In the case of Canva Pty Ltd & Ors. vs RxPrism Health Systems Pvt. Ltd. & Anr. [FAO(OS)(COMM) 211/2023], the Delhi High Court’s Division Bench considered an appeal against an interim injunction granted by the Single Judge in CS (COMM) 573 of 2021. The injunction restrained Canva from offering its “Present and Record” feature in India on the ground that it prima facie infringed RxPrism’s patent IN 360726, entitled “A system and a method for creating and sharing interactive content rapidly anywhere and anytime”. The Division Bench ultimately affirmed the Single Judge’s judgment, holding that no perversity or legal error was demonstrated that would warrant interference at the appellate stage.

The suit patent relates to a system and method enabling the creation of interactive multimedia presentations using synchronised layers of content, including background media, foreground audio/video overlays, and interactive elements such as call-to-action (CTA) interfaces. RxPrism commercialised the patented invention through its product “My Show & Tell”.

In August 2020, Canva introduced a feature called “Present and Record”, allowing users to record themselves while presenting slides, producing a composite presentation with audio-visual overlays. According to RxPrism, Canva’s feature embodied all the essential technical features of the patented invention. After exchanges between the parties failed to resolve the dispute, RxPrism instituted a commercial suit before the Delhi High Court seeking permanent injunction for patent infringement.

Alleging direct and literal infringement, RxPrism filed an interlocutory application in the suit seeking interim injunction. The Single Judge examined the claims and identified the essential and inventive features of the suit patent to include three distinct functional layers:

• a first media layer consisting of presentation slides or static visual content,
•  a second media layer comprising audio and/or video recording, and
• a third ‘sandwiched’ or CTA layer enabling interactive features such as sharing, navigation, and editing flexibility.

Canva’s defence relied on the “all-elements rule”, contending that essential limitations of the claims were absent in its system. In particular, it was argued that:

• There was no distinct “sandwiched” third layer in its architecture; the CTA elements were embedded within the slide environment itself and not structured as a separate layer.
• The suit patent contemplated a system-level configuration interface for CTAs, whereas in Canva’s feature, any hyperlink or interactive element was user-generated within the slide content.
• The suit patent envisaged movable Picture-in-Picture (PiP) functionality, whereas in Canva’s implementation, PiP movement was browser-dependent and not system-controlled in the manner described in the specification.

The Single Judge rejected these distinctions as tactical, finding that Canva’s impugned feature functionally and operationally reproduced the patented layered multimedia architecture by allowing independent editing of layers. The abandoned PCT application filed by Canva, which described a similar layered interaction model, was also noted in this context.

On validity, Canva raised objections based on lack of novelty, lack of inventive step, insufficiency of disclosure, and non-patentability under Section 3(k). The Single Judge held that while these challenges were arguable, they were not strong enough at the interim stage to displace the presumption of validity. The prior art, though disclosing individual elements, did not disclose the integrated architecture enabling server side compositing and independent editing as claimed.

The Court granted interim injunction, directed deposit of Rs. 50 lakhs as security, and imposed costs of Rs. 5 lakhs on account of the language used by Canva in their pleadings.

In appeal, Canva challenged the judgement on multiple grounds, including:

• Misconstruction of claims and failure to apply the all-elements test. It was contended that both the Plaintiff and the Court had acknowledged a “third layer” as an essential feature of the patent, yet the Court found infringement despite this layer being absent in Canva’s feature. It was argued that the Single Judge erroneously focused on “overall functional resemblance” rather than a strict element-by-element comparison. Furthermore, Canva pointed to the PiP movability, maintaining that the patent specification expressly defined this as a system-controlled feature, whereas in Canva, PiP movability was browser-dependent.
• Failure to adopt purposive construction of claims before undertaking comparison.
• Adoption of a product-to-product comparison instead of claim-to-product analysis.
• Erroneous inventive step analysis; refusal to mosaic prior art.
• Misapplication of the doctrine of equivalents by reducing it to a “same effect” inquiry and ignoring the “function-way-result” analysis, particularly the “way” prong, required for equivalence.
• Impermissible oscillation in claim scope; narrowly for validity and broadly for infringement.
• Erroneous reliance on an abandoned PCT application.

The Division Bench began by reiterating the limited scope of appellate interference in interlocutory matters. An appeal against an order granting or refusing an injunction is not an appeal on facts, but an appeal on principle. The appellate Court would interfere only if the discretion exercised by the Single Judge is shown to be arbitrary, capricious, perverse, or contrary to settled legal principles.

The Division Bench then clarified the correct framework for determining infringement:

(i) claim construction: determining the meaning and scope of the patent claims (a matter of law); and

(ii) comparison of the construed claims with the allegedly infringing product or process (a mixed question of law and fact).

