In every patent infringement case, the most important exercise is a careful comparison between the patent claims and the infringing product or process. The claims define the exact scope of the patentee’s rights. Therefore, infringement cannot be decided by broadly comparing two products or by looking at general similarities. The court must compare the infringing product strictly with the claims, as they are properly interpreted.

Claims define the monopoly

Indian courts have consistently held that claims define the patentee’s monopoly; what is not claimed is disclaimed. Claims must be construed objectively and purposively in light of the specification, without enlarging, rewriting, or substituting their language. The scope of the claims must remain consistent for both validity and infringement.

Claim construction comes first

The first stage, namely claim construction, is a matter of law. The court must identify the essential elements of the claims. Only thereafter can the claims be compared with the impugned product or process, which is a mixed question of law and fact.

Element-by-element comparison

Infringement is established by comparing the claimed elements with the infringing product. Essential features must be identified and mapped against the impugned feature. The exercise is a claim-to-product comparison, not a comparison of the plaintiff’s and defendant’s products.

Doctrine of equivalents

An infringer cannot escape liability by minor or insubstantial changes. Where elements differ insignificantly, the doctrine of equivalents applies. Trivial or cosmetic variations do not defeat patent rights if the essential elements are appropriated.

The decision in Canva Pty Ltd & Ors. v. Rxprism Health Systems Private Limited & Anr., is a recent example where the Delhi High Court closely examined whether this disciplined claim-to-product comparison was properly carried out while granting an interim injunction.

The present case was originally brought by RxPrism Health Systems Private Limited (Plaintiff), being engaged in providing technology products for social selling and social commerce to business organizations for digital customer engagement. The Plaintiff asserted ownership of Indian Patent No. IN360726 titled “A system and a method for creating and sharing interactive content rapidly anywhere and anytime” against Canva Pvt Ltd (Defendant), an Australian technology company operating a globally used online design and content-creation platform under the brand name CANVA. The dispute in the present proceedings arises from the Plaintiff’s allegation that Canva’s feature titled “Present and Record” infringes the suit patent by enabling users to create presentations containing a video overlay, along with certain interactive elements.

Cause of action

The Plaintiff became aware of the Defendant’s “Present and Record” feature in June 2021and undertook a technical assessment, which indicated that the feature incorporated the essential elements of the suit patent.

Over the following two and a halfmonths, the Plaintiff engaged with the Defendant, sharing patent details, providing claim mapping analyses, outlining the alleged technical overlap, and proposing a commercial license. The Plaintiff states that it responded to all requests in good faith with a view to reaching an amicable resolution.

Notwithstanding these efforts, the Defendant allegedly continued to commercially exploit the impugned feature in India without a license. The Plaintiff therefore concluded that an amicable resolution was not feasible and instituted the present suit seeking injunctive relief and other remedies under the Patents Act, 1970.

Decision of Single Judge (Delhi High Court)

The Single Judge compared the suit patent claims with Canva’s “Present and Record” feature. Based on the Plaintiff’s claim charts, screen recordings, and presentations, the Court noted that Canva allowed uploading slides, recording a PiP video overlay, integrating interactive CTA elements, and generating cloud-hosted links, reproducing the layered multimedia architecture of the suit patent.

The Defendant argued that Canva lacked three layers, that CTA elements were embedded, PiP movement was browser dependent, and editing was limited. The Court rejected these as mere tactical distinctions, holding that “slight variations in implementation do not absolve infringement.” Evidence showed Canva permitted independent slide modification and server-side layered editing.

The Defendant relied on prior art such as Microsoft PowerPoint 2016, Loom, Auto Auditorium, and academic works, and also challenged the patent on grounds of Section3(k) of the Patents Act, insufficiency, lack of clarity, and obviousness.

The Plaintiff’s expert provided claim by-claim mapping. The Defendant’s expert acknowledged overlapping elements. The PCT application by the Defendant showing a similar architecture strengthened the Plaintiff’s prima facie case.

The Court directed Canva to deposit INR50,00,000 (approx. USD 56,000) as security and imposed INR 5,00,000 (approx. USD 5,000) in costs. It held that:

1. A strong prima facie case of infringement exists.
2. The balance of convenience favors an injunction.
3. Denial would cause irreparable harm.

Canva appealed this order before the Division Bench.

Canva contended that the Single Judge erred in applying the novelty test, ignoring essential elements, and mechanically applying the triple test, making the INR 50,00,000 (approx. USD 56,000) deposit disproportionate.

Contentions of Canva

• Incorrect infringement analysis

The Single Judge relied on functional similarity rather than the required element by- element claim comparison. Canva argued that four essential features identified by the Plaintiff were absent in its product.

• Absence of the alleged “third/ sandwiched layer”

1. Canva asserted that the Plaintiff ’s patent hinged on a three-layered architecture: slides, PiP video, and a separate CTA layer;
2. Canva’s system allegedly uses only two layers (slides and PiP), with CTAs embedded in slides, not independent;
3. The patent describes PiP as movable via haptic interaction; however, Canva claimed its PiP is not movable, and any movement is browser dependent, not product based;
4. According to Canva, CTA in its system appears during authoring, while the patent allegedly requires CTA only to appear during playback.

