Gujarat High Court
Sarine Technologies Ltd vs Utpal Mistry on 7 May, 2018
Author: C.L. Soni
Bench: C.L. Soni
C/CS/2/2013 ORDER
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/CIVIL SUITS NO. 2 of 2013
With
CIVIL APPLICATION (OJ) NO. 1 of 2017
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SARINE TECHNOLOGIES LTD
Versus
UTPAL MISTRY
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Appearance:
MR DHARMESH V SHAH(1050) for the PETITIONER
MR SHALIN MEHTA for the PETITIONER
MS VALINI PANTA for the PETITIONER
DR RAJESH H ACHARYA(2233) for the RESPONDENT(s) No. 3
MR JR SHAH(762) for the RESPONDENT(s) No. 1,2
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CORAM: HONOURABLE MR.JUSTICE C.L. SONI
Date : 07/05/2018
ORAL ORDER
1. At the hearing of the application, when the Court put to learned senior advocate Mr.Thakore that when applicant no.2 has filed post-grant proceedings under Section 25(2) of the Patents Act, 1970 (the Act) before the counterclaim was filed, how the counterclaim for revocation of patent in the suit was maintainable in view of the decision of the Hon'ble Supreme Court in the case of Aloys Wobben and Another Vs. Yogesh Mehra and others reported in (2014) 15 SCC 360.
2. Mr.Thakore fairly stated before the Court that the counterclaim filed by the defendants was not maintainable in view of the decision of the Hon'ble Supreme Court. The Hon'ble Supreme Court in the said decision has held and observed in para-23 as under.
23. We do not have the slightest hesitation in accepting the Page 1 of 3 C/CS/2/2013 ORDER above contention (fifth in the series of contentions), that even though more than one remedies are available to the respondents in Section 64 of the Patents Act, the word "or" used therein separating the different remedies provided therein, would disentitle them to avail of both the remedies, for the same purpose, simultaneously. On principle also, this would be the correct legal position.
3. Learned senior advocate Mr.Thakore states before the Court that in light of the decision of the Hon'ble Supreme Court, since the counterclaim was not maintainable, defendants in the suit do not press for the counterclaim and seeks permission to withdraw the counterclaim.
4. When the counterclaim is not pressed and being withdrawn, the suit proceedings shall be required to be decided as if there is no counterclaim. This Court assumed jurisdiction of the patent suit by virtue of the proviso to Section 104 of the Act which provides that on filing of the counterclaim by the defendant in the suit, the suit along with the counterclaim shall be transferred to the High Court for decision. However, now when the counterclaim is being withdrawn, this Court shall cease to have jurisdiction to decide the suit. Therefore, the suit shall be required to be re-transferred to the District Court. Since the suit, is required to be re-transferred to the District Court, the O.J. Civil Application No.1 of 2017 filed before this Court is required to be disposed of.
5. In view of the above, the counterclaim in the suit filed by the defendants stand disposed of as withdrawn. Consequently, the suit is ordered to be re-transferred to the District Court, Surat. The Registry shall send the papers of the suit to the District Court, Surat forthwith for deciding the suit on its own merits and in accordance with law. Since the suit is of the year 2010 and such suit, after it was transferred to this Court, has remained pending, for more than four years, the District Court may give priority in hearing the suit.
Page 2 of 3 C/CS/2/2013 ORDER6. The O.J. Civil Application No.1 of 2017 is disposed of as the suit is ordered to be transferred to the District Court.
(C.L. SONI, J.) Vijay Page 3 of 3