gst 1 cra62.11.sxw IN THE HIGH COURT OF JUDICATURE OF BOMBAY CIVIL APPELLATE JURISDICTION. CIVIL REVISION APPLICATION NO. 62 OF 2011 WITH CIVIL APPLICATION NO. 36 OF 2011. SERGI Transformer Explosion Prevention Technologies Pvt. Ltd. .. Applicant. V/s CTR Mafg. Industries Ltd. ... .... .... ... Respondent. Mr.Atul Rajadhyaksha, Sr.Adv. With Mr.Sanjay Kher, Chaitanya Chavan, and Rani Boazz, Adv. For the applicant. Mr.Ravi Kadam, Adv. General with Mr.Vishal Kanade, Venkatesh Dhond, A.Jajoo, Rahul Lamba, Aditya Singh, A. Chaudhari i/by Paras Kuhad & Associates, Adv. For respondent. CORAM: B.R. GAVAI, J. 2nd February., 2011 PC: The present unwarranted proceedings before this Court arise out of improper procedure adopted by the learned Judge and that too overlooking the earlier orders passed by this Court as well by the learned Judge himself. 2. There have been several rounds of litigations between the parties which have not only reached upto this Court but also upto the Apex Court. The respondent-plaintiff has filed Civil Suit bearing No.1/2010 in the Court of learned District Judge, Thane claiming infringement of patent and for order of injunction restraining the defendant-applicant and defendant No.2 from infringing the plaintiff’s patent by making, using, offering for sale and/or selling the impugned product. gst 2 cra62.11.sxw 3. In the said proceedings in an earlier round of litigation by way of Appeal from Order (St.) No.33478/2010 the matter had come up before me vide which an application filed by the present applicant challenging the order dated 20.12.2010 passed by the learned District Judge thereby allowing the application of the present applicant for permitting it to submit its drawings to Delhi Transco Limited (DTL) was rejected. Upon hearing the learned counsel for the respective parties I had allowed the appeal and quashed and set aside the order passed by the learned District Judge. By the said order I had allowed the application filed by the present applicant permitting them to submit their drawings to DTL. The said order was carried before the Apex Court and the Apex Court vide its order dated 20.1.2011 has disposed of the said Special Leave to Appeal (Civil) No.1919/2011 thereby refusing to entertain the SLP observing that the interest of the petitioner therein (plaintiff) was protected by the order impugned in the said SLP. As is evident from the said order, even prior to that there were various rounds of litigations between the parties before this Court. The present proceedings arise out of the order dated 1.1.2011 vide which the learned Judge has decided the issue of jurisdiction in favour of the plaintiff. 4. Bare necessary facts for adjudication of these proceedings are as under: A suit was filed on 11.2.2010. The writ of summons was served on the defendant on 4.3.2010, written statement came to be filed by the present applicant on 20.3.2010. It appears that subsequently counter claim came to be gst 3 cra62.11.sxw filed on 8.4.2010 thereby seeking relief for revocation of patent of the plaintiff. An application was filed by the present appellant below Ex.57, for seeking leave to take defendant’s counter claim on record. An objection has been filed by the respondent-plaintiff below Ex.59 objecting to the counter claim under section 8 of the Court Fees Stamp Act. The learned Judge vide order dated 7.8.2010 has passed an order to the following effect: “The application regarding allow to claim the counter claim on record. amendment which is carried out and the order below Exh.5 will be considered simultaneously and also application under S.8 of Bombay Court Fee Stamp Act.” It appears that Writ Petition No.6994/2010 came to be filed before this Court. The learned Judge of this Court (Hon’ble Mr.Justice J.H.Bhatia) vide order dated 15.9.2010 disposed of the said writ petition with certain clarification. It is pertinent to note the observations made by the learned Judge while disposing of the said writ petition: “3. The learned Counsel for the petitioner contends that in view of the proviso to Section 104 of the Patents Act, since the counter-claim for revocation of the patent is made by the defendant, the suit along with the counter-claim has to be transferred to the High Court for decision and the District Court ceases to have jurisdiction. He contends that the question of jurisdiction should be decided first and then only other applications, particularly Ex.5 be considered. When the District Judge in gst 4 cra62.11.sxw the impugned order says that all these matters, including the application to make a counter-claim will be heard together, it is implied that he will also consider the question about jurisdiction. When the provisions of Sec. 104 will be pointed out to the learned District Judge, he cannot ignore the said provisions. Whether the counter-claim is of the nature as stated in the proviso to Sec.104 will have to be heard by him before coming to the conclusion whether he has or has no jurisdiction. I see no illegality or irregularity in the impugned order that all these application shall be heard together. It is presumed that if he comes to the conclusion that he does not have jurisdiction in view of the provisions of