Google LLC Vs Controller of Patents

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* IN THE HIGH COURT OF DELHI AT NEW DELHI

Reserved on: 13th December, 2023
Date of Pronouncement: 2nd April, 2024
+ C.A.(COMM.IPD-PAT) 395/2022
GOOGLE LLC ..... Appellant
Through: Mr. Vineet Rohilla, Mr. Pankaj Soni,
Mr. Debashish Banerjee, Mr. Ankush
Verma and Ms. Vaishali Joshi, Advs.
(M:8860301752)
versus
THE CONTROLLER OF PATENTS ..... Respondent
Through: Mr. Arjun Mahajan, SPC with Mr.
Apoorv Upmanyu, Advocate. (M:
9899215738).
CORAM:
JUSTICE PRATHIBA M. SINGH
JUDGMENT
Table of Contents
A. Background ...............................................................................................2
B. Submissions ...............................................................................................5
C. Analysis and Findings ..............................................................................9
C1. Claim Construction ............................................................................ 10
C2. Assessment of Prior Art ..................................................................... 13
C3. Tests for Assessment of Inventive Step and obviousness ................. 28
C4. Comparison of the subject Patent to the prior art D1 ........................ 36
D. Conduct of the Appellant .......................................................................39
E. Directions .................................................................................................42
F. Annexure 1 ...............................................................................................43
G. Annexure 2 ..............................................................................................47
Signature Not Verified

C.A.(COMM.IPD-PAT) 395/2022 Page 1 of 51
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Prathiba M. Singh, J.
1. This hearing has been held through hybrid mode.
A. Background
2. The present appeal under Section 117A of the Patents Act, 1970
(hereinafter ‘the Act’) was originally filed by the Appellant- Google LLC
before the Intellectual Property Appellate Board (hereinafter, ‘IPAB’) in the
year 2020. Thereafter, upon the abolition of the IPAB and the enactment of
the Tribunals Reforms Act, 2021, the present appeal stood transferred to this
Court. The Appellant seeks inter alia an order to set aside the order dated 27th
November, 2019 (hereinafter, ‘impugned order’) issued by the Respondent.
3. The Appellant company is a Delaware Limited Liability Company
(LLC) incorporated under the laws of United Stated of America located at
Amphitheatre Parkway, Mountain View, California, 94043 and is the
Assignee of the subject patent application by virtue of an assignment between
the original applicant AOL LLC and Google LLC.
4. Vide the impugned order, the application for grant of a patent bearing
number 5429/DELNP/2007 titled ‘Managing Instant Messaging Sessions on
Multiple Devices’ (hereinafter ‘subject patent’) of the Appellant was refused
by the ld. Assistant Controller of Patents and Designs (hereinafter
‘Controller’) under Section 15 of the Act. The subject patent application was
filed on 13th July, 2007 before the Indian Patent Office (hereinafter ‘IPO’). It
was filed as a PCT National Phase application claiming priority from a US
Patent application i.e., application no. US 11/025,849. The priority date of the
subject patent application is 30th December, 2004. The international filing
date of the corresponding PCT application, bearing number
PCT/US2005/047358 is 30th December, 2005 and accordingly, the term of the

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patent, if granted, comes to an end on 29th December, 2025. The subject patent
application was published as per Section 11 of the Act on 17 th August, 2007.
The Appellant filed a Request for Examination on 19th November, 2008.
5. Initially, after the filing of a Request for Examination by the Appellant,
the IPO issued a First Examination Report (‘FER’) dated 25th November,
2014 citing three prior art documents and raising objections of lack of novelty
and inventive step, as also an objection under Section 3(k) of the Act. Other
objections regarding insufficiency of disclosure, lack of clarity, and other
procedural issues, were also raised by the Controller in the said FER.
6. The prior art documents D1: US2003101343 as also D2:
US2004068567, were cited by the Controller in support of the objection for
lack of novelty. To substantiate the objection of inventive step, the
Controller cited an additional prior art document D3: US2003055977. As per
the Controller, the said prior arts disclosed the invention and when read
together disclosed all the embodiments of the application. The details of the
cited prior arts are hereinunder:
• D1: US2003101343 titled ‘System for providing continuity between
messaging clients and method therefor’, published on 29th May, 2003.
• D2: US2004068567 titled ‘Method and system for transferring a
computer sessions between devices’, published on 8th April, 2004.
• D3: US2003055977 titled ‘System for automated, mid-session, user-
directed, device-to-device session transfer system’, published on 20th
March, 2003.
7. In response to the said FER, the Appellant filed a reply dated 24 th
November, 2015 along with an amended set of claims. In order to overcome
the objections under requirement for novelty and inventive step, the Appellant

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amended the claims to introduce the following features:
• “in response to determining that a user is signed on concurrently
to a first instant messaging controller on a first device and a
second instant messaging controller on a second device,
enabling the user to select one or more instant messaging
sessions to transfer to the second instant messaging controller”
• “receiving from the user a preference not to mirror transferred
instant messaging sessions during an idle or away state”
• “making user-inspired instant messages perceivable on both the
first instant messaging controller on the first device and the
second instant messaging controller on the second device so that
the user is able to view an entire instant messaging conversation
of user-inspired messages and co-user messages on the first
instant messaging controller and the second instant messaging
controller”
8. The Appellant in its response to the FER stated that the above-
mentioned features would overcome the objections of novelty and inventive
step. To overcome the objections under Section 3(k) of the Act, the Appellant
relied on the technical effect exhibited by the messaging controllers to initiate
the transfer of messaging sessions and enabling instant messaging sessions on
parallel devices.
9. Thereafter, a hearing notice dated 3rd March, 2017 was issued by the
IPO retaining the objections of lack of novelty, inventive step and non-
patentability under Section 3(k) of the Act. The said hearing was fixed for 15th
March, 2017. After the hearing, the Appellant submitted the written
submissions and a new set of amended Claims dated 30th March, 2017. In the
said written submissions the Appellant claimed that the subject invention had
differentiating features in comparison to the cited prior arts. In particular, the
Appellant claimed that none of the cited prior arts disclosed the feature of

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interruption to mirroring, nor mirroring the messaging sessions during idle or
away state. The Appellant further stated that the feature of ceasing of instant
messaging in response to the user preference when the messaging controller
is in idle or away state, was also absent in the cited prior arts. To address the
objection raised under Section 3(k) of the Act, the Appellant stated that the
subject matter of the application involved technical steps enabled by the
hardware features resulting in technical effect, and thus the same ought to be
granted a patent. However, despite the contentions made by the Appellant, the
Controller refused the application for grant of the patent under Section 15 of
the Act, and the impugned order was passed. Aggrieved by the impugned
order, the Appellant has filed the present Appeal.
B. Submissions
10. In the present appeal, notice was issued vide order dated 25 th July, 2022
and subsequently, pleadings were completed. The appeal was taken up for
hearing. Ld. Counsel for the Appellant submitted that the premise of the
objections of the ld. Controller were based on the teaching of only one prior
art document, i.e., D1: US2003101343. Ld. Counsel took the Court through
the Complete Specification of the subject patent application and the prior art
D1. Further, the Appellant also submitted a comparative chart of the pending
Claims of the subject patent application and extracts of prior art D1.
11. According to ld. Counsel, there were two main features in the subject
patent application which were not disclosed in the prior art document D1.
Firstly, the preference which the users can give to cease instant messaging
while the devices are in an idle stage and secondly, the conscious choice of
the user to trigger the instant messaging feature. As per ld. Counsel for the
Appellant, the prior art only relates to transmission of messages between two

