AI Structured Summary
Not yet generated for this judgment
Judgment
S. Chandrasekaran, Technical Member
1 . The petitioner herein, M/s. TVS Motor Co. Ltd., is the applicant for revocation of the patent 195904 granted to the respondent, M/s. Bajaj Auto
Ltd. The petitioner filed the revocation petition together with statement of facts along with a notarized affidavit on 24th August 2007. The respondent
filed their counter on 30th January 2008 after availing extension of time to file the same. The respondent also filed two affidavits in support of their
counter on 6th February 2008. The petitioner filed their reply to the counter statement on 4th June 2008 along with a notarized affidavit, together with
a specific request that they would be submitting additional expert affidavits within 15 days of the filing of the reply to the counter.
2 . The petitioner filed their additional expert affidavits on 20th June 2008 duly notarized together with a miscellaneous petition to take the same on
record which has been numbered as M.P. No. 22/2008. The registry called for the reply from the respondent on these two affidavits accompanying
the M.P. No. 22/2008. In the meanwhile, the petitioner filed two more miscellaneous petition alongwith two more expert affidavits which have been
numbered as M.P. Nos. 30/2008 and 21/2009. The respondent submitted their reply to the M.P Nos. 22/2008 and 21/2009. The petitioner filed one
more M.P. seeking an early hearing to dispose off these two earlier M.P.s, which was heard by this Appellate Board on 30th March, 2009 and
directed the matter to be listed for a continuous hearing in June 2009. The respondent on 22nd June 2009 raised an objection that they have not been
given an opportunity by the Registry of the Appellate Board to reply against the M.P. No. 30/2008 and until they have been called upon to file reply
against these miscellaneous petitions, the main hearing listed for and scheduled, in June 2009 cannot be taken up and the Appellate Board has to first
consider whether these two expert affidavits can be taken on record and whether the petitioner can file any further additional expert evidence after
having filed the reply to the counter. Further, the respondent objected the additional expert evidences from being taken on record and stressed for an
opportunity be given to them to file their reply and to rebut and also to cross examine the experts. The respondent also filed their rejoinder on 26th
June 2009 together with a reply to M.P. No. 30/2008.
As per the objection raised by the respondent and a request made to this Appellate Board to consider these two M.P.s regarding filing the expert
evidences and seeking orders on allowance to take them on record and also to give the opportunity to respondent to file their expert evidence and also
the right to cross examine the petitioner's experts, these M.P. Nos. 21/2009 and 22 & 30/2008 came up for hearing before us on 29th June 2009.
The counsel for the petitioner argued that the reply to the counter was filed on 4th June 2008 with a specific request in their reply that they would
file their expert evidences within 15 days and in fact, as undertaken, the same was filed on 19th June 2008 together with a M.P to take them on
record. The counsel for the petitioner submitted that these affidavits were only rebuttal in nature and did not include or introduce any new document
and also pointed out that the respondent took nearly eight months to file their reply to the petitioner's expert evidences, but filed a rejoinder just 2 days
before the hearing to take place, stalling the whole process of final hearing. The counsel for the petitioner submitted that the two more expert
affidavits filed have been allotted separate MP numbers by the Registry of the Appellate Board, but these expert affidavits are merely in reply to the
expert affidavits of the respondent and dealt with the matter and documents, which are already on record. The counsel submitted that under CPC
1908, these additional expert affidavits could have been submitted at any time before the trial starts. Though the CPC is not applicable to the
proceedings of the Appellate Board, the fact remains that the trial has not begun and so by taking these additional expert evidences on record, the
respondent would not be prejudiced and also expressed no objection if the respondent is given an opportunity to reply to these expert affidavits or
otherwise also for a cross examination of the expert witnesses and in that eventuality the petitioner also should be given the opportunity to cross
examine the respondent's expert witnesses. The counsel for the petitioner submitted that in a trial, making available the list of witnesses for cross
examination, would take place only after the pleadings are completed and therefore the filing of two affidavits in two tranche on 20th June and 10th
September 2008 would not in any way cause any prejudice to the respondent. The learned Counsel for the petitioner also pointed out that the
respondent chose to remain silent and did not raise any objection to the Registry of the Appellate Board till 26th June 2009, but decided to file a
rejoinder just two days before the hearing was to take place, giving incorrect and false reasons that the respondent was fighting connecting
proceedings in the Madras High Court and Supreme Court and so they were so busy to concentrate or find time to file a rejoinder timely. The counsel
said that this is only a ploy to delay the whole process of hearing. Finally the counsel said that the Appellate Board has the power to receive evidence,
in terms of Section 117 B of the Patents Act, 1970 which refers to the Section 92 of the Trade Marks Act, 1999.
