Delhi High Court: A suit was filed by RXPrism Health Systems Private Limited (plaintiff), seeking an interim injunction restraining the Defendant from engaging in activities such as using, making, selling, distributing, advertising, offering for sale, etc., or dealing in any product that infringes the subject matter of Indian Patent No. ‘IN360726’. Prathiba M Singh, J., restrained Canva Ltd. (defendants) from making available their Canva product with the ‘Present and Record’ feature, which infringes the Plaintiff’s suit patent being IN360726.
The Plaintiff is based in India, whereas the Defendant is based out of Australia. The case of the Plaintiff is that it developed a novel and innovative product which is a system and a method for ‘creating and sharing interactive content’. This system of sharing content is distinct from video advertisements. It filed an Indian patent application which was published on 03-01-2020 which was thereby granted. The Plaintiff claims to have launched their product based on this patent, called ‘My Show & Tell’ (‘Plaintiff’s product’) in May 2020.
Defendant 1-Canva is a graphic designing platform launched in 2013 and offers comprehensive design solutions on the website, www.canva.com. Canva provides services such as blog graphics, presentations, flyers, posters, and invitations creation, catering to a global audience. To spread and make designing easy, it constantly integrates new features and tools to enhance its service offerings, including new design types and numerous publishing options. One notable feature they provide is the ‘Present and Record’ feature enabling users to rapidly create interactive presentations, with personalized visual content.
The main grievance of the plaintiff is that a new feature was incorporated on the Defendant’s platform called ‘Present and Record’. The Plaintiff’s case is that it came across this feature on the Defendant’s product sometime in June 2021, even though it was launched in August 2020. The Plaintiff learned of this feature through a YouTube video. The said digital product was accessible to any user with a computing device and operating system, coupled with hardware, such as, camera, microphone etc. According to Plaintiff, the impugned ‘Present and Record’ feature in Defendant’s Canva product provided an almost identical tool for creating product descriptions and other online content.
The Court noted that the fulcrum of the defendant’s case, in response to the injunction application, is that of non-infringement. In a patent infringement suit, the broad settled position is that the claims have to be construed in a purposive manner. Based on the claims of the patent specification the Defendant’s product is to be compared for assessing infringement. In the process of comparison, trivial variations would not matter, and the Court must assess if the defendant’s product is producing the same effect or is ‘equivalent’, to the invention claimed and disclosed in the Patent. The comparison between the plaintiff’s product and the defendant’s product can only lend support for the purposes of understanding the technology and the features of the two products. However, the Product Vs. Product comparison shall not be determinative of infringement. It is the Granted Claims Vs. Product comparison that is determinative of patent infringement.
On perusal of the chart based on the Essential Features, the Court further noted that out of seven features, as per the defendant, three features are present and four features are absent. On proper examination of both products and analysis, it shows that the highlighting of differences between the patented claims and the Defendant’s product is an attempt to distract the Court from the overall identity. A comparison of the claims and the Defendant’s product establishes the opposite. Thus, the working of the Defendant’s ‘Present and Record’ feature when compared with the Claims would demonstrate that almost all the same steps therein are present in the Defendant’s product, thus, prima facie, establishing infringement.
The Court held that Defendant has been unable to make a credible challenge to the Plaintiff’s patent, the balance of convenience also lies in favour of the Plaintiff whose market opportunities for licensing and revenue generation can be completely eroded, if in case an interim injunction is not granted at this stage.
The Court directed the defendant to deposit a sum of Rs. 50 lakhs with the Registrar General of this Court, which shall be kept in the form of a FDR, as a security for the Plaintiff’s claims for past use of the infringing feature in India. The Court also awarded costs of Rs.5 lakh in favour of the Plaintiff- Rxprism Health Systems Pvt. Ltd.
[RXPrism Health Systems Private Limited v. Canva Pty Ltd., 2023 SCC OnLine Del 4186, decided on 18-07-2023]
Advocates who appeared in this case :
Mr. Tanmaya Mehta, Mr. Sanyam Khetarpal, Ms. Prakriti Anand and Mr. Karan Vijayan Advocates for the Plaintiff;
Mr. Saikrishna Rajagopal, Ms. Sneha Jain, Ms. Garima Sahney, Dr. Victor Vaibhav Tandon, Ms. Priyam Lizmary Cherian, Mr. Saif Rahman Ansari and Ms. Shruti Jain, Advocates for the Defendants.