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devices which is different from the Appellant’s invention claimed in the
subject patent application.
12. Ld. Counsel also submits that the corresponding patent applications
have been granted in the USA and Canada. Upon a query from this Court as
to whether the corresponding patent was applied before the European Patent
Office (hereinafter, ‘EPO’), ld. Counsel for the Appellant submitted that the
corresponding patent application before the EPO was abandoned.
13. Considering the technical nature of the matter, vide order dated 22nd
November, 2023 the Court had directed a concerned official from the IPO to
be present to assist the Court. Parties were also permitted to file written
submissions. Accordingly, when the appeal was taken up for hearing on 13th
December 2023, Mr. Neeraj Tayal, ld. Deputy Controller of Patents
(hereinafter ‘Deputy Controller’), appeared before the Court virtually and
submitted that the Appellant was attempting to obtain a monopoly on the
features of receiving of a preference and also the conscious preference of the
user to trigger the instant messaging feature i.e. not to mirror the same content
in two devices. These functionalities, according to the ld. Deputy Controller,
are clearly contained in the prior art document.
14. In support of his assertions, the ld. Deputy Controller referred to pages
81 and 91 and paragraphs 32 and 97 of the cited prior art D1: US2003101343
to substantiate his argument. According to the ld. Deputy Controller, the
ceasing of the instant messaging is discussed in prior art D1 when there is
completion of a data transfer, albeit not explicitly in an idle or away state.
However, he submitted that a comprehensive analysis of prior art D1 provides
sufficient motivation for a person skilled in the art to extrapolate from existing
functionalities and develop a conscious feature for mirroring messaging

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sessions during idle or away states.
15. While acknowledging that novelty might not be compromised, Mr.
Tayal suggested that the inventive step would be affected by the perceived
overlap between the teachings of D1 and the subject patent application. He
contended that the logical progression and foreseeable evolution of messaging
communication systems, as evidenced by D1 read with other prior arts, could
provide the groundwork for integrating additional features aimed at enhancing
user experience and session continuity. Thus, Mr. Tayal submitted that while
the subject patent may introduce a novel feature, it would still be obvious and
lacking inventive step in view of the scope of existing technologies and
practices outlined in the prior arts.
16. In addition, Mr. Arjun Mahajan, ld. Counsel appearing for the
Respondent submits that the Appellant has not disclosed true facts in respect
of the corresponding European patent application bearing application number
EP 05 855 851.1. It is his submission that the corresponding European patent
application was rejected by the EPO Examining Division vide decision dated
18th December, 2015, which held that subject patent invention lacked novelty
and inventive step. Ld. Counsel referred to paragraphs 1.2.2, 2.2.2, and 2.2.4
from the Section ‘II. Reasons for the decision’ of the said decision as also the
final conclusion of the decision of the EPO.
17. At this stage, ld. Counsel appearing for the Appellant, Mr. Vineet
Rohilla, has attempted to distinguish the subject patent application from the
prior art cited by the Controller, by arguing that in the Complete Specification
of the subject patent application i.e., both in the claims as also in the drawings
(at page 47), a clear option is given to the user for the purposes of setting up
preference as to whether the user would like the viewing of the instant

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messaging session on the device when the device is in idle or away state. This,
according to him, is a step forward from the disclosure in the prior art D1.
18. Mr. Vineet Rohilla, ld. Counsel points out that in the prior art D1, the
idle or away state is discussed, however, there is no preference given to the
user. The adding of a preference is also not motivated from D1 as the purpose
of D1 as stated in paragraph 14 of the said prior art is to have a continuity and
not for giving a preference to the user. Therefore, he urged that the prior art
document, D1 would not destroy novelty and in any case, since there is no
motivation, the inventive step is also would not be affected.
19. Ld. Counsel for the Appellant further argued that the USPTO which
has granted the subject patent had also considered the office action of the EPO
as also the First Examination Report issued by the IPO. However, the patent
was still granted, and thus, some credence ought to be given to the same.
Finally, it is his submission that an ex post facto analysis of a patent
application is not permissible while judging inventive step. For the said
purpose, he relied upon the decision dated 15th September, 2004 of the Board
of Appeal of the European Patent Office in T 0970/00 – 3.4.2 concerning
Murata Manufacturing Company Limited.
20. Mr. Neeraj Tayal, ld. Deputy Controller countered the submissions of
the Appellant on the basis of para 32 of the prior art D1. He submitted that a
comprehensive reading of the said paragraph would demonstrate that the
plurality of session preferences includes one session for timeout setting for
participation in the messaging session which is the actual feature claimed by
the Appellant in the subject patent application. He emphasises that the
presence of the timeout setting is as part of the plurality of session preferences
discussed in the prior art D1.

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21. Mr. Vineet Rohilla, ld. Counsel counters the above submission and
submits that while the messaging session is on in one device, the user cannot
be given a preference in D1 to mirror or not in the other device. Ld. Counsel
for Appellant asserts that in the prior art D1, there is no provision for the user
to choose whether to mirror the messaging session on another device while
the session is ongoing on one device.
22. The Court has considered the submissions of both the parties, the prior
arts and authorities cited as also the record of the prosecution of the subject
patent before the Indian Patent Office as also some of the other IP Offices.
C. Analysis and Findings
23. The impugned order would show that the IPO has refused the subject
patent application on the ground of lack of novelty and inventive step. The
Controller has cited the same three prior art documents, as cited in the FER,
to substantiate the grounds for refusal of the subject patent application. The
relevant extracts of the impugned order are set out below:
“Now, regarding objections 1 and 2, that claims 1-17
lack novelty and inventive step in view of prior art
document D1: US 20030101343 and inventive step in
view of the documents D1, D2: US 20040068567 and
D3: US 20030055977; it is submitted that- inter-alia the
step of "receiving from the user a preference not to
mirror transferred instant messaging sessions during an
idle or away state" and "in response to the preference,
ceasing instant messages being perceivable on the first
messaging controller when the first messaging
controller is in an idle or away state" as recited in claim
1 is not taught or disclosed by any of the cited
references.
xxx xxx xxx
Even if any argument against novelty is considered, the

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proposed solution in form of allowing the user to set a
preference not to mirror sessions in an idle or away
state cannot be said to be not obvious to a person skilled
in the art, in view of the above findings.
No other feature, as distinguished from the citations, is
put forth by the Patent Agents of the applicant during
the hearing submissions.
Thus, in view of the aforementioned facts, the
objections, as regards, that the subject matter of claim
is not new and lacks inventive step, persist. The instant
application no. 5429/DELNP/2007 does not comply
with the requirements of The Patents Act, 1970. I,
therefore, hereby order that the grant of a patent is
refused under the provisions of Section 15 of ‘the’ Act.
24. After assessing the record and considering all the submissions and
authorities cited, the present appeal raises the following question that deserve
consideration:
(i) Whether the rejection of the Appellant’s patent is sustainable or not?
(ii) Whether the subject invention satisfies the other tests of novelty,
inventive step and industrial application and is entitled to the grant of
patent protection?
C1. Claim Construction
25. As set out in the introductory paragraphs, the subject patent application,
filed on 13th July, 2007 is titled as ‘Managing Instant Messaging Sessions on
Multiple Devices’. The patent specification as filed had 20 claims. The same
are extracted as Appendix 1 herewith. In the originally filed Claims, all the
20 claims were method Claims. The subject patent application, however, after
amendment, describes a system for managing instant messaging sessions
across multiple devices.

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26. For the purpose of this appeal, the claims considered in the present
appeal are the amended set of claims filed at the stage of hearing before the
Patent Office, i.e., a total of 17 claims extracted in Appendix 2 herewith. The
first independent claim of the subject patent application is set out below:
“1. A method (100) for transferring instant messaging
sessions, the method comprising:
in response to determining that a user is signed on
concurrently to a first instant messaging controller
(725) on a first device (325a) and a second instant
messaging controller (740) on a second device (325b),
enabling the user to select one or more instant
messaging sessions to transfer to the second instant
messaging controller;
receiving from the user a preference not to mirror
transferred instant messaging sessions during an idle
or away state;
receiving a selection (105), from a user within a user
interface, of at least one instant messaging session from
among multiple instant messaging sessions to transfer
from the first instant messaging controller on the first
device to at least the second instant messaging
controller on the second device;
transferring (115) at least a portion of the selected
instant messaging session from the first instant
messaging controller on the first device to the second
instant messaging controller on the second device; and
making (120) the transferred portion of the instant
messaging session perceivable on the second instant
messaging controller on the second device;
making user-inspired instant messages perceivable on
both the first instant messaging controller (725) on the
first device (325a) and the second instant messaging
controller (740) on the second device (325b) so that the
user is able to view an entire instant messaging
conversation of user-inspired messages and co-user
messages on the first instant messaging controller and

