Terex India Private Limited vs Cde Asia Ltd. & Anr
2024 Latest Caselaw 2483 Cal/2

Calcutta High Court

Terex India Private Limited vs Cde Asia Ltd. & Anr on 2 August, 2024

                  IN THE HIGH COURT AT CALCUTTA
                               ORIGINAL SIDE
                        COMMERCIAL DIVISION


Present:

The Hon'ble Justice Krishna Rao



                              IPDAID 4 of 2024

                        (Old No. A.I.D. 8 of 2023)


                      Terex India Private Limited

                                    Versus

                           CDE Asia Ltd. & Anr.



           Mr. Akhil Sibal, Sr. Adv.
           Ms. Sarah Haque
           Mr. Sanjeev Kr. Tiwari
           Mr. Rudraman Bhattacharyya
           Mr. Abhishek Jana
           Mr. Nikunj Berlia
           Ms. Saolini Bose
           Mr. S. Dasgupta
                                               ... for the appellant.


           Mr. S.N. Mookherjee, Sr. Adv.
           Mr. Ranjan Bachawat, Sr. Adv.
           Mr. Debnath Ghoshal
           Mr. Shounak Mitra
           Mr. A. Nargolkar
           Mr. N. Ranjan
                                        2


            Ms. Vaibhavi Pandey
            Mr. Dhruv Chanda
            Mr. Biswarup Mukherjee
                                             ... for the respondent no.1.


            Mr. Swatarup Banerjee
            Mr. Sailendra Kumar Tiwari
            Mr. Balarko Sen
            Ms. S. Indoria
                                             ... for the respondent no.2.



Hearing Concluded On : 15.07.2024

Judgment on             : 02.08.2024

Krishna Rao, J.:

1. The appellant has preferred an appeal under Section 117A of The

Patents Act, 1970 against the order passed by the Deputy Controller of

Patent and Designs dated 2nd March, 2023 wherein the post-grant

opposition filed by the appellant for revocation of Indian Patent No.

307249 granted on 12th February, 2019 in an Indian Patent Application

No. 1033/KOLNP/ 2013 dated 3rd September, 2013 under the title

"SYSTEM /DEVICE PROCESS FOR CLASSIFICATION OF VARIOUS

MATERIALS" in the name of CDE ASIA LTD. is refused.

2. The respondents had made an application being No. 1033/KOLNP/

2013 dated 3rd September, 2013 for its invention titled "SYSTEM/

DEVICE PROCESS FOR CLASSIFICATION OF VARIOUS MATERIALS".

The said application was granted on 12th February, 2019 with India

Patent No. 307249 over 10 claims.

3. Mr. Akhil Sibal, Learned Senior Advocate representing the appellant

submitted that the main independent claim i.e. Claim 1 is a method

claim for classification of various materials and Claims 2 to 4 are

dependent upon process Claim 1. He submits that the patent contains

another independent claim for system for classification of materials of

variable sizes under Claim 5. He submits that Claims 6 to 10 are

dependent upon Claim 5. He submits that the independent Claim 5

pertaining to the system has been presented to include multiple

subsystems, and the same has been mentioned in the specification. But

there is no disclosure in the specification or in the drawing as to how

such subsystems are interconnected.

4. Mr. Sibal submitted that the respondent has claimed monopoly for a

method and a system that were publicly known and were already in use

at the time of priority date, due to which such claims are not patentable

subject-matter in India. Mr. Sibal relied on the evidence of Dr.

Prabuddha Ganguli wherein he has stated that "individual devices are

known and the manner in which they function is also known, but the

combination invented in IN'249 produces a totally unexpected effect

resulting in the invented equipment system and process as claimed in

IN'249.

The statements placed by the opponent and the expert that the

functioning of individual devices is known is true. However, what is not

known and used earlier to the priority date of the patent application no

1033/KOL/2013, is how to judiciously combine them to achieve the

desired objectives. In my earlier paras of this affidavit, I have explained

in detail how the cited prior arts are irrelevant in the context of the

invention as claimed in IN'249 and hence is not repeated here for

brevity."

5. Mr. Sibal submitted that the appellant who has been in the industry for

much longer time than the respondent and has dealt with multiple

products and components thereof which clearly map upon and overlap

with system Claim 5 of the impugned patent. He submits that the

process Claim 1 has been practiced by the appellant and its parent

company and subsidiary companies before the priority date of the

impugned patent. He submits that appellant has been in the market of

inter-alia, sand and aggregate washing plants and various other such

materials like ores and waste classification systems for several years,

and has not only been selling various products meant for segregating

various materials and sand washing, but also various other high-end

equipment.

