Delhi High Court
Dura-Line India Pvt Ltd vs Jain Irrigation Systems Ltd on 19 May, 2025
Author: Sanjeev Narula
Bench: Sanjeev Narula
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Pronounced on: 19th May, 2025
+ CS(COMM) 245/2017 & CC(COMM) 54/2017, I.A. 7004/2013
DURA-LINE INDIA PVT LTD .....Plaintiff
Through: Mr. Neel Mason, Mr. Essenese
Obhan, Mr. Siddharth Vardhman, Mr.
Ankit Rastogi, Ms. Nandini
Chowdhry and Mr. Shivam Issar,
Advocates.
versus
JAIN IRRIGATION SYSTEMS LTD. .....Defendant
Through: Mr. J. Sai Deepak, Mr. Mahua Roy
Choudhary, Mr. R. Abhishek and Mr.
Avinash Sharma, Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT
SANJEEV NARULA, J.:
1. This lawsuit is based on claims of infringement of Indian Patent No.
IN 1997221 and Design Registration No. 192665 both pertaining to a non-
metallic pipe assembly embedded with a co-extruded tracer cable. The
Plaintiff contended that the Defendant’s products replicate the essential
features of its patented invention and protected design, thereby violating its
statutory rights. The Defendant not only denies infringement but also assails
the validity of the Suit Patent itself, citing lack of novelty, absence of
1
“the Suit Patent”
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inventive step, and insufficient disclosure under Section 64 of the Patents
Act, 1970.2 The crucial question to be determined is whether the Plaintiff’s
claimed invention constitutes a genuine technical advance meriting patent
protection, or whether it amounts to no more than a routine and obvious
refinement of pre-existing knowledge.
The Controversy
2. Indian Patent No. IN 199722, relates to a pipe assembly designed to
aid in traceability and leakage detection. The patented invention comprises a
non-metallic pipe for transporting fluids, on whose outer surface a tracer
cable is co-extruded and encased in a suitable polymer material. According
to the Plaintiff, this configuration enables precise underground location and
leak identification while preserving the pipe’s structural strength. The
invention has been commercially exploited under the trademark “Dura Trac”
since 2007. As per statutory requirement, the Plaintiff had filed Form-27 for
the year 2012, giving a statement regarding the working of the patented
invention and disclosing manufacturing to the tune of INR 3,00,66,810/-.
3. The dispute stems from a tender floated for the Omkareshwar Lift
Irrigation Scheme, which called for the supply and installation of HDPE
pipes with an underground detectability feature, including a co-extruded
copper wire running along the pipe’s length. On 25th November, 2011, the
Plaintiff was approached via email to submit a competitive proposal, to
which they responded on 5th December, 2011, by offering products based on
the patented invention. Shortly thereafter, the Plaintiff came across an article
dated 11th December, 2012 in the Hindustan Times, Indore edition, wherein
2
“the Patents Act”
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representatives of the Defendant claimed to have already supplied pipes for
the said project.
4. Perturbed by this development, the Plaintiff filed the present suit
alleging that the Defendant’s products, marketed as “B-Sure Polyethylene
(PE) and Polypropylene (PP) Sewerage Pipes” and “Jain Insta Tracer Pipes”
– incorporate all the essential features of the Suit Patent, thereby infringing
the statutory rights granted under Section 48 of the Patents Act.
5. The Defendant refutes the charge of infringement and has, in turn,
laid challenge to the validity of the Suit Patent. In their counter-claim, the
Defendant invokes Sections 64(1)(e), (f), (h) and (i) of the Patents Act,
asserting that the patent lacks novelty, does not involve an inventive step,
and suffers from insufficient disclosure. It is argued that the patented
configuration merely substitutes known alternatives without disclosing any
real technical advancement. The Defendant also contests the claim of design
infringement and seeks dismissal of the Plaintiff’s plea for rendition of
accounts, contending that such relief is barred by the framework of the
Indian Evidence Act, 18723 and the Code of Civil Procedure, 1908.4
Parties to the Suit
6. The Plaintiff, Dura-Line India Private Limited, is a wholly owned
subsidiary of Dura-Line International Inc., a company headquartered in
Knoxville, Tennessee, United States of America. The parent company
claims over three decades of expertise in developing infrastructure solutions
for the telecommunications industry, driven by research and development
3
“the Evidence Act”
4
“CPC‘
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capabilities, and a diverse portfolio of advanced technologies tailored to
varied site conditions. It operates several ISO 9001-certified manufacturing
facilities in the United States of America and maintains a global footprint
through subsidiaries in India, the Czech Republic, Oman, and Mexico.
7. In India, the Plaintiff operates two manufacturing units , one in Goa
and another in Neemrana, Rajasthan. It is certified under ISO 9001:2000 and
ISO 14001 standards. The Plaintiff describes themselves as a leading
international manufacturer and distributor of infrastructure systems,
including conduit, cable-in-conduit assemblies, water pipes, and related
accessories, catering to the sectors of communication, energy and water.
8. The Defendant, Jain Irrigation Systems Limited,5 describes themself
as the largest manufacturer of plastic pipes in India and among the top five
globally in the manufacture of PVC and PC sheets. JISL states that they are
the only manufacturer to own a Research and Development facility equipped
with advanced testing infrastructure and approved by the Department of
Scientific and Industrial Research. They have been engaged in the
production of Polyethylene pipes6 and corrugated plastic pipes used in
pipeline networks for gas, liquids, solids, and other applications for over 25
years.
Technological Context and the Claimed Solution
9. The Plaintiff asserts that the invention disclosed in the Suit Patent
effectively addresses longstanding practical difficulties associated with the
location and leak detection of buried non-metallic fluid transport pipes. It is
5
“JISL”
6
“PE Pipes”
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asserted that such pipes are typically laid by Municipal Authorities for
various utilities, including gas, water, and sewerage, extending from
treatment plants to residential or commercial premises. Being buried under
the earth, identifying the precise location of these pipes has historically been
problematic. While metallic pipes may be located using magnetometers or
through the application of radio frequency signals detectable by suitable
sensors, such methods are inapplicable to non-metallic pipes. For plastic
pipes, tracer wires were traditionally either taped around the pipe, laid
alongside it, inserted within it, or omitted altogether.
10. The Plaintiff submitted that these conventional techniques involving
loose tracer cables are inadequate, as such cables are prone to damage, may
deviate from the actual alignment of the pipe, or may not be situated within
the same trench. Tracer wires bonded adhesively to the pipe surface often
separate during transport and installation. Inserting tracer cables within the
pipe wall compromises its pipe strength, necessitating the addition of
stabilizing ribs which, in turn, increase material consumption and
manufacturing costs. Pipes incorporating such additional reinforcements are
not ideal for fluid transport due to the reduced strength of the pipe walls.
11. Moreover, in the event of a leakage, it becomes imperative to
accurately determine both the location of the pipe and the precise point of
leakage in order to undertake effective repair or replacement. Thus, the
problem is two-fold: first, to locate the non-metallic pipe itself, and second,
to pinpoint the location of the leak along its length.
12. Therefore, there was a need to develop a simple, economical, and
practical system that can both locate and detect leakages in a non-metallic
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pipe. The invention, as claimed in the Suit Patent, comprises a pipe with a
co-extruded tracer cable positioned on its outer surface. Such a pipe can
transport fluids and is capable of traceability and leakage detection without
compromising on the strength of the pipe. The claimed invention design also
facilitates ease of installation and reliable coupling with adjacent pipe
segments.
Suit Patent: IN 199722 (Application No. 927/DEL/2003)
13. The Plaintiff asserts that they developed a novel pipe assembly
incorporating features for traceability and leakage detection and, on 25 th
July, 2003, applied for a patent for the said invention. The patent application
bearing No. 927/DEL/2003 was granted after a detailed examination and
was ultimately registered as Indian Patent No. IN 199722, titled “A Pipe
Assembly Having Traceability and Leakage Detection Features”. The patent
was recorded in the Register of Patents on 30th August, 2007, and remained
valid for a period of 20 years from the date of application, and expired on
25th July, 2023.
14. The Suit Patent comprises a total of 11 claims, 8 apparatus claims and
3 method claims, of which Claims 1 and 9 are independent. The Plaintiff
asserts that no pre-grant or post-grant opposition was ever filed against the
Suit Patent. For ease of reference, the claims are reproduced below:
“Claim 1:
A pipe assembly having traceability and leakage detection features for
locating and detecting leakage in said pipe assembly comprising:
– a non-metallic pipe (10) to transport fluids,
– a co-extruded tracer cable (40) on said non-metallic pipe to which
pulses are applied to locate said non-metallic pipe and detect leakage
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– said co-extruded tracer cable being encased in suitable polymer
material (20).
Claim 2:
A pipe assembly as claimed in claim 1 wherein said cable is provided
with means for generating and applying pulses.
Claim 3:
A pipe assembly as claimed in claim 2 wherein said means for
generating and applying pulses to said cable is a pulse generator.
Claim 4:
A pipe assembly as claimed in claim 1 wherein said cable is provided
with means for receiving reflections of said pulses.
Claim 5:
A pipe assembly as claimed in claim 4 wherein said means for
receiving reflections of said pulses is an oscilloscope.
Claim 6:
A pipe assembly as claimed in claim 1 wherein said pipe is made of
high-density polyethylene (HDPE).
Claim 7:
A pipe assembly as claimed in claim 1 wherein said cable is made of
any suitable metal. Claim 8: A pipe assembly as claimed in claim 1
wherein said means for joining the two tracer cables of adjacent pipes
is a flexible multistrand cable with tubular metal lugs at its ends for
crimping and to insulate the ends of the tracer cable.
Claim 9:
A method of locating a concealed or underground non-metallic pipe
as claimed in claim 1, and detecting a leak thereof, comprising the
steps of:
– connecting the co-extruded cable on said non-metallic pipe to a
signal generator, – passing signal through the said cable by the signal
generator,
– sensing the signal on the surface by means of any known sensing
device, thereby locating the pipe,
– connecting the co-extruded cable on said non-metallic pipe to a
pulse generator, – passing pulses through the said cable by the pulse
generator,
– receiving reflections of said pulses from said cable,
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– analyzing said reflections to determine presence of leak and its
position.
Claim 10:
A pipe assembly having traceability and leakage detection features
substantially as herein described with reference to and as illustrated
by the accompanying drawings.
Claim 11:
A method of locating a concealed or underground non-metallic pipe
and detecting a leak thereof substantially as herein described with
reference to and as illustrated by the accompanying drawings.”
15. On a bare reading of the claims, particularly Claim 1, which serves as
the independent claim, it is evident that the novelty and inventive step of the
Suit Patent lie in the combination of the following elements of the Plaintiff’s
pipe assembly:
(a) a non-metallic pipe (10) to transport fluids;
(b) a co-extruded tracer cable (40) on said non-metallic pipe to which
pulses may be applied to locate said non-metallic pipe and detect leakage on
the same;
(c) said co-extruded tracer cable being encased in suitable polymer
material (20).
16. These features collectively form the essential constituents of the
Plaintiff’s invention, enabling the development of a pipe assembly with
traceability and leakage detection functionalities, while permitting necessary
technical variations or adaptations.
17. Accordingly, if any third-party manufactures, uses, or distributes a
pipe assembly incorporating the same combination of features as set out
above, it would constitute an infringement of Patent No. 199722, which was
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validly registered in the name of the Plaintiff at the time of filing of the
present suit.
Plaintiff’s Registered Design No. 192665
18. In addition to the patent protection, the Plaintiff has also secured
registration of the industrial design titled “Detectable Pipe” under Design
Registration No. 192665, which corresponds to the Suit Patent. A
representation of the registered design, as presented in the plaint, is as
follows:
19. Therefore, the unauthorized use or imitation of the said design by any
third party would amount to infringement of the Plaintiff’s statutory rights in
Design No. 192665, as protected under the Designs Act, 2000.7
Case Management Proceedings
20. Upon service of summons, the Defendant appeared and contested the
suit by filing a written statement accompanied by a counter-claim seeking
revocation of the Suit Patent. In response, the Plaintiff filed its written
statement to the counter-claim, followed by a replication filed by the
Defendant.
