Summary
Voicemonk Patent prevails over Flipkart in a dispute over post-grant opposition to Patent No. IN312437. Voicemonk Patent also reinforces important principles on novelty, inventive step, and Section 3(k).
Introduction
Under Section 117-A of the Patents Act, Flipkart Internet Private Ltd. challenged the Joint Controller’s order dismissing its post-grant opposition to Patent No. IN312437 granted to Voicemonk Inc. for an invention titled “Systems and Methods for Virtual Agents to Help Customers and Business.” The Madras High Court dismissed the appeal and upheld the Joint Controller’s order, holding that the Joint Controller had considered the relevant materials, analysed each opposition ground, and provided sufficient reasons for rejecting the challenge.
Background
Voicemonk Inc. filed the patent application on 18 November 2016. The invention was directed to a virtual agent-based system that assists users in performing actions in an application, such as search, sort, select, submit, and compare, based on user input, including audio input. After examination, hearing, and amendment of claims, the patent was granted on 8 May 2019 and published on 10 May 2019.
Flipkart later filed a post-grant opposition on 28 September 2021 on grounds under Sections 25(2)(b), 25(2)(d), 25(2)(e), 25(2)(f), 25(2)(g), and 25(2)(h), including lack of novelty, lack of inventive step, non-patentability, insufficiency, and non-compliance with Section 8. The Joint Controller (hereinafter as “Controller”) rejected the opposition by order dated 9 October 2023. Flipkart then appealed to the Madras High Court seeking revocation of the patent or, a de novo reconsideration by a different Controller.
Issues
- Whether the Controller had failed to consider relevant material while dismissing the post-grant opposition.
- Whether the patent lacked novelty or inventive step in light of the cited prior art.
- Whether the patent is rendered non-patentable under Section 3(k), or suffers from insufficiency of disclosure and/or non-compliance with Section 8 requirements.
- Whether the impugned order violated principles of natural justice for want of reasons.
Flipkart’s arguments
Flipkart argued that the Controller had disregarded relevant material, failed to provide adequate reasoning, and applied incorrect legal standards in assessing novelty, inventive step, patentability under Section 3(k), as well as written description and enablement, thereby violating principles of natural justice. Flipkart further contended that the Controller had misinterpreted claim 1 and failed to properly address objections relating to claims 1, 6, and 7.
Flipkart submitted that the feature of “associating actions with tags” did not meaningfully contribute to the invention, and that the feature relating to the display of a single output page amounted to impermissible negative claiming. Flipkart also argued that claims 6 and 7 were overly broad, such that disclosure of even one of the claimed correlations (sequential, hierarchical, or lateral) in the prior art would invalidate them.
Flipkart challenged the finding under Section 3(k), asserting that the claimed invention lacked any demonstrable technical contribution, technical effect, or technical advancement, and was therefore nothing more than a computer program per se.
Voicemonk’s Arguments
Voicemonk argued that the Controller had analysed the cited prior art and the claims properly, and that no interference was warranted in appeal. Voicemonk also relied on the Delhi High Court’s decision in Lava International Ltd. v. Telefonaktiebolaget LM Ericsson 2024 SCC OnLine Del 2497 for the legal principles governing novelty analysis.
Court’s Observations and Analysis
Nature of the invention
The Court noted that the invention related to a system for executing actions based on user input through a virtual agent. The virtual agent receives input, including audio, identifies the action intended by the user, and executes one or more actions such as search, sort, select, submit, and compare. A key aspect of the invention is the storage of correlations between these actions and their execution in a manner that produces a consolidated output, thereby avoiding multiple sequential output pages.