Delhi High Court allows Blackberry patent on ‘auto-selection of media files’

The convergence of various technologies on single devices has posed significant challenges to technology developers. The Appellant, BlackBerry Limited, is a corporation organized under the laws of Ontario, Canada, specializes in providing telecommunication products, services, and solutions. The present appeal under Section 117A of the Patents Act, 1970, was originally filed by BlackBerry Limited before the Intellectual Property Appellate Board (IPAB) in 2020 and consequent upon the abolition of the IPAB with the enactment of the Tribunals Reforms Act, 2021, the present appeal stood transferred to the Delhi High Court.

Appeal and patent application

The appeal relates to the subject patent application titled “Auto-Selection of Media Files” bearing Application Number 717/DEL/2009, filed on 25 July 2008, with 12 claims. Various objections, including lack of novelty, inventive step, and non-patentability under Section 3(k) of the Patents Act, 1970, were raised by the Indian Patent Office. The final set of claims filed by the appellant were refused under Section 15 of the Act. The ld. Controller refused the grant of the patent on the ground of non-patentability under Section 3(k) of the Act.

Submissions of the appellant

• The subject patent application must be adjudged on the state of the art prevalent on the priority date.
• The corresponding patent applications of the subject patent have been granted in other jurisdictions, including Australia, Japan, the US, and China.
• The objection relied upon by the ld. Controller under Section 3(k) of the Act is non-tenable as the invention addresses a technical problem. The invention permits downloading different quantities of content in different devices connected to the same server.

Submissions of the respondent

• The features defined as non-technical are not used for any apparent technical purpose and do not contribute to a technical effect.
• The subject matter of the claims pertains to a computer program per se and falls within the scope of Section 3(k) of the Patents Act, 1970.

The Assistant Controller of Patents and Designs concluded that the substantive requirements of the Patents Act, 1970, were not met, and the application did not comply with the requirements of the Act. Therefore, the grant of a patent for application no. 717/DEL/2009 was refused under the provisions of Section 15 of the Patents Act, 1970.

Appeal before the High Court and the court’s ruling

The court ruled in favor of the appellant, BlackBerry Limited, and set aside the decision of the Assistant Controller of Patents and Designs. The court held that:

1. The subject patent application titled “Auto-Selection of Media Files” bearing Application Number 717/DEL/2009 was indeed patentable and did not fall under the non-patentable category of Section 3(k) of the Patents Act, 1970.
2. The court noted that the features related to generating a confidence level for each media file, where the confidence level is a measure of likeability, categorizing media files for selection, and the feature about how the measure of likeability is calculated, are considered non-technical features. However, these features are used for an apparent technical purpose and contribute to a technical effect, thereby solving a technical problem. The court concluded that the invention permits the downloading of different quantities of content in different devices connected to the same server, which is a significant technical advancement. 
3. The court also noted that the corresponding patent applications of the subject patent had been granted in other jurisdictions, including Australia, Japan, the US, and China.
4. The court found objections raised based on prior art by the Indian Patent Office not tenable. The court noted that the prior art references relied upon by the ld. Controller were: D1: US6366296B1 (Xerox Corporation, Fuji Xerox Co. Ltd.) media browser using multimodal analysis; D2: US7065521B2 (Motorola, Inc.) method for fuzzy logic rule-based multimedia information retrieval with text and perceptual features; D3: EP1227396A1 (Microsoft Corporation) a method, system, and computer program product for synchronizing data represented by different data structures by using update notifications.
5. The court observed that the subject invention, which involves the auto-selection of media files based on the available memory of a device connected to a server, was not disclosed in any of the prior art references. The court also noted that the dynamic synchronization feature of the subject invention was not present in the prior art. The court concluded that the subject invention was a significant technical advancement over the prior art and addressed a technical problem by providing a technical solution.
6. The court concluded that the invention permitted the downloading of different quantities of content in different devices connected to the same server, which was a significant technical advancement. Therefore, the court directed the Indian Patent Office to grant the patent for application no. 717/DEL/2009 subject to amendment of claim one.
7. The court directed that claim one be characterized and limited the scope of the patent to the feature of ‘automatic selection’ and ‘updating by a cache manager’. The court observed that the first part of claim one, i.e., the feature of providing confidence level on the basis of likeability will act as the prior art over which the characterizing features of ‘automatic selection’ and ‘updating by a cache manager’ are a novel technical advancement.

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