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2023 Supreme(Del) 3487
IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Rxprism Health Systems Private Limited & Anr. – Appellants
Versus
Canva Pty Ltd. & Ors. – Respondents
CS(COMM) 573 of 2021 and I.A. 14842 of 2021
Decided On : 18-07-2023
Subject
Intellectual Property - Patent Law
Headnote
Facts of the case:
The Plaintiff developed 'My Show & Tell' allowing interactive presentations, filing patent applications globally; Defendant's Canva product, featuring similar functionality, was alleged to infringe upon the Plaintiff's patent. There was initial correspondence between the parties regarding possible licensing which did not result in resolution.
Findings of Court:
Court found key features claimed by the Plaintiff were present in Defendant’s product and ruled the patent to be inventive over prior arts cited by the Defendant.
Issues: The main issues revolved around the infringement of the Plaintiff's patent by the Defendant’s product and the validity of the Plaintiff's patent.
Ratio Decidendi: The Court confirmed that even minor differences in features do not preclude infringement if the substance is equivalent. The Plaintiff's patent was upheld against Defendant's claims of prior art and invalidity.
Result: Injunction granted against the Defendant from using the infringing feature, with security order in favor of the Plaintiff.
Mr. Tanmaya Mehta, Mr. Sanyam Khetarpal, Ms. Prakriti Anand and Mr. Karan Vijayan, for the Plaintiffs.
Mr. Saikrishna Rajagopal, Ms. Sneha Jain, Ms. Garima Sahney, Dr. Victor Vaibhav Tandon, Ms. Priyam Lizmary Cherian, Mr. Saif Rahman Ansari and Ms. Shruti Jain, Advocates, for the Defendant.
| Table of Content |
|---|
| 1. transformation of business tools due to internet. (Para 1 , 2 , 3 , 4) |
| 2. plaintiff's argument against defendant's infringement. (Para 5 , 6 , 7 , 8 , 9 , 10) |
| 3. plaintiff highlights the uniqueness of its product. (Para 11 , 12 , 13 , 14 , 15 , 16 , 17 , 18 , 19) |
| 4. defendant's defense concerning product features. (Para 20 , 21 , 22 , 23) |
| 5. importance of testing for patent infringement. (Para 24 , 25 , 26 , 27) |
| 6. assessment of features in relation to patent claims. (Para 28 , 29 , 30 , 31) |
| 7. claims in the plaintiff's patent application. (Para 32 , 33 , 34 , 35) |
| 8. comparison of features and functionalities. (Para 36 , 37 , 38 , 39 , 40) |
| 9. prior art and potential patent invalidity. (Para 41 , 42 , 43 , 44) |
| 10. context of filed applications and claims. (Para 45 , 46 , 47 , 48) |
| 11. expert opinions on features and claims. (Para 49 , 50 , 51 , 52) |
| 12. court's observations regarding patent claims. (Para 53 , 54 , 55 , 56) |
| 13. infringement analysis based on presented products. (Para 57 , 58 , 59 , 60) |
| 14. legal standards for patent infringement. (Para 61 , 62 , 63 , 64) |
| 15. necessity for substantial similarity in features. (Para 65 , 66 , 67 , 68) |
| 16. defendant's rebuttal concerning use of prior arts. (Para 69 , 70 , 71 , 72) |
| 17. evaluation of prior art and its relevance. (Para 73 , 74 , 75 , 76) |
| 18. defendant's arguments about the case. (Para 77 , 78 , 79 , 80) |
| 19. contextual understanding of plaintiff and defendant's roles. (Para 81 , 82 , 83) |
| 20. plaintiff's position regarding patent enforcement. (Para 84 , 85 , 86) |
| 21. court's conclusion on patent validity and infringement. (Para 87 , 88 , 89) |
| 22. court's orders and conclusions on injunction. (Para 90 , 91 , 92 , 93) |
| 23. final order regarding the case. (Para 94 , 95 , 96) |
JUDGMENT
Prathiba M. Singh, J.
I.A. 14842/2021 (O. XXXIX Rule 1 & 2 and Section 151 of CPC, 1908) The present judgment consists of the following sections:
| S. No | Contents |
| 1 | Introduction |
| 2 | Background to the present suit |
| 3 | Submissions of the parties |
| 4 | Plaintiff's invention and the problem it solves |
| 5 | Analysis and findings |
| 6 | Plaintiff's case for relief |
| 7 | Preliminary Steps |
| 8 | Report filed by the Defendant's Expert |
| 9 | Report filed by Plaintiff's Expert |
| 10 | Supplementary report of Defendant's Expert dated 26th July, 2022 |
| 11 | Analysis |
| 12 | Test of infringement |
| 13 | Invalidity |
| 14 | Auto-auditorium (D5) |
| 15 | Loom System (D4) |
| 16 | Microsoft PowerPoint (`PPT')-2016 version |
| 17 | Defendant's pleading and written statement |
| 18 | Conclusion |
Introduction:
1. The evolution of business and commerce has undergone tremendous transformation with the advent of the internet and online communication platforms. In traditional business and commerce, the tools required for promoting a particular product or service were different as compared to the tools that are required today.
2. In traditional brick-and-mortar stores, products are showcased, for example, through well-lit showrooms, display windows, mannequins and sales personnel who interact with the consumer, explaining the nature of the product. The physical interaction between consumer and the shopkeeper/sales person plays a significant role in the finalisation of the purchase of the product itself.
3. While certain elements of this process are absolutely essential, other elements may be considered mere promotional and marketing strategies. However, the importance of such tools utilised by businesses cannot be undermined.
4. As commerce on the internet has grown and businesses have had to adjust to the new world order of conducting business, innovation in this space has also taken place in the transformation of tools which existed in the physical world, to digital tools for the online world. The present case relates to one such digital tool over which the Plaintiff claims a monopoly by virtue of a patent obtained by it.
Background to the present suit:
5. The present suit for injunction restraining patent infringement, rendition of accounts etc., has been filed by the Plaintiff No. 1-RxPrism Health Systems Private Limited and its founder, P
