Can a Counter-claim of Revocation of patent be excluded from the suit for infringement?

I had a random thought today- Is it necessary for a counter-claim of revocation to be heard along with the suit for infringement of a patent? Could there be limited circumstances which could warrant/justify the de-linking of the two?

For this, I searched for a possible answer in the Code of Civil Procedure, and turns out that there is a provision for de-linking a suit for infringement of a patent, from a counterclaim of revocation of the patent- Order VIII, Rule 6C.

The Rule reads thus:

“6C. Exclusion of Counter-claim- Where a defendant sets up a counter-claim and the plaintiff contends that the claim thereby raised ought not to be disposed of by way of counter-claim but in an independent suit, the plaintiff may, at any time before issues are settled in relation to the counter-claim, apply to the Court for an order that such counter-claim may be excluded, and the Court may, on hearing of such application make order as it thinks fit”

What would be that specific circumstance which would warrant invoking this provision in a suit for infringement?

Let’s assume the Defendant/alleged infringer claims that he is not guilty of infringement because his product uses a technology different from the patented invention or that he is clearly not within the scope of the claims of the patent, his defense is not that of invalidity of the patent, but that of plain and simple non-infringement.

In such a case, if the defendant has still filed a counterclaim to create a cloud over the validity of the patent, I think, (and I could be wrong here), the counterclaim can be de-linked from the suit for infringement because invalidity of the patent is not the defendant’s ground of defense on the issue of infringement. His defense is simply that his product does not infringe the patent’s claims.

It must be borne here that Section 104 of the Patents Act merely provides that when a counter-claim is filed, the forum it must be transferred to along with the suit for infringement is the High Court. Nowhere does Section 104 forbid or prohibit de-linking the suit from the counter-claim. The CPC would still govern the conduct of the proceedings, and if the co-adjudication of the counterclaim results in embarrassment of the proceedings or complication of the trial, it is best excluded and treated as an independent suit.

But can there be an independent suit before a High Court for revocation of a patent? The Patents Act envisages only a counterclaim of revocation. There does not appear to be a provision in the Act for filing of an independent suit for revocation; the only independent proceeding the Act envisages for revocation of patent is a petition under Section 64 of the Act before the IPAB.

If that be the case, I think it would still be within the High Court’s powers to exclude the counter-claim of revocation and direct the Defendant to file it by way of a revocation petition before the IPAB.

Opinions and corrections from practitioners are welcome!

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