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the second instant messaging controller; and
in response to the preference, ceasing instant messages
being perceivable on the first messaging controller
when the first messaging.”
27. From a perusal of the above extracted Independent Claim, it is clear
that the subject patent application primarily discloses the feature for
transferring instant messaging sessions concurrently between devices, such as
desktop and personal digital assistant (‘PDA’), allowing users to continue
conversations on different devices. Additionally, the subject application
discloses that the system mirrors instant messaging sessions across devices
and refresh sessions interrupted by idle or away states i.e., users can indicate
their preference for their instant messaging sessions not to be mirrored or
duplicated when they are not actively using the messaging application, such
as when they are idle or away. Further, the method claimed in the subject
patent application provides flexibility in managing instant messaging sessions
across multiple devices, allowing for seamless continuation of conversations
while also respecting the privacy of the user and also availability preferences.
Specifically, the subject patent application enables the following features:
• Concurrent Sign-on and Session Transfer
• User Preference for Non-Mirroring
• Selective Transfer of Sessions
• Perceivability of Transferred Sessions
• Visibility of User-Inspired Messages
• Ceasing Message Visibility Based on Preference

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C2. Assessment of Prior Art
28. At the outset, it is observed that both parties have only pressed into
service only one prior art designated as D1, which is a patent application with
the following bibliographic details:
Patent Application US 2003/0101343 A1
Publication No.
Publication Date 29th May, 2003
Title of System For Providing Continuity

Application Between Messaging Clients and Method
Patent Granted US6983370B2
Date of Grant 3rd January, 2006
Current Assignee/ Google Technology Holding LLC

Patentee (initially filed by Motorola Inc.)
Status Active
29. As briefly discussed above the prior art document D1 discloses a

messaging communication system provides a structured framework for real-
time communication among users through various messaging sessions. It
enables users to customize their communication experience through client and
session preferences, facilitating efficient and personalized messaging
interactions. Relevant figures of the said prior art document are set out
hereinbelow for ready reference.

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30. The abstract of the subject patent application outlines a messaging
communication system where one client establishes a connection and
transfers data to another client. The receiving client then uses that data to
establish its own connection. The abstract of the subject patent specification
is extracted as under:
“A messaging communication system (10) includes a

plurality of messaging clients (12). A first messaging
client (14) establishes a first communication connection
(16) operating using a plurality of client data (25). The
first messaging client (14) transfers the plurality of
client data (25) to a second messaging client (20). The
second messaging client (20) establishes a second
communication connection (22) operating using the
plurality of client data (25).

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31. A perusal of this prior art document D1 would show that the
background art discussed is in respect of the manner in which continuous
messaging is enabled between users of multiple electronic devices. Such
messaging could be between two individuals or even as part of private chat
rooms wherein the user can enter through an invitation or an unrestricted
public chat room or a limited access public chat room. The background of D1
discusses the manner in which the users can use different devices for
participating in the messaging communication. It also sets out the manner in
which, if a particular user has logged onto a device and is engaging in a
conversation and needs to again log on from a second device, for example,
from a fixed to a mobile device, the user may be required to disconnect the
first device and again log in to the messaging platform. The user, however,
may not have the history of the chat or the messaging on the second device
owing to the discontinuity, though the user may be able to participate in the
messaging. This background of the state of the art is captured in the D1 as
under:
“[0011] Some messaging services support access of a

single account from multiple devices. Further, some
messaging services also support simultaneous login of
devices on the same account. Still further, some
messaging services utilize a resource extension to
describe the device that is being utilized to
communicate. For example an account user logging in
with a mobile device can choose to use "mobile device"
as their resource extension while logging into the same
account from the home personal computer may utilize a
resource extension of "home computer".
[0012] When using messaging services that allow
access from multiple devices, an account user can log

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on with a first messaging device and engage in
conversations with other account users and later log on
with a second messaging device. For example, users of
mobile devices would typically benefit if a messaging
session in progress on a fixed network device could be
continued on a mobile device. This would allow the
account user to continue the messaging session when the
account user is no longer in proximity to the fixed
network device. In addition the account user would
benefit if a messaging session that was in progress on a
mobile device could be continued on a fixed network
device that may have a superior user interface.
[0013] In order to switch to a different device with
existing technology, the account user may have to cause
the currently connected device to disconnect from the
message server. The account user would then have to
cause the second device to connect to the message
server and login. Finally, the account user would have
to re-initiate each messaging session (one-to-one,
public chat, private chat, electronic game) that was in
progress on the first device. The disadvantage of this
method is the numerous manual operations required of
the account user to change devices. A further
disadvantage is the lack of messaging session
continuity. For example, the second device will not have
the session history that was available on the first device,
and the second device may not be able to re-connect to
chat rooms that restrict the number of active account
users since another account user may have connected to
the chat room after the account user's first device
disconnected.”
32. Accordingly, the D1 states that the need for the invention is as under:
“[0014] What is needed is a system and method for
maintaining continuity between messaging clients.”

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33. A perusal of the above background and the need of the invention as
stated in D1 shows that there was a long felt need for users to be able to access
messaging platforms from multiple devices without losing the continuity.
This problem in the art is sought to be remedied by D1 through the invention,
which has been patented by Motorola1. The said prior art document seeks to
patent an invention, which is a messaging communication system having a
plurality of messaging clients with various features provided for users.
34. Some features, as are relevant for the present analysis are captured in
paragraphs 32, 94 and 97 of the said prior art D1.
35. Paragraph 32 of the Complete Specification of the suit patent
application describes a messaging communication system where an account
user can set various session preferences for communicating within a
messaging session. The said paragraph is extracted below:
“[0032] The plurality of session preferences 43 defines
certain attributes settable by the account user 30 for
communicating within the messaging session 40 using
the messaging client 26. The plurality of session
preferences 43, for example, can include text font
attributes, filter settings, blocking settings, alert
settings, screen names, buddy list groups, electronic
mailboxes, parental control settings, an alert option
such as alert on receipt of a new real time message or
no alert on receipt of a new real time message,
guaranteed or non-guaranteed delivery, timeout setting
for participation in the messaging session 40, and
number of real time messages to retain in the session
history 45 and to display. It will be appreciated by one
of ordinary skill in the art that the plurality of session
preferences 43, in accordance with the present
invention, can include any of the session preferences
1
Now acquired by Google LLC

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mentioned herein or an equivalent. In one embodiment,
the plurality of session preferences 43 includes a
session timer. (not shown) The session timer is a preset
time period upon which the messaging client 26 is active
within the messaging session 40. The plurality of
session preferences 43 in one embodiment is
transferred to the messaging client 26 when the
messaging session 40 is activated. Alternatively, the
account user 30 manually can set the plurality of
session preferences 43. Alternatively, a default set of
session preferences can be preprogrammed in the
messaging client 26 to enhance the efficiency of
managing the participation in the plurality of messaging
sessions 24. The plurality of session participants 44
includes each account user participating in the
messaging session 40 along with the account identifier
for each participating account user.
36. A perusal of the above extract would show that a user has an option of
choosing various preferences for the session for communicating on the
messaging platform. Such preferences include by way of illustrations:
● Type of Font
● Filter settings
● Alert settings
● Blocking settings
● Screen names
● Parental control settings
● Timeout settings
● Number of messages to be retained in a session history
● Number of messages to be retained and displayed
● Timer for a session

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● Default settings of session preference, which can be programmed in a
manner to enable the user to participate in the messaging sessions
● Ability for the account user to manually set the session preferences
● Transfer of session preferences to the messaging client when the
messaging session is activated.
37. Further, paragraph 94 of the Complete Specification of the suit patent
application outlines the operation of a messaging communication system, as
depicted in a flowchart in FIG. 13 of the said prior art. The said paragraph
also discusses the transfer of session data between clients can be interpreted
as a form of session continuity or synchronisation. The said paragraph is
extracted below:
“[0094] FIG. 13 is a flowchart illustrating the
operation of the messaging communication system
10,170 in accordance with the present invention.
Beginning with Step 296, the first messaging client 14
establishes the first communication connection 16 for
communication within at least one of the plurality of
messaging sessions 24 within the messaging
communication system 10,170. For example, when the
first messaging client 14 operates within the fixed
network device 50, the first messaging client 14 accesses
the appropriate network and notifies the messaging
communication system 10,170 of its connection
information (i.e.: IP address and number of the port
assigned to the first messaging client 14). Next, in Step
298, the process determines whether or not an
authentication is required. It will be appreciated by one
of ordinary skill in the art that an authentication can be
required of the first messaging client 14, of the first
account user 29 utilizing the first messaging client 14,
or of the messaging device in which the first messaging
client 14 operates, or an equivalent. In Step 300, when
an authentication is required in Step 298, a first

