As per case facts, the Petitioner filed a petition assailing an impugned order that dismissed their application for recalling a witness (DW-4). The Petitioner argued that DW-4 turned hostile and ...
FAO(OS) (COMM) 211/2023 P age 20 of 71
PROCEEDINGS BEFORE THIS COURT
$ 3 3 ( / / $ 1 7 ' ( ) ( 1 ' $ 1 7 ¶ 6 6 8 % 0 , 6 6 , 2 1 6
49. Mr. Saikrishna Rajagopal, learned Counsel for the D efendant
submitted that the impugned interim injunction was granted in patent
disregard of settled principles governing interlocutory relief. The
learned Single Judge failed to apply the correct tests for infringement,
misconstrued essential claim features, and inadequately assess ed
serious validity challenges . In such cir cumstances, appellate
interference is clearly warranted in terms of Wander Ltd. v. Antox
India P. Ltd.
9
, which permits intervention where discretion is exercised
on erroneous legal principles, irrelevant considerations, or non -
application of mind.
50. Learned Counsel in his usual erudite manner, has submitted that
the linchpin and core inventive concept of the Suit Patent , 1 ¶ L V D
three - layered architecture, enabling modification of slides without
affecting the underlying video or the CTA. T he P laintiff themselves
consistently asserted this three - layer structure as the basis of novelty ,
inventive step, and infringement, including in the ir Replication . T he
learned Single Judge also acknowledged this structure as the foundation
of the invention.
51. T he learned Counsel further submitted that the Canva ¶ s ³ 3 U H V H Q W
D Q G 5 H F R U G ´ feature does not contain any independent third or
9
1990 Supp SCC 727.
FAO(OS) (COMM) 211/2023 P age 21 of 71
sandwiched CTA layer. The alleged CTA in Canva is merely formatted
or hyperlinked text embedded directly within the slide content i tself .
When slide i s delet ed, the CTA is also deleted , conclusively
demonstrating that no independent CTA layer exists. This is fatal to
infringement.
52. Despite expressly recording the absence of the sandwiched layer,
the learned Single Judge held in paragr aph 68 of the impugned
judgment that ³ P H U H Q R Q - existence of a sandwich layer would not
R E Y L D W H L Q I U L Q J H P H Q W ´ R Q W K H J U R X Q G W K D W W K H I X Q F W L R Q D O L W \ R I E R W K
products is ³ almost identical ´ . The learned Counsel contended that this
approach is legally impermissible . Patent infringement is determined by
element - by - element comparison, not by overall functional
resemblance. The absence of even one essential claim feature is fatal to
infringement.
53. The Learned Counsel has strenuously sought to highlight tha t the
P laintiff themselves identified seven essential inventive features of the
Suit Patent in their Replication . These were adopted by the learned
Single Judge as the benchmark for infringement analysis. Of these
seven features, four are admittedly absent in the impugned Canva ¶ V
product . Despite this , infringement was still found , contrary to settled
law .
54. It was submitted that the Suit Patent expressly defines the PiP
L Q V H U W Z L Q G R Z D V ³ P R Y D E O H ´ W K U R X J K K D S W L F L Q W H U D F W L R Q & D Q Y D ¶ V 3 L 3 L V
not movable within the system ; any perceived movement relied upon
by the P laintiff arose solely from browser - level functionality, not from
FAO(OS) (COMM) 211/2023 P age 22 of 71
& D Q Y D ¶ V architecture . Nevertheless , the learned Single Judge held in
paragraph 66 that movability is irrelevant and not an essential fe ature.
The D efendant contended that this finding violates the doctrine of
patent lexicography, under which express definition s in the
specification govern claim interpretation.
55. Reliance was placed on Phillips v. AWH Corp
10
. , CCS Fitness
Inc. v. Brunswick Corp.
11
, and Thorner v. Sony Computer
Entertainm ent Am erica LLC
12
, which establish that c ourts cannot
ignore express definitional limitations provided by the patentee in the
patent specification.
56. With regard to Feature C7 - CTA Display, it was contended tha t
Feature C7 requires that the CTA is enabled and displayed only during
rendering and playback, not during the authoring stage. In Canva,
however, the hyperlink or CTA is fully enabled and visible to the author
during creation itself . This is a direct devi ation from the claim
requirement.
57. The learned Counsel also submitted that the learned Single Judge
failed to undertake the mandatory first step of claim construction, as
held by the Division Bench of this Court in F. Hoffm ann - La Roche
Ltd.(supra). Merely referring to the principle in paragraph 59 without
actually construing to the claim renders the infringement analysis
legally unsustainable .
10
(415 F.3d 1303 (Fed. Cir. 2005))
11
(288 F.3d 1359 (Fed. Cir. 2002))
12
(669 F.3d 1362 (Fed. Cir. 2012))
FAO(OS) (COMM) 211/2023 P age 23 of 71
58. Although acknowledging that infringement must be determined
by a claim - to - product comparison, the learned Single Judge repeatedly
compared & D Q Y D ¶ V I H D W X U H Z L W K W K H P O D L Q W L I I ¶ s product ³ 0 \ 6 K R Z
7 H O O ´ This constitute s a foundational legal error, as infringement can
only be assessed by mapping the claims to the accused product .
59. This error extended to the validity assessment. P rior art such as
Microsoft PowerPoint 2016 was compared to the P O D L Q W L I I ¶ s product
rather than to the claims . P aragraph 76 wrongly concludes that MS
P ower P oint cannot be equated with the P O D L Q W L I I ¶ s product.
60. The learned Counsel for defendant has emphatically tried to drive
home the point that the learned Single Judge reduced the Doctrine of
( T X L Y D O H Q W V W R D W H V W R I ³ V D P H H I I H F W ´ L J Q R U L Q J W K H P D Q G D W R U \ I X Q F W L R Q -
way - result analysis. Although Sotefi n SA v. Indraprashtha Cancer
Society
13
was cited , the ³ way ´ prong was omitted. FMC Corporation
v. Natco Pharm a Ltd
14
makes it clear that similarity of result alone is
insufficient.
61. Learned Counsel further placed reliance on Rodi and
Wienenberger A.G. v. Henry Showell Ltd .
15
which holds that similarity
in idea or functionality does not justify infringement . The learned
Single Judge ¶ V reliance on ³ D O P R V W L G H Q W L F D O effect ´ L P S H U P L V V L E O \
expands the doctrine to cover overall functional similarity.
13
(2022:DHC:595)
14
(2022/DHC/005311)
15
1966 RPC 441
FAO(OS) (COMM) 211/2023 P age 24 of 71
62. Fu rther the learned Counsel invoked the settled principle that
patentees can not adopt narrow claim construction for validity and broad
construction for infringement. This violates the quid pro quo of patent
law. Claims must be interpreted consistently.
63. Reliance was placed on Vifor (International) Ltd. v. MSN
Laboratories Pvt. Ltd .
16
, Novartis AG v. Union of India
17
, and Raj
Parkash v. M.R. Chowdhry
18
, to show that the i mpugned j udgment
adopted inconsistent claim constructions for validity and infringement.
64. It was contended that the learned Single Judge erroneously
applied a novelty test instead of the correct inventive step analysis by
requiring all features to be disclosed in a single prior art reference and
refusing to mosaic multiple prior arts such as A uto Auditorium, Loom,
and MS PowerPoint 2016.
65. 7 K H ' H I H Q G D Q W ¶ V entire non - infringement case rested on the
settled principle that absence of even one essential element negates
infringement.
66. Learned Counsel further laid emphasis on the alleged
fundamental c R Q W U D G L F W L R Q W K D W L I W K H F O D L P H G ³ P R G X O H V ´ D U H L Q W H U S U H W H G
as hardware devices (as asserted by the P laintiff before the Patent Office
L Q U H V S R Q V H W R W K H ) ( 5 W K H Q & D Q Y D ¶ V V R I W Z D U H I H D W X U H can not infringe .
16
2024:DHC:878 - DB
17
(2013) 6 SCC 1,
18
AIR 1978 Delhi 1
FAO(OS) (COMM) 211/2023 P age 25 of 71
If construed as software, the Suit Patent is inval id under Section 3(k) of
the Patents Act. The Plaintiff cannot approbate and reprobate.
67. It was also contended that the inference in paragraph 87 of the
i mpugned j udgment by the learned Single Judge regard ing alleged
abandonment of the PCT application is erroneous and irrelevant. T he
PCT was not abandoned , and in any event, PCT status has no bearing
on infringement analysis.
68. The learned Counsel also submitted that the direction to deposit
Rs . 50 lakhs is disproportionate, unsupported by pleadings, and lac ks
empirical basis, especially when the learned Single Judge recorded that
usage of the impugned feature was substantially low.
69. Finally, it was submitted that the learned Single Judge
mechanically recorded findings on the triple test in paragraph 91
witho ut any substantive analysis of irreparable harm , balance of
convenience, or inadequacy of damages contrary to the principles in
Wander Ltd. (supra) .
5 ( 6 3 2 1 ' ( 1 7 6 3 / $ , 1 7 , ) ) ¶ 6 6 8 % 0 , 6 6 , 2 1
70. Per Contra, Ms. Swathi Sukumar, learned Senior Counsel for the
P laintiff submitted that the appeal is founded on a selective, distorted,
and internally inconsistent reading of the record . It was contended that
the Defendant have failed to demonstrate any perversity , manifest
illegality , or jurisdictional error in the i mpugned j udgment that would
justify appellate interference.
FAO(OS) (COMM) 211/2023 P age 26 of 71
71. The learned Senior Counsel submitted that the i mpugned
j udgment was passed in the exercise of discretionary jurisdiction under
Order XXXIX Rules 1 and 2 of the CPC . Consequently , the scope of
appellate review is extremely limited. Reliance was placed on the
settled principle la i d down in Wander Ltd. (supra) , that interference is
permissible only where discretion has been exercised arbitrarily,
capriciously, perversely, or in disregard of settled principles of law.
72. Further reliance was placed on Ram akant Am balal Choksi v.
Harish Am balal Choksi
19
, where in perversity was defined as a
conclusion which is either against the we ight of evidence or altogether
unsupported by the record. It was contended that no such infirmity
ar i se s in the present case , as the learned Single Judge undertook a
detailed and reasoned evaluation of prima facie infringement, balance
of convenience and i rreparable harm.
73. On the issue of infringement, it was argued that the D efendant ¶ V
allegation that the learned Single Judge engaged in a n impermissible
product - to - product comparison i s factually incorrect and misleading.
Reliance was placed on paragraph 59 of the i mpugned j udgment , where
the Court clarified that it Z D V ³ I R F X V L Q J R Q W K H D H I H Q G D Q W ¶ V S U R G X F W
I H D W X U H L Q F R P S D U L V R Q Z L W K W K H F O D L P V R I W K H S D W H Q W V S H F L I L F D W L R Q ´ D Q G
not comparing the rival products directly.
74. It was further submitted that the Court thereafter undertook a
detailed claim mapping exercise, particularly recorded in paragraphs 68
19
2024 SCC OnLine SC 3538
FAO(OS) (COMM) 211/2023 P age 27 of 71
to 70 of the i mpugned j udgment , leading to a prima facie finding that
all the essential elements of the asserted claims were present in the
D H I H Q G D Q W V ¶ S U R G X F W .
75. It was emphasised that infringement was found in respect of 40
claims ( two independent and thirty - eight dependent claims ), and that
the D efendant were unable to raise a ny credible challenge to this claim -
based mapping, as recorded in paragraph 90 of the i mpugned j udgment .
