HC Clarifies: Patent Revocation Petition Not a 'Suit' and Unlikely for Stay under S. 10 CPC
In a recent case of Dr. Reddys Laboratories Limited & Anr. vs. The Controller of Patents & Ors. [C.O.(COMM.IPD-PAT) 3/2021], the Delhi High Court clarified that in the absence of any legal provision, a revocation petition under Section 64 of the Indian Patents Act cannot be considered a "suit" under the scope of Section 10 of the Indian Civil Procedure Code (Indian CPC) which prescribes the doctrine of res sub judice.
The present revocation petition was filed electronically on October 16, 2021, by Dr. Reddys (hereinafter “petitioner”), seeking the revocation of the patent IN 268846 ("IN’846"), which pertains to an anti-diabetic drug. Due to October 16 being a Court holiday, the Registry reviewed and officially registered the petition on October 21, 2021. The case was heard by the Court on October 22, 2021, when notice was issued for a return date of January 10, 2022.
On October 19, 2021, i.e. three days after the present revocation petition was electronically filed by the petitioner before the Delhi High Court, Boehringer (hereinafter “Respondent”) being the patentee of the patent IN’846 initiated a patent infringement suit alleging infringement of said patent. Subsequently, on October 20, 2021, the Respondent presented this infringement case before the High Court of Himachal Pradesh, securing an ex parte stay. Boehringer also filed another patent infringement suit on October 21, 2021, against the same petitioners, which was also met with a stay by the High Court of Himachal Pradesh on October 25, 2021.
Among other contentions, the Respondent contended that the issues in the ongoing revocation petition and the patent infringement suit were identical. It was pointed out that the petitioners' written statement in the infringement suit questioned the validity of the patent IN’846, which was also the basis for the revocation petition. Thus, it was contended that the revocation proceedings should be stayed until the outcome of the patent infringement suit was decided to avoid conflicting decisions.
Issue 1: What is the date of “institution” for an e-filed petition?
For the purpose of determining whether Section 10 of the Indian CPC was applicable to revocation petitions, the Hon’ble Court addressed the issue of whether the patent infringement suit had been instituted prior in point of time to the present revocation petition, as required by Section 10 of the Indian CPC.
With regard to the institution of the present petition, the Respondent contended that mere filing of the suit prior to registration would not constitute the “institution” of the suit as under Section 10 of the Indian CPC. It was argued that the suit would be deemed to be instituted, only where, after the plaint is filed and it is registered, the Court takes cognizance of the plaint, finding it to have passed preliminary scrutiny of the formal requirements under the Indian CPC. In the present case, as the petition was electronically filed on 16 October 2021, which happened to be a Court holiday, it was scrutinized by the Registry only on 21 October 2021, the next working day. Therefore, according to the Respondent, it could not, therefore, be said to have been instituted at any point of time prior to 21 October 2021.
The Petitioner contended that the date of institution of a suit is the date of its presentation. The Petitioner submitted that even if a suit as presented is found to be defective under the Indian CPC, once the defects are cured, the institution of the suit would date back to its original filing. As such, the petitioner submitted that the institution of the present revocation petition –assuming it, for the sake of arguments, to be a suit at all – would be 16 October 2021, and not either 21 October 2021 or 22 October 2021.
The Hon’ble Court opined that “Order IV Rule 1(1) of the CPC clearly states that every suit shall be instituted by presenting a plaint in duplicate to the Court or such officer as it appoints in this behalf. Presentation of a plaint to a competent officer authorised by the Court is, therefore, ipso facto institution of a suit within the meaning of the CPC”.
The Court clarified that while a suit is considered instituted upon presenting the plaint, the plaint must fulfil the formal requirements under the Indian CPC. If there is any defect in the suit, on curing or rectification of the defect, Order IV Rule 1(1) would come into play and the suit would stand duly instituted on the date when it was presented to the competent officer appointed by the Court.
The Court further clarified that even if it were to be assumed that a revocation petition can be treated as a suit, in the case of a revocation petition, quite clearly, institution would take place on the date when the revocation petition is presented to the competent officer.
With regard to the electronic filing of pleadings, the Court was of the view that the requirement for physically presenting petitions and pleadings at the Court's counter gives way to the provisions of E-filing and associated Practice Directions when litigants opt for electronic filing. This approach aligns well with the goal of encouraging electronic presentation of pleadings and cultivating a robust e-culture. Therefore, the Court asserted that electronic filing of pleadings, in accordance with the Practice Directions, would also constitute “presentation” thereof.
The Hon’ble Court opined that presentation of a petition, in the case of e-filing has necessarily to mean uploading the petition through the e-filing facility available and provided with this Court and in the present case, since the petition was apparently uploaded electronically by the petitioner at about 12:05 pm on 16 October 2021, it cannot but be held that the petition was filed and, therefore, “presented” under the Indian CPC on 16 October 2021.
Therefore, the Hon’ble Court held that the institution of the present revocation petition was prior in point of time to the institution of the infringement suit, by Respondent, before the High Court of Himachal Pradesh.
Issue 2: Is a revocation petition a “suit” for the purposes of Section 10 of the Indian CPC and consequently be stayed in view of an ongoing infringement proceeding between the same parties?
The Hon’ble Court observed that the Indian CPC does not define the expression “suit”, however an indirect definition of the expression was actually to be found in Order IV Rule 1(1) of the Indian CPC. The Court notes that “Order IV Rule 1(1) may, read differently, be understood as stipulating that a suit is a plaint which is presented to a Court or to the officer appointed by the Court in that behalf. Presentation of a plaint in the Court or to the duly appointed officer, therefore, brings into existence a “suit” within the meaning of the CPC”.
While addressing the question of what qualifies as a “suit”, the Hon’ble Court relied on various Supreme Court decisions, such as Patel Roadways Ltd. v. Birla Yamaha Ltd., and Ethopian Airlines v. Ganesh Narain Sahu and opined that “while the general definition understanding of the expression “suit” is of significance, much would turn on the statutory provision in which the expression is used and which comes up for consideration before the Court. In the case of Patel Roadways , as well as in Ethopian Airlines , the expression “suit” was to be understood not in the context of any provision in the CPC, but in the context of other statutes which used the expression”.
The Court observed that there’s no statutory provision that designates a revocation petition under Section 64 of the Indian Patents Act as a suit, and therefore this court could not treat it as such. The power to establish deeming fictions usually rests solely with the legislature. However, a Court cannot independently create a deeming fiction when the statute doesn't provide for it. Consequently, the Court held that since there was no provision that deems a revocation petition under Section 64 of the Indian Patents Act to be a suit, the court was not authorized, even for the sake of expediency, to pronounce it as such.
Therefore, the Hon’ble Court held that a revocation petition cannot be treated as a suit for the purposes of Section 10 of the Indian CPC.
Issue 3: Is a case for stay made out even on merits?
The Hon’ble Court relied on the case of Aspi Jal v. Khushroo Rustom Dadyburjor , where the Supreme Court laid down the circumstances in which Section 10 of the Indian CPC would apply:
“…but for application of Section 10 of the Code, the entire subject-matter of the two suits must be the same. This provision will not apply where a few of the matters in issue are common and will apply only when the entire subject-matter in controversy is same...”
Therefore, the Court asserted that only where there is complete equality of the issues in consideration and of the causes of action and the relief sought in two proceedings that the later proceeding can be stayed under Section 10 of the Indian CPC. The Court agreed with the contention of the petitioner that “there is a fundamental difference between a proceeding for revocation of a patent under Section 64 of the Patents Act and a civil suit by a patent holder, seeking injunction against infringement of the patent under Section 104 of the Patents Act. One fundamental difference between the two proceedings is that, if a revocation proceeding succeeds, the patent is effaced from the register of patents. On the other hand, insofar as an infringement suit is concerned, the challenge to the validity of a patent is only one of the defences which can be taken under Section 107(1)of the Patents Act as a ground against a charge of infringement, to avoid an injunction. Even if the ground is accepted, the patent does not stand extinguished. The only result is that the injunction sought would not be granted”.
Therefore, the Court found no substantial basis, even on the merits of the matter, to warrant the stay of the ongoing revocation petition while awaiting the resolution of the suit instituted in the High Court of Himachal Pradesh. Therefore, the present application made under Section 10 of the Indian CPC was dismissed.
In conclusion, the Hon’ble Court’s ruling establishes crucial distinctions between a revocation petition and a "suit," and reinforces the nuanced application of Section 10 of the Indian CPC. The Court’s stance that a legal proceeding cannot be deemed a "suit" unless specifically designated as such by statutory provisions reaffirms the principle that deeming fictions rest with the legislature and cannot be created by the Court in the absence of explicit statutory provisions.