Madras High Court
M/S.Tvs Motor Company Limited vs M/S.Bajaj Auto Limited on 21 September, 2011
Author: S. Palanivelu
Bench: S. Palanivelu
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 to bear in mind the prayers contained in both the suits.
8(1). The Prayers in C.S.No.979 of 2007 read as follows:
a) declaring that the threats held out by the Defendant on September 1 and 3, 2007 that the Plaintiff is infringing the Defendant's patent No.195904 and the Defendant is proposing to take infringement action against Plaintiff are unjustified;
b) declaring that the Plaintiff's product TVS Flame which uses two spark plug which screw-fitted sleeve and three valves does not infringe Patent No.195904 of the Defendant;
c) granting permanent injunction restraining the Defendant by themselves or through their agents, servants, licensees, employees and distributors and anyone claiming through them and/or all those in active concert and participation with them from continuing the issuance of threats that the plaintiff is infringing the Defendant's patent No.195904 and/or that the Defendant is contemplating infringement action against the Plaintiff or threats of like nature and import, directly or indirectly in any manner including by way of circulars, advertisements and communications, oral or in writing to the Plaintiff or any other person and also thereby interfering with the launch and sale of the product TVS Flame;
d) directing the Defendant to compensate the Plaintiff a sum of Rs.1,00,00,000/- or such other amount as this Hon'ble Court may determine after the records are produced for the damages sustained on account of the unjustified threats made by the Plaintiff;
e) for an order for costs of the suit in favour of the Plaintiff.
8(2). The reliefs sought for in C.S.No.1111 of 2007 are as under:
a) a permanent injunction restraining the Defendant, its directors, officers, servants, agents, assigns, successors-in-business, legal representatives or anyone claiming through or under it from in any manner infringing the Plaintiff's patent No.195904 and/or from using the technology/invention described in the said Patent No.195904 and/or manufacturing, marketing, selling, offering for sale or exporting 2/3 wheelers, including the proposed 125 cc FLAME motorcycle containing an internal combustion engine or any internal combustion engine or product which infringes the Plaintiff's patent No.195904;
b) a preliminary decree be passed in favour of the Plaintiff directing the Defendant to render accounts of profits made by sale or offering for sale/export of 125 cc FLAME motorcycle or any other motorcycle of 100 CC to 225 cc range with twin spark plug technology infringing plaintiff's patent No.195904;
c) the Defendant be ordered and decreed to pay to the Plaintiff sum of Rs.10,50,000/- as damages for infringement of patent No.195904;
d) the Defendant be ordered and decreed to deliver up to the Plaintiff, for destruction all the infringing copies and articles including vehicles containing engines that infringe the Plaintiff's Patent;
e) for costs of the suit.
9. The learned Single Judge of this Court on 10.03.2010 passed an order directing the defendant, namely, plaintiff in C.S.No.1111 of 2007 to start with letting in evidence. The defendant carried the matter in appeals before the Division Bench of this Court in O.S.A.No.132 and 133 of 2010 in which, the Division Bench passed orders on 04.10.2010 reversing the order of the learned Single Judge and directing the plaintiff to produce their evidence at the first instance. The issues in both the suits were already framed before the order passed by the learned Single Judge. The following are the issues framed on 08.12.2009 in both the suits:
Issues in C.S.No.979 of 2007 Issues in C.S.No.1111 of 20071) Whether this Court has got territorial jurisdiction to try the suit and whether the Plaintiff has got any cause of action as prayed for by the Plaintiff and more so, whether part cause of action has arisen within the jurisdiction of this Court?
2)Whether the Defendant has issued the press release on 1/9/2007 and 3/9/2007 and whether the same would constitute a threat? And if so, groundless threat?
3) Whether the present suit is barred by the provisions of Order 2 Rule 2 of CPC, 1908 in view of the earlier suit filed in the Bombay High Court in suit No.3132 of 2007?
4) Whether the Plaintiff is entitled to seek an injunction restraining the Defendant from issuing a threat of infringement as prayed in prayer even after the Defendant has filed the suit for infringement being C.S.No.1111 of 2007 against the Plaintiff herein?
5) Whether the suit has become infructuous as claimed by the Defendant in para 4.1 of the Written Statement?
6) Whether the Plaintiff proves that the Plaintiff's product TVS Flame does not infringe the Defendant's patent?
7) Whether the Plaintiff is entitled to a declaration as prayed for in prayer a) and b) of the Plaint?
8) Whether the suit has been properly valued on the ground of damages? If so, whether the Court-fee has been properly paid?
9) Whether the Plaintiff is entitled to relief of damages?
10) Whether the Plaintiff is entitled to reliefs claimed by them?
1) Whether the Defendant has infringed the Plaintiff's patent No.195904?
2) Whether the Defendant is entitled to question the validity of the Plaintiff's patent No.195904?
3) If the answer to 2) is in the affirmative, whether the Defendant proves that the Plaintiff's patent No.195904 is invalid/not patentable in view of US Honda Patent No.4534322 read with 678/MUM/2001 and 82/MUM/2001?