76. The Learned Senior Counsel further argued that the learned
Single Judge had correctly adopted a purposive construction of the
claims, consistent with Indian patent jurisprudence. Reliance was
placed on paragraphs 62 and 63(a) of the i mpugned j udgment , wherein
the Court applied the principles laid down by the Division Bench in F.
Hoffm ann - La Roche Ltd(supra).
77. It was contended that the D H I H Q G D Q W ¶ s criticism regarding the
alleged absence of claim construction is unfounded, as the Court
construed the claims in light of the specification, figures, and technical
effect, rather than importing artificial limitations not present in the
claims.
78. 7 K H O H D U Q H G & R X Q V H O I X U W K H U U H I X W H G W K H G H I H Q G D Q W V ¶ D V V H U W L R Q W K D W
W K H ³ Z D \ ´ prong of the Doctrine of Equivalen ts was ignored. Reliance
was placed on paragraph 62 of the i mpugned j udgment , where the
learned Single Judge expressly cited Sotefin S.A (supra) , recording the
correct legal test that the substituted element must perform the same
FAO(OS) (COMM) 211/2023 P age 28 of 71
work , in substantially the same way , to achieve substantially the same
result.
79. It was submitted that the learned Single Judge thereafter correctly
held that trivial or minor differences cannot enable an infringer to
escape liability, relying on Raj Parkash v. Mangat Ram Chowdhury
20
,
and Sotefin S.A. (supra) . T he D H I H Q G D Q W ¶ s attempt to characterise the
finding as one based merely R Q ³ I X Q F W L R Q D O V L P L O D U L W \ ´ Z D V W K H U H I R U H
described as misleading and legally untenable .
80. Addressing the D H I H Q G D Q W ¶ s principal non - infringement
F R Q W H Q W L R Q U H J D U G L Q J W K H D O O H J H G D E V H Q F H R I D ³ W K L U G O D \ H U ´ R U
³ V D Q G Z L F K H G O D \ H U ´ , the learned C ounsel argued that such a contention
i s legally untenable and factually incorrect . It was pointed out that these
expressions do not appear in either the claims or the specification. T he
patent consistently refers only to background and foreground layers,
and that even the D H I H Q G D Q W ¶ s own expert admitted that the P O D L Q W L I I ¶ s
S D W H Q W ³ G R H V n o W K D Y H U H T X L U H D W K L U G O D \ H U ´
81. A specific proc edural contention was raised that the D H I H Q G D Q W ¶ s
H Q W L U H D S S H D O U H Y R O Y H V D U R X Q G W K H H [ S U H V V L R Q V ³ V D Q G Z L F K ed O D \ H U ´
³ W K L U G O D \ H U ´ Z K L F K Z H U H Q H Y H U S O H D G H G D V D J U R X Q G R I Q R Q -
infringement in the Written Statement. It was submitted that although
the P O D L Q W L I I X V H G W K H S K U D V H ³ V D Q G Z L F K H G L Q - E H W Z H H Q ´ L Q W K H ir
Rejoinder dated 31.01.2022 and in replication to the invalidity
response , the Defendant, despite having noticed, failed to plead absence
20
AIR 1978 Delhi 1
FAO(OS) (COMM) 211/2023 P age 29 of 71
of a third layer as a defence when filing their Written Sta tement or
Reply . T K H ³ W K L U G O D \ H U ´ D U J X P H Q W was therefore characterised as a clear
afterthought, raised only at the appellate stage, and impermissible in
law .
82. Reliance was placed on screenshots and video evidence
demonstrating that the CTA button in the D H I H Q G D Q W ¶ s product exists in
a separate selectable layer, is independently configur able, and is
rendered during playback, thereby satisfying Feature C6.
83. It was emphasised that the configuration interface is functional
in nature, and neither the claims nor the specification imposes any
location - based restriction on how or where it must be displayed.
84. With respect to the dispute about PiP , the learned Senior Counsel
submitted that movability is not the essence of PiP . T he reference to
³ P R Y D E O H ´ L Q W K H V S H F L I ication merely demonstrate s that the PiP video
is placed in a separate foreground overlay, which the D efendant admit
exists in their product.
85. It was highlighted that the D H I H Q G D Q W ¶ s own expert stated that PiP
is optional in Claim 01 , directly contradictin g the D H I H Q G D Q W ¶ s argument
that absence of movability defeats infringement . I n any event, video
evidence cited in the plaint demonstrated repositioning of the PiP in the
D H I H Q G D Q W ¶ s product.
86. A procedural objection was raised to the PiP movability
argument on the ground that it was never pleaded in the Written
FAO(OS) (COMM) 211/2023 P age 30 of 71
Statement or in the reply to the injunction application . D uring oral
arguments before the learned Single Judge, movement in the PiP was
admitted, albeit attributed to browser behaviour. S uch an argume nt,
raised for the first time in appeal, wa s therefore impermissible and , in
any event , a matter for trial.
87. On the issue of CTA visibility, it was submitted that the
D H I H Q G D Q W ¶ s claim that the CTA must not be visible during authoring is
unsupported by the claims or specification. Reliance was placed on the
D H I H Q G D Q W ¶ s R Z Q H [ S H U W ¶ V V X S S O H P H Q W D O U H S R U W Z K L F K D G P L W V W K D W Q R
claim or specification mandates invisibility of the CTA du ring
authoring.
88. The P laintiff ¶ s clarified that their reference to a CTA being
³ V D Q G Z L F K H G ´ Z D V Q H Y H U L Q W H Q G H G W R D V V H U W D V H S D U D W H S K \ V L F D O R U
isolated third layer. T he expression was used only to explain the CTA
as a distinct interactive element from the end - user ¶ V S H U V S H F W L Y H
positioned between background (first media) and foreground (second
media). Since the claims refer only to background and foreground, the
D H I H Q G D Q W ¶ s attempt to convert descriptive language into a mandatory
structural limitation was characterised as legally untenable.
89. It was also contended that the D efendant ¶ s own expert, Dr.
Benjamin Bederson, expressly contradicts the D H I H Q G D Q W ¶ s case.
5 H O L D Q F H Z D V S O D F H G R Q ' U % H G H U V R Q ¶ V U H S R U W S G I S Z K H U H K H
states in paragraph 28 that ³ W K H L P S O H P H Q W D W L R Q R I W K U H H O D \ H U V L V Q R W
S D U W R I W K H F O D L P R U H Y H Q W K H V S H F L I L F D W L R Q ´ and in paragraph 29 that
³ W K H Z R U G µ O D \ H U ¶ G R H V Q R W D S S H D U L Q D Q \ R I W K H F O D L P V R I W K H µ
FAO(OS) (COMM) 211/2023 P age 31 of 71
S D W H Q W ´ O nce the D H I H Q G D Q W ¶ s own expert admits that the patent does
not require a third or sandwiched layer, the entire appellate challenge
collapses on its own footing .
90. The learned Counsel also submitted that the D H I H Q G D Q W ¶ s attempt
W R G H V F U L E H W K H L U F R Q I L J X U D W L R Q L Q W H U I D F H D V D P H U H ³ I R U P D W W L Q J R S W L R Q ´
is misleading. T he p atent specification defines a configuration interface
as any interface enabl ing a user to add one or more CTA buttons at a
specific position in the interactive content.
91. It was submitted that the D efendant ¶ s product clearly uses a
separate interface (left - side U ser Interface ) to add a CTA , adding the
CTA does not alter the first media image , and the CTA sits on top of
the background media as a separate selectable element. This squarely
satisfies the claim language, regardless of how the D efendant choose to
label the interface .
92. It was further submitted that Feature C7 concerns rendering and
playback for the viewer, which the D H I H Q G D Q W ¶ s product admittedly
performs in the same manner.
93. Contention was also raised regarding the D efendant ¶ s post - grant
opposition , which was rejected on all pursued grounds and the patent
was found to be credibly valid. Reliance was placed on Dr. Aloys
Wobben v. Yogesh Mehra
21
to submit that once a party invokes Section
21
(Civil Appeal No. 6718 of 2013)
FAO(OS) (COMM) 211/2023 P age 32 of 71
25(2) of the Patents Act , it is eclipsed from subsequently pursu ing
revocation under Section 64(1).
94. It was further contended that the learned Single Judge duly
considered the principal prior arts , including Microsoft PowerPoint
2016, Auto - Auditorium, and Loom , and correctly distinguished them,
particularly noting in p aragraph 76 that MS P ower P oint ¶ V D X G L R R Y H U O D \
mechanism is fundamentally different from the Suit Patent.
95. Defending the reliefs granted, the learned Counsel argued that
the learned Single Judge correctly applied the triple test for interim
injunction. On irreparable harm, reliance was placed on paragraph 88
where the Court relied on Merck Sharp & Dohm e Corporation ( supra )
and recorded the market - distorting effect of continued infringement.
96. It was also contended that the deposit of Rs.50 lakhs was
justifie d , as the D efendant have no physical presence or assets in India,
and the direction was passed after considering the D H I H Q G D Q W ¶ s own
sales affidavit . The award of costs of Rs. 5 lakhs was also justified due
to the language used in the W ritten S tatement and the making of wild
and unfounded allegations, as recorded in paragraph 80 of the i mpugned
j udgment .
97. Finally , the learned Senior Counsel argued that the D efendant
repeatedly attempted to mislead the Court by citing isolated portions of
judgment, advancing half - truths, making sweeping and factually
incorrect assertions, and contradicting their own expert ¶ V reports. T he
learned Single Judge expressly deprecated such conduct and imposed
FAO(OS) (COMM) 211/2023 P age 33 of 71
costs, which further militates against the grant of equitable relief in
a ppeal.
98. In conclusion it was submitted that the learned Single Judge
applied the correct legal principles, infringement was established
through detailed claim mapping, validity challenges were rightly
rejected , and that the i mpugned j udgment reflects a sou nd exercise of
judicial discretion . T he present appeal therefore deserves to be
dismissed in limine, with the impugned judgment be ing upheld in toto .
ANALYSIS AND FINDINGS
99. At the outset, this Court is conscious that the present appeal
arises from an interlocutory order passed under Order XXXIX Rules 1
and 2 of the CPC, whereby the learned Single Judge exercis ed
discretionary jurisdiction in granting/refusing interim relief . It is trite
law that appellate interference with such discretionary orders is limited
and circumscribed. An appeal against an order granting or refusing an
injunction is not an appeal on facts, but an appeal on principle.
100. The legal position governing suc h appellate interference stands
firmly settled by the Supreme Court in Wander Ltd (supra), wherein it
was held that an appellate Court may interfere only where the discretion
exercised by the C ourt of first instance is shown to be arbitrary,
capricious, pe rverse, or contrary to settled legal principles, and not
merely because another view is possible on the same material . Th is
principle was also reiterated in Ram akant Am balal (Supra ) , and
consistently followed thereafter .
FAO(OS) (COMM) 211/2023 P age 34 of 71
101. Therefore, the threshold question before this Court is not whether
a different conclusion could have been arrived at on the same set of
facts but whether the methodology adopted by the learned Single Judge
conforms to settled principles of patent jurisprud ence, and whether the
findings suffer from legal infirmity , perversity , or misapplication of
law .
102. However, before examining whether the established principle s
governing patent infringement have been correctly applied, it is
necessary to first recapitulate the legal framework relating to the test of
infringement in patent disputes.
