Delhi High Court Upholds Interim Injunction Restraining Canva from Using 'Present and Record' Feature in India Over Patent Infringement

Introduction

In a significant ruling for the technology and intellectual property sectors, a Division Bench of the Delhi High Court has dismissed an appeal by Canva Pty Ltd and upheld an interim injunction granted to RxPrism Health Systems Private Limited. The court confirmed a prima facie case of patent infringement against Canva's popular "Present and Record" feature, which allegedly replicates key elements of RxPrism's patented system for creating and sharing interactive multimedia content. The bench, comprising Justice C. Hari Shankar and Justice Om Prakash Shukla, pronounced the judgment on January 28, 2026, in FAO(OS) (COMM) 211/2023. This decision reinforces the protection of software-related innovations under the Patents Act, 1970, and underscores the judiciary's commitment to purposive claim construction in tech patent disputes. The injunction restrains Canva from offering the feature in India pending trial, while directing the company to deposit Rs. 50 lakhs as security for past use and pay Rs. 5 lakhs in costs. The case highlights the growing tensions between global tech giants and Indian startups in the digital content creation space, particularly post the COVID-19 surge in remote tools.

Case Background

RxPrism Health Systems Private Limited, a Delhi-based startup specializing in digital customer engagement solutions, holds Indian Patent No. IN 360726, titled "A system and a method for creating and sharing interactive content rapidly anywhere and anytime." The patent, filed on December 19, 2018, and granted on March 10, 2021, covers a innovative technology that enables users to produce interactive multimedia presentations. This system combines background content (such as slides, images, videos, or polls) with a foreground audio-video overlay of the presenter, incorporating interactive features like navigation tools, call-to-action (CTA) buttons, post-recording edits, and web-link sharing. RxPrism commercialized this invention through its product "My Show & Tell," launched in May 2020, targeting sales, education, and corporate communication sectors.

Canva Pty Ltd, an Australian design platform with a massive global user base, introduced its "Present and Record" feature on August 27, 2020. This tool allows users to record video presentations synced with visual slides, generating shareable interactive content—a functionality that gained traction during the pandemic for virtual meetings and e-learning. RxPrism first noticed the similarity in June 2021 and initiated communications with Canva, sharing patent details, claim-mapping charts, and offering a commercial license. Despite these efforts spanning two and a half months, Canva continued to offer the feature in India without authorization, prompting RxPrism to file a commercial suit, CS (COMM) 573/2021, along with an application for interim relief under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908.

In July 2023, a single judge of the Delhi High Court found a strong prima facie case of infringement, granting an ex-parte interim injunction restraining Canva from using the feature in India. The court also ordered Canva to deposit Rs. 50 lakhs as security for past unauthorized use—considering Canva's lack of physical assets in India—and imposed Rs. 5 lakhs in costs, citing the aggressive language in Canva's pleadings. Canva appealed this order, arguing errors in claim interpretation, premature suit filing before the post-grant opposition period expired, and challenging the patent's validity under Section 3(k) of the Patents Act (barring computer programs per se). The Division Bench heard detailed submissions, expert reports, and demonstrations of both products before delivering its verdict.

The timeline underscores the rapid evolution of digital tools: RxPrism's patent predates Canva's feature launch, but the startup's proactive enforcement reflects the challenges Indian innovators face against international players. Other sources, including reports from legal portals, confirm that RxPrism's technology emphasizes bandwidth optimization through non-merged layers, distinguishing it from prior art like Microsoft PowerPoint or Loom, which lack the integrated interactivity.

Arguments Presented

Canva, represented by advocates including Saikrishna Rajagopal, mounted a multi-pronged defense, contending that the single judge's order was perverse and contrary to patent jurisprudence. Primarily, Canva argued the absence of infringement, asserting that its feature lacks the Suit Patent's core three-layered architecture: background slides (first media), foreground picture-in-picture (PiP) video (second media), and a distinct "sandwiched" CTA layer for interactive elements. They claimed the CTA in "Present and Record" is merely user-embedded hyperlinks within slides, not a configurable interface as per the patent. Canva emphasized the "all-elements test," where even one missing limitation (e.g., movable PiP via haptic interaction or CTA invisibility during authoring) defeats infringement. They relied on their expert, Dr. Benjamin Bederson, whose report highlighted discrepancies, such as browser-dependent PiP movement and no independent CTA layer.

On validity, Canva challenged the patent under Section 64, citing prior art like US Patent 2008/0126943 (Parasnis), Microsoft PowerPoint 2016, Loom, and Auto Auditorium. They argued the invention is obvious, lacks inventive step under Section 2(1)(ja), and is unpatentable as a mere computer program under Section 3(k). Canva also invoked the Doctrine of Equivalents narrowly, insisting the court misapplied it by focusing on functional similarity rather than the "function-way-result" triple test from Sotefin SA v. Indraprastha Cancer Society (2022). Procedurally, they claimed the suit was premature, as post-grant opposition under Section 25(2) was pending, and interim relief on a recently granted patent (less than two years old) was unwarranted without proven commercial working in India.

RxPrism, through Senior Advocate Swathi Sukumar and team, countered that Canva's arguments were afterthoughts not pleaded in the written statement, such as the "third layer" requirement, which is absent from the patent claims or specification. They presented expert Dr. Vivek Kapoor's claim-by-claim mapping, demonstrating how Canva's feature embodies all essential elements: layered media synchronization, post-recording edits via configuration interface, and embedded CTAs during playback. RxPrism refuted the movability issue, noting it's descriptive in the specification, not essential, and Canva's product achieves the same interactive result. On validity, they distinguished prior art, arguing no single reference discloses the integrated system, rejecting "mosaicing" as impermissible. RxPrism highlighted Canva's abandoned PCT application (PCT/AU2021/050502), which mirrored the patent's architecture, as evidence of imitation. They stressed the triple test for interim relief—prima facie case, balance of convenience, irreparable injury—favoring protection of their startup's monopoly, especially given Canva's global dominance eroding licensing opportunities.

