IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 21.09.2011 CORAM THE HONOURABLE MR. JUSTICE S. PALANIVELU A.No.2258 and 2691 of 2011 in C.S.No.979 of 2007 and C.S.No.1111 of 2007 M/s.TVS Motor Company Limited Jayalakshmi Estates, No.29, Haddows Road, Chennai - 600 006. ... Applicant/Plaintiff Vs M/s.Bajaj Auto Limited Akurdi, Pune-411 035 Maharashtra. ... Respondent/Defendant These Applications filed under Order XIV Rule 8 of O.S. Rules r/w. Order XVIII, Rule 3 of C.P.C. and Order XIV Rule 8 of O.S. Rules r/w.Section 151 C.P.C. respectively. For Applicant : Mr.Vaidhyanathan, Senior Counsel and Mr.P.S.Raman, Senior counsel for M/s.T.K.Baskar For Defendant : Mr.T.V.Ramanujan, Senior Counsel and Mrs.Nalini Chidambaram for M/s.A.A.Mohan COMMON ORDER In view of the interconnectivity of the facts and circumstances of the cases, both the applications are taken up together and disposed of by a common order. 2. For the sake of convenience, the ranks of the parties are referred to in this judgment as plaintiff and defendant as stated in C.S.No.979 of 2009. 3. The following are the allegations contained in the affidavit of the applicant/plaintiff in A.No.2258 of 2011 filed along with petition under Order XVIII, Rule 3 C.P.C. Order XIV Rule 8 of OS Rules:- 3(1). The applicant has filed a suit in O.S.No.979 of 2007 for declaration, for permanent injunction, for directing the defendant to compensate the plaintiff a sum of rupees one crore or such other amount. The respondent/defendant filed a suit in C.S.No.1111 of 2007 praying for permanent injunction and preliminary decree directing the defendants to render accounts of profits made by sale, direction to pay a sum of Rs.10,50,000/- as damages, for delivery of the infringing copies and articles for destruction and for cost. On 16.02.2008 an order of temporary injunction was granted in favour of the respondent restraining the applicant from in any manner infringing the respondent's patent No.195904 and/or from using the technology etc. The applicant preferred appeals in O.S.A.Nos.91 and 92 of 2008 before the Division Bench and the same were allowed on 18.05.2009. The respondent filed Special Leave Petition before the Hon'ble Supreme Court in C.A.No.6309 of 2009 which was disposed of on 16.09.2009 directing the parties to commence the trial and requesting this Court to hear the suit and dispose it off expeditiously within time frame fixed by the Apex Court. The applicant and the respondent have filed their respective written statements and issues have also been framed in both the suits. They have also filed their affidavit of documents. 3(2). On 10.03.2010, this Court passed an order directing this respondent to start letting in evidence. The respondent preferred O.S.A.No.132 and 133 of 2010 and the same were disposed of on 04.10.2010 by the Division Bench setting aside the order of the learned Single Judge, directing the applicant herein to let in evidence at the first instance. 3(3). The issues involved in the suit are groundless threat issued by the respondent on the basis of the alleged infringement of its patent by the applicant's products. During the course of trial, it is open to the respondent to let in evidence in support of its contention of infringement of its patent. In such event, the applicant herein is entitled to raise a plea that the patent granted in favour of the respondent is invalid. By way of abundant caution, the applicant files this present application reserving its rights to let in evidence in answer to the respondent's evidence alleging infringement. 3(4). So far, there is no order by this Court for joint trial to avoid hyper-technical objections being raised at a later stage, this petition is filed under Order XVIII, Rule 3 of C.P.C. permits the party to reserve its right to produce evidence in answer to the evidence produced by the other party. No prejudice will be caused to the respondent, if the present application is ordered as prayed for. Hence, it is prayed that this Hon'ble Court may be pleased to permit the applicant's/plaintiff's pleading to reserve its right to let in evidence on the issue of the invalidity of the respondent's/defendant's, their patent in answer to the respondent/defendant letting in evidence regarding validity and infringement of its patent in C.S.No.979 of 2007. 4. The following are the allegations contained in the counter affidavit filed by the respondent/defendant:- 4(1). The application is wholly misplaced and misconceived which is not maintainable. It is a dilatory tactics adopted by the plaintiff in delaying the trial of the suit especially when there is no injunction operating against it. The Hon'ble Supreme Court has directed the disposal of the trial on or before November 30, 2009. In view of the dilatory tactics adopted by the plaintiff at every stage, the trial is not yet concluded. 