103. Th e decision of Division Bench of this Court in F. Hoffm ann -
La Roche Ltd . ( supra ) , comprehensively discussed the law relating to
test of infringement in patent matters . R elying on the seminal judgment
of the United States Supreme Court in Herbert Markm an and Positek,
Inc vs. Westview Instrum ents Inc . and Althon Enterprises, Inc.,
22
, this
Court recognized that the determination of infringement proceeds in
two distinct stages : (i) to determine the meaning and scope of the patent
claims asserted to be infringed (ii) C omparison of the properly
construed claims with the allegedly infringing product or process .
104. Th e first stage , namely claim construction, is a matter of law. The
second stage, i.e., comparison with the impugned product/process, is a
mixed question of law and fact.
22
517 U.S 370 (1996)
FAO(OS) (COMM) 211/2023 P age 35 of 71
105. W ith regards to the examination under first stage, the S upreme
C ourt in Bishwanath Prasad Radhey Shyam v. Hindustan Metal
Industries
23
in the context of claim construction held:
³ 43. As pointed out in Arnold v. Bradbury
24
, the proper way to
construe a specification is not to read the claims first and then see
what the full description of the invention is, but first to read the
description of the inventi on, in order that the mind may - be prepared
for what it is, that the in vention is to be claimed, for the patentee
cannot claim more than he desires to patent. In Parkinson v. Simon,
Lord Esher, M. R. enumerated that as far as possible the claims must
be so construed as to give an effective meaning to each of them, but
the spe cification and the claims must be looked at and construed
W R J H W K H U ´
106. Further, this court in the decision of Merck Sharp & Dohm e
Corporation ( supra ) on claim construction held as follows:
³ . Construction of the patent by this court, to verif y its coverage
is fundamental. This coverage depends on the nature of the claims
P D G H D Q G H Q D E O L Q J G L V F O R V X U H V V S H F L I L H G E \ 0 6 ' L Q L W V µ & R P S O H W H
6 S H F L I L F D W L R Q ¶ X Q G H U ) R U P R I W K H $ F W The words used to describe
the claims - as read b y a person of ordinar y ski ll in the art - determine
the breadth of the monopoly granted b y the patent, for which the
substantive (and indeed, substantial) rights under Section 48 of the
$ F W D U H W U L J J H U H G 7 K H µ ) L H O G R I W K H , Q Y H Q W L R Q ¶ G H V F U L E H G E \ 0 6 ' L Q
Form 2 states that the patent L V ³ G L U H F W H G W R S K D U P D F H X W L F D O
compositions comprising these compounds and the use of these
F R P S R X Q G V D Q G F R P S R V L W L R Q V ´ 7 K H L V V X H L V K R Z I D U W K H V H
F R P S R V L W L R Q V F D Q E H « « ´
48. At this juncture, the Court notes that :
- ³ the construction of claims is not something that can be considered
in isolation from the rest of the specification , Claims are intended to
be pithy delineations of the scope of monopol y, and they are drafted
in light of the much more detailed text of the description. A
specification must be read as a whole, just as any document is. It
must moreover be read as having been addressed to a person
23
(1979) 2 SCC 511
24
(1871) 6 Ch A 706
FAO(OS) (COMM) 211/2023 P age 36 of 71
acquainted with the technology in question. So it must take account
R I W K D W S H U V R Q V V W D W H R I N Q R Z O H G J H D W W K H W L P H ´
(see, Cornish, Llewel yn and Ap lin, Intellectual Propert y, Seventh
Ed, Sweet and Maxwell, pages 182 - ³ & R U Q L V K ´ 7 K R V H W R Z K R P
the above claims, examples and schemes are directed are not judges,
D E O \ D V V L V W H G E \ O D Z \ H U V W K H \ D U H ³ S H U V R Q V R I R U G L Q D U \ V N L O O L Q W K H
D U W ´ 7 K L V Z D V V W D W H G long ago in Hinks & Son v. Safety Lighting Co.
(1876) 4 Ch.D 607 when it was held that patent claims are
³ D G G U H V V H G Q R W W R W K H S X E O L F J H Q H U D O O \ E X W W R S H U V R Q V V N L O O H G L Q W K H
S D U W L F X O D U D U W ´ / L N H Z L V H W K L V Z D V V W D W H G D J D L Q L Q 7 X E H V / W G Y
Perfecta Seaml ess Steel, 1902 (20) RPC:
³ « W R H Q D E O H Q R W D Q \ E R G \ E X W D U H D V R Q D E O \ Z H O O L Q I R U P H G D U W L V D Q
dealing with a subject matter with which he is familiar to make the
thing, so as to make it available to the public at the end of the
S U R W H F W H G S H U L R G ´
While reading a patent claim, therefore, the Court must not reinvent
the wheel and mandate disclosures of techniques and product
rehearsed in the industry alread y, but only examine what is new in
the invention and how to arrive there from the state of the art.
56. Section 3(d) does not work backwards, such that two independent
patent claims are to be construed in reference to each other. Each
claim is regulated b y its own terms, subject to the statutory
prescriptions of inventive step and indus trial applicabilit y.
Moreover, such an argument also introduces an undeserved
subjectivit y in the patent construction process. A patent is construed
by reference to the words used b y the inventor, and not her
subjective intent as to what was meant to be co vered (as was noted
in Kirin - Amgen Inc v. Hoechst Marion Roussel Limited, [2004]
8 . + / ³ > W @ K H U H L V Q R Z L Q G R Z L Q W R W K H P L Q G R I W K H S D W H Q W H H R U W K H
author of an y other document. Construction is objective in the sense
that it is concerned with what a reaso nable person to whom the
utterance was addressed would have understood the author to be
X V L Q J W K H Z R U G V W R P H D Q ´ @ 0 H U H O \ E H F D X V H D Q L Q Y H Q W R U D S S O L H V I R U
a later patent - that is alread y objectivel y included in a prior patent,
but which the inventor subje ctively feels needs a separate patent
application - does not mean that it is taken to be at face value. The
intent of the inventor, through the use of the words that have been
employed, must be judged, but the subjective intent cannot replace
a detailed an al ysis of the text of the patent. This Court has alread y
noted - on a different basis - that the coverage of SPM in the suit
patent is questionable on account of Section 10(4)(b), although the
issue is ultimately tied to important factual disputes. The sam e
decision significantl y provided the following rationale for patent
construction in terms of the words and expressions used:
³ 7 K H F R X U W V R I W K H 8 Q L W H G . L Q J G R P W K H 1 H W K H U O D Q G V D Q G * H U P D Q \
certainl y discourage, if they do not actuall y prohibit , use of the
patent office file in aid of construction. There are good reasons : the
FAO(OS) (COMM) 211/2023 P age 37 of 71
meaning of the patent should not change according to whether or not
the person skilled in the art has access to the file and in any case life
is too short for the limi ted assistance which it can provide. It is
however frequentl y impossible to know without access, not merely
to the file but to the private thoughts of the patentee and his advisors
as well, what the reason was for some apparentl y inexplicable
limitation in the extent of the monopol y claimed. One possible
explanation is that it does not represent what the patentee reall y
meant to say. But another is that he did mean it, for reasons of his
own; such as wanting to avoid arguments with the examiners over
enablement or prior art and have his patent granted as soon as
possible. This feature of the practical life of a patent agent reduces
the scope for a conclusi on that the patentee could not have meant
Z K D W W K H Z R U G V D S S H D U W R E H V D \ L Q J ´
This Court is furt hermore also cautious of using either Section 3(d)
or the abandonment of a subsequent patent application to read into
the terms of a prior application which has to be construed on its own
terms. Accordingl y, while the coverage of SPM is shrouded in some
un certaint y that requires detailed examination of facts and evidence,
the Court notes that the Sitagliptin free base is prima facie disclosed,
claimed and thus covered by the suit patent.
107. Further, the Division Bench of this Court in F. Hoffm ann - La
Roche Ltd . ( supra ), la id down the following observation with regards
to claim construction which makes an interesting read:
33. Before we apply the aforenoted legal position to the facts of the
instant case we need to discuss the legal position concerning
construction of claims. In the decision reported as AIR 1969
BOMBAY 255 FH & B v. Unichem Laboratories it was held that
spec ifications end with claims, delimiting the monopoly granted by
the patent and that the main function of a Court is to construe the
claims without reference to the specification; a reference to the
specification being as an exception if there was an ambigui ty in the
claim. Claims must be read as ordinary English sentences without
incorporating into them extracts from body of specification or
changing their meaning by reference to the language used in the
body of the specification. In a recent decision in FAO (OS) No.
190/2013 Merck v. Glenmark the Division Bench held that claim
construction to determine the coverage in the suit patent has to be
determined objectively on its own terms with regard to the words
used by the inventor and the context of the invention in terms of the
knowledge existing in the industry. Abandonment of an application
FAO(OS) (COMM) 211/2023 P age 38 of 71
cannot remove what is patented earlier nor can it include something
that was excluded earlier and that a patent is construed by the terms
used b y the inventor and not the inventors subjective intent as to
what was meant to be covered. Merely because an inventor applies
for a latter patent that is already objectively included in a prior
patent, but which inventor subjectively feels needs a separate patent
application, doesn't mean it is to be taken at face value and therefore
neither Section 3(d) or abandonment of subsequent patent
application can be used to read into terms of prior application,
which has to be construed on its own terms. In the dec ision reported
as 415 F. 3d 1303 Edward H. Phillips v. AWH Corporation it was
held that claims have to be given their ordinary and general meaning
and it would be unjust to the public, as well as would be an evasion
of the law, to construe a claim in a man ner dif ferent from plain
import of the terms and thus ordinary and customary meaning of the
claim term is the meaning of the term to a Person of Ordinary Skill
in the Art as of effective date of filing of the patent application. In
case of any doubt as to what a claim means, resort can be had to the
specification which will aid in solving or ascertaining the true intent
and meaning of the language employed in the claims and for which
the court can consider patent prosecution history in order to
understand a s to how the inventor or the patent examiner understood
the invention. The Court recognized that since prosecution is an
ongoing process, it often lacks clarity of the specification and thus
is less useful for claim construction. The Court also recognizes that
having regard to extrinsic evidence such as inventor testimony,
dictionaries and treaties would be permissible but has to be resorted
to with caution because essentially extrinsic evidence is always
treated as of lesser significance in comparison with intrinsic
evidence. In the decision reported as 457 F.3. 1284 (United States)
Pfizer v. Ranbaxy the Court held that the statements made during
prosecution of foreign applications are irrelevant as they are in
response to unique patentability requirements overseas. The Court
also held that the statement made in later unrelated applications
cannot be used to interpret claims of prior patent. In the decision
reported as 1995 RPC 255 (UK) Glaverbel SA v. British Coal Corp
the Court held that a patent is constr ued objecti vely, through the
eyes of a skilled addressee. The Court also held that the whole
document must be read together, the body of specification with the
claims. But if claim is clear then monopoly sought by patentee
cannot be extended or cut down by reference to the rest of the
specification and the subsequent conduct is not available to aid the
interpretation of a written document .
63. Cipla relied very heavily on what was stated to be admissions
P D G H L Q W K H S R O \ P R U S K L F S D W H Q W 8 6 µ It is a card inal principle of
claim construction that the claim must be interpreted on its own
language and if it is clear then resort cannot be had to subsequent
FAO(OS) (COMM) 211/2023 P age 39 of 71
statements or documents either to enlarge its scope or to narrow the
same .