4) Whether the Plaintiff is entitled to the permanent injunction prayed for?
5) Whether the use of twin spark plugs in an engine delimited by the bore size of 45 mm to 70 mm impart inventive step particularly in light of the Honda Patent 4534322?
6) Whether the burning of Lean Air Fuel mixture can be regarded as an element (constructional features) of the product claimed in the suit patent?
7) Whether the Plaintiff is entitled to damages as prayed for or otherwise?
8) Whether the Plaintiff is entitled to any of the reliefs prayed for in the above suit?
As to the relief prayed for under Order XVIII Rule 3 of CPC in A.No.2258 of 2011:
10. The plaintiff filed this application praying the Court to permit it to reserve its right to let in evidence on the issue of invalidity of respondent's/defendant's patent in answer to the respondent/defendant letting in evidence regarding validity and infringement of its patent in C.S.No.979 of 2007. The application is opposed by the defendant from various angles.
Respective contentions:
11. Mr.Vaidhyanathan, the learned Senior Counsel appearing for the plaintiff would contend that the plaintiff cannot anticipate what evidence the defendant is going to lead and it has to meet the possible evidence which would be revealed through the mouth of the defence witnesses, that the parties have to establish that their products as 'new inventions' as defined in Section 2(l) of the Patent Act, 1970, that the contents of Section 3 of the Act deals with, what are not inventions, that Section 3(d) with an Explanation and Section 3(e) would deal with a mere discovery of new form of known substance, that as per Section 7(1), an application for patent shall be made for one invention only and while the parties are engaged in establishing their respective rights, the plaintiff could not anticipate what category of evidence would come out from the side of the defendant and hence, the plaintiff has to lead a rebuttal evidence after the evidence of defendant was over, that according to Section 10(5) a single inventive concept has to be considered as to whether it is a system of dual spark plug or single spark plug, that in the plaint in C.S.No.1111 of 2007, there are as many as six claims projected by the defendant in which, the first and sixth claims cannot go together and both of them are two inconsistent pleas for the reason that the first claim speaks of two spark plugs, whereas the sixth claim refers to single spark plug alone and when the defendant leads evidence as to these features, the plaintiff must be made entitled to lead evidence in rebuttal to the evidence adduced by the defendant and hence, permission for reservation of right under Order XVIII Rule 3 of CPC for the plaintiff is very much essential.
12. In order to consider the above said contentions of the learned Senior Counsel for the plaintiff, it is profitable to extract the relevant provisions of the Patents Act, 1970 and Claims No. 1 and 2 incorporated in the plaint in C.S.No.1111 of 2007.
Section 2. Definitions and interpretations.-
(j) "invention" means a new product or process involving an inventive step and capable of industrial application;
(ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
(k) .....
(l) "new invention" means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art.
(m) "patent" means a patent for any invention granted under this Act.
Section 3. What are not inventions.-The following are not inventions within the meaning of this Act,-
(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
Explanation.-For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;
(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.
Section 7. Form of application.-
(1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.
Section 10. Contents of specifications.
(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.
Claim Nos.1 and 6 in C.S.No.1111 of 2007 read thus:
"We claim:
1. An improved Internal Combustion Engine working on four stroke principle, having two valves per cylinder, for efficient burning of lean air fuel mixture used in engines wherein the diameter of cylinder bore ranges between 45 mm and 70 mm, characterised in that said Internal Combustion Engine comprises a pair of spark plugs, namely a first spark plug (21) and a second spark plug (22), a cylinder head (25), a sleeve (23), a pair of sealing means (24, 24a), fixing means (26) and a sleeve cup (27); said first and second spark plugs (21 and 22) being fitted to said cylinder head (25) and capable of igniting air fuel mixture at predetermined instant; said second spark plug (22), being housed within said sleeve (23) located within timing chain cavity; said sleeve (23) being detachably push fitted to said cylinder head (25) and held in position by said fixing means (26), said sealing means (24, 24a) being adapted between said cylinder head (25) an the outer periphery of said sleeve (23) and said sleeve cap (27) being fitted on said cylinder head (25).
6. An improved Internal Combustion Engine working on four stroke principle, having two valves per cylinder, for efficient burning of lean air fuel mixture used in engines wherein the diameter of cylinder bore ranges between 45 mm and 70 mm characterised in that said Internal Combustion Engine comprises a spark plug (22), a cylinder head (25), a sleeve (23); pair of sealing means (24, 24a), fixing means (26) and a sleeve cap (27); said spark plug (22) being fitted to said cylinder head (25) and capable of igniting air fuel mixture at predetermined instant; said spark plug (22) being housed within said sleeve (23) located within timing chain cavity; said sleeve (23) being detachably push fitted to said cylinder head (250 and held in position by said fixing means (26), said sealing means (24, 24a) being adapted between said cylinder head (25) and the outer periphery of said sleeve (23), and said sleeve cap (27) being fitted on said cylinder head (25).
