In Versuni Holding B.V. vs Maya Appliances Pvt. Ltd. [(PT) A No. 3 of 2024 & OP(PT) No. 1 of 2024], he Madras High Court was called upon to decide whether a defendant, having filed a written statement with a specific plea seeking revocation of a patent in an infringement suit, can simultaneously pursue a separate stand-alone revocation petition in respect of the same patent. The decision reaffirms the principle that a person seeking revocation must elect the remedy and the forum, and cannot be allowed to pursue parallel revocation proceedings in different fora for the same patent.

The dispute concerned patent number 351954, entitled “An Apparatus and Method for Processing a Food Stuff”, granted in favour of Versuni. A patent infringement suit was instituted by Versuni [C.S.(Comm) No.733 of 2023] against Maya Appliances before the Delhi High Court. In response, Maya filed a written statement disputing infringement and challenging the validity of the suit patent. Notably, the written statement went beyond raising an invalidity defence and expressly sought revocation of the suit patent and its removal from the Patent Register. In effect, therefore, the written statement contained all the trappings of a counter-claim for revocation.

While the infringement suit was pending before the Delhi High Court, Maya also filed a stand-alone revocation petition [O.P. (PT) No. 1 of 2024] under Section 64 of the Patents Act before the Madras High Court. Versuni objected to the maintainability of this petition and filed an application seeking its dismissal, contending that Maya had already elected its remedy by seeking revocation of the patent in the infringement proceedings and could not pursue a parallel revocation action in another forum. In support, Versuni relied on the principle laid down by the Supreme Court in Alloys Wobben vs Yogesh Mehra, which recognises that although the Patents Act provides more than one procedural avenues for revocation, a party must elect one remedy and cannot simultaneously pursue more than one remedy.

The Court opined that Maya had filed a written statement and had made specific claim with regard to revocation of the subject patent as a counter-claim, and, therefore, cannot plead that the jurisdiction is not ousted in view of Section 107 of the Patents Act.

In reaching this conclusion, the Court relied on the settled position that a where revocation is sought in an infringement suit, a parallel revocation petition before another forum would not be maintainable. Allowing such parallel proceedings, the Court observed, would amount to forum shopping and would run contrary to the principle laid down by the Supreme Court in Alloys Wobben.

The Court also considered the reliance placed by Maya on the Delhi High Court’s decision in Macleods Pharmaceuticals Ltd. vs Controller of Patents. It found that the decision did not assist Maya. In Macleods, the revocation petition had been filed prior to the institution of the infringement suit, and no revocation was sought thereafter in the suit proceedings. In contrast, in the present case, the infringement suit had already been instituted, and Maya had expressly sought revocation of the patent in its pleadings before the Delhi High Court. The factual matrix therefore attracted the principle of election of remedies rather than any exception to it.

On these grounds, the Court allowed Versuni’s application and dismissed the revocation petition filed by Maya. The decision is significant for patent litigation strategy. It underscores that pleadings in an infringement suit must be carefully framed, as an express prayer for revocation may foreclose the possibility of pursuing a separate revocation petition.