81. It is therefore left to the Court to study the specification and
claims of the suit patent and note that as they are in relation to
Erlotinib Hydrochloride and are not restricted to any specific
Polymorph, they would be infringed by any manufacture of
Polymorph B by a third party as the same would use the subject
P D W W H U R I , 1 µ D V L W V E D V L F V W D U W L Q J S R L Q W 7 K H / H D U Q H G 6 L Q J O H
Judge has correctly appli ed the principle in the decision reported as
AIR 1969 Bom 255 F.H & B v. Unichem, in stating that in case of
any ambiguity of the Clai m of the suit patent then resort can be taken
to the specification of the said suit patent and nothing else. He
correctly recognized that a Purposive Construction of the claims is
necessary in order to not construe claims too narrowly. Y et we find
that neither of these tests have been applied in the present case to
construct the claims themselves and hence a conclusion that the IN
µ S D W H Q W F R Y H U V 3 R O \ P R U S K V $ % L W V H O I L V H U U R Q H R X V
108. The legal position emerging from the above reading makes the
path of claim construction clear. The c laims of a patent define the scope
of the monopoly granted to patentee, D Q G W K H S D W H Q W H H V ¶ U L J K W V D U H
confined strictly to what is claimed . W hat is not claimed is deemed to
be disclaimed. Claim construction must be done obje ctively by focusing
on the plain language of the claims.
109. However, the c laims can be construed purposively , keeping in
mind the technical context of the invention, so as not to unduly narrow
the scope of protection. While the complete specification serves as a
guide to understand the technical meaning and context of the claims , it
cannot be used to enlarge , rewrite , or substitute the language of the
claims. C laims cannot be construed in isolation as they are intended to
be concise delimitations of the mono poly and must therefore be read in
light of, and together with, the entirety of the specification .
FAO(OS) (COMM) 211/2023 P age 40 of 71
110. I mportant ly, the scope of the claims must remain consistent for
both validity and infringement. A patentee cannot adopt a narrow
construction to avoid prior art challenges and simultaneously seek a
broad construction to allege infringement. Such an inconsistent
approach is impermissible in law.
111. The purpose of claim construction is thus to identify the essential
features, elements, and limitations of the invention as claimed, without
importing extraneous material from the specification or unduly
restricting the scope of protection.
112. 7 K H ' H I H Q G D Q W ¶ V F R Q W H Q W L R Q W K D W W K H 6 X L W 3 D W H Q W K D V E H H Q
construed narrowly for validity and broadly for infringement is
mis conceived. A careful reading of the i mpugned judgment shows that
the essential features have been consistently identified in both contexts
as : (i) layered media archi tecture involving background first media and
foreground second media; and (ii) post - creation configurability of
interactive elements, including CTAs, without re - recording. The
alleged requirements of a third layer, invisibility of CTAs during
authoring, and movability of PiP are thus not essential claim limitations.
There is therefor e no impermissible oscillation in claim scope.
113. Once the claims are properly construed under first stage , the
second stage requires a comparison between the essential elements of
the patented claims and the elements of the allegedly infringing product
or process .
FAO(OS) (COMM) 211/2023 P age 41 of 71
114. In cases where every element of the claim is found in the
impugned product or process, infringement is established on a literal
basis. However, it is well recognized that in many cases, the infringing
product or process may not reproduce every c laimed element verbatim.
In such circumstances, the Doctrine of Equivalent s becomes relevant.
115. T he D octrine of E quivalents applies where the differences
between the impugned product or process is so minor and insignificant
t hat they would effectively deprive the patentee the benefits of his
invention.
116. Th u s , this doctrine prevents an infringer from escaping liability
by making only minor, insubstantial, or cosmetic changes to a patented
invention while appropriating its core inventive concept.
117. Th e Div ision Bench of this court , in FMC Corporation ( supra ) ,
F O D U L I L H G W K H O D Z U H J D U G L Q J ³ Q R Q - O L W H U D O ´ S D W H Q W L Q I U L Q J H P H Q W D Q G the
application of the D octrine of E quivalents , particularly in the context of
process patents. The FMC Corporation ( supra ) is reproduced for the
sake of ease of analysis ±
24. The doctrine of equivalents is applicable where a product or
process is not identical to the claim granted in a patent but its
essential elements are sufficiently similar to the pate nted claim, so
as to construe the product or process as infringing the patent.
*****
31. The doctrine of equivalents has been accepted in the
jurisprudence to protect patent rights from being infringed by
infringers using colourable method of making some minor,
insubstantial variations to escape the reach of the patent. The
doctrine of equ ivalents, in essence, seeks to address infringers who
introduce minor variations as subterfuge to defeat patent rights. The
FAO(OS) (COMM) 211/2023 P age 42 of 71
doctrine is applied to ascertain whether there is an infringement by
excluding any insubstantial, minor or trivial changes that are
designed to deprive the patentee of the benefits of his invention.
32. The doctrine of equivalents is applicable only in cases where
the variation or difference between the product or process and the
patented claim is insignificant, insub stantial and not essential to the
patented claim. In order to determine whether, on the basis of
doctrine of equivalents, a product or process infringes the patent, it
is essential to determine the essence and scope of the patent. It is
important to unders tand as to what is the invention that is patented.
If the invention is infringed by a product or process, the minor
differences in the non - essential trappings of the product or process
would be irrelevant
33.This Court is unable to acce pt the contention that the doctrine of
equivalents is only relevant in case of a product patent and not a
process patent. If an innovation ± whether it is a product or a
process ± is pirated, an action to prevent such infringement cannot
fail solely for th e reason that the offending product or the process
has certain minor and insubstantial variations or differences as
compared to the patent.
34. The triple test ± substantially the same function, in substantially
the same way and to yiel d the same result ± is applied primarily to
products or devices. A device which substantially performs the same
function, in substantially the same way, and accomplishes the same
result, may infringe the patent rights. However, when it comes to a
process o r a method, this test may require to be suitably adapted . In
a case where a method of achieving a result is the essence of the
patent, achieving substantially the same result would clearly not be
relevant. The method with which the result is obtained would be
material to determining whether the patent has been infringed. The
test of substantial identity of the competing methods must
necessarily be viewed by identifying the essential elements and steps
of the said process and then examining the manner in whi ch the key
elements interact in each essential step that the process/method
entails to yield the given result. The essential elements of the given
process; the necessary steps of that process; and the manner in
which the essential elements interact at each step must be
substantially similar to the patented process or method to sustain a
claim of infringement. The variations in the competing methods
require to be compared to ascertain whether they are minor/trifling
and inessential and have been introduced o nly to camouflage piracy .
118. Thus, it is clear from the above discussion that an infringer
cannot escape liability by making minor or insubstantial changes to a
patented invention. Variations in the non - essential features or trappings
of a product or process are irrelevant where the e ssential elements of
FAO(OS) (COMM) 211/2023 P age 43 of 71
the invention have been appropriated. The Doctrine of Equivalents
therefore prevents colourable or cosmetic modifications from defeating
patent rights and applies equally to both product patents and process
patents.
119. However, in parag raph 34, the decision in FMC Corporation
(supra) draws a clear distinction in the applicability of the doctrine of
equivalents to process patents on the one hand and product or device
patents on the other. This court X S K H O G W K H ³ W U L S O H W H V W ´ R U W K H ³ I X Q F W L on -
way - U H V X O W ´ W H V W I R U D V V H V V L Q J L Q I U L Q J H P H Q W L Q S U R G X F W R U G H Y L F H S D W H Q W
but held that it cannot be applied mechanically to process patent
because, where the patented invention lies in the method itself, merely
achieving the same result is not determinat ive . Therefore, instead of the
³ W U L S O H W H V W ¶ W K L V F R X U W D G D S W H G ³ ( V V H Q W L D O ( O H P H Q W 7 H V W ´ I R U S U R F H V V
patent, holding that infringement must be examined by identifying the
essential elements and steps of the patented process and then comparing
how those el ements interact at each essential stage in the competing
method. If the competing process is substantially similar in its essential
elements, steps, and interactions, infringement may be made out; and
any variations will not avoid liability if they are min or, inessential, or
introduced only to shield itself from infringement. The aforesaid
relevant finding read as under:
³ The test of substantial identity of the competing methods must
necessarily be viewed by identifying the essential elements and steps
of the said process and then examining the manner in which the key
elements interact in each essential step that the proces s/method
entails to yield the given result. The essential elements of the given
process; the necessary steps of that process; and the manner in
which the essential elements interact at each step must be
substantially similar to the patented process or meth od to sustain a
FAO(OS) (COMM) 211/2023 P age 44 of 71
claim of infringement. The variations in the competing methods
require to be compared to ascertain whether they are minor/trifling
and inessential and have been introduced only to camouflage
piracy ´
120. Thus, the settled legal framework for d etermining infringement
of a patent process may thus be summarized to: (a) First, the claims of
the patent asserted to be infringed must be construe d to ascertain their
scope, meaning, essential elements and limitation s, (b) Second, the
properly construed claims must be compared with the allegedly
infringing process or product , (c) If every essential element is found,
literal infringement is established, (d) Even if literal infringement is
absent, t he D octrine of E quivalents may apply, (e) In the case of a
product or device patent, infringement by equivalence is assessed by
applying the ³ function - way - result ´ triple test; whereas in the case of a
process or method patent, infringement by equivalence depends on
whether there is substantial identity of the met hod itself, assessed by
comparing the essential elements of the process, the necessary steps
involved, and the manner in which those essential elements interact at
each step.
121. It is against this settled legal framework that the i mpugned
judgment must now be examined and analysed.
122. Before proceeding to examin e the merits of the case, this Court
reiterate s that an appeal against an order of the Commercial Court, o n
an application for inter im injunction in an intellectual property dispute
is an appeal on pri nciple.
FAO(OS) (COMM) 211/2023 P age 45 of 71
123. This Court does not sit in appeal over the factual appreciation of
evidence as would be done under Section 96 of the CPC . Th e task of
this Court is confined to examining whether the learned S ingle J udge
applied the correct legal principles , adopt ed a legally sound
methodology, considered the relevant material, and arrived at a
conclusion that is not arbitrary, perverse, or contrary to settled law .
Only if these parameters are found to have been violated would
appellate interference be warranted.
124. With the a foresaid legal principles in mind, we now proceed to
examine the present case on merits.
125. The first step in determining infringement , as noted above , is the
construction of the claims of the Suit P atent.
126. Claim 1, the principal system claim, sets out this architecture by
requiring the presence of a first media presented as background content,
a second media presented as a foreground PiP overlay, and interactive
elements configured in a manner that permits u ser engagement. Claim
39, the principal method claim, complements this architecture by
prescribing method steps for creating and rendering such interactive
content, including steps for capturing user interaction and enabling
post - creation modification .
127. Th e learned Single Judge in the i mpugned j udgment effectively
construed and ascertained the admitted essential elements/inventive
steps of claim 1 and claim 39. Learned Single Judge has noted in the
i mpugned j udgment that the Plaintiff has identified seven inventive
FAO(OS) (COMM) 211/2023 P age 46 of 71
steps in its replication, namely A1, A2, A3, A4, B5, C6, and C7. Out of
these, the Defendant has admitted the presence of three features, namely
A2, A3, and B5, in its product. The dispute, therefore, is confined to
the remaining four features, namely A1, A4, C6, and C7. The
description of these disputed features, as extracted from the replication ,
is reproduced for ready reference:
A. Content presented in Layers while both Authoring (creation)
& Playing (Viewing) retains INTERACTIVE experience
eve n after creation (but looks like single video), the first
media visual content retains interactive experience for
viewers to interact.