5 . The Counsel for the respondent submitted that the expert affidavits should have been filed along with the main revocation application itself and not
separately after the counter has been filed by the respondent. The counsel also referred to the rules 3 & 8 of the IPAB (Procedure) Rules, 2003 and
said the affidavits have to accompany the application for revocation and not thereafter at any time. The counsel also pointed out that the respondent
had filed the affidavits along with the counter to the revocation application and hence there is no provision for the petitioner to file the additional
evidences at any time after the counter has been filed and finally these MPs should be dismissed and the additional expert evidences filed belatedly
should not be taken on record. Also the counsel submitted that the petitioner has not cited any reasons as to why the affidavits could not be filed in
time and in the absence of any such explanation for the delay, the delay cannot be condoned. Further, the counsel also argued that in the event of the
expert evidences being taken on record, then the respondent should be given the opportunity to file their reply and also provided the right to cross
examine the experts.
The counsel for the petitioner submitted that the Rule 11 of the IPAB (Procedure) Rules, 2003 does not in any way restrict the filing of additional
expert evidences and also submitted that these rules are only directory in nature and not mandatory. The counsel also referred to the Rule 14 of the
IPAB (Procedure) Rules, 2003 and said that the provisions and power given therein show that the Hon'ble Appellate Board can extend the time for
doing any act under these rules. The counsel for the petitioner also pointed out that the respondent had requested for cross examination, in their letter
dated 22-6-2009 addressed to the Hon'ble Appellate Board. The counsel submitted that the cross examination of the experts by both sides, especially
in a Patent matter involving technology, is part of the principles of natural justice and it was urged that both the parties be dispensed with their rights to
cross examine the witnesses of the other party, the Appellate Board may be pleased to permit cross examination and set a time limit. The learned
Counsel also invited the attention of this Bench to the Order No. 77 of 2008 in a trade mark matter where the Hon'ble Bench had permitted the filing
of additional evidence/ documents at a later stage by condoning the delay, in the interest of justice and stressed that the said principle may be followed
here also and the Appellate Board was requested to permit the filing of affidavits by allowing the miscellaneous petitions and take on record the four
affidavits filed by the petitioner.
The learned Counsel for the respondent also referred to the rules 8,10 & 11 of the IPAB (Procedure) Rules, 2003 and submitted that every
application, counter-statement and reply shall be filed within time limit specified in the rules and shall be accompanied with evidence in the form of
affidavits, if any. The learned Counsel also submitted that the rules do not contemplate filing of the reply and evidences at different point of time. The
counsel further submitted that the petitioner had not cited any reason as to why the affidavits could not be filed in time and in the absence of any
explanation for the delay, the delay cannot be condoned and continued that in any case, the respondent should be given reasonable time to rebut the
evidence submitted by way of affidavits. The learned Counsel for the respondent also submitted that the respondent have not come to a conclusion or
taken a decision regarding as to request for cross examination of the experts or not.
8 . We have heard the arguments of both the counsels. The range of subject matter addressed by expert evidence is virtually limitless. It covers the
spectrum of the various sciences and it extends to other areas of technical or specialized knowledge in which people who have acquired special
knowledge, skill, experience, training, or education may be able to give testimony that would assist in the resolution of disputed questions of fact. Much
of the expert evidence could be entirely routine and require little judicial interpretation. When experts disagree, however, the litigation may become
more complicated, resulting in lack of comprehension and added cost and delay. A two-party patent case may involve difficult questions concerning
the state of the art to decide the patentability criteria of the invention claimed and patented. In Daubert v. Merrell Dow Pharms., Inc. 509 U.S. 579,
589 (1993) the Supreme Court identified ""factors what a court may consider in determining whether an expert's testimony is sufficiently reliable or not;
generally, witnesses must give evidence of facts, not opinions. An exception to this rule is where the witness himself is an expert in the matter and the
subject of the opinion calling for special skill or knowledge."" In England in Whitehouse v. Jordan [1981] 1 W.L.R. 246 at 256-257 Lord Wilberforce
said "" it is necessary that expert evidence presented to the Court should be, and should be seen to be, the independent product of the expert,
uninfluenced as to form or content by the exigencies of litigation."" Keeping in mind, these famous judicial decisions and the Appellate Board's Order
No. 77 of 2008 pronounced in a trade mark matter wherein it had permitted the filing of additional evidence/ documents at a later stage in the interest
of justice and after having referred to the cited judgments therein wherein request for permission to file the additional documents or evidences were
allowed, we are in the interest of justice inclined to allow the 3 miscellaneous petitions and take on record the affidavits filed by the petitioner. We also
direct the respondent to file their rebuttal, if any, to these affidavits within six weeks from the date of this order and also indicate their willingness to
cross examine the experts of the petitioner. With the above directions, all the miscellaneous petitions are disposed off and parties shall bear their own
cost.