Claim construction, the Division Bench clarified, ought to be done objectively by focusing on the plain language of the claims. However, for persuasive construction, the technical context of the invention as described in the specification ought to be taken in account. “The purpose of claim construction is thus to identify the essential features, elements, and limitations of the invention as claimed, without importing extraneous material from the specification or unduly restricting the scope of protection”. Importantly, the scope of the claims must remain consistent for both validity and infringement analysis.

Rejecting Canva’s argument of inconsistent construction, the Division Bench noted that the Single Judge had identified the essential features in the same manner for both validity and infringement, namely:

(i) a layered media architecture involving background first media and foreground second media; and

(ii) post-creation configurability of interactive elements, including CTAs, without re-recording.

The alleged requirements of a structurally distinct “sandwich” layer, invisibility of CTAs during authoring, and movability of PiP were not treated as essential claim limitations.

Having found no error in the first stage, the Court examined whether the Single Judge’s comparison at the second stage suffered from any legal infirmity.

The Division Bench rejected the contention that a product-to-product comparison had been undertaken. It held that the Single Judge had first identified the essential features of the claims and then compared those features with Canva’s impugned functionality.

On the doctrine of equivalents, the Court observed that in process or method patents, infringement is assessed by identifying the essential elements and steps of the patented process and examining whether the competing process is substantially similar in its essential elements and interactions. The Single Judge had examined whether the disputed features were truly absent or merely substituted by insubstantial variations. No error of principle was found.

The Court further remarked that in process or method patents, when literal infringement is absent, the doctrine of equivalents may apply and infringement by equivalence ought not to be accessed by the “function way-result” test, but by the “essential element test”. The Court explained that in process or method patents, infringement is assessed by identifying the essential elements and steps of the patented process (or the substantial identity of the method) and examining whether the competing process is substantially similar in its essential elements and interactions. The Single Judge had examined whether the disputed features were altogether absent or merely substituted by insubstantial variations. No error of principle was found.

• On PiP movability, the Division Bench upheld the Single Judge’s view that “movability” was not an essential feature of the claimed invention. What was essential was the integrated and synchronised layered media effect achieved by the interaction of first and second media. Whether the PiP window was movable did not alter the functional architecture or technical result. The infringement enquiry must remain remained tethered to the claims as purposively construed. Additionally, the Court examined the suit patent’s specification and found that while it could be conclusively ruled out that “movability” may constitute a functional attribute, the Single Judge, exercising prima facie discretion, had not committed any error of principle in treating such movability as a non-essential feature at the interlocutory stage. The Court also noted that browser-dependent behaviour could not be used as a product-level defence at the interlocutory stage as the same can be only established through leading evidence at the stage of trial.
• On the “third layer” argument, the Division Bench observed that the word “layer” does not appear in any of the 54 claims of the suit patent. The claims refer to first media in the background and second media in the foreground, but do not descibe a separate “sandwiched” layer for CTA elements. Reading such a structural limitation into the claims would amount to rewriting them. The absence of a so-called third layer could not defeat the prima facie finding.
• The Court further examined whether Canva’s system provided a configuration interface enabling placement of CTA buttons within the interactive content. Based on the demonstrations placed on record, the Court found that such an interface did exist. The CTA was added through a separate interface and superimposed at a chosen position; it was not merely embedded into the first media. The patent defined a configuration interface broadly as one configuring interactive content settings. Canva’s interface performed that function. Labelling it as a “formatting option” did not change its substantive operation.

Prima facie, therefore, Canva’s product adopted a layered presentation in which interactive elements were integrated into the media content, with independent modification possible. The attempt to distinguish the product solely on the absence of a “third layer” was unsustainable at the appellate stage.

On the issue of validity, the Division Bench examined whether the Single Judge’s treatment of the objection of lack of inventive step departed from the settled requirement of an element-wise comparison between the construed claims and the disclosures contained in the prior art. Upon a careful reading of the impugned judgment, the Division Bench was not persuaded that the Single Judge had substituted this structured exercise with a product-centric analysis. Though certain portions of the reasoning referred to the Plaintiff’s product, the Court held that the core inquiry remained anchored to the essential features of the claims and whether those features were disclosed or rendered obvious by the cited prior art. The finding that the prior art disclosed individual components but not the claimed combination was a matter of prima facie assessment and not shown to be perverse.

With respect to the reliance on Canva’s PCT application, the Division Bench accepted that the mere prosecution status or alleged abandonment of a PCT filing cannot amount to an admission of infringement, nor can similarity in disclosures automatically establish that a commercial product practices the claimed invention. The fate of a PCT application cannot replace the structured technical comparison required under Indian patent law. At the same time, the Court clarified that documents emanating from a defendant, including its own patent filings and prosecution history, are relevant evidentiary material. When seen like this, the PCT record was considered corroborative rather than determinative. Even if the reference to abandonment was not factually precise, the reliance placed on the PCT application did not justify appellate interference.

Finding that the interim injunction was founded on a reasoned prima facie assessment, and that the direction to deposit Rs. 50 lakhs reflected a proper exercise of discretion, the Division Bench declined to interfere and accordingly dismissed the appeal.