4(2). The circumvent order of the Division Bench dated 04.10.2010 and to indirectly achieve what it could not directly achieve, this application is now filed. The competency of the deponent Murali Raman has filed proof affidavit is denied. 4(3). With reference to paragraph 2 of the affidavit, it is stated that the plaintiff has sought a declaration that its product TVS Flame which uses two spark plugs with screw fitted sleeve and three values does not infringe the Defendant's patent No.195904. The plaintiff seeks this declaration of non infringement on two counts - first on the ground that the defendant's patent No.195904 is itself invalid and second on the ground that even if valid, the plaintiff's product is different from the defendant's patent. The plaint proceeds on the aforesaid basis and the plaintiff has taken upon itself the burden of making good its aforesaid contentions. 4(4). In addition to groundless threat, the plaintiff seeks a declaration of non-infringement, inter alia, on the ground that the defendant's patent No.195904 is itself invalid and that the plaintiff's product is different from the defendant's patent. In this situation, it is for the plaintiff to lead such evidence as it may choose in support of its claim of non infringement as pleaded. If the plaintiff seeks to rely on its allegation of invalidity in support of its claim for non infringement, the plaintiff is required under law to produce all evidence in that regard and it cannot choose to lead evidence in rebuttal at a lager date. The respondent also denies that the plaintiff is entitled to raise the plea of invalidity only after the defendant lets in evidence in support of its contention of infringement as alleged or at all. 4(5). Further, the plaintiff who is seeking to question the validity of the defendant's patent in the instant suit and the plaintiff is consequently obliged to adduce evidence in support of its aforesaid contention at the first instance and not in rebuttal to the respondent's evidence supporting its claim. The plaintiff has sought for a declaration as to non infringement inter alia on the ground that the respondent's patent is invalid. The burden of proving invalidity is on the plaintiff. It is the applicant who is bound to lead in evidence in support of its contentions and cannot shift the burden on the respondent and indirectly force the respondent to lead in evidence. Furthermore, the present application deserves to be dismissed at the threshold as the applicant is trying to reassess the order dated 04.10.2010 passed by the Hon'ble Division Bench. 4(6). If the plaintiff seeks to contend invalidity as a ground for seeking the declaration of non infringement as pleaded, it is bound and liable to let in all evidence that it seeks to rely upon in support of its aforesaid contention of invalidity. Further, if the plaintiff is desirous of raising the plea of invalidity in support of its declaration of non infringement, it is required to adduce evidence in that behalf and failure to adduce such evidence would tantamount to the plaintiff's abandoning its case of invalidity. Once the plea of invalidity is abandoned, the plaintiff is disentitled from re- agitating the same again. First, the plaintiff sought to push the defendant to begin trial and avoid discharging its burden of proof. When that attempt was thwarted and the Division Bench of this Hon'ble Court directed the plaintiff to commence trial and lead all evidence in support of its contentions, the plaintiff has filed this application. The aforesaid conduct, which is in clear disregard of the Order dated October 4, 2010 passed by this Hon'ble Court, clearly exposes the plaintiff's mala fides. 4(7). As per Order 18, Rule 3 of CPC, the plaintiff is entitled to reserve its right in letting evidence in rebuttal only on those issues where the burden of proof is on the defendant. On the contrary, in the instant case, the burden of proving invalidity of the respondent's patent is on the applicant and it is the applicant who is bound to lead in evidence in support of its case in the first instance and cannot be allowed to reserve its right to let in evidence in rebuttal on the issue of invalidity. It is denied that no prejudice will be caused to the defendant if the present application is allowed as alleged or at all. The present application is yet another attempt of the plaintiff to displace the burden of proof and if the said application is allowed, great prejudice would be caused to the defendant. In view of the above said circumstances, the application may be dismissed with compensatory costs. 