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authentication is performed. The first authentication of
Step 300 checks that the first account user 29 or
alternatively the first messaging client 14 is authorized
to establish the first communication connection 16
and/or authorized to participate within one or more of
the plurality of messaging sessions 24. Next, in Step 302,
when the first authentication of Step 300 is completed,
and also when the authentication is not required in Step
298, the first messaging client 14 operates using the
first communication connection 16 and accumulates
the plurality of session data 36 for each messaging
session 40 for which the first messaging client 14 is
participating. In accordance with the present invention,
the plurality of session data 36 can include the session
identifier 41, the session priority 42, the session
preferences 43, the session participants 44, or the
session history 45. It will be appreciated by one of
ordinary skill in the art that the plurality of session data
36 can include any of the items mentioned herein or an
equivalent. Next, in Step 304, the process determines
whether a data transfer is required or requested. A data
transfer, in accordance with the present invention, is
the capability for a first account user 29 to change
communication means within the messaging
communication system 10, 170 from the first
messaging client 14 to the second messaging client 20.
For example, when the first account user 29 establishes
the first communication connection 16 using the fixed
network device 50 and thereafter needs to become
mobile, the first account user 29 can transfer the first
client data 17 including the plurality of session data 36
accumulated for the first communication connection 16
to the second messaging client 20 which for example can
operate on the mobile device 90. When no data transfer
is required or requested in Step 304, the first
communication connection 16 is maintained in Step
302, whereby the first messaging client 14 continues to
accumulate the plurality of session data 36 for each

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messaging session 40 for which the first messaging
client 14 participates. In Step 306, when a data transfer
is required or requested in Step 304, the process
determines if it is necessary to verify the second
messaging client 20 prior to transferring the first client
data 17 including the plurality of session data 36 to the
second messaging client 20. When verification of the
second messaging client 20 is required, the second
messaging client 20 is verified in step 308. For example,
the first messaging client 14 and the second messaging
client 20 can both be pre-configured with a private
value and the first messaging client 14 can exchange
messages with the second messaging client 20 that verify
that the second messaging client 20 has the correct
private value. Next, in Step 310, after the second
messaging client 20 is verified in Step 308 or when no
verification is required in Step 306, the first client data
17 including the plurality of session data 36 is
transferred from the first messaging client 14 to the
second messaging client 20. It will be appreciated by
one of ordinary skill in the art that a portion of the first
client data 17 can alternatively be transferred in Step
310. It will further be appreciated by one of ordinary
skill in the art that the transfer of the first client data 17
can be accomplished using a direct connection between
the first messaging client 14 and the second messaging
client 20 or a connection through the message server
172, both either via a network connection, a wireless
connection such as through the wireless communication
system 114, a Bluetooth connection, or IRDA
connection, a wired connection such as through the
wired communication system 89, a network connection
separate from the wireless communication system, an
RS-232 connection or the broadcast messaging system
274, or an equivalent.
38. The nature of pre-programmed session preferences as discussed in

paragraph 97 deals with how some part of the data could be transferred from

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one messaging device to a second messaging device. It also discusses how the
same could be triggered through different mechanisms, for example when the
first device has a break in the power circuit or when a specific command is
given from the fixed device or if there is a pre-programmed message to detect
the activation of the second device. Paragraph 97 also recognises that the
second device can request for transfer of some part of the data from the first
device immediately upon the second device being activated.
“[0097] Similarly, the method illustrated by the
flowchart of FIG. 13 allows messaging sessions to be
easily transferred between different account users. For
example, if the first account user 29 is a customer
service representative and the first account user 29 is a
participant in the plurality of messaging sessions 24
with customers. The first account user 29 may want to
transfer a portion of the plurality of messaging
sessions 24 to another account user 30 such as a
second customer service representative. The second
customer service representative would benefit from
having, access to the session history 45 of the
transferred messaging sessions. For example, the
second customer representative can avoid asking the
customer for information already provided to the first
account user 29. FIG. 14 is a flowchart illustrating
more detail of the operation of the messaging
communication system 10,170. Specifically, FIG. 14
illustrates various methods in which the data transfer
query (Step 304 of FIG.13) can be answered in the
affirmative. The operation begins with Step 302, in
which the first messaging client 14 operates using the
first communication connection 16 and accumulates the
plurality of session data 36 for each messaging session
40 for which the first messaging client 14 is
participating. Next, in Step 326, the process determines
whether or not the first messaging device in which the
first messaging client 14 operates has received a user

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input requesting the transfer of at least a portion of the
first client data 17 including the plurality of session data
36. For example, when the messaging device in which
the first messaging client 14 operates is the fixed
network device 50 of FIG. 5, the first account user 29
can enter and manipulate information (including
requesting the transfer of the first client data 17) by the
user input 88 to the user interface 64, e.g., the keyboard
66, the "mouse,"68, the pen or puck activated tablet (not
shown), the trackball 70, the audio activated command
recognition processor 72, or the like. Similarly, when
the first messaging device in which the first messaging
client 14 operates is the mobile device 90 of FIG. 6, the
first account user 29 can enter a user input such as a
button press, a series of button presses, a voice
response, or some other similar method of manual
response initiated by the first account user 29 to the
device user interface 110 of the mobile device 90.
Similarly, when the first messaging device in which the
first messaging client 14 operates is the cable box 136
of FIG. 7, the user input is made via the cable box user
interface 160. It will be appreciated by one of ordinary
skill in the art that the user input can be any of the 14
inputs mentioned herein or an equivalent. When a user
input requesting the transfer of at least a portion of the
first client data 17 including the plurality of session data
36 is not received by the first messaging device in which
the first messaging client 14 operates, the process next,
in Step 328 determines whether a user input requesting
the transfer of at least a portion of the first client data
17 including the plurality of session data 36 has been
received by a second messaging device in which the
second messaging client 20 operates. For example,
when the second messaging device in which the second
messaging client 20 operates is the fixed network device
50 of FIG. 5, the first account user 29 can enter and
manipulate information (including requesting the
transfer of the first client data 17) by the user input 88

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to the user interface 64, e.g., the keyboard 66, the
"mouse, "68, the pen or puck activated tablet (not
shown), the trackball 70, the audio activated command
recognition processor 72, or the like. Similarly, when
the second messaging device in which the second
messaging client 20 operates is the mobile device 90 of
FIG. 6, the first account user 29 of the mobile device 90
can enter a user input such as a button press, a series of
button presses, a voice response, or some other similar
method of manual response initiated by the first account
user 29 to the device user interface 110 of the mobile
device 90. Similarly, when the second messaging device
in which the second messaging client 20 operates is the
cable box 136 of FIG. 7, the user input is made via the
cable box user interface 160. It will be appreciated by
one of ordinary skill in the art that the user input can be
any of the inputs mentioned herein or an equivalent.
When a user input requesting the transfer of at least a
portion of the first client data 17 including the plurality
of session data 36 is not received by the second
messaging device in which the second messaging client
20 operates, the process next, in Step 330 determines
whether the second messaging client 20 is the mobile
device 90, and if so, whether the transfer of at least a
portion of the first client data 17 including the plurality
of session data 36 is initiated in response to detection
of a movement of the mobile device 90. For example,
the server processor 174 of the message server 172 can
be programmed to track the location of each of the
plurality of messaging clients 12, and transfer the
plurality of session data 36 to the second messaging
client 20 in response to the detection of a change of
location of the mobile device 90 in which the second
messaging client 20 operates. Alternatively, the mobile
device 90 can include location-sensing capabilities such
as a Global Positioning Satellite receiver, and in
response to the detection of a change of location, send a
request to transfer the plurality of session data 36.

