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
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 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
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
Case Law Discussed:
Sterlite Technologies Limited v/s HFCL Limited
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