Google LLC (hereinafter, “appellant”) submitted its application for a patent titled “Managing Instant Messaging Sessions on Multiple Devices”[i] to the controller of patents and designs on July 13, 2007, claiming priority from a US patent application.[ii] The application discloses the feature for transferring instant messaging sessions concurrently between devices and gives users the choice to mirror / refresh sessions interrupted by idle or away states. It provides flexibility in managing instant messaging sessions and a seamless continuation of conversations.
During the examination by the assistant controller of patents and designs, the following prior art documents were cited:[iii]
- D1: US2003101343- “System for providing continuity between messaging clients and method”[iv] (hereinafter, D1);
- D2: US2004068567- “Method and system for transferring a computer-sessions between devices”[v] (hereinafter, D2); and
- D3: US2003055977- “System for automated, mid-session, user- directed, device-to-device session transfer system” [vi] (hereinafter, D3).
The details of D1 were thoroughly discussed both during the examination and appeal proceedings. This prior art enabled uninterrupted messaging between users of multiple electronic devices, detailing the process of logging in on one device and then again logging in from a second device. The user’s devices were able to access part or complete messaging history basis their preferences. It further contemplated user being able to access multiple devices concurrently.
To demonstrate differences, the Appellant argued that the cited arts do not have the following features: (a) interruption to mirroring / mirroring messaging sessions during idle or away state; and (b) ceasing instant messaging basis response to user preference when the messaging controller is idle or in away state. Appellant argued that the patent involved technical steps enabled by hardware features resulting in technical effect. However, the controller of patents and designs rejected the patent grant under Section 15[vii] of the Patents Act, 1970, citing lack of novelty, inventive step, and non-patentability under Section 3(k)[viii] of the Patents Act as reasons. The Appellant filed an appeal against this order in the Delhi High Court, which considered[ix] the following two questions:
- Whether the rejection of the Appellant’s patent application is sustainable or not?
- Whether the subject invention satisfies the tests of novelty, inventive step and industrial application and is entitled to the grant of patent protection?
Arguments by Google & Controller’s Responses[x]
Before the Delhi High Court, the Appellant claimed that the controller’s decision was solely based on the teachings of D1. It argued that the present patent is different from this prior art as, firstly, users get preference to cease instant messaging when devices are in idle stage and, secondly, it provides a conscious choice to trigger instant messaging feature. Contrarily, the cited prior art only relates to transmission of messages between two devices. It does not offer users the functionality to choose a mirror messaging session on another device while it is active on one device. As the present patent application gives the user an option to set up a preference of viewing instant messaging session on device in its idle or away step, it should be considered a step forward from D1. To this, the controller submitted that a person skilled in art would be able to extrapolate the same from the existing functionality (i.e., D1) and develop a conscious feature for mirroring messaging sessions during away or idle states. This is merely a “logical progression and foreseeable evolution” of a messaging communication system, as it would anyways involve features that enhance user experience and system continuity, and, hence, not an invention per se.
Delhi HC’s Reasoning
- Application of tests for assessing inventive step and obviousness[xi] Before assessing the facts to the case, the Delhi HC noted several key judgments that are indicative of how the assessment for inventive steps and obviousness should be carried out. In Avery Dennison Corporation v. Controller of Patents and Designs[xii] discussions centred around:
- Obvious to try approach – whether the invention is obvious to try and arrive at basis the teachings in prior art;
- Problem/solution approach – whether the solution claimed in the invention would be obvious to a skilled person;
- Could-would approach – whether the teaching in prior art would and not simply could have prompted a skilled person to modify or adapt the subject matter of the claimed invention; and
- Teaching Suggestion Motivation test – whether by teaching, suggestion or motivation, an ordinary skilled person can modify the prior art or combine references to arrive at the claimed invention.
It further cited Pozzoli Spa v. BDMO SA[xiii] wherein the steps for the test laid down in Windsurfing International Inc. Actavis Group PTC EHF v. ICOS Corporation[xiv]were modified. These broadly include identifying the person skilled in the art, its relevant common general knowledge, inventive step of the claim, differences from the prior art and viewing if such differences were obvious to the skilled person or required a degree of invention. The order also discussed F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd.[xv], which provided the step of determining/assessing inventive step and included a step, “To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hindside approach”.
