Election of Remedy in Patent Revocation: Counter-claim/Defence in Infringement Suit Bars Parallel Standalone Revocation Petition
1) Introduction
The Madras High Court (N. Senthilkumar J.) decided a maintainability dispute arising from parallel proceedings concerning Indian Patent
No. IN 351954 titled “AN APPARATUS AND METHOD FOR PROCESSING A FOOD STUFF”.
Versuni Holding B.V. (trading as “Preethi”) had already instituted an infringement suit against Maya Appliances Private Limited in
C.S.(Comm) No.733 of 2023 before the Delhi High Court. In that suit, Maya filed a written statement seeking, inter alia,
findings of invalidity and revocation/striking-off of the patent.
While the Delhi infringement action was pending, Maya also filed a separate revocation petition before the Madras High Court
(OP(PT) No.1 of 2024). Versuni responded by filing (PT) A No. 3 of 2024 seeking dismissal of the revocation petition as
impermissible “forum shopping”, invoking the “election of remedies” principle under the Patents Act, 1970, and the Supreme Court’s
ruling in Alloys Wobben and Another v. Yogesh Mehra and Others.
The core issue was whether a defendant, having already invoked revocation/invalidity in the infringement suit, can simultaneously or
subsequently maintain a standalone revocation petition in another forum.
2) Summary of the Judgment
The Court allowed (PT) A No. 3 of 2024 and dismissed OP(PT) No.1 of 2024.
It held that once the defendant has exercised the available mechanism in the infringement suit (as pleaded in its written statement
seeking revocation as a counter-claim), it cannot re-agitate the same by filing a separate revocation petition before another High Court.
The Court characterised the Madras revocation proceeding as barred by the settled legal position and reflective of forum shopping.
3) Analysis
3.1 Precedents Cited
This was the principal authority relied on by Versuni. The Madras High Court extracted and applied paragraphs 23 and 26.
The Supreme Court held, in substance, that Section 64(1) provides alternative revocation routes separated by “or”, requiring an election:
a party cannot pursue multiple revocation remedies “for the same purpose” simultaneously. It further held that where an infringement suit
is filed first, the defendant’s proper route is to seek revocation by counter-claim in that suit; a later-filed revocation petition is
unsustainable, and the revocation issue must be decided within the counter-claim.
The Madras High Court treated Maya’s prayer in the Delhi written statement (seeking revocation/striking off from the register) as an
invocation of the revocation route in the infringement suit, thereby triggering the Alloys Wobben bar against a parallel standalone
revocation petition in Madras.
Maya relied on Macleods Pharmaceuticals Ltd. v. Controller of Patents and Another to argue that a standalone revocation petition
under Section 64 is maintainable notwithstanding the existence of an infringement suit where Section 107 defences are taken, emphasising:
(i) differing effects (revocation operating in rem vs a validity finding in an inter partes suit operating in personam), and
(ii) statutory “choice” to file a counter-claim or a standalone revocation petition.
The Madras High Court, however, concluded that the “settled proposition” (as reflected in the authorities) is that once the defence/remedy
is exercised in the infringement action, it cannot be re-agitated in another forum. On the facts, the Court distinguished the situation by
focusing on Maya’s own Delhi pleadings seeking revocation as a counter-claim and treated the Madras revocation filing as an impermissible
second bite at the same relief.
(c) Alloys Wobben v. Union of India & Ors. reported in MIPR 2011(2) 181 (as cited in the extract from the Thomas Reuters text)
The commentary relied upon (authored by Hon’ble Justice Prathiba M. Singh, per the judgment) reinforces the election principle:
a challenger must “sail only in one boat” and cannot pursue revocation in separate fora; if revocation is filed before infringement,
counter-claim would not lie; if infringement is filed first, revocation must be by counter-claim.
The Madras High Court’s conclusion aligns with this formulation.
(d) Dr. Reddys Laboratories Limited (Supra) (as referred to within the extracted portion of Macleods Pharmaceuticals)
Although not independently analysed by the Madras High Court, the extracted reference indicates that “person interested” can be triggered
by several circumstances, including the filing of an infringement suit. In the present case, Maya’s standing as an alleged infringer would
typically satisfy “person interested”; nonetheless, the dismissal turned not on standing but on procedural election and avoidance of
duplicative proceedings.