5. The contents contained in the reply affidavit filed by the applicant/plaintiff are as follows: 5(1). In fact, the application has been filed in furtherance of the speedy trial and in exercise of the applicant's right under Order XVIII, Rule 3 CPC in view of the fact that the burden of proof in relation to certain of the issues framed in the above suit as well as in C.S.No.1111/2007 are on the applicant in respect of some of the issues and on the respondent in respect of the other issues. Where the burden of proof of various issues is on the plaintiff in respect of some and on the defendant in respect of the others, then the provisions of Order XVIII, Rule 3, which founded on the principles of natural justice and fair play demands that upon the defendant adducing evidence on those issues where the burden of proof rests on the defendant, the plaintiff must be given an opportunity to rebut the same by producing rebuttal evidence. 5(2). It is stated that the judgment of the Hon'ble Supreme Court passed on September 16, 2009 was primarily in relation to the appeals filed by the respondent in relation to C.S.No.1111/2007 wherein it is the respondent who has to establish the infringement of the patent. It is in that suit in relation to which the Hon'ble Supreme Court held that the suit should be taken up for trial on a day-to-day basis. The appeal filed in respect of the orders passed in relation to the suit filed by the applicant was also consequently disposed of on the same terms. The applicant, in terms of the orders of the Supreme Court, immediately filed its written statement in C.S.No.1111 of 2007 on 18.09.2009 itself. However, the respondent did not file its written statement in C.S.No.979 of 2007 until 15.10.2009. Where the burden in respect of various issues lies on one or the other party, the applicant has a right to reserve its rights to produce evidence in respect of issues on which the burden rests on the respondent and the same cannot be taken away. The very fact that the respondent has filed a counter opposing the same would show the attitude of the respondent with respect to the conduct of the trial which is clearly to delay and protract the proceedings. 5(3). The Hon'ble Division Bench only held that as the applicant had sought for a declaration that the plaintiff has not infringed the respondent's patent and therefore, it is for the applicant to let in evidence that its product had nothing to do with that of the respondent. If the respondent is to obtain a decree with respect to the relief sought for in C.S.No.1111/2007, the Hon'ble Division Bench has clearly observed that it is for the respondent to show that the vehicle manufactured by the applicant under the brand name "TVS Flame" was in infringement of its patent. Where the respondent sets up the patent in support of its claim for infringement, the applicant would be then required to prove the invalidity of the patent. In any event, the burden of proving number of issues in respect of both the suits rests on the respondent and therefore it is necessary for the applicant to adduce evidence in respect of such of those issues where the burden of proof lies on the respondent. Where the burden is on the respondent in respect of such issues, it is open to the respondent to adduce evidence in defence thereto by proving the invalidity of the patent. The Hon'ble Division Bench only held that as the plaintiff had sought for a declaration of non infringement, it was required to produce material in support thereof. In fact, the issue as to the invalidity of the patent is only the issue that has been framed in the suit filed by the respondent in C.S.No.1111 of 2007 and not in the above suit. While the applicant may be entitled to adduce material in support of its relief for non infringement, it cannot be prevented from adducing evidence upon the respondent adducing evidence in support of its case for infringement at the rebuttal stage, in order to establish the invalidity of such patent. 5(4). Besides the above, issue numbers 3, 4, 5 and 8 framed in the above suit are clearly issues where the burden of proof rests on the respondent and therefore, in respect of such issues as well the applicant is entitled to adduce rebuttal evidence at a later stage. Similarly, the burden of proof in C.S.No.1111 of 2007 in respect of issue numbers 1, 4, 5, 6, 7 and 8 are all issues where the burden of proof is that of the respondent and the applicant is entitled to adduce rebuttal evidence upon the respondent adducing evidence in support of its claim. 