Delhi High Court

Onyx Therapeutics, Inc. vs Union Of India & Ors on 22 February, 2019

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*      IN THE HIGH COURT OF DELHI AT NEW DELHI

                                      Reserved on:       08.02.2019
                                      Pronounced on:     22.02.2019

+      W.P.(C) 5022/2017 & CM APPLN. 21659/2017
       ONYX THERAPEUTICS, INC.                  ..... Petitioner
                   Through: Mr. Anil Dutt and Ms. Gunjan Hans,
                             Advocates.

                         versus

       UNION OF INDIA & ORS                              ..... Respondents
                     Through:         Mr. Manish Mohan, CGSC with
                                      Ms.Manisha Saroha, Advocate for
                                      R-1 & R-2.
                                      Mr. J. Sai Deepak, Mr. Afzal B. Khan
                                      and Mr. Eashan Ghosh, Advocates for
                                      R-3.

       CORAM:
       HON'BLE MR. JUSTICE SURESH KUMAR KAIT

                                  JUDGMENT

1. The present petition is preferred for quashing the impugned orders

dated 12.05.2017 and 11.04.2017 passed by the respondent No. 2 and restore

the order dated April 10, 2017. Consequently, enable the petitioner to cross-

examine Dr. Surajit Sinha and Dr. Prachi Tiwari prior to a final hearing on

merits in the Section 25(2), Patents Act proceeding initiated by the

respondent No. 3 against Patent No. 255964.

2. Further seeks direction thereby directing the respondent No. 2 to pass

an order on the petitioner's objections/reply dated 05.06.2015 to taking on

record the additional testimony of Dr. Prachi Tiwari as filed by the

Respondent No. 3 on 17.04.2015, prior to any final hearing on merits in the

Section 25(2), Patents Act proceeding initiated by the Respondent No. 3

against Patent No. 255964.

3. The brief facts of this case are that the petitioner is a company

incorporated under the laws of the United States, having its registered office

now at One Amgen Center Drive, Thousand Oaks, California, 91320-1799,

USA and engaged in the research, development and commercialization of

novel therapeutics that target protein degradation pathways for cancer and

autoimmune diseases. The respondent No. 2 is an officer under the Office of

the Controller General of Patents, Designs and Trade Marks, DIPP, acting

on behalf of said Controller General, with respect to granting patents in the

Delhi branch of the Indian Patent Office. Respondent No. 3, is a non-

government company registered in India and has initiated a post-grant

opposition under Section 25(2) of the Patents Act, to invalidate the granted

Indian Patent No. 255964, issued to Proteolix Inc., which was subsequently

acquired by the petitioner herein. As per the company master data available

on the website of the Ministry of Corporate Affairs, the registered address of

the respondent No. 3 is in Bhikaji Cama Place, New Delhi. Proteolix Inc. at

225 Gateway Boulevard, South San Francisco, CA 94080 (US), filed an

international application under the Patent Cooperative Treaty, bearing No.

PCT/US05/012740 dated 14.04.2005 and pursuant thereto, moved an

application under Section 7(1A) of the Patents Act on 27 September 2006

bearing No. 5644/DELNP/2006, seeking a patent in India based on aforesaid

international application. The said patent application was titled "Compounds

for enzyme inhibition" and as the abstract indicates, the invention claimed

therein are expected to display therapeutic utilities, including anti-

inflammatory properties and inhibition of cell proliferation ("Patent

Application"). Said Protoelix Inc. was subsequently acquired by the

petitioner herein. The said Patent Application was duly examined under the

Patents Act and the office of the Respondent No. 2 issued a first

examination report ("FER") under Section 14 of the Patents Act on

13.10.2011, listing out several objections against the grant of a patent on the

Patent Application. All said objections were replied to and addressed vide

response dated 10.10.2012. The respondent No. 2, after having concluded

that the Patent Application has complied with all requirements of the Patents

Act, proceeded to grant a patent bearing no. 255964 ("Petitioner's Patent),

on 09.04.2013, which grant was also published under Section 43 of the

Patents Act, on 12.04.2017. Petitioner's Patent is annexed herewith as

Annexure P-4 (colly).

