What are the circumstances where a defendant could be allowed to use the principle of mosaicing to defeat a patent? Or in other words, how the Hon'ble Court would evaluate which of the prior arts cited by the Defendant are relevant for the purpose of mosaicing.

The Hon'ble High Court of Delhi, in its recent judgement dated 14.09.2022 passed in Suit bearing CS (COMM) 19 of 2022 titled as Sterlite Technologies Limited v/s HFCL Limited, considered this argument of the Plaintiff regarding mosaicing of prior art and put some light on this issue. 

The subject matter suit was filed seeking infringement of Patent No. IN335369, which was granted to the Plaintiff in relation to Optical Fiber Cables, which was granted to the Plaintiff on 20.03.2020 with a priority date of 29.03.2016. The suit was filed by the Plaintiff on the grounds inter alia that the optical fiber cables of the Defendant's are violating the subject matter patent and, accordingly, an ex parte injunction dated 12.01.2022 was obtained. 

Vid In the judgement dated 14.09.2022 passed by the Hon'ble High Court of Delhi in the afore mentioned suit, the application of the Plaintiff under Order 39 Rule 1 and 2 CPC and the application of the Defendant under Order 39 Rule 4 CPC was disposed off. 

As per the case of the plaintiff, the earlier optical fiber cables were of bigger diameter and required large ducts for installation. While the subject matter suit pertains to optical fiber cables, which have a smaller diameter and reduced weight.

The main claim of the Suit Patent was that it had 16 optical fibers, whereas the Defendant's product only had 12 optical fibers. The defendant relied upon two basic prior arts. 

The Plaintiff sought to disregard these prior arts by raising the objection that these prior arts should be rejected as the defendant was trying to defeat the patent of the Plaintiff by mosaicing prior arts. 

However, the Hon'ble High Court of Delhi rejected this argument of the plaintiff by holding that mosaicing of prior art is applicable only in those cases where the defendant relies upon multiple prior arts which are totally unconnected to each other. As in the subject matter suit, the defendant relied upon only two prior arts and they are connected, hence it cannot be said that the defendant is trying to do the mosaicing of prior arts. 

The Hon'ble High Court of Delhi, in this case, was pleased to discuss two of the prior arts in order to defeat the novelty of the subject matter patent. The Hon'ble High Court of Delhi made a comparison between the basic features of the cited 2 prior arts with the subject matter patent and observed the basic similarity between all three are as under: 

• Water swella tubes/sleeves are included in the suit patent. All three disclose the presence of jelly within the buffer tubes.
• All three OFCs have ripcords and an outer sheath.
• In the RJIL OFC cable, an aramid yarn is used for cross-binding of the buffer tubes along with a water-blocking tape.
• The Gigacom uses a polyethylene lining and water-blocking yarn around the CSM;
  the suit patent OFC discloses a strengthening and a binding polyester, aramid or propylene layer and a water-blocking material.

As per the observation of the Hon'ble Court, all the basic features of the suit patent were available in the 2 cited prior arts. Hence, the subject matter patent was liable to be defeated on the ground of lacking inventive step. 

Another reason for declining the injunction was that in the defendant's Optical Fiber Cables , only 12 fiber cables were used, while in the subject matter suit patent, 16 fiber cables were used. 

Though the Plaintiff sought to argue that the number of 16 fiber cables used is merely illustrative in nature and the defendant's product is covered under the Indian Patent, even if it uses only 12 optical fibers. This argument could not be appealed to the Hon'ble Court. 

The reason for rejecting this argument was that the Plaintiff itself had applied another patent application in which the number of optical fibers was not specified, while in the subject matter patent, the number of 16 optical fibers was specially mentioned.

Hence, it cannot be said that the number of optical fibers used in the subject matter patent, i.e. 16, was merely illustrative. Actually, it was one of the basic features and the defendant, by using 16 optical fibers, was out of scope of the subject matter patent. 

Thus, the Hon'ble High Court of Delhi, though rejected the interim injunction on the ground of lacking inventive step , also considered the 2 cited prior arts with respect to lacking novelty also. 

Prior art mosaicing is only applicable when multiple and completely unrelated prior arts are used to defeat the patent on the grounds of lack of inventive step. However, in this case, the defendant relied on only two prior arts that were linked, so it cannot be said that the defendant was attempting to mosaic prior arts. 

The result was that the Hon'ble High Court of Delhi, in the subject matter suit, considered two of the prior arts cited by the Defendant, which were similar and connected to some extent, for the purpose of lacking novelty. This is another aspect that the Hon'ble Court observed that these two cited prior arts may not be relevant for destroying the novelty but certainly for the purpose of lacking inventive step.

Case Law Discussed:
Sterlite Technologies Limited v/s HFCL Limited
Judgement Date:14.09.2022
Case No. CS (COMM) 19/2022
Hon'ble High Court of Delhi
Prathiba M Singh , H.J

Written By: Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
[email protected], 9990389539