13. Mr.P.S.Raman, the learned Senior Counsel also appearing for the plaintiff would put forth his contentions that, as alleged by the defendant in their counter affidavit, the plea of the plaintiff under Order XVIII, Rule 3 is not re-agitation of claim nor re-litigation by the plaintiff, that the order passed by the Division Bench in O.S.A.No.132 and 133 of 2010 would not certainly operate as res judicata, that the issue with regard to Order XVIII, Rule 3 was not at all dealt with by the Division Bench, that the relief under this provision is available to a person who is required to begin the evidence, that since the Division Bench observes that the plaintiff has to begin the trial, the plaintiff can undoubtedly invoke Order XVIII, Rule 3 of the Code, that the opposition by the defendant that prayer for joint trial and the relief claimed under Order XVIII, Rule 3 is inconsistent which is not sustainable, that in paragraph 49 of the Division Bench order, it is observed that C.S.No.1111 of 2007 is a counter claim and in the counter also the defendant has consciously admitted so and if it is so, joint trial can very well be ordered, that the plaintiff did not oppose joint trial either before the Single Judge or before the Division Bench on the earlier occasion on the issue of right to begin, that only Order XVIII, Rule 1 and 2 were discussed by the Division Bench and that the plaintiff is legally entitled to get the relief of permission under Order XVIII, Rule 3 of CPC.
14. Mr.T.V.Ramanujan, the learned Senior Counsel appearing for the defendant would enumerate the points favourable to the defendant to the effect that the plaintiff has opted to follow the later course, occurring in Order XVIII, Rule 3 i.e. "at his option" and the option of the plaintiff has already been exercised on the earlier occasion, that the plaintiff has never prayed for joint trial on earlier occasion, that Rules 1 to 3 of Order XVIII, operate simultaneously together, that there was no direction by the learned Single Judge earlier for joint trial and now it cannot be prayed for and the plaintiff had not taken steps for clarifying the order of Single Judge or the Division Bench as to the joint trial, that prayer to reserve right is contrary to earlier order of this Court, that issue No.5 and 6 framed in C.S.No.979 of 2007 are purely questions of law and they have to be established by the plaintiff alone, that the plaintiff is bound to prove that their product is distinguished, which is nothing to do with the defendant's product and the onus is always lying on the plaintiff which never shifts to the defendant, that as far as the issues framed in C.S.No.979 of 2007 are concerned, the entire burden is on the plaintiff and the burden does not shift to defendant and hence, Order XVIII, Rule 3 could not be invoked, that when the alleged right is available under Order XVIII, Rule 3 for the plaintiff, it should have been argued before the Division Bench, that they could not be brought in the present stage, that joint trial is not at all warranted, but a simultaneous trial of both the cases on consolidated issues can be taken up by the Court, that the issues in both the cases cannot be clubbed together, that for issue No.1 in C.S.No.1111 of 2007, the defendant has to lead evidence and for other issues and the plaintiff ought to adduce its evidence and that the reliefs claimed by the plaintiff for joint trial and under Order XVIII, Rule 3 CPC are strange.
15. Mrs.Nalini Chidambaram, the learned Senior Counsel who is also appearing for the defendant would project the contentions that in order to seek the permission to reserve right under Order XVIII, Rule 3, the plaintiff has to show that the defendant is bound to prove some of the issues, which is a condition precedent, that the Division Bench has devoted many paragraphs asserting that burden of proof is on the plaintiff and hence, it is not open to the plaintiff to expect the defendant to prove, that Order XVIII, Rule 3 has wrongly been invoked under mistaken premise, ignoring the findings of the Division Bench and since it is a case of the plaintiff on alleged groundless threats, the plaintiff has to establish its contentions, that the provision in Order XVIII, Rule 3 of CPC can be invoked in a single Suit only and not in connected Suits, that the applications are misconceived which are filed on already concluded matter and the filing of the present petitions are hit by principles of res judicata, that view and the findings have already been rendered by the Division Bench on these points, that there was no positive prayer for joint trial before this Court earlier and that both the applications are not sustainable in the eye of law.
As regards right which flows from Order XVIII, Rule 3:
16. Before entering into the discussions touching the rights of the parties under Order XVIII, Rule 3, the provision has to be extracted for reference and better appreciation of available facts.
Order XVIII, Rule 1 to 3 reads as under:
1. Right to begin.-The plaintiff has the right to begin unless the defendant admits the facts alleged by the plaintiff and contends that either in point of law or on some additional facts alleged by the defendant the plaintiff is not entitled to any part of the relief which he seeks, in which case the defendant has the right to begin.
2. Statement and production of evidence.-(1) On the day fixed for the hearing of the suit or on any other day to which the hearing is adjourned, the party having the right to begin shall state his case and produce his evidence in support of the issues which he is bound to prove.
(2) The other party shall then state his case and produce his evidence (if any) and may then address the court generally on the whole case.
(3) The party beginning may then reply generally on the whose case.
