On July 18, 2023, the Delhi High Court’s Division Bench issued an interim injunction supporting Indian startup RxPrism in a patent infringement suit against an Australia-based company CANVA, which offers comprehensive design solutions through its website. In the present matter, the Court concluded a prima facie case of infringement and passed an interim injunction order directing the Defendant to deposit a sum of INR 50 lakhs as a security for the Plaintiff's claims for past use of the infringing feature and also awarded costs of Rs. 5 lakhs in favour of the Plaintiff owing to the language used in the written statement against the Plaintiff. The present article provides a comprehensive analysis of the case and the Court’s decision.
Brief Facts of the Case
A lawsuit is filed by RxPrism Health Systems (hereinafter ‘Plaintiff’) seeking a permanent injunction to restrain the infringement of their Indian Patent No. 'IN 360726'. The Plaintiff developed a novel system for creating and sharing interactive content called 'My Show & Tell'. Canva (hereafter ‘Defendant’), a graphic design platform, offers comprehensive design solutions, including the 'Present and Record' feature for interactive presentations. Canva filed a provisional application in Australia and launched their product with the same feature. The Plaintiff claims patent infringement and seeks an interim injunction to halt Canva's activities.
In the submission from the Parties, the Plaintiff's counsel argues that the Defendant's product infringes on the plaintiff's patent. They claim that Defendant’s product includes all the features of the plaintiff's product. The Plaintiff’s counsel particularly pointed out the key feature of Picture-in-Picture (PIP) which allows for simultaneous movement of slides and video content uniquely and seamlessly. The Plaintiff's counsel asserts that this feature (PIP) is a fundamental aspect of the plaintiff's product. The Plaintiff also highlights the inclusion of a Call-to-Action button embedded in the slides which facilitates instant messaging between buyers and sellers for effective communication. Regarding the issue of infringement, Plaintiff further presents three specific features of Defendant's product that allegedly infringe on Plaintiff's patent. Firstly, Defendant’s product follows a layered approach, allowing independent changes in one layer without affecting the others. Secondly, the integration of the Call-to-Action button with the layered approach is claimed to be similar to the plaintiff's product. Finally, the Plaintiff highlights that Defendant’s PCT application demonstrates that almost all the features of their product are present in Canva's offering. In conclusion, Plaintiff contends that Defendant’s product has similar functionalities and includes the essential elements. Further, the Plaintiff refutes the requirement of all elements being present for infringement, stating that the test should be based on the concept of 'pith and marrow.' According to the Plaintiff's counsel, even though the Defendant's product does not include all elements, it still infringes on the Plaintiff's patent by implementing aforesaid essential aspects.
In the submission, the Defendant’s counsel, argues that while the Defendant's product has various functionalities, the present lawsuit specifically pertains to the 'Present and Record' feature of the Defendant. In the Plaintiff's patented invention, the product is uploaded as a slide with a video. However, the Defendant's product is designed for multiple applications such as creating marketing videos, presentations, logos, Instagram posts, pamphlets/flyers, resumes, posters, certificates, brochures, business cards, wallpapers, graphs, banners, invoices, and photocards, among others. Defendant’s counsel further emphasizes that the Plaintiff's product consists of three layers: media, video, and Call-to-Action, while in the Defendant's product, using the Call-to-Action button brings about a change in the first layer itself. He also notes that the hardware configuration in the Plaintiff's product differs from the software-embedded feature in the Defendant's product.
The Defendant's counsel further argued that the specific feature is not available in the Defendant's app and only affects a part of the overall product. He emphasized that the placement and functionality of the Call-to-Action feature differentiates the Plaintiff's and Defendant's products. He also discussed the significance of the Call-to-Action feature, how it is implemented differently in both products and its portrayal as a sandwich layer in the Plaintiff's replication. The Defendant's counsel further emphasized the availability of similar features in prior art documents, such as a Microsoft PowerPoint version from 2016, and claimed an invalidity of the Plaintiff's patent.
Court Analysis and Findings
The Court during the analysis considered Defendant’s product feature in comparison with the claims of the patent specification, rather than comparing the two products directly. Further, the Court has considered a well-established position for analysing the patent infringement suit, stated as below:
a) That the claims have to be construed in a purposive manner. On the basis of the claims of the patent specification, the Defendant’s product is to be compared for assessing infringement.
b) In the process of comparison, trivial variations would not matter, and the Court has to assess if the Defendant’s product is producing the same effect or is ‘equivalent’, to the invention claimed and disclosed in the Patent.
c) The comparison between the Plaintiff’s product and the Defendant’s product can only lend support for the purposes of understanding the technology and the features of the two products. However, the Product Vs. Product comparison shall not be determinative of infringement. It is the Granted Claims Vs. Product comparison that is determinative of patent infringement.