6. Mr. Sibal submits that the Learned Controller has not given any

observation or provided any reasons as to why he has agrees with the

submissions of the Patentee. He submits that the Learned Controller

has not considered the Patentee's own admission that each of the

components or devices being recited in claims are known and the

manner in which they function is also known. He submits that the

Learned Controller has not dealt with how the invention is not hit by

the Bar of Section 3(f) of the Patents Act. He submits that Section 3(f) is

applicable to the presently claimed system as it is a mere arrangement

or re-arrangement or duplication of known devices each functioning

independently of each another in a known way.

7. Mr. Sibal submitted that Learned Controller has merely copy pasted the

written submissions of the Patentee and has not given any independent

reasoning or interpretation or inference as to why the Learned

Controller accepted a particular submission. He submitted that the

Learned Controller has not given any reason as to why the submission

of the applicant were incorrect and how the Patentee has overcome to

the objections raised by the appellant and more importantly, by the

Opposition Board. In support of his submission Mr. Sibal has relied

upon the judgment in the case of Cipla Limited -vs- Union of India &

Ors. reported in (2012) 13 SCC 429 and submitted that the provisions

of the Act and the Rules, therefore, clearly indicate that the Opposition

Board has to make its recommendations after considering the written

statement of opposition, reply statement and evidence adduced by the

parties with reasons on each ground taken by the parties. He submits

that Rule 62 also empowers the Controller to take into consideration,

the reasons stated by Opposition Board in its report. In other words,

the report of the Opposition Board has got considerable relevance while

taking a decision by the Controller under Section 25(4) of the Act read

with Rule 62(5) of the Rules.

He submits that the Learned Controller has merely reproduced the

arguments of the parties on the Opposition Board's recommendations

in the impugned order but has not given any weightage to the

Opposition Board's recommendations which is against all settled legal

principles.

8. Though the appellant had preferred the present appeal on different

grounds on merit but at first Learned Counsel for the appellant had

argued the matter for remand of the case on the ground that the

Learned Controller has merely copy pasted the written submissions and

arguments and pleadings of the parties but has not given any

independent reasoning, interpretation, inference with regard to any of

the submissions raised by both the parties.

9. Learned Advocate for the appellant had argued the matter at length as

to why the order passed by the Learned Controller is required to be set

aside and to remand the matter for fresh consideration. In reply to the

submissions made by the Learned Counsel for the appellant, the

Learned Counsel for the respondent no. 1 has agreed to remand the

matter for fresh consideration but a dispute arose between the parties

that whether the matter is to be sent to the same officer who has

passed the impugned order or the officer other than the officer who has

passed the impugned order. A dispute also arose between the parties

from which stage the matter is to be remanded before the Authority.

10. Mr. S.N. Mookherjee, Learned Senior Advocate representing the

respondent no. 1 submits that as per Order XLI Rule 25 of the Code of

Civil Procedure, 1908, the matter is to be remanded to the same

authority who has passed the impugned order. Mr. Mookherjee has

relied upon the judgment in the case of National Sewing Thread

Company Limited -vs- James Chadwick & Brothers Limited

reported in AIR 1953 SC 357 and submitted that Trade Marks Act

does not provide or lay down any procedure for the future conduct or

career of that appeal in the High Court, indeed Section 77 of the Act

provides that the High Court if it likes make rules in the matter.

Obviously after the appeal had reached the High Court it has to be

determined according to the rules of practice and procedure of that

Court and in accordance with the provisions of charter under which

that court is constituted and which confers on it power in respect to the

method and manner of exercising that jurisdiction. He submits that the

rule is well settled that when a statue directs that an appeal shall lie to

a court already, established, then that appeal must be regulated by the

practice and procedure of the Court.

11. Mr. Mookherjee further relied upon the judgment in the case of Sabri -

vs- Ganeshi reported in 14 ALL 24 and submitted that if the order is

set aside and the court is of the view, that the matter is to be

remanded, the same is to be sent to the same authority who has passed

the impugned order.