4. It is further case of the petitioner is that on 07.04.2014, the petitioner

received a copy of the post-grant opposition under Section 25(2) of the

Patents Act read with Rule 55A of the Patents Rules, 2003 as filed by the

respondent No. 3 ("Opposition"), which relied upon, inter alia, an expert

affidavit from Dr. Surajit Sinha dated 31.03.2014. Dr. Surajit Sinha's

opinion is that the petitioner's Patent No. 255964 is invalid. The contents of

Dr. Surajit Sinha's affidavit are strongly relied upon in the opposition. Since

the opposition documents are voluminous, after seeking an extension of one

month to file a reply to the Opposition, on 03.07.2014, the petitioner filed a

reply under Rule 58 to the aforesaid Post-Grant Opposition and among

others, sought cross-examination of Dr. Surajit Sinha.

5. The petitioner also challenged the accuracy of the statements made by

such expert, the expert's credibility and expertise in the technology at issue.

On 01.09.2014, respondent No. 3 filed additional evidence under Rule 59 of

the Patents Rules in support of the Opposition, comprising a new affidavit of

Dr. Prachi Tiwari and an additional affidavit of Dr. Surajit Sinha. Dr. Prachi

Tiwari is admittedly affiliated with the respondent No. 3 and had expressed

her opinion that the Petitioner's Patent No. 255964 is invalid. A copy of said

reply under Rule 59, including the affidavit of Dr. Prachi Tiwari and the

additional affidavit of Dr. Surajit Sinha, are as Annexure P-7 (Colly).

Subsequently, on 17.04.2015, respondent No. 3 filed additional evidence

under Rule 60 of the Patents Rules in support of the Opposition, comprising

an additional affidavit of Dr. Prachi Tiwari supporting the challenge to the

validity of the patent. This reply was responded to on 05.06.2015 by the

petitioner, whereby the petitioner opposed the additional evidence from

being taken on record. The respondent No. 3 also filed a rejoinder to such

reply, on 18.06.2015. On 27.03.2017, vide e-mail, the respondent No. 2

forwarded a copy of the recommendation of the Opposition Board

constituted under Section 25 (3) of the Patents Act, a copy of which is

enclosed as Annexure P-11. Vide the same email dated 27.03.2017, the

respondent No.2 simultaneously notified the hearing date as April 21, 2017

for final disposal of the Opposition. Starting with such email dated

27.03.2017, several email communications were exchanged between the

parties to the writ petition, including the impugned orders. In response to the

email of 27.03.2017, on 07.04.2017, the petitioner requested cross-

examination of Dr. Surajit Sinha and Dr. Prachi Tiwari be deferred until

then. The respondent No. 2 accepted such request vide e-mail

communications on 08.04.2017 and 10.04.2017, and directed the respondent

No. 3 to notify the date on which the witnesses will be made available for

cross-examination. However, before the hearing date, based on a response

from the respondent No. 3 that the petitioner should move a formal

application to this effect on 10.04.2017, the respondent No. 2 directed the

petitioner to file a formal petition for cross-examination. However, even

before the petitioner could make such a petition, on 11.04.2017, the

respondent No. 2 issued one of the impugned orders, denying the request for

cross-examination and intimated that the hearing on merits would take place

as scheduled on 21.04.2017. In view of the personal difficulty of the lead

counsel and agent representing the petitioner, on 17.04.2017, the petitioner

moved a request for adjournment of the hearing. A copy of the said request

for adjournment and an additional letter dated 18.04.2017 are annexed as

Annexure P-13 (colly). Vide several e-mails dated 18.04.2017 exchanged

between the petitioner, respondent No. 2 and respondent No. 3, the

adjournment request filed by the petitioner was ultimately allowed by the

respondent No. 2 and vide an e-mail dated 19.04.2017, accordingly, the

respondent No. 2 re-notified the hearing date as 19.05.2017. Though, the

order dated 11.04.2017 of the respondent No. 2 appeared to reject the

request for cross-examination, based on the direction on 10.04.2017 to move

a formal petition/application for cross-examination, on 19.04.2017, the

petitioner filed a formal petition under Rule 137 of the Patents Rules, 2003

and Section 77(a) seeking cross-examination of Dr. Surajit Sinha and Dr.