Sec.104, naturally, he would desist from passing any order. However, if he comes to the conclusion that the case is not covered by the proviso to Sec.104 and he has jurisdiction, he cannot be restrained from hearing the application Exhibit 5 and from passing order on the same immediately after hearing the matter.” It is further pertinent to note that while passing order belwo Ex.61 dated 12.11.2010 the learned District Judge has himself observed that if simpliciter issue regarding jurisdiction is framed by this Court all the questions pertaining to jurisdiction including pecuniary and territorial jurisdiction and as to whether the jurisdiction is barred by specific provision of law can be considered together. Thereafter vide impugned order the learned Judge has considered the issue regarding pecuniary and territorial jurisdiction and held the same in gst 5 cra62.11.sxw favour of the present respondent-plaintiff. Being aggrieved thereby the present revision application has been filed. 5. Shri Rajadhyksha, learned counsel appearing on behalf the applicant fairly concedes that in so far as the order impugned holding that the learned Judge has pecuniary and territorial jurisdiction is concerned, the applicant does not have any grievance. The applicant is restricting his grievance only in so far as not deciding the issue regarding applicability of section 104 of the Patents Act (for brevity sake “the Act”) and consequently deciding as to whether the learned District Judge had jurisdiction to entertain the said suit or not. Shri Rajadhyksha, learned counsel appearing on behalf of the applicant submits that a conjoint reading of section 104 of the Patents Act read with section 64 of the said Act would lead to a conclusion that when counter claim is filed seeking relief of revocation of patent the suit has to be decided only by the High Court and no other Court has jurisdiction. He therefore submits that the issue of applicability of section 104 goes to the root of the matter. Not only this but he submits that this Court vide its order in Writ Petition No.6994/10 had specifically clarified that when the provisions of section 104 are pointed out to the learned District Judge he cannot ignore the said provisions and it will have to be heard by him and decide whether the counter claim is of the nature of provisions to proviso of section 104 of the said Act. He submits that not only that the learned Judge himself vide order dated 12.11.2010 observed that he will consider all these applications together. It is submitted that not deciding gst 6 cra62.11.sxw the issue regarding section 104 affects the very proceedings. It is submitted that in the event the learned Judge holds that he has not jurisdiction in view of the provisions of section 104 the suit will have to be transferred to the High Court and further proceedings would not be tenable before the learned District Judge. Shri Rajadhyksha learned counsel relied upon a judgment of the Apex Court in the case of Official Trustee, West Bengal & Ors. Vs. Sachindra Nath Chatterjee and Anr., AIR 1969 SC 823 and in the case of Church of South India Trust Association Vs. Telugu Church Council, AIR 1996 SC 987. Learned counsel on merits relies upon a judgments of the Kerala High Court in the case of Low Heat Driers (P) Ltd. Vs. Biju George, 2001 PTC 775 (Ker) and of the Uttarakhand High Court in the case M/s.Lambda Easter Telecommunication & Ors., Vs. M/s.Acme Tele-Power Private Ltd. & Ors., AIR 2008 Uttarakhand 38. 6. Shri Kadam, learned Advocate General on behalf of the respondent on the contrary submits that no fault could be found with the order passed by the learned Judge. The learned Advocate General submits that the learned Judge has not refused to consider the objection of the applicant regarding applicability of section 104. He submits that it has been only kept in abeyance. It is stated that the said issue regarding jurisdiction can be considered along with an application filed by the plaintiff for temporary injunction below Ex.5. He submits that the question as to whether counter claim is to be permitted to be taken on record and as to whether objection filed by the plaintiff under section gst 7 cra62.11.sxw 8 of the Court Fees & Stamps Act are yet to be decided and unless they are decided the issue regarding applicability of section 104 cannot be decided. Learned Advocate General has further submitted that as a matter of fact the course adopted by the learned Judge was right course in as much as had the learned Judge decided on the ground of pecuniary and territorial jurisdiction in favour of the present applicant, the decision on the issue below Exs.57 and 59 and issue of jurisdiction would not have arisen at all. Shri Kadam learned Advocate General further submitted that delay in the proceedings is occasioned since every order passed by the learned Judge is being challenged by the appellant before this Court. 