12. Mr. Sibal submitted that the provisions of Order XLI Rule 25 is not

applicable in the present case as upon plain reading of the said

provision, it would be apparent that it applies to a decree in terms of

Order XLIII Rule 2 of the Code of Civil Procedure, 1908. He submits

that Order XLI also applies to appeals from orders. He submits that the

impugned order is neither a decree nor order as per the definition of

Section 2 (2) & 2 (14) of the Code of Civil Procedure, 1908. In support

of his argument, Mr. Sibal has relied upon the judgment in the case of

Promoshirt -vs- Armasuisse reported in 2023 SCC OnLine Del 5531

and submitted that the Hon'ble Division Bench of the Delhi High Court

has decided the question whether Section 100A of the CPC would bar a

second appeal under Letters Patent against an order passed by the

Learned Single Judge in an appeal under Section 91 of the Trade Marks

Act, 1999. The Delhi High Court held that the bar under the Code of

Civil Procedure, 1908, could not apply in an appeal under Section 91 of

the Trade Marks Act, 1999 and the same is neither an appeal against a

decree or order as defined under Section 2 of the Code of Civil

Procedure, 1908 and thus Section 100A would have no application.

13. Mr. Sibal relied upon the judgment in the case of ART Screw

Companies Limited -vs- Assistant Controller of Patent and

Designs reported in 2022 SCC OnLine Del 4429, Kanaklata -vs-

State (NCT of Delhi) & Ors. reported in (2015) 6 SCC 617 and

Palanisamy -vs- The State, represented by the Inspector of Police,

Erode District reported in 2016 SCC OnLine Mad 19740 and

submitted that the patent was examined by an Examiner under Section

14 and then the process of examination was conducted by Mr. Ajit

Kumar, Asst. Controller of the Patent Office and then the patent was

granted by one Mr. O.P. Gupta, Controller of the Patent Office. The

notice of opposition was sent by one Mr. Jayant Anand, Asst. Controller

of the Patent Office, the Opposition Board which gave the

recommendations based on the pleadings and evidence of both the

parties comprised of another Asst. Controller of the Patent Office, Mr.

Ram Sundar Patel along with two examiners, i.e. Mr. Rohit Kumar

Singh and Dwaipayan Mahato.

He submitted that the Deputy Controller, Mr. Vinod Kumar finally

conducted the hearing one day and passed the impugned order.

Referring the above, Mr. Sibal submits that the purported rationale that

the same judge who conducted the trial should hear and decide the

matter is not applicable in the instant case as the Deputy Controller

has heard the matter only one day and passed the impugned order.

14. Mr. Sibal had relied upon the following judgments:

i. (2001) 7 SCC 318 (Anil Rai -vs- State of Bihar).

ii. (1976) 3 SCC 574 (R.C. Sharma -vs- Union of India).

iii. Unreported judgment passed in the case of Britannia Industries Limited -vs- The Controller Patents of Patent & Designs & Anr., IPDPTA 27 of 2023.

iv. Unreported judgment passed in the case of Blackberry Ltd. -vs- Assistant Controller of Patents & Designs, C.A. (COMM.IPD-PAT) 301/2022 order dated 22.03.2023.

v. 2023 SCC OnLine Del 211 (Impact Selector International LLC v. Controller of Patents).

vi. Unreported judgment passed in the case of Procter & Gamble Company -vs- Controller of Patents & Designs, C.A. (COMM.IPD-PAT) 268/2022.

vii. Unreported judgment passed in the case of Arkema France -vs- Assistant Controller of Patents & Designs, (T)CMA (PT)/59/2023.

viii. Unreported judgment passed in the case of Starpharma PTY Ltd. -vs- Assistant Controller of Patents & Designs, (T)CMA(PT)/22/2023.

ix. Sugen Inc. & Ors. -vs- Controller of Patents & Designs, IPAB Order 107/2013 in OA/5/2013/PT/DEL & M.P. No. 13/2013 in OA/5/2013/PT/DEL.

Relying upon the said judgments, Learned Counsel for the

appellant submits that all the Hon'ble Courts while setting aside the

orders of the Controller, has remanded the matter with the direction to

dispose of the application within a certain period but it was clarified

that the application shall be decided by other officer except the officer

who has passed the impugned order. Learned Advocate submits that

the matter is required to be sent to another officer for taking

appropriate decision as there might be a possibility of apprehension of

pre-determination.