Prachi Tiwari. A copy of said petition/application is enclosed as Annexure

P-14. The respondent No. 3 filed a response to this petition/application, inter

alia, alleging mala fides on the petitioner and objecting to the

maintainability of such a petition, which response is annexed herewith as

Annexure P-15. The petitioner filed a short rejoinder to such reply, denying

any allegations of mala fides and reiterating its request for cross-

examination. The respondent No. 3 further filed a sur-rejoinder to the same.

6. Learned counsel for the petitioner submits that since no order was

passed on the said petition/ application for cross-examination and the

hearing date of 09.05.2017 was fast approaching, the petitioner, vide e-mail

dated 12.05.2017, sent a reminder to the respondent No. 2 concerning the

petition for cross-examination filed on April 19, 2017. On the very same

day, without any opportunity of hearing being granted to the petitioner, the

respondent No. 2 issued the second impugned order of 12.05.2017, denying

the request for cross-examination made in the petition filed on 19.04.2017.

7. Learned counsel further argued that the issue involved in the present

petition is "whether the Patentee can cross-examine the expert witness(es)

of the Opponent in a post-grant opposition under the Patents Act, 1970 and

the rules framed thereunder". The petitioner is aggrieved by two

communications of respondent No.2 dated 11.04.2017 and 12.05.2017,

whereby the said Respondent has Suo moto withdrawn the permission

granted to the patentee (the petitioner herein) vide communications dated

08.04.2017 and 10.04.2017, to cross-examine the expert witnesses of the

Opponent (Respondent No. 3 herein). Learned counsel further submitted that

neither under the provisions of the Patents Act, 1970, nor under the Patent

Rules, 2003, the respondent No. 2 has the suo moto power of reviewing its

decision. Since the permission granted by the Respondent No. 2 vide its

communications dated 08.04.2017 and 10.04.2017 to cross-examine the

witnesses of the Opponent was pursuant to Section 79 of the Act, the same

cannot be referred to as a clerical error, which could have been

reversed/undone suo moto by the respondent No. 2. Hence, once permission

was granted by the Respondent No. 2, the said decision could not have been

reviewed and the permission withdrawn. Section 79 of the Act confers

express power upon the respondent No. 2 to take oral evidence in addition to

evidence by way of an affidavit or allow a party to be cross-examined on the

content of his/her affidavit. Section 79 of the Act is reproduced below for

reference:-

"79. Evidence how to be given and powers of Controller in respect thereof. - Subject to any rules made in this behalf, in any proceeding under this Act before the Controller, evidence shall be given by affidavit in the absence of directions by the Controller to the contrary, but in any case in which the Controller thinks it right so to do, he may take oral evidence in lieu of, or in addition to, evidence by an affidavit, or may allow any party to be cross - examined on the contents of his affidavit."

8. Learned counsel further submitted that Indian Patent No. 255964

(hereinafter referred to as the "Petitioner's patent") was granted on

09.04.2013. A post-grant opposition under Section 25(2) of the Act, read

with Rule 55A of the Rules was filed by the Respondent No. 3 on

07.04.2014. The said opposition was supported by an affidavit of an expert,

Dr. Surajit Sinha dated 31.03.2014 which was filed as evidence in the

opposition proceedings. Dr. Sinha in his affidavit has analyzed the

Petitioner's patent, compared the same with prior arts and has thereafter

given his opinion that the invention claimed therein is allegedly "obvious

based on knowledge already available". In response to the post-grant

opposition, the reply statement under Rule 58 of the Rules on behalf of the

Petitioner was filed on 03.07.2014, wherein, at paragraph 42 which is at

page 221, the petitioner categorically sought cross-examination of Dr.

Surajit Sinha on his evidence by way of an affidavit. It may be pertinent to

mention that the Petitioner did not file any evidence along with its reply

statement.