5(5). The question is not as to whether the burden of proving invalidity is on the applicant but when such burden has to be discharged. In view of the issues framed and the nature of the relief sought for in the two suits, it is submitted that the applicant ought to be permitted to adduce evidence in rebuttal on those issues where the respondent has the burden of proof. The applicant is not trying to re-assess the order of the Hon'ble Division Bench dated 04.10.2010. 5(6). The applicant has already pointed out that the number of issues in both the suits causes the burden of proving the same on the respondent and the applicant is then entitled to adduce evidence in answer to the said evidence by way of rebuttal. It cannot be contended that the prejudices the respondent in any manner. There is no question of displacing the burden of proof. Hence, the application may be allowed. 6. The applicant/plaintiff has placed the following averments in A.No.2691 filed for joint trial under Order XIV, Rule 8 of OS Rules r/w. Section 151 C.P.C.:- 6(1). It is alleged that both suits are ripe for trial, that the suit filed by the applicant is anterior in point of time wherein it complained of the respondent's repeated threats to institute proceedings for infringement, when according to the applicant there was no infringement committed and the respondent's alleged patent was in any event invalid, that subsequently, the respondent filed a suit for infringement and that the applicant's suit is filed under Section 106 of the Patents Act, 1970. 6(2). The respondent has described the cause of action for its suit in paragraph 44 of the plaint as continuing until the defendant declares that it would not manufacture, sell or offer for sale 125 cc Flame motorbike or any other motorbike of 100 to 225 cc range with lean burn, twin spark technology, that the applicant also identifies the cause of action for its suit as the respondent's act of issuing statements/communications to the effect that the applicant's product TVS Flame infringes the respondent's patent, which statements/communications are defamatory, disparaging and constitute "groundless threats" for the purposes of Section 106 of the Patent Act, that the cause of action for both the suits center around the right of the applicant to manufacture and sell its products TVS Flame and the claim of the respondent that such manufacture and sale infringes it patent No.19504, that the cause of action for both suits is the same bundle of facts, namely, the applicant's proposed introduction of TVS Flame motorbikes in the market and the respondent's reaction to the same and that it is the same patent, namely, patent No.195904, that forms of the subject matter of both suits, and the product, the sale and manufacture of which is claimed by the respondent to infringe the patent, namely, TVS Flame motorbike, is also common to both suits. 6(3). This is further borne about by the fact that the majority of issues framed by this Hon'ble Court vide orders dated 24.01.2009 in both the suits, apart from those questioning the maintainability of the suits, are directly related to the issue of alleged infringement of the respondent's patent and are therefore, similar. 6(4). It is an established principle of law that this Hon'ble Court has the inherent power to order joint trial of two suits if even some of the issues are common and some of the evidence to be let in is common, especially, when the two actions arise out of the same set of facts. In the instant case, it is not just some but a substantial portion of evidence to be let in is common as are the majority of issues to be decided. A joint trial ought to be ordered by this Hon'ble Court to avoid overlapping evidence being taken in the two cases. Such a trial will be useful inasmuch as it will save the expenses of two attendance by counsel and witnesses and this Hon'ble Court will be enabled to try the two suits at the same time and take common evidence. The power to order such a trial is an inherent power of this Hon'ble Court. 6(5). The fact that most of evidence in both suits is common becomes evident from a bare perusal of the affidavit of documents filed by both the parties. All documents mentioned by the applicant in its affidavit of documents in C.S.No.1111 of 2007 form a part of its affidavit of documents in the present suit. Same is the case with the affidavits of documents filed by the respondent. Also, the expert witnesses who will be called upon to testify before this Hon'ble Court are common to both suits. Therefore, there can be no doubt that majority of the evidence to be let in both the suits is common. 