By Lucy Rana and B. Michael Shriney
Few procedural choices in patent litigation carry as much strategic weight as the one at the heart of this case. When a business is sued for infringing a patent it believes should never have been granted, how it mounts the challenge, by an independent revocation petition or by a counterclaim, shapes which court hears the dispute, how quickly, and at what cost. In a recent order, the Madras High Court confirmed that the Patents Act leaves that choice with the litigant, and that the choice cannot be narrowed by the opposing side.
The dispute
A patentee had sued for infringement before a District Court. The defendant did not file a counterclaim for revocation in that suit. Instead, it filed a separate, independent petition before the High Court seeking to revoke the patent, and applied to have the infringement suit transferred from the District Court to the High Court so that both could be heard together. The High Court ordered the transfer. The patentee then sought a review, arguing that because no counterclaim had been filed, the only available route to revocation was a counterclaim, and that transferring a suit in which no counterclaim existed was a material irregularity that wrongly ousted the District Court’s jurisdiction.
| SPEAK TO OUR PATENT LITIGATION TEAM Being sued on a patent you believe is invalid? The route you choose to challenge it has consequences that are difficult to reverse. Before you decide between an independent petition and a counterclaim, speak to our patent litigation team at info@ssrana.com. |
What the Court held
The Court dismissed the review. Its reasoning turned on the structure of Sections 64 and 104 of the Patents Act, 1970.
Section 64 entitles a person interested to seek revocation either by filing an independent revocation petition before the High Court, or by way of a counterclaim in a suit for infringement. The Court held that this is a statutory right of the litigant, and that it cannot be whittled down by forcing the litigant to proceed only by counterclaim. The choice of the mode of revocation belongs to the party seeking it.
Section 104 provides that an infringement suit is to be brought in a court no lower than the District Court, and its proviso directs that where a counterclaim for revocation is made in such a suit, the suit together with the counterclaim is to be transferred to the High Court. The reason, the Court explained, is that only the High Court has jurisdiction to decide the revocation of a patent; a District Court does not. On that logic, where a claim for revocation has been raised, the District Court is ousted of jurisdiction over that question and the suit must move to the High Court. The Court held that the power to transfer was available not only under the proviso to Section 104 but also under the Letters Patent applicable to it.
The Court distinguished the authorities the patentee relied on, in which transfer had been refused, on the basis that in those matters there had been no pleading of revocation at all. It also addressed the Supreme Court authority on the point: where a defendant has in fact filed a counterclaim for revocation, it cannot then pursue a separate revocation petition as well. That rule, the Court noted, operates where a counterclaim has been filed. It did not prevent a litigant who had chosen the independent-petition route from pursuing it, nor did it prevent the transfer of the pending suit to the High Court to be heard alongside that petition.
| SPEAK TO OUR PATENT LITIGATION TEAM Jurisdiction, transfer and the risk of being held to an election can decide a patent dispute before the merits are ever reached. Our team advises patentees and challengers on strategy across revocation and infringement. Write to us at info@ssrana.com. |
Why this matters
The order is a useful confirmation of a point that is easy to get wrong. A challenger is not confined to a counterclaim simply because it has been sued; it may bring an independent revocation petition before the High Court, and the infringement suit can then be drawn up to the High Court to be decided with it. That has immediate consequences. It affects which forum hears the whole dispute, the pace at which it moves, and the manner in which validity and infringement are decided together rather than in parallel tracks.
The choice is not free of risk. The settled position that a party which files a counterclaim for revocation cannot also run a separate petition means that the route a litigant selects can bind it. Selecting the wrong route, or raising revocation in the wrong form, can close off options or hand the opponent a jurisdictional argument. The right choice depends on the stage of the proceedings, where the suit was filed, the grounds of invalidity, and the litigant’s wider commercial objectives. These are precisely the questions on which experienced advice is decisive, and on which a misstep is difficult to undo.
Key Takeaways for Patent Litigants
- Section 64 preserves a litigant’s right to choose between an independent revocation petition and a counterclaim for revocation.
- The choice of procedure may determine the forum that ultimately decides the dispute.
- Patent validity and infringement are closely intertwined; resolving them before the same court can reduce the risk of inconsistent findings.
- Once a party elects one route, procedural consequences may follow, including restrictions on maintaining parallel revocation proceedings.
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