In the case of Mahesh Gupta vs. Assistant Controller of Patents and Designs, the Delhi High Court upheld the refusal of a patent application relating to a “Portable Vehicle Management System.” The Assistant Controller refused the application based on a lack of inventive step in the context of 5 prior art references, and the Court confirmed the refusal on appeal.
Mahesh Gupta, the Appellant in the case, applied for a patent on December 6, 2016, and received the First Examination Report (FER) on March 21, 2018, which cited objections relating to patentability under Sections 3(k) and 3(m), novelty and inventive step. He responded to the FER along with claim amendments. Not satisfied, the Patent Office issued two hearing notices reiterating the objections and cited two additional prior arts, one in each of the hearing notices. Despite further amendments and arguments of the appellant at the hearings, the Assistant Controller remained unconvinced and issued a final refusal order.
On appeal, the appellant contended that the key feature of the invention was its portability, a significant aspect that was not adequately addressed by the prior arts. As per the Appellant, The amended claims covered the portable nature of the vehicle tracker, designed to be selectively connected to a vehicle and monitor its operation through inbuilt sensors. The appellant argued that this feature, along with others such as anomaly detection and alert generation, was novel and non-obvious.
In response, the Assistant Controller argued that the features of the invention were already disclosed in the prior arts and that the combination of these features did not involve an inventive step. As per the Assistant Controller, D4 disclosed a comprehensive vehicle monitoring system with multiple sensors and anomaly detection, while D5 introduced the concept of portability in vehicle monitoring devices. Based on the foregoing, the Assistant Controller asserted that combining these known features would have been obvious to a person skilled in the art.
The court’s analysis focused on comparing the subject patent with the cited prior arts. It found that both D4 and D5 independently disclosed the key features of the claimed invention. While D4 covered the comprehensive monitoring of vehicle operations using various sensors, D5 disclosed a portable device capable of being used in multiple vehicles. Based on D4 and D5, the court concluded that combining the teachings of the prior arts was a logical progression and did not require inventive ingenuity.
Based on its analysis, the court ruled that the claimed invention did not possess an inventive step in the context of the existing prior arts. It held that the features of portability, comprehensive monitoring, and anomaly detection were either disclosed in or could be inferred from the prior arts. Therefore, the Court finally opined that the decision of the Assistant Controller to refuse the patent application was valid.
Mosaicing, Hind Sight Bias, and Non-Obviousness: Relevant Paras from the Judgment
The case discussed some important principles relating to inventive step such as mosaicing, hindsight bias, and steps to determine non-obviousness. The relevant paras that discuss these aspects are provided hereunder.
“The combined effect of prior arts
- In patent law, the practice of “mosaicing,” which entails the synthesis of multiple prior art references, is permissible only under specific conditions. It must be demonstrably evident that a person skilled in the art, upon consulting one citation, would logically seek further insight from another citation to enhance their understanding of the initial reference. This requirement ensures that the combination of references reflects a rational and informed progression, guided by the expertise of a skilled practitioner in the field. The same has also been considered by Lord Reid in Technograph v. Mills & Rockley6 and highlighted in Terrell on the Law of Patents, Nineteenth Edition, South Asian Edition7. This practice evaluates whether a Person Skilled In The Art (‘PSITA’) could have easily and logically conceived the claimed invention by integrating teachings from multiple existing technologies without an inventive effort. The key premise is that if the elements of a claimed invention are found scattered across different prior art documents, and their combination into a single invention is [1972] R.P.C. 346 at 355 Paragraph 12-149 straightforward and predictable, then the invention may be deemed obvious. However, for a challenge on these grounds to succeed, it must be demonstrated that combining these references would be an obvious step for a PSITA to try, with a reasonable expectation of success, rather than a mere theoretical possibility. The same has been elaborated on in paragraph 12-150 of Terrell (supra) and the same is extracted as under:
“In Pfizer Ltd’s Patent8 Laddie J referred to the passage in the 15th edn of this work dealing with mosaicing in the context of novelty (see para.11-61), and continued:
“This passage is directed particularly at the issue of mosaicing when applied to the law of novelty. The same approach applies to obviousness. There may well be invention in patching together disclosures from unrelated sources (see Von Heyden v Neustadt (1880) 50 L.J.Ch. 126). But, at least in relation to obviousness, the second part of this statement [that reliance on express cross-referencing is permissible] does not represent a rigid but limited exception. When any piece of prior art is considered for the purposes of an obviousness attack, the question asked is ‘what would the skilled addressee think and do on the basis of this disclosure?” He will consider the disclosure in the light of the common general knowledge and it may be that in some cases he will also think it obvious to supplement the disclosure by consulting other readily accessible publicly available information. This will be particularly likely where the pleaded prior art encourages him to do so because it expressly cross-refers to other material. However, I do not think it is limited to cases where there is an express cross-reference. For example if a piece of prior art directs the skilled worker to use a member of a class of ingredients for a particular purpose and it would be obvious to him where and how to find details of members of that class, then he will do so and that act of pulling in other information is itself an obvious consequence of the disclosure in the prior art.”