6(6). It is further stated that a joint trail will avoid two separate trials with overlapping evidence and issues and will be in the interest of expediency and justice, that no harm or prejudice will be caused to the respondent if joint trial of both the suits is ordered and that on the other hand, two separate trials will cause serious inconvenience and wastage of time and resources. 6(7). In view of the above, it is therefore prayed that this Hon'ble Court may be pleased to order a joint trial of both the suits being C.S.No.979 of 2007 and C.S.No.1111 of 2007. 7. The following are the contentions raised in the counter affidavit filed by the respondent/defendant:- 7(1). At the outset, it is stated that the present application is nothing but a sheer abuse of the process of law, devoid of any merit and is not maintainable. The present application is untenable at law and has been filed only to re-agitate and re-argue the question of who should lead in evidence first on the issue of invalidity which was argued at length and the Hon'ble Division Bench by an order dated 04.10.2010 directed the applicant herein who is the plaintiff in the suit filed prior in point of time to lead in evidence first. 7(2). The applicant/plaintiff has also filed another application being A.No.22558/2011 for reserving right to lead in evidence on the issue of invalidity of the respondent's patent. The applicant on realising that the said application is bound to fail has come out with the instant application to circumvent the order passed by the Division Bench of this Hon'ble Court and to indirectly achieve what it could not directly achieve in view of the order dated October 4, 2010 which is nothing but the abuse of process of law which ought not to be entertained. 7(3). With reference to paragraph 2 of the affidavit, it is submitted that the plaintiff has sought a declaration that its product TVS Flame which uses two spark plugs with screw fitted sleeve and three valves does not infringe the defendant's patent No.195904. The plaintiff seeks this declaration of non infringement on two counts - first on the ground that the defendant's patent No.195904 is itself invalid and second on the ground that even if valid, the plaintiff's product is different from the defendant's patent. The plaint proceeds on the aforesaid basis and the plaintiff has taken upon itself the burden of making good its aforesaid contentions. 7(4). It is denied that the majority of issues in both the suits are directly related to the issue of infringement of the respondent's patent and are therefore similar. It is submitted that the position would have been so as stated above had the applicant filed the suit only under Section 106 of the Patents Act for a declaration of groundless threat. Instead the applicant has filed a composite suit for reliefs such as a declaration for unjustified and groundless threats and for a declaration as to non infringement, invalidity of respondent's patent No.195904. Hence, the burden of proving that the respondent's patent is invalid and that the applicant's product is not an infringement of respondent's patent is heavily on the applicant. 7(5). The applicant is well aware that the said application is not maintainable and would fail in their attempt, has filed the present application to achieve indirectly what it cannot achieve directly. The present application is devoid of any merit and is liable to be dismissed and is in fact an abuse of process of law. 7(6). The respondent does not dispute the fact that some of the issues are common and some of the evidence to be let in would also be common. However, the applicant has come out with this application as an afterthought only with a mala fide intention to circumvent the order of the Division Bench of this Hon'ble Court wherein the applicant was directed to let in evidence on the issue of invalidity of respondent's patent as the applicant has specifically sought for a relief for a declaration of non infringement. The applicant who has not preferred any appeal against the said order and has in fact submitted itself to the order of Division Bench has come out with the instant application seeking for a joint trial. The applicant's main contention is on the premise that the majority of the issues are directly related to the infringement of the respondent's patent and thereby indirectly shifting its burden on the issue of invalidity on the respondent and to make the respondent herein to let in evidence on the issue of invalidity. The applicant herein is attempting to reassess the order passed by the Division Bench of this Hon'ble Court and the same deserves to be dismissed at the threshold. In view of the above said circumstances, the application may be dismissed with compensatory costs. 8. At the outset, it is advantageous