A party contesting the validity of a patent must pursue claims via counter-claims in ongoing infringement suits, preventing unnecessary forum shopping.

ORDER :

N. Senthilkumar, J.

This application has been filed to dismiss the original petition in O.P.(PT) No.1 of 2024 with costs. The applicant herein is the first respondent in OP(PT) No.1 of 2024. The case of the applicant herein is that they have filed a suit in C.S.(Comm) No.733 of 2023 before the Delhi High Court against the first respondent herein.

2. The case of the applicant is that the applicant/plaintiff is a company headquartered in Amsterdam, the Netherlands having their business established in more than 100 countries under the name 'Versuni Holding B.V.', which is a former business division of the Royal Philips Group and was formerly known as 'Philips Domestic Appliances'. The entire business operation of Philips Domestic Appliances is now carried out under the flagship of the plaintiff company. That Philips Domestic Appliances deals with Airfryer category market, which is an innovation of Philips Air Cooker 7000 series. Some of the other previous products of innovation by Philips Domestic Appliances are:

Philips Air Purifier which provides cleaner air at homes;

Philips PerfectCare Elite Steam Generator which enables consumers to iron clothes at twice the speed;

Philips SpeedPro Max Vacuum Cleaner which incorporates reolutionary wet and dry cleaning;

Philips AquaTrio Cordless wet and dry vacuum 9000 series, which cleans all floor types and mops floor as it vacuums; and

Philips Fully Automated Espresso Machine with LatteGo, the Saeco Xelesis Supreme and L'Or Barista which help consumers enjoy different types of coffee.

3. The applicant in OP(PT)No.1 of 2024/Maya Appliances is having Indian Patent No.351954 (in short IN'954) titled "AN APPARATUS AND METHOD FOR PROCESSING A FOOD STUFF".

4. Maya Appliances who is the defendant in a suit before the Delhi High Court has filed a written statement in CS(COMM) 733 of 2023 and had contested the suit. In the written statement filed by the first respondent herein, following prayers have been made:

"(a) dismiss the present suit viz. CS(COMM) 733 of 2023 in limine and direct the plaintiff to pay punitive costs for the reasons set out in the present written statement; (b) hold the Indian Patent IN351954 is invalid;

(c) direct the registry to revoke the suit patent and strike off the corresponding details from the Patent Register; and

(d) pass any other or further order that this Hon'ble Court may deem fit and proper in the facts and circumstances of the instant case in the interest of justice and fair play.

5. The third prayer, namely prayer 'c' assumes importance with regard to counter-claim made by the first respondent herein/petitioner in OP (PT) No.1 of 2024. The applicant herein claimed that apart from India, there are seven other countries, which have granted patent in favour of the applicant herein and the first respondent has not made any pre-grant or post-grant opposition for the patent registered in favour of the applicant herein. Apart from the first respondent herein/petitioner in OP(PT) No.1 of 2024, no other person has filed any application for revocation of the patent granted in favour of the applicant herein.

6. The primary contention of the learned senior counsel appearing for the applicant is that the first respondent herein, namely Maya Appliances has not filed any application to grant the suit patent or for revocation at pre-grant stage or at post-grant stage and present application for revocation or rectification of the patent which stands in favour of the applicant is beyond the scope of their claim. He further contended that having participated in the suit instituted by the applicant and having filed the written statement with a specific plea, the first respondent cannot now make