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Alternatively, the second messaging device in which the
second messaging client 20 operates can detect its
removal from a charging base. Alternatively, the second
messaging device in which the second messaging client
20 operates may have a motion-sensing device such as
a tilt sensor whose electrical properties change when
under motion. When no device movement is detected or
alternatively a device movement program is not
included in either the mobile device 90 or the message
server 172, in Step 330, the process continues to Step
331 in which it is determined whether or not the transfer
of at least a portion of the first client data 17 including
the plurality of session data 36 is required due to the
activation of the second messaging client 20. The
activation of the second messaging client 20 can be, for
example, in response to a user input to a power circuit
15 that powers the second messaging client 20.
Alternatively, the activation of the second messaging
client 20 can be in response to an instruction command
to activate sent from CPU 53 to the fixed messaging
client 84 of the fixed network device 50, from the
processor 102 to the mobile messaging client 112 of the
mobile device 90, or from the controller 138 to the
cable messaging client 40 of the cable box 136. In one
embodiment of the present invention, the message server
172 is programmed to detect the activation of the second
messaging client 20. In an alternate embodiment, the
second messaging client 20 can request the transfer of
at least a portion of the first client data 17 including the
plurality of session data 36 upon being activated. When
the second messaging client 20 is not activated in Step
331, the process continues to Step 332 in which it is
determined whether the second messaging client 20 has
connected to the message server 172. When no
connection of the second messaging client 20 is
detected, the process returns to Step 326 and continues
checking for the various methods in which the data
transfer query (Step 304 of FIG. 13) can be answered in

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the affirmative. In Step 333, when there is an affirmative
answer to any of the previous Steps 326 to 332, the query
of Step 304 of FIG. 13 of whether or not to transfer data
is answered in the affirmative.”
39. One of the submissions of the Appellant is that despite the broad
disclosure in the prior art document D1, one feature that is not explicitly
disclosed in the prior art D1 and is not contemplated is the feature of mirroring
of data which is on the first device messaging platform to a second device
simultaneously if the user prefers to do so or sets a preference.
40. However, the above extracted portions would show that the data can be
easily transferred between the two devices of a particular user in various
methods i.e.
• after verification/authentication or without verification/authentication
of the second device;
• by pre-configuring the second device or by using a direct connection
between the first and second device through a network connection
between the two devices either wireless or through platform;
• transfer triggered upon device activation, as described in Steps 330 and
331, in which the system determines whether the transfer of at least a
portion of the data, including session data, from the first device is
required due to the activation of the second messaging client.
41. D1, therefore, achieves a position wherein two devices of the same user
are able to access, at least a part of the messaging or even the complete
messaging history depending upon the preferences of the user. Thus, D1 also
contemplates the requirement of a user being able to access such messaging
platform through two devices simultaneously or consecutively, depending on
the preference of the user.

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C3. Tests for Assessment of Inventive Step and obviousness
42. This Court has also considered the decision of Technical Board of
Appeal of the European Patent Office in Murata Manufacturing Company
Limited T0970-00-3.4.2 decision cited T-0967/97 dated 15th September,
2004 relied by the Appellant for submissions of ex post facto analysis. In the
said decision the Board of Appeal had held as under:
“4.1.2 In the assessment of inventive step according to

the problem-solution approach knowledge of the
invention and its effects is not only inevitable by the very
nature of the assessment, but also necessary, in
particular when proceeding to the identification of the
closest prior art and to the determination of the
technical contribution achieved by the invention over
the prior art. However, as repeatedly stressed by the
Boards of Appeal (see "Case Law of the Boards of
Appeal", 4th ed, 2001, chapter I, section D-2), the
primary purpose of the problem-solution approach is
the objective assessment of inventive step and
consequently any ex-post facto analysis, and in
particular any conclusion going beyond what the skilled
person would have objectively inferred, without the
benefit of hindsight knowledge of the invention, from the
prior art is of necessity at variance with a proper
application of the problem-solution approach (see
decision T 967/97, not published in OJ EPO, point 3.3
of the reasons). This applies not only to – among others
- the determination of the closest prior art ("Case Law
of the Boards of Appeal", supra, chapter I, sections D-
3.3 and D-3.5), the formulation of the technical problem
solved by the invention (supra, chapter I, section D-4.2),
and the assessment of what would have been obvious to
the skilled person in the light of the state of the art
(supra, chapter I, section D-6.1), but also to the
determination of the technical contribution of the
invention to the prior art. Accordingly, the

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determination of the technical contribution achieved by
the invention over the closest state of the art requires an
objective and technically meaningful and consistent
comparison of the claimed combination of structural
and functional features with the technical information
conveyed to the skilled person by the closest state of the
art (point 4.1.3 below). Any attempt to interpret the
disclosure of the closest prior art so as to distort or
misrepresent, based on hindsight knowledge of the
invention, the proper technical teaching of the
disclosure in such a way that it artificially meets specific
features recited in the claim under consideration (point
4.1.4 below) must therefore fail, especially as this would
risk unfairly and tendentiously concealing the technical
contribution of the invention (point 4.2.2 below) and
prejudice the subsequent objective determination of the
technical problem solved by the claimed invention.”
43. In Avery Dennison Corporation v. Controller Of Patents And Designs

(2022/DHC/004697), the guidelines for satisfying the test of obviousness has
been laid down. The relevant portions of the said judgement are set out below:
“Test for Inventive Step/Lack of Obviousness
10. In order to decide this issue, some of the
fundamental principles for determining the existence of an
inventive step and the lack of obviousness need to be
emphasised.
11. For determining inventive step or lack thereof,
various approaches and tests have emerged over the years
from decisions of courts/authorities as also from
examination guidelines of patent offices from different
jurisdictions. The same include:
i. Obvious to try approach:
• This approach involves an analysis of whether in view
of the teachings/solutions proposed in the prior art, it was
obvious to try and arrive at the subject invention.
ii. Problem/solution approach:
• This approach considers whether in the light of the

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closest prior art and the objective technical problem, the
solution claimed in the invention would be obvious to the
skilled person. If the skilled person can decipher the
solution being claimed, then the subject matter is held to
be obvious.
• This test has been discussed by the Division Bench in
F. Hoffmann (supra).
iii. Could-Would Approach
• In this approach the question that is raised is whether
there is any teaching in the prior art as a whole that would
and not simply could have prompted a skilled person, with
the knowledge of the objective technical problem, to either
modify or adapt the closest prior art to arrive at the
subject matter of the claims.
iv. Teaching Suggestion Motivation (TSM test)
• This test originated in the USA as per which, if by the
Teaching, Suggestion or Motivation from the prior art, an
ordinary skilled person can modify the prior art reference
or combine prior art references to arrive at the claimed
invention, then the subject matter being claimed is
obvious.
• However, the application of this test ought not to be
done in a narrow manner as held by the US Supreme
Court in the case of KSR International v. Teleflex, 550
U.S. 398 (2007).
12. The above mentioned approaches to determining
inventive step have been discussed and debated in various
jurisdictions, including the UK, EPO, USA etc. These
approaches have also been applied, even with
modifications, in order to suit the facts and circumstances
of each case by Courts. 2 Some of these approaches to
determine lack of obviousness also find a mention in the
Guidelines for Examination published by the European
Patent Office.
13. One of the seminal tests for determining
inventive step and lack of obviousness was first laid down
by the House of Lords in Windsurfing International Inc.
2
Actavis Group PTC EHF v. ICOS Corporation, [2019] RPC 9, Human Genome Sciences v. Eli Lilly
[2012] RPC 6 and Johns-Manville Corporation, [1967] R.P.C. 479

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v. Tabur Marine Ltd., [1985] RPC 59.
14. In Windsurfing (supra) the Court laid down a
four-step test to determine whether a patent satisfied the
requirement of inventive step and lack of obviousness. The
said steps are as under:
“1. Identifying the inventive concept embodied
in the patent;
2. Imputing to a normally skilled but
unimaginative addressee what was common
general knowledge in the art at the priority
date;
3. Identifying the differences if any between the
matter cited and the alleged invention; and
4. Deciding whether those differences, viewed
without any knowledge of the alleged invention,
constituted steps that would have been obvious
to the skilled man or whether they required any
degree of invention.”
15. The tests laid down in Windsurfing (supra) were
again considered by the England and Wales Court of
Appeals in Pozzoli Spa v BDMO SA, [2006] EWHC 1398
(Ch) and modified by Jacob LJ as under:
“1. (a) Identify the notional "person skilled
in the art"
(b) Identify the relevant common
general knowledge of that person;
2. Identify the inventive concept of the claim
in question or if that cannot readily done,
construe it;
3. Identify what, if any, differences exist
between the matter cited as forming part of the
"state of the art" and the inventive concept of
the claim or the claim as construed;
4. Viewed without any knowledge of the
alleged invention as claimed, do those
differences constitute steps which would have
been obvious to the person skilled in the art or
do they require any degree of invention?”

