The document summarizes a case involving patent revocation proceedings between Enercon India Ltd. and Dr. Alloys Wobben. It discusses that Enercon India filed multiple revocation petitions against Wobben's patents after their license agreement was terminated. The IPAB partially revoked one of Wobben's patents. Wobben then alleged abuse of process in the Delhi High Court. The Supreme Court found that Enercon India cannot simultaneously pursue counter claims in court and revocation petitions before the IPAB due to an earlier consent order. It also clarified that a post-grant opposition eclipses rights to file revocation petitions or counter claims under Section 64(1) of the Patents Act.

1. Enercon (India) Ltd Vs. Alloys Wobben
(Patent No. IN200549)
REVOCATION PROCEEDINGS
Prepared By
Gurpal Singh
IN/PA-2732

2. Brief Intro
1. Enercon GmbH is a German company engaged in
manufacture of Wind Turbines, owned by Dr. Alloys Wobben
who owns several Indian patents.
2. JV with Yogesh Mehra and Ajay Mehra under the name of
Enercon India Ltd.
3. License agreement terminated in 2008 due to non-fulfilment
of certain obligations.
4. Enercon India Files nineteen revocation petitions before the
IPAB.
5. Dr. Wobben files ten infringement suits before Delhi HC.
6. Enercon India files four more revocation petition taking the
total to twenty three. And files counter claim seeking
revocation in response to infringement suits.

3. IN200549

4. First Independent Claim
1. A wind power installation comprises a rotor with a rotor hub with
at least two rotor blades which are rotatable about the
longitudinal axis; an adjusting device for individually adjusting a
rotor blade to a desired blade setting angle; a generator which is
operatively connected to the rotor; said rotor hub is provided with
measurement means for ascertaining at least one of the
instantaneous mechanical loading of the hub or a rotor blade,
control means for ascertaining a blade angle position which is
wanted for the reduction in the instantaneous loading using a
variation in the instantaneous blade angle position of at least one
rotor blade and which suitably adjust the rotor blade to the
desired blade angle position by the adjusting device
asynchronously from the blade angle position of other rotor
blades; and said adjusting device and said measuring means being
connected to the control means.

5. Prior Art
GB2067247 (GB’247)

6. Controller Circuit
Rotor Blade
Rotor Hub
Stub Shaft

7. Prior Art
European Wind Energy Conference and Exhibition (EWEC) 96
(Dynamic Load Models for HAWTs)

8. IPAB
Question IPAB’s Take
Locus-standi of the applicant
to move the revocation
application as a “person
interested” under S.64 of the
Patents Act, 1970.
If the applicant succeeds in demolishing the
patent in accordance with law, then the
infringement suit must fail and the
applicant’s commercial interest will be
secured. Therefore, the applicant herein
passes the test of Ajay Industrial Corporation
case.
Licensee Estoppel As per the Section 140 of the act and the
views held by United States Supreme Court, a
licensee cannot be stopped from challenging
the validity of the patent.
Anticipation and
Obviousness
Partially anticipated by GB’247 and obvious
in view of GB’247 and EWEC 96.

9. Delhi High Court
• Appellant : Dr. Aloys Wobben
• Respondent : Yogesh Mehra
• Both the parties consented to an order of the High Court,
dated September 1, 2009 wherein they mutually agreed to
follow a schedule for an expedited trial in the patent
infringement suit and the counter claims filed.

10. Delhi HC (Continue...)
• After this, the IPAB had revoked six patents granted to Dr.
Wobben, he then alleged that all the six patents revoked were
also a part of the counter claim pending before the Delhi High
Court and the act of Enercon India in pursuing the revocation
petitions before the IPAB after consenting to the Delhi High
Court was an abuse of Judicial process.
• Thus the current appeal.

11. Supreme Court
• Appellant : Dr. Aloys Wobben
• Respondent : Yogesh Mehra
• The Supreme Court in its judgment examined the various
provisions of the Indian Patents Act 1970, in drawing a
protocol with regards to multiple proceedings of patent cases.

12. Issues Before SC
• Dr. Wobben contended that according to Sec 64 (1), either a
counter claim or a revocation petition can be filed, not both.
The court accepted this contention- in Sec 64 (1) ‘or’ is used,
which has to be given a disjunctive reading and not a
conjunctive reading. Otherwise, it will result in conflicting
finding in a revocation petition and a counter claim.

13. Issues Before SC (Continue...)
• Another contention- when a defendant files a counter claim
before the High Court, then only the High Court will have
exclusive jurisdiction and that of the IPAB will cease. The
court, in order to answer this, took a layered approach. It
interpreted various provisions of the Indian patents Act, 1970
and also other legislations like the CPC.

14. Findings of SC
• Under sec 25 (2) and 64 (1), a revocation petition or a post
grant opposition can be filed by ‘any person interested’ and a
counter claim can be filed by a defendant in a patent
infringement suit.
• Due to the opening words of sec 64, SC noted that the
provisions of this section are subservient whenever there is a
conflict with other provisions of the act.

15. Findings of SC (Continue...)
• Therefore, if a post grant opposition is filed under s. 25 (2),
then it will eclipse the right to file a revocation petition or a
counter claim under s. 64 (1).
• The Court also held that both the counter claim and
revocation petition cannot be availed simultaneously under S.
64 (1).

16. Findings of SC (Continue...)
• The court next examined the question- if a party is eligible to
file either revocation petition as ‘any person interested’ as
well as a counter claim as a defendant in a suit, which remedy
can he pursue?
• It held that a counter claim is a separate suit in itself, filed by a
defendant. It must be treated as a separate plaint. Therefore,
a counter claim attracts the principle of res judicata.
• Thus, if a revocation petition has been filed before the IPAB
first, then the defendant in a patent infringement suit cannot
file a counter claim on the same cause of action. This is also
applied vice-versa.

17. Findings of SC (Continue...)
• The court accepted Dr. Wobben’s contention that in the
consent order of the Delhi High Court, both the parties agreed
that the patent infringement suit and the counter claims
pending between the parties should be consolidated and
heard together by the High Court and which is why, Enercon
India cannot pursue the revocation petitions before the IPAB.
• It held that, having consented to one of the available remedies
postulated under law, it would not be open to either of the
consenting parties, to seek redressal from another forum in
addition to the consented forum. Thus, Enercon India has to
pursue the counter claims before the High Court and not the
revocation petitions before the IPAB, due to the consent order
passed by the Delhi High Court, which was affirmed by the
Supreme Court.

18. Conclusion
• Three key points can be understood from the said judgment:
 If “any person interested” has filed a post grant opposition
under Section 25(2) , the same would eclipse all similar
rights available to the same person under Section 64(1) .
This would include the right to file a revocation petition
before the IPAB and a counter claim in a patent infringement
suit.

19. Conclusion (Continue...)
 If a revocation petition is filed by “any person interested”
under Section 64(1) , prior to the institution of a patent
infringement suit against him, he would be disentitled in law
from seeking a revocation of the patent by way of a counter
claim in a patent infringement suit.
 If in response to a patent infringement suit the defendant
has already sought for revocation of a patent by way of a
counter claim, thereafter, the defendant cannot file for a
revocation petition before the IPAB.

20. Thank You