The Delhi High Court’s decision of August 30, 2024, in the case of Blackberry Limited vs Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 318/2022, 2024:DHC:6572], accentuated that inventions related to computer programs that provide technical effects within the computer and/or beyond the computer are patent eligible under Section 3(k) of the Patents Act, 1970.

Section 3(k) of the Act excludes from patentability “a mathematical or business method or a computer programme per se or algorithms”.

In the instant case, Blackberry’s patent application number 717/DEL/2009, entitled “Auto- Selection of Media Files”, was refused patent grant by the Controller for falling within the scope of Section 3(k). It was stated in the impugned order that the subject application claimed a set of computer programs in the form of a device for supporting media file with algorithmic steps indicating the function of flow charts or process steps, and although oriented towards system, the claimed instructions were algorithms and computer programs per se.  

The appeal challenged the Controller’s decision on the following grounds:

• Grant of Corresponding Applications: Blackberry pointed out that their corresponding patents had been granted in various countries, including Australia, Japan, the US, and China.
• Deficiencies in Reasoning: Blackberry argued that the impugned order lacked original reasoning. They contended that the Indian Patent Office (IPO) had merely adopted the European Patent Office’s (EPO) conclusions, which had refused the application due to lack of novelty based on prior art US’765. The key issue here was that the novelty objection had already been waived by the Controller. In fact, the IPO never relied on prior art US’765, yet the IPO’s decision seemed to reproduce the EPO’s observations verbatim without citing US’765. Blackberry asserted that this approach indicated a lack of independent reasoning by the IPO and was essentially a copy-paste of the EPO’s refusal order.
• Impact on Device Capability: Blackberry contended that their invention disclosed a system that addressed a specific technical problem- optimizing media file management (audio files, video files or any other form of content) based on available device memory and user preferences. This, they argued, provided significant technical effects, making the refusal under Section 3(k) untenable. They pointed out that the invention enhanced the device capabilities by allowing efficient and automated management of media content.
• Promotional Evidence: Blackberry produced evidence that the technical feature which the subject invention added was actively marketed by the company wherein it was highlighted that more music could be downloaded through multiple sources on Blackberry devices, illustrating its technical benefits and effectiveness in improving device performance.

The Controller attempted to justify the refusal based on the following reasoning:

• Lack of Technical Effect: The Controller argued that the method disclosed in the patent application was a standard function typically performed by a generalised computer software, thereby maintaining that the solution provided by the subject invention lacked a technical effect.
• EPO’s Assessment: It was submitted that the EPO had considered the above-mentioned aspect and concluded that the claimed invention lacked technical effect.
• Non-Technical Features: The Controller emphasized that the patent application related to managing media content to improve user interaction with multimedia devices by auto-filling media files based on available storage. The claims primarily involved generating a confidence level for each media file to measure its likability and using this information for categorization and selection. The Controller contended that these features were abstract and non-technical, as they simply automated user preferences without contributing a technical effect or solving a technical problem.

The Court noted the following aspects of the invention:

• System Functionality with Minimal User Intervention: The invention enables efficient media content management with minimal user interference.
• Integration of Hardware and Software: The invention involved a combination of hardware and software to manage media content. The system supported connectivity with various user devices, including mobiles, portable computers, and PDAs, and also provided wireless communication. The Court recognized the technical merit in the system’s ability to handle data communication and content management through advanced algorithms and software.
• Communication and Processing Capabilities: The Court highlighted that the communication between user devices and PCs/servers was claimed to be facilitated by complex algorithms and computer programs. This setup allowed for efficient processing, computation, and management of media content. The claimed system handled content retrieval from external and internal libraries, adjusted content based on user preferences, and monitored online content without manual intervention.
• Features of the Invention: Claim 1 of the subject application disclosed a method for managing content, while claim 2 related to an apparatus for managing content. Considering the information disclosed in the claims and the complete specification, the Court noted the features of the claimed invention that included: unified library creation, metadata-only files, remote and local access, cache management, automatic media selection, media content synchronization across devices, randomized selection and dynamic storage management, and device-specific configuration.

Considering the foregoing along with judicial precedents viz Ferid Allani v. Union of India & Ors. (2019 SCC OnLine Del), Microsoft Technology Licensing v. Assistant Controller of Patents And Designs (2023 SCC OnLine Del 2772), Lava International v. TLM Ericsson (2024:DHC:2698), and Microsoft Technology Licensing LLC v. The Assistant Controller of Patents And Designs (2024:DHC:3547), the Court found that the invention was not merely a computer program or algorithm but it provided a significant technical contribution. The invention was found to enhance device functionality, improve user experience, and support autonomous operation without specific user intervention. The Court also took note of the fact that the invention was publicized by Blackberry, and commented that “the age old saying that the proof of pudding is in the eating is applicable in the present case”

Further, the Court disregarded that Controller’s argument that the rejection by the EPO ought to result in rejection of the subject application. The Court also disagreed with the EPO’s analysis that the purpose of the claimed invention was merely to select files based on popularity ratings, a non-technical task. The Court held that the claimed invention offered technical advantages both within the computer (e.g., optimizing storage and retrieval) and beyond (e.g., improving device functionality). The Court concluded that this dual impact supports its patentability and dismissed the refusal under Section 3(k).

While the Court acknowledged that the IPO did not raise any objection as to the novelty or inventive step, the Court, for the sake of completeness, perused the prior art US’765 because it was considered by the EPO. US’765 described methods of automatically selecting multimedia files for transfer between storage mediums based on criteria such as popularity weighting and recency of access. The Court concluded that the said prior art “may have been just the first step which may have been achieved” but the subject invention introduced novel elements beyond prior art US’765. However, the Court found merit in the Controller’s submission that US’765 overlapped with the claimed invention regarding the feature of selection of multimedia files for transfer between storage mediums based on criteria such as popularity weighting and recency of access. Therefore, the Court directed Blackberry to limit the scope of the patent to the feature of ‘automatic selection’ and ‘updating by a cache manager’. The appeal was allowed, and the patent was ordered to proceed for grant with the specified amendments.