7. To narrow down the controversy a suggestion was given to the parties that the learned Judge should within specified period first decide the application below Ex.57 i.e. application for leave to place counter claim on record, application below Ex.59 i.e. objection raised by the plaintiff in view of section 8 of Court Fees & Stamps Act and objection regarding jurisdiction in view of section 104 of the Patents Act and thereafter within specified period the learned Judge should decide the application for temporary injunction. Shri Rajadhyksha learned counsel appearing on behalf of the applicant accepted the said proposal. However learned Advocate General submitted that if such a procedure is to be followed then same would be in contravention of orders passed by this Court i.e. order passed by my learned brother Judge (Hon’ble Justice Shri J.H.Bhatia) in writ petition No.6994/10 and the order passed by the gst 8 cra62.11.sxw Apex Court in SLP (Civil) No.1919/11 which according to the learned Advocate General have reached finality. It was further contended that the respondent-plaintiff have no objection if all the applications are decided together within the stipulated period. 8. Since there is no consensus amongst the parties to the proposal given by this Court I am required to consider the matter on merits. 9. Undisputedly the present applicant has filed its counter claim seeking relief of revocation of patent. Undisputedly, the present applicant has also raised issue regarding the jurisdiction of the learned District Judge in view of the provisions of section 104 and 64 of the Patents Act. Undisputedly the learned Judge himself vide order dated 7.8.2010 and 12.11.2010 has directed all these applications to be heard together. Undisputely this Court vide its order dated 15.9.2010 has also observed that once the provisions of section 104 are brought to the notice of the learned District Judge he cannot ignore the said provisions. It has further been observed that if the learned Judge comes to a conclusion that he does not have jurisdiction under section 104 of the Act, naturally he would desist from passing any other order. It has been observed that if he comes to the conclusion that the case is not covered by the provisions of section 104 and he has jurisdiction, he cannot be restrained from hearing the application below Ex.5. 10. It will be necessary to refer to section 104 of the Patents Act which reads thus: gst 9 cra62.11.sxw “104. Jurisdiction.___ No suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any Court inferior to a district Court having jurisdiction to try the suit: Provided that where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision.” A perusal of said provision would clearly show that where a counter claim for revocation of patent is made by the defendant the suit along with counter claim shall be transferred to High Court for decision. It is thus clear that issue of applicability of section 104 of the Patents Act goes to very root of the matter. As has already been observed by my brother Hon’ble Shri Justice Bhatia in earlier round of litigation that the learned District Judge is required to consider as to whether counter claim is in the nature of as stated in proviso to section 104 before he comes to the conclusion, whether he has or he has no jurisdiction. In that view of the matter I find that the piecemeal decisions by the learned Judge in the present case are totally not only unwarranted but are in total defiance of the orders passed by this Court in earlier round of litigation and also in ignorance of his own observations in the orders dated 7.8.2010 and 12.11.2010. The learned Judge has himself in para 4 of the order dated 12.11.2010 observed as under: “4. Elaborate submissions from both sides heard by this Court gst 10 cra62.11.sxw and it has been made clear to both the parties that once the question of jurisdiction of this Court is being challenged, it is to be considered as a preliminary issue and by framing a relevant issue to that effect. Therefore, in my opinion, instead of indulging into the submissions advanced before the Court challenging the jurisdiction of this Court and thereby to frame verbose issues, it will be appropriate to this Court to frame issues simpliciter raising a question regarding the jurisdiction of this Court. For this purpose, the word `jurisdiction’ shall implicate the territorial, pecuniary jurisdictions. Besides that, if the jurisdiction of this Court is barred by a specific provision of law, the same also can be discussed and decided under the same issue of jurisdiction of this Court. For this reason it has to be made clear to both the sides that this Court is going to consider all those points which have been raised for the purpose of setting the jurisdiction of this Court and it is not necessary to frame distinct issues on each point as has been suggested vide Ex.64 and Ex. 65.” (emphasis supplied) It is thus clear that the learned Judge himself was mindful of the fact that issue of jurisdiction will go to the root of the matter and has therefore framed preliminary issue. He has also directed the parties to lead oral or documentary evidence on the preliminary issue. In that view of the matter I find that the learned trial Judge ought to have decided the issue pertaining to the applicability of section 104 of the Patents Act also. gst 11 cra62.11.sxw 11. It is also difficult to understand as to what prevented the learned Judge from deciding the applications below Exs.57 and 59 in as