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16. The ld. Division Bench of this Court in F.
Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd.,
2016(65) PTC 1 (Del) added a further step as elaborated
below:
“Step No.1 To identify an ordinary person
skilled in the art,
Step No.2 To identify the inventive concept
embodied in the patent,
Step No.3 To impute to a normal skilled but
unimaginative ordinary person skilled in the art
what was common general knowledge in the art
at the priority date.
Step No.4 To identify the differences, if any,
between the matter cited and the alleged
invention and ascertain whether the differences
are ordinary application of law or involve
various different steps requiring multiple,
theoretical and practical applications,
Step No.5 To decide whether those differences,
viewed in the knowledge of alleged invention,
constituted steps which would have been
obvious to the ordinary person skilled in the art
and rule out a hindside approach”
xxx xxx xxx
18. The above approaches, tests and steps laid down

by various courts and authorities – all seek to formulate
the manner in which prior arts are to be analysed and a
patent application is to be tested on the anvil of inventive
step. None of the above approaches and tests are to be
adopted in a straightjacketed manner. Each patent
application, depending on the field of technology and the
nature of the prior arts may require different approaches
or tests to be followed or applied. In some situations, the
Court may even adopt an approach of combining more
than one test as was done by the UK Supreme Court in
Actavis v. ICOS, [2019] UKSC 15. In the ultimate
analysis, the examiner in the patent office or the Court
adjudicating the issue would need to identify the elements

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in the prior art and compare the same with the claims in
question from the point of view of a person skilled in the
art, as was done by the ld. Division Bench of this Court in
3M Innovative Properties Ltd3. If the same demonstrates
a technical advancement over the prior art on the priority
date of the application, then the patent would be liable to
be granted. Unlike the test of novelty or anticipation which
is easier to determine by a straight comparison with the
prior art, in the case of obviousness, the attempt of the
Court is conjectural – making it a rather difficult exercise.
19. The decision of the UK Supreme Court in
Actavis (supra) identified the ten relevant considerations
to be made while assessing obviousness. The Court
mentioned that the factors identified in the list are not
exhaustive. The relevant considerations are:
“(1) First, it is relevant to consider whether
something was "obvious to try" at the priority
date, in other words, whether it is obvious to
undertake a specific piece of research which
had a reasonable or fair prospect of success
…;
(2) Secondly, it follows the routine nature of
the research and whether there is an
established practice of following the research
through to a particular point may be a relevant
consideration which is weighed against the
consideration that the claimed process or
product was not obvious to try at the outset of a
research programme. …
(3) Thirdly, the burden and cost of the research
programme is relevant. But the weight to be
attached to this factor will vary depending on
the particular circumstances….
(4) Fourthly, the necessity for and the nature
of the value judgments which the skilled team
would have in the course of a testing
programme are relevant considerations ….
3
FAO (OS) 292/2014 & CM No. 10651/2014 titled 3M Innovative Properties Ltd. and Ors. vs. Venus
Safety and Health Pvt. Ltd. and Ors.

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(5) Fifthly, the existence of alternative or
multiple paths of research will often be an
indicator that the invention contained in the
claim or claims was not obvious. If the notional
skilled person is faced with only one avenue of
research, a “one way street”, it is more likely
that the result of his or her research is obvious
than if he or she were faced with a multiplicity
of different avenues. But it is necessary to bear
in mind the possibility that more than one
avenue of research may be obvious …
(6) Sixthly, the motive of the skilled person is a
relevant consideration. The notional skilled
person is not assumed to undertake technical
trials for the sake of doing so but rather
because he or she has some end in mind. It is
not sufficient that a skilled person could
undertake a particular trial; one may wish to
ask whether in the circumstances he or she
would be motivated to do so. The absence of a
motive to take the allegedly inventive step
makes an argument of obviousness more
difficult …
(7) Seventhly, the fact that the results of
research which the inventor actually carried
out are unexpected or surprising is a relevant
consideration as it may point to an inventive
step …
(8) Eighthly, the courts have repeatedly
emphasised that one must not use hindsight,
which includes knowledge of the invention, in
addressing the statutory
question of obviousness. That is expressly
stated in the fourth of the Windsurfing/Pozzoli
questions …
(9) Ninthly, it is necessary to consider whether
a feature of a claimed invention is an added
benefit in a context in which the claimed
innovation is obvious for another purpose …”

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20. This Court in the case of Agriboard
International LLC. v. Deputy Controller of Patents &
Designs [C.A.(COMM.IPD-PAT) 4/2022 dated 31st
March, 2022] held that while rejecting an application for
lack of inventive step, discussion on the prior art, the
subject invention and manner in which the subject
invention would be obvious to a person skilled in the art
would be mandatory. Merely arriving at a bare conclusion
that the subject invention lacks inventive step would be
contrary to Section 2(1)(ja) of the Act itself, is insufficient.
The relevant portion of the judgment reads as under:
"24. In the opinion of this Court, while rejecting
an invention for lack of inventive step, the
Controller has to consider three elements-
• the invention disclosed in the prior art,
• the invention disclosed in the
application under consideration, and
• the manner in which subject invention
would be obvious to a person skilled in
the art.
25. Without a discussion on these three
elements, arriving at a bare conclusion that the
subject invention is lacking inventive step
would not be permissible, unless it is a case
where the same is absolutely clear. Section
2(1)(ja) of the Act defines `inventive step' as
under:
(ja) "inventive step" means a feature of an
invention that involves technical advance as
compared to the existing knowledge or having
economic significance or both and that makes
the invention not obvious to a person skilled in
the art.
26. Thus, the Controller has to analyse as to
what is the existing knowledge and how the
person skilled in the art would move from the
existing knowledge to the subject invention,
captured in the application under
consideration. Without such an analysis, the
rejection of the patent application under

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Section 2(1)(ja) of the Act would be contrary to
the provision itself. The remaining prior arts
which are cited by ld. Counsel having not been
considered in the impugned order, the Court
does not wish to render any opinion in this
regard.”
C4. Comparison of the subject Patent to the prior art D1
44. In the subject patent application, the title itself deals with managing
instant sessions with multiple devices. The background of the subject patent
application discusses the need for transfer of messaging sessions from one
device to the other. The claims as filed, along with the complete specification
of the subject patent application are method claims, which permit the user to
have a preference for mirroring of the messaging sessions either during idle
or an away state. Basis the analysis, it can be noted that though the word
mirroring is not used in the prior art document D1, when the claims,
description along with the flow charts and figures of the said prior art are
compared with the claims of the subject patent with the figures, it makes it
quite clear that the purpose of the subject patent is also for viewing of instant
messaging sessions on multiple devices. The mere fact that the preference can
be given by the user as to whether the viewing should happen when the device
is idle or away, would merely be one command to be given in the device and
nothing more.
45. The ‘preference’ that the subject patent contemplates is, in fact, nothing
but one of the illustrative preferences, which document D1 would also enable
a person skilled in the art to arrive at and thus would be obvious to a skilled
person. For example, the discussion in paragraph 32 sets out a large number
of preferences of which, preference relating to viewing when the device is idle