9. Rule 59 of the Rules reads as follows:-

"59. Filing of reply evidence by opponent. - The opponent may, within one month from the date of delivery to him of a copy or the patentee's reply statement and evidence under rule 58, leave at the appropriate office evidence in reply strictly confined to matters in the patentee's evidence and shall deliver to the patentee a copy of such evidence."

10. Learned counsel for the petitioner submits that according to

Rule 59 of the Rules, the evidence which may be filed on behalf of the

opponent upon receiving the patentee's reply statement must be strictly

confined to matters in the patentee's evidence. In the present case, since the

petitioner had not filed any evidence along with its reply statement, there

was no occasion or reason for the respondent No. 3 to file reply evidence

under Rule 59. However, the respondent No. 3 filed an application dated

01.09.20104, whereby the said respondent prayed to place on record

additional evidence by way of affidavit of a new expert namely Dr. Prachi

Tiwari and a second affidavit of Dr. Surajit Sinha. In the said application,

the respondent No. 3 has admitted that the evidence of the experts are

beyond the scope of Rule 59 of the Rules. Admittedly, the said application

dated 01.09.2014 for taking the evidence by way of an affidavit is yet to be

heard by the respondent No. 2.

11. Learned counsel further submitted that without prejudice to the fact

that the said affidavits are yet to be taken on record, it is submitted that in

his second affidavit, while responding to paragraph 42 of the reply

statement, Dr. Surajit Sinha has not objected to the request to be cross-

examined. In particular, Dr. Sinha has not stated that he would be prejudiced

in any manner if he is called for cross-examination, rather, Dr. Sinha states

that he will show as to how the Patentee is himself denying certain facts.

12. Learned counsel further submitted that despite the pending

adjudication of abovementioned application for filing of reply evidence

under Rule 59 by the respondent No. 2, the respondent No. 3 on 17.04.2015

filed a petition for filing additional evidence under Rule 60 of the Rules. In

the said petition under Rule 60, the respondent No. 3 has sought to place on

record a second evidence of its expert Dr. Prachi Tiwari by way of an

affidavit supporting the invalidity of the petitioner's patent. The petitioner

vide its reply dated 05.06.2015 vehemently opposed the respondent No. 3's

request of filing additional evidence under Rule 60. Admittedly, the said

petition of the respondent No. 3 under Rule 60 of the Rules is yet to be

decided by the respondent No. 2.

13. The pleadings on behalf of the parties stood completed in the year

2015, admittedly, there was no communication between the parties until

27.03.2017, on which date the petitioner received an e-mail notice from the

respondent No. 2 intimating the petitioner about the hearing fixed in the post

grant opposition on 21.04.2017. Thereafter, vide email dated 31.03.2017, the

petitioner made a request to the respondent No. 2 for cross-examination of

Dr. Surajit Sinha and Dr. Prachi Tiwari prior to the final hearing.

Accordingly, the respondent No. 2 vide email dated 08.04.2017 granted

request of the petitioner and deemed it proper to direct the respondent No. 3

to call upon the expert witnesses of the respondent No. 3 for being cross-

examined. Further vide order dated 10.04.2017, the respondent No. 2, while

relying on Section 79 of the Act, reiterated its order and called upon the

respondent No. 3 to present the said witnesses for cross-examination.

Thereafter, based on an email dated 10.04.2017 sent by the respondent No.

3, the respondent No. 2, in a reply email recalled its earlier orders dated

08.04.2017 and 10.04.2017 and directed the petitioner to file a formal

petition for seeking cross-examination of the respondent No. 3's witnesses.

However, before the petitioner could file the said application, the respondent

No. 2 issued the impugned order dated 11.04.2017. Moreover, on

19.04.2017, the petitioner filed an application requesting the respondent No.

2 to allow the petitioner to cross-examine the witnesses of respondent No. 3,

which was denied by the respondent No. 2 vide order dated 12.05.2017.

14. Learned counsel further submitted that at the very first instance of

responding to the opposition filed by the respondent No. 3, the petitioner in

its reply statement had explicitly stated its intention to cross-examine the

expert witness whose testimony was relied upon by the respondent No. 3.

