The Delhi High Court in a recent judgment in Dr. Reddys Laboratories Limited and Anr. v. The Controller of Patents and Ors., C.O.(COMM.IPD-PAT) 3 of 2021, held that since a revocation petition under Section 64 of the Patents Act, 1970 (“Act”) is not a ‘suit’, Section 10 of the Code of Civil Procedure, 1908 (“CPC”) (which relates to stay of suits which are sub judice) will not be applicable.
On 16th October 2021 (which was a court holiday), Dr. Reddys Laboratories Limited (“DRL”) electronically filed the revocation petition against patent IN’846 granted to Boehringer Ingelheim International GmbH (“Boehringer”) before the Delhi High Court. It was registered on 21st October 2021, and scheduled for hearing on 22nd October 2021. Meanwhile, Boehringer filed a suit against DRL alleging infringement of their patent before the Himachal Pradesh High Court, which granted an ex parte stay on 21st October 2021.
Boehringer submitted that since the issues in controversy in the revocation petition and the infringement suit (where DRL raised the defense of invalidity of Boehringer’s patent) were identical, the proceedings in the revocation petition should be stayed pending the outcome of the infringement suit.
The Court referred to the Practice Directions for E-Filing of the Delhi High Court (Original Side) Rules, 2018 to conclude that the date of ‘presentation’ of a petition for the purposes of Order IV of CPC, in case of electronic filing, would be the date when such petition is electronically uploaded. Therefore, DRL’s revocation petition was filed and instituted prior to the institution of the infringement suit by Boehringer. The Court also held that it cannot consider a revocation petition under Section 64 of the Patents Act, as a suit, for the purposes of Section 10 of the CPC in the absence of any provision under law.
Additionally, the Court noted that there is a fundamental difference between the scope of proceedings for revocation of a patent, and infringement claims for such patent. If a revocation proceeding succeeds, the patent would be effaced from the register of patents, whereas, if the defense of invalidity of the suit patent succeeds, the patent does not get extinguished, but rather results in the injunction not been granted to the plaintiff. Even the reliefs in both the proceedings are completely different.
Accordingly, the Court refused to stay the revocation petition pending the outcome of the patent infringement suit.