IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED :4-8-2009 CORAM THE HONOURABLE MR. JUSTICE N. PAUL VASANTHAKUMAR W.P. Nos.9934, 9935, 10264, 10432, 10730 OF 2009 and Connected Miscellaneous Petitions W.P.No.9934 of 2009 S.Ram Kumar ... Petitioner Vs. 1. Union of India, Ministry of Finance, Department of Revenue, rep.by its Chairman, Central Board of Excise & Customs, 159-A, North Block, New Delhi – 110 001. 2. Commissioner of Customs, Chennai Airport & Air Cargo Complex, Meenambakkam, Chennai – 600 027. 3. M/s.Hansum India, No.106, 2nd Floor, Govindappa Naicken Street, Chennai. ... Respondents Writ Petition filed under Article 226 of the Constitution of India praying for the issuance of a Writ of Certiorari calling for the records of the second respondent dated 18.5.2009 (O-IN-O No.641/2009-AC(ACC)) and quash the same. W.P.No.9935 of 2009 S.Ram Kumar ... Petitioner Vs. 1. Union of India, Ministry of Finance, Department of Revenue, rep.by its Chairman, Central Board of Excise & Customs, 159-A, North Block, New Delhi – 110 001. https://hcservices.ecourts.gov.in/hcservices/ 2. Commissioner of Customs, Chennai Airport & Air Cargo Complex, Meenambakkam,Chennai – 600 027. 3. M/s.Samsung India Electronics Pvt Ltd., 7th & 8th Floor, IFCI Towers, 61, Nehru Place, New Delhi – 110 019. 4. Assistant Commissioner of Customs, IPR-ACC, Chennai Airport & Air Cargo Complex, Meenambakkam, Chennai – 600 027. ... Respondents (R-4 impleaded as per order of the Court dated 22.7.2009 in M.P.No.3 of 2009) Writ Petition filed under Article 226 of the Constitution of India praying for the issuance of a Writ of Certiorari calling for the records of the second respondent dated 20.5.2009 (O-IN-O No.642/2009-AC(ACC)) and quash the same. W.P.No.10264 of 2009 S.Ram Kumar ... Petitioner Vs. 1. Union of India, Ministry of Finance, Department of Revenue, rep.by its Chairman, Central Board of Excise & Customs, 159-A, North Block, New Delhi – 110 001. 2. Commissioner of Customs, Air Cargo Complex, Sahar, Andheri East, Mumbai. 3. M/s.Samsung India Electronics Pvt Ltd., 7th & 8th Floor, IFCI Towers, 61, Nehru Place, New Delhi – 110 019. 4. Commissioner of Customs, Chennai Airport & Air Cargo Complex, Meenambakkam,Chennai – 600 027. ... Respondents Writ Petition filed under Article 226 of the Constitution of India praying for the issuance of a Writ of Certiorari calling for the records of the second respondent dated 20.5.2009 in proceedings No.SCN No.F.No.SIIB/Gen-76/2008-2009 ACC Pt-1 and quash the same. https://hcservices.ecourts.gov.in/hcservices/ W.P.No.10432 of 2009 S.Ram Kumar ... Petitioner Vs. 1. Union of India, Ministry of Finance, Department of Revenue, rep.by its Chairman, Central Board of Excise & Customs, 159-A, North Block, New Delhi – 110 001. 2. Assistant Commissioner of Customs, Office of the Commissioner of Customs (Imports and Exports) New Customs House, Near IGI Airport, New Delhi. 3. M/s.Spice Mobiles Ltd. D-4, Okhla, Phase-I, New Delhi. 4. Commissioner of Customs, Chennai Airport & Air Cargo Complex, Meenambakkam, Chennai – 600 027. ... Respondents Writ Petition filed under Article 226 of the Constitution of India praying for the issuance of a Writ of Certiorari calling for the records of the second respondent in Order in original No.01/2009/IPR/JPK, dated 30.5.2009 and quash the same. W.P.No.10730 of 2009 S.Ram Kumar ... Petitioner Vs. 1. Union of India, Ministry of Finance, Department of Revenue, rep.by its Chairman, Central Board of Excise & Customs, 159-A, North Block, New Delhi – 110 001. 2. Assistant Commissioner of Customs, Office of the Commissioner of Customs (Imports and Exports), New Customs House, Near IGI Airport, New Delhi. https://hcservices.ecourts.gov.in/hcservices/ 3. Brightpoint India Private Ltd., 76, Okhla Indl. Estate, Phase-III, New Delhi. 