[(3A) Any party may address oral arguments in a case, and shall, before he concludes the oral arguments, if any, submit if the Court so permits concisely and under distinct headings written arguments in support of his case to the Court and such written arguments shall form part of the record.
(3B) A copy of such written arguments shall be simultaneously furnished to the opposite party.
(3C) The Court shall fix such time-limits for the oral arguments by either of the parties in a case, as it thinks fit.]
3. Evidence where several issues.-Where there are several issues, the burden of proving some of which lies on the other party, the party beginning may, at his option, either produce his evidence on those issues or reserve it by way of answer to the evidence produced by the other party; and, in the later case, the party beginning may produce evidence on those issues after the other party has produced all his evidence, and the other party may then reply specially on the evidence so produce by the party beginning; but the party beginning will then be entitled to reply generally on the whose case.
17. A plain reading of Rule 3 of Order XVIII would indicate that the party beginning the evidence at his option may reserve right, by way of answer to the evidence produced by the other party on which lies the burden of proving some of the issues, to lead rebuttal evidence after the other party completes its evidence. In order to comply with the statutory requirements as contained in this provision, the Court has to see whether the burden of proof lies on the defendant as far as some of the issues are concerned.
18. When a joint trial is taken up for both the suits, naturally, the oral evidence would go interlinking and touching the issues framed in both the suits. Issue Nos. 5 and 6 in C.S.No.1111 of 2007 are expected to be proved by the defendant. It is relatable to issue No.4 in C.S.No.979 of 2007. As far as issue 4 in C.S.No.1111 of 2007 is concerned, even though the issue appears as a casual one, pertaining to prayer in the suit, the defendant is burdened with the duty of proving its entitlement to get permanent injunction with regard to the reported infringement of its patent No.195904 and the functioning of the internal combustion engine, which infringes of the defendant's patent; further, a preliminary decree in favour of the defendant directing the plaintiff to render accounts of profits; a claim for damages for infringement at Rs.10,50,000/- and also seeking delivery of the articles to the defendant for destruction are also sought for by defendant who is plaintiff in C.S.No.1111 of 2007. In view of the above said prayers, certainly certain burden is on the defendant to establish its case with reference to such issues. Hence, as required by the provision, the burden of proving some of the issues is lying on the defendant and hence, the statutory requirement for claiming relief of reserving right to lead rebuttal evidence is satisfied.
19. Further, in C.S.No.979 of 2007, issue No.5 reflects one of the defences raised by the defendant that the suit has become infructuous. It is also for the defendant to show how the suit has become infructuous. As far as issue No.3 is concerned, it is one among the defence versions that the suit is barred by the provisions of Order 2, Rule 2 of CPC in veiw of the earlier suit filed in Bombay High Court in Suit No.3132 of 2007. In this respect, the defendant is bound to establish that what are the reliefs omitted in suit No.3132 of 2007 and in what way Order 2, Rule 2 would bar or operate against the plaintiff. In these counts also, it is to be observed that the defendant is bound to prove the above said issues. Hence, there is nothing wrong on the part of the plaintiff to pray for the relief under this provision.
20. It is contended by the plaintiff that the right of the party beginning to lead evidence in rebuttal after the other party has let in evidence is absolute, that there is no question of re-agitating or re-litigating on the same issue, since neither the Single Judge nor the Division Bench, on earlier occasion, has discussed the rights of the parties under Order XVIII, Rule 3 and that there would be no shifting of burden in the issues framed in C.S.No.979 of 2007 and for applicability of provisions under Order XVIII, Rule 3, it has to be seen whether the burden of proving shifts from one side to the other, and that the issue before the Single Judge and the Division Bench was only with respect to the point, who has to begin first.
21. A careful scrutiny of the orders passed by the Single Judge and the Division Bench on earlier occasion would show that there was no discussion nor conclusion by both the Benches with regard to right available under Rule 3 of Order XVIII.
22. The learned Senior Counsel for the plaintiff garnered support from a decision of the Delhi High Court dated 27.01.2010 in C.M.(M) No.718 of 2007 (Wazirpur Small Industries Association (Regd.) v. Union of India and others) wherein it is observed that the plaintiff after closing his evidence on those issues, even if he does not tell the Court that he was reserving his right to lead evidence in rebuttal, will have a right to lead evidence in rebuttal after the defendant had led evidence on those issues, where the onus of proving was on the defendant, and that it is only after defendant's evidence the plaintiff can decide whether there was necessity of leading evidence in rebuttal or not and at that stage the plaintiff can exercise his right of leading evidence in rebuttal.
23. In another decision cited by the learned Senior Counsel for the plaintiff in MANU/OR/0087/2003 : 96 (2003) CLT 68 (Chinanchiti Raj kishore Subudhi v. Smt.M.Manjula Senapati and others), the Orissa High Court has held that the rejection of the application under Order XVIII, Rule 1 CPC does not ipso facto operates res judicata or constructive res judicata so as to preclude the plaintiff from exercising the option under Order XVIII, Rule 3. It was argued that on behalf of the defendant that the Division Bench has already decided the right of the plaintiff on the prior occasion and hence, present claim of the plaintiff is barred by res judicata. But as already stated, there was no discussion nor finding as regards Order XVIII Rule 3 either in the order of the Single Judge or in the order passed by the Division Bench. In the above said case before the Orissa High Court, the application under Order XVIII, Rule 1 was rejected. But, here it is not the case.
