In its recent judgment, the Delhi High Court dismissed an appeal filed by Google LLC (Hereinafter referred as the Appellant) challenging the decision of the Assistant Controller of Patents and Designs' (Hereinafter referred as the Controller) to reject its patent application titled 'Managing Instant Messaging Sessions on Multiple Devices' and bearing application number 5429/DELNP/2007. The Court also imposed a Rs. 1 lakh fine on the Appellant for providing false disclosure regarding the corresponding patent application filed with the European Patent Office.
FACTS OF THE CASE:
The Appellant had filed an application for grant of a patent (hereinafter ‘subject patent’) which was refused by the ld. Assistant Controller of Patents and Designs (hereinafter ‘Controller’) under Section 15 of the Act.
The Appellant initially filed an appeal under Section 117A of the Patents Act, 1970, before the Intellectual Property Appellate Board (IPAB) in 2020. After the abolition of the IPAB in 2021, the appeal was transferred to the Delhi High Court. The rejected patent application filed, with the Indian Patent Office (IPO) as a PCT National Phase application claiming priority date as December 30, 2004 from a US patent. application number US 11/025,849. The IPO had issued a First Examination Report (FER) citing objections on lack of novelty inventive step, and non-patentability under Section 3(k) of the Act.
The FER had cited three prior art documents in support of the objections by the Controller. The details of the cited prior arts are hereinunder:
• D1: US2003101343 titled ‘System for providing continuity between messaging clients and method therefor’, published on 29th May, 2003.
• D2: US2004068567 titled ‘Method and system for transferring a computer sessions between devices’, published on 8th April, 2004.
• D3: US2003055977 titled ‘System for automated, mid-session, user directed, device-to-device session transfer system’, published on 20th March, 2003.
Despite the Appellant’s responses to the FER with the amended set of claims, the Controller refused the application for grant of the patent under Section 15 of the Act.
Appellant, aggrieved by this decision, filed the present appeal.
Considering the technical nature of the matter, at the request of the Court ld. Deputy Controller of Patents [hereinafter referred to as ‘Deputy Controller’] appeared virtually to assist the Court.
ARGUMENTS PRESENTED BY APPELLANT AND THE CONTROLLER:
The Appellant submitted that the Respondents objections were entirely based on the teachings of only one prior art D1: US2003101343 titled ‘System for providing continuity between messaging clients and method therefor’. The Appellant additionally asserted that the subject patent application contained two main features which were not disclosed in the prior art document D1. Firstly, the preference which the users can give to cease instant messaging while the devices are in an idle stage and secondly, the conscious choice of the user to trigger the instant messaging feature. Comparing the subject patent application with the cited document D1, the Appellant submitted that the prior art pertains only to the transmission of messages between two devices, which differs from the invention claimed in the subject patent application.
On the other hand, the Deputy Controller contended that a thorough analysis of prior art D1 provides sufficient motivation for a person skilled in the art to expand upon existing functionalities and develop a feature for mirroring messaging sessions when the user is ‘idle’ or ‘away’. He further contended that the logical progression and foreseeable evolution of messaging communication systems, as cited by D1 read with other cited prior arts, could provide the foundation for integrating additional features aimed at enhancing user experience and session continuity.
The Deputy Controller further submitted that while the subject patent may introduce a novel feature, it would still be obvious and lacking inventive step in view of the scope of existing technologies and practices outlined in the prior arts.
Furthermore, the Deputy Controller pointed out that the Appellant did not disclose accurate information regarding the corresponding European patent application bearing application number EP 05 855 851.1. He submitted that the European patent application was rejected by the European patent Office [EPO] Examining Division on the grounds that the subject patent invention lacked novelty and an inventive step.
ISSUES BEFORE COURT:
(i) Whether the rejection of the Appellant’s patent is sustainable or not?
(ii) Whether the subject invention satisfies the other tests of novelty, inventive step and industrial application and is entitled to the grant of patent protection?
COURT’S ANALYSIS AND FINDINGS:
In the present appeal, the Court conducted a critical analysis of the claim construction, thoroughly examined the cited prior art D1—including its descriptions, figures, abstract—and compared it with the subject patent. The court also perused and relied upon several key judgements to address the issues before it.
The Court reviewed the decision of the Technical Board of Appeal of the European Patent Office in Murata Manufacturing Company Limited T0970-00-3.4.2 decision cited T-0967/97 dated 15th September,2004 which was relied upon by the Appellant for their submissions on ex post facto analysis.
Further, the Court also considered the case of Avery Dennison Corporation v. Controller of Patents And Designs (2022/DHC/004697) wherein the following criteria were established for satisfying the test of obviousness
Obvious to try approach,
Problem/solution approach,
Could-Would Approach and
Teaching Suggestion Motivation (TSM test).
The Court also took into consideration the following tests for determining the inventive step and lack of obviousness cited in cases such as Windsurfing International Inc. v. Tabur Marine Ltd., [1985] RPC 59; F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd., 2016(65) PTC 1 (Del).
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 steps requiring multiple, theoretical and practical applications,
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.
Summarizing its analysis, the Court concluded that:
“....while the subject patent application provides a specific implementation of user preferences for mirroring instant messaging sessions, the core concept of managing sessions across multiple devices and the flexibility of using user-defined settings for messaging session are already present in the prior art document D1. Moreover, when the actual manner and method of mirroring is already enabled, the same cannot be held to be inventive, merely by making the process automatic unless a negative preference is chosen by the user.”
The Court opined that the application of any of the established tests confirms that the Controller correctly determined that the step outlined in the subject patent application lacks an inventive step and is obvious to a person skilled in the art.
Furthermore, the Court commented on the conduct of the Appellant regarding the false disclosure of details about the corresponding foreign application. The Appellant had claimed that the subject patent filed in the EU was abandoned, whereas, in fact, it had been rejected by the EPO due to a lack of novelty and inventive step.
Consequently, the Court concluded that the Appellant not only presented incorrect facts but also failed to disclose the correct information about the refusal of the European Union parent application and the subsequent divisional application.
In view of the above, the court dismissed the present appeal filed by the Appellant.
CONCLUSION:
The judgment highlights the critical need for accurate fact presentation and strict compliance with disclosure requirements, cautioning that failure to meet these obligations will result in penalties. It should also be noted that, even with the recent Patent (Amendment) Rules, 2024 extending the timeline for filing updated statuses of corresponding foreign applications under section 8 of the Act, the requirement to provide accurate information and keep the Controller informed about foreign filings remains unchanged.
IN THE HIGH COURT OF DELHI AT NEW DELHI
2nd April, 2024
+ C.A.(COMM.IPD-PAT) 395/2022
GOOGLE LLC ..... Appellant
versus
THE CONTROLLER OF PATENTS ..... Respondent
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