15. Each and every patent application depending on the field of technology

and the nature of the prior arts may require different approaches or

tests to be followed or applied. In the ultimate analysis, an Examiner in

the Patent Office adjudicating the issue needs to identify the elements

in the prior arts and compare the same with the claims in question

from the point of the view of a person skilled in the art.

16. The Deputy Controller has passed the impugned order containing 119

pages out of which from page no. 05 to 166, the Deputy Controller has

recorded the submissions and written arguments of the parties as well

as the observations of opponent on recommendations of Opposition

Board and in the conclusion part, the Deputy Controller has recorded

the claim 1 to claim 10 and finally, in paragraph 28 at page 118 and in

paragraph 29 at page 119 of the impugned order dated 2nd March,

2023, held as follows:

"28. After going through the argument of the both parties, written submissions, affidavits of the both parties, report of the Opposition Board and in view of above conclusions it is observed that the opponent is not succeeded to establish any opposition grounds (para 19) under Section 25(2) of the Act.

29. In view of the findings upon the facts of this case, upon consideration of the Notice of Opposition, Statements and evidences/affidavits of both the parties, and the arguments put forwarded by their learned counsels at the hearing and all the circumstances of the case it is hereby ordered that the post-grant Opposition lodged against the Patent No. 307249 (application no. 1033/KOL/2013) is dismissed and patent shall be continued. There is no order as to cost."

17. The Deputy Controller ought to have disclosed reasons to support his

conclusion. Reasoning through a speaking order is a vital aspect of the

principles of natural justice and is of utmost importance, which needs

to be underscored. If the Patent Office's orders lack proper reasoning, it

may be difficult for the applicant to identify the grounds for appeal. The

legal proposition that an order of such kind should be supported by

reasons, needs no reiteration. Not only does this benefit, the applicant

whose rights are likely to be affected, but also assists the Court in

ascertaining how the concerned officer applied their minds and reached

the impugned conclusion, while exercises judicial review.

18. The entire text of the impugned order has been dedicated to noting the

details of the invention, claims made therein and how the proceedings

were conducted. That may be necessary, and no fault lies there;

however, the crux of the issue is lack of reasoning supporting the final

decision, a task at which the Deputy Controller has completely fallen

short. This makes the decision arbitrary, suggesting a subjective

determination without any objective criteria. Such kind of mechanical,

template and cut-and-paste orders cannot sustain and must be strictly

discouraged.

19. The impugned order fails to satisfy the basic requirements of any order

adjudicating on patentability of an invention. It is for this arbitrary

approach of the Deputy Controller that the Court is not in a position to

examine the impugned order on merits. Accordingly, same is quashed

and set aside.

20. Now the question whether the matter is remanded to the same officer or

the other officer for fresh consideration.

21. Order XLI, Rule 25 of the Code of Civil Procedure, 1908, reads as

follows:

"25. Where Appellate Court may frame issues and refer them for trial to Court whose decree appealed from.- Where the Court from whose decree the appeal is preferred has omitted to frame or try any issue, or to determine any question of fact, which appears to the Appellate Court essential to the right decision of the suit upon the merits, the Appellate Court may, if necessary, frame issues, and refer the same for trial to the Court from whose decree the appeal is preferred, and in such case shall direct such Court to take the additional evidence required; and such Court shall proceed to try such issues, and shall return the evidence to the Appellate Court together with its findings thereon and the reasons therefor [within such time as may be fixed by the Appellate Court or extended by it from time to time]."

Order XLI, Rule 25 deals with the decree and the Appellate Court

may if necessary frame issue and refer the same for trial to the Court

from whose decree, the appeal is preferred and direct such Court to

take additional evidence if required and such Court shall proceeded to

try such issues and shall return the evidence to the Appellate Court

together with findings and the reasons.

Section 2(2) of the CPC, 1908, reads as follows :

"(2) "decree" means the formal expression of an adjudication which, so far as regards the Court expressing it, conclusively determines the rights of the parties with regard to all or any of the matters

in controversy in the suit and may be either preliminary or final. It shall be deemed to include the rejection of a plaint and the determination of any question within [***] section 144, but shall not include -

(a) any adjudication from which an appeal lies as an appeal from an order, or

(b) any order of dismissal for default.

Explanation.- A decree is preliminary when further proceedings have to be taken before the suit can be completely disposed of. It is final when such adjudication completely disposes of the suit. It may be party preliminary and partly final;."

