The court clarified the jurisdiction for filing revocation petitions, the power of consolidation and transfer of proceedings between High Courts, and the maintainability of revocation petitions before the Delhi High Court.

JUDGMENT

Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

I.A. 13062/2023 in C.O.(COMM.IPD-PAT) 3/2022

I.A.13077/2023 in C.O.(COMM.IPD-PAT) 38/2022

2. These are applications filed by the Respondent No.2 seeking the transfer of the present revocation petitions, thereby consolidating the same with the suits for infringement of Patent no.IN243301 (hereinafter "IN'301"), bearing No. COMS 7/2022^{1[Boehringer Ingelheim Pharma Gmbh & Co. KG & Anr. Vs. MSN Laboratories Pvt. Ltd. & Anr.]} and bearing No. COMS 3/2022^{2[Boehringer Ingelheim Pharma GMBH and Co. and Anr. vs. Macleods Pharmaceuticpals Ltd.]} pending before the High Court of Himachal Pradesh.

3. The case of the Respondent No.2- Applicant who is the assignee of IN'301 is that the suits have been filed by the patentee in respect of the pharmaceutical preparations `LINAGLIPTIN' and variants thereof, covered by the granted patent. It is further stated that in suit no. COMS 7/2022, an ad-interim injunction has been granted on 2nd June, 2022 by the said High Court. Additionally it is submitted that in suit no. COMS 3/2022, vide order dated 21st April 2022, the High Court of Himachal Pradesh made the ad- interim protection granted by the court to Respondent No. 2 vide order dated 25th February 2022, absolute.

4. The ground on which the transfer is sought by Respondent no.2, is that the patent is expiring on 18th August, 2023 and that in any case, the grounds raised for seeking revocation and the defences raised in the injunction suit would be similar in view of Section 107 of the Patents Act, 1970 (hereinafter `the Act').

5. The prayers in the two applications I.A.13062/2023 and I.A.13077/2023 are extracted hereunder:-

"(a). Transfer the present revocation petition thereby consolidating the same with the suit for infringement bearing number COMS 7 of 2022.

(b). Direct the Petitioner to withdraw the present revocation petition and file the same in terms of applicable law before Hon'ble High Court of Himachal Pradesh at Shimla; and

(c). Pass any other Order(s) as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."

6. Under the Patents Act, 1970, there are various remedies available to any person interested who wishes to seek revocation or raise issues relating to invalidity of a patent. The said remedies are:-

7. In the present case, the Petitioners herein filed revocation petitions i.e., C.O. (COMM.IPD-PAT) 3/2022 on 24th February 2022 and i.e., C.O.(COMM.IPD-PAT) 38/2022 on 17th February 2022, before this Court under section 64 of the Act. Subsequently, the Respondents herein, who are the owners of the patent chose to file a suit for infringement before the High Court of Himachal Pradesh. In the said suits, interim injunction has been granted and an appeal against the said injunction order is stated to be pendingt allowed duties. Although she reported for work every day. The onus to that the claimant worked continuously from period of 240 in one of the suits.

8. Moreover, the subject patent is also subject matter of another suit pending before this Court viz., CS (COMM) 239/2019 titled Boehringer Ingelheim Pharma GMBH & Co. KG & Ors. vs. Vee Excel Pharmaceuticals Private Ltd. and Ors. [Date of decision : 29.03.2023], wherein a ld. Single Judge of this Court has taken a prima facie view that the patent is vulnerable to revocation. The operative portion of the said order reads:

"1. The present six suits have been filed on behalf of the plaintiff no.1, Boehringer Ingelheim Pharma Gmbh And Co. Kg and its group company, plaintiff no.2, Boehringer Ingelheim (India) Pvt. Ltd.