JUDGMENT (Oral)

C. Hari Shankar, J.

IA 5896/2023 (Section 10 of the CPC)

1. This judgment adjudicates IA 5896/2023, preferred by Respondent 2 Boehringer Ingelheim International GmbH ("Boehringer", hereinafter) under Section 10^{1[10. Stay of suit. - No Court shall proceed with the trial of any suit in which the matter in issue is also directly and substantially in issue in a previously instituted suit between the same parties, or between parties under whom they or any of them claim litigating under the same title where such suit is pending in the same or any other Court in India having jurisdiction to grant the relief claimed, or in any Court beyond the limits of India established or continued by the Central Government and having like jurisdiction, or before the Supreme Court.Explanation. - The pendency of a suit in a foreign court does not preclude the Courts in India from trying a suit founded on the same cause of action.]} of the Code of Civil Procedure, 1908 (CPC), seeking stay of proceedings in the present revocation petition CO (Comm. IPD-PAT) 3/2021, preferred by the petitioners under clauses (a), (d), (e), (f), (h), (i), (k) and (m) of Section 64^{2[64. Revocation of patents. -(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say, -(a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;*****(d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act;(e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in Section 13; (f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;*****(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;*****(k) that the subject of any claim of the complete specification is not patentable under this Act; *****(m) that the applicant for the patent has failed to disclose to the Controller the information required by Section 8 or has furnished information which in any material particular was false to his knowledge;]} of the Patents Act 1970.

2. Three distinct issues arise for consideration in the present petition. They may be delineated thus:

(i) Is Section 10 of the CPC applicable to revocation petitions preferred under Section 64 of the Patents Act? In other words, can a revocation petition be treated as a suit for the purposes of Section 10 of the CPC?

(ii) Assuming that the answer to i