4. Commissioner of Customs, Chennai Airport & Air Cargo Complex, Meenambakkam, Chennai – 600 027. ... Respondents Writ Petition filed under Article 226 of the Constitution of India praying for the issuance of a Writ of Certiorari calling for the records of the second respondent in Order in original No.02/2009/IPR/JPK, dated 8.6.2009 and quash the same. For Petitioner in all : Mr.P.S.Raman, writ petitions Senior Counsel for M/s.BFS Legal Mr.P.V.Balasubramanian For Respondents 1 & 2 in : Mr.T.R.Senthilkumar, W.P.No.9934/2009 and Standing Counsel for Respondents 1,2 & 4 in Central Board of Excise W.P.Nos.9935, 10264, 10432, & Customs and 10730/2009 For 3rd Respondent in : Mr.P.Saravanan W.P.No.9934/2009 For 3rd Respondent in : Mr.Arvind P.Dattar W.P.Nos.9935 & 10730/2009 Mr.Vijay Narayan Senior Counsels for M/s.Anand & Anand Mr.M.S.Bharath Mr.Premchander Mrs.Gowri Tirumurti For 3rd Respondent in : Mr.M.Venkatachalapathy, W.P.No.10264/2009 Senior Counsel, for Mr.G.K.Muthukumar For 3rd Respondent in : Mr.A.Rameshkumar W.P.No.10432/2009 COMMON ORDER The prayer in these writ petitions are to quash the orders dated 18.5.2009 and 20.5.2009, passed by the Assistant Commissioner of Customs, Chennai, insofar as W.P.Nos.9934 and 9935 of 2009 are https://hcservices.ecourts.gov.in/hcservices/ concerned; the order dated 20.5.2009 passed by the Commissioner of Customs, Mumbai, insofar as W.P.No.10264 of 2009; and the orders dated 30.5.2009 and 8.6.2009 passed by the Assistant Commissioner of Customs, New Delhi, insofar as W.P.Nos.10432 and 10730 of 2009 are concerned. 2. The case of the petitioner as could be seen from the affidavit filed in support of W.P.No.9935 of 2009 is as follows: (a) The petitioner is an Electronics Engineer by vocation and he invented Plurality of Subscriber Identity Module (SIM) and Plurality of Blue Tooth Technology and its viability using switch circuit technology. According to petitioner, due to his invention, multiple sims can be used at the same time in one instrument. (b) It is claimed by the petitioner that by changing the entire circutory of the existing mobile phone, Plurality of Blue Tooth Devices can be fitted, which would help to operate simultaneously, the mobile phones in different communication networks, which avoid multiplicity of phones and also radicalises the concept of mobile phones across the globe, by which the cost of manufacturing is reduced. (c) According to the petitioner, it is his original Intellectual Property and in the year 2002 he applied for patent of his technology, which includes mobile phones with dual sims. After scrutiny of his application, the Patent Registry granted Patent Certificate vide Patent No.214388 on 11.2.2008 in his favour from the date of application in respect of eight technologies including Plurality of Simcards as well as Plurality of Blue Tooth devices, which work simultaneously. The petitioner claims that he being the patent holder, is vested with the right to prevent infringement of his patent right in any form or manner. (d) Petitioner states, the Government of India issued notification No.49/2007 and prohibited the import of any product obtained directly by the process made or produced beyond the limits of India and intended for sale, where patent for such process is in force under the Patents Act, 1970 (Act 39 of 1970), except in cases, where the consent from the Patentee in India has been obtained. (e) The petitioner was directed to comply with certain procedures to protect his Intellectual Property rights as per the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. The petitioner was allotted Unique Permanent Registration Number (UPRN No.A0167INMAA4PR) as per the rules, which would guarantee that the customs authority across India prevent the entry of any infringement of goods. According to the petitioner, the Commissioner of Customs, Chennai Airport and Air Cargo Complex, Chennai-27, is thereby bound to inform all other customs offices https://hcservices.ecourts.gov.in/hcservices/ throughout India and prevent the entry of any goods that infringe his patent rights. (f) The petitioner filed W.P.No.1570 of 2009 before this Court for issuing a writ of mandamus directing the Union of India, Chief Commissioner of Customs, Commissioner of Customs (Air), Chennai-27, and Commissioner of Customs (Sea), Chennai, to take all appropriate steps to prevent infringement of his registered patent No.214388 by detecting illegal imports and accessing of mobile phones having technology with use of two sim cards (dual sim) at the point of entry itself. In the said writ petition counter affidavit was filed by the respondents stating that the approval of the registration of patent holder notice was made on 19.1.2009 and thereafter action had been taken