Both sides adduced video demonstrations and affidavits on usage: Canva disclosed low Indian revenue from the feature (per July 2022 affidavit), while RxPrism emphasized market distortion risks under Merck Sharp & Dohme Corp. v. Glenmark Pharmaceuticals (2015).

Legal Analysis

The Division Bench meticulously applied the two-stage infringement test from F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2016): first, purposive claim construction; second, comparison with the accused product. Drawing from Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979) and Merck Sharp & Dohme (supra), the court construed the claims holistically, viewing the specification as guiding but not overriding the claims' plain language. Essential features identified included layered media (background first media and foreground PiP second media), configuration interface for CTAs, and post-creation modifiability without re-recording—consistent for both infringement and validity assessments, rejecting Canva's charge of inconsistent construction.

The bench rejected Canva's "third layer" insistence, noting it as unclaimed and even contradicted by their expert, who admitted no such requirement in the 54 claims. For PiP movability (Claim A4), the court held it inessential at prima facie stage, as the functional overlay and synchronization suffice, per Raj Parkash v. Mangat Ram Chowdhury (1978). On CTAs (Claims C6-C7), the configuration interface in Canva—allowing separate addition and positioning—was deemed equivalent, enabling the same work (interactive embedding) in substantially the same way (user-driven placement) for the same result (viewer engagement during playback).

Applying the Doctrine of Equivalents from FMC Corporation v. Natco Pharma Ltd. (2022), adapted for this system patent, the court scrutinized essential elements' interactions: minor variations (e.g., CTA visibility during authoring) do not camouflage infringement if the core architecture yields identical interactivity. Canva's functional similarity argument was upheld as aligned with Sotefin SA (supra), not a mere "same effect" test.

On validity, the bench affirmed the single judge's distinction of prior art: PowerPoint's slide-by-slide audio lacks synchronized layering; Loom and Auto Auditorium miss post-edit configurability. No anticipation under Section 2(1)(j) or obviousness, as combinations (mosaicing) are impermissible. Section 3(k) was unpersuasive, as the invention advances technical effect beyond a program per se. The pending opposition was noted but not preempted, per Dr. Aloys Wobben v. Yogesh Mehra (2013).

Precedents like Wander Ltd. v. Antox India P. Ltd. (1990) limited appellate interference to perversity, finding none in the discretionary triple test application: prima facie infringement established; balance favors RxPrism's nascent market; irreparable harm from Canva's entrenchment, uncompensable by damages.

This analysis integrates other sources, such as RxPrism's allegations of ignored licensing offers and Canva's revenue data, naturally bolstering the irreparable injury finding.

Key Observations

The court's reasoning is illuminated by several pivotal excerpts:

• On claim construction and mapping: "A careful reading of the impugned judgment reveals that the learned Single Judge has effectively construed the four disputed claims of the Suit Patent and has undertaken a detailed claim mapping exercise. The learned Single Judge has explicitly observed that claims of the patent specification are required to be compared with the features of the Defendant’s product."

• Applying the Doctrine of Equivalents: "The mere non-existence of a sandwich layer would not obviate the infringement, inasmuch as by applying the doctrine of equivalence, the functionality of both the Plaintiff's and the Defendant's product is almost identical."

• On appellate restraint: "An appeal against an order granting or refusing an injunction is not an appeal on facts, but an appeal on principle... interference is permissible only where discretion has been exercised arbitrarily, capriciously, perversely, or in disregard of settled principles of law."

• Rejecting validity challenges: "While the cited prior art disclosed individual elements like slide presentations, screen/wall recording, or PiP features, none showed the integrated sandwiched architecture with CTA layer enabling server-side compositing and independent editing. Hence, the validity challenge was found to be arguable but not 'so strong as to defeat interim protection'."

• Final affirmation: "We are therefore satisfied that the process of claim construction and comparison was undertaken in accordance with settled principles of patent law, and the impugned judgment cannot be faulted on this ground."

These quotes encapsulate the bench's emphasis on technical fidelity and equitable discretion.

Court's Decision

The Division Bench dismissed Canva's appeal, upholding the July 18, 2023, single judge order in its entirety. Canva remains restrained from making available or using the "Present and Record" feature—or any variant infringing Patent IN 360726—in India. The Rs. 50 lakhs security deposit (as a fixed deposit with the Registrar General) and Rs. 5 lakhs costs stand confirmed, adjustable against final relief. Pending applications were disposed of without further costs, clarifying observations are prima facie and non-binding for trial.

Practically, this halts Canva's feature operations in India, a key market with millions of users, potentially impacting its subscription revenue (Pro/Enterprise models). For RxPrism, it preserves exclusivity, aiding licensing and growth as a startup. Broader implications include strengthened interim protections for Indian software patents, deterring copycat features by global firms. It signals courts' readiness to apply purposive construction and equivalents doctrine in tech cases, balancing innovation incentives against free competition. Future suits may cite this for swift relief, but validity/infringement merits await full trial, where expert cross-examination could refine findings. For legal professionals, it reiterates Wander Ltd.'s appellate limits and FMC's equivalence adaptations, influencing IP strategy in digital tools amid India's booming edtech and e-commerce sectors.

This ruling, amid rising patent filings (over 80,000 in 2023 per IPO data), may encourage startups to enforce rights aggressively, fostering a robust ecosystem while cautioning multinationals on local compliance.