24. The learned Senior Counsel for the defendant would place reliance upon a decision of the Hon'ble Apex Court in (2011) 3 SCC 408, (M.Nagabhushana v. State of Karnataka and others) in which Their Lordships have held as follows:
"21. Following all these principles a Constitution Bench of this Court in Direct Recruit Class II Engg. Officers Assn. v. State of Maharashtra8 laid down the following principle: (SCC p. 741, para 35) 35. an adjudication is conclusive and final not only as to the actual matter determined but as to every other matter which the parties might and ought to have litigated and have had decided as incidental to or essentially connected with subject-matter of the litigation and every matter coming into the legitimate purview of the original action both in respect of the matters of claim and defence. Thus, the principle of constructive res judicata underlying Explanation IV of Section 11 of the Code of Civil Procedure was applied to writ case. We, accordingly hold that the writ case is fit to be dismissed on the ground of res judicata.
22. ....
23. Thus, the attempt to re-argue the case which has been finally decided by the court of last resort is a clear abuse of process of the court, regardless of the principles of res judicata, as has been held by this Court in K.K. Modi v. K.N. Modi9. In SCC para 44 of the Report, this principle has been very lucidly discussed by this Court and the relevant portions whereof are extracted below: (SCC p. 592) 44. One of the examples cited as an abuse of the process of the court is relitigation. It is an abuse of the process of the court and contrary to justice and public policy for a party to relitigate the same issue which has already been tried and decided earlier against him. The reagitation may or may not be barred as res judicata.
25. With reference to the above said decision, it has to be stated here that there was no adjudication with regard to the rights of the parties under Order XVIII, Rule 3 at any point of time anterior to the present proceedings. The learned Single Judge has mentioned that the learned Senior Counsel for the plaintiff referred to the scope of Order XVIII, Rule 3. But, there was no adjudication on this point in the following paragraphs of the order. It was not argued before the Division Bench and hence, no question of re-arguing on the issue arises. Hence, the application is not barred by principles of res judicata nor constructive res judicata.
26. The learned Senior Counsel for the defendant also relied upon a decision reported in AIR 1954 V.P. 53 (Vol.41, C.N.21), Ratti Lal Panchhor Chawra v. Raghu and others, in which it is held as under:
"Under O.18, R.1 the plaintiff has the right to begin unless the defendant admits the facts alleged by the plaintiff and contends that either in point of law or on some additional facts alleged by the defendants the plaintiff is not entitled to any part of the relief which he seeks, in which case the defendant has a right to begin. The provisions of this Rule are mandatory and the Court is bound to follow them.
The provisions of O.18. R.3 are subject to the provisions of R.1. Whether the plaintiff should lead the evidence or the defendant is to be determined in accordance with R.1. Then R.3 is applied where there are several issues the burden of proving some of which lies on the other party."
27. A decision of the Panjab and Haryana High Court reported in AIR 2003 Punjab and Haryana 73, Dinesh Kumar v. State of Haryana and others, was cited on behalf of the defendant in which it is held as under:
As referred to above, if the defendants had led any evidence in support of the issue, the onus of which was on the defendants, the plaintiff could certainly lead evidence to rebut the evidence led by the defendants. However, in the present case, the position is entirely different. As referred to above, in the present case, the plaintiff wanted to produce evidence to rebut the evidence led by the defendants in rebuttal to the evidence led by the plaintiff, on the issues the burden of which was on the plaintiff. In my opinion, this could be allowed to be done. I am further of the opinion that the learned trial Court had rightly dismissed the application of the plaintiff and no fault could be found with the same.
28. In the above said case, the permission to reserve right to lead rebuttal evidence was turned down by the Court since the plaintiff intended to produce evidence to rebut the evidence led by the defendant in rebuttal to the evidence led by the plaintiff on the issues the burden of which was on the plaintiff. But, in the present case on hand, the plaintiff intends to let in rebuttal evidence on the issue which have to be proved by the defendant.
29. The learned Senior Counsel for the plaintiff placed reliance upon a Division Bench decision of Punjab and Haryana High Court reported in AIR 1983 Punjab and Haryana 210, Smt. Jaswant Kaur and another v. Devinder Singh and others, in which the Court has elaborately dealt with the import of Rule 3 of Order XVIII, which goes as under:
"5. Again in giving a meaning to R.3 the larger purpose thereof cannot be lost sight of nor is it to be construed in isolation from the preceding Rr.1 and 2. These provide for the right to begin in the order in which the parties are to state their case and produce evidence in support of the issues and the burden of proof whereof rests on them. When read along with these provisions it seems to be more than manifest that the real object of R.3 is to put the opposite party on its guard that the evidence it is going to lead would be challenged not only by the cross-examination of witnesses but also by positive evidence by way of rebuttal. It is in a way a notice to the opposite side of the reserved right to lead evidence again. In our jurisprudence, based as it is on the adversary system, the fair rule of the game is that the other party should be made well aware before it begins its evidence that it would be matched and opposed by evidence in rebuttal. Not exercising the above option of reserving such a right up to penultimate stage would put the other side off its guard and it might well rest on its cars without anticipating any testimony by way of rebuttal. This is the prejudice which R.3 seems intended to avoid and obviate."