by the Commissioner of Customs (Air), Airport, Air Cargo, Chennai, Chennai-27, from 27.1.2009 onwards. This Court disposed of the writ petition on 23.2.2009 by observing as follows: "3. Paragraphs 21 of the counter affidavit is usefully extracted hereunder: "21. I further submit that there are no imports of dual SIM phones through Chennai Seaport i.e., by the 4th respondent and therefore no action has been taken inthis regard by the Sea Commissionerate. As regards imports made through the Air Commissionerate i.e., the 3rd respondent from 27.1.2009 onwards i.e., on the day immediately after completion of the registration with UPRNo. A0167INMAA4PR and there after, around 250 clearances were permitted only with the consent of the Patent Holder, namely the petitioner herein and cleared from the Customs frontier. Other Customs houses in India have also been informed about the registration and necessary protection is given to the petitioner." 4. Taking into account the counter affidavit filed by the respondents and since the action had already been initiated by the third respondent after the registration of the Patent Holder notice on 19.1.2009, the respondents shall continue to take action till the certificate is valid as per law. The writ petition is ordered accordingly. Consequently, connected M.P.No.1 of 2009 is closed. No costs." (g) According to the petitioner, he also filed Civil Suit in C.S.No.221 of 2009 before this Court and prayed for injunction to https://hcservices.ecourts.gov.in/hcservices/ prevent any illegal manufacture of mobile phones that may infringe his rights. In the said suit, petitioner also filed interim application to restrain the respondents, who are manufacturing dual simcard mobile phones in India. In O.A.No.193 of 2009, this Court granted interim order on 23.3.2009 and the said order is still in force. (h) It is the case of the petitioner that since he was given Unique Permanent Registration Number, he gets full protection as Patent Holder and the Customs authorities are duty bound to ensure that infringing goods are prevented from being imported and the Customs officials may allow import of dual sims only by obtaining petitioner's consent i.e, obtaining NOC. (i) The third respondent in these writ petitions claimed clearance of their imported sim cards by their respective bill of entry. The respective Assistant Commissioners of Customs/Commissioner of Customs suspended clearance under Rule 7 of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, instead of directing the third respondents in these writ petitions to obtain orders from the appropriate authorities. (j) The second respondents in these writ petitions called for hearing to determine the infringement of the goods imported. The second respondent called for examination of the goods and also decided to hear the matter on merits. The petitioner was called upon to demonstrate his patent right and also called upon for hearing on 13.3.2009 insofar as W.P.Nos.9934, 9935 of 2009; on 5.5.2009, 18.5.2009 and 6.5.2009 insofar as W.P.Nos.10264, 10432 and 10730 of 2009 are concerned. Petitioner submitted detailed explanation and demonstrated and according to the petitioner his patent was infringed by the third respondent concerned by the imported goods. (k) The petitioner claims that he explained to the second respondent that the term simultaneous use which was contested was proved by the fact that both sims were activated and were communicating to their respective towers. The importers contended that as simultaneous voice communication was not possible in his product, the same did not amount to infringement of the patent right of the petitioner. (l) The second respondent sought for written submissions clarifying the technical aspect of the petitioner's patent. According to the petitioner, the second respondent in these writ petitions viz., Assistant Commissioners of Customs/Commissioner of Customs have no technical expertise and they sought for written submissions clarifying the technical aspect of the petitioner's patent. The petitioner also submitted written submissions. https://hcservices.ecourts.gov.in/hcservices/ (m) The grievance of the petitioner is that in spite of the above written submissions, the second respondent held that the Patentee had made misdeclaration to the Customs Department as to the existence of genuine products, and by the impugned orders, ordered release of the goods. The said orders are challenged in these writ petitions raising various grounds. 