Delhi High Court says Canva can't offer Present and Record feature in India (for now)

The Delhi High Court on Wednesday ruled against Canva in a patent infringement dispute concerning technology for creating and sharing interactive content [Canva v. RxPrism].

A Bench of Justices Hari Shankar and Om Prakash Shukla dismissed Canva’s appeal against a July 18, 2023 order of a single judge which had granted interim protection in favour of RxPrism Health Systems, the holder of a patent titled 'A system and a method for creating and sharing interactive content rapidly anywhere and anytime'. It held,

"A careful reading of the impugned judgment reveals that the learned Single Judge has effectively construed the four disputed claims of the Suit Patent and has undertaken a detailed claim mapping exercise. The learned Single Judge has explicitly observed that claims of the patent specification are required to be compared with the features of the Defendant’s product. Additionally, while concluding on the issue of infringement, the learned Single Judge has again referred to the mapping of the Suit Patent claims."

RxPrism, a technology startup, claimed that its patent covers a system that allows users to create interactive multimedia presentations by combining background content with a foreground audio-video overlay of the presenter, along with interactive features like navigation tools and call-to-action elements. The patented system also enables post-recording edits and sharing of the content through a web link.

According to RxPrism, Canva’s “Present and Record” feature, launched in 2020, replicated the essential elements of this patented technology. The startup alleged that despite being informed of the patent and offered a commercial licence, Canva continued to make the feature available in India without authorisation.

In July 2023, a single judge of the Delhi High Court found a prima facie case of infringement and granted an interim injunction restraining Canva from offering the feature in India. The Court also directed Canva to deposit ₹50 lakh as a security deposit for past use and imposed ₹5 lakh as costs.

Canva appealed against this order.

Before the Division Bench, Canva argued that the single judge had erred in law by misconstruing the patent claims and finding infringement at the interim stage. It contended that its product did not implement the essential elements of RxPrism’s patent and that the Court had relied on overall functional similarity rather than a strict claim-by-claim comparison.

Canva also raised a serious challenge to the validity of the patent, citing prior art such as Microsoft PowerPoint and Loom. It argued that the invention amounted to a computer programme, which is per se barred under Section 3(k) of the Patents Act, 1970.

Dismissing Canva’s appeal, the Division Bench reiterated that appellate courts should be slow to interfere with discretionary orders granting interim injunctions, unless such orders are shown to be perverse or contrary to settled legal principles.

On merits, the Court held that the single judge had correctly applied the principles governing claim construction and interim patent infringement analysis. It observed that minor variations in implementation do not defeat infringement where the essential features of the patented invention are taken.

The Bench also held that Canva’s validity challenge, though arguable, was not strong enough at the interim stage to override the statutory rights flowing from a granted patent.

Accordingly, the Bench upheld the interim injunction restraining Canva from making the “Present and Record” feature available in India, along with the directions requiring deposit of ₹50 lakh as security and payment of ₹5 lakh as costs.

The patent infringement suit filed by RxPrism will now proceed to trial.

Canva was represented by Advocates Saikrishna Rajagopal, Sneha Jain, Victor Vaibhav Tandon, Shruti Jain and Ayush Saxena.

RxPrism Health Systems was represented by Senior Advocate Swathi Sukumar with Advocates Kriti Ranjan, Vishal, Ritik Raghuvanshi and Abhishek Ranjan.

[Read Judgment]