The application under Rule 59 of the Rules dated 01.09.2014, whereby the

respondent No. 3 was trying to place on record the affidavit of a new witness

i.e. Dr. Prachi Tiwari and additional affidavit of Dr. Surajit Sinha was yet to

be adjudicated upon by the respondent No. 2, and hence no response to the

same was filed by the petitioner. Even otherwise, the rules do not prescribe

for any such response. Thereafter, to the petition filed by the respondent No.

3 under Rule 60, the petitioner has already filed its response, objecting

thereto.

15. It is further submitted that cross examination is an integral part of the

principles of natural justice. In a case wherein the credibility of a person

who has testified is in doubt, right to cross-examination is inevitable, except

if real prejudice is caused to the complainant. In the present case, admittedly

no prejudice has been alleged by the respondent No. 3.

16. Section 79 of the Patent Act is reproduced as under:-

"79. Evidence how to be given and powers of Controller in respect thereof. - Subject to any rules made in this behalf, in any proceeding under this Act before the Controller, evidence shall be given by affidavit in the absence of directions by the Controller to the contrary, but in any case in which the Controller thinks it right so to do, he may take oral evidence in lieu of, or in addition to, evidence by an affidavit, or may allow any party to be cross - examined on the contents of his affidavit."

17. Learned counsel submits that the explicit power has been conferred

upon the respondent No. 2 to call upon witnesses for cross-examination in

appropriate cases. In the facts of the present case, if no permission is

granted to the petitioner to cross-examine the expert witnesses, the said

provision would be rendered redundant. No averment has been made by the

opponent that any prejudice will be caused if the witnesses are called for

cross examination.

18. He further submitted that case of Swastick Pipes Ltd. v. T.T.

Industries & Ors: (2000 PTC 66) and Financial Times Ltd v. Times

Publishing House Ltd.: [234 (2016) DLT 305] are not applicable in the

present case for the reason that the said two judgments relate to provisions

of the Trade Marks Act, 1999, wherein admittedly there is no provision to

cross-examine the witnesses. Section 129 of the TMA referred to in the

judgment of Financial Times Ltd (supra) is reproduced herein below for the

"ready reference" as under:-

"129. Evidence before Registrar. - In any proceeding under this Act before the Registrar, evidence shall be given by affidavit: Provided that the Registrar may, if he thinks fit, take oral evidence in lieu of , or in addition to, such evidence by affidavit."

19. Accordingly, the petition deserves to be allowed.

20. Merely because the petitioner has not filed its evidence, which is also

directory under Rule 58 of the Rules, will not ipso facto mean that the

petitioner would be disentitled to cross-examine the witnesses of

Respondent No. 3. The deposition of the witnesses are not on the facts of

the case but is an opinion dealing with the technical nature of the invention.

Therefore, the cross-examination is part & parcel of principles of natural

justice and denial of an opportunity to cross-examine the witnesses of

respondent No. 3 would cause grave prejudice to the petitioner, wherein, no

prejudice shall be caused to the respondent No. 3, if said cross-examination

is allowed.

21. On the other hand, learned counsel appearing on behalf of

respondent No. 3 submits that it is settled law that the right to cross

examine in any proceedings before any IP Tribunal, including the Patent

Office, is not an inherent or statutory right. In patent proceedings it is

available under Section 79 of the Patents Act, 1970 only at the discretion of

the Controller of Patents provided the Controller is satisfied that there

exists a sufficient cause to warrant cross examination. Keeping in view, the

facts of the present petition, the Controller has applied his mind and

concluded that there is no need for a cross-examination. In the present

petition, the petitioner seeks a direction to respondent No. 2 to allow cross-

examination of the witnesses of respondent No. 3 mentioned above.

Seeking such a direction, the petitioner has based its prayers on the premise

that there exists, as part of principles of natural justice, an inherent right of

cross-examination in its favour merely because the respondent No. 3 has

led expert evidence. This premise is fundamentally erroneous in view of

the express provisions and scheme of the Patents Act, 1970 which are in

parimateria with the provisions of the Trademarks Act, 1999 and have

been interpreted in landmark decisions in case of Swastick Pipes Ltd

(supra) and The Financial Times Ltd. And Ors.(supra).

