Invention Increasing Capability Of Device Not Hit By Section 3(k) Of Patents Act: Delhi High Court Allows Blackberry’s Appeal
The Delhi High Court has observed that an invention which can increase the capability of a device will not be hit by Section 3(k) of the Patents Act, 1970 (‘Act’).
The Court allowed the appeal filed by Blackberry against the order dismissing its patent application for “Auto-Selection of Media Files”.
The Bench of Justice Pratibha M Singh held, “Any invention which can increase the capability of a device to such an extent would not be hit by Section 3(k) of the Act. The argument of Mr. Harish V. Shankar, ld. CGSC that the rejection by the EPO ought to result in rejection of subject patent – though extremely appealing, is not tenable…This Court has independently assessed the nature of the invention and is of the opinion that the bar under Section 3(k) of the Act would apply to the subject invention.”
Advocate Pravin Anand appeared for the Appellant whereas CGSC Harish Vaidyanathan Shankar appeared for the Respondent.
An appeal under Section 117A of the Act was filed by the widely known company ‘Blackberry’. The appeal was related to the subject patent application titled “Auto-Selection of Media Files”. The subject patent was filed with twelve claims, as a Convention Application, claiming priority from five US patent applications. The Controller, however, refused the grant of the patent on the ground of non-patentability under Section 3(k) of the Act.
The Appellant sought two claims: 1. A method for managing content in a device comprising the steps of providing a confidence level for each media file in a plurality of media files, by a controller and others; and 2. an apparatus for managing content and implementing the method as claimed in claim 1.
The Court dealt with the issue of whether such an invention was hit by the bar contained in Section 3(k) of the Act.
The Court noted that the subject invention was sought by the Appellant way back in 2008-09 for a method by which management of media content could be achieved and a perusal of the complete specification would show that with minimal interference by the user, the system could manage media content.
“Therefore, the invention contemplates assessment of the user’s liking for example, the number of times a user plays a song irrespective of whether the same is in one album or in multiple albums. The invention gives weightage to various forms of data which was collected from the user and enables auto- filling of the content. Management of media files as per the invention is also made possible by keeping some transfers in a pending status as well. The user could be allowed to browse and sync a library on a server or a PC with the user handheld communication device.”, the Court said.
The Court elucidated the differences between the subject patent application and the prior art in US’765, which describes methods of automatically selecting multimedia files for transfer between storage mediums based on criteria such as popularity weighting and recency of access.
The Court observed, “In these facts and circumstances of this case as discussed above, the objection under Section 3(k) of the Act is rejected. No objections as to novelty or inventive step have been raised by the Patent Office though the prior art considered by EU, i.e. US’765 has also been perused and discussed for the sake of completeness. In view of the fact that this Court has found merit on the argument of the ld. CGSC that the prior art US’765 does disclose the feature of selection multimedia files for transfer between storage mediums based on criteria such as popularity weighting and recency of access, this Court directs an appropriate amendment of the Claims be carried out so that the subject patent can proceed to be grant.”
Accordingly, the Court allowed the appeal and directed Blackberry to characterize the Claims of the subject patent to limit the scope of the patent to the feature of ‘automatic selection’ and ‘updating by a cache manager’. Hence, allowing the patent to proceed for grant by the Controller General of Patents Designs and Trademarks.
Cause Title: Blackberry Limited v. Controller Patents and Designs (Neutral Citation:2024:DHC:6572)
Appearances:
Appellant: Advocates Pravin Anand, Vaishali, R Mittal, Sandeep Bhola and Gursimran Singh Narula.
Respondent: CGSC Harish Vaidyanathan Shankar, Advocates Srish Kumar Mishra and Alexander Mathai Paikaday.
