Patent Refusal Under S. 15/S. 2(1)(ja) Patents Act: Delhi HC Holds Google's Multi-Device IM Tech Lacks Inventive Step - 2024-04-02

Delhi High Court Upholds Refusal of Google 's Multi-Device Instant Messaging Patent

New Delhi: The High Court of Delhi has dismissed an appeal by Google LLC, challenging the refusal of its patent application titled 'Managing Instant Messaging Sessions on Multiple Devices'. Justice Prathiba M.Singh , presiding over the matter, found that the claimed invention lacked an inventive step and was obvious to a person skilled in the art, upholding the Controller of Patents' decision.

The appeal, originally filed before the Intellectual Property Appellate Board (IPAB) and transferred to the High Court upon IPAB's abolition, sought to set aside the Controller's order dated 27th November, 2019, which refused Google 's patent application (No. 5429/DELNP/2007) under Section 15 of the Patents Act, 1970. The application, a PCT National Phase filing, claimed priority from a US application dating back to December 30, 2004.

The Controller had initially raised objections under Section 3(k) (non-patentable subject matter as a computer program per se) and lack of novelty and inventive step based on cited prior art documents D1, D2, and D3. Google amended its claims to introduce features such as enabling a user signed on concurrently to multiple devices to select sessions for transfer, receiving a user preference not to mirror transferred sessions during an idle or away state, and ceasing perceivability on a device based on this preference when in an idle/away state. Google argued these features differentiated their invention from the prior art.

Google contended before the High Court that the primary prior art document D1 (US2003101343), a system for providing continuity between messaging clients, did not disclose the specific user preference for ceasing mirroring in an idle/away state or the conscious user choice to trigger the feature. They also highlighted that corresponding patents were granted in the USA and Canada.

The Controller, assisted by Deputy Controller of Patents Mr. Neeraj Tayal , countered that the features claimed were obvious functionalities already present or motivated by D1. They argued that D1 discussed session preferences (para 32) including timeout settings and data transfer between devices (para 94, 97), which provided sufficient groundwork for a skilled person to arrive at the claimed preference feature.

Analyzing the amended claims and comparing them with D1, the Court noted that D1 already described a system enabling users to access messaging platforms from multiple devices, transfer session data (implying mirroring/synchronisation), and set various session preferences. The Court applied established tests for obviousness, including the Windsurfing, Pozzoli, and Avery Dennison approaches, emphasizing the need to assess whether the differences over prior art would be obvious to a skilled person without hindsight.

Justice Singh observed that while the term "mirroring" might not be explicitly used in D1, the transfer of session data and history between devices served a similar function of enabling viewing on multiple devices. The Court held that adding a specific preference regarding mirroring in an idle or away state was merely an obvious technical variation or implementation choice within the framework disclosed by D1, which already contemplated user-defined session settings and data transfer based on device state or user input.

The judgment stated: "The ‘preference’ that the subject patent contemplates is, in fact, nothing but one of the illustrative preferences, which document D1 would also enable a person skilled in the art to arrive at and thus would be obvious to a skilled person... Though such a preference is not specifically mentioned and thus, novelty of the subject patent would not be specifically hit, such a preference can be easily imagined by any person skilled in the art."

Furthermore, the Court took serious note of Google 's submission that the corresponding European patent application was "abandoned". The Controller's counsel pointed out that the EPO application was, in fact, rejected for lack of novelty and inventive step, a fact confirmed by the EPO decision details presented to the Court. A subsequent divisional application was also rejected on similar grounds.

Finding the Appellant's conduct regarding the EPO application status as presenting "wrong facts" and failing to disclose material information, the Court held that this also constituted non-compliance with disclosure requirements under the Act.

Consequently, the High Court dismissed Google 's appeal, affirming the Controller's refusal of the patent application for lack of inventive step under Section 15 read with Section 2(1)(ja) of the Patents Act. The Court also imposed costs of Rs. 1 lakh on Google LLC for the non-disclosure and misrepresentation regarding the EPO applications. The Court commended the assistance provided by the Deputy Controller of Patents in the technical adjudication of the appeal.