The UK Supreme Court in Actavis v. ICOS[xvi] laid down ten relevant considerations when assessing obviousness. These inter alia include: (i) whether claimed invention was obvious to try with reasonable prospect of success, (ii) if such claimed invention follows routine of research, (iii) burden and cost of such research, (iv) necessity and nature of value judgments which the skilled team would have during a testing programme, (v) existence of alternate paths of research, (vi) motive of skilled person, (vii) whether the result of research is unexpected or surprising, (viii) not using hindsight i.e. knowledge of invention, and (ix) whether feature of the invention is an added benefit. In sum, the controller has to ultimately see if the invention is disclosed in prior art, the patent application and manner in which the invention in the patent application would be obvious to a person skilled in the art. Through this, it has to be reasoned whether the requirements of section 2(1)(ja)[xvii] are satisfied.
- Comparison between patent applied for and D1[xviii] The court noted that although the word “mirroring” has not been used in D1, the purpose of it is same as that of the appellant’s patent application, i.e., viewing of instant messaging sessions on multiple devices. The alleged differentiating point on user preference is just a single command to the device and nothing more. It is only an illustrative preference that D1 would also enable as it is obvious to a person skilled in the art. The preferences claimed by the appellant could also be one of the “pre-programmed session preferences” of D1. Even though not explicitly mentioned, it can easily be imagined by a person skilled in the art, without applying any innovative technique. The Delhi HC specifically responded to the appellant’s following claims on differentiating points:
- No preference for mirroring in prior art: D1 specifies features of transfer of session data, including transfer between different account users, which implies that the session can be replicated on another device and that an ongoing session can be moved from one device to another. These disclosures are key aspects of mirroring.
- Prior art has no choice to mirror on another device when session is ongoing on one device: D1 includes concepts of user-defined settings for messaging sessions and hence flexibility for user preferences is implied. With the ability to transfer session data and sessions between devices, user can potentially choose whether and when to mirror sessions.
It further noted that D1 already covers core concepts of managing sessions across several devices and user-defined settings. Hence, the substance of subject in patent application, which although provides for a specific implementation of user preferences for mirroring instant messaging sessions, is covered in D1. It is not creative to simply make the process automatic where the method and manner of mirroring are already enabled, unless the user chooses a negative preference. In light of this, the court concluded that there is a clear lack of inventive step as it is obvious to a person skilled in the art and, hence, the appeal was dismissed.
Penalising Google’s non-compliance of disclosure requirements[xix]
The controller flagged that a corresponding European patent application[xx] was rejected by the EPO Examining Division due to lack of novelty and inventive step. The EPO noted that the feature is merely an implementation choice based on circumstances and proposes only an automation of manual device selection functions, which were performed by a human operator previously. This was observed to be a part of the general trend in technology and not an invention under Article 56 of European Patent Convention, 1973.
However, the Appellant submitted that the corresponding EU application was abandoned and not rejected. Delhi HC noted that not only was the disclosure wrong but also that the said EU application comprised two applications (EU parent application and divisional application), which were both rejected due to lack of inventive step. The appeal was dismissed with INR 1 lakh costs for presenting wrong facts failing to disclose accurate information.
To conclude, Google has not only suffered a loss on merits of the claim but a penalty for presentation of wrong facts. This is a clear indication for all parties before a judicial authority to accurately represent facts and comply with their disclosure requirements. Failure to abide shall be met with like penalties.
[i] 5429/DELNP/2007.
[ii] US 11/025,849.
[iii] First Examination Report, November 25, 2014.
[iv] D1: US2003101343, May 29, 2003.
[v] D2: US2004068567, April 8, 2004.
[vi] D3: US2003055977, March 20, 2003.
[vii] “Power of Controller to refuse or require amended applications, etc., in certain case.— Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.
[viii] “a mathematical or business method or a computer programme per se or algorithms”.
[ix] [24].
[x] [10]-[22].
[xi] [42], [43].
[xii] 2022/DHC/004697.
[xiii] [2006] EWHC 1398 (Ch).
[xiv] [2019] RPC 9.
[xv] 2016(65) PTC 1 (Del).
[xvi] [2019] UKSC 15.
[xvii] “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
[xviii] [44]-[52].
[xix] [53]-[58].
[xx] EP 05 855 851.1.
