The case at hand centers around a patent infringement dispute where the Plaintiff accuses the Defendant of utilizing their patented technology without authorization. The Plaintiff's patent comprises seven distinct features (A1, A2, A3, A4, B5, C6, and C7), while the Defendant admits to three (A2, A3, and B5) and denies the presence of four (A1, A4, C6, and C7) in their product. The Court granted injunction against the Defendant on the ground that impugned product of the defendant contains essential features which were covered under the plaintiff's patent.

Contention Surrounding Features A1 and A4: Layered Presentation (A1):
The Plaintiff's patent explicitly describes a layered presentation as feature A1. The Defendant's product is alleged to incorporate a similar presentation style, which the Plaintiff argues falls within the scope of their protected invention. Determining whether the Defendant's product includes this feature becomes pivotal in assessing potential infringement.

Picture-in-Picture (PIP) Second Media (A4):
Feature A4 in the Plaintiff's patent involves the incorporation of a Picture-in-Picture (PIP) second media. The Plaintiff contends that the Defendant's product mirrors this feature, presenting a compelling case for infringement. Establishing the presence or absence of this feature in the Defendant's product is crucial in resolving the dispute.

The Significance of Syncing of Audio, Video, and Image:
The Plaintiff emphasizes the importance of the syncing of audio, video, and image in both their product and the Defendant's product. They argue that this feature constitutes an essential element of their patented technology and is also present in the Defendant's product. The presence of this feature strengthens the Plaintiff's case against the Defendant.

The Relevance of the Call-to-Action (CTA) Button's Location:
The Defendant alleged the features described as A2, A3 and B5 are present, whereas the features A1, A4, C6 and C7 are stated to be absent. The Defendant further claims that the location of the Call-to-Action (CTA) button in their product sets it apart from the Plaintiff's patented technology. However, the Plaintiff counters this argument, asserting that the overall effect of the Defendant's product remains similar to the patented technology. This raises questions about the relevance of the CTA button's location in determining infringement.

Comparison of the 'Present and Record' Feature:
The Plaintiff contends that comparing the Defendant's 'Present and Record' feature with the Claims establishes a prima facie case of infringement. The similarities between the steps in both products bolster the Plaintiff's claim against the Defendant.

Court's Decision and Injunction:
The court emphasized that the mere relocation or addition of a non-essential element, such as the CTA [Call to Action]] button, does not absolve the Accused from patent infringement. The Accused's product remained within the scope of the Patentee's patent claims as the core functionality of synchronizing audiovisual content was present in both products.

The essential elements of the Patentee's patent claim were the integration of the first and second media layers to achieve seamless audiovisual synchronization. Despite the Accused's attempts to differentiate their product through the placement of the CTA element, the court concluded that this addition did not alter the core functionality shared with the Patentee's invention.

The Court granted an injunction against the Defendant, ruling that their product contains essential features covered under the Plaintiff's patent. The Court's decision underscores the significance of the essential elements of a patent claim in a patent infringement case.

In assessing infringement, courts look beyond superficial differences and focus on the core functionality of the patented invention. The defendant's attempt to distinguish their product by adding a non-essential element did not shield them from liability, as the integral features of the plaintiff's patent were present in the accused product.

The Concluding Note:
The court's ruling in this case highlights the critical role of essential elements in patent claims when evaluating potential infringement. An essential element in a patent claim refers to a feature or combination of features that, when absent, would fundamentally alter the nature of the claimed invention. In other words, these elements are vital to achieving the patented functionality. Ultimately, the Court's decision highlights the importance of essential elements in patent claims in determining infringement.

The Case Law Discussed:
Date of Judgement:18.07.2023
Case No.CS Comm 573 of 2021
Neutral Citation:2023:DHC:4940
Name of Hon'ble Court:High Court of Delhi
Name of Hon'ble Judge: Prathiba M Singh, H.J.
Case Title:Rxprism Health System Vs Canva PTY Ltd

Disclaimer
Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539