Enercon’s patent litigation

1. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
ENERCON’S PATENT LITIGATION
MULTIPLICITY OF PROCEEDINGS
IN PATENT DISPUTES
P.ILANANGAI
IP CONSULTANT
PATENT DEPARTMENT

2. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
INTRODUCTION:
• Patent disputes in India often involve multiple proceedings in
different jurisdictions.
• A single patent may form the subject matter of pre-grant or post
grant opposition proceedings before the Controller, revocation
proceedings before the Intellectual Property Appellate Board (IPAB),
patent infringement suit filed by the patent holder in a district court
and a counter claim filed by the defendant before the High Court,
seeking revocation of the patent.
contd…
ENERCON’S PATENT LITIGATION

3. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
• The stake holders usually involve in multiple patent challenges
resulting in enormous wastage of resources.
• In one such case Enercon vs Yogesh Mehra, the Supreme Court
of India has rationalized the procedure for revocation of patents
in India by delivering a judgement that bars opponents from
challenging the validity of patents before multiple forums
simultaneously.
• It has held that revocation of a patent can be sought either by
filing a revocation petition before the IPAB or by filing a
counter claim in a patent infringement suit before the High
Court – the opponent cannot exercise both the options.
ENERCON’S PATENT LITIGATION

4. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
LEGAL CONTEXT:
• Under the Patents Act, 1970, the validity of a patent may be
challenged in the following manner:
1. Through a pre-grant opposition under Section 25(1). Under
Section 25(1) of the Indian Patent Act, ‘any person’ can file a
pre-grant opposition. This is to be done before the grant of the
patent.
• Once the patent is granted, there are two options:
2. Through a post-grant opposition under Section 25(2). Under
Section 25(2), a ‘person interested’ can file a post grant
opposition within a year of the grant of the patent.
contd..
ENERCON’S PATENT LITIGATION

5. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
ENERCON’S PATENT LITIGATION
3. Under Section 64, a ‘person interested’ can initiate revocation
proceedings any time during the lifetime of the patent, there are two
options:
3a. Revocation petition filed before IPAB under Section
64(1)
3b. A counter claim before the High Court filed in a suit
for infringement of the patent. In this case, only High Courts
and above have the jurisdiction.
FACTS OF THE CASE:
• Dr. Alloys Wobben (“Appellant”) is a scientist engineer and founder
of Enercon GmBH, a German company involved in wind turbine
manufacturing. Dr. Wobben holds Indian patents for several inventions
in the field of wind turbine generators and wind energy converters.

6. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
ENERCON’S PATENT LITIGATION
• In India, he had a joint venture partnership with M/s Yogesh Mehra and Ajay
Mehra (“Respondents”) through a joint venture company called Enercon India
Limited (“EIL”), formed in 1994.
• The licences to use the technical know-how were granted by Enercon GmBH
through written intellectual property licence agreements with EIL. However, the
last license agreement dated September 29, 2006 was terminated by the Appellant
on December 8, 2008, due to non-fulfillment of obligations by the Respondents.
• The Appellant contended that even after the termination of the agreements, the
Respondents continued to use the patents, without any authority.
contd…

7. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
ENERCON’S PATENT LITIGATION
• This gave rise to a dispute between the two parties.
• In 2009, EIL filed nineteen revocation petitions before the IPAB
seeking revocation of Dr. Wobben’s (“Appellant”) Indian Patents
under Section 64(1) of the Patents Act, 1970.
• Thereafter, Dr. Wobben (“Appellant”) in retaliation filed ten patent
infringement suits before the Delhi High Court against EIL
(“Respondents”). Post filing of infringement suits, EIL
(“Respondents”) further filed four revocation petitions before the
IPAB. Thus, a total of twenty three revocation petitions were filed
by EIL (“Respondents”) before the IPAB.
contd…..

8. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
ENERCON’S PATENT LITIGATION
• In response to the patent infringement suit, EIL (“Respondents”) filed counter
claim seeking revocation of patents before the Delhi High Court. The prayers in
the revocation petition before the IPAB and the counter claim were same.
• The question which arose was which of the two forums (IPAB or the High
Court), should continue with the revocation proceedings.
• Although the High Court had passed a consent order whereby all patent disputes
were to be consolidated before the High Court, yet the Respondents continued
to pursue the revocation petitions before the IPAB.
• Eventually, the litigation reached the Supreme Court for determination of the
correct course of action to be followed by the Respondents.
• The Supreme Court first interpreted the provisions of the Act and then looked at
parallel legislations like the Civil Procedure Code and the Trademarks Act, 1999
to find an answer to the above issue.

9. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
ENERCON’S PATENT LITIGATION
CONTENTIONS:
• The Appellant raised the following points before the Supreme Court:
According to Section 64 (1) of the Act either a counterclaim or a revocation
petition can be filed challenging the validity of the patent and both of them
cannot be perused simultaneously. This is very clear from the reading of
Section 64 (1) of the Act wherein the word “or” is used and this has to be
given disjunctive reading and not a conjunctive reading. If such an
interpretation is not given it will result in conflicting findings in a
revocation petition and a counter claim.
Section 64 (1) of the Act reads as under:
• Subject to the provisions contained in this Act, a patent, whether granted
before or after the commencement of this Act, may, b e revoked on a petition
of any person interested or of the Central Government by the Appellate
Board or on a counterclaim in a suit for infringement of the patent b y the
High Court on any of the following ground

10. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
ENERCON’S PATENT LITIGATION
JUDGEMENT :
• The Supreme Court held that the remedies available under Section 64, i.e., a) by
way of a revocation proceeding before the IPAB and b) by way of a counter-
claim in an infringement suit before a High Court were not conjunctive and the
applicant has to make a choice between the two remedies.
• The Court stated that the use of the word “or” in Section 64 of the Indian Patent
Act clearly demonstrated that the that the liberty granted to ‘any person
interested’ to file a “revocation petition”, to challenge the grant of a patent to an
individual, cannot be adopted simultaneously by the same individual, in a suit
for infringement.
• The Court agreed with the appellant’s arguments that even though a plurality of
remedies are available to the respondents under Section 64 of the Indian Patent
Act, the word “or” used therein, separating the different remedies, barred the
respondents from availing both the remedies, for the same purpose,
simultaneously.

11. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
ENERCON’S PATENT LITIGATION
• The Court also noted that the opening words of Section 64 are “Subject to the
provisions contained in this Act”, which, according to the Court, basically meant that
the provisions contained in Section 64 are subservient to other provisions of the
Indian Patent Act. Therefore, if any proceeding has been initiated by “a person
interested”, under Section 25(2), the same will eclipse the right of the same person to
file a revocation petition under Section 64 or to file a counter-claim, to seek the
revocation of a patent, in response to a patent infringement suit.
• The Court ruled that in case both the forums, i.e., the IPAB for revocation proceedings
and the High Court for a counter-claim, have already been approached, then the
following rules applied:
 if a revocation petition is filed before the filing of a counter-claim in an
infringement suit, the defendant will be barred from seeking revocation of the
patent in the infringement suit through a counter-claim;
 if revocation of a patent has already been sought in an infringement suit
through a counter-claim, the defendant will not be able to file a revocation
petition before the IPAB.
contd…..

12. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
ENERCON’S PATENT LITIGATION
• The Court, in absence of any clear answers or guidelines in the Indian Patent Act, based its
reasoning on settled principles of law. According to the Court a counter-claim is essentially
a suit filed by the defendant and for all intents and purposes has to be treated like a
plaintiff. Since a counter-claim is an independent suit, it cannot be allowed to proceed,
where the defendant has already initiated action in another forum, on the same cause of
action as per Sections 10 and 151 of the Civil Procedure Code.
Section 10 of CPC Stay of suit:
• No Court shall proceed with the trial of any suit in which the matter in issue is also directly
and substantially in issue in a previously instituted suit between the same parties, or
between parties under whom they or any of them claim litigating under the same title where
such suit is pending in the same or any other Court in India having jurisdiction to grant the
relief claimed, or in any Court beyond the limits of India established or continued by the
Central Government and having like jurisdiction, or before the Supreme Court.
Section 151 of CPC:
• Saving of inherent powers of Court: - Nothing in this Code shall b e deemed to limit or
otherwise affect the inherent power of the Court to make such orders as may b e necessary
for the ends of justice or to prevent abuse of the process of the Court.”

13. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com
CONCLUSION
• The Supreme Court's judgment on streamlining the judicial proceedings of patent
cases clearly mandates that if a revocation petition is filed before an infringement suit,
the petitioner would be disentitled in law from seeking the revocation of the patent
through a counter-claim. Given the unique nature of patent rights and the flexibilities
of common law, the judgment subtly lays a clear path for patent litigation, so as to
avoid multiplicity of litigation and answers several questions regarding proper use of
forum for litigation.

14. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com