In a recent ruling, the Delhi High Court not only dismissed an appeal filed by Google LLC against the IPO’s refusal order but also imposed a Rs.1 lakh fine on the Appellant for providing wrongful disclosure regarding the corresponding patent application filed in the EPO.
The present appeal under Section 117A of the Patents Act, 1970 was filed by Google LLC (the Appellant) against the order passed by the Controller of Patents and Designs (‘Respondent’) refusing the grant of the Appellant’s patent application, bearing the Application number 5429/DELNP/2007 and titled “Managing Instant Messaging Sessions on Multiple Devices’. A First Examination Report (FER) was issued on 25th November 2014, wherein the application was primarily objected for Novelty and inventive step under Sections 2(1)(j) and 2(1)(ja) of the Patents Act. The Appellant filed a response to the FER along with amended claims. Subsequently a Hearing Notice was issued, and a Hearing was conducted on 15th March 2017. In response to the hearing, the Appellant submitted Written submissions along with new set of amended claims.
The Controller however disagreed with the Appellant’s submissions and refused the application under Section 15 of the Patents Act, 1970.
Claims of the invention:
The independent claim of the refused application reads as follows:
- A method (100) for transferring instant messaging sessions, the method comprising:
in response to determining that a user is signed on concurrently to a first instant messaging controller (725) on a first device (325a) and a second instant messaging controller (740) on a second device (325b), enabling the user to select one or more instant messaging sessions to transfer to the second instant messaging controller;
receiving from the user a preference not to mirror transferred instant messaging sessions during an idle or away state;
receiving a selection (105), from a user within a user interface, of at least one instant messaging session from among multiple instant messaging sessions to transfer from the first instant messaging controller on the first device to at least the second instant messaging controller on the second device;
transferring (115) at least a portion of the selected instant messaging session from the first instant messaging controller on the first device to the second instant messaging controller on the second device; and
making (120) the transferred portion of the instant messaging session perceivable on the second instant messaging controller on the second device;
making user-inspired instant messages perceivable on both the first instant messaging controller (725) on the first device (325a) and the second instant messaging controller (740) on the second device (325b) so that the user is able to view an entire instant messaging conversation of user-inspired messages and co-user messages on the first instant messaging controller and the second instant messaging controller; and
in response to the preference, ceasing instant messages being perceivable on the first messaging controller when the first messaging controller is in an idle or away state.
Issues:
The main issues before the Court were: (i) whether the rejection of the Appellant’s patent was sustainable? and (ii) whether the subject invention fulfilled the criteria for patentability, such as Novelty, inventive step, and industrial applicability and was entitled to the grant of patent protection?
Analysis:
The Court considered the decision of Technical Board of Appeal of the EPO in Murata Manufacturing Company Limited T0970-00-3.4.2 decision cited T-0967/97 dated 15th September 2004, that was relied upon by the Appellant to discuss the tests for assessment of inventive step and obviousness. The Court highlighted a portion of the decision wherein it was stated that, “the primary purpose of the problem-solution approach is the objective assessment of inventive step and consequently any ex-post facto analysis, and in particular any conclusion going beyond what the skilled person would have objectively inferred, without the benefit of hindsight knowledge of the invention, from the prior art is of necessity at variance with a proper application of the problem-solution approach…”. Further, the Court relied on the case of Avery Dennison Corporation vs. Controller Of Patents And Designs (2022/DHC/004697) for discussing the assessment of Novelty and inventive step. The Avery Dennison Corporation case clearly laid out various approaches for test of obviousness, such as obvious to try approach, problem/solution approach, could-would approach, and teaching suggestion motivation (TSM) approach.
Conclusion:
Summarizing the analysis of the inventive step, the Court opined 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.
- In view of circumstances of the present case, ld. Controller had cited the relevant portions of D1 during the examination at FER stage. The analysis of the subject patent application was conducted and the application was stated to be obvious during the FER stage itself not at a later stage. Thus, the argument of the Appellant does not hold in the present case.”
The Court ruled that the Controller was right in stating that the subject patent application lacked inventive step and that it was obvious to a person skilled in the art, by applying any of the settled tests. Further, discussing on the conduct of the Appellant, the Court observed that the Appellant had wilfully submitted wrong details of the status of the corresponding applications. The Court noted that the corresponding application filed at EPO was not abandoned but was actually rejected by the EPO. The Court also noted that a divisional application of the corresponding EP application was filed with an identical title which was also rejected. The Appellant had therefore not only presented wrong facts to the Court, but also failed to disclose the information as required under the Patents Act.
The court dismissed the appeal and also imposed a fine of Rs. 1 lakh upon the Appellant for failing to comply with the disclosure requirement.
Authored by Ms. Sowmya Murthy, Patents Team, BananaIP Counsels
Case Citation: Google LLC v. The Controller of Patents, High Court of Delhi, 02nd April, 2024, C.A.(COMM.IPD-PAT) 395/2022
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