30. The above said observations by the Division Bench would explain and enlarge the meaning of the provision under Order XVIII, Rule 3 to the effect that it is an indication to the other party to keep itself alert to face another chance given by the Court to the opposite party while leading rebuttal evidence. As observed in the above said decision, seeking of permission to reserve right to lead rebuttal evidence is a notice to the other side to make it aware of the possible action initiated on the side of the plaintiff and to keep the defendant side viable to face the evidence.
31. In this connection, the arguments of the learned Senior Counsel for the plaintiff that, while claims No.1 and 6 contained in the plaint in C.S.No.1111 of 2007 are spoken by the defendant's witness, the plaintiff should have an opportunity to rebut the same through plaintiff's witness, has got considerable force.
Whether application is infructuous:
32. The defendant contends that the application under Order XVIII, Rule 3 has become infructuous for the reason that after having already let in evidence on the issue of alleged invalidity, the question of plaintiff reserving any right to lead further evidence on the issues of validity after the defendant has let in its evidence cannot and does not arise. On the side of the plaintiff proof affidavit for the Chief Examination has been field which is referred by the defendant that the evidence was let in on the issue of alleged invalidity. But the fact remains that P.W.1 has not so far been examined in cross. Hence, it cannot be stated that the proof affidavit would turn to be an absolute evidence. There is no question of becoming the application infructuous. In this context, a decision of the Orissa High Court is cited on behalf of the defendant reported in AIR 1977 Orissa 87, (Aranya Kumar Panda v. Chintamani Panda and others) in which it is observed as follows:
"....I am of the opinion that the provisions of Order 18, Rule 3 are sufficiently complied with if the party leading evidence intimates the court before the other party begins its evidence that it is reserving its right to adduce evidence in rebuttal on the other issues. I am fortified in this view by the decisions reported in AIR 1969 Andh Pra 82 (Illapu Nookalamma V. Illaput Simachachalam) and AIR 1971 Mys 17 (S.Chandra Keerti V. Abdul Gaffar). The plaintiff was, therefore, within his limits in exercising the option after the close of his evidence and before the commencement of the defendant's evidence.
7.It is no doubt true that if the plaintiff at the outset chooses to call any evidence covered by the option contemplated under Order 18 Rule 2 CPC, he will not be permitted to give further evidence in rebuttal of the evidence produced by the defendants."
33. A party having right to begin is required to produce his evidence as per Rule 2 of Order XVIII. Afterwards, he is precluded from letting in further evidence on the pretext of letting in rebuttal evidence. That means, the party should have produced all his evidence during the proceedings under procedure adumbrated under Rule 2 of Order XVIII. He can only rebut the evidence, which is to be led by the other party, under Order XVIII, Rule 3. It is the caution given to the party beginning the evidence. In the following paragraphs No.36 and 37 further observations are available on this point.
34. The learned Senior Counsel appearing for the defendant also relies upon a decision of the Rajasthan High Court reported in AIR 1970 Raj 278 (Inderjeet Singh v. Raghunath Singh and others) in which it is held as follows:
"... ... It does not prescribe the stage at which the party leading evidence should apprise the Court of its exercising the option under Order 18, Rule 3, ... ... I am of the opinion that the provision under the above rule is sufficiently complied with if the party in question states before the other party begins its evidence that it is reserving its right to adduce evidence in rebuttal on the other issues. This it can do only if it has actually not led any evidence on those issues ...."
35. In the present case, the plaintiff has come forward beforehand, indicating that he is seeking permission to reserve its right to adduce evidence in rebuttal. Hence, the statutory requirement under Rule 3 of Order XVIII is satisfied. There is no scope to conclude that the petition has become infructuous.
No piecemeal evidence, contention as to:
36. It is contended by the defendant that the plaintiff cannot be allowed to withhold its evidence and to produce the same under the guise of rebuttal evidence after the defendant evidence was recorded. For this, Rule 2 of Order XVIII is referred to. Order XVIII, Rule 2(1) reads thus:
Statement and production of evidence:
(1) On the day fixed for the bearing of the suit or on any other day to which the hearing is adjourned, the party having the right to begin shall state his case and produce his evidence in support of the issues which he is bound to prove."
37. What required in this provision is that the party having right to begin shall state his entire case and to produce his evidence in support of the issues. The plaintiff has produced proof affidavit for chief examination and also affidavit of documents which shows that he has produced his entire case before this Court. What he claims now is to rebut the evidence adduced on the side of the defendant with reference to the case of the plaintiff. Such leading of rebuttal evidence does not amount to introducing additional evidence nor a new piece of evidence. Hence, no question of adducing piecemeal evidence by the plaintiff would arise.