3. The respondents 1 and 2 and third respondent in each of the writ petitions filed separate counter affidavits and raised preliminary objections viz., the writ petitions are not maintainable due to the availability of effective alternate remedy to the petitioner by filing appeal against the impugned orders. Insofar as W.P.No.10264 of 2009, W.P.No.10432 of 2009 and W.P.No.10730 of 2009 are concerned, since the orders were passed by the Commissioner of Customs, Mumbai, and Assistant Commissioner of Customs, New Delhi, respectively, the respondents also questioned the territorial jurisdiction of this Court in entertaining the said writ petitions. 4. (i) The respondents 1 and 2 in their counter affidavit have stated that the impugned orders are passed by the Assistant Commissioner of Customs, Chennai, in respect of two cases; Commissioner of Customs, Mumbai, in respect of one case; and Assistant Commissioner of Customs, New Delhi, in respect of two cases and the remedy of statutory appeal under section 128 of the Customs Act, 1962, is available before the Commissioner of Customs (Appeals) and sixty days time is granted to file such appeals. (ii) Insofar as the order passed by the Commissioner of Customs, Mumbai, in W.P.No.10264 of 2009 is concerned, statutory appeal is provided under Section 129A of the Customs Act, 1962, before the Customs, Excise and Service Tax Appellate Tribunal, Mumbai, and three months time is given to file such appeal. It is also reiterated in the counter affidavit that when the statute itself provides to the petitioner the efficacious alternate remedy by way of filing appeal before the Appellate Authority/Tribunal, this Court need not exercise its extraordinary jurisdiction under Article 226 of the Constitution of India. (iii) Insofar as the objection with regard to the territorial jurisdiction is concerned, it is contended that the impugned orders passed are not by the Assistant Commissioner of Customs, Chennai, and hence the petitioner can file writ petition only before the concerned High Courts within whose territorial jurisdiction the impugned orders are passed viz., Bombay High Court and Delhi High Court, particularly when no cause of action has arisen at Chennai to file these writ petitions before this Court. (iv) It is also specifically stated in the counter affidavit that in all the above cases personal hearing was given to the petitioner/his representative and insofar as W.P.No.10730 of 2009 is https://hcservices.ecourts.gov.in/hcservices/ concerned, neither the petitioner nor the authorised representative appeared for hearing nor sought for extension of time and also failed to file any written submissions. Eventhough personal hearing was originally proposed on 6.4.2009 it was subsequently postponed to two weeks and finally personal hearing was fixed on 6.5.2009 and in spite of service of notice sent through E-mail to the petitioner. 5. The third respondents in these writ petitions filed counter affidavits and raised the above said preliminary objections, apart from the merits of the cases. In the counter affidavit filed in W.P.No.10730 of 2009 the third respondent stated that as against the order of the Assistant Commissioner of Customs, New Delhi, appeal lies before the Commissioner of Customs (Appeals), New Delhi, under sections 128 and 128A of the Customs Act, 1962 and appeal against the order of Commissioner of Customs, Mumbai, lies before CESTAT under sections 129 and 129A of the Customs Act, 1962. Against the order of the CESTAT, appeal would lie to the National Tax Tribunal under Section 15 of the National Tax Tribunal Act, 2005, and thereafter appeal would lie to the Supreme Court. Insofar as the territorial jurisdiction is concerned it is contended that even if the petitioner has registered his patent before the Commissioner of Customs, Chennai Airport & Air Cargo, Chennai-27, orders having been passed by the respondents at New Delhi and Mumbai, petitioner cannot challenge the said orders before this Court. Filing of C.S.No.221 of 2009 on the file of this Court will not