Calcutta High Court sets aside template order in patent (post-grant) opposition proceedings

Terex India Private Limited (Terex) filed an appeal against the order passed by the Deputy Controller of Patent and Designs on March 2, 2023 (under Section 117A of The Patents Act, 1970), challenging the refusal of the post-grant opposition filed by Terex for the revocation of Indian Patent No. 307249 granted to CDE Asia Ltd. (respondents) on February 12, 2019.

The patent in question is titled “SYSTEM/DEVICE PROCESS FOR CLASSIFICATION OF VARIOUS MATERIALS” and was filed on September 2, 2013, under application no. 1033/KOLNP/2013. The appeal was heard by the IP Rights Division of the Calcutta High Court.

Terex’s main argument in the appeal were:

• The patent claims a method and system that were publicly known and already in use at the time of the priority date, making them non-patentable subject matter in India.
• The patent’s independent claims lack proper disclosure on how the subsystems are interconnected and that the combination of known devices does not produce a new or unexpected effect.
• Section 3(f) applies to the presently claimed system as it is a mere arrangement or re-arrangement or duplication of known devices, each functioning independently of the other in a known way.
• The Deputy Controller failed to provide independent reasoning or interpretation in the order, merely copying the written submissions of the patentee. They emphasized that the Deputy Controller did not consider the Opposition Board’s recommendations or provide reasons for accepting the patentee’s submissions.

Due to a lack of reasoning, the parties essentially argued that the matter should be remanded for fresh consideration as the Deputy Controller’s order lacked reasoning. The respondents argued that the matter should be remanded to the same officer who passed the impugned order.  However, the appellant argued that it should be heard by a different officer.

Court ruling

• Lack of proper reasoning: The court found that the Deputy Controller’s order lacked proper reasoning and failed to satisfy the basic requirements of an order adjudicating the patentability of an invention. The Deputy Controller merely recorded the submissions and written arguments of the parties without providing any independent reasoning, interpretation, or inference.
• Failure to consider the Opposition Board’s recommendations: The Deputy Controller did not give any weightage to the Opposition Board’s recommendations, which is against settled legal principles. The court emphasized that the report of the Opposition Board has considerable relevance while taking a decision under Section 25(4) of the Patents Act.
• Mechanical and template order: The court criticized the Deputy Controller for issuing a mechanical, template, and cut-and-paste order, which cannot be sustained and must be strictly discouraged. The entire text of the impugned order was dedicated to noting the details of the invention and claims made therein but lacked reasoning supporting the final decision.
• Arbitrary approach: The court found that the Deputy Controller’s arbitrary approach made it difficult for the court to examine the impugned order on merits. The lack of proper reasoning and objective criteria suggested a subjective determination.
• Principles of natural justice: The court underscored the importance of reasoning through a speaking order as a vital aspect of the principles of natural justice. Proper reasoning in orders is essential to ensure justice and avoid complications.

The court decided to send the matter to a different officer and quashed the order for the following reasons:

• Possibility of pre-determination: The court emphasized that there might be a possibility of pre-determination if the same officer who passed the impugned order were to reconsider the matter. This could potentially affect the fairness and impartiality of the decision-making process.
• Proper justice: The court highlighted the importance of ensuring that the litigant receives proper justice. By remanding the matter to a different officer, the court aimed to avoid any complications and multiplicity of proceedings. Further, to avoid any perception of bias and ensure a fair reconsideration, the court decided to remand the matter to a different officer.
• Fresh consideration: The court found that all proceedings had been completed, and the parties had filed their written arguments. Therefore, it was appropriate to remand the matter from the stage of argument, allowing the parties to present fresh arguments and bring all relevant materials to the attention of the new officer.

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