Whether application is filed to circumvent the Division Bench order:
38. It is argued by the defendant's side that the present application is filed to circumvent the Division Bench order by stating that the plaintiff is required to let in evidence on the issue of alleged invalidity as well as alleged non infringement. In the considered view of this Court, there is no material showing that the present application is an attempt to circumvent the order of the Division Bench. The rights available to the parties under this provision were not touched by the Division Bench.
39. It is also argued that the application is misleading and mischievous and that the affidavit of this petition does not whisper that the plaintiff is praying for a declaration of non-infringement and no mention is made as to the non-infringement, but, only the allegations with regard to declaration on the groundless threat are found. Even if the averment as regards non infringement is not found in the affidavit, it cannot be stated to be misleading one, because it is to be noted that the affidavit opens from the reliefs prayed for in C.S.No.979 of 2007. So, it could not be stated that the application is misleading.
40. Much was said on behalf of the defendant that there can be no rebuttal evidence as burden is on the plaintiff to prove invalidity and non infringement. The prayer in the petition is to the effect that the plaintiff seeks for permission to reserve its right to let in evidence on the issue of invalidity of the respondent's/defendant's product in answer to the respondent/defendant letting in evidence rebutting validity and infringement of its patent in C.S.No.979 of 2007. The defendant is bound to lead evidence as to the above said validity and infringement of its patent to meet the pleadings in C.S.No.979 of 2007. In this context, the plaintiff seeks for letting rebuttal evidence as regards the evidence adduced by defendant as afore-stated.
41. The pleadings contained in Paragraph 62 of the plaint in C.S.No.979 of 2007 is referred by the defendant's learned Senior Counsel as to the burden of proof. They are as follows:
"In effect, this means that the only defence of the Defendant once the fact of the threat by the Defendant has been established is to prove that the plaintiff has infringed its patent. So the burden of proof of the Defendant in this suit equals its burden of proof in a properly constituted suit for infringement. But despite such burden, namely the burden to prove that the Plaintiff has infringed its patent in order to justify the threat the Defendant has issue, being cast on the Defendant by Section 106(2) of the Patents Act, the Plaintiff has taken upon itself the burden of establishing that there is no infringement by the Plaintiff of the Defendant's patent in issue. This course is legally permitted as the Plaintiff has choice of leaving it to the Defendant' to prove that the Plaintiff has infringed the rights of the former or to prove its case that it has not infringed. The Plaintiff has opted to follow the later course."
42. It is to be noted that the burden of proving non-infringement is on the part of the plaintiff of the defendant's patent. But the plaintiff will also lead evidence that the groundless threats held out by the defendant, that the plaintiff is infringing the defendant's patent No.195904 and the defendant is proposing to take infringement action against the plaintiff, are unjustified. When the plaintiff leads such evidence, it is incumbent on the defendant to deny it in its evidence and it will definitely deny the same in its evidence and if there were any aspect to be rebutted on factual grounds, the plaintiff may let in rebuttal evidence, for which it is now seeking for the relief. In the above said pleading part of the plaint, it is alleged that the burden of proof of the defendant in the suit equals its burden of proof in a properly constituted suit for infringement. In the defendant's suit in C.S.No.1111 of 2007, it is pleaded that this present plaintiff infringes the defendant's patent No.195904 and hence, it is for this defendant to elicit adequate and satisfactory evidence to prove. In this course, incidentally the patent of the plaintiff will also be touched and so, the plaintiff in turn would rebut such evidence in the event of leading rebuttal evidence. The above said features on both sides are so delicate and they have to be approached with great caution. Hence, the contention that there can be no rebuttal evidence as the burden of proof of validity and infringement be proved by the plaintiff positively, cannot be countenanced.
43. In view of the above, I am of the considered opinion that the plaintiff has to be permitted to reserve its right to let in rebuttal evidence as prayed for.
A.No.2691 of 2007 for joint trial:
44. It is the contention of the plaintiff that since the facts of both the cases are interlinked and the issues framed in both the cases have to be tried jointly with reference to the facts available in both cases and common question of law and facts have arisen and in order to avoid inconsistent findings in the outcome of both the cases and it may save judicial time, it is necessary to have a joint trial of both the cases. It is also stated that the issues are inter-related and they have to be addressed by both parties simultaneously on the basis of the pleadings, evidence and exhibits and that joint trial will mitigate the sufferings of both parties.