enable the petitioner to challenge the order passed at Mumbai and New Delhi and even if the writ is maintainable against the orders passed by the Customs Authorities at Mumbai and New Delhi, petitioner can file the writ petitions only before the concerned High Court viz., Bombay High Court or Delhi High Court. It is also stated in the counter affidavit that as per the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, the Deputy Commissioner of Customs or Assistant Commissioner of Customs on the notice given by the Right Holder has a reason to believe that the imported goods are suspected to be the goods infringing the intellectual property right, he shall suspend clearance of the goods and under Rule 8, the said authority is empowered to determine whether the goods actually infringe the Intellectual Property Rights of the Patent Right Holder, after allowing opportunity to the Patent Right Holder and the Importer or their duly authorised representatives to examine the goods, the clearance of which has to be suspended. 6. In view of the above two preliminary issues raised with regard to the maintainability of the writ petitions, more particularly for not availing alternate remedy in all these cases and the non-maintainability of the writ petition before this Court since the impugned orders in three cases are passed at Mumbai and New Delhi, arguments were advanced for the above said two issues by the learned Senior Counsel for the petitioner as well as learned Senior Counsels for the respective third respondents in each of these writ https://hcservices.ecourts.gov.in/hcservices/ petitions and other respective counsels. 7. Mr.P.S.Raman, learned Senior Counsel appearing for the petitioner submitted that as there are violations of principles of natural justice while passing the impugned orders, the petitioner is entitled to challenge the same in these writ petitions, without availing alternate remedy of filing appeal. The learned Senior Counsel submitted that the above referred five orders are passed by three different authorities viz., two at Chennai, two at New Delhi and one at Mumbai, and by filing appeal against the said orders in three different places, the petitioner would be put to serious difficulties. The learned Senior Counsel also submitted that the authorities, who passed the impugned orders have no jurisdiction to interpret the patent rights of the petitioner. It is further submitted that in W.P.No.10730 of 2009, without hearing the petitioner, the impugned order was passed and insofar as other cases are concerned there is violation of principles of natural justice and once the petitioner establishes the fact of violation of principles of natural justice and also the lack of jurisdiction to decide the violation of patent right, the writ petitions filed challenging the impugned orders are maintainable. The learned Senior Counsel also cited the decisions of the Supreme Court and of this Court in support of his contention with regard to the maintainability of the writ petitions. The learned Senior Counsel further submitted that insofar as the orders passed by the customs authorities at Mumbai and New Delhi are concerned, part of the cause of action having arisen within the State of Tamil Nadu, this Court has got territorial jurisdiction to entertain the writ petitions, on the ground that the patent rights of the petitioner is registered at Chennai. The petitioner has filed civil suit and obtained interim order of injunction against the respondents in C.S.No.221 of 2009 from this Court on 23.3.2009. The UPR number was assigned to the petitioner by the Commissioner of Customs, Chennai Airport and the said patent right registered at Chennai is infringed by the third respondent in W.P.No.10264 of 2009 at Mumbai and in W.P.No.10432 and 10730 of 2009 at New Delhi. The learned Senior Counsel therefore submitted that part of the cause of action having arisen within the territory of the State of Tamil Nadu the petitioner is entitled to challenge the orders passed by the authorities at Mumbai and New Delhi before this Court under Article 226 of the Constitution of India, particularly with reference to Article 226(2) and if the petitioner is not permitted to file these writ petitions before this Court, he will be forced to approach the Bombay High Court and Delhi High Court and this Court for challenging five different orders and the same will cause great hardships to the petitioner. On this aspect, the learned Senior Counsel cited certain judgments in support of his contention. 