ors. (18.08.2017 – MADHC) : W.P. No. 11951 of 2011
Madras HC
Revocation Not Granted
Revocation was not granted by the Madras High Court  as it observed that mere abandoning the application as per section 21(1) and the same being not in public domain, would not constitute prior publication. Hence, the writ petition was dismissed.
6
Monsanto Technology LLC and Ors. vs. Nuziveedu Seeds Limited and Ors. (28.03.2017 – DELHC): CS (Comm.) 132/2016 and IA Nos. 2406, 9070 and 4277/2016
Delhi  HC
Revocation Not Granted
The revocation was not granted as the Court observed that the counter-claim is not based on conflict of suit patent with the scheme of Plant Varieties Act. The Court also observed that the question whether the suit patent is liable to be revoked under section 64 of the Indian Patents Act which would be addressed only after the pleadings are complete and evidence is adduced.
7
G. Srinivasan vs. Voltamp Transformers Limited and Ors. (14.02.2017 – MADHC): C.S. No. 373 of 2012
Madras HC
Revocation Granted
The revocation was granted as the Plaintiff had failed to establish that his invention has been commercially exploited from the inception. The Court recorded “Mere obtaining patent, without commercially exploiting the same, itself will not be a ground to prevent others from doing the same business. If such scenario is allowed by this Court, it would lead to serious consequences and also affect the development of the economy and new inventions.” The counter-claim is allowed and the Patent stands revoked.
8
Telefonaktiebolaget LM Ericsson (PUBL) vs. Competition Commission of India and Ors.: W.P.(C) 464/2014, CM Nos. 911/2014 and 915/2014, W.P.(C) 1006/2014, CM Nos. 2037/2014 and 2040/2014
Delhi  HC
Revocation Not Granted
The revocation was not granted as the Court observed that Ericsson patents are valid and they are corresponding patents in other countries. The defendant has infringed the same. It was also observed by the Court that on one hand, the defendant gave the impression to plaintiff that it wanted to obtain a license for plaintiff essential patents which were being used by it in various telecommunication devices being imported and sold by defendant in India, and on the other hand it filed complaint/information before CCI and revocation petition before the IPAB. The said conduct of the defendant shows there was no bonafide intention on part of the defendant. The Court observed that if there has been FRAND agreement executed between the parties after the negotiations, the question is whether the defendant still would have challenged the suit patents in the same ground by the filing of revocation petitions. The answer is obviously ‘No’. The defendant is blowing both hot and cold.
9
F. Hoffmann-La Roche Ltd. and Ors. vs.  Cipla Ltd. (27.11.2015 – DELHC): RFA (OS) 92/2012 and 103/2012
Delhi  HC
Revocation Not Granted
The revocation was not granted by the Court as it observed that the process claims for making Polymorph B in DEL ‘507 has matured into Patent No. 231102 and only the product claims pertaining to Polymorph B were refused. The Court also observed that the objective of Section 3(d) of the Patents Act, 1970 is to distinguish as to what would constitute as “new” and what would constitute as “same or known”. Derivatives of a Patented product is also protected by such patent. Polymorph B cannot be qualified as “new” and should, therefore, be regarded as the old product itself. The Court held that Cipla has infringed the Patent of Roche and directed Cipla for the rendition of accounts and imposed a cost of Rs. 500,000, but considering the life of patent didn’t grant an injunction.
10
Merck Sharp and Dohme Corporation and Ors. vs. Glenmark Pharmaceuticals Ltd. (07.10.2015 – DELHC): CS(OS) 586/2013, CC No. 46/2013, I.A. Nos. 9827/2013, 8048/2014 and 13626/2015
Delhi  HC
Revocation Not Granted
The revocation was not granted by the Court as it observed that Sitagliptin is the molecule with therapeutic utility whereas Sitagliptin Monohydrate is efficient over Sitagliptin Free Base. The provisions under Section 64 of the Patents Act make it clear that it is not mandatory for the court to revoke the patent merely because any of the grounds mentioned in Section 64(1) are made out. It is the discretion of the court to revoke or not to revoke in the given facts and circumstances of a case. The word “may” used in Section 64(1) of the Act makes it clear that it is the discretion of the Court to revoke the patent under this provision if any of the ground(s) stipulated therein are disclosed or made out and “may” cannot be read as “shall” as contended by the defendant. The Court granted Permanent Injunction against the defendants.
11
Bristol-Myers Squibb Company and Ors. vs. J.D. Joshi and Ors. (29.06.2015 – DELHC): I.A. No. 15720/2009 in CS(OS) No. 2303/2009 and I.A. No. 5910/2013 in CS(OS) No. 679/2013
Delhi  HC
Revocation Not Granted
Revocation was not granted by the Court as it held that mere stray references in the written submissions by enlisting the number of the patents in an itemised manner do not imply that there exists a violation of the provisions of Section 8 of the Act which otherwise lies in the discretion of the Court to accept such challenge or not in the end. Therefore, for prima facie purposes, the said objection of the defendant (counterclaim for revocation) was also without any substance and was not considered to be vital enough to doubt the validity of the patent. There were no positive details produced by the defendants by raising such a plea. The said objection is an afterthought. It was not raised in the first written statement specifically. The injunction granted shall be applicable.
12
Rajesh Kumar Banka vs . The Union of India and Ors . ( 12 . 11 . 2014 – CALHC )
Calcutta HC
Appeal, Revocation Cancelled
Revocation, in this case, was cancelled as the Court observed that the order of the IPAB revoking the patent is erroneous and has failed to decide reasonably on the materials disclosed before it. The Court observed that the Board did not find that a proper search for worldwide patents with regard to similar invention was not made by the Indian Patent Office and the Board has tried to make a comparison of the components, properties and functions of the devices of the petitioner and the American Patent, which in the opinion of the Court is not the proper course. The Court also observed that a party who alleges that the patent of another should be revoked on the ground of lack of novelty, inventive step etc. could not have asked the same authorities to grant a patent to them of the same product.
