Whether the petitioner can avail remedy under Section 64 and filing counter claim in infringement suit simultaneously.
A writ petition has been filed by the petitioner to quash and set aside order dated 06.01.2020, transfer the pending suit along with the application to this Honourable Court with immediate effect. The main issue was the revocation of a patent held by the Respondent.
SUBMISSION BY PLAINTIFF
The petitioner submitted that the respondent-plaintiff have filed a suit for infringement of the patent, which is pending before the Commercial Court.
According to proviso of Section 104 the court below has no right to try the suit.
Petitioner further submitted that they have also filed the counter claim in the suit; therefore, the court below should have transferred the suit to High Court for adjudication of issue involved in the suit.
SUBMISSION BY RESPONDENTS
The respondent-plaintiff relied upon Section 64 and submitted that the petitioner has already filed a revocation petition before the ‘Intellectual Property Appellate Board’ prior to filing of the counter claim before the Commercial Court. Therefore, the petitioner cannot simultaneously avail two remedies as per Section 64 and can avail remedy either before the Appellate Board or pursue counter claim in the suit for infringement of the Patent filed by the respondent-plaintiff.
Court opined that according to Section 64, the petitioner can avail only one remedy at a time either before the Appellate Board or before the Commercial Court and in the present matter the petitioner prior to filing of the counterclaim also approached to the Appellate Board, therefore, there is no prima-facie case is made out in favour of the petitioner.
Therefore, the application seeking stay and petition was dismissed.
Copy of judgement:
Citation S.B. Civil Writ Petition No. 19396/2019