22. A reading of the said judgments which were rendered in the similar

provisions in other IP legislations leads to the following well-settled

principles in respect of the right to cross-examine. (a) the proceedings

before IP Tribunals are largely inquisitorial in nature and cannot be

compared to the adversarial nature of the proceedings before a Civil Court.

Critically, Courts have accepted that the Evidence Act has no application to

enquiries conducted by Tribunals, even though they may be judicial in

character as held in Financial Times (Supra). It is further held that the

proceedings before IP Tribunals are summary and are, therefore, largely

decided on the basis of documentary evidence and evidence affidavits, as

opposed to conventional recordal of oral evidence. (b) there is no provision

in IP legislations which expressly provides for the right of cross-

examination of one party when expert evidence is filed by the other party.

As a consequence, there is no inherent right of cross examination in favour

of one merely because the other party to the proceedings had tendered

affidavits by way of evidence. Such a procedure would not be in violation

of principles of natural justice given the object of the proceedings, namely

expeditious disposal. A party seeking cross-examination of experts of the

other party must at the very least file evidence affidavits of its experts in

reply to counter the evidence led by the other party. Even after such expert

evidence is filed by the party seeking cross-examination, the Controller can

exercise his discretion disallowing cross-examination, should he conclude

that there is no sufficient cause to warrant the same.

23. It is further submitted that right to allow cross-examination must be

used sparingly for strong and bonafide reasons and must not be treated as a

norm in each case where expert evidence affidavits are filed, since that

would defeat the object of expeditious disposal of such proceedings as held

in Financial Times (Supra) and Swastick Pipes (Supra).

24. It is further submitted that the scheme of entire Patents Act,

including and especially the provisions that apply to the conduct of Post

Grant Opposition proceedings would reveal that each of the above

positions of law squarely applies to the conduct of proceedings before the

respondent No. 2 as well. The principal function of the Controller and other

officers under the Act is to discharge duties as a specialized tribunal

towards addressing questions of validity of patents granted under the Act.

The scheme of provisions under Sections 25(2), 77 and 79 of the Act read

with Rules 55A-62 and 137 of the Patent Rules, 2003 clearly reveals the

following:

a) Rule 55A- Any interested person (the Opponent) may within one year of the grant of the patent file opposition to the grant of the patent in the prescribed manner:

b) Rule 57- The opponent shall, along with the notice of opposition, file a written statement setting out its challenge along with any evidence;

c) Rule 58- The Patentee shall file a reply statement setting out the grounds upon which the Patentee intends to contest the challenge as raised by the Opponent along with evidence if any, within two months from the date of receipt of copy of the opponent's written statement and evidence;

d) Rule 59 - The Opponent may then respond to the patentee's reply statement and evidence by evidence in reply within one month from the date of delivery of the reply statement and evidence;

e) Rule 60 - Either party may, with the leave of the Controller and before the date of hearing is fixed under Rule 62, file further evidence;

f) Rule 56 - Upon receipt of the notice of opposition the Controller shall constitute and Opposition Board of three members to examine the

notice of opposition and all the documents filed under Rules 57 to 60. The Opposition Board shall submit a report with its reasons on each ground taken in notice of opposition along with its joint recommendation within three months from the date on which the documents were forwarded to them;

g) Rule 62 - On the completion of the presentation of evidence and on receiving the recommendation of the Opposition Board or at such other time as the controller may fix a date and time for the hearing of opposition. The parties desirous of being heard shall inform the Controller in the prescribed form, failing which the Controller shall without hearing or, in the event parties notify the Controller, after such hearing and taking into consideration the recommendations of the opposition board, decide the opposition and notify his decision giving reasons thereof;

h) The use of the term Evidence in Rules 55A - 62 must be understood in light of the special provision which exists in and applies to the conduct of proceedings before the Controller, namely Section 79. The said provision expressly states that evidence in any proceeding under the Act shall be given on affidavit. It further provides that the Controller may take oral evidence or may allow any party to be cross examined on the contents of his affidavit. Clearly, the allowance of a cross-examination is not mandatory and is subject to the exercise of the Controller's discretion.