45. The learned Senior Counsel appearing for the plaintiff in support of his contention placed reliance upon two decisions of the Hon'ble Supreme Court. The operative portions of the judgments are as under:
1. State Bank of India v. Ranjan Chemicals Limited reported in 2007 1 SCC 97 @ paras 10 and 11. states as follows:
10. A joint trial can be ordered by the court if it appears to it that some common question of law or fact arises in both proceedings or that the right to relief claimed in them are in respect of or arise out of the same transaction or series of transactions or that for some other reason it is desirable to make an order for joint trial. Where the plaintiff in one action is the same person as the defendant in another action, if one action can be ordered to stand as a counter claim in the consolidated action, a joint trial can be ordered. An order for joint trial is considered to be useful in that, it will save the expenses of two attendances by the counsel and witnesses and the trial Judge will be enabled to try the two actions at the same time and take common evidence in respect of both the claims. If therefore the claim made by the Company can be tried as a counter claim by the Debt Recovery Tribunal, the court can order joint trial on the basis of the above considerations. It does not appear to be necessary that all the questions or issues that arise should be common to both actions before a joint trial can be ordered. It will be sufficient if some of the issues are common and some of the evidence to be let in is also common, especially when the two actions arise out of the same transaction or series of transactions.
11. A joint trial is ordered when a court finds that the ordering of such a trial, would avoid separate overlapping evidence being taken in the two causes put in suit and it will be more convenient to try them together in the interest of the parties and in the interests of an effective trial of the causes. This power inheres in the court as an inherent power"
2. M/s.Chitivalasa Jute Mills v. Jaypee Rewa Cement, (2004) 3 SCC 85, at page 89 :
"What is the cause of action alleged by one party as foundation for the relief prayed for and the decree sought for in one case is the ground of defence in the other case. The issues arising for decision would be substantially common. Almost the same set of oral and documentary evidence would be needed to be adduced for the purpose of determining the issues of facts and law arising for decision in the two suits before two different courts. Thus, there will be duplication of recording of evidence if separate trials are held.
Consolidation of suits but the same can be done under the inherent powers of the court flowing from Section 151 CPC. Unless specifically prohibited, the civil court has inherent power to make such orders as may be necessary for the ends of justice or to prevent abuse of the process of the court. Consolidation of suits is ordered for meeting the ends of justice as it saves the parties from multiplicity of proceedings, delay and expenses. Complete or even substantial and sufficient similarity of the issues arising for decision in two suits enables the two suits being consolidated for trial and decision. The parties are relieved of the need of adducing the same or similar documentary and oral evidence twice over in the two suits at two different trials. The evidence having been recorded, common arguments need to be addressed followed by one common judgment."
46. Contending on the other side of the coin, the learned Senior Counsel for the defendant would submit that the only object of the application for a joint trial is once again to re-agitate and re-argue the question of who has to let in evidence first on the issue of validity and on the issue of non infringement. But this Court does not find any such intention for re-agitating or re-arguing the question. The trial of the case is not commenced. No where it was argued on the issues of invalidity or non-infringement on merits. Hence, there is no question of re-agitating nor re-arguing such issue.
47. It is also contended that the application is to reopen the issues already decided by the Division Bench order. But it is not so. It is further stated that the application is belatedly made even after the Single Judge and the Division Bench had not ordered for a joint trial earlier. It is to be borne in mind that this issue was not argued before the said Benches and no findings were called for on this aspect. However, the Division Bench has made a passing reference in paragraph 36 of the order that when there are two suits and the claims in both the suits are inextricably interlinked, the Trial Court would be justified in ordering a joint trial. Since there was no plea before the earlier Benches, there was no order for joint trial. It is also contended that the application for joint trial also suffers from res judicata and constructive res judicata. But, the contention could not be countenanced because there was no decision on merits reached in the earlier proceedings of these cases.
48. In the written arguments, the defendant has stated that the defendant is agreeable that there should not be a duplication of the evidence, accordingly, this Hon'ble Court can order consolidation of the two trials and the recording of common evidence would save time, effort and money. However, the Defendant's apprehension is that it is the plaintiff's agenda of reserving its evidence on invalidity as well as non infringement once a joint trial is ordered.
49. The apprehension expressed by the defendant in this regard appears to be baseless because under the guise of joint trial, the plaintiff is not reserving its evidence as there would be an order entitling the plaintiff to reserve right under Order XVIII, Rule 3.
50. Guided by the principles laid down by the Hon'ble Apex Court in the decisions afore-mentioned, it is desirable to make an order for joint trial. The facts and the issues framed are interlinked which have to be appreciated on the evidence adduced by the parties in a joint trial alone. Inconsistent views could be avoided. The judicial time would be preserved. The joint trial would also mitigate the hardships of the parties. The documents to be produced by both the parties could be common for both the suits. It would facilitate both parties to advance arguments jointly in both the suits and the Court to render a common judgment. In such view of this matter, an order for joint trial is inevitable which has necessarily to be passed and hence, joint trial application has to be allowed.
In the result, both the applications in A.No.2258 of 2011 and A.No.2691 of 2011 in C.S.No.979 of 2007 are allowed. No costs.
21 .09.2011 Index : Yes/no Internet : Yes/no srm S. PALANIVELU, J.
Srm Order made in A.No.2258 and 2691 of 2011 in C.S.No.979 of 2007 and C.S.No.1111 of 2007 21.09.2011