(Emphasis supplied)
- The Controller had held appraised the inventive step in light of combined effect of prior arts D4 and D5, along with common general knowledge. The afore-noted two prior arts are inter-related as both pertain to [2001] F.S.R. 16 at [65]-[66] real-time monitoring of vehicle operation using various sensors. D4 monitors various vehicle parameters such as acceleration, deceleration, lane changes, right and left turns, and braking, generating response signals for each movement. This system alerts others about unexpected and unsignaled manoeuvres by drivers, potentially preventing road accidents. D4 also addresses unlawful driving behaviours by communicating such instances to the police and maintaining records for potential prosecution of the vehicle’s unlawful operation. The device in D4 employs several sensors, including accelerometers, proximity detectors, external detectors, and stop-go detectors. These sensors detect a wide range of vehicle movements, such as skidding, tilting, fishtailing, racing, wheel spinning, and overturning. The processor counter in D4 accumulates and analyses these sensor signals over a short interval to determine reckless and unsafe driving. When a pre-set number of such signals is detected within a given interval, the system activates indicators to alert other drivers and the police. This information is wirelessly transmitted to the police, including the vehicle’s license number, time, date, and location. While D4 covers extensive vehicle parameter monitoring using multiple sensors interfaced with a processor, it lacks the portability aspect. The system in D4 is permanently mounted on the vehicle’s dashboard, limiting its transferability between vehicles.
- D5 introduces a portable device for monitoring vehicle operation and driver behaviour. The portable device in D5 can be a cellular phone, smartphone, personal data assistant (PDA), personal navigation device (PND) like a GPS system, tablet computer, smartwatch, wearable computer, personal display system, laptop, head-mounted display, eyeglass display, pocket computer, pocket projector, miniature projector, wireless transmitter, micro projector, headphone device, earpiece device, or any mobile health device capable of storing, receiving, or transmitting health-related information. The portable device and/or vehicle in D5 uses a plurality of sensors, including a Global Positioning System (GPS) sensor, accelerometer (such as a 3D accelerometer), gyroscope (such as a 3D gyroscope), magnetometer, touch screen, button or sensor, temperature sensor, humidity sensor, and proximity sensor. These sensors enable comprehensive monitoring of vehicle parameters and driver behaviour. Furthermore, the system in D5 includes a device that physically and/or wirelessly connects to the vehicle, enabling communication between the vehicle and the portable device. This allows for the portable device to be used in multiple vehicles, enhancing its usage and functionality compared to the fixed system in D4.
- To sum up, D4 lays the technological groundwork for a system that comprehensively monitors various aspects of vehicle behaviour. Building upon this foundation, D5 introduces a significant enhancement–portability. It suggests employing this technology in a removable format capable of wireless communication, a feature that closely mirrors the portability aspect of the subject application. This progression underscores a logical development from the established technology in D4 to the innovative application in D5. Thus, in the court’s opinion, on the basis of comparison drawn above, the teachings of D4 could be seamlessly integrated/combined with the enhancements in D5 to arrive at a conclusion very similar to that claimed by the subject application. The evolution from the fixed system described in D4 to the portable framework detailed in D5 does not constitute a ‘leap’ in innovation but rather represents a natural and expected progression in technological development. This transition aligns with prevailing trends toward greater mobility and flexibility in device usage, indicating that it may be seen as an obvious step to those skilled in the art. This transition, when viewed through the lens of mosaicking, shows a clear logical pathway that a skilled person could follow, using known technologies and without inventive ingenuity.