25. Learned counsel appearing on behalf of the respondent No. 3

further submitted that in application dated 19.04.2017 under

Section77(1)(a) and Rule 137, the petitioner has failed to furnish strong and

bonafide reasons for the respondent No. 2 to have exercised its discretion in

favour of the petitioner. In an application dated 26.05.2014 filed by the

petitioner seeking extension of time to file expert evidence and submitted

that it was in the process of identifying an expert. However, the petitioner

never filed any expert evidence. Instead, the petitioner made its request for

cross-examination of the respondent No. 3's expert Dr. Surajit Sinha for the

first time its written statement dated 03.07.2014 under Rule 58. The

respondent No. 3, in its evidence in reply dated 01.09.2014 under Rule 59,

objected to the petitioner's request for cross-examination. Thereafter, the

respondent No. 3 filed an application for further evidence under Rule 60 for

an additional affidavit of Dr. Prachi Tiwari on 17.04.2015, regarding

another patent application of the Petitioner under No. 768/DELNP/2007.

The said further evidence was objected to by the petitioner on 05.05.2015

and was responded to by the respondent No. 3 on 18.06.2015. Subsequently

to the completion of pleadings in June 2015, the Controller constituted the

Opposition Board, and forwarded all the material filed by both Parties to

the Board for its recommendations. From July 2015 until March 2017,

there were no reminders or follow-ups from the petitioner to the respondent

No. 2 seeking to cross-examine the experts of the respondent No. 3.

26. It is evident from the above that the petitioner's request for cross-

examination which was made vide email dated 07.04.2017 was subsequent

to the recommendation of the Board when the matter was poised for final

hearing. Even the said request was made via a cryptic email to the

Respondent No.2 without marking the Respondent No.3 with a view to

prevent objections from the Respondent No.3 to the said request. Based

solely on the said email, the Respondent No.2 vide email dated 08.04.2017

directed the Respondent No.3 to produce its witnesses for cross-

examination. A reminder was sent to the Respondent No. 3 on 10.04.2017,

which is the order sought to be restored by the petitioner in prayer (a) of the

petition. The respondent No.3 objected to the said direction on 10.04.2017

giving detailed reasons for disallowing the request for cross-examination.

On the same date, the Respondent No.2 directed the petitioner to file a

formal application setting out sufficient reasons to allow cross-examination.

Subsequently, pursuant to the said reasoned objection raised by the

Respondent No.3, the Respondent No.2 disallowed the request for cross-

examination vide email dated 11.04.2017 and fixed the matter for hearing on

21.04.2017.

27. It is pursuant to the said disallowance of 11.04.2017 and without

preferring an appeal against the said order that the Petitioner filed its

application under Section 77(1)(a) read with Rule 137 seeking cross-

examination of both experts of the Respondent No.3. In other words, by

filing the said application without preferring an appeal or reserving its rights

to challenge the order of 11.04.2017, the Petitioner had effectively accepted

the finality of the order dated 11.04.2017. Pursuant to the application the

Respondent No.3 filed its reply dated 20.04.2017 and pleadings on the

subject were completed as on 25.04.2017. Therefore, the petitioner's prayer

(a) which challenges the order of 11.04.2017 and seeks restoration of the

Order dated 10.04.2017 has been rendered infructuous pursuant to its own

subsequent application dated 19.04.2017, coupled with the fact that the

Order of 11.04.2017 was reasoned and hence not challenged.

28. Further, by seeking to cross-examine both experts on all their

affidavits and without raising any further objections to the further affidavit

of Dr. Prachi Tiwari filed under Rule 60, the Petitioner has effectively given

up its objection to the filing of the further affidavit by Dr. Prachi Tiwari.

This results in rendering prayer (b) of the Petitioner infructuous.