Based on the above-mentioned infringement test and the claim chart provided by an Expert, the Court analysed that in the Defendant's case, the Defendant argued that not all the elements of the Plaintiff's product were present in their product. They rely on the claim chart showing the presence or absence of specific features. According to the Defendant, three features (A2 - “First media content as interactive content”, A3 - “First media visual content can be interacted by second user while playing interactive content", B5 - “First media can be changed for already recorded and stored interactive content from interactive content module") are present in their product, while four features (A1- “ interactive content in layered presentation to retain Interactive user experience”, A4- “Picture in picture second media as layered presentation", C6- “Content... Configured through "Configuration Interface" which loads already configured interactive content settings of stored interactive content.", C7- “call-to-action user interface button are enabled (as per interactive content settings data) and displayed only while Rendering and playing as a part of the interactive content") are absent.
However, the Court has meticulously analysed and found that the Defendant's product does have a layered presentation and a Picture-in-Picture (PIP) second media, which are claimed in the Plaintiff's patent. The Court further finds that the movement is not an essential feature of the Plaintiff’s product, but the fact that the first and second media are integrated in a manner as to sync the audio with the video and the image is essential. The Court furthermore held that the functionality of the Plaintiff's product is almost identical to the Defendant's product, even if the Call-to-Action button is not placed in a separate sandwiched layer. The Court further finds many of the arguments of the Defendant misplaced particularly with respect to the Call-to-Action element which can be superimposed on any layer or even in between layers in the Defendant's product. The Court furthermore finds that the Defendant's attempt to highlight differences between the claims and their product is a distraction from the fact that the comparison between the two establishes the infringement.
Further, regarding invalidity, the Court analysed that the prior art documents mentioned by the Defendant, such as Auto-Auditorium and Loom, do not undermine the novelty of the Plaintiff's invention. In the case of the Microsoft PowerPoint 2016 version, it is shown that the audio overlay is different from the Plaintiff's product, where the audio is recorded separately on each slide rather than in a synchronized manner with separate first and second media. Thus, in conclusion, the Court analysed that the Plaintiff's patent is inventive compared to the closest prior arts presented by the Defendant.
Additionally, the Court has also observed that the language used in the written submission is contrary to the permissible language in pleadings. The Court finds the Defendant as violating the principles of governing permissible language in pleadings.
Court’s Decision:
In conclusion, the Court has found that the three closest prior arts cited by the Defendant do not render the Plaintiff's patent vulnerable to invalidity. The Court further found that the Defendant's Expert's claim of non-infringement has been refuted by evidence showing that the Defendant's product falls within the claims of the suit patent. The Court further concluded that the Defendant's conduct, including claiming the technology as their own and subsequently abandoning a PCT application after being confronted with evidence of infringement, indicates an attempt to deceive. Thus, the Court prima facie finds the case in favour of the Plaintiff and against the Defendant. The balance of convenience would also lie in favour of the Plaintiff.
Thus, considering the Plaintiff's case of infringement and the potential harm to their licensing and revenue opportunities, the Court prima facie finds the case in favour of the Plaintiff and against the Defendant. The Court further finds that the balance of convenience would lie in favour of the Plaintiff. In view of the above discussion, an interim injunction has been granted restraining the Defendant from using the infringing feature. The Defendant is also directed to deposit a security amount of Rs. 50 lakhs for the Plaintiff's claims related to past use of the infringing feature in India. The Court has further shown concern over using impermissible language by the Defendant in the written statement based on the facts and circumstances of the present case and awarded costs of Rs. 5 lakhs in favour of the Plaintiff. The Court has also added that the observations in this order do not bind the final adjudication of the suit post-trial.
Conclusion:
The Court’s decision addresses several relevant issues in analysing and establishing infringement. Though, the matter is a general matter for grant of injunction, however, the Court, at the prima facie meticulously captures and highlights the essential features of the patented claims for deciding a case of infringement. Further, granting an interim injunction at this stage is favourable to the Plaintiff due to the balance of convenience. The Plaintiff's market opportunities for licensing and revenue generation are at risk of being completely eroded if the injunction is not granted. Therefore, it is crucial to consider the potential consequences and protect the Plaintiff's interests by granting the interim injunction.