Whether the subject invention is non-obvious 20. We will now assess the doctrine of non-obviousness, a critical legal standard that prohibits the granting of patents for inventions that do not achieve a substantial level of innovation. According to the judicial precedents explaining the concept of a Person Skilled in the Art (‘PSITA’),9 in this case, the PSITA would be a person proficient in the general practices of on-board diagnostics (‘OBD’) designing and up-to-date with the latest developments, particularly those related to OBD for vehicles. Next, it is essential to evaluate whether PSITA could have combined existing teachings to conceive the invention and, crucially, whether there was a compelling motivation to combine these elements in the manner proposed by the invention. In this analysis, considering the technical features of D4 and D5 discussed above, it would be a logical progression for PSITA aiming to enhance vehicle tracking systems to amalgamate these elements. PSITA would easily recognize the benefits of merging D5’s portable design with D4’s extensive monitoring capabilities to forge a versatile and efficient tracking device. Moreover, no economic benefits of creating a device that is both portable and capable of comprehensive monitoring, have been set out in the subject invention. The fusion of portability with comprehensive See, Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries Ltd, (1979) 2 SCC 511, F.Hoffmann-La Roche Ltd & Anr. v Cipla Ltd.. 2015: DHC:9674-DB, ALIMENTARY HEALTH LIMITED v. CONTROLLER OF PATENTS AND DESIGN 2024: DHC: 3920 monitoring, though beneficial, aligns with the expected competencies of a PSITA informed by D4 and D5. Therefore, this combination does not manifest as an inventive step but rather a predictable refinement of existing technologies.
- Furthermore, in the court’s opinion, if the PSITA were aware of the relevant prior art D4 and D5, coupled with the common general knowledge, they would be evidently motivated to combine elements from these prior arts. The motivation to combine can arise from recognized industry needs or problems, which may be suggested within the prior art itself or known generally in the field at the time. In this case, the primary motivations for merging the teachings of D4 and D5 include the industry-wide push to enhance the flexibility and usability of vehicle monitoring systems. This need is further highlighted by D5’s focus on portability and its emphasis on real-time data transmission capabilities. Additionally, the common challenges identified in both D4 and D5, such as the need for more proactive and comprehensive monitoring, underscores the clear incentive to improve these systems by making them more adaptable and user-friendly, including enhancing their portability.
Combing common general knowledge
- The assessment of obviousness must also consider common general knowledge in the field, which includes widely known and accepted technical information that a PSITA would possess. The examples cited in the impugned order, such as a) Vectu Portable Vehicle Tracker (Date first listed on Amazon February 3, 2016), b) LandAirSea SilverCloud SYNC Real-time Tracking Device Covert OBD2 GPS Tracker for Vehicles, c) Letstrack Vehicle Security | Voice-Enabled Realtime GPS Tracking Device for 2- Wheelers, Bike, Scooty with Mobile App Track Your Bike or Scooty Pan- India (Date first Available on Amazon: July 19, 2016), d) Letstrack Plug & Play Vehicle Security | Voice-Enabled Real-Time GPS Tracking Device for 4-Wheelers with Mobile App Track Your Car Pan-India (Date first Available on Amazon: July 20, 2016)). These devices available in the market demonstrate that portable tracking devices with various sensors were well-known before the priority date of the subject invention. These examples highlight that the integration of portability and comprehensive monitoring capabilities was within the expected knowledge of the skilled person. Therefore, the subject invention, also viewed in the context of common general knowledge, does not meet the threshold for inventive step under Section 2(1)(ja) of the Act.
Hindsight bias
- The Court recognizes that hindsight bias often clouds judgment. In patent jurisprudence, hindsight bias refers to the erroneous inclination to see events as having been predictable or obvious only after they have occurred. This bias arises when knowledge of the invention influences how prior art is perceived, leading to the erroneous conclusion that the invention was obvious from the start. To counteract this bias, it is crucial to consider the prior arts from the perspective of a skilled person at the time of the invention, without any knowledge of the subsequent invention.
- Keeping the aforementioned principles in mind, both D4 and D5 nonetheless provide a clear roadmap that leads to the claimed invention. D4 offers a detailed description of a vehicle monitoring system that could benefit from increased flexibility and ease of use, while D5 explicitly introduces the concept of a portable device that can be easily integrated into different vehicles without complex installation processes. The step towards combining these systems does not require inventive acumen but follows logically from the existing technological trends and needs identified in these prior arts. Therefore, even when avoiding hindsight bias, the subject invention emerges as a predictable application of prior art technologies. Moreover, the subject invention did not overcome any significant technical hurdles that were not already addressed in the teachings of D4 and D5. The shift from fixed to portable systems represents a natural evolution of technology rather than a distinct inventive step.
Conclusion:
- Based on the detailed comparison and the combined teachings of D4 and D5, along with examples of common general knowledge, it is established that the claimed invention lacks an inventive step. The features of portability, comprehensive monitoring, and anomaly detection are either disclosed in or can be inferred from the prior arts. Therefore, the patent office’s decision to reject the application under Section 2(1)(ja) of the Patents Act, 1970, is justified and should be upheld.”
Citation: Mahesh Gupta v. Assistant Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 328/2022 (H.C. Delhi May 29, 2024). Available at: http://indiankanoon.org/doc/77528826/, Visited on: 06/29/2024.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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