21. On consideration of the pleadings, by order dated 5th October, 2016,
the Court framed the following issues:
“In suit:
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(i) Whether the plaintiff is the proprietor of the invention titled as “A
Pipe Assembly Having Traceability and Leakage Detection Features”
bearing Patent Registration no.199722? OPP
(ii) Whether the plaintiff is the proprietor of the Design for pipe
having a coextruded cylindrical structure bearing Design Registration
no.192665? OPP
(iii) Whether the defendants‟ adoption and use of the products “B-Sure
Polythene (PE)” and “Polypropylene (PP)” amounts to infringement of
the plaintiff’s Registered Patent no.199722? OPP
(iv) Whether the defendants‟ adoption and use of the products “B-
Sure Polythene (PE)”and “Polypropylene (PP) Sewerage Pipes and
“Jain Insta Tracer Pipes” amounts to infringement of the plaintiff’s
Registered Design no.192665? OPP
(v) Whether the plaintiff played a fraud on the Indian Patent Office
while obtaining grant of patent? OPD
(vi) Relief.
In Counter Claim:
i. Whether for the reasons stated in the counter claim the patent of
the plaintiff is liable to be revoked? OPCCii. Relief.”
22. By order dated 23rd October, 2019, it was clarified that Issue No. 3
would encompass examination of infringement of the Suit Patent in relation
to both of the Defendant’s products, “B-Sure Polyethylene (PE) and
Polypropylene (PP) Sewerage Pipes” and “Jain Insta Tracer Pipes.”
23. The Plaintiff, in support, examined two witnesses: Mr. Davender
Kumar Sharma [PW-1] and Dr. Prasanta Kumar Tripathy [PW-2], in
7
“the Designs Act”
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addition to placing documentary evidence on record. The Defendant, in turn,
examined Mr. Gautam Ray [DW-1] and Mr. J. Wadhwani [DW-2] in
support of their counter-claim and defence.
Issue Wise Analysis
24. Upon a comprehensive consideration of the pleadings, oral testimony,
and documentary record, the Court now proceeds to examine the issues
framed for determination.
Issue No. (i)- Whether the Plaintiff is the proprietor of the invention titled
as “A Pipe Assembly Having Traceability and Leakage Detection
Features” bearing Patent Registration No. 199722? OPP
25. The grant of a patent by the Controller of Patents under the Patents
Act constitutes prima facie evidence of proprietorship. Section 67 of the
Patents Act mandates the maintenance of a Register of Patents, which
records, inter alia, the name and address of the patentee and confers
evidentiary value on certified entries. Once a patent is granted and registered
in the name of an applicant, the burden of disproving proprietorship lies on
the party asserting otherwise.
26. The Plaintiff has placed on record a certified copy of the Patent
Certificate and the complete specification of Indian Patent No. 199722
[Exhibit PW-2/1], evidencing that the invention titled “A Pipe Assembly
Having Traceability and Leakage Detection Features” was registered on
30th August, 2007, pursuant to their application dated 25th July, 2003. The
entry in the Register of Patents reflects the Plaintiff as the patentee. This
document stands duly exhibited through the deposition of Dr. Prasanta
Kumar Tripathy [PW-2].
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27. Although PW-2 conceded in cross-examination that he was not
personally involved in the invention, the Defendant has not adduced any
evidence to dispute the Plaintiff’s proprietorship. Mere lack of inventorship
on the part of the deponent is immaterial so long as the legal and beneficial
title to the patent is vested in the Plaintiff, which remains unchallenged on
record.
28. Further corroboration is found in the affidavit of Mr. Davender
Kumar Sharma [PW-1], who affirmed that the Plaintiff continues to be the
registered proprietor of the Suit Patent. The Plaintiff has also established
that the patent has been commercially worked in India under the trademark
“Dura Trac”, and Form 27 for the year 2012, detailing the quantum and
value of the patented product manufactured in India, has been placed on
record [Exhibit PW1/D1].
29. In the absence of any challenge to the Plaintiff’s title, or evidence to
the contrary, the Court finds no reason to doubt the Plaintiff’s
proprietorship. The statutory presumption in favour of the registered
patentee remains unrebutted.
30. Accordingly, Issue No. (i) is decided in favour of the Plaintiff and
against the Defendant. The Plaintiff is held to be the proprietor of Indian
Patent No. 199722.
Issue No. (ii)- Whether the Plaintiff is the proprietor of the Design for pipe
having a co-extruded cylindrical structure bearing Design Registration
No. 192665? OPP
31. The burden of proof on this issue rests squarely with the Plaintiff,
who asserts title by virtue of statutory registration. In support of their claim
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of proprietorship, the Plaintiff has placed on record the certified copy of the
certificate of registration issued by the Designs Office, evidencing
registration of the design titled “Detectable Pipe” under No. 192665, dated
25th July, 2003, falling under Class 23-01. The registered design pertains to a
pipe having a co-extruded cylindrical structure, with the asserted novelty
residing in the surface pattern of the “Detectable Pipe” created by the tracer
cable extruded along the length of the pipe. The registration certificate
stands duly proved as Exhibit PW-2/2 through the testimony of Dr. Prasanta
Kumar Tripathy [PW-2].
32. The Defendant has not instituted any challenge under Section 19 of
the Designs Act to seek cancellation of the registration on any of the
statutory grounds, nor led any evidence to dispute the Plaintiff’s claim of
proprietorship in respect of the registered design. No material has been
placed on record to suggest that the Plaintiff is not the lawful proprietor of
the design or that the registration is invalid or otherwise defective. Indeed,
there is not even a suggestion in the cross-examination of PW-2 or otherwise
in the Defendant’s pleadings that Plaintiff is not the lawful owner of the said
design. The statutory presumption under the Designs Act in favour of the
registered proprietor, therefore, remains unchallenged.
33. In the absence of any attempt by the Defendant to dispute or dislodge
the Plaintiff’s proprietary claim, and upon examination of the material
placed on record, the Court has no hesitation in holding that the Plaintiff is
the registered proprietor of Design No. 192665.
34. Accordingly, Issue No. (ii) is answered in the affirmative and decided
in favour of the Plaintiff.
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35. Before this Court turns to the question of infringement, it is essential
to first examine the validity of the Suit Patent – a foundational issue that
strikes at the very root of the Plaintiff’s claim. The Defendant, by way of
counter-claim, challenges the patent under Section 64 of the Patents Act.
Since these objections go to the maintainability of the Plaintiff’s action
itself, they are addressed at the threshold. Accordingly, Issue No. 5 framed
in the suit and Issue No. 1 in the counter-claim are taken up together for
consideration.
Issue No. (v)- Whether the Plaintiff played a fraud on the Indian Patent
Office while obtaining grant of patent? OPD
Of counter claim:
Issue No. (i)- Whether for the reasons stated in the counter claim the
patent of the Plaintiff is liable to be revoked? OPCC
36. Where a patent is challenged on the ground of invalidity, the Court is
required to closely scrutinize whether the claimed invention meets the
statutory requirements of patentability. The Defendant seeks revocation of
the Suit Patent under various limbs of Section 64 of the Patents Act,
asserting that the Plaintiff’s invention is unworthy of the exclusive rights
they claim. The counter-claim, read with the written statement, forms the
bedrock of this challenge and is grounded in prior art references said to be in
the public domain before the priority date.
37. The four principal grounds urged for revocation are as follows:
i. That the Suit Patent lacks novelty, having regard to what was publicly
known or used in India before the priority date, and is liable to be revoked
under Section 64(1)(e) of the Patents Act;
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ii. That the invention is obvious to a person skilled in the art 8 and does
not involve an inventive step, rendering the patent vulnerable under Section
64(1)(f) of the Act;
iii. That the complete specification fails to sufficiently and fairly describe
the invention and the manner of its performance, as required under Section
64(1)(h);
iv. That the claims in the specification are not clearly or sufficiently
defined, falling afoul of Section 64(1)(i).
38. In order to establish the afore-noted grounds, the Defendant has cited
20 prior art documents which are tabulated as follows:
Sr. PARTICULARS EXHIBIT NO.
No.
1 US 2003 / 0094297 EX DW 2 / 1
2 US 5,212,349 EX DW 2 / 2
3 NHAI tender document EX DW 2 / 3
4 US 4,797,621 EX DW 2 / 4
5 A quick course on magnetic cable and EX DW 2 / 7
pipe locating;
6 3 M Cable and Pipe Locating Techniques EX DW 2 / 8
7 EP 0159307 EX DW 2 / 9
8 US 5,918, 267 EX DW 2 / 10
9 US 5,151,657 EX DW 2 / 11
10 US 2002 /0134448 EX DW 2 / 12
12 US 6,175,310 EX DW 2 / 14
8
"PSA"
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13 US 5,719,353 EX DW 2 / 15
14 US 3,564,526 EX DW 2 / 16
16 US 5,172,730 EX DW 2 / 18
18 Article titled Automated Electrical EX DW 2 / 20
Impedance measuring system leaks
19 Copy of the Suit Patent 199722 EX PW 2 / 1
20 Copy of the design 192665 EX PW 2 / 1
39. At this juncture, it is must be highlighted that the aforesaid documents
have been objected to by the Plaintiff at the time of tendering of documents
by Mr. J. Wadhwani [DW-2] on the ground that the certified copies of the
said documents have not been produced or filed. A general objection has
also been raised that the certificates under Order XI, Rule 6(3) of CPC and
Section 65B of the Evidence Act have been signed by DW-1 and not DW-2.
40. This Court in Burger King Corporation v. Techchand
Shewakramani & Ors.9 held that publicly available documents ought not to
be permitted to be denied. The relevant observations are set out below:
“31.1. A large number of documents belonging to the parties have been
denied indiscriminately. Documents which are available publicly and are
verifiable such as trademark certificates, copyright certificates from India
and other countries, as also documents issued by governmental authorities
ought not to be permitted to be denied. Such denials are completely bereft
of merit and tend to prolong the trial in a suit. The purpose of
admission/denial is to deny only those documents whose existence,
genuinity or authenticity is disputed and not to merely harass the opposite
side into proving each and every document with certified copies/original.
Especially in commercial matters, the process of admission/denial deserves
to be cut short where the dispute between the parties is very narrow.
Documents such as e-mail correspondences, legal notices, replies,
internet printouts, etc. ought not to be permitted to be denied. The
practice adopted by parties to deny in general all the documents of the
9
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opposite side has been the bane of adjudication of civil suits. It is with this
purpose that the provisions of the Commercial Courts Act as also the
recent amendments by the Delhi High Court in the Original Sides Rules
has been carried out. Admission/denial affidavits ought to be fair, bona fide
and not with an intention to prolong trials. Keeping these provisions in
mind, parties are given another opportunity to file their affidavits of
admission/denial so that triable issues can be easily identified and struck.
Any unjustified denial would be liable to be dealt with as per the provisions
of the Commercial Courts Act and Delhi High Court (Original Side) Rules,
2018.”
[Emphasis Supplied]
41. Accordingly, the Plaintiff’s objections to the admissibility of the
afore-mentioned documents tendered by the Defendant cannot be sustained,
as the documents in question constitute publicly available prior art. Being
public documents within the meaning of Section 74 of the Indian Evidence
Act, such materials do not require the same degree of formal proof as private
documents. Hence, these documents are deemed admissible for the limited
purpose of evaluating the state of the art and assessing the grounds of
objection to the Suit Patent raised by the Defendant.
42. The Court now proceeds to deal with the four grounds seeking
revocation.
Objection under Section 64(1)(e) of the Patents Act
43. Section 64(1)(e) provides that a patent is liable to be revoked if the
invention so far as claimed in any claim of the complete specification is not
new, having regard to what was publicly known or publicly used in India
before the priority date of the claim or what was published in India or
elsewhere in any of the documents mentioned in Section 13. The test is
whether one prior art discloses each element of the patented claim either
explicitly or implicitly.
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44. Novelty is destroyed if a single piece of prior art teaches the entirety
of the claimed invention, leaving nothing for further inventive contribution.
The Defendant’s argument, must therefore, rest on whether any one
document, taken alone, discloses all the elements of Claim 1 of the Suit
Patent.
45. The Defendant places reliance on an array of prior art, but has over
the course of proceedings specifically highlighted only five key documents
as the most pertinent to the ground of challenge relating to the claim of
novelty and anticipation. The Defendant has accordingly limited their
argument to these select pieces of prior art which, in their view, are most
material to rebut the presumption of validity attached to the Suit Patent
under Section 13(4) and Section 64(1) of the Patents Act. Thus, these
documents must be analyzed to assess whether they disclose all three
essential elements of Claim 1:
a) A non-metallic pipe to transport fluids,
b) A co-extruded tracer cable on the outer surface of the pipe,
c) The tracer cable being encased in suitable polymeric material.
Evaluation of Exhibit DW-2/1: US Patent Application No. 2003/0094297
A1
46. The Defendant places considerable reliance on US 2003/0094297 A1
[Exhibit DW-2/1] published on 22nd May, 2003, which predates the priority
date of the Suit Patent by approximately two months. This document is
described as teaching a High-Density Polyethylene10 conduit used in the
telecommunications industry, incorporating a tracer wire housed within a
10
“HDPE”
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specially formed channel in the pipe wall. The Defendant contended that
Exhibit DW-2/1 discloses all essential elements of Claim 1 of the Suit
Patent, including a non-metallic pipe (HDPE), a tracer wire, and a method of
extrusion. It is urged that the channel accommodating the tracer wire is
created via extrusion and that the tracer wire is capable of providing a toning
signal, thus enabling pipe detection and potential leakage diagnostics.
47. However, a closer examination of the claim language and disclosures
in Exhibit DW-2/1 reveals critical differences that preclude a finding of
anticipation: First, Exhibit DW-2/1 does not disclose a tracer cable co-
extruded on the outer surface of the pipe. On the contrary, the tracer wire is
embedded within a recessed groove that is formed in the pipe wall, between
the inner and outer surfaces. Claim 15 of Exhibit DW-2/1 refers to forming a
longitudinal groove in the pipe wall by extrusion and placing a tracer wire
within that groove. This is clearly illustrated in Figures No. 1 and 3 and
confirmed in the textual disclosure.
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48. The Suit Patent, by contrast, requires that the tracer cable be co-
extruded and located on the outer surface, not within the pipe body.
49. Second, Exhibit DW-2/1 does not disclose that the tracer wire is
encased in a suitable polymeric material on the outer surface of the pipe.
Rather, the wire is coincident with the channel in the polymeric tube and is
coated with a composition that prevents the wire from adhering to the
polymer melt used to form the polymer tube. The wire is then capable of
being torn out for connectivity. It also includes a stabilizing rib extending
longitudinally along the interior surface of the wall of the tube, such that the
wire is embedded in the wall of the tube and the stabilizing rib is located
radially inward from the wire. The relevant extracts of Exhibit DW-2/1
referencing the role of the wire, is as follows:
“[0009] The above advantages are achieved through the use of a
toneable conduit that includes an elongate polymeric tube having a
wall with an interior surface, an exterior surface, and a
predetermined wall thickness. A channel extends longitudinally
within the wall of the elongate polymeric tube and a stabilizing rib
extends longitudinally along the interior surface of the wall of the
elongate polymeric tube and is located radially inward from the
channel. A continuous, high elongation wire is coincident with the
channel in the elongate polymeric tube and is coated with a coating
composition that prevents the wire from adhering to the polymer
melt used to form the elongate polymeric tube. Preferably, the wire
has an elongation of greater than about 1% and is preferably a
copper-clad steel wire, copper-clad aluminium wire, copper wire or
tin copper wire. More preferably, the wire is copper-clad steel wire.
The wire also preferably has a diameter from about 0.32 mm to about
2.59 mm. More preferably, the wire has a diameter of 1.02 mm. In
accordance with the invention, the wire is capable of transmitting a
toning signal to allow the conduit to be detected by toning equipment
and is capable of being torn out of the polymeric tube to allow the
conduit to be coupled. The wire is preferably coated with a coating
composition that K formed of a high melting temperature polymeric
material, preferably having a melting temperature of at least aboutSignature Not Verified
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500° R Preferably, the high melting temperature polymeric material is
selected from the group consisting of fluoropolymers, polyamides,
polyesters, polycarbonates, polypropylene, polyurethanes,
polyacetals, polyacrylics, epoxies and silicone polymers and is more
preferably polytetrafluoroethylene. Preferably, the conduit is formed
of polyethylene or polyvinyl chloride and more preferably high-
density polyethylene (HDPE). The conduit also preferably has a
smooth exterior surface and can further include at least one
additional rib extending longitudinally along the interior surface of
the elongate polymeric tube to facilitate the installation of cable
within the conduit.
[0010] The present invention further includes a method of making
toneable conduit, comprising the steps of advancing a high
elongation wire and extruding a polymer melt around the advancing
wire in the form of an elongate polymeric tube having a wall of a
predetermined thickness, an interior surface, an exterior surface,
and a stabilizing rib extending longitudinally along the interior
surface of the wall of the elongate polymeric tube such that the wire
is embedded in the wall of the elongate polymeric tube and the
stabilizing rib is located radially inward from the wire. In
accordance with the invention, the advancing step comprises
advancing a wire coated with a coating composition that prevents the
wire from adhering to the polymer melt used in said extruding step. –
Preferably, the polymer melt extruded into the form of an elongate
polymeric tube through the use of a die and a tip, wherein a groove in
said tip forms the stabilizing rib on the interior surface of the conduit.
In addition, the wire is preferably advanced through a wire guide tube
into the polymer melt. The method of the invention can also include
forming additional ribs extending longitudinally along the interior
surface of the elongate polymeric tube in the extruding step to
facilitate the installation of cable into the conduit. The high
elongation wire that is advanced into the polymer melt preferably has
an elongation of at least about 1%. In particular, the wire is
preferably a copper-clad steel wire, copper-clad aluminium wire,
copper wire or tin copper wire and is more preferably copper-clad
steel wire, and preferably has a diameter of from about 0.32 mm to
about 2.59 mm. The wire is also preferably coated with a coating
composition formed of a polymeric material selected from the group
consisting of fluoropolymers, polyamides, polyesters, polycarbonates,
polypropylene, polyurethanes, polyacetals, polyacrylics, epoxies and
silicone polymers. Preferably, the polymeric material has a melting
temperature of at least about 500° R, and is more preferably
polytetrafluoroethylene. The polymer melt in said extruding step isSignature Not Verified
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preferably formed of a polymeric material selected from the group
consisting of polyethylene and polyvinyl chloride, and is more
preferably high density polyethylene. The polymer melt is preferably
extruded in the form of an elongate polymeric tube having a smooth
exterior surface.”
[Emphasis Supplied]
50. This is opposite to the structural and functional integrity imparted by
external co-extrusion and polymeric encapsulation of the wire, which is
central to the Plaintiff’s claimed invention.
51. Third, the above extract also highlights that the invention under
Exhibit DW-2/1 requires the exterior surface to be preferably smooth. This
teaches away from the Suit Patent as the Plaintiff’s invention devising a co-
extruded tracer cable on the outer surface inherently creates a non-smooth
profile, precisely to facilitate traceability and leak detection in fluid transport
applications. This divergence in design philosophy underscores the technical
departure achieved by the Suit Patent.
52. Lastly, the invention under Exhibit DW-2/1 also states that the
exterior rib including a conductive tracer wire is not suitable and has various
drawbacks as is evident from paragraph No. 4 of the said document which is
reproduced below:
“[0004] One conventional conduit construction that can be detected
by conventional metal detection devices and even the toning devices
discussed above includes an exterior rib that houses the metallic
ribbon or wire. For example, Japanese published application JP 5-
106765 describes an embodiment that includes an exterior rib
including a conductive wire. Although these types of constructions
have found use, it is difficult to couple this conduit with another
conduit because the exterior rib prevents the connector from fitting
flush onto the conduit. As a result, moisture can enter the conduit at
the connection and can cause damage to the cable installed therein. In
addition, the exterior rib can cause problems during installation in
that the exterior rib and associated wire can be ripped off of theSignature Not Verified
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conduit if the conduit is being installed by directional boring or
plowing methods.”
53. Thus, a person skilled in the art would have no motivation from the
said exhibit to co-extrude a tracer, wired on the outer surface of the pipe.
54. Accordingly, Exhibit DW-2/1 does not anticipate Claim 1 of the Suit
Patent as it fails to disclose the complete combination of essential elements,
particularly the outer surface co-extrusion and polymeric encapsulation of
the tracer wire. It neither teaches nor enables the invention as claimed, nor
does it render the Suit Patent’s novelty vulnerable under Section 64(1)(e).
Evaluation of Exhibit DW-2/2: US Patent No. 5,212,349
55. The second document relied upon by the Defendant to challenge
novelty is US Patent No. 5,212,349 published on 18 th May, 1993 [Exhibit
DW-2/2]. According to the Defendant, this document discloses a cable duct
made of synthetic plastic material featuring a groove on its outer surface,
within which a tracer wire is positioned and subsequently sealed using a
polymeric filler. It is submitted that this configuration renders the Suit
Patent anticipated, as it ostensibly discloses a non-metallic pipe with a tracer
cable externally affixed and enclosed in polymer material. The said
invention is depicted as follows:
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56. At first glance, Exhibit DW-2/2 does present a structure that
superficially resembles aspects of the Suit Patent. It describes a cable duct
made of synthetic plastic material which can be laid on the ground with at
least one detector wire along a neutral bending line in the wall of the duct,
and a receiving groove in the duct wall for the said detector wire. A separate
filler material is welded to the duct wall embedding the wire in the duct such
that the wire is enclosed on all sides, ostensibly to protect and retain the
tracer wire during installation and operation. The receiving groove extends
to an outer surface of the duct and the wire is disposed in the receiving
groove. However, the structural similarity ends there. The key distinction
lies in the method of attachment and integration. Exhibit DW-2/2 employs a
post-manufacture insertion and sealing process wherein the groove is first
formed, the wire is inserted manually or mechanically, and then the filler
material is applied over it. This is neither a simultaneous nor integral co-
extrusion process. The tracer cable is not co-extruded along with the pipe in
a single step but is instead inserted into a pre-formed cavity and sealed
thereafter. This two-step process lacks the manufacturing efficiency,
material uniformity, and structural integration that the Suit Patent claims as
part of its advancement.
57. Additionally, while Exhibit DW-2/2 may enable traceability of the
duct, it materially differs from the Suit Patent. The invention disclosed in the
Suit Patent is designed to provide dual functionality – traceability and
leakage detection – a feature that is neither disclosed nor even suggested in
Exhibit DW-2/2. This invention focuses solely on the traceability aspect and
does not contemplate the use of the tracer cable for detecting leaks, which
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forms a critical and inventive feature of the Plaintiff’s patented pipe
assembly.
58. Further, while Exhibit DW-2/2 does involve the encapsulation of the
tracer wire in polymeric material, this encapsulation is achieved via a
separate sealing step – not through co-extrusion, which is a central feature of
Claim 1 of the Suit Patent. Co-extrusion, as understood in the context of the
Suit Patent, entails simultaneous formation of the pipe and the tracer cable
sheath in one continuous process, resulting in a mechanically and chemically
integrated structure. The absence of this characteristic in Exhibit DW-2/2
means it does not satisfy the specific structural configuration claimed in the
Suit Patent. The Defendant argued that co-extrusion is a known technique
and that substituting the post-sealing step in Exhibit DW-2/2 with co-
extrusion would yield the Suit Patent and motivate a PSA to place the tracer
cable on the outer surface of the pipe. This, however, does not support an
anticipation argument under Section 64(1)(e); at best, it veers into the
territory of obviousness under Section 64(1)(f), which shall be dealt with
separately. Anticipation requires a clear and unambiguous disclosure of
every element of the claimed invention, either expressly or inherently;
Exhibit DW-2/2 does not meet this threshold.
59. Moreover, the duct in Exhibit DW-2/2 is a duct which does not relate
to transport of fluids. This is, in fact, admitted by Defendant’s own witness
[DW-2] in his cross-examination dated 2nd August, 2019, which is produced
as follows:
“Q69. What is the industrial applicability pf the cable duct referred to in Ex.DW-
2/2?
Ans. The duct referred to in Ex.DW-2/2 can be used for many industrial
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applications including cable ducting, fiber optical cable ducting, cold air ducting,
air ducting, water ducting etc.Q70. Are cable ducts carrying fluids prone to leakages?
Ans. Ducts may leak under certain circumstances, like when the applied forces or
pressure or stresses are more than its designed limit.
Q71. If the pipe / duct is thin at some places and thicker at others, is the
possibility of leakage more due to its design?
Ans. Possibility of leakage depends on its final application and applied forces. If
the applied forces exceed the strength of the thin section of the pipe, it is likely to
fail.”
60. As evident from the above extract, when DW-2 was specifically
confronted with the industrial applicability of the cable duct in Exhibit DW-
2/2, he admitted that the said duct, while can be used for water ducting, can
leak in certain circumstances.
61. Accordingly, Exhibit DW-2/2 does not disclose the claimed invention
in its entirety. It lacks the co-extruded configuration, is unable to carry
liquids effectively and its post-manufacture groove-sealing approach renders
it materially and functionally distinct. The novelty of the Suit Patent,
therefore, remains unaffected by Exhibit DW-2/2.
Evaluation of Exhibit DW-2/3: NHAI Tender Document
62. The Defendant next relies on the National Highways Authority of
India Tender Document dated 15th July, 2002 [Exhibit DW-2/3], to contend
that the Suit Patent was anticipated by a publicly available specification.
This document, according to the Defendant, explicitly sets out a technical
requirement for HDPE telecom ducts with a co-extruded copper tracer wire,
which could be detected electronically for the purpose of optical fibre. It is
argued that such a specification demonstrates that the use of co-extruded
tracer cables on non-metallic pipes was part of the state of the art prior to the
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Plaintiff’s priority date.
63. The Defendant submits that the NHAI tender describes a pipe with a
copper wire laid along its length through the process of co-extrusion, for the
express purpose of enabling detection. The tender document requires bidders
to supply HDPE ducts integrated with tracer wires and lays down
performance parameters for electronic detectability. In the Defendant’s
submission, this amounts to a public disclosure of the essential elements of
Claim 1 of the Suit Patent.
64. The question, however, is whether a tender specification of this nature
constitutes an anticipatory prior art under Section 64(1)(e) of the Patents
Act. The answer must be approached with caution. A tender document,
while undoubtedly public in nature, is a requirement specification, not a
technical teaching. It sets out what the procuring authority desires, not how
such a product is to be implemented. It is not prior art in the classical sense
of an enabling disclosure that a PSA can use to recreate the invention
without undue burden. Moreover, the NHAI document does not describe
how the tracer cable is co-extruded on the pipe. It does not explain whether
the wire is laid on the outer surface or embedded within; whether it is
simultaneously extruded or manually inserted; or whether it is encased in
polymeric material. These are not minor omissions. The absence of detail
regarding the structural configuration and the manufacturing process,
particularly co-extrusion, means that the NHAI tender cannot be said to
disclose the invention in its entirety.
65. Indeed, the Plaintiff points out that the difference between a document
stipulating technical specifications and a “teaching document”. While the
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former sets a performance target, the latter provides the enabling details
necessary to meet that target. The Suit Patent, in contrast to the NHAI
tender, provides a specific structural solution – co-extruding a tracer cable
along the outer surface of a non-metallic pipe, encasing it in polymer
material, and enabling both traceability and leakage detection.
66. Furthermore, Courts have cautioned against equating commercial or
regulatory specifications with prior art unless such documents clearly and
unambiguously disclose the invention. As held in Bishwanath Prasad
Radhey Shyam v. Hindustan Metal Industries,11 a document must enable
the PSA to perform the invention without further inventive ingenuity. The
NHAI tender, while arguably suggestive, falls short of the benchmark.
67. In view of the foregoing, Exhibit DW-2/3 does not constitute an
anticipatory disclosure under Section 64(1)(e). It lacks the necessary
specificity, structural teaching, and enabling detail to defeat the novelty of
the Suit Patent.
Evaluation of Exhibit DW-2/4: US Patent No. 4,797,621
68. The Defendant’s reliance on US Patent No. 4,797,621 [Exhibit DW-
2/4], published on 10th January, 1989, is aimed at challenging not only the
novelty of Claim 9, a method claim, but also the overall originality of the
Suit Patent. It is contended that the Suit Patent’s process of leak detection is
a near replica of the method disclosed in Exhibit DW-2/4, and that several
portions of the suit specification appear to have been lifted verbatim from
this document. It must be noted that the Plaintiff, during the course of
arguments, gave up their claim of infringement in respect of Claim 9.
11
(1979) 2 SCC 511
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Nonetheless, since the Defendant has raised an objection to its novelty, the
Court is still required to examine the same in the context of validity
assessment.
69. Exhibit DW-2/4 indeed sets out a detailed method for leak detection
using electrical impedance properties of a conductive wire. It describes how
a pulse generator is used to transmit signals through a sensing cable installed
along the pipeline, how reflected waveforms are analyzed by an
oscilloscope, and how deviations from a defined threshold may be used to
detect leaks. A visual representation of the invention claimed in Exhibit
DW-2/4 is as follows:
70. The aforesaid features are, in substantial part, mirrored in Claim 9 of
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the Suit Patent. However, Exhibit DW-2/4 is not a complete structural or
functional match. The system disclosed therein does not disclose any
metallic pipe or emphasize on the process of co-extrusion for laying the
electrical cable in a pre-determined area. The said invention uses fluid-
permeable cables with dielectric materials like glass fibres and plastic fibres.
There is no teaching of co-extrusion being integrated with the pipe. This is
opposed to the Claim 1 of the Suit Patent requiring emphasizing on co-
extrusion of a copper wire, and not dielectric materials, during pipe
manufacturing.
71. The Defendant argued that although the structural design is not
identical, the leak detection process in Claim 9 is a “carbon copy” of that in
Exhibit DW-2/4. The Court, however, must examine whether this similarity
in method amounts to anticipation. For a prior art to anticipate a method
claim, it must disclose each and every step of the claimed method, either
explicitly or inherently, and in the same sequence. Exhibit DW-2/4 discloses
the following components:
a) A sensing cable along the pipe;
b) Pulse generation and transmission;
c) Signal reflection and reception;
d) Oscilloscope-based signal analysis;
e) Leak identification based on waveform deviations.
72. However, crucially, the claimed method in Claim 9 is integrally tied
to the pipe of Claim 1 i.e., a non-metallic pipe with a co-extruded tracer
cable on its outer surface. It is not merely a generic method of signal
analysis, but a specific application of that method to a particular pipe
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configuration. The Plaintiff is not claiming invention of signal reflection or
oscilloscope analysis; rather, they are claiming a method of leak detection
that functions in combination with its claimed structural configuration. The
Court also notes that the Defendant’s witness, DW-2, admitted during cross-
examination dated 21st August, 2019 while answering Question No. 102 that
while Exhibit DW-2/4 discusses leak detector and locator of fluids through
pipes below the ground, it does not talk about the co-extruded tracer cable.
This reinforces the point that Exhibit DW-2/4 does not anticipate the
complete method claim as defined in Claim 9, since the method is
inextricably linked to the invention described in Claim 1.
73. In conclusion, Exhibit DW-2/4 discloses elements akin to the
functional methodology of Claim 9, but not the invention as a whole. Owing
to significant differences in the structural features and detection method
between the cited patent and the Suit Patent, Exhibit DW-2/4 cannot be said
to anticipate the Suit Patent within the meaning of Section 64(1)(e).
Evaluation of Exhibit DW-2/10: US Patent No. 5,918,267
74. The Defendant has also relied on US Patent No. 5,918,267 [Exhibit
DW-2/10], published on 29th June, 1999, asserting that it discloses the use of
a tracer wire on the external surface of any type of pipe, thus, forming the
basis of the Defendant’s contention that the concept of a tracer wire
embedded on the pipe’s exterior was already known prior to the priority date
of the Suit Patent. The invention claimed under Exhibit DW-2/10 is
reproduced as follows:
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75. Upon careful examination, it is evident that the prior art led by the
Defendant does not comprise all the essential features of the Suit Patent. The
prior art discloses a buried pipe system designed for transporting fluids other
than water such as hydrocarbons, wherein leakage detection is facilitated
through a fluid-wicking fabric member placed in direct contact with the
surrounding soil. This fabric lies beneath or wraps around the pipe and
includes a fluid sensor which contacts the fluid-wicking member. The sensor
cable detects the presence of fluid but remains externally mounted and, if
necessary, replaceable via a rigid cover structure.
76. In stark contrast, the Suit Patent envisages a non-metallic pipe,
wherein a tracer cable is co-extruded and integrally embedded within the
pipe’s wall during the manufacturing process itself. This structural
integration enables not merely the detection of a leakage event, but also the
precise location of the leak, employing techniques such as pulse reflection
sampling. The co-extruded design offers several advantages: it eliminates
the need for external sensor assemblies, ensures continuous monitoring
without disruption, enhances the mechanical protection of the detection
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system, and prevents tampering or accidental displacement of the tracer
element.
77. Co-extrusion, as understood in the field, implies a single
manufacturing step that combines the pipe and tracer wire, resulting in
structural integrity, uniformity, and possibly enhanced performance. The
Plaintiff’s emphasis is that in the Suit Patent, the tracer wire is co-extruded
to form an integral part of the pipe itself, unlike the post-fabrication
affixation method disclosed in Exhibit DW-2/10. This distinction is not
merely semantic or superficial; it materially affects the method of
manufacture, the mechanical strength of the product, its ease of installation,
and potentially even its operational longevity. Significantly, Exhibit DW-
2/10 is silent on the use of any co-extrusion technique and does not
contemplate the integration of the tracer cable with the pipe in a single,
continuous manufacturing process.
78. Moreover, while the prior art relies on a fluid-wicking fabric as an
intermediary medium to channel leaked fluid towards an external sensor, the
Suit Patent achieves detection and localization directly through the
embedded tracer cable, without dependence on soil contact or intermediary
wicking action. Thus, the underlying detection mechanisms, structural
configurations, and the technical effects achieved are fundamentally distinct.
79. For these reasons, Exhibit DW-2/10 does not invalidate the novelty of
the Suit Patent. The invention’s novelty lies not in the mere placement of a
tracer wire on an HDPE pipe, but in doing so by co-extrusion as part of an
integrated pipe assembly enabling traceability and leakage detection.
80. Thus, upon a comprehensive evaluation of the prior art references
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relied upon by the Defendant, the distinguishing features of the Suit Patent,
as compared to each cited document, are summarized in the table below for
ease of reference and clarity:
Elements of Claim 1 of the Suit Patent
Suit US US NHAI US US 5,918,267
Patent 2003/0094297 5,212,349 Tender 4,797,621 [Exhibit
[Exhibit DW- [Exhibit Document [Exhibit DW-2/10]
2/1] DW-2/2] [Exhibit DW-2/4]
DW-2/3]
(i) Non- Partially: Partially: Partially: No: No: Pipe
metallic HDPE pipes HDPE HDPE Focus is required is a
pipe to for conduiting pipes, not ducts for on leak metal pipe
transport anything specifically telecom, detection and focus is
fluids for fluid not fluid in on fluids
transport transport general; other than
no water like
reference hydrocarbons
to HDPE
pipes for
fluid
transport
(ii) Co- Partially: No: Tracer Yes: No: No: Fluid-
extruded Mentions wire Mentions Describes wicking
tracer extrusion in placed in a co- cable on member lies
cable Claim 15, but groove and extruded pipe but beneath the
wire is the said copper not co- pipe
embedded in groove tracer wire extruded
the wall; extends to
teaches an outer
against surface.
surface The wire is
mounting filled with
softened
material
and not co-
extruded
(iii) No: Wire No: Wire No: Outer Unclear: No: Fluid-
Tracer embedded embedded surface not Describes wicking
cable inside in a described, "detecting member lies
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located channel receiving only co- cable" externally,
on outer between groove extrusion possibly underneath
surface surfaces; which is with in contact or around the
of pipe specifically inside wall HDPE with fluid pipe and is in
avoids but extends pipe -- not contact with
external cable to an outer outer soil
surface of surface
the duct
and the
wire is
disposed in
the
receiving
groove
(iv) No: Placed in Yes: Filler Yes Unclear: Unclear:
Tracer channel and material (Implied):Refers to May be
cable is coated with wraps over If co- insulation attached, but
encased a non- embedded extruded and encasing not
in adhering tracer wire with detection specified
suitable polymer to HDPE, cable, but
polymer allow it to be wire wouldnot
torn out later; be encasedexplicitly
teaches away in same a
from external material polymeric
extrusion encasing
Overall Low: Teaches Low: Moderate: Remote: Low: Uses
similarity away from Similar Only Detection fluid-wicking
to Claim surface- installation document method method; co-
1 extruded method, pre-dating overlaps extrusion and
cable; focuses but priority with use unclear
on interior structure, date Claim 9,
channel purpose, mentioning not
and co- structural
placement extruded features
differ wire, but of Claim 1
purpose is
telecom,
not fluid
transport
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Conclusion
81. In order to attract revocation on the ground of lack of novelty under
Section 64(1)(e) of the Patents Act, the Defendant must demonstrate that
each and every element of the invention as claimed in the Suit Patent was
disclosed in a single prior art document that was publicly available prior to
the priority date of the Suit Patent. It is well settled that obviousness must be
by a clear and unambiguous disclosure, and that mosaic reconstruction from
multiple documents cannot undermine novelty, as held by this Court in
Glaverbel SA v. Dave Rose and Ors.12
82. None of the cited prior art documents, individually, disclose all these
features in combination. At best, certain features are found scattered across
multiple references, which may be relevant for inventive step, which is
addressed under Issue No. 2, but does not suffice for anticipation under
Section 64(1)(e). This Court in Ericson v. Lava,13 while analysing the
decision in General Tires & Rubber Co. v. Firestone Tyre & Rubber Co.
Ltd,14 on the issue of novelty, observed that even if not all details are present
in the earlier document cited as novelty destroying prior art, it is possible
that the prior art document and the patent in question essentially convey the
same message but in different terms. The key question to resolve in such
instances is whether the prior art document provides clear and unmistakable
instructions that, if followed, would inevitably lead to a result that falls
within the scope of the patent’s claims or inventive concept. That threshold
12
2010 SCC OnLine Del 308
13
2024: DHC: 2698
14
RPC 486 89.17.457
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is not met here. In view of the above discussion, the Defendant has failed to
discharge the burden of proving that Claim 1 of the Suit Patent was
anticipated in its entirety by any single prior art reference. The argument of
lack of novelty under Section 64(1)(e) is, therefore, rejected.
Objection under Section 64(1)(f) of the Patents Act
83. The concept of an inventive step ensures that a patent is awarded only
for inventions that represent a genuine technical advancement over existing
knowledge, and not for trivial or obvious modifications. An inventive step
exists when the invention is not obvious to a PSA, having regard to the state
of the prior art at the relevant time. Section 2(1)(ja) of the Act defines
“inventive step” as “a feature of an invention that involves technical
advance as compared to the existing knowledge or having economic
significance or both and that makes the invention not obvious to a person
skilled in the art.” Thus, the invention that creates the product must have a
feature that involves technical advance as compared to the existing
knowledge or having economic significance or both, and this feature should
be such as to make the invention not obvious to a PSA. In Biswanath
Prasad Radhey Shyam, it was observed that an invention must be
something more than a mere workshop improvement or routine adaptation.
84. This statutory requirement is further enforced through revocation
proceedings under the Patents Act. Section 64(1)(f) provides that a patent is
liable to be revoked if the claimed invention is obvious or does not involve
an inventive step, having regard to what was publicly known or publicly
used in India before the priority date. The term “obvious” must be
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interpreted in its plain and ordinary sense; hence, something that is obvious
cannot involve complexity.
85. The assessment of inventive step entails a structured, multi-stage
analysis that traces its origin to the four-step framework articulated in
Windsurfing International Inc. v. Tabur Marine Limited,15 and refined in
Pozzoli Spa v. BDMO SA16 through the identification of the PSA. This
approach was further tailored by the Division Bench of this Court in F.
Hoffmann-La Roche Ltd. v. Cipla Ltd.,17 which distilled a five-step test for
evaluating inventive step, drawing from the Windsurfing/Pozzoli
framework.
The Five-Step Test: F. Hoffmann-La Roche Ltd. v. Cipla Ltd.
86. The five-step test, applied across patent cases post-2015, remains a
touchstone to determine obviousness:
“Step No. 1: To identify an ordinary person skilled in the art,
Step No. 2: To identify the inventive concept embodied in the patent,
Step No. 3: To impute to a normal skilled but unimaginative ordinary
person skilled in the art what was common general knowledge in the art at
the priority date,
Step No. 4: To identify the differences, if any, between the matter cited and
the alleged invention and ascertain whether the differences are ordinary
application of law or involve various different steps requiring multiple,
theoretical and practical applications,15
[1985] RPC 59.
16
[2006] EWHC 1398 (Ch)
17
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Step No. 5: To decide whether those differences, viewed in the knowledge
of alleged invention, constituted steps which would have been obvious to
the ordinary person skilled in the art and rule out a hindside approach”
87. This Court must step into the shoes of a skilled artisan and not the
inventor, and then evaluate whether the invention emerges from a routine
progression or a creative leap. Let us now apply this framework to the Suit
Patent to assess the presence of an inventive step.
Step 1: Identify the PSA
88. The notional PSA in the present case is a mechanical or polymer
engineer working in the field of non-metallic piping systems, familiar with
extrusion processes, pipe installation constraints, and leakage detection
mechanisms as they existed on the priority date, i.e., 25 th July, 2003. Such a
person would be presumed to possess knowledge of co-extrusion
technology, HDPE material characteristics, leak detection techniques, and
tracer wire integration. However, this person is not a visionary. They apply
known techniques to solve practical problems using predictable tools.
Step 2: Identify the inventive concept embodied in the patent
89. The inventive concept underlying Claim 1 of the Suit Patent lies in a
non-metallic pipe assembly (typically HDPE), designed to transport fluids,
wherein a tracer cable is co-extruded onto the outer surface of the pipe and
encased in a suitable polymeric material. This configuration enables
traceability and leakage detection through electrical pulses, while purporting
to preserve structural integrity and ease of installation. The asserted
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advantage is dual: (i) ease of installation and (ii) improved traceability and
leak detection without compromising structural integrity.
90. Claim 9, being a method claim, rests entirely on Claim 1 and the
usage of this pipe in a detection process involving a signal and pulse
generator, followed by reflection analysis.
Step 3: Attributing common general knowledge to the person skilled in the
art as on the priority date
91. Common general knowledge implies information which, on the date
of the patent in question, is common knowledge in the art or science to
which the alleged invention relates, so as to be known to duly qualified
persons engaged in that art or science.18 In the present case, the PSA, as
identified above, may have been aware of (a) the use of tracer wires for
detecting pipelines; (b) co-extrusion as a method for manufacturing layered
polymer pipes; and (c) the general challenges in maintaining traceability and
fluid integrity in buried plastic pipelines. However, there is no credible
evidence led by the Defendant to suggest that it was common general
knowledge to integrate a tracer wire as a co-extruded structural feature on
the outer surface of the pipe and encased in polymer material to serve both
mechanical and locational functions.
92. Thus, when the invention as encapsulated in the Suit Patent is viewed
through the lens of the PSA, limited to the common general knowledge at
18
British Thomson- Houston Co. Ltd. v. Stonebridge Electrical Co. Ltd., (1916) 33 R.P.C. 166
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the relevant time and devoid of inventive faculties, it cannot be said to have
been obvious to try or to arrive at without an inventive leap.
Step 4: Identify the differences between the prior art and the claimed
invention
93. The Defendant relies on five key prior art documents to contend that
each element of Claim 1, either individually or in combination, was already
in public domain prior to the priority date which have been detailed while
discussing the issue of novelty.
94. Collectively, the prior art reveals multiple configurations: tracer wires
placed at a distance from the pipe, embedded within a recessed groove, or
inserted post-installation. However, none of these documents disclose or
suggest the specific combination of a co-extruded tracer cable placed on the
exterior surface of a non-metallic pipe used for fluid transport and encased
in polymeric material as claimed.
Step 5: Assess whether the differences constitute an obvious step to the
PSA and to rule out hindsight approach
95. It is settled law that mosaicing of prior art is permissible when
assessing an inventive step, provided the documents are sufficiently
connected to motivate a PSA toward the claimed invention without recourse
to hindsight. As held in KSR International v. Teleflex Inc.,19 a combination
of familiar elements according to known methods is likely to be obvious
when it merely yields predictable results. Yet, this principle is circumscribed
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by the requirement that the combination must be directly suggested or
motivated by the prior art, or be a matter of design necessity or market
pressure with finite solutions.
96. In the present case, while co-extrusion as a process was known, there
is no suggestion in the cited documents that a PSA would apply this process
to mount a tracer cable on the external surface of a pipe meant to carry
fluids. Indeed, US 2003/0094297 [Exhibit DW-2/1] actively discourages the
use of external ribs, which a co-extruded tracer cable would resemble, due to
their interference with coupling and jointing. This weighs strongly against a
finding of obviousness.
97. The Defendant’s attempt to rely on the NHAI tender document
[Exhibit DW-2/3] as disclosing co-extrusion is undermined by the absence
of any enabling disclosure. It is a commercial specification, not a technical
document. Moreover, its relevance is limited to telecom ducts, not fluid-
carrying applications where pressure, sealing, and durability become
materially different considerations. The Defendant has not demonstrated
how or why a PSA would extrapolate this document to solve the known
challenges in fluid transport systems.
98. Further, the method disclosed in US 5,212,349 [Exhibit DW-2/2],
including placing the tracer wire in a groove and sealing it post-
manufacture, results in a multi-step process that is operationally different
from co-extrusion, which yields a monolithic structure during pipe
formation. As the Plaintiff correctly argued, the structural integrity, cost-
19
550 U.S. 398 (2007)
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effectiveness, and installation convenience afforded by co-extrusion are
absent in the groove-and-seal method. Even if co-extrusion was known, its
adaptation to this specific problem-solution matrix is neither obvious nor
suggested.
99. The assertion that the Plaintiff failed to include empirical data on
technical advantage in the specification does not, ipso facto, negate
inventive step. The statutory definition of Section 2(1)(ja) of the Patents Act
permits either technical advance or economic significance. The specification
highlights simplification of installation, prevention of cable damage, and the
avoidance of pipe-wall compromise. These are commercial and operational
advantages that support inventive merit, even if not reduced to numerical
data.
Obviousness Hindsight Bias
100. Obviousness is not a license to dissect an invention into known parts
and reassemble them retrospectively. The prohibition against hindsight bias,
repeatedly emphasised in judicial decisions, guards precisely against such
mechanical analysis. In evaluating whether the Suit Patent is obvious, this
Court must remain vigilant against the use of hindsight bias, a cognitive trap
that distorts legal analysis by judging the state of prior art with knowledge of
the invention already in hand.
101. Hindsight bias refers to the tendency to view past events as having
been more predictable than they actually were. In the context of patent law,
it manifests when the claimed invention is dissected into known
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components, and then those components are re-combined with the benefit of
knowing the invention’s outcome, thereby undermining the statutory
requirement of a true inventive step. Thus, the test for inventive step must
not be applied in a retrospective manner.
102. In the present case, the Defendant’s approach, while tenacious,
ultimately reflects an ex-post reconstruction rather than a credible roadmap
that a PSA would have followed on the priority date. The Defendant’s
approach leans dangerously close to reconstructing the invention with full
awareness of the claims in the Suit Patent. The reliance on disparate
documents, none of which individually suggest or motivate the claimed
configuration of a co-extruded tracer cable on the outer surface of a fluid-
carrying pipe, seeks to piece together a mosaic that only takes shape with the
end result in view. Such retrospective rationalisation fails the legal threshold
for obviousness.
103. To avoid hindsight, the correct inquiry is not whether the invention
can be deconstructed into known parts, but whether a person skilled in the
art, without knowledge of the invention, would have had any reason,
motivation, or expectation of success in combining the teachings of the cited
prior art documents in the claimed manner. On this test, the Defendant’s
challenge falls short. None of the prior art references provide any teaching
or suggestion that a co-extruded tracer cable on the outer surface of a non-
metallic pipe for fluid transport, encased in polymer, would address known
problems of traceability and leakage detection. Nor do they offer insight into
the structural and functional benefits that such a configuration would
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deliver. In fact, as noted earlier, some prior arts such as Exhibit DW2/1
actively discourage surface-mounted elements due to coupling
complications, suggesting a technological trajectory contrary to what the
Plaintiff’s invention adopted.
Conclusion
104. Applying the five-step framework, it becomes clear that the claimed
invention was not a predictable or routine adaptation. The prior art neither
individually nor in combination offers any direct or implicit motivation to
place a tracer wire via co-extrusion on the outer surface of a fluid-
transporting non-metallic pipe. There is no teaching, suggestion, or design
compulsion that bridges this conceptual gap. The Suit Patent identifies the
limitations in existing solutions – e.g., tape-on cables detaching, in-wall
cables compromising strength – and proposes a streamlined alternative
through surface co-extrusion.
105. The cumulative difference between the claims in Suit Patent and the
disclosure made in the five cited documents, is that none of the prior arts:
(a) explicitly disclose co-extrusion of a tracer wire on the outer surface of
a non-metallic, fluid-transporting pipe; or
(b) contemplate such an arrangement encased in polymer, facilitating leak
detection and traceability, as in Claim 1.
106. Even if co-extrusion is known in the field, its combination with outer-
surface placement on fluid pipes, integrated with detection and signal
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capabilities, is not found in any single document. The Defendant urged that
the PSA, faced with multiple techniques (welding, embedding, strapping, or
extrusion) would inevitably land on co-extrusion, making the Suit Patent an
ordinary workshop variation.
107. However, this logic fails for several reasons:
(i) No prior art suggests co-extrusion on outer surface of fluid pipe.
Exhibit DW-2/2 and Exhibit DW-2/10 speak of grooves or adhesives.
Exhibit DW-2/1 embeds the wire inside the wall. Exhibit DW-2/4 involves a
multi-pipe shell construction, not a single-layer pipe with an external tracer.
Exhibit DW-2/3, the NHAI tender, is ambiguous and possibly even
inadmissible as a document exhibiting “common general knowledge.” Even
if considered, it does not clearly disclose co-extruded outer surface wiring
for fluid pipes.
(ii) Mosaicing requires an articulation of why a PSA would combine
documents–not merely that they can. In Guangdong OPPO Mobile
Telecommunications Corp. Ltd. v. The Controller of Patents and
Designs,20 the High Court of Calcutta observed that there has to be a
common thread that would link the prior art documents with each other for
the invention to be obvious. There must be a reasoned motivation to pursue
that route, absent hindsight. The Defendant has not demonstrated how the
prior art documents directed the PSA to this particular solution, or how co-
extrusion was known to resolve the limitations of welding/adhesion in fluid
transport pipes.
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(iii) Obvious to Try ≠ Obvious. The assertion that it was “obvious to try”
co-extrusion fails under the principles laid down in Novartis AG v. Generics
(UK) Ltd (t/a Mylan)21 which held that mere substitution of techniques is
not enough; there must be a reasonable expectation of success. Here, the
structural benefits of co-extrusion were neither known nor taught in prior art
as relevant to traceability, encasement, and fluid integrity.
(iv) There is no data or teaching about technical advantage in the cited
prior art. Unlike solutions suggested by the prior art where placement
compromised pipe strength (e.g., grooves), the claimed invention avoids that
entirely through outer co-extrusion. That configuration is not disclosed or
even hinted at in the documents relied upon.
108. As previously emphasized, the Suit Patent, though based on known
concepts like tracer wires and co-extrusion, presents a specific and unique
integration of features that:
(i) eliminate previously known drawbacks (pipe wall compromise,
detachment);
(ii) enhance ease of installation and leak location; and
(iii) do so without impairing fluid transport capacity.
109. That is not a mere “workshop improvement,” as the Defendant
suggests, but a product of inventive ingenuity. Even the Defendant’s own
20
2023 SCC OnLine Cal 6650
21
[2012] EWCA Civ 1623
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witness did not establish how or why the precise arrangement of features
would have been obvious.
110. In light of the foregoing, the Defendant has failed to establish that the
Suit Patent lacks an inventive step under Section 64(1)(f) of the Patents Act.
Objection under Section 64(1)(h) and (i) of the Patents Act
111. Under Section 64(1)(h), a patent may be revoked if the complete
specification does not sufficiently and fairly describe the invention and the
method by which it is to be performed, in a manner that enables a PSA to
work the invention. Section 64(1)(i) is a distinct ground for revocation but
addresses related concerned under Section 64(1)(h). It provides that a patent
may be revoked if the scope of any claim is not sufficiently and clearly
defined or if any claim of the complete specification is not fairly based on
the matter disclosed in the specification.
112. The Defendant’s central argument is that the complete specification of
the Suit Patent fails to explain the process of co-extrusion with sufficient
detail. It is contended that co-extrusion forms the alleged inventive feature
of the patent, and yet the specification offers no elaboration on how co-
extrusion is to be executed, or what material benefit it delivers over prior
techniques such as welding, sticking, or embedding.
113. It is further submitted that the Plaintiff has not disclosed any data or
description in the specification to establish structural integrity or cost-
efficiency arising from co-extrusion. Specifically, the Defendant argued that
the complete specification fails to describe:
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(a) The relationship between leakage and change in characteristic
impedance of the tracer wire.
(b) How the system would function across a wide variety of fluids with
differing chemical properties, including gas.
(c) The effect of environmental conditions (e.g., temperature extremes)
on the impedance and the reliability of detection.
(d) Practical deployment scenarios, such as leaks occurring away from
the tracer wire or the optimal number of wires needed for full coverage.
The Defendant argues that such omission renders the patent insufficient
under Section 64(1)(h) along with the complete specification not being
sufficiently and clearly defined and consequently, rendering it eligible for
revocation under Section 64(1)(i).
Evaluation of the complete specification
114. To sustain a patent under this limb, the law does not demand an
exhaustive treatise on every manufacturing detail. What is required is a
disclosure enabling a PSA, endowed with common general knowledge in the
field, to replicate the invention without undue burden.
115. The Suit Patent, in its complete specification, clearly identifies:
(i) The pipe assembly comprises a non-metallic pipe for fluid transport;
(ii) A co-extruded tracer cable is placed on the outer surface of the pipe;
(iii) The tracer cable is encased in a polymeric material;
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(iv) The cable is used for both locating the pipe and detecting leakages;
(v) The use of signal and pulse generators is described for enabling these
functions.
116. These disclosures are accompanied by diagrams and claim definitions
that capture the essential configuration and its application. The method
claims also describe steps for energizing the cable and analysing signal
reflections to determine pipe location and leakage.
Assessment of “sufficiency” in the context
117. The requirement of sufficiency is satisfied when the disclosure made
in the claims of the patent is sufficient to enable the whole width of the
claimed invention to be performed. In Mr. Aloys Wobben v. Vestas-Celtic
Wind Technology Limited,22 it was observed that the specification must
enable the invention to be performed by a skilled person without an undue
burden of experimentation and search for the right conditions. This principle
has been consistently followed in Indian jurisprudence. In Farbwerke
Hoechst v. Unichem Laboratories,23 the High Court of Bombay observed
that insufficiency of description has two branches: (1) the complete
specification must describe an embodiment of the invention claimed in each
of the claims and the description must be sufficient to enable those in the
industry concerned to carry it into effect without their making further
inventions; and (2) the description must be fair, i.e., it must not be
unnecessarily difficult to follow.
22
[2007] EWHC 2636 (Pat)
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118. The test of sufficiency must also be applied having regard to the
extent of the claim. In the present case, co-extrusion is not claimed as a
novel process. The Plaintiff never purports to have invented co-extrusion. It
is a known technique in mechanical and polymer engineering. The function
of the specification is to teach the configuration of the pipe assembly–not
to re-teach industrial extrusion technology already known in the art.
119. Similarly, the concept of using characteristic impedance changes to
monitor line integrity is well known in the field of electrical diagnostics and
does not require re-teaching. As the PSA is presumed to be skilled in
extrusion and signal monitoring technologies, the absence of fluid-specific
impedance profiles or environmental calibration ranges does not vitiate
sufficiency. Such operational adaptations would fall within routine
experimentation.
Inconsistency in Defendant’s Approach
120. As rightly argued by the Plaintiff, the Defendant seeks to rely on the
NHAI tender document [Exhibit DW-2/3] as prior art and disqualify it for
lack of enabling disclosure. Yet, in the same breath, the Defendant
challenges the sufficiency of the Suit Patent for not elaborating on co-
extrusion, an established and well-known process. This dual approach
undermines the credibility of the objection. One cannot, in principle, claim
lack of sufficiency where the method being criticized is already known to
the PSA, and at the same time rely on a similar disclosure in prior art as
anticipatory.
23
AIR 1969 Bom 255
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121. Further, the Defendant has failed to show that any person in the
relevant field has been unable to practice the suit invention based on the
specification. There is no evidence of failed attempts or need for undue
experimentation. On the contrary, the Defendant’s own product mirrors the
Suit Patent, a fact supported by cross-examination and uncontroverted
admission of product similarity.
122. The burden of proving insufficiency lies squarely on the person
challenging the patent. The Defendant has failed to discharge this burden.
123. As regards the objection under Section 64(1)(i), the claims are clearly
drafted and fairly based on the disclosure. The Suit Patent’s essential
elements are structure, integration of tracer and monitoring functionality,
which are all supported in the specification. This is consistent with the
detailed description provided in the specification. The function of the claims
of a patent is to define the monopoly granted. The claims of the Suit Patent
are drafted with clear language, defining the scope of the invention without
ambiguity. They do not attempt to cover undisclosed subject matter or
extend beyond the invention’s disclosed embodiments.
124. The Defendant’s concerns about variations in fluid types, leak
positions, and environmental conditions pertain to specific implementation
scenarios. However, the law does not mandate that a patent specification
addresses every possible variation or application.24 As long as the core
invention is sufficiently disclosed, which it is in this case, the requirements
of Section 64(1)(h) and (i) are met.
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Conclusion
125. The objections raised under Sections 64(1)(h) and 64(1)(i) are devoid
of merit. When the complete specification of the Suit Patent is read as a
whole, it provides a disclosure that is sufficiently enabling for a PSA to
perform the invention without undue burden. The specification clearly sets
out the invention’s essential features and describes its working in a manner
that allows the PSA, equipped with common general knowledge, to
implement it effectively. Further, the claims are clearly worded and fairly
based on the disclosure contained in the specification. There is no
inconsistency between the claimed subject matter and the technical teaching
of the specification.
126. Accordingly, the objections as to insufficiency of disclosure and lack
of fair basis under Sections 64(1)(h) and 64(1)(i) respectively, are rejected.
Examination of Section 64(1)(m) of the Patents Act
127. Section 64(1)(m) of the Patents Act provides for revocation of a
patent if the applicant has failed to disclose information to the Controller
required by Section 8, or has furnished information which in any material
particular, was false to his knowledge. This provision sets a high threshold:
it is not enough to show that the patentee was mistaken, negligent, or overly
optimistic in presenting their case. What must be proved is a deliberate,24
Versalis SPA v. Assistant Controller of Patents, 2024 SCC OnLine Mad 4277Signature Not Verified
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material misstatement of fact made with the intent to deceive the Patent
Office and secure a patent that would not have otherwise been granted.25
128. While Section 64(1)(h) targets cases where the complete specification
fails to sufficiently and fairly describe the invention or the method by which
it is to be performed, Section 64(1)(m) requires evidence of actual
deception, whether by suppression of prior art, mischaracterisation of the
invention’s novelty, or knowingly providing false data or representations
during prosecution. In Maj. (Retd.) Sukesh Behl v. Koninklijke Philips
Electronics,26 the defendant sought revocation by invoking Section 64(1)(m)
i.e. non-compliance of Section 8 of the Patents Act. The Court held that non-
compliance with Section 8 would not automatically lead to the revocation of
the patent in view of the use of the word “may” appearing in Section 64(1),
concluding that the provision is discretionary.
129. The Defendant has not specifically pleaded or established any such
case. Beyond general allusions to the lack of technical depth in the
Plaintiff’s specification, there is no assertion that the Plaintiff engaged in
wilful misrepresentation during the patent prosecution process. No specific
instance has been pointed out where the Plaintiff either made a false factual
assertion or deliberately withheld material information from the Patent
Office.
130. The Defendant’s case, at best, revolves around the allegation that the
Plaintiff failed to sufficiently disclose the process of co-extrusion or explain
25
Maj. (Retd.) Sukesh Behl v. Koninklijke Philips Electronics, 2014 SCC OnLine Del 2313
26
Ibid
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the structural and functional benefits of its configuration. These allegations,
however, fall within the realm of Section 64(1)(h), not Section 64(1)(m).
The question of whether the specification sufficiently describes the
invention is separate from whether the patentee procured the patent by false
assertions.
131. In the present case, the Defendant has not identified any false
statement in Form 1, Form 3, or the prosecution correspondence. Nor has it
been shown that any prior art was knowingly withheld or mischaracterised
by the Plaintiff. The prosecution file and the certified patent specification
were placed in evidence, and no witness, whether on behalf of the Defendant
or through cross-examination of the Plaintiff’s witnesses, has established
that the grant of the Suit Patent was tainted by deception.
132. It is also material that the Plaintiff has not claimed novelty in the
process of co-extrusion itself. As discussed above, the novelty claimed lies
in the structural configuration of a non-metallic pipe assembly with a co-
extruded tracer cable on its outer surface, encased in polymer, enabling
traceability and leak detection. That claim was examined by the Patent
Office in the ordinary course, and the grant was issued after due scrutiny.
133. A difference of opinion on the technical merit or commercial impact
of an invention cannot be retroactively elevated to a charge of fraud. The
Defendant’s contentions fall short of the standard prescribed under the
statute and the settled law on the subject. In the absence of any cogent
allegation or proof of deliberate misrepresentation, this Court finds no basis
to invoke Section 64(1)(m). The objection, therefore, stands rejected.
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134. Accordingly, the counter-claim seeking revocation of the Suit Patent
fails. Consequently, the allegation in the suit that the Plaintiff obtained the
patent by committing fraud on the Indian Patent Office is also without merit
and stands rejected. Thus, Issue No. (v) of the plaint and Issue No (i) of the
counter-claim is decided in favour of the Plaintiff and against the Defendant.
Issue No. (iii)-Whether the Defendants’ adoption and use of the products
“B-Sure Polythene (PE) and Polypropylene (PP)” and “Jain Insta Tracer
Pipes” amounts to infringement of Plaintiff’s Registered Patent No.
199722? OPP
135. Having addressed the issue of validity, the Court now turns to the
question of infringement. Before embarking on a detailed examination, it is
pertinent to note that Mr. Neel Mason, counsel for the Plaintiff, upon
instructions, clarified that the allegation of infringement is not being pressed
in respect of Claim No. 9, which is a method claim. Accordingly, the Court
confines its analysis to the alleged infringement of independent Claim No. 1
and dependent Claims No. 6 and 7.
136. The Plaintiff asserts that the Defendants’ products, namely “B-Sure
Polyethylene (PE) and Polypropylene (PP) Sewerage Pipes” as well as “Jain
Insta Tracer Pipes,” infringe the subject matter of Claim 1 of Patent No.
199722. A claim-wise comparison of the features of the impugned products
with the Suit Patent has been placed on record, substantiated by
documentary evidence and cross-examination of the Defendants’ witnesses.
137. The essential features of Claim 1 of the Suit Patent consist of a non-
metallic pipe to transport fluids, equipped with a co-extruded tracer cable
placed on the outer surface of the pipe, wherein the cable is encased in a
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suitable polymeric material and is capable of transmitting pulses for
traceability and leak detection. It is this particular configuration, functional,
structural, and process-based, that forms the core of the Plaintiff’s
infringement claim.
138. The Plaintiff has tabulated evidence, mapping each of these elements
with the Defendants’ products. Documentary proof in the form of product
brochures, technical manuals, and admissions elicited during cross-
examination of DW-2 reveal the following:
S. Claim 1 of Patent No. Defendant’s B-Sure Defendant’s
No. 199722 Polyethlene (PE) and Jain Insta
Polypropelene (PP) Tracer Pipe
Sewerage Pipes1.
NA
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2. A pipe assembly having Present; B-Sure PE and PP Present; Jain
traceability and leakage sewerage pipes comprise Insta Tracer
detection features for tracer for easy detection. Pipes are
locating and detecting capable of
leakage in said pipe having its
assembly comprising: location
detected.
3. a non-metallic pipe (10) to Present; B-Sure PE and PP Present; Jain
transport fluids, sewerage pipes are made up Insta Tracer
of polymers- Polyethlene Pipes are made
(PE) and Polypropelene (PP) up of high-
density
polyethylene
(HDPE)
4. a co-extruded tracer cable Present; B-Sure PE and PP Present; Jain
(40) on said non-metallic sewerage pipes comprise of Insta Tracer
pipe to which pulses are co-extruded cable, as Pipes comprise
applied to locate said non- indicated in the figure for of co-extruded
metallic pipe and detect detection. cable
leakage on the same. (conductive
tracer wire)
across which a
signal is
induced to
detect the
location of
pipe.
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5. said co-extruded tracer cable Present; In B-Sure PE and Present
being encased in suitable PP sewerage pipes, co-
polymer material (20). extruded cable is encased by
a jacket of PE/ PP.
139. The Defendant, in support of their defence of non-infringement, urged
the following:
139.1. The technology deployed by the Defendant for their “Jain Insta
Tracer Pipe” and similar products, including those supplied under the
Omkareshwar Lift Irrigation Scheme is conventional and standard, widely
adopted across the industry well before the priority date of the Suit Patent.
The Defendant contended that their method of enabling traceability of
underground non-metallic pipes relies on longstanding techniques that have
remained in the public domain for decades and are freely accessible. Such
methods, being neither novel nor proprietary, fall outside the scope of any
patent monopoly and are lawfully available for public use, particularly for
locating subterranean fluid-transport pipelines.
139.2. PW-2, in his cross-examination dated 7th July, 2017, admitted
that he does not understand the meaning of infringement. Such an admission
undermines the evidentiary weight of his deposition on the core question of
infringement. In contrast, the Defendant’s witness, DW-2, has provided a
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clear account of the manufacturing process employed by the Defendant. In
response to Question No. 17, during his cross-examination on 23rd April,
2019, DW-2 stated that the Defendant uses a two-step process, first
extruding the pipe, and only thereafter affixing the tracer cable to its surface.
This sequence is materially distinct from the claimed co-extrusion process in
the Suit Patent, where both elements are to be simultaneously extruded. It is
further pointed out that this specific answer of DW-2 was not tested or
contradicted by confronting him with any contrary document or evidence
during cross-examination.
139.3. The necessary precondition for establishing infringement of the
suit patent is proof that the HDPE pipe and the tracer cable are extruded
simultaneously, a process described in the patent as “co-extrusion.”
However, the Plaintiff has not adduced any technical evidence
demonstrating that the Defendant’s manufacturing process involves such
simultaneous extrusion. On the contrary, the Defendant has led cogent
evidence, including the uncontroverted testimony of DW-2, to establish that
their process involves two discrete steps: the pipe is first extruded, and
thereafter, the tracer cable is affixed to its surface. This distinction,
according to the Defendant, is decisive and places the impugned product
outside the scope of the patented claim.
139.4. During the course of the rejoinder arguments, although the
Plaintiff sought to rely on a brochure allegedly showing that the Defendant
uses co-extrusion, such reliance is misplaced. The Plaintiff never confronted
DW-2 with this brochure during cross-examination, despite having had
ample opportunity to do so. Since the Defendant’s witness in response to
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Question No. 17 clearly described the process which is employed by the
Defendant-Company, the Plaintiff ought to have confronted the Defendant’s
witness with this document. In the absence of any confrontation or cross-
examination on this aspect, the Defendant argued that the testimony of DW-
2, wherein he unequivocally states that the company follows a two-step
process, remains unrebutted. It is emphasized that the process described by
DW-2 materially differs from the co-extrusion process disclosed in the suit
patent, which requires simultaneous formation of the pipe and tracer cable as
an integrated structure.
139.5. The Plaintiff’s and Defendant’s products, when juxtaposed with
Exhibit DW-2/10, appear structurally indistinguishable. This visual
congruence has two implications. First, if the Plaintiff alleges that the
Defendant’s product infringes the Suit Patent, then by parity of reasoning,
the Defendant’s product, which is claimed to be identical to the prior art,
would also infringe that prior art. Second, this leads to an implied admission
that the Suit Patent itself lacks novelty over Exhibit DW-2/10. The Plaintiff
cannot approbate and reprobate: it cannot assert infringement while
simultaneously denying that the Defendant’s product is covered by the prior
art. If the Defendant’s product mirrors the prior art, and the Plaintiff alleges
that it infringes the Suit Patent, then the logical corollary is that the Suit
Patent reads onto the prior art. In such event, the Defendant submits, the Suit
Patent is rendered invalid under Section 64(1)(e) for want of novelty.
140. The above contentions are not only misconceived, but also untenable
in view of the material on record. The Plaintiff has adduced detailed claim-
to-product comparisons, mapping each essential element of Claim 1 of the
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suit patent with corresponding features found in the Defendant’s “B-Sure
PE/PP Sewerage Pipes” and “Jain Insta Tracer Pipes.” These comparisons
are supported not merely by documentary assertions, but are substantiated
through the Defendant’s own product manuals and admissions made during
cross-examination. Significantly, the Defendant’s brochures and technical
documentation repeatedly refer to the presence of a “co-extruded cable”, a
term that bears direct relevance to the structural configuration protected
under the Suit Patent. Such usage is not casual or incidental; it is technical
nomenclature that reinforces the Plaintiff’s case that the Defendant’s pipes
embody each constituent element of the claimed invention.
141. The Defendant’s argument that its process differs from that of the
Plaintiff is of limited consequence in the context of a product patent. No
technical or scientific evidence has been led to establish that a distinction
between simultaneous and successive extrusion results in any material
difference in the final product. Infringement jurisprudence is anchored in the
doctrine of substance over form, the inquiry is not into the method by which
the product is made, but into whether the product, as it exists, embodies the
essential features of the patented invention. It is trite law that patent
infringement is assessed by comparing the allegedly infringing product with
the claims of the patent, not with the patentee’s commercial embodiment.
What matters is whether the impugned product, viewed through the lens of
structure and function, appropriates the core inventive concept or, to use the
well-known formulation, the pith and marrow of the claim. This doctrine
emphasizes that it not necessary to establish that the Defendant used the
same method of manufacture or that the products were indistinguishable at a
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microscopic level.27 This ensures that the essence of the invention is
protected.
142. Claim 1 is directed to a structural product ‘a pipe with a co-extruded
tracer cable’, not a process per se. The term “co-extruded” as used in Claim
1 must be understood in its technical context, referring to the final product
outcome – i.e., a tracer cable that forms an integral part of the pipe during
manufacture, and not merely glued or pasted post-manufacture. DW-2 in
Question No. 17 of his cross-examination acknowledges that after extruding
the pipe, “a process of cable manufacturing over the pipe surface” is added.
There is no evidence to show this process is functionally or structurally
distinct from co-extrusion. Indeed, where the final product results in the
same configuration as claimed – with the cable encased in polymer and
integrated with the pipe – the method of assembly becomes immaterial. As
long as the end product exhibits the claimed configuration and functional
characteristics, a variation in manufacturing technique does not, ipso facto,
absolve the user of liability. Courts have repeatedly emphasised that
infringement cannot be avoided by colourable variations in method, where
the product as a whole embodies the patented features.28
143. In the Defendant’s products, the tracer cable is shown to be affixed to
the pipe in a co-extruded or materially equivalent manner, and the cable is
capable of receiving and transmitting pulses – just as claimed in the Suit
Patent. These are not peripheral or cosmetic features; they lie at the heart of
the claimed invention. Moreover, the Defendant was confronted with the
27
Raj Parkash v. Mangat Ram Chowdhry, 1977 SCC OnLine Del 33
28
Rodi & Weinberger A.G. Henry Showell Ltd, (1966) RPC 441
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technical literature contradicting its claim of a two-stage process during
cross-examination. The Plaintiff had, in fact, placed on record several
documents suggesting the contrary, including marketing and technical
material of the Defendant themselves. The absence of cross-examination or
rebuttal on this critical aspect diminishes the credibility of the Defendant’s
defence.
144. The Defendant’s contention, that if the impugned products are held to
infringe the Suit Patent, they must necessarily also infringe the prior art
[Exhibit DW-2/10], thereby rendering the patent invalid, is legally
untenable. For ease of reference, a visual comparison between three figures:
the Plaintiff’s product (as per the Suit Patent), the Defendant’s own product,
and the prior art disclosed in US Patent No. 5,918,267 [Exhibit DW-2/10] is
extracted below:
The Plaintiff’s Product The Defendant’s US Patent No. 5,918,267
ProductThis line of reasoning conflates two distinct inquiries: infringement and
invalidity. A finding of infringement merely establishes that the impugned
product falls within the scope of the patented claims; it does not, by itself,Signature Not Verified
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establish that those claims are anticipated by or obvious in light of prior art.
As already analysed in detail, none of the cited prior art documents,
including Exhibit DW-2/10, disclose the precise combination and
configuration that form the core of the Suit Patent. The assertion of parity is
therefore illusory, and the argument must fail.
145. Accordingly, the Court is satisfied that the Defendant’s “B-Sure PE
and PP Sewerage Pipes” and “Jain Insta Tracer Pipes” incorporate all the
essential elements of Claim 1 of Patent No. 199722. The defence that the
Defendant employs a different process is unsubstantiated and contradicted
by their own marketing material.
Conclusion
146. For the foregoing reasons, Issue No. (iii) is answered in the
affirmative. The Defendants’ products infringe the Suit Patent IN 199722.
The Plaintiff is entitled to a decree of infringement.
Issue No. (iv)-Whether the Defendant’s adoption and use of the products
“B-Sure Polythene (PE) and Polypropylene (PP) Sewerage Pipes” and
“Jain Insta Tracer Pipes” amounts to infringement of the Plaintiff’s
Registered Design No. 192665? OPP
147. In addition to infringement of the Suit Patent, the Plaintiff also claims
that the Defendant has infringed its registered design bearing No. 192665 by
copying the product manufactured and offered for sale by the Plaintiff. With
respect to this allegation, the design of which the infringement is alleged,
has been described in Paragraph No. 14 of the plaint as follows:
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148. The Defendant asserts that the design registration has been granted in
respect to the “surface pattern” of the pipe. They argue that Plaintiff’s
registered design does not protect, nor is entitled to protect the shape or
configuration of the pipe which would constitute as a technical feature of the
pipe and would attract Section 2(d) of the Designs Act.
149. Before examining the merits of the Plaintiff’s allegation of design
infringement, it is necessary to highlight a fundamental incongruity. The
visual representation of the design relied upon in the plaint does not
correspond to the design as registered under Certificate No. 192665. The
registered design, as evidenced by the certificate on record, distinctly
indicates that the subject matter of protection is confined to the surface
pattern of a pipe, as captured in the following representation below:
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150. Under Section 22(c) of the Designs Act, a registered design is
infringed when any person, without the consent of the registered proprietor,
applies the design or any fraudulent or obvious imitation thereof to any
article in the class for which the design is registered. The test is well-settled:
the Court must assess whether the alleged infringing product is “fraudulent
or obvious imitation” of the registered design, judged solely by visual appeal
and overall look-and-feel to the eye of the customer. Functional or utilitarian
features are excluded from the scope of protection, which has been
reaffirmed by the Supreme Court in Cryogas Equipment Private Limited v.
Inox India Limited and Others.29
151. During cross-examination, when PW-2 was asked “Could you please
elaborate and let us know as to what exactly do you mean by “design details
of the product?” he answered as follows:
“By design details of the product I mean, (i) it is a polymer based pipe (ii) it
has got a co-extruded tracer wire and (iii) the tracer wire is encased in a
polymer and other structural details.”
152. This answer suggests that the Plaintiff’s claim to design registration is
premised not on visual appeal or ornamentation, but on functional and
constructional features. Such an approach is plainly incompatible with the
statutory regime under the Designs Ac. The witness’s explanation, which
refers to structural characteristics and technical aspects, veers into the
domain of patent protection and departs from the scope of what is
29
(2025) SCC OnLine SC 780
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protectable as a “design”, namely, features of shape, configuration, pattern,
or ornamentation as applied to an article and judged solely by the eye.
153. Moreover, the Plaintiff has neither identified with clarity, the visual
features of the Defendant’s product that are alleged to infringe the registered
design, nor furnished any comparative visual analysis, expert evidence, or
consumer impression studies to establish deceptive similarity.
154. Upon comparison, Plaintiff’s registered design depicting a pipe with a
distinct, surface-mounted linear formation, appears visually distinct from the
Defendant’s product, which adopts a broader contour and differing surface
morphology. The Plaintiff’s registered design features a circular cross-
section and linear protrusion, whereas the Defendant’s product exhibits a
flatter profile with differing edge geometry. These differences, evaluated
from the standpoint of an average consumer’s eye, are sufficient to dispel
any claim of imitation or deceptive resemblance. On this issue, the Court is
also guided by the test laid down in
Castrol India Ltd. v. Tide Water Oil. Co. Ltd.30 which held that in an action
for design infringement, the question is not whether the two articles are
identical in a technical or structural sense, but whether the overall visual
effect or impression produced by the alleged infringing design is deceptively
similar to that of the registered design, as perceived by an average customer
with imperfect recollection. When the competing designs are viewed side by
side, this Court finds no compelling similarity in the visual form, contour,
surface finish, or configuration that would mislead a consumer into
mistaking one for the other. Even if both products incorporate a tracer
30
1996 (16) PTC 202 (Cal)
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feature, the mere functional inclusion of a technical element does not
translate to visual imitation, particularly when the design registration in
question is restricted to the surface pattern alone, and not to the broader
assembly or embedded components. The Plaintiff has not demonstrated any
fraudulent copying, nor has it shown that the Defendant had access to the
design registration or modelled their products with the intent to deceive.
Conclusion
155. The Plaintiff’s claim of design infringement must fail for three
reasons: (i) the features claimed fall outside the permissible scope of design
protection; (ii) the Plaintiff has not discharged their burden of proving visual
similarity or imitation; and (iii) the Defendant’s product, on visual
comparison, does not appear deceptively similar to the registered design.
156. Accordingly, Issue No. (iv) is decided against the Plaintiff and in
favour of the Defendant.
Relief
157. With the expiry of the patent, the Plaintiff’s claim for a permanent
injunction and delivery up, being injunctive remedies, no longer survives.
The law does not permit an injunction to be granted in respect of a patent
that is no longer in force. However, the expiration of the patent does not
extinguish the Plaintiff’s right to pursue remedies for acts of infringement
committed during the subsistence of the patent term. The present suit was
instituted while the patent was valid, and the Plaintiff is therefore entitled to
seek appropriate statutory reliefs under Section 108 of the Patents Act for
the infringing conduct during that period.
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158. Section 108 of the Patents Act provides that in the event of
infringement, the Plaintiff is entitled to claim either damages or an account
of profits, but not both. At the stage of filing the suit, the Plaintiff is required
only to plead alternative reliefs in accordance with law. In the present case,
the Plaintiff, since the inception of the suit, has specifically prayed for
rendition of accounts, and has not claimed damages.
159. The Defendant’s objection, that the Plaintiff did not lay an adequate
foundation for seeking rendition of accounts, is misconceived. Once
infringement is established, and the Plaintiff has sought the relief of
accounts in the pleadings, the Court must proceed to evaluate whether such
relief is warranted based on the nature and extent of infringement. The
contention that the Plaintiff is estopped from seeking rendition of accounts
is, therefore, without merit.
160. Now that infringement has been established, the Plaintiff is entitled to
pursue the relief of rendition of accounts to quantify the benefit unlawfully
derived by the Defendant from the sale of products “B-Sure Polyethylene
(PE) and Polypropylene (PP) Sewerage Pipes” and “Jain Insta Tracer Pipes”
during the term of the Suit Patent.
161. The Suit Patent was granted on 13th April, 2007, the suit was filed on
20th April, 2013 and the Suit Patent expired on 23rd July, 2023. As per the
applicable limitation period, rendition of accounts shall be awarded from
three years prior to the suit filing (i.e., from 20th April, 2010) until the expiry
of the Suit Patent.
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162. Accordingly, the Defendant shall, within six weeks from today, render
their statement(s) of accounts of profits earned from the sale of the said
products as per the aforesaid timelines.
163. Mr. Amar Nath, District and Sessions Judge (Retd.) [Contact No.: +91
9958697030] is appointed as a Local Commissioner to go into the
Defendant’s accounts of profits earned from the sale of the aforesaid
products.
164. The Defendants shall file their affidavit(s) by way of evidence
(examination-in-chief) within six weeks from today and furnish their books
of accounts and all other information as required by the Local
Commissioner.
165. The fee of the Local Commissioner is fixed at INR 3,00,000/- besides
the out-of-pocket expenses, subject to revision if the proceedings so
demand. The aforesaid sum shall be paid by the Plaintiffs in advance.
166. The Local Commissioner shall fix the dates for recording of the
statement(s) in consultation with the counsel for the parties.
167. The commission be concluded within four months from the date of
first appearance. The Report of the Local Commissioner be submitted within
four weeks from the date of conclusion of recording of evidence.
Costs
168. As regards the award of costs, the Supreme Court in Uflex Limited v.
Government of Tamil Nadu and Others,31 laid down the principles for
determining costs in commercial matters which read as follows:
31
(2022) 1 SCC 165
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“55. We may note that the common thread running through all these
three cases is the reiteration of salutary principles: (i) costs should
ordinarily follow the event; (ii) realistic costs ought to be awarded
keeping in view the ever-increasing litigation expenses; and (iii) the
costs should serve the purpose of curbing frivolous and vexatious
litigation. [ Report No. 240 of the Law Commission of India.]
56. We may note that this endeavour in India is not unique to our country
and in a way adopts the principle prevalent in England of costs following
the event. The position may be somewhat different in the United States but
then there are different principles applicable where champerty is
prevalent. No doubt in most of the countries like India the discretion is
with the court. There has to be a proportionality to the costs and if they
are unreasonable, the doubt would be resolved in favour of the paying
party [ UK Civil Procedure Rule 44.2.] . As per Halsbury’s Laws of
England, the discretion to award costs must be exercised judicially and in
accordance with reason and justice. [ Vol. 10, 4th Edn. (Para 15).] The
following principles have been set out therein:
“In deciding what order (if any) to make about costs, the court must
have regard to all the circumstances, including:
(i) The conduct of all the parties;
(ii) Whether a party has succeeded on part of his case, even if he has not
been wholly successful; and
(iii) Any payment into court or admissible offer to settle made by a party
which is drawn to the court’s attention. The conduct of the parties
includes:
(a) Conduct before, as well as during, the proceedings and in particular
the extent to which the parties followed any relevant preaction protocol;
(b) Whether it was reasonable for a party to raise, pursue or contest a
particular allegation or issue;
(c) The manner in which a party has pursued or defended his case or a
particular allegation or issue; and
(d) Whether a claimant who has succeeded in his claim, in whole or in
part, exaggerated his claim.” [ 10th Vol. 4th Edn. (Para 17).]
58. We have set forth the aforesaid so that there is appreciation of the
principles that in carrying on commercial litigation, parties must weigh
the commercial interests, which would include the consequences of the
matter not receiving favourable consideration by the courts. Mindless
appeals should not be the rule. We are conscious that in the given facts of
the case the respondents have succeeded before the Division Bench though
they failed before the learned Single Judge. Suffice to say that all the
parties before us are financially strong and took a commercial decision to
carry this legal battle right up to this Court. They must, thus, face the
consequences and costs of success or failure in the present proceedings.”
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[Emphasis Supplied]
169. The present suit was instituted in 2013 and was originally numbered
as CS(OS) 796/2013. Pursuant to an order dated 28 th March, 2017, it was
renumbered as CS(COMM) 245/2017 and designated as a commercial suit
under the provisions of the Commercial Courts Act, 2015. The matter has
involved extensive hearings spanning over a decade, with consistent
engagement of legal counsel. At the time of the institution of the suit, the
Suit Patent was valid which expired during pendency of proceedings.
Additionally, a Local Commissioner was appointed by order dated 5th
October, 2016, to record evidence with a direction that the Plaintiff shall
initially bear the Commissioner’s fee, subject to adjustment at the stage of
final adjudication. Considering the facts and circumstances of the case, the
Plaintiff is entitled to recover full commercial costs from the Defendant in
terms of the Commercial Courts Act, 2015.
170. Plaintiff shall file their bill of costs which include the fee of the Local
Commissioner on or before 31st July, 2025. Upon filing, the matter will be
listed before the Taxing Officer for computation of costs.
171. The suit is decreed in favour of the Plaintiff and against the Defendant
in the above terms.
172. Decree sheet be drawn up.
173. In view of the Court’s finding upholding the validity of the Suit
Patent, the Registry shall issue a certificate of validity of its claims in
accordance with Section 113 of the Patents Act, 1970.
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174. Registry is directed to supply a copy of the present order to the
Controller General of Patents, Designs, and Trademarks at llc-
[email protected] for compliance.
SANJEEV NARULA, J
MAY 19, 2025
as
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