29. Learned counsel appearing on behalf of the respondent no.3 submits

that the petitioner's application dated 19.04.2017 was dismissed by a

reasoned order by the Respondent No.2 on 12.05.2017, which is the second

order challenged in prayer (a) of the Petition. It is submitted that in passing

the order of 12.05.2017 the Respondent No.2 has exercised his discretion

and has applied his mind to the application and has come to the clear

conclusion that there is no case made out for cross-examination of either

expert. Further, the Respondent No.2 had already assured both parties via

email dated 12.04.2017 that during the course of the final hearing, if any

new issue arises will be addressed during the hearing in accordance with

law, thereby preserving the right of both parties to air their respective

grievances. It is further submitted that cross examination in proceedings

before the Patent Office is a right subject to the discretion of the Controller

of Patents. The exercise of such discretion disallowing the Petitioner an

opportunity to cross examine would not render such order to be susceptible

to challenge since it is not mandatory for witnesses to be cross examined.

The orders passed by the Respondent No.2 have been exercise of its

discretion which is within the scope of statute. Accordingly, the writ

petition deserves to be dismissed.

30. I have heard learned counsel for the parties in length and perused the

record on file.

31. In case of Financial Times Ltd. (supra), it has been recorded that

since the affidavits are required to contain only the facts and not opinions

expressed, the request for cross-examination is to be sparingly granted.

Even in such a case, there is no absolute bar for cross-examinations.

Likewise, in case of Swastick Pipes Ltd. (supra), it has been held that

under the Trade Mark Act, there is no exclusive and vested right to cross-

examine a deponent.

32. In contrast, under the Act, Section 79 categorically grants the

discretion to the respondent No. 2 to permit the parties to cross-examine the

witnesses. The present case is highly technical in nature, wherein the expert

witness of the respondent No. 3 has provided his/ her view/ opinions/

analysis of different prior art documents/ literature relied upon him/ her to

opine that the invention claimed under the Petitioner's patent is not novel

and is obvious in light of the prior art. Such technical analysis conducted

by the expert witness(es) and his opinion thereto, cannot constitute facts

per se. Therefore, in such cases wherein the request of cross-examination is

prayed for, the same ought to be granted.

33. In the present case, the petitioner has challenged the validity of the

analyses of the said witnesses at the very outset, and thereafter at every

opportunity provided to it under law. Therefore, in a proceeding where in

the facts and circumstances of the case the credibility of the witnesses is in

question or in doubt or its statement is in dispute, the denial of an

opportunity for cross-examination shall amount to violation of principles of

natural justice and vitiate the entire proceeding.

34. Vide emails dated 08.04.2017 and 10.04.2017, while relying on

Section 79, the respondent No. 2 had exercised its discretion and held that

cross-examination of witnesses of respondent No. 3 was required. Once the

respondent No. 2 had conclusively held that cross-examination was

required, the respondent No. 2 could not have, in the absence of any new

documents/ developments/ evidence suggesting so, formed a completely

opposite prima facie view that it is not required. It is a settled position in

law that if the law provides for a particular manner in which a particular

thing is to be done, it should be done in that way only and none other.

Admittedly, in the present case, no application was filed by the respondent

No. 3 for review of said orders, and thus, the action of the respondent No. 2

in reviewing its own decision suo moto, is without jurisdiction and a

manifest error of law, as held in the case of Dipak Babaria and Another v.

State of Gujarat and Others: (2014) 3 SCC 502.

35. I note, the petitioner had filed application dated 26.05.2014 seeking

extension of time to file expert evidence, however, nothing has been filed

whereas the respondent no.3 has filed two affidavits of two experts named

above.

36. In view of above discussion, settled position of law and facts and

circumstances of this case, I hereby pass directions as under:

i. Orders dated 12.05.2017 and 11.04.2017 are set aside.

Consequently, restored order dated 10.04.2017.

ii. Respondent no.2 shall allow the petitioner to cross examine the

two expert witnesses of respondent no.3, but after the petitioner

filed affidavits of experts by controverting the opinion of expert

witnesses of respondent no.3.

iii. Respondent no.2 shall also give right of cross examination, if

sought by respondent no.3, to cross examine the expert witness(es)

of the petitioner.