1 R Q H R I W K H S U R Y L G H G S U L R U D U W V ³ S U H V H Q W W K H L Q W H U D F W L Y H F R Q W H Q W ´
L Q ³ / D \ H U H G S U H V H Q W D W L R Q ´ W R retain interactive use r experience while
D X W K R U L Q J D Q G S O D \ L Q J µ L Q Y H Q W L R Q Q H Y H U F R P E L Q H V O D \ H U V
(background & foreground) as a single video [Refer section II in
below table in right column]
The invention brings maximum internet bandwidth optimisation by
keeping second media video/audio content component smaller and
separated from background first media content and retains best
interactive user experience by using layered presentation
D S S U R D F K E R W K Z K L O H D X W K R U L Q J D Q G S O D \ L Q J W K H F R Q W H Q W « «
The invention never combines b ackground and foreground
F R Q W H Q W D V D V L Q J O H Y L G H R «
If layers are merged/combined, the content in layers cannot
retain interactive experience ± it becomes noninteractive. First
media content cannot be changed without re - recording entire
video as no layers H [ L V W V 6 R W K H µ L Q Y H Q W L R Q S U R G X F H V ³ V L Q J O H
Y L G H R N L Q G ´ R X W S X W E X W L Q O D \ H U V W R P D L Q W D L Q L Q W H U D F W L Y H
experience of visual content.
2. None of the provided prior arts disclose ³ ) L U V W P H G L D
F R Q W H Q W ´ as interactive content and its respecti ve ³ ) L U V W 0 H G L a
+ R O G H U ´ & ³ ) L U V W P H G L D F R Q W D L Q H U ´ as interacti ve user interface.
[Refer section III in below table in right column]
3. None of the provided prior arts disclose ³ ) L U V W P H G L D ´
visual content can be interacted b y second user while pla ying
interactive conte nt [Refer section III in below table in right column]
FAO(OS) (COMM) 211/2023 P age 47 of 71
4. None of the provided prior arts disclose picture - in - picture
³ V H F R Q G P H G L D ´ D V O D \ H U H G S U H V H Q W D W L R Q > 5 H I H U V H F W L R Q , , L Q E H O R Z
table in right column]
B. Content changes in a Particular layer (background first
media content changes) allows modification without affecting
other layers(Foreground second media video content).
5. None of the provided prior arts disclose characteristic of ³ ) L U V W
P H G L D K R O G H U ´ , w here First media can be changed for alread y
recorded & stored interactive content from interactive content
module. [Refer section IV in below table in right column]
C. Content (set button with links, text info like product pricing
details etc) F R Q I L J X U H G W K U R X J K ³ F R Q I L J X U D W L R Q L Q W H U I D F H ´ D Q G
stored as data (interactive content settings) is
changeable/configurable even for already created & stored
interactive content without need of rerecording the video:
6. None of the provided pr ior arts disclose characteristic of
³ Configuration interface ´ which loads alread y configured
interactive content settings of stored interactive content(from
interactive content module), further it allows to configure interactive
content settings for alread y created interactive content. Hence, First
user can change the information (text information like product price,
stock details etc or CTA button with links) displayed (configured
through configuration interface) in interactive content even after
creating interactive content [Refer section V in below table in right
column]
7. None of the provided prior arts disclose characteristic of
³ L Q W H U D F W L Y H F R Q W H Q W V H W W L Q J V ´ where call - to - action buttons are
configured ³ L Q ´ interactive content (to look like a part of in the
video, Fig. 7B) . Further call - to - action user interface button are
enabled (as per interactive content settings data) and displayed onl y
while Rendering and playing as a part of interacti ve content. [Refer
section VI & VII in below tab le in right column]
Eg: First user can configure Product Price information (text) in
the already created and stored interactive content without need
of re - recording video. Like running Flash offer on price
mentioned in the interactive content. Further, First user can
configure call - to - action button URL to another ecommerce
website if existing linked ecommerce website is running out - of -
stock, without need of re - recording.
FAO(OS) (COMM) 211/2023 P age 48 of 71
128. Thus, applying the legal tests ascertained above, it must be
determined whether the four disputed inventive steps are present in the
' H I H Q G D Q W ¶ V S U R G X F W $ G G L W L R Q D O O \ it has to be examined, that even if
there are differences between the essential features / inventive steps of
W K H 6 X L W 3 D W H Q W D Q G W K H ' H I H Q G D Q W ¶ V S U R G X F W . If these differences are so
minor or insignificant then they do not enable the Defendant to avoid
infringement.
129. T he learned S ingle J udge correctly appl ied the settled principles
for infrin gement, compared the essential features/ inventive steps of the
S uit P atent with the D H I H Q G D Q W ¶ V S U R G X F W D Q G U H W X U Q H G W K H I R O O R Z L Q J
finding s on each of the four disputed inventive steps:
$ I W H U S H U X V L Q J W K H P D Q Q H U L Q Z K L F K W K H ' H I H Q G D Q W ¶ V S U R G X F W
functions, insofar as A1 and A4 are concerned, it would be
L Q F R U U H F W I R U W K H ' H I H Q G D Q W ¶ V W R D U J X H W K D W W K H L U S U R G X F W G R H V Q R W
have a layered presentation or a PIP second media. A bare perusal
R I W K H ' H I H Q G D Q W ¶ V S U R G X F W Z R X O G V K R Z W K D W W K H I H D W X U H R I 3 , 3
exists . However, the absence of this feature is argued on the basis
that it is not in the form of a moveable window. The question
whether the window is moveable or not, is irrelevan t insofar as the
3 O D L Q W L I I ¶ V S U R G X F W L V F R Q F H U Q H G 7 K H S U R G X F W L V I R F X V H G R Q W K H
existence of two media i.e. the first, and the second media in the
form of a PIP . The movement is not an essential feature of the
3 O D L Q W L I I ¶ V S U R G X F W E X W W K H I D F W W K D W W K H I L rst and second media is
integrated in a manner as to sync the audio with the video and the
image is essential . The syncing of the audio, video and the image
F O H D U O \ H [ L V W V L Q W K H ' H I H Q G D Q W ¶ V S U R G X F W 7 K X V W K H G L V W L Q F W L R Q W K D W
the Defendant seeks to draw i s of no consequence when judging
W K H F R U H R I W K H 3 O D L Q W L I I ¶ V S U R G X F W
, Q V R I D U D V & > ³ & R Q W H Q W & R Q I L J X U H G W K U R X J K & R Q I L J X U D W L R Q
Interface" which loads already configured interactive content
V H W W L Q J V R I V W R U H G L Q W H U D F W L Y H F R Q W H Q W ´ @ and C7 ["...call - to - action
user interface button are enabled (as per interactive content
settings data) and displayed only while Rendering and playing as
D S D U W R I W K H L Q W H U D F W L Y H F R Q W H Q W @ D U H F R Q F H U Q H G W K H ' H I H Q G D Q W ¶ V
FAO(OS) (COMM) 211/2023 P age 49 of 71
argument is that there is no separ ate configuration interface for
the Call - to - Action button in the sandwiched layer.
68. A perusal of the video showing the functioning of the
' H I H Q G D Q W ¶ V S U R G X F W Z R X O G U H Y H D O W K D W W K H & D O O - to - Action element
can be superimposed on any of the two layers, or even a new layer
can be created. The mere fact that the said feature is importable
D V D Q H O H P H Q W L Q W K H ' H I H Q G D Q W ¶ V S U R G X F W R Q W R W K H I L U V W O D \ H U R U
the second layer, or even in between would mean that the same
would read onto the claims of the suit patent. The Defendant
cannot escape infringement on the basis of the location of the Call -
to - $ F W L R Q E X W W R Q 7 K H H I I H F W R I W K H ' H I H Q G D Q W ¶ V S U R G X F W L V W K H V D P H
as contemplated in the patent. After the merging of the first and
the second media, some action can be taken by the viewer or the
F R Q V X P H U Z K L F K L V H Q D E O H G E R W K L Q W K H 3 O D L Q W L I I ¶ V D Q G L Q W K H
' H I H Q G D Q W ¶ V S U R G X F W 7 K H ' H I H Q G D Q W ¶ V F K D U D F W H U L V D W L R Q R I W K H
configuration interface into a mere Call - to - Action button is itself
misplaced. The action t hat can be taken by the consumer or viewer
could be in any form, eit her for buying a product or for adding a
comment or for sending a query. Depending upon the application
and implementation, the said element can be added both in the
3 O D L Q W L I I ¶ V D Q G ' H I H Q G D Q W ¶ V S U R G X F W 7 K X V W K H P H U H Q R Q - existence
of a sandwich layer would not obviate the infringement, inasmuch
as by applying the doctrine of equivalence, the functionality of
E R W K W K H 3 O D L Q W L I I ¶ V D Q G W K H ' H I H Q G D Q W ¶ V S U R G X F W L V D O P R V W
identical. Insofar as C 7 is concerned, the same is almost identical
to C6 and has been dealt with above .
130. This Court, at the outset, finds no error of principle in the
application of the above - mentioned infringement test and the Doctrine
of Equivalents by the learned Single Jud ge. The learned Single Judge
has compared all four disputed inventive steps Z L W K W K H ' H I H Q G D Q W ¶ V
product and, only after undertaking such an assessment, returned a
prima facie finding of infringement.
131. Be that as it may, we now proceed to address the submissions
made by the learned Counsel for the Defendant who has challenged the
findings in respect of each of the four disputed inventive steps, by and
large two principal grounds have been urged, which, according to him,
FAO(OS) (COMM) 211/2023 P age 50 of 71
permeate the entirety of the i mp ugned j udgment : (i) First, it was
submitted that, despite relying on F. Hoffmann - La Roche Ltd. (supra)
and recognising the correct test of infringement, the learned Single
Judge has, in substance, granted interim relief on the basis of an
impermissible pro duct - to - product comparison instead of undertaking
the legally mandated claim - to - product mapping. It is further contended
that (i) instead of comparing the prior art references with the claims of
the Suit Patent, the impugned judgment wrongly compares the p rior art
Z L W K W K H 3 O D L Q W L I I ¶ V F R P P H U F L D O S U R G X F W (ii) Second, it was contended
that the doctrine of equivalents has been wrongly applied in the present
case. According to the learned Counsel for the Defendant, the impugned
judgment posed the wrong legal question by merely examining whether
the Canva feature produces the sa me effect or functionality as the Suit
Patent, while ignoring the other mandatory components of the
equivalence inquiry namely, whether the substituted elements perform
substantially the same work, interact and operate in substantially the
same way, and a chieve substantially the same result as each of the
essential features of the Suit Patent.
132. Keeping in view the conclusions recorded in the i mpugned
j udgment , we shall now briefly examine each of these disputed
inventive steps and the challenges raised by the defendant thereto.
133. On the first ground, we are unable to agree with the contention
of the learned Counsel for the Defendant. It is settled law that a
judgment of a court must not be read selectively and must be read as a
whole. The reliance placed by the learned Counsel for the Defendant on
paragraph 68 of the impugned judgment particularly the observations
FAO(OS) (COMM) 211/2023 P age 51 of 71
that the µ mere non - existence of sandwiched layer would not obviate
infringement ¶ D V W K H µ H I I H F W R I W K H ' H I H Q G D Q W ¶ V S U R G X F W L V W K H V D P H ¶ D Q G
µ the fu Q F W L R Q D O L W \ R I E R W K W K H 3 O D L Q W L I I ¶ V D Q G ' H I H Q G D Q W ¶ V S U R G X F W L V
D O P R V W L G H Q W L F D O ¶ to contend that the learned Single Judge undertook an
impermissible product - to - product comparison is unsustainable.
