Judgement Date:14.09.2022
Case No. CS (COMM) 19/2022
Hon'ble High Court of Delhi
Prathiba M Singh , H.J
Sterlite Technologies Limited Vs HFCL Limited
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 Vs 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 fibre cables of the Defendant's are violating the
subject matter patent and, accordingly, an ex parte injunction dated 12.01.2022
was obtained.
Vidé 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
fibre cables were of bigger diameter and required large ducts for installation.
While the subject matter suit pertains to optical fibre 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 fibre cables were used, while in
the subject matter suit patent, 16 fibre cables were used.
Though the Plaintiff sought to argue that the number of
16 fibre 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
fibres. 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 fibres was not specified, while in the subject matter patent, the
number of 16 optical fibres was specially mentioned.
Hence, it cannot be said that the number of optical
fibres 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 fibres, 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.
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