IPAB revokes several claims of yet another patent belonging to Dr. Wobben

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In a decision dated 23rd January, 2013; a bench of the IPAB, consisting of Justice Prabha Sridevan and D.P.S. Parmar, revoked 18 of the 21 claims of Patent No. 198648 granted to Dr. Alloy Wobben for “An inverter for producing an alternating or three phase current from a DC voltage”. The IPAB has ordered Dr. Wobben to amend even the 3 remaining claims, to narrow them down. The entire order of the IPAB can be accessed over here. Our previous posts on this dispute can be accessed over here
This is the 13th patent belonging to Dr. Wobben that has been revoked by the IPAB in proceedings brought by Enercon India Ltd. (EIL).We had blogged about the earlier 12 revocations over here, here and here along with posts on the genesis of the dispute over here. Here’s a brief recap of the issue: EIL is the Indian subsidiary of Enercon GmBH, a German company founded by Dr. Alloy Wobben. EIL is actually a joint venture by Enercon GmBH and the Mehra Group and was mainly in the business of developing and selling wind turbine technology. Although business was booming for the JV, things went sour sometime in 2007, during royalty negotiations between EIL and Enercon GmBH for the patented technology owned by Dr. Wobben. Things went south after the initial disagreements with litigation erupting all over India between the partners starting from the Bombay High Court to the Company Law Board to the Delhi High Court to the Madras High Court and finally the Intellectual Property Appellate Board. Despite the fact that the German company owned majority stake in EIL, it lost management control of the company. Soon, EIL filed revocation petitions against 23 patents granted to Dr. Wobben. In November, 2010 the IPAB revoked 12 of those patents. Those revocations had sparked a major outcry in Germany, where Dr. Wobben is seen as a great entrepreneur. In the following months a number of international papers had carried a series of stories on the disputes, primarily because the Germans were playing dirty by alleging corruption and all other kinds of nonsense against India and the IPAB. 
In the present case, Wobben’s counsel tried a number of tactics to stall the IPAB from hearing the revocation petition on merits. For starters, Wobben tried to argue that EIL did not have a locus standi to file the revocation petitions because the Managing Director from the Mehra Group was not authorized to initiate litigation before the IPAB. This was following by an argument of ‘licensee estoppel’, which bars the licensee of a patent from challenging the patent in question. Both arguments were shot down by the IPAB; the former because there was a Board Resolution which authorized Mehra to file the revocation petitions and the latter because Indian law does not recognize the doctrine of licensee estoppel. 
On merits, the claims at dispute in this patent were struck down for lack of novelty and obviousness. The actual merits of the judgment, merits an entire post of its own, which one of us will post sometime later.

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

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