Parallel Patent Revocation Petitions Barred Under Section 64 of the Patents Act: Madras High Court - 2025-12-19

One Patent, One Arena: Madras High Court Curbs Patent Forum Shopping

In a significant ruling aimed at preventing the abuse of legal processes in intellectual property disputes, the Madras High Court has sent a clear message to litigants: you cannot pursue multiple, parallel remedies in different courts for the same patent dispute. Justice N. Senthilkumar, presiding over the case of Versuni Holding B.V. v. Maya Appliances Private Limited , strictly prohibited "forum shopping," ruling that a defendant who has already contested an infringement suit cannot simultaneously file for patent revocation in a separate jurisdiction.

The Conflict: A Tale of Two Jurisdictions

The dispute involves Versuni Holding B.V.—a former division of the Royal Philips Group—which markets high-end home appliances including the globally recognized "Airfryer" series. Versuni initiated an infringement suit against Maya Appliances in the Delhi High Court (C.S.(Comm) No. 733 of 2023).

Maya Appliances, in response, filed a formal written statement in the Delhi suit challenging the validity of Versuni’s patent. However, in an apparent move to seek a more favorable resolution or separate ruling, Maya Appliances also filed a stand-alone revocation petition (O.P.(PT) No. 1 of 2024) before the Madras High Court, seeking to strike the patent from the Indian register entirely.

The 'Forum Shopping' Warning

The core of the legal contest rested on whether a defendant has the right to treat a patent revocation petition as a separate, independent right even while defending an active infringement lawsuit.

Versuni argued that Maya Appliances were attempting to "sail in two boats." Relying on the landmark Supreme Court ruling in Alloys Wobben vs. Yogesh Mehra , Versuni contended that once a defendant chooses to contest a patent with a counter-claim in an existing suit, they are barred by the principle of res judicata from initiating a new, independent revocation petition.

Justice Senthilkumar agreed, noting that the legislative scheme of the Patents Act does not permit a party to jump between fora to manufacture additional litigation. The court held that once a ground for revocation is taken as a defense under Section 107 of the Patents Act, the party must stick to that track.

Key Observations from the Court

The court’s reasoning was anchored in the preservation of judicial integrity and the prevention of contradictory findings:

• On the Election of Remedies: "The person challenging the patent or seeking revocation of a patent has to sail only in one boat."
• On the Finality of Litigation: "Having once filed a 'counterclaim' in response to the 'infringement suit(s)', it would not be open to the respondents to file 'revocation petitions', as they would likewise be barred by the rule of res judicata."
• On Judicial Consistency: "The present application, namely (PT) A No. 3 of 2024 filed by the applicant is allowed and the petition filed by the first respondent herein in O.P.(PT) No. 1 of 2024 is dismissed."

A Clear Path for Patent Litigants

The ruling clarifies that while Section 64 of the Patents Act provides avenues to challenge invalid patents, it is not an open invitation for litigants to exhaust the resources of multiple courts simultaneously.

For legal professionals, this decision reinforces the importance of strategic election. Defendants in patent infringement suits must be precise in their choice of forum; if they intend to challenge the validity of a patent, the counter-claim within the existing infringement suit is the singular, mandatory path. Attempting to bypass this through parallel independent petitions will now be met with immediate dismissal by the Madras High Court.

This judgment serves as a vital precedent in curbing tactical litigation strategies, ensuring that patent disputes are resolved with efficiency and consistency rather than through the fragmentation of judicial processes.