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or away could be one such preference. Technologically or technically, the
preference that is contemplated in the subject patent application could be one
of the pre-programmed session preferences as contemplated in paragraphs 32
and 94 of the prior art document D1. Though such a preference is not
specifically mentioned and thus, novelty of the subject patent would not be
specifically hit, such a preference can be easily imagined by any person
skilled in the art. It does not require any imagination or additional innovative
technique for such a preference to be included.
46. During the course of arguments, ld. Counsel for the Appellant argued
that the following features are not disclosed in the prior art D1:
• that while the messaging session is active or on in one device, the user
cannot be given a preference to mirror or not in the other device;
• that there is no provision for the user to make a choice whether to
mirror the messaging session on another device while the session is
ongoing on one device.
47. In light of the discussion on paragraphs 94 and 97 of the prior art
document D1, it is clear that paragraph 94 specifies the feature of transfer of
session data, including session history, from one messaging client to another.
This transfer implies that the messaging session, or aspects of it, can be
replicated on another device, which is a fundamental aspect of mirroring.
Further, paragraph 97 specifically mentions the transfer of messaging sessions
between different account users. This disclosure clearly suggests that the
system being defined in D1, is capable of moving an ongoing session from
one device to another, which aligns with the concept of mirroring a session.
48. In respect of the contention that no option or choice is being given to
the user to mirror sessions from one device to another, paragraph 32

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introduces the concept of user-defined settings for messaging sessions.
Therefore, this flexibility implied by user preferences and the ability to
transfer session data and sessions between devices indicate that users could
potentially choose whether and also when to mirror sessions on another
device.
49. In summary, while the subject patent application provides a specific
implementation of user preferences for mirroring instant messaging sessions,
the core concept of managing sessions across multiple devices and the
flexibility of using user-defined settings for messaging session are already
present in the prior art document D1. Moreover, when the actual manner and
method of mirroring is already enabled, the same cannot be held to be
inventive, merely by making the process automatic unless a negative
preference is chosen by the user.
50. In view of circumstances of the present case, ld. Controller had cited
the relevant portions of D1 during the examination at FER stage. The analysis
of the subject patent application was conducted and the application was stated
to be obvious during the FER stage itself not at a later stage. Thus, the
argument of the Appellant does not hold in the present case.
51. In the present analysis, the comparison of the subject patent application
to the prior art D1 clearly establishes the lack of inventive step.
52. In the opinion of this Court, by applying any of the settled tests the
Controller is right when he holds that the step contemplated in the subject
patent application lacks inventive step and is obvious to a person skilled in
the art. The sum and substance of the above discussion is that despite the
submissions made on behalf of the Appellant, the subject invention is not
entitled for grant of a patent in view of lack of inventive step. Thus, the present

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appeal is not tenable and is liable to be dismissed.
D. Conduct of the Appellant
53. Additionally, one important fact also needs to be noted in the present
case i.e. one of the submissions made on behalf of the Appellant was that the
corresponding EU application of the subject patent was abandoned and not
rejected by the EPO. However, ld. Counsel for the Controller of Patents
points out that the corresponding subject patent application filed at EPO was
not abandoned, but was in fact rejected by the EPO. The order of the EPO has
recorded as under:
“The subject-matter of claim 1 is not novel.

2.2.2 Even if the division would consider the feature of
allowing the user to set a preference not to mirror
transferred instant messaging sessions during an idle or
away state as not implicitly disclosed by allowing the user
to set the session timer or allowing the user to input
signals to disconnect a client from continued session
transfers and thus as a difference, then the same
arguments as given in relation to claim 1 of the main
request applies (reference is made to section 1.2.2 above).
The feature would also lack an inventive step (Art. 56
EPC)
In addition, even if it was considered that the refreshing
of messaging session on the first controller was not
implicitly disclosed in D1, then such difference would
represent a mere implementation choice based on
circumstances that lacks inventive step in the sense of
Art. 56 EPC.
Since there is no combined effect evident from the two
potential differences they can be considered separately as
juxtaposition features. The skilled person would therefore
arrive at the claimed invention exercising any inventive
step in the sense of Art. 56 EPC”

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54. In addition, it also deserves to be noted that a divisional application of
the corresponding EU patent application (which was rejected) was also filed
with an identical title at the EPO, which was again rejected on 21st March
2008. The reason for rejection of the divisional application is as under:
“2.3.1 Claim 1
Document D1 is considered to be the closest prior art, it
discloses the features of claim 1 (refer to citations for
corresponding features of claim 1 of the main request)
with the difference of:
auto-selecting the device with the most complete
instant messaging session from which to receive the
selected instant messaging session if the session is
mirrored at multiple other instant messaging
controllers on multiple other devices
The division is of the opinion that the claimed invention
proposes a mere automation of manual device selection
functions previously performed by a human operator.
However this alone is in line with the general trend in
technology and thus can not be considered inventive
according to Art. 56 EPC (refer also to T775/90).
Further, the whole application appears to lack any
information on implementing details of on how such
automation is to be achieved in the technical IM
environment (see section 2.2.2 above).
Even if the division, for the sake of argument, would
assume that the skilled person was able to perform the
invention over the whole area claimed entirely by using
his common general knowledge and without undue
burden and without needing inventive skill (refer to EPO
GL F-III 1), then any such subject-matter could not
possibly involve an inventive step in the sense of Art. 56
EPC.
2.3.2 Dependent claims 2-11 do not appear to contain any
additional features which, in combination with the

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features of any claim to which they refer, meet the
requirements of the EPC with respect to inventive step
(refer to the reasoning for the main request under section
1.3.2 above).
2.3.3 The subject-matter of claim 12 corresponds to that
of any one of claims 1 to 11 expressed in terms of computer
readable media. The same objections as given in relation
to claims 1 to 11 under 56 EPC are also applicable to
claim 12.
2.4 Applicants arguments
None of the cited documents discloses the feature of auto-
selecting the device with the most complete instant
messaging session, as required by amended claim 1.
Furthermore, this feature is advantageous because the
user does not need to engage with a user interface to select
the device with the most complete session rather the device
with the most complete session is auto-selected. This
advantage cannot be achieved by any of the cited
documents.
1.3.1 Division's response:
The division does not find the arguments convincing for
the reasons stated in section 2.3.1 above.
III. Decision
Accordingly, as the requests on file of the European patent
application do not comply with the requirements set out in
the EPC, for the reasons given (Art. 54 (1) and (2), 56, 83,
84, 123(2) EPC), the application is refused according to
Article 97(2) EPC.”
55. Considering the submission made that the EPO application was
abandoned and coupled with the fact that the corresponding EU application
for the subject patent comprised of not one but two applications, including a
divisional application, and that they both were rejected for lack of inventive
step, in the present appeal costs are also liable to be imposed. The Appellant

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in the present appeal not only presented wrong facts to the Court, but also
failed to disclose the information regarding the refusal of the EU parent
application as also of the divisional application which was filed consequently.
Thus, the disclosure requirements under the Act are not complied with.
E. Directions
56. In view thereof, the present appeal is, accordingly, dismissed with costs
of Rs. 1 lakh upon the Appellant. 50% of the costs shall be deposited with the
office of CGPTDM and remaining 50% shall be paid to the ld. CGSC.
57. The Court would like to record its commendation for the ld. Deputy
Controller – Mr. Neeraj Tayal, who assisted the Court in adjudication of the
present appeal.
58. A copy of this judgement be sent to the Office of the CGPDTM at the
email ID: [email protected] for compliance.
PRATHIBA M. SINGH
JUDGE
APRIL 02, 2024/dk/bh/am

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F. ANNEXURE 1
What is claimed is:

1. A method for transferring instant messaging sessions, the method
comprising:
receiving a selection, from a user within a user interface, of at least one
instant messaging session from among multiple instant messaging sessions to
transfer from a first instant messaging controller on a first device to at least a
second instant messaging controller on a second device wherein the user is
signed on concurrently to the first instant messaging controller on the first
device and the second instant messaging controller on the second device;
transferring at least a portion of the selected instant messaging session
from the first instant messaging controller on the first device to the second
instant messaging controller on the second device; and
making the transferred portion of the instant messaging session
perceivable on the second instant messaging controller on the second device.
2. The method as in claim 1 wherein receiving the selection includes
receiving, from the first instant messaging controller on the first device, the
selection of the instant messaging session from among multiple instant
messaging sessions.
3. The method as in claim 1 where receiving the selection includes receiving,
from the second instant messaging on the second device, the selection of the
instant messaging; session from among multiple instant messaging sessions.
4. The method as in claim 1 wherein receiving the selection includes receiving
the selection from within an instant messaging conversation interface.
5 . The method as in claim 1 further comprising enabling presentation of a

