The Delhi High Court, in a recent case of Google LLC v. Controller of Patents gave a landmark ruling involving objections of lack of novelty and inventive step, as also an objection under Section 3(k) of the The Patents Act, 1970.

This article discusses the same judgement along with the High Court's findings while dismissing the appeal.

About The Case
The present appeal under Section 117A of the Patents Act, 1970 (hereinafter 'the Act').

Facts Of The Case
The Appellant company is a Delaware Limited Liability Company (LLC) incorporated under the laws of the United States of America located at Amphitheatre Parkway, Mountain View, California, 94043 and is the Assignee of the subject patent application by virtue of an assignment between the original applicant AOL LLC and Google LLC. Vide the impugned order, the application for grant of a patent bearing number 5429/DELNP/2007 titled 'Managing Instant Messaging Sessions on Multiple Devices' (hereinafter 'subject patent') of the Appellant was refused by the ld. Assistant Controller of Patents and Designs (hereinafter 'Controller') under Section 15 of the Act.

To address the objection raised under Section 3(k) of the Act and the requirement for novelty and inventive step, the Appellant stated that the subject matter of the application involved technical steps enabled by the hardware features resulting in technical effect, and thus the same ought to be granted a patent. However, despite the contentions made by the Appellant, the Controller refused the application for grant of the patent under Section 15 of the Act, and the impugned order was passed. Aggrieved by the impugned order, the Appellant filed the present Appeal before the Delhi High Court.

Law Point:

Section 3 of The Patents Act, 1970 - What are not inventions

The following are not inventions within the meaning of this act:

• (k) a mathematical or business method or a computer programme per se or algorithms

Issues Raised:

• (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?

Arguments Of The Appellant:

• As per ld. Counsel for the Appellant, the prior art only relates to transmission of messages between two devices which is different from the Appellant's invention claimed in the subject patent application.
• That the corresponding patent applications have been granted in the USA and Canada. Upon a query from this Court as to whether the corresponding patent was applied before the European Patent Office (hereinafter, 'EPO'), ld. Counsel for the Appellant submitted that the corresponding patent application before the EPO was abandoned.
• The Complete Specification of the subject patent application i.e., both in the claims as also in the drawings, a clear option is given to the user for the purposes of setting up preference as to whether the user would like the viewing of the instant messaging session on the device when the device is in idle or away state. This, according to him, was a step forward from the disclosure in the prior art D1.
• That in the prior art D1, there was no provision for the user to choose whether to mirror the messaging session on another device while the session is ongoing on one device.

Arguments Of The Respondent

• That the corresponding European patent application was rejected by the EPO Examining Division vide decision dated 18th December, 2015, which held that subject patent invention lacked novelty and inventive step.
• The presence of the timeout setting was a part of the plurality of session preferences discussed in the prior art D1.
• That a comprehensive analysis of prior art D1 provides sufficient motivation for a person skilled in the art to extrapolate from existing functionalities and develop a conscious feature for mirroring messaging sessions during idle or away states.
• 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.

Judgement

The Delhi High Court observed:

• From a perusal of the above extracted Independent Claim, it was clear that the subject patent application primarily disclosed the feature for transferring instant messaging sessions concurrently between devices, such as desktop and personal digital assistant ('PDA'), allowing users to continue conversations on different devices.
• Additionally, the subject application disclosed that the system mirrors instant messaging sessions across devices and refresh sessions interrupted by idle or away states i.e., users can indicate their preference for their instant messaging sessions not to be mirrored or duplicated when they are not actively using the messaging application, such as when they are idle or away. Further, the method claimed in the subject patent application provided flexibility in managing instant messaging sessions across multiple devices, allowing for seamless continuation of conversations while also respecting the privacy of the user and also availability preferences.

It was held:

• D1, achieved a position wherein two devices of the same user were able to access, at least a part of the messaging or even the complete messaging history depending upon the preferences of the user. Thus, D1 also contemplated the requirement of a user being able to access such a messaging platform through two devices simultaneously or consecutively, depending on the preference of the user.
• In the case of Avery Dennison Corporation v. Controller of Patents and Designs (2022/DHC/004697), the guidelines for satisfying the test of obviousness were been laid down, the relevant portions of the said judgment are set out below:

For determining inventive step or lack thereof, various approaches and tests have emerged over the years from decisions of courts/authorities as also from examination guidelines of patent offices from different jurisdictions. The same include:

1. Obvious to try approach: This approach involves an analysis of whether in view of the teachings/solutions proposed in the prior art, it was obvious to try and arrive at the subject invention.
2. Problem/solution approach: This approach considers whether in the light of the closest prior art and the objective technical problem, the solution claimed in the invention would be obvious to the skilled person. If the skilled person can decipher the solution being claimed, then the subject matter is held to be obvious.
3. Could-Would Approach: In this approach the question that is raised is whether there is any teaching in the prior art as a whole that would and not simply could have prompted a skilled person, with the knowledge of the objective technical problem, to either modify or adapt the closest prior art to arrive at the subject matter of the claims.
4. Teaching Suggestion Motivation (TSM test): This test originated in the USA as per which, if by the Teaching, Suggestion or Motivation from the prior art, an ordinary skilled person can modify the prior art reference or combine prior art references to arrive at the claimed invention, then the subject matter being claimed is obvious.

It can be noted that though the word mirroring was not used in the prior art document D1, when the claims, description along with the flow charts and figures of the said prior art are compared with the claims of the subject patent with the figures, it makes it quite clear that the purpose of the subject patent was also for viewing of instant messaging sessions on multiple devices.

• In the present analysis, the comparison of the subject patent application to the prior art D1 clearly established the lack of inventive step.
• Thus, the present appeal is not tenable and is liable to be dismissed.
• Considering the submission made that the EPO application was abandoned and coupled with the fact that the corresponding EU application for the subject patent comprised of not one but two applications, including a divisional application, and that they both were rejected for lack of inventive step, in the present appeal costs are also liable to be imposed. The Appellant in the present appeal not only presented wrong facts to the Court, but also failed to disclose the information regarding the refusal of the EU parent application as also of the divisional application which was filed consequently. Thus, the disclosure requirements under the Act were not complied with.
• In view thereof, the present appeal is, accordingly, dismissed with costs of Rs. 1 lakh upon the Appellant.

Effect:

• The Court reaffirmed the findings of the case of Avery Dennison Corporation v. Controller of Patents and Designs for determining obviousness and test for novelty.
• Further, it imposed a penalty of Rs. 1 lakh on the appellant for the presentation of wrong facts and failure to disclose complete relevant information.

Analysis
The case highlighted the consequences of suppression of crucial information from the court of law and reinforced the rigorous scrutiny applied to patent applications involving software innovations. The Judgement underscores the importance of navigating the nuances of novelty, inventive step, and the exclusionary provisions under Section 3(k) to secure patent protection effectively.

End Notes:

• Google LLC v. Controller of Patents - 2024 SCC OnLine Del 2317