13
Sukesh Behl vs . Koninklijke Philips Electronics ( 07 . 11 . 2014 – DELHC )
Delhi HC
Revocation Not Granted
The revocation was not granted in this case as the Court held that the vital information required to be disclosed under section 64(1)(m) relating to foreign applications for the patent was not disclosed by the Plaintiffs’ and that such non-disclosure cannot be said to be willful or deliberate. Hence, it raises triable issues.
14
Koninklijke Philips Electronics N.V. vs. Sukesh Behl and Ors. (06.11.2013 – DELHC): CS (OS) No. 2206 of 2012
Delhi HC
Revocation Not Granted
Revocation was not granted in this case as the Court observed that such non-disclosure of information (Information to Controller of Patent u/s 8, failure of which would attract revocation u/s 64(1)(m) ) cannot be said to be deliberate and willful and the Court cannot form definitive opinion on the same. The Court directed the matter to go to trial where the correct ascertainment of such information would be done.
15
Low Heat Driers (P) Ltd. vs. Biju George and Anr. (17.05.2010 – KERHC): O.S. No. 3 of 1999
Kerela HC
Revocation Not Granted
The revocation was not granted by the Court as it observed that the ribbed rubber sheet drier manufactured and sold by the plaintiff company is the product of an invention which is not only useful but also distinctive. None of the grounds under section 64 of the Act is attracted so as to come to a finding that no patent could be granted in respect of the plaintiff’s drier. Hence, the counter-claim by the defendants seeking revocation of Ext.A10 patent is misconceived. The said counter-claim has also become infructuous since Ext.A10 patent was granted for a period of 14 years from 31-5-1990. The said term of the patent expired on 31-5-2004 by the operation of Sec. 53 of the Act.
16
Atlas Metal Processors Pvt., Ltd. & Others Versus H.K. International rep.by its sole proprietor H. Narendra & Others C.S. No. 546 of 2009 26 April 2012
Madras HC
Revocation Not Granted
The revocation was not granted by the Court as it upon examining the evidence placed on record (no grounds met for the revocation of patent u/s 64) by the plaintiffs’ concluded and injuncted the defendants for using the plaintiffs’ patent and the counter -claim by the defendant was dismissed.
17
Natural Remedies Private Limited Bangalore. Indian Herbs Research & Supply Co Ltd, O.S.NO.1 OF 2004 09 December 2011
Karnataka HC
Revocation Granted
The revocation was granted and the Court observed that all the four herbs used by the plaintiff in preparation of Zigbir are found commonly all over India. All of them are well known for a particular curative effect. These four herbs are admittedly used in the manufacture of Livoliv-Classic at an undisputed point of time. The main embodiment of the invention lies in the herbal composition being synergistically effective in curing the ailments of the liver. There is no inventive step involved either in the preparation or composition. In the specification what is given is the herbal composition as well as the process for the preparation of the herbal composition. However, nothing is stated about synergy in the process of preparation of the composition. It is a case of admixture. The two products are not identical. The composition of the two products is also not similar/identical. Therefore, the grounds for revocation of patent as contained in Section 64 (1) (b), (e) and (f) and clause (h) are made out. So, the patent was revoked on account of being obtained by misrepresentation and lack of inventive step in the process of manufacture.
18
Indian Network for People living with HIV/AIDS, V. Union of India, [2009] 3 MLJ 791, 2009 1 LW 41
Madras HC
Revocation Granted
The revocation was granted by the Court as it observed that the Controller has not given the petitioner any chance of hearing even though the petitioner admittedly requested for the same and the patent was granted to the Respondent no.4 without any representation on the part of the petitioner. The Court observed that section 77 of the Patent Act would apply to all proceedings be it pre or post-grant. The 2005 amendment in the Patent Act gives the right to object at the pre-grant stage. The Court set aside the patent granted to the respondent no.4 on the ground that the pre-grant representation was not granted to the Petitioner under section 25(1)(k) of the Indian Patents (Amendment) Act read with Rule 55(6) of the said rules.
19
Ajay Industrial Corporation v.Shiro Kanao of Ibaraki City, AIR 1983 Del 496, 1983 (3) PTC 245
Delhi HC
Revocation Granted
The revocation was granted by the Court as it observed after going through the articles of the said patent that they only depict the basic and general nature of the invention. The Court also observed that Claim 1 and the preamble given by the Respondent to these claims clearly show that the use of two plastics for the manufacture of hosepipes was well known even earlier. It further observed that the Respondent has duplicated the existing known process and no inventive steps are involved. The Court also observed that just because the patent is registered doesn’t preclude it from being revoked and the evidence on record shows the Hence, the patent was revoked.
20
Raj Parkash Versus Mangat Ram Chowdhry, AIR 1978 Delhi 1,
Delhi HC
Revocation Not Granted
The revocation was not granted as the Court observed that admissions and discussion of evidence were not able to prove the pri publication and no utility of the said patent during the trial process.
21
Ram Narain Kher Vs. Ambassador Industries New Delhi, AIR 1976 Delhi 87
Delhi HC
Revocation Not Granted
Revocation was not granted as the Court observed that it is equally true that even when the invention “was not itself new” but “the Particular use of it for the purpose described in combination with the other elements of the system, and producing the advantageous results”, would be a sufficient element of novelty to support the patent. The Court upheld the contention on behalf of the plaintiff that the claim when reading as a whole does disclose an improvement over the already existing coolers.
22
Venkatraman Das Versus M/s. Vns Innovations Pvt. Limited & Others, 2014 2 LW 874
Madras HC
Revocation Granted
The revocation was granted as the Court observed that the plaintiff was merely camouflaging a product whose discovery was known throughout the world and trying to enfold it in their specification. The period of the patent is already over and the claim of the plaintiff has become infructuous and should be thus revoked. The damages for the counterclaim was not allowed.