much as no complicated issues are involved while deciding the said applications. In my considered view unless the issue regarding as to whether counter claim is to be taken on record, as to whether objection of the respondent-plaintiff under section 8 of the Court Fees & Stamps Act is to be entertained or not and unless the issue regarding applicability of section 104 to the proceedings before the Court is decided, the decision on further proceedings including Ex.5 would not be in the interest of justice. In the event the learned Judge holds that he has no jurisdiction under section 104 of Patents Act then naturally he would not have the jurisdiction to entertain any further proceedings including application below Ex.5. In that view of the matter though vide earlier order of this Court it had directed all the applications to be considered simultaneously and though their Lordships of Apex Court vide order dated 20.1.2011 passed in above referred SLP challenging earlier order have observed thus: “Since we are informed that there are other pending applications, the same may also be disposed of along with the application for interim order.” I find that it would not be in the interest of justice to decide all the applications together. It is pertinent to be noted that when earlier order was passed by this Court in AO (St.) No.33478/10 which has been refused to be entertained by Apex Court in SLP No.1919/2011, the fact regarding pendency of these issues gst 12 cra62.11.sxw was neither brought to the notice of this Court or argued by any of the parties. In any case, all these orders were arising out of interlocutory proceedings. 12. In so far as the contention of learned Advocate General with regard to the applicant challenging every order before this Court is concerned, if the learned Judge without properly considering the earlier orders passed by this Court passes erroneous order, the party aggrieved by such order cannot be prevented from seeking redressal before the Court of law. 13. In any case it is to be noted that the pendency of the proceedings and delay in decision on the application below Ex.5 operates rather to the prejudice of the present appellant rather than the respondent-plaintiff. Vide order passed by me in AO (St.) No.33478/2010 which has not been interfered by the Apex Court the applicant has been specifically directed that he shall not take any steps for execution of the contract except submission of drawings till the decision on the application filed by the respondent below Ex.5 by the learned District Judge, Thane. In that view of the matter I find that no prejudice would be caused to the present respondent-plaintiff in the event application below Exs. 57 and 59 and issue relating to jurisdiction in view of section 104 of the Act, are decided prior to the decision on the application below Ex.5. 14. In so far as the submission of the learned Advocate General that the procedure adopted by the learned District Judge was the only right procedure is concerned, I am unable to accept the said proposal. As a matter of fact said submission would run counter to other submission of the learned Advocate gst 13 cra62.11.sxw General that the learned Judge was bound to obey the orders passed by this Court in earlier round of litigation and had the learned Judge rightly understood the order passed by Justice Bhatia, he had no other option but to decide the objection regarding applicability of section 104 while deciding the issue that have been decided by him in the impugned order. 15. In my considered view the learned Judge has totally failed to exercise the jurisdiction vested in him by not deciding the applications below Exs.57 and 59 and issue regarding jurisdiction in view of the provisions of section 104 of Patents Act. I therefore find that this is a fit case wherein this Court is required to exercise its revisional jurisdiction under section 115 of the Code of Civil Procedure. 16. Revision Application is therefore allowed. Learned Judge is directed to decide the applications below Ex.57 and 59 and issue regarding jurisdiction in view of section 104 of the Patents Act on or before 11.02.2011. 17. In the event if the learned Judge holds that he has jurisdiction and that provisions of section 104 are not applicable the learned Judge shall decide the application below Ex.5 on or prior to 25.2.2011. 18. Revision application is allowed in aforesaid terms with no order as to costs. 19. Needless to state that the decision of the learned Judge on the application below Exs.57 and 59 and on the issue of jurisdiction under section 104 would be without prejudice to the rights of either of the parties to take recourse to such gst 14 cra62.11.sxw proceedings as are permissible in law. 20. At this stage learned Advocate General requests for stay of this order for a period of two weeks. 21. Normally this Court would have granted such a request. However since learned Advocate General himself has submitted that proceedings are unnecessarily being delayed, I am not inclined to grant stay. Hence prayer for stay is rejected. 22. In view of disposal of Civil Revision Application, Civil Application No. 111/2011 does not survive and the same also stands disposed of.