In a patent case between Terex India Private Limited and CDE Asia Ltd., the Calcutta High Court’s Commercial Division examined an appeal related to a post-grant opposition of Indian Patent No. 307249. This patent, granted to CDE Asia Ltd. on February 12, 2019, relates to an invention titled “System/Device Process for Classification of Various Materials.”
Terex India contested the validity of the patent, arguing that the claimed invention lacked novelty and was not patentable under Section 3(f) of the Patents Act, 1970, which prohibits the patenting of mere arrangements or re-arrangements of known devices functioning independently in a known way.
They argued that the patent covered a system and method that were already known and used in the industry before the priority date of the patent application. Terex India further argued that the Deputy Controller of Patents and Designs had failed to provide any independent reasoning or sufficient analysis in the decision, and had merely replicated the patentee’s submissions without addressing critical issues, such as the lack of novelty and the recommendations of the Opposition Board. This, Terex India claimed, amounted to a violation of the principles of natural justice, rendering the decision arbitrary and invalid.
On the other hand, CDE Asia Ltd. defended the validity of the patent and argued that if the matter were to be remanded, it should be sent back to the same officer who had originally passed the impugned order. However, Terex India insisted that the case should be reconsidered by a different officer to prevent any potential bias or pre-determined outcome.
The Court, upon reviewing the case, found that the Deputy Controller’s order lacked adequate reasoning and did not satisfy the necessary legal standards for such a decision. It observed that the order failed to offer a detailed explanation of how the final conclusions were reached, particularly in light of the arguments and evidence presented. Consequently, the Court set aside the impugned order, deeming it arbitrary and procedurally flawed.
The case was remanded for fresh consideration by a different officer to ensure impartiality and to uphold the integrity of the process. The Court directed that the reconsideration should commence from the stage of arguments, allowing all parties to present their case anew. The re-evaluation was to be completed within six months, with a clear and reasoned decision to be issued.
Citation: Terex India Private Limited v. CDE Asia Ltd. & Anr., IPDAID 4 of 2024 (H.C. Calcutta Aug. 2, 2024). Available at: http://indiankanoon.org/doc/5179520/, Visited on: 26/08/2024.
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