From the analysis of the above cases, it is easy to comprehend the practices by the Courts in dealing with revocation cases. Revocation is granted if the invention does not qualify as an invention and does not include any inventive step or if it does not lead to any technological advancement or economic significance. It is evident from the study of the above cases that a mere replacement or substitution in an invention, process or traditional knowledge which does not enhance its efficacy should not be granted, and if granted, is liable to be revoked. Revocation of a patent can also be granted if the particular IPR is not registered under the statute meant for such IPR or is registered under some other IPR statute as in the case of Nuziveedu seeds Case. A Patent can also be revoked if the Plaintiff fails to establish that his invention has been commercially exploited from the inception. Such practices where the patent has not been exploited from its inception are detrimental to the development of the country and economy. Revocation of a patent can also granted if it is obtained through misrepresentation or if there is a procedural defect in carrying out the process of pre-grant and post-grant of the patent in violation of section 25(1)(k) of the Patent Act, 1970.  A mere camouflaging of a product which was known to the world and recording it in the specification of the invention would be a ground for the revocation of the patent. A Patent just because it is registered doesn’t preclude it from being revoked. A patent can also be revoked in public interest if it is mischievous to the state or prejudicial to the public as in the case of Avesthagen (Patent No. 252093).

In the above table, there are numerous cases in which revocation was not granted by the Courts. Revocation is not granted if a certificate of validity under section 113 of the Patent Act, 1970 is issued in favour of the plaintiff in an earlier case. A mere abandoning of the application as per section 21(1) would not constitute prior publication and would to be a ground for the revocation of a patent. Failure to disclose information with regard to foreign applications as mandated by section 64(1)(m) would not be a ground for the revocation of patent as it raises triable issues. The Derivative of a patent is also protected by such a patent and a revocation on account of ‘evergreening’ cannot be granted for such patents. Revocation of a patent cannot be granted if the said patent in a combination of other elements of the system produces advantageous results and such improvement is undisputed. It is evident from the analysis of the above cases that the provisions under Section 64 of the Patents Act make it clear that it is not mandatory for the court to revoke a patent merely on the grounds mentioned in Section 64(1). It is the discretion of the court to revoke or not to revoke the patent in the given facts and circumstances of a case. The word “may” used in Section 64(1) of the Act makes it clear that it is the discretion of the Court to revoke the patent under this provision if any of the ground(s) stipulated therein are disclosed or made out and “may” cannot be read as “shall”. In the case of Enercon (India) Ltd and Ors. v Enercon Gmbh[1] it was laid down by the Supreme Court that when the post-grant opposition proceedings are instituted by a party, he cannot institute a revocation petition or counter-claim of revocation proceeding against the same patent.

Conclusion: The above case laws clearly depict the trends and practices with regard to patent revocation in India. India endeavours to create an IP conducive business environment for all the enterprises. In Order to give effect to it, it is important to overhaul the Indian Patent regime by numerous measures and activities, one of them being by revoking patents which qualify the grounds for revocation and to maintain integrity and discipline with regard to IP rights in India.

Author: Utkarsh Kumar Mishra, LLB student from, Amity Law School, Noida Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at niharika@khuranaandkhurana.com.

References:
[1] (2014) 5 SCC 1

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