134. This Court is of the view that, upon a cumulative and holistic
reading of the impugned judgment, there is no doubt that the conclusion
reached by the learned Single Judge was arrived at after comparing the
I H D W X U H V R I W K H ' H I H Q G D Q W ¶ V S U R G X F W Z L W K W K H F O D L P V R I W K H 6 X L W 3 D W H Q W
The relevant findings of the lea rned Single Judge, evidencing
application of the correct test of claim - to - product comparison, are
reproduced below for ease of reference:
³ 7 K H 3 O D L Q W L I I K D V D O V R D W W H P S W H G W R G H P R Q V W U D W H Q R W M X V W W K H
manner in which the Defendant's 'Present and Record ' feature
functions, but also tried to establish identity by showing the manner
in which the Plaintiffs product 'My Show and Tell' compares with
the Defendant's 'Present and Record' feature. For the present,
however, the Court is merely focusing on the Def endant's product
feature in comparison with the claims of the patent specification,
rather than comparing the two products directly.
90. In terms of the above order, the deponent filed an affidavit dated
15th July 2022. According to the affidavit, Defendan W ¶ V & D Q Y D
S U R G X F W L V D Y D L O D E O H L Q W K U H H I R U P V µ & D Q Y D ) U H H ¶ µ & D Q Y D 3 U R ¶ D Q G
µ & D Q Y D I R U ( Q W H U S U L V H ¶ 7 K H O D W W H U W Z R D U H V X E V F U L S W L R Q - based
models, whereas the first one provides unpaid/free access to certain
features on the Canva platform. Data has been fi led in respect of all
three forms indicating the number of users and net revenue from
sales. The said data in the affidavit, which has been perused by this
& R X U W L V Q R W E H L Q J U H S U R G X F H G L Q R U G H U W R P D L Q W D L Q ' H I H Q G D Q W ¶ V
commercial confidentiality. The affid avit reveals that the use of the
µ 3 U H V H Q W D Q G 5 H F R U G ¶ I H D W X U H E \ X V H U V R I W K H ' H I H Q G D Q W ¶ V & D Q Y D
product is substantially low when compared to the total number of
users and subscribers R I W K H ' H I H Q G D Q W ¶ V & D Q Y D S U R G X F W
Considering the fact that the Plaintif f has made out a case of
infringement, especially by a mapping of claim charts, and that the
Defendant has been unable to make a credible challenge to the
FAO(OS) (COMM) 211/2023 P age 52 of 71
3 O D L Q W L I I ¶ V S D W H Q t, the balance of convenience also lies in favour of
the Plaintiff whose market oppo rtunities for licensing and revenue
generation can be completely eroded, if in case an interim injunction
is not granted at this stage.
76. A perusal of the presentation submitted by the Defendant
would show that the manner in which the audio overlay has b een
made on each of the slides, is completely different from the
3 O D L Q W L I I ¶ V V X L W S D W H Q W . In the PPT 2016 version demonstration
provided by the Defendant, the audio is recorded separately on each
of the slides, and not while the slides presentation is runn ing
continuously with a separate overlaying of a video. This slide - by -
slide content plus audio recording cannot be equated with the
3 O D L Q W L I I ¶ V S U R G X F W Z K L F K F R Q W H P S O D W H V D V H S D U D W H I L U V W P H G L D D Q G
separate second media for running in a coordinated and
sy nchronised manner. The working of the 2016 PPT, as shown to the
Court, is different from the subject product as shown by the
Defendant.
70. From the decisions extracted above, and after analysing the
F O D L P H G I H D W X U H V D Q G W K H ' H I H Q G D Q W ¶ V S U R G X F W it is clear that the
highlighting of differences between the patented claims and the
' H I H Q G D Q W ¶ V S U R G X F W L V D Q D W W H P S W W R G L V W U D F W W K H & R X U W I U R P W K H
R Y H U D O O L G H Q W L W \ $ F R P S D U L V R Q R I W K H F O D L P V D Q G W K H ' H I H Q G D Q W ¶ V
S U R G X F W Z R X O G H V W D E O L V K W K H R S S R V L W H « « ´
135. Upon a reading of the above paragraphs, it is abundantly clear
that the learned Single Judge granted interim relief on the basis of a
V W U X F W X U H G F R P S D U L V R Q E H W Z H H Q W K H S D W H Q W H G F O D L P V D Q G W K H ' H I H Q G D Q W ¶ V
product. The mapping table in paragraph 70 of the i m pugned j udgment
clearly demonstrates a claim - centric analysis. Further, in paragraph 59,
the learned Single Judge expressly clarified that the Court was focusing
R Q W K H ' H I H Q G D Q W ¶ V S U R G X F W L Q F R P S D U L V R Q Z L W K W K H F O D L P V R I W K H S D W H Q W
specification, and not on a direct product - to - product comparison. The
learned Single Judge also analysed the prior art with the S uit P atent and
then returned the findings. We therefore find no error of principle in the
approach adopted by the learned Single Judge either in claim mapping
or in comparing the prior art with the claims of the Suit Patent.
FAO(OS) (COMM) 211/2023 P age 53 of 71
136. The second principal contention of the learned Counsel for the
Defendant is that the doctrine of equivalents has been wrongly applied
in the present case. Upon a perusal of the impugned judgment, we are
of the view that the learned Single Judge, while exercising prima facie
discretionary jurisdiction, did not commit any error of principle in
applying the Doctrine of Equivalents . The learned Single Judge
expressly recorded the correct legal test governing equivalence as laid
down in Sotefin S.A . (supra) and Raj Parkash (supra).
137. Further, in paragraph 86 of the impugned judgment, the learned
Single Judge returned a categorical prim a facie finding that all the
H V V H Q W L D O H O H P H Q W V R I W K H 6 X L W 3 D W H Q W H [ L V W L Q W K H ' H I H Q G D Q W ¶ V S U R G X F W
The relevant portion is reproduced below:
³ , Q V R I D U D V Q R Q - L Q I U L Q J H P H Q W L V F R Q F H U Q H G W K H ' H I H Q G D Q W ¶ V
Expert states that all the elements of the Plainti I I ¶ V S D W H Q W G R Q R W
H [ L V W L Q W K H ' H I H Q G D Q W ¶ V S U R G X F W 7 K H F K D U W H [ W U D F W H G L Q S D U D J U D S K
70 above clearly demonstrates that the so - called differences, which
the Defendant seeks to rely upon are, in fact, non - existent. The
I X Q F W L R Q D O L W \ R I W K H ' H I H Q G D Q W ¶ V S U R G uct, which has been
demonstrated to the Court, clearly falls within the claims of the suit
patent and all the essential elements of the suit patent exist in the
' H I H Q G D Q W ¶ V S U R G X F W . In any event, the settled law on the test for
infringement, as set out in Raj Parkash (supra) and Sotefin SA
(supra) is that the trivial or minor differences between the patented
L Q Y H Q W L R Q D Q G W K H ' H I H Q G D Q W ¶ V S U R G X F W Z R X O G Q R W S H U P L W W K H
' H I H Q G D Q W W R H V F D S H W K H L Q I U L Q J H P H Q W ´
138. The learned Single Judge, before arriving at the conclusion
recorded in paragraph 86, effectively applied the Doctrine of
Equivalents by undertaking a structured comparison of each essential
L Q Y H Q W L Y H I H D W X U H R I W K H 6 X L W 3 D W H Q W Z L W K W K H ' H I H Q G D Q W ¶ V S U R G X F W . The
learned Single Judge examined whether any of the four disputed
essential features were altogether absent, or whether they had merely
FAO(OS) (COMM) 211/2023 P age 54 of 71
been substituted by insubstantial variations introduced to camouflage
infringement.
139. In applying the doctrine to inve ntive steps A1 and A4 and
F R P S D U L Q J W K H P Z L W K W K H F R U U H V S R Q G L Q J H O H P H Q W V R I W K H ' H I H Q G D Q W ¶ V
S U R G X F W W K H O H D U Q H G 6 L Q J O H - X G J H K H O G W K D W W K H ³ P R Y D E L O L W \ ´ R I W K H 3 L 3
window is not an essential feature of the claimed invention, and that
what is essential is t he integrated and synchronised layered media effect
produced by the interaction of the first and second media. The
contention that the learned Single Judge engaged in an impermissible
product - to - product comparison cannot be accepted, as it proceeds on a
se lective reading of the impugned judgment. In paragraph 66, the
learned Single Judge expressly held:
³ $ I W H U S H U X V L Q J W K H P D Q Q H U L Q Z K L F K W K H ' H I H Q G D Q W ¶ V S U R G X F W
functions, insofar as A1 and A4 are concerned, it would be incorrect
for the Defendant to argue that their product does not have a layered
S U H V H Q W D W L R Q R U D 3 L 3 V H F R Q G P H G L D ´
This finding clearly demonstrates that the learned Single Judge
compared the essential features of the patented claims with the
' H I H Q G D Q W ¶ V S U R G X F W D Q G R Q O \ W K H U H D I W H U U H W X U ned a prima facie
conclusion. The learned Single Judge correctly examined whether the
D E V H Q F H R I ³ P R Y D E L O L W \ ´ F R Q V W L W X W H G D P D W H U L D O G H S D U W X U H I U R P W K H
claimed invention or merely an insignificant variation incapable of
avoiding infringement, and rightly h eld it to be inessential.
140. Having thus analysed two principal grounds of interference urged
by the learned Counsel for the Defendant, we now proceed to examine
FAO(OS) (COMM) 211/2023 P age 55 of 71
the specific submissions advanced in respect of each of the four
disputed inventive steps.
141. As discussed above, there are seven essential inventive steps
identified in Claims 1 and 39 of the Suit Patent, out of which the
Defendant admits the presence of three in its product. Therefore, in
order to establish infringement, the remaining four essential inventive
V W H S V P X V W D O V R E H I R X Q G W R E H S U H V H Q W L Q W K H ' H I H Q G D Q W ¶ V S U R G X F W
142. With respect to inventive steps A1 and A4, the learned S ingle
J udge held that the D H I H Q G D Q W ¶ V S U R G X F W F R Q W D L Q s a layered presentation
system and also incorporates a PiP feature .
143. The D efendant has assailed the se finding s in the present appeal,
particularly disputing the existence of inventive step A1 in its product .
144. According to Mr. Saikrishna Rajagopal, learned Counsel for the
Defendant, submitted that the learned Single Jud ge erred in holding that
µ mere non - existence of sandwiched layer would not obviate
infringement ¶ D V W K H µ H I I H F W R I W K H ' H I H Q G D Q W ¶ V S U R G X F W L V W K H V D P H ¶ D Q G
µ W K H I X Q F W L R Q D O L W \ R I E R W K W K H 3 O D L Q W L I I ¶ V D Q G ' H I H Q G D Q W ¶ V S U R G X F W L V
D O P R V W L G H Q W L F D O ¶ .
145. According to the learned Counsel, the learned Single Judge
grant ed an injunct ion despite noting layered presentation (feature A1)
as an essential element of S uit P atent , and having accept ed the absence
of a sandwiched / in - between layer in the D H I H Q G D Q W ¶ V product.
FAO(OS) (COMM) 211/2023 P age 56 of 71
146. The case of ' H I H Q G D Q W V ¶ is that the foundational premise of the
Suit Patent lies in the provision of a system that enables modification
of slides, CTA elements, or interactive components without affecting
the underlying video content or the CTA . This feature makes the
Plaintiffs product unique, as the entire video or the slide will not need
to be re - recorded in order to effect a small change. T his is stated to be
achieved through a three - layered architecture co nsisting of : (i) slides
(first medi a), (ii) video (second media), and (iii) a separate sandwiched
layer housing CTA elements .