8. (i) Mr.Arvind P.Dattar, learned Senior Counsel submitted that whether the third respondent in these cases have violated the patent right of the petitioner due to their import of sim cards is a https://hcservices.ecourts.gov.in/hcservices/ question of fact, as the petitioner is contending that his patent right is infringed. The third respondents in these writ petitions have demonstrated before the statutory authorities that their imported articles have not in any manner infringed the patent rights of the petitioner and the competent authority factually found that there is no infringement of the petitioner's patent rights in respect of the imported goods. The learned Senior Counsel submitted that if the facts are in dispute, the writ Court is not the appropriate Court to seek remedy to the petitioner and normally this Court under Article 226 of the Constitution will not go into the disputed facts. In support of his contention he produced several decisions. The learned Senior Counsel also submitted that the authority, who passed the impugned orders, followed the principles of natural justice. Insofar as W.P.No.10730 of 2009 is concerned, the petitioner failed to appear in person or through his representative in spite of providing personal hearing, for which the petitioner alone can be blamed. Since the principles of natural justice is followed while passing the impugned orders by the authorities concerned, the petitioner is bound to file appeal before the Statutory Authority as contemplated under the provisions of the Customs Act, 1962, where the hierarchy of the officers are mentioned to file appeal. On the above said two grounds viz., disputed facts cannot be decided in writ jurisdiction and when the statute provides for alternate remedy, the party should avail the same before approaching the High Court under Article 226 of the Constitution of India was emphasised. (ii) The learned Senior Counsel further submitted that insofar as the territorial jurisdiction in entertaining the writ petition with regard to the orders passed at Mumbai and New Delhi, the petitioner is not entitled to file writ petitions before this Court since the imported goods arrived at Mumbai and New Delhi; the petitioner executed bond at Mumbai and New Delhi; appeared for personal hearing at Mumbai and New Delhi; and orders were also passed by the authorities at Mumbai and New Delhi respectively. Merely because the petitioner registered his patent rights through E-Filing at Chennai, the same will not confer any cause of action to challenge the orders passed by the authorities at Mumbai and New Delhi and therefore even assuming the writ petitions are maintainable against the orders passed by the authorities in Mumbai and New Delhi, petitioner can file writ petitions only before Bombay High Court and New Delhi High Court respectively. (iii) The learned Senior Counsel also submitted that merely because C.S.No.221 of 2009 is pending before this Court i.e., with regard to the manufacture of sim cards, the petitioner cannot contend that goods imported at Mumbai and New Delhi airports against which orders are passed, can be challenged before this Court in the above writ petitions. The learned Senior Counsel also submitted that passing an order gives rise to cause of action and the officers at Mumbai and New Delhi are not within the supervisory jurisdiction of https://hcservices.ecourts.gov.in/hcservices/ this Court. There is no extraordinary circumstance, pointed out by the petitioner, to entertain the writ petitions and any fraction of cause of action cannot be treated as cause of action giving rise to jurisdiction. The petitioner/his representative having chosen to appear before the Mumbai/New Delhi Customs authorities, is not right in contending that he will face hardships in approaching the Bombay High Court and Delhi High Court. 9. Mr.M.Venkatachalapathy, learned Senior Counsel submitted that the subjective satisfaction of the authority is recorded in the impugned orders and mere registration of patent at Chennai