Section 2(14) of the CPC, 1908, reads as follows:

"(14) "order" means the formal expression of any decision of a Civil Court which is not a decree;."

In the case of Promoshirt (supra), the Division Bench of the Delhi

High Court held as follows:

"74. Reverting then to the facts which obtain in these appeals we find that undisputedly, the Registrar of Trade Marks is not a civil court. Even though some of the powers that are otherwise available with a civil court may be placed in its hands and be exercised by it, the same would not make it a civil court. We have no hesitation in holding that it would not qualify the test of "trappings of a court" in light of the decisions in Anglo-French Drug Co. and Khoday Distilleries. Section 91 of the 1999 TM Act does not prescribe the appellate remedy to be governed by the provisions of the Code. This as we have found above is a departure from Section 76 of the 1940 TM Act and Section 109 of the 1958 TM Act as well as Section 299 of the Indian Succession Act, 1925 on the basis of which the Full Bench came to rule and decide Avtar Narain Behal. All of the above would tend to indicate that the LPA against

an order passed by a Single Judge while exercising the Section 91 power would not be barred.

77. We would think that the intent of Section 100A would be confined to a second appeal when preferred against a judgment of a Single Judge exercising appellate powers provided it pertained to a decree or order as defined by the Code. The bar would thus only operate where the decree or order against which the appeal was preferred before the Single Judge was of a civil court. We further note that Section 2(14) uses the expression "civil court"

and not "court". It would thus be doubtful whether the "trappings of a court" test as generally formulated would have any application. However, even if we were to proceed on the basis that such a test could be justifiably invoked for the purposes of Section 100A, the Registrar of Trademarks would not qualify the standards as enunciated."

22. The Hon'ble Division Bench of Delhi High Court held that the Registrar

of Trade Mark is not a Civil Court. Section 100A of the Civil Procedure

Code, 1908 confines to a second appeal. The bar would only operate

where a decree or appeal was preferred before the Single Judge was of a

Civil Court. In the present case, the impugned order passed by the

Deputy Controller under the Patent Act and the appellant preferred an

appeal under the provisions of Patent Act and thus the Order XLI Rule

25 is not applicable in the present case.

23. The appellant has relied upon several judgments wherein several High

Courts including this Court as well as co-ordinate Bench of this Court

after setting aside the order passed by Controller, Asst. Controller or

Deputy Controller as the case may be remanded the matter to the

officer other than the officer who has passed the impugned order. By

remanding the matter to the officer other than the officer who passed

the order was only on the ground that there is a possibility of pre-

determination.

24. In the present case, though the appellant has not taken the specific

ground of biasness of the Deputy Controller who passed the impugned

order but in grounds of appeal, the appellant has specifically mentioned

that the Deputy Controller has recorded the submissions of the parties

as well as the contentions raised in the written argument but has not

assigned any reason. There is no mandatory provision that the matter

should be remanded to the same officer or some other officer than the

officer who passed the impugned order. This Court is of the view that

the litigant should get proper justice. If there is any possibility of pre-

determination, the litigant may not get proper justice and to avoid any

complications and to avoid multiplicity of proceedings, it would be

proper to remand the matter to any officer other than the officer who

passed the impugned order.

25. Now the question from which stage, the matter should be remanded for

fresh consideration. It is found from record that all proceedings have

been completed and the parties have also filed their written argument.

In this situation, it would be proper to remand the matter from the

stage of argument so as to enable the parties to get an opportunity of

fresh argument and to bring all materials available on record to the

notice of the concern officer.

26. In view of the above, the impugned order passed by the Deputy

Controller of patent and design dated 2nd March, 2023 is set aside and

quashed and the matter is remanded for re-consideration. Such re-

consideration shall be under taken on the following terms :

(1) In order to preclude the possibility of pre-

determination, such re-consideration shall be undertaken by the officer other than the officer who passed the impugned order.

(2) After providing opportunity of argument to all the parties, on the basis of the documents and materials available on record, the dispute of the post-grant opposition in respect of Indian Patent No. 307249 filed by the appellant shall dispose of by passing a reasoned and speaking order within a period of six months from the date of receipt of a copy of this order.

(3) It is made clear that no opinion is being expressed herein on the merits of the patent application.

27. IPDAID No. 4 of 2024 (Old No. A.I.D. 8 of 2023) is disposed of.

(Krishna Rao, J.)