• Claim construction and validity

Canva argued that the Single Judge:

1. Failed to properly construe the claims before applying them;
2. Compared prior art (e.g., PowerPoint 2016 and Loom) with the Plaintiff ’s product instead of the claims;
3. Ignored serious validity challenges (prior art, obviousness, insufficiency, Section 3(k) issues).

Contentions of RxPrism

• Claim-to-product mapping was properly done

The Single Judge explicitly compared the patent claims to Canva’s feature, not product to product. Infringement was found for 40 patent claims (two independent and 38 dependent).

• No “third layer” requirement

The patent never mentions “third layer” or “sandwiched layer;” these were introduced by Canva. Canva’s own expert admitted that “the word layer does not appear in any of the 54 claims.”

• PiP movability is not essential

Movability was a descriptive, not mandatory, element. Evidence, including video demonstrations, showed that Canva’s PiP functions as a foreground overlay.

• CTA visibility during authoring is irrelevant

The claims do not mandate the CTA to be hidden at authoring, and the Defendant’s expert also acknowledged that such a limitation does not exist in the patent.

Principles laid down for claim-to-product mapping by the appellate court and reasons for upholding the injunction in favor of RxPrism.

Correct application of legal principles

The learned Single Judge exercised discretionary jurisdiction in granting interim relief. It is trite law that appellate interference with such discretionary orders is limited and circumscribed. An appeal against an order granting or refusing an injunction is not an appeal on facts, but an appeal on principle.

The threshold question before the Court was not whether a different conclusion could have been arrived at on the same set of facts but whether the methodology adopted by the learned Single Judge conforms to settled principles of patent jurisprudence, and whether the findings suffer from legal infirmity, perversity, or misapplication of law.

Claim construction

The Court observed that the first stage, namely claim construction, is a matter of law. The second stage, comparison with the impugned product or process, is a mixed question of law and fact.

Patent claims defi ne the patentee’s monopoly; what is not claimed is disclaimed. Claims must be construed objectively, purposively, and in light of the specification without enlarging, rewriting, or substituting their language. The scope must remain consistent for validity and infringement; inconsistent narrowing or broadening is impermissible.

Essential features of the suit patent are: (i) layered media architecture with background and foreground media; and (ii) post-creation configurability of interactive elements, including CTAs. The alleged third layer, CTA invisibility, and PiP movability are not essential.

Doctrine of equivalents

Infringement is established by comparing claimed elements with the infringing product. Where elements differ insignificantly, the doctrine of equivalents applies to prevent minor changes from depriving the patentee of the core inventive concept. An infringer cannot escape liability by minor or insubstantial changes.

For product or device patents, infringement by equivalence uses the function-way-result triple test. For process or method patents, the essential element test applies:

1. construe the claims to identify essential elements;
2. compare with the allegedly infringing process;
3. if all elements exist, literal infringement is established;
4. if not, the doctrine of equivalents applies;
5. assess substantial identity of essential elements, steps, and their interactions. Minor or inessential variations do not avoid liability.

Court’s reasons for holding the injunction against Canva

The Court concluded that the Single Judge properly construed the four disputed claims, mapped them to the Defendant’s product, and applied the doctrine of equivalents, treating the absence of a “third/sandwiched layer” or PiP movability as non-essential. CTA functionality via a configuration interface satisfied the claims.

The Court held that, prima facie, all essential inventive steps are present in the Defendant’s product, and the findings are consistent with claim construction and settled infringement principles. Claims 1 and 39 of the suit patent require a layered media architecture with first media as background, second media as foreground PiP overlay, and interactive elements with post-creation configurability. Seven inventive steps (A1, A2, A3, A4, B5, C6, C7) were identified; the Defendant admits A2, A3, and B5, leaving A1, A4, C6, and C7 in dispute. The Single Judge compared these disputed steps with the Defendant’s product, finding layered presentation and PiP present (A1, A4), with movability being non-essential, and that interactive elements and CTAs are configurable through a separate interface and rendered during playback (C6, C7). The so-called “third” or “sandwiched” layer is not required by the claims or specifications, and minor differences such as browser-dependent PiP movement or CTA visibility during authoring do not avoid infringement.

The Court concluded that the learned Single Judge applied claim-to-product comparison, considered prior art, and properly invoked the doctrine of equivalents, holding that trivial or cosmetic differences cannot defeat the patent. Patent validity is assessed by comparing the claims, as construed, with prior art. The Single Judge rejected anticipation from Microsoft PowerPoint 2016, Auto Auditorium, and Loom, noting these lacked layered media, post-creation configurability, and non-merging of streams, which are essential elements of the suit patent. Reliance on the Defendant’s PCT application was only corroborative.

Based on user data, revenue, and lack of assets in India, the order to deposit INR 50,00,000 (approx. USD 56,000) was a reasonable protective measure.

Conclusion

The present judgment reaffirms that overturning an interim injunction requires a serious and structured validity challenge. Claim construction is a matter of law, and infringement is established by comparing the claimed elements with the alleged infringing product, including application of the doctrine of equivalents. Minor or inessential variations do not avoid liability. Appellate interference is limited to cases of perversity, arbitrariness, or misapplication of law.