Summary dismissal and plaint rejection cannot be granted when subsequent patent revocation orders are prima facie consequential.

In brief

The question

1. Whether the subsequent orders of revocation were independent or consequential to the First Order which was set aside.

The court held

The Court dismissed all Notices of Motion, holding that the Plaintiff’s claim of valid and subsisting patents raises triable issues

It also directed

The Court directly held that a case for summary dismissal under Order XIII-A or rejection under Order VII Rule 11 was not made out as the subsequent revocation orders appeared consequential and were never enforced by the authorities

The Defendants were ordered to pay costs of Rs. 1,00,000/- for misusing the provisions of the Commercial Courts Act to obstruct the trial

The suits were directed to proceed to trial

01Facts

The Plaintiff filed suits for infringement of two patents: "Improved laser marking and engraving machine" and "Process of manufacturing engraved design articles on metals or non-metals"

¶ 1

The Intellectual Property Appellate Board (IPAB) revoked these patents on 12th June 2012 ("First Order")

¶ 3(i)

The Plaintiff challenged this before the Madras High Court, which stayed the First Order

¶ 3(ii)

Subsequently, the IPAB passed two more orders on 14th March 2013 and 7th March 2014 ("subsequent orders") allowing other revocation applications based on the First Order

¶ 3(iii)

On 3rd September 2015, the Bombay High Court set aside the First Order and remanded the matter to the IPAB

¶ 3(v)

Despite the subsequent orders, the Patent Office continued to accept renewal fees and listed the patents as "in force" on the e-Register

¶ 3(vi)

The Defendants filed Notices of Motion seeking summary dismissal under Order XIII-A of the CPC and rejection of the plaint under Order VII Rule 11, arguing the patents stood revoked by the unchallenged subsequent orders

¶ 2, 4

02Issues

i.1. Whether the subsequent orders of revocation were independent or consequential to the First Order which was set aside.

¶ 32(A)

ii.2. Whether the Defendants are entitled to a summary judgment under Order XIII-A of the CPC on the ground that the Plaintiff has no real prospect of success.

¶ 2, 32(F)

iii.3. Whether the Plaint is liable to be rejected under Order VII Rule 11 of the CPC for lack of cause of action or suppression of material facts.

¶ 2, 32(J)

03Law Applied

the court applied the "principle of consequential orders" established in Badrinath v. Government of Tamil Nadu, which holds that if a primary order is set aside, intermediate actions based solely on that order fall to the ground

¶ 21

For summary judgment, the court applied Order XIII-A of the CPC, which requires the applicant to prove the opponent has "no real prospect of success" and there are no "compelling reasons" for a trial

¶ 28, 32(F)

Regarding rejection of the plaint, the court followed Order VII Rule 11 of the CPC and precedents like Dahiben v. Arvindbhai Kalyanji Bhanusali, emphasizing that the court must only look at the averments within the Plaint to determine if a cause of action exists

¶ 17, 31

It further applied Section 35 of the CPC (as amended by the Commercial Courts Act, 2015) regarding the awarding of costs

¶ 32(K)

Provisions in the judgment · 4 · Linked ones open on LawLens

Code of Civil Procedure, 1908 Section 35

Patents Act, 1970 Section 67 Section 71

Commercial Courts Act, 2015 Section 16

04Reasoning

The Court found that the subsequent revocation orders were explicitly based on the First Order and lacked independent reasoning

¶ 32(A)-(B)

Under the Badrinath doctrine, since the First Order was set aside by the High Court, the foundational basis for the subsequent orders was effaced

¶ 32(B)

The Court observed that the Patent Controller continued to treat the patents as "in force" and accepted renewal fees, indicating the revocation was never effectively communicated or acted upon under Section 117D(2) of the Patents Act

¶ 32(C)-(D)

Regarding Order XIII-A, the Court held that since the Patent Office itself maintained the patents as valid in various legal proceedings, the Plaintiff had a "real prospect" of success, and the issues (such as the legal effect of the stay orders) constituted triable questions

¶ 32(F), (I)

On Order VII Rule 11, the Court ruled that the Defendants' plea relied on "looking beyond the Plaint" to external documents (the subsequent orders), which is impermissible at the rejection stage; furthermore, the allegation of suppression is a matter of evidence

¶ 30, 32(J)

The Court concluded the motions were a "shot in the dark" to delay proceedings

¶ 32(E), (G)