147. According to the Defendant, t his distinct third layer and the
configuration interface enabling creation and modification of CTA
elements constitute the core of the Suit Patent. It is asserted that t he
D efendant ¶ V Canva product operates only through two layers, namely
slides and audio/ video , and does not employ any separate sandwiched
layer. Consequently, the Defendant submits that an essential feature of
the Suit P atent is absent from its product .
148. The P laintiff ha s refuted these submission s by contending that
the D efendant ha s artificially introduced expressions such as ³ third
O D \ H U ´ D Q G ³ V D Q G Z L F K O D \ H U ´ which find no mention in the claims or
specifications of the Suit Patent. It is submitted that such limiting
language has been raised belatedly at the stage of rejoinder and cannot
be used to narrow the scope of the patent claims.
149. In our view, the conclusion of the learned S ingle Judge regarding
the existence of a O D \ H U H G S U H V H Q W D W L R Q L Q W K H ' H I H Q G D Q W ¶ V S U R G X F W L V
neither perverse nor contrary to the record. The learned S ingle J udge
FAO(OS) (COMM) 211/2023 P age 57 of 71
undertook a comparison of the S uit P atent claims with the features of
the D H I H Q G D Q W ¶ V S U R G X F W and concluded that the D H I H Q G D Q W ¶ V S U R G X ct
adopts a layered presentation system .
150. To substantiate, t he i mpugned j udgment , i n paragraph 65,
delineates the scope of claim A1, and in paragraph 66 , applies the same
to the D H I H Q G D Q W ¶ V S U R G X F W 7 K L V C ourt find that the same is in
con sonance with the established principles of claim construction and
infringement test.
151. The D H I H Q G D Q W ¶ V primary contention is that the absence of a
distinct third or sandwich ed layer L V I D W D O W R W K H 3 O D L Q W L I I ¶ V F D V H V L Q F H
even the absence of a single essential feature is s ufficient to negate
infringement .
152. However, up on a careful perusal of the Suit Patent claim s and
specifications , we do not find any reference to a ³ third O D \ H U ´ or a
³ V D Q G Z L F K ed O D \ H U ´ as an essential requirement of the invention.
Reading such a limitation into the patent would amount to
impermissible reappreciation of the evidence and re - writing of the
claims, which is not warranted at the appellate stage .
153. Prima facie , the D H I H Q G D Q W ¶ V product also adopts a layered
presentation , wherein interactive elements are integrated into the media
content. It is undisputed that changes can be made to one layer without
affecting the other s, and the D H I H Q G D Q W ¶ V S U R G X F W includes PiP
foreground media c omponent . T he attempt to distinguish the
FAO(OS) (COMM) 211/2023 P age 58 of 71
D H I H Q G D Q W ¶ V S U R G X F W solely on the basis of the absence of a so - called
third layer is , therefore, unsustainable at this appellate stage.
154. With respect to inventive A4, the learned S ingle J udge has found
that the D H I H Q G D Q W ¶ V S U R G X F W incorporates a PiP feature. The learned
C ounsel for the D efendant has not denied the existence of such a feature
but has sought to distinguish it R Q W K H J U R X Q G W K D W X Q O L N H 3 O D L Q W L I I ¶ V
S U R G X F W W K H 3 L 3 Z L Q G R Z L Q W K H ' H I H Q G D Q W ¶ V S U R G X F W L s not movable
through haptic interaction.
155. It is the D efendant ¶ V F D V H that the Suit Patent defines PiP as
requiring movement via haptic interaction, whereas the PiP feature in
the ' H I H Q G D Q W ¶ s product lacks any such movable functionality .
156. The learned S ingle J udge , while adopting a s imilar analy tical
framework as applied to Claim A1 , first undertook an exercise of
ascertain ing the scope and purpose of C laim A4 , and thereafter
proceeded to compare the same with the D H I H Q G D Q W ¶ V impugned
product . In doing s o, the learned Single Judge correctly applied the well
settled infringement test of claim construction followed by comparison
with the allegedly infringing product.
157. Additionally, u p on perusal of the P atent S pecifications , it is
evident that t he term ³ PiP ´ has been defined as:
10 ³ Picture - in - picture means one or more foreground content
placed within a smaller insert window which is movable through
haptic interaction as foreground overlay on top of one or more
background content.
FAO(OS) (COMM) 211/2023 P age 59 of 71
Insert window are round or polygonal or oval or non - polygonal in
shape ´
158. : H I L Q G W K D W W K H S K U D V H ³ movable through haptic interaction ´ ha s
been employed in the specification primarily to describe the nature of
the PiP window as a distinct foreground over lay that is layered above
the background content . While it cannot be conclusively ruled out that
³ movability ´ may constitute a functional attribute, the learned S ingle
J udge , exercising prima facie discretion , has not committed any error
o f principle in treating such movability as a non - essential feature at the
interlocutory stage .
159. Further, as settled in patent jurisdiction, including F.Hoffm ann -
La Roche Ltd .(supra ) and Merck Sharp and Dohm e Corporation
(supra) , the infringement enquiry must remain tethered to the claims as
purposively construed, and not to an isolated descriptive term in the
specification being elevated into essential claim limitation s . Whether or
not the PiP window is movable, the second media continues to operate
as an independen t foreground layer superimposed over the background
content and achieves the same technical result of layered visual
presentation. T he absence of movement does not alter the functional
architecture, operational mechanism, or the technical effect produced
b \ W K H ' H I H Q G D Q W ¶ V implementation.
160. The D efendant has further admitted that the movability feature is
enabled only when the product is accessed through the Firefox browser,
owing to the specific enabling mechanisms provided by that browser,
whereas such movement is not observed when accessed through Google
Chrome. However, this C ourt is of the view that at the prima facie stage,
FAO(OS) (COMM) 211/2023 P age 60 of 71
the Defendant cannot seek to appropriate browser - dependent behaviour
as a product - level defence to infringement . Th e relevant inquiry
remains whether the impugned system, as deployed, embodies the
essential elements of the claimed invention.
161. It ha s also been alleged that the movability of the PiP has been
altered during the pendency of the suit . Needless to state , the
authenticity and implications of such altercation can only be established
through leading evidence at trial .
162. Accordingly, whether movability constitutes an essential feature
of the claimed invention is a matter that can be conclusively determined
on ly after full evidence is led. A t the prima facie stage , however, it is
reasonable to conclude that movability is inessential , and th erefore , no
interference Z L W K W K H O H D U Q H G 6 L Q J O H - X G J H ¶ V I L Q G L Q J is warranted .
163. Insofar as Claim C6 relates to a ³ configuration interface ´ that
allows the user to open and modify the configuration of already stored
media , thereby enabling the edit ing of pre - created interactive content.
164. L earned C ounsel for the D efendant has challenged the finding on
the ground that t he Suit P atent envisages a configuration interface to
configure the CTA feature in the form of a separate ³ third ´ /
³ sandwiched ´ layer , w hich is allegedly absent in the ' H I H Q G D Q W ¶ s
product.
165. In this we regard, we are in agree ment with the submission of
Ms . S wathi S ukumar , learned Senior Counsel for the Plaintiff that while
FAO(OS) (COMM) 211/2023 P age 61 of 71
the first media (image) resides in the background layer and the second
media (video) in the foreground layer, such an architectur al
arrangement does not , either expressly or by necessary implication ,
require the CTA button to exist in a distinct ³ W K L U G ´ R U ³ V D Q G Z L F K H G ´
layer to satisfy the claimed invention.
166. Further, even the Defendant s ¶ own expert, Dr. Benjamin
Bederson, supports this position. In paragraphs 28 - 30 of his report, Dr.
% H G H U V R Q H [ S U H V V O \ V W D W H V W K D W ³ the implementation of three layers is
not part of the claim or even the specification ´
167. + H I X U W K H U F O D U L I L H V L Q S D U D J U D S K W K D W W K H Z R U G ³ O D \ H U ´ G R H V
Q R W D S S H D U L Q D Q \ R I W K H F O D L P V R I W K H µ ¶ Patent . T he claims
merely refer to the implementation of first media in the background and
second media in the foreground, with no reference to D Q \ ³ V D Q G Z L F K H G ´
or intermediate layer for CTA elements .
168. Th erefore , the core issue for consideration is whether the
D H I H Q G D Q W ¶ s system provides a ³ configuration interface ´ W K D W H Q D E O H V
the placement of a CTA button at a specific position within the
interactive content, and whether such CTA is instantiated as part of the
final output. This Court is of the view that t he demonstratio n of the
' H I H Q G D Q W ¶ V F O H D U O \ H V W D E O L V K H V W K H H [ L V W H Q F H R I V X F K D F R Q I L J X U D W L R Q
interface. The CTA button is not embedded within or created by
modifying the underlying first media image; rather, it is added through
a separate interface and then superimposed at a chosen position. The
S D W H Q W V S H F L I L F D W L R Q G H I L Q H V D ³ F R Q I L J X U D W L R Q L Q W H U I D F H ´ D V D Q \ L Q W H U I D F H
configuring a wide array of "interactive content settings," including
FAO(OS) (COMM) 211/2023 P age 62 of 71
security, metadata, commercial data, and visual branding, in addition to
the function al configuration of CTA buttons .
169. The ' H I H Q G D Q W ¶ V interface performs precisely this function .
Merely labelling it as D ³ I R U P D W W L Q J R S W L R Q ´ L V D V H P D Q W L F P D Q R H X Y U H
that does not alter its substantive function . T he D H I H Q G D Q W ¶ V S U R G X F W ,
therefore, perform s the same function in substantially the same way to
achieve the same result.
170. Claim C7 pertains to the feature whereby CTA appear s as part of
the interactive content during rendering or playback. L earned C ounsel
for the D efendant has argued that th is claim requires the CTA to be
enabled and displayed only when viewers see the final presentation , and
not during the authoring stage . According to the Defendant, in the Suit
Patent, the CTA is not enabled for the author, whereas in the
' H I H Q G D Q W ¶ V S U R G X F W W K H & TA is visible and functional even during
content creation.
171. The i mpugned j udgment has treated Claim C7 as substantially
overlapping with Claim C6. However, upon a purposive construction
of the claims, it is evident that C6 relates to the ability to reopen and
edit configuration settings of interactive content, where C7 concerns the
ren dering behaviours of those configurations during playback, ensuring
that CTAs appear embedded and functional at the appropriate time.
172. While Claim C7 refers to the CTA being displayed when the
viewers see the final presentation, it is an admitted position that in the
D H I H Q G D Q W ¶ V S U R G X F W , the CTA is visible both during authoring and
FAO(OS) (COMM) 211/2023 P age 63 of 71
playback . However , the D H I H Q G D Q W ¶ V own expert , in the supplemental
report , acknowledges that neither the claims n or the specification of the
S uit P atent expressly state s that CTA s must not be displayed during the
authoring stage .
173. Consequently, it would not be unreasonable or perverse to
conclude, at the prima facie stage, that the visibility of CTAs to authors
G R H V Q R W W D N H W K H ' H I H Q G D Q W ¶ V S U R G X F W R X W V L G H W K H V F R S H R I & O D L P &
7 K L V Y L H Z L V I R U W L I L H G E \ W K H ' H I H Q G D Q W ¶ V R Z Q H [ S H U W R S L Q L R Q
174. Also, even assuming arguendo that the Suit Patent contemplates
CTAs being hi dden during authoring, it remains to be examined
whether such non - visibility is merely a cosmetic or protective feature
to camouflage infringement, or whether it results in a materially distinct
technical operation.