3.2 Legal Reasoning
(i) Statutory scheme: Sections 64 and 107
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Section 64 provides revocation avenues (petition by “any person interested”/Central Government; or by counter-claim in an
infringement suit).
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Section 107 allows every Section 64 ground as a defence in an infringement suit.
The Court read these provisions through the lens of Alloys Wobben and Another v. Yogesh Mehra and Others, emphasising election:
a defendant cannot simultaneously (or sequentially) invoke overlapping revocation reliefs in different fora once the revocation track has
been set in motion in the infringement suit.
(ii) Effect of pleadings in the Delhi infringement suit
The pivotal factual anchor was Maya’s written statement in Delhi containing prayers to (b) hold the patent invalid and (c) direct revocation
and strike-off from the register—language the Madras High Court treated as a “specific claim with regard to revocation of patent as a
counter-claim”. Having invoked that route, Maya could not maintain a separate Madras revocation petition.
Notably, Maya relied on procedural rules (Delhi High Court (Original Side) Rules, 2018 and the Delhi Gazette publication dated 24.02.2022
with regard High Court of Delhi Rules Governing Patent Suits, 2022) to highlight that revocation requires a separate counter-claim and that
written statement invalidity pleas are distinct. The Madras High Court did not accept this to preserve maintainability on its facts; it
instead treated the Delhi posture as sufficient “exercise” of the remedy, triggering the bar against parallel proceedings.
(iii) Forum shopping and finality
The Court characterised the Madras revocation filing as forum shopping: when infringement litigation is already seized of the dispute and
the defendant has invoked revocation/invalidity there, commencing a second revocation proceeding in another High Court undermines orderly
adjudication and invites inconsistent outcomes.
3.3 Impact
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Procedural discipline in patent litigation: Defendants must carefully choose where and how to pursue revocation. Once
revocation is sought within the infringement suit framework, a standalone revocation petition in another High Court is vulnerable to
dismissal.
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Anti-duplication principle: The ruling strengthens case-management norms by discouraging parallel validity attacks across
fora, particularly after patents jurisdiction has shifted to High Courts.
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Potential inter-court tension: The judgment may be seen as narrower than (or in tension with) the proposition extracted
from Macleods Pharmaceuticals Ltd. v. Controller of Patents and Another about an unfettered “choice”. Practically, parties should
expect courts to scrutinise the chronology and the extent to which revocation has already been invoked in the infringement suit.
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Drafting consequences: If pleadings in an infringement suit are framed as seeking revocation (even if disputed as to
whether a formal counter-claim exists), subsequent standalone revocation filings may be treated as barred. Litigants should align
pleadings with the chosen procedural vehicle in the relevant forum.
4) Complex Concepts Simplified
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Revocation petition vs counter-claim:
A revocation petition is a standalone proceeding to cancel a patent. A counter-claim is the defendant’s cross-suit inside an infringement
suit seeking revocation.
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Election of remedies:
Where the law offers alternative routes to the same ultimate relief, a party may be required to pick one and not pursue multiple routes
in parallel, to prevent inconsistent decisions and abuse of process.
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In personam vs in rem:
A finding in an inter partes suit binds only the parties (in personam). Revocation cancels the patent against the world
(in rem), removing it from the register.
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Forum shopping:
Choosing multiple courts strategically for the same dispute to gain advantage; courts often discourage it to preserve fairness and
consistency.
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Gillette defence:
A common patent defence broadly stating: “what I do is old or obvious; therefore, either I don’t infringe or the patent is invalid.”
(The term was invoked in argument, but the decision ultimately turned on maintainability/election rather than technical validity.)
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Res judicata (as referenced through Alloys Wobben):
A principle that prevents re-litigation of issues that are (or should be) decided in an earlier proceeding between the parties; here,
used conceptually to prevent duplicative validity challenges once the proper forum is seized.
5) Conclusion
The Madras High Court’s decision establishes a clear procedural takeaway: where a patent infringement suit is already pending and the
defendant has invoked revocation/invalidity within that suit’s framework (as treated here through the pleaded counter-claim relief),
the defendant cannot maintain a parallel standalone revocation petition in another High Court. Anchored in
Alloys Wobben and Another v. Yogesh Mehra and Others, the ruling reinforces election of remedies, curbs forum shopping, and promotes
consolidated adjudication of infringement and validity disputes in the same proceeding.