Code of Civil Procedure, 1908:
s.9 – Suit / Counter Claim – Adjudication – Procedure for – Suit seeking permanent injunction against defendants, restraining them from using their registered trade-mark in violation of the registered patent – Also sought temporary injunction by filing application u/Or. 39 rr. 1 and 2 of CPC – Defendants filed Written Statement as well as their Counter Claim seeking revocation of the patent u/s.64 of Patents Act – Single Judge of the High Court while deciding application for injunction observed that nature and extent of the patent claim was a matter to be examined after pleadings were complete and evidence adduced, which did not merit comments at the stage of interim injunction – Single Judge issued notice on the Counter Claim – Appeal by both the parties – Division Bench of High Court while allowing the Counter Claim of the defendants dismissed the claim of the plaintiffs as regards the patent – On appeal, held: Section 64 of Patents Act necessarily presupposes a valid consideration of the claims in the suit and the Counter Claim in accordance with law and not summary adjudication sans evidence, by abstract consideration – CPC provides a detailed procedure with regard to the manner in which a suit instituted u/s. 9, including Counter Claim has to be considered and adjudicated – Division Bench of High Court ought not to have examined the Counter Claim in a summary manner usurping the jurisdiction of Single Judge – Summary adjudication of a technically complex suit requiring expert evidence, that too at the stage of interim injunction, was neither desirable nor permissible – Division Bench ought to have confined itself to examination of the validity of the order of interim injunction – In the facts and circumstances of the case, nature of the injunction relief was in order and merits no interference during pendency of the suit – Matter remanded to Single Judge – Patents Act, 1970 – s. 3(j) and 64.
Disposing of the appeals, the Court
HELD: 1. Section 64 of the Patents Act provides for revocation of patent based on a counter claim in a suit. It necessarily presupposes a valid consideration of the claims in the suit and the counter claim in accordance with law and not summary adjudication sans evidence by abstract consideration based on text books only. The Civil Procedure Code provides a detailed procedure with regard to the manner in which a suit instituted under Section 9, including a counter claim has to be considered and adjudicated. The CPC mandates a procedure by settlement of issues, examination and cross-examination of witnesses by the parties, including discovery/inspection of documents, culminating in the hearing of the suit and decree. A suit can be disposed of at the initial stage, only on an admission inter alia under Order 12 Rule 6 of CPC or when the parties are not in issue under Order 16 Rule 1 and the other grounds. [Para 23][158-D-E]
2. The Division Bench of High Court ought not to have disposed of the suit in a summary manner by relying on documents only, extracted from the public domain, and not even filed as exhibits in the suit, much less examination of expert witnesses, in the facts of the present case. The issues raised were complicated requiring technological and expert evidence with regard to issues of chemical process, biochemical, biotechnical and micro-biological processes and more importantly whether the nucleic acid sequence trait once inserted could be removed from that variety or not and whether the patented DNA sequence was a plant or a part of a plant etc. are again all matters which were required to be considered at the final hearing of the suit. [Para 23][158-F-H]
Alka Gupta v. Narender Kumar Gupta (2010) 10 SCC
141 : [2010] 1 SCR 756 – relied on.
3. The Division Bench ought not to have examined the counter claim itself usurping the jurisdiction of the Single Judge to decide unpatentability of the process claims 1-24 also in the summary manner done. Summary adjudication of a technically complex suit requiring expert evidence also, at the stage of injunction in the manner done, was certainly neither desirable nor permissible in the law. The suit involved complicated mixed questions of law and facts with regard to patentability and exclusion of patent which could be examined in the suit on the basis of evidence. [Para 22][158-A-C]
4. The Division Bench ought to have confined itself to examination of the validity of the order of injunction granted by the Single Judge only. In the facts and circumstances of the case, the nature of the injunctive relief granted by the Single Judge was in order and merits no interference during the pendency of the suit. The order of the Single Judge dated 28.03.2017 is restored and the suit is remanded to the Single Judge for disposal in accordance with law. [Paras 25, 26][159-G; 160-A]
“Marker-Assisted Recurrent Backcrossing in Cultivar Development” by Guoyou et.al – referred to.
As published in the Supreme Court Reports, Supreme Court of India. Text from the Indian Supreme Court Judgments open data set (Dattam Labs), CC BY 4.0.
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