175. Th ese issues necessarily require detai led evidentiary examination
at trial. At the prima facie stage, the learned Single Judge was justified
L Q Q R W L Q J W K H S U H V H Q F H R I & O D L P & L Q W K H ' H I H Q G D Q W ¶ V S U R G X F W
INVALIDITY
176. A foundational requirement of patent adjudication is that the
assessment of v alidity in light of prior art must proceed through a
structured and element - wise comparison between the asserted claims,
as properly construed, and the disclosures contained in the prior art.
Patent protection attaches to the claims, and not to the manner in which
FAO(OS) (COMM) 211/2023 P age 64 of 71
the invention is commercially embodied. This claim - centric discipline
that governs infringement analysis under the Patents Act .
177. While analysing prior art references such as Microsoft
PowerPoint 2016, Auto - Auditorium and Loom, the learned Single
Judge rejected the plea of anticipation on the express footing that these
systems lacked key architectural features of the Suit Patent, including ,
a layered media structure, configuration - based post - creation
modifiability, and non - merging of media streams. These features were
thus implicitly treated as essential elements of the claimed invention for
the purpose of sustaining novelty and inventive step under Sections
2(1)(j) and 2(1)(ja) of the P atents Act .
178. The learned C ounsel for the D efendant assailed the validity of
the Suit Patent primarily by relying on Microsoft Power Point 2016. It
was contended that instead of comparing the prior art with the claims
of the Suit Patent, the i mpugned j udgm ent erroneously compare d the
prior art with the P O D L Q W L I I ¶ V commercial product . In particular, reliance
was placed on the finding W K D W 0 L F U R V R I W 3 R Z H U 3 R L Q W ³ cannot be
H T X D W H G Z L W K W K H 3 O D L Q W L I I ¶ V S U R G X F W ´ D Q G W K D W its working ,
demonstrated before the Court, was different from the subject product.
179. It was further submitted that the i mpugned j udgement proceeded
without proper claim construction and without identif ying the inventive
features of the Suit Patent, yet paradoxically concluding that the S uit
Patent was inventive over the prior art.
FAO(OS) (COMM) 211/2023 P age 65 of 71
180. At first blush, these submission s appear persuasive. However,
upon a careful and holistic perusal of the i mpugned j udgment , we are
unable to agree with the learned Counsel for the Defendant. T he learned
S ingle J udge did consider the scope of the S uit P atent and compared it
with the prior art reference . I n para 84 , the learned Single Judge
observed: ³ A perusal of the presentation submitted by the Defendant
would show that the manner in which the audio overlay has been made
R Q H D F K R I W K H V O L G H V L V F R P S O H W H O \ G L I I H U H Q W I U R P W K H 3 O D L Q W L I I ¶ V V X L W
patent ´ This observation, though couched in reference to the
3 O D L Q W L I I ¶ V S U R G X F W L V F O H D U O \ U R R W H G L Q W K H W H F K Q L F D O D U F K L W H F W X U H
claimed in the Suit Patent.
181. Further, a reading of Para graph 70 of the i mpugned j udgment
makes it evident that the learned S ingle J udge , prior to returning a
finding on invalidity , analysed the claimed features of the S uit P atent
vis - a - vis the D H I H Q G D Q W ¶ V S U R G X F W and the prior art . The paragraph
reflects a consideration of the essential elements such as media layering,
post - creation configuration, and non - merging of streams, features that
form the crux of the patented invention.
182. In view of the above, we find no perversity or material error in
t he approach adopted by the learned Single Judge , the i mpugned
j udgment consistently emphasizes on claim to product mappings . After
discussing the prior art in sufficient detail, the learned Single Judge
rightly concluded that the Plaintiff had, at the prim a facie stage,
established the presence of inventive essential elements in the Suit
Patent. Consequently, the challenge to validity was correctly held to be
unstainable.
FAO(OS) (COMM) 211/2023 P age 66 of 71
5 ( / , $ 1 & ( 2 1 ' ( ) ( 1 ' $ 1 7 ¶ 6 3 & 7 $ 3 3 / , & $ 7 , 2 1
183. The next contention relates to the reliance placed by the learned
Single Judge on the D H I H Q G D Q W ¶ s PCT application. The P laintiff relied
up on this document to contend that Defendant ¶ V own disclosures
mirrored the essential features of the Suit Patent, thereby evidencing
both infringemen t and imitation.
184. In paragraph 87 of the i mpugned j udgment , the learned Single
Judge went further and drew adverse inference against the D efendant,
observing that they K D G ³ D E D Q G R Q H G ´ their PCT application after the
P laintiff relied upon it in the proceedi ngs . This was characteri zed as a
³ F R P S O H W H V R P H U V D X O W ´ D Q G D Q D W W H P S W W R F D P R X I O D J H W K H L U V W D Q G
185. At the threshold, the D efendant disputed the factual basis of this
finding. They clarified that the PCT application had not been
abandoned, but had , in fact , entered the national phase in the United
States and other jurisdictions. What had lapsed, according to the
D efendant, was only the original Australian provisional application , a
routine procedural event that does not affect the subsistence of the PCT
appli cation.
186. It is trite law that a PCT application, at best, reflect s the
D S S O L F D Q W ¶ V U H V H D U F K W U D M H F W R U \ and technical disclos ur e s . It does not
constitute an admission of infringement, nor does similarity in
disclosures establish that a commercial product necessarily embodies
the claimed invention. Infringement must always be tested by
FAO(OS) (COMM) 211/2023 P age 67 of 71
comparing the claims of the patent with the allegedly infringing
product.
187. We , therefore, agree with the submission of learned C ounsel for
the D efendant that t he status or p rosecution decisions concerning the
Defendant ¶ s PCT application cannot substitute for, or colour, the
technical and legal comparison that the C ourt is required to undertake
under Indian patent law .
188. However, it is equally well - settled that documents emanat ing
from a D efendant including its own patent filings , specifications, and
prosecution history, are relevant pieces of evidence. Such documents
may shed light on the D H I H Q G D Q W ¶ s understanding of the technology, the
features they themselves consider novel or essential, and any
inconsistency between what they seek to protect through patents and
what they deny before the court.
189. Viewed t hus, the PCT record is not being used as a substitute for
the infringement analysis. Rather, it has been relied upon as
co rroborative material , demonstrating the Defendant ¶ s shifting stand
and justifying a heightened scrutiny of their denials in the infringement
proceedings .
190. Accordingly , while the observation regarding ³ D E D Q G R Q P H Q W ´
may not be factually precise, the reliance placed on the PCT application
as a relevant evidentiary circumstance does not warrant interference
with the i mpugned j udgment .
FAO(OS) (COMM) 211/2023 P age 68 of 71
CONCLUSION
191. I n view of the foregoing discussion, we are unable to accept the
contention advanced by the learned Counsel for the Defendant that the
i mpugned j udgment suffers from absence of proper claim construction
in terms of the principles laid down in F. Hoffm ann - La Roche Ltd .
(supra), or that the injun ction was granted merely on the basis of claim -
to - claim mapping or overall identity.
192. A careful reading of the i mpugned j udgment 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.
T he learned Single Judge has explicitly observed that claims of the
patent specification are required to be compared with the features of the
' H I H Q G D Q W ¶ V S U R G X F W $ G G L W L R Q D O O \ , while concluding on the i ssue of
infringement, the learned Single Judge has again referred to the
mapping of the Suit Patent claims.
193. We are therefore satisfied that the process of claim construction
and comparison was undertaken in accordance with settled principles
of patent law , and the i mpugned j udgment cannot be faulted on this
ground.
194. We also find no merit in the primary contention of the Defendant
W K D W L W V S U R G X F W O D F N V W K H ³ W K L U G O D \ H U ´ R U D ³ V D Q G Z L F K H G O D \ H U ´ unlike
the Suit Patent . These expressions do not find place in the Suit Patent
specification or in the claim construction adopted by the learned Single
FAO(OS) (COMM) 211/2023 P age 69 of 71
- X G J H 7 K L V S R V L W L R Q L V I X U W K H U U H L Q I R U F H G E \ W K H ' H I H Q G D Q W ¶ V R Z Q H [ S H U W
report, which categorically refers to the alleged absence of a
³ V D Q G Z L F K H G O D \ H U ´ 0 R U H R Y H U from the demonstration of the
' H I H Q G D Q W ¶ V product , it is evident that the CTA button is added through
a separate interface. A s per the patent claims and specifications , any
interface that enables a user to add one or more CTA buttons at a
specific place or position within interactive content qualifies as a
³ configuration interface ´ . Th us, the presence of such a feature in the
' H I H Q G D Q W ¶ V S U R G X F W prima facie satisfies the requirements of the Suit
Patent.
195. With regard to the issue of movability, as an essential feature of
the claim, and whether such movement is attributable to t he
' H I H Q G D Q W ¶ V S U R G X F W R U W R W K H E U R Z V H U L Q W H U I D F H D U H P D W W H U V Z K L F K F D Q
be best adjudicated upon at the stage of trial, after evidence is led. We
therefore find no error in pr L Q F L S O H L Q W K H O H D U Q H G 6 L Q J O H - X G J H ¶ V
U H M H F W L R Q R I W K H ' H I H Q G D Q W ¶ V F R Q W H Q W L R Q D W W K H L Q W H U O R F X W R U \ V W D J H
196. With respect to the challenge to the direction requiring the
Defendant to deposit a sum of Rs. 50 lakhs, we find no infirmity in the
exercise of dis cretion by the learned Single Judge. The record discloses
that the learned Single Judge ¶ V findings was based on an affidavit dated
1 5.07. 2022, and number of users and net revenue . The direction to
deposit Rs. 50 lakhs was thus founded on relevant considerations,
including the extent of usage of the infringing feature in India, the
revenue generated therefrom, the absence of attachable assets within the
M X U L V G L F W L R Q D Q G W K H Q H H G W R V H F X U H W K H 3 O D L Q W L I I ¶ V F O D L P V L Q W K H H Y H Q t
the suit ultimately succeeds. The amount directed to be deposited has
FAO(OS) (COMM) 211/2023 P age 70 of 71
been expressly made subject to the final outcome of the suit and is in
the nature of a protective and provisional measure, intended to
safeguard the Plaintiff against the risk of irrec overable loss. The said
direction on a prima facie stage therefore reflects a reasoned exercise
of discretion . In appellate proceedings arising from an interlocutory
order, this Court is guided by the well - settled principles laid down in
W ander L t d. (supra) , wh i ch restrict interference to cases of perversity,
arbitrariness. The learned S ingle J udge has exercised discretion
judiciously, upon a consideration of relevant material and applicable
legal principles. We are, therefore, not persuaded to re - appreciate the
evidence or re - examin e the issues as if sitting in appeal on facts .
197. In the circumstances, we are of the considered view that no
compelling case has been made out to warrant interference with the
i mpugned j udgment.
198. Accordingly, after having carefu lly examined the reasoning
adopted by the learned Single Judge, we find no merit in the p resent
appeal.
199. T he appeal is , therefore, dismissed.
200. It is clarif ied that the observations made herein are confined to
the prima facie stage and shall not be construed as an express ion of
opinion on the merits of the case, which shall be decided independently
at the stage of trial .
FAO(OS) (COMM) 211/2023 P age 71 of 71
201. All pending applications, if any, stand disposed of in the above
terms. There shall be no order as to cost s.
OM PRAKASH SHUKLA , J.
C.HARI SHANKAR, J.
JANUARY 28 , 202 6 / AT/rjd
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