Madras High Court Dismisses Parallel Patent Revocation Bid, Citing Ban on Forum Shopping

Introduction

In a significant ruling for intellectual property litigation in India, the Madras High Court on December 19, 2025, dismissed a petition by Chennai-based Maya Appliances Private Limited seeking to revoke a food processor patent held by Netherlands-based Versuni Holding B.V. Justice N. Senthilkumar held that Maya could not pursue a standalone revocation application under Section 64 of the Patents Act, 1970, after already raising the issue as a defense in an ongoing patent infringement suit filed by Versuni before the Delhi High Court. This decision underscores the principle that parties must elect their remedies and avoid forum shopping, preventing multiplicity of proceedings and ensuring judicial efficiency. The case, titled Versuni Holding B.V. v. Maya Appliances Private Limited (Citation: 2026 LLBiz HC (MAD) 12; Case Number: (PT) A No. 3 of 2024), reinforces Supreme Court precedents on the Patents Act's scheme, impacting how alleged infringers challenge patent validity in India.

Versuni, formerly part of the Royal Philips Group and now operating as Philips Domestic Appliances, holds Indian Patent No. IN 351954 titled "An Apparatus and Method for Processing a Food Stuff," which covers innovative food processing technology. The dispute arose amid Versuni's infringement suit (C.S. (Comm) No. 733 of 2023) against Maya, a local competitor in home appliances. Maya's attempt to revoke the patent separately in Madras was deemed impermissible, highlighting tensions in India's evolving IP enforcement landscape.

Case Background

The roots of this dispute lie in the competitive home appliances market, where innovation in kitchen gadgets like food processors drives business growth. Versuni Holding B.V., headquartered in Eindhoven, Netherlands, is a global leader in domestic appliances, boasting a portfolio that includes air fryers, vacuum cleaners, and coffee machines under the Philips brand. Following a corporate restructuring, Versuni emerged from Philips Domestic Appliances, inheriting patents that protect its technological edge in over 100 countries.

In 2023, Versuni initiated a patent infringement suit against Maya Appliances Private Limited before the Delhi High Court, alleging that Maya's products violated the protected food processing method under IN 351954. Maya, based in Chennai's Adyar neighborhood and represented by authorized signatory Mr. E. Mohan, responded aggressively in its written statement. It not only denied infringement but also challenged the patent's validity, seeking its revocation and removal from the Indian Patent Register. Specifically, Maya's prayers included holding the patent invalid and directing the registry to strike it off, effectively mounting a counter-claim under the Patents Act.

Undeterred, Maya filed a separate original petition (OP(PT) No. 1 of 2024) before the Madras High Court in 2024, again seeking revocation of the same patent. This move prompted Versuni to file an application ((PT) A No. 3 of 2024) to dismiss Maya's petition, arguing it constituted an abuse of process. The Controller General of Patents, Designs, and Trademarks was joined as a respondent in both proceedings, representing the administrative arm overseeing patent grants.

The timeline is crucial: Versuni's Delhi suit predated Maya's Madras petition, and Maya had not opposed the patent at pre-grant or post-grant stages before the Patent Office. No other entity had challenged IN 351954 in India, though equivalent patents exist in seven other jurisdictions without opposition from Maya. This background framed the core legal question: Can a defendant in a patent infringement suit pursue a parallel standalone revocation petition in another High Court after invoking revocation as a defense?

Arguments Presented

Versuni, represented by Senior Counsel P.V. Balasubramanian (assisted by Advocate K. Premchandar), mounted a robust defense against Maya's parallel petition, emphasizing statutory intent and judicial economy. They argued that Sections 64 and 107 of the Patents Act preclude simultaneous remedies for the same grievance. Under Section 64, revocation can occur via petition to the High Court or as a counter-claim in an infringement suit, but once a party elects one forum—here, the Delhi High Court via written statement prayers—it cannot "re-agitate" the issue elsewhere. Balasubramanian highlighted Maya's failure to file pre- or post-grant oppositions, underscoring that the company now sought a "backdoor" revocation after participating in the Delhi proceedings.

Citing the Supreme Court's Alloys Wobben v. Yogesh Mehra (2014) 15 SCC 360, Versuni contended that the word "or" in Section 64(1) mandates remedy election, barring dual pursuits to avoid forum shopping—a tactic decried as multiplicity of litigation. They referenced Justice Prathiba M. Singh's treatise on patents, which interprets Alloys Wobben as requiring challengers to "sail only in one boat." Versuni also invoked Section 107, which allows revocation grounds as defenses in infringement suits, arguing Maya's written statement prayers (e.g., "hold the Indian Patent IN351954 is invalid" and "direct the registry to revoke the suit patent") already constituted a counter-claim, rendering the Madras petition redundant and abusive.

Maya Appliances, through Advocate Arun C. Mohan, countered that it was not barred from filing a standalone revocation under Section 64, as the Patents Act grants an independent right to "any person interested." Mohan asserted Maya's status as an "interested person" due to its Chennai headquarters and competitive overlap in food processors, justifying Madras jurisdiction. He dismissed Versuni's claims as a "Gillette defense"—a tactic to delay scrutiny of patent obviousness—arguing the technology was globally known and lacked novelty or inventive step.

To bolster maintainability, Mohan relied on the Delhi High Court's Macleods Pharmaceuticals Ltd. v. Controller of Patents (2025 SCC OnLine Del 118), where revocation was upheld as distinct from infringement defenses. Under Section 107, invalidity findings bind only parties (in personam), whereas Section 64 revocation operates in rem, binding all. Since Maya had not filed a formal counter-claim in Delhi (only defenses in the written statement), and the revocation petition predated certain aspects, it should proceed independently. Mohan also cited Delhi High Court rules on counter-claims, noting they are optional and do not oust parallel petitions, especially given Maya's local ties.

Legal Analysis

Justice N. Senthilkumar's reasoning centered on the Patents Act's integrated scheme, prioritizing single-forum adjudication to curb abuse. The court meticulously parsed Sections 64 and 107. Section 64 enumerates revocation grounds (e.g., lack of novelty under (e), obviousness under (f)) and forums, including High Court petitions or counter-claims in infringement suits. Section 107 explicitly incorporates these grounds as defenses, allowing defendants like Maya to challenge validity without separate action—but not in tandem with another proceeding.

The judgment drew heavily from Alloys Wobben , where the Supreme Court held: "even though more than one remedies are available... the word 'or' used therein... would disentitle them to avail of both the remedies... simultaneously." Paragraphs 23 and 26 of the ruling were pivotal, clarifying that post-infringement suit, challengers must use counter-claims; subsequent standalone petitions are barred by res judicata principles. This prevents "revocation petitions filed later... being unsustainable in law," ensuring the infringement court adjudicates all issues.

The court distinguished Macleods Pharmaceuticals , noting it involved a pre-suit revocation petition without defenses raised, unlike here where Maya's Delhi written statement prayers mirrored Section 64 grounds. Justice Senthilkumar observed: "once a defence available... has been exercised, the same cannot be re-agitated before any other forum." Maya's non-opposition at grant stages further weakened its position, as the Act encourages early challenges.

Broader principles emerged: Forum shopping undermines judicial resources, especially in IP where technical expertise is forum-specific. The ruling aligns with post-2021 Tribunal Reforms Act shifts, vesting High Courts with exclusive jurisdiction (abolishing IPAB). It clarifies that while Section 107 defenses yield in personam relief (e.g., suit dismissal), Section 64 revocation is in rem, but election remains mandatory. No violence to the statute occurs by requiring consolidation, promoting efficiency over multiplicity.

This analysis extends to related concepts: Pre-grant oppositions (Section 25(1)) or post-grant (Section 25(2)) are administrative, distinct from judicial revocation, but failure to use them limits later claims absent new grounds. Obviousness challenges, as hinted by Maya, must consolidate to avoid fragmented validity assessments, potentially aiding patentees like Versuni in multi-jurisdictional enforcement.

Key Observations

The judgment features several incisive excerpts illuminating the court's stance:

• On remedy election: "We do not have the slightest hesitation in accepting... that even though more than one remedies are available to the respondents in Section 64 of the Patents Act, the word 'or' used therein separating the different remedies provided therein, would disentitle them to avail of both the remedies, for the same purpose, simultaneously." ( Alloys Wobben v. Yogesh Mehra , as cited).

• Addressing forum shopping: "Having once filed a 'counterclaim' in response to the 'infringement suit(s)'... it would not be open to the respondents herein... to file 'revocation petitions(s)', as they would likewise be barred by the rule of res judicata."

• Statutory interpretation: "In the judgments relied on by the applicant herein, it has been categorically held that once a defence available to the first respondent herein has been exercised, the same cannot be re-agitated before any other forum or in any other manner."

• On maintainability: "The petitioner in OP(PT) No.1 of 2024 has not made any objection at the pre-grant and post-grant stage... [and] had made specific claim with regard to revocation of patent as a counter-claim [in Delhi]."

• Broader policy: Referencing scholarly commentary, "the person challenging the patent or seeking revocation of a patent has to sail only in one boat," emphasizing unified adjudication.

These observations distill the ruling's emphasis on procedural discipline in patent disputes.

Court's Decision

The Madras High Court unequivocally allowed Versuni's application ((PT) A No. 3 of 2024), dismissing Maya's revocation petition (OP(PT) No. 1 of 2024) without costs. The operative order states: "[I]n view of the settled proposition, the present application... filed by the applicant is allowed and the petition filed by the first respondent herein in OP(PT) No.1 of 2024 is dismissed."

Practically, this preserves Versuni's patent for adjudication solely in the Delhi infringement suit, where Maya's counter-claim-like defenses will be tested. No immediate revocation occurs, allowing Versuni to pursue injunctions or damages against Maya unimpeded. For Maya, it means channeling all validity challenges—including obviousness or prior art arguments—through Delhi, potentially streamlining but also concentrating its defense strategy.

Implications ripple across IP practice. This decision cements Alloys Wobben 's legacy post-IPAB abolition, guiding litigants to consolidate proceedings and deterring tactical filings in convenient forums. In a burgeoning Indian IP market, where foreign patentees like Versuni face local competition, it bolsters certainty, reducing litigation costs and delays. Future cases may see stricter scrutiny of "interested person" status and election doctrines, possibly influencing Commercial Courts' handling of counter-claims under CPC Order VIII Rule 6A.

For legal professionals, the ruling signals a need for early, strategic filings: Defendants should formalize counter-claims promptly to avoid waiver claims, while patentees can leverage prior defenses to quash parallels. Broader effects include enhanced judicial bandwidth amid rising IP suits (over 1,000 annually per recent reports) and alignment with global norms like TRIPS, favoring efficient enforcement. Ultimately, it fosters a predictable ecosystem, encouraging innovation without fear of bifurcated battles.