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listing of the multiple instant messaging sessions to the user at the user
interface to enable selection.
6. The method as in claim 1 further comprising enabling presentation of a
listing of other instant messaging controllers on other devices to transfer the
selected instant messaging session to the user at the user interface to enable
selection when the user is signed on to multiple other instant messaging
controllers on multiple other devices.
7. The method as in claim 1 wherein making the transferred instant messaging
session perceivable includes making the transferred instant messaging session
perceivable on both the first instant messaging controller on the first device
and the second instant messaging controller on the second device.
8. The method as in claim l wherein making the transferred instant messaging
session perceivable includes making the transferred instant messaging session
perceivable on the second instant messaging controller on the second device
to the exclusion of being perceivable on the first instant messaging controller
on the first device.
9. The method as in claim 1 wherein:
the user is signed on to, multiple instant: messaging controllers on
multiple different devices; and
making the transferred instant messaging session perceivable includes
making the transferred instant messaging session perceivable on less than all
of the instant messaging controllers on the corresponding devices.
10. The method as in claim 7 further comprising:
detecting an idle state or an away, state on the first instant messaging
controller;
and

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disabling perception of the instant messaging session on the first instant
messaging controller on the first device in response to the detect idle state or
away state.
11. The method as in claim 10 further comprising:
detecting an active state on the first instant messaging controller;
refreshing the instant messaging session on the first instant messaging
controller on the first device; and
making the instant messaging session perceivable on the first instant
messaging controller on the first device.
refreshing the instant messaging session includes refreshing the instant
messaging session on the first instant messaging controller, on the first device
automatically in response to detecting the active state and authentication; and
messaging controller on the first device includes automatically making the
instant messaging session perceivable on the first instant messaging controller
on the first device in response to the automatic refreshing.
messaging session on the first instant messaging controller on the first device
in response to input from the user requesting a manual refresh of the instant
messaging session; and
messaging controller on the first device includes making the instant
messaging session perceivable on the first instant messaging controller on the
first device in response to refreshing.

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14. The method as in claim 1 further comprising enabling the user to perceive
and select a subset of ongoing-instant messaging Sessions.
15. The method as in claim 1 further comprising conditioning whether to
present a listing of the multiple instant messaging sessions based on detection
of three or
more signed on concurrent instant messaging controllers.
present, at a new instant messaging controller on a new device, menu options
that enable
selection of which other instant messaging controllers on other devices to
transfer one or more instant messaging sessions based on a sign, on to the new
instant messaging controller at the new device.
present, at a new instant messaging controller on a new device, menu options
that enable
selection of whether to transition instant messaging sessions or to mirror
instant
messaging sessions on the new instant messaging controller and the new
device.
18. The method as in claim 1 further comprising enabling the user to select a
portion of the selected instant messaging session for transfer.
19. The method as in claim 1 further comprising enabling the user to select
on a per device basis instant messaging session transfer preferences.
20. The method as in claim 1 further comprising making user-inspired instant
messages perceivable on both the first instant messaging controller on the first
device and the second instant messaging controller on the second device.

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G. ANNEXURE 2
We claim:
1. A method (100) for transferring instant messaging sessions, the method
comprising:
in response to determining that a user is signed on concurrently to a first
instant messaging controller (725) on a first device (325a) and a second
instant messaging controller (740) on a second device (325b), enabling
the user to select one or more instant messaging sessions to transfer to
the second instant messaging controller;
receiving from the user a preference not to mirror transferred instant
messaging sessions during an idle or away state;
receiving a selection (105), from a user within a user interface, of at least
one instant messaging session from among multiple instant messaging
sessions to transfer from the first instant messaging controller on the first
device to at least the second instant messaging controller on the second
device;
transferring (115) at least a portion of the selected instant messaging
session from the first instant messaging controller on the first device to
the second instant messaging controller on the second device; and
making (120) the transferred portion of the instant messaging session
perceivable on the second instant messaging controller on the second
device;
making user-inspired instant messages perceivable on both the first
instant messaging controller (725) on the first device (325a) and the
second instant messaging controller (740) on the second device (325b)
so that the user is able to view an entire instant messaging conversation

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of user-inspired messages and co-user messages on the first instant
messaging controller and the second instant messaging controller; and
in response to the preference, ceasing instant messages being perceivable
on the first messaging controller when the first messaging controller is
in an idle or away state.
2. The method as claimed in claim 1, wherein receiving the selection
includes receiving, from the first instant messaging controller (725) on
the first device (325a), the selection of the instant messaging session
from among multiple instant messaging sessions.
includes receiving, from the second instant messaging controller (740)
on the second device (325b), the selection of the instant messaging
session from among multiple instant messaging sessions.
includes receiving the selection from within an instant messaging
conversation interface (400).
5. The method as claimed in claim 1, wherein enabling presentation of a
listing of the multiple instant messaging sessions to the user at the user
interface to enable selection.
6. The method as claimed in claim 1, wherein making the transferred
instant messaging session perceivable includes making the transferred
instant messaging session perceivable on both the first instant messaging
controller (725) on the first device (325a) and the second instant
messaging controller (740) on the second device (325b).
7. The method as claimed in claim 1, wherein making the transferred
instant messaging session perceivable includes making the transferred

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instant messaging session perceivable on the second instant messaging
controller on the second device to the exclusion of being perceivable on
the first instant messaging controller (725) on the first device (325a).
8. The method as claimed in claim 1 wherein:
the user is signed on to multiple instant messaging controllers on
multiple different devices, and
making the transferred instant messaging session perceivable includes
making the transferred instant messaging session perceivable on less
than all of the instant messaging controllers on the corresponding
devices.
detecting an active state on the first instant messaging controller;
refreshing the instant messaging session on the first instant messaging
controller (725) on the first device (325a); and
messaging controller on the first device.
messaging session on the first instant messaging controller (725) on the
first device (325a) automatically in response to detecting the active state
and authentication; and
messaging controller (725) on the first device (325a) includes
automatically making the instant messaging session perceivable on the
first instant messaging controller on the first device in response to the
automatic refreshing.

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messaging session on the first instant messaging controller (725) on the
first device (325a) in response to input from the user requesting a manual
refresh of the instant messaging session; and
messaging controller on the first device includes making the instant
messaging session perceivable on the first instant messaging controller
on the first device in response to refreshing.
12. The method as claimed in claim 1 wherein enabling the user to perceive
and select a subset of ongoing instant messaging sessions.
13. The method as claimed in claim 1 wherein conditioning whether to
present a listing of the multiple instant messaging sessions based on
detection of three or more signed on concurrent instant messaging
controllers.
present, at a new instant messaging controller on a new device, menu
options that enable selection of which other instant messaging
controllers on other devices to transfer one or more instant messaging
sessions based on a sign on to the new instant messaging controller at
the new device.
present, at a new instant messaging controller on a new device, menu
options that enable selection of whether to transition instant messaging
sessions or to mirror instant messaging sessions on the new instant
messaging controller and the new device.

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16. The method as claimed in claim 1 wherein enabling the user to select a
portion of the selected instant messaging session for transfer.
17. The method as claimed in claim 1 wherein enabling the user to select on
a per device basis instant messaging session transfer preferences.
*************************************************************

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* IN THE HIGH COURT OF DELHI AT NEW DELHI

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C1. Claim Construction

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Publication Date 29th May, 2003

Title of System For Providing Continuity

Patent Granted US6983370B2

Date of Grant 3rd January, 2006

Current Assignee/ Google Technology Holding LLC

29. As briefly discussed above the prior art document D1 discloses a

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“A messaging communication system (10) includes a

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“[0011] Some messaging services support access of a

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38. The nature of pre-programmed session preferences as discussed in

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“4.1.2 In the assessment of inventive step according to

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43. In Avery Dennison Corporation v. Controller Of Patents And Designs

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xxx xxx xxx

18. The above approaches, tests and steps laid down

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C4. Comparison of the subject Patent to the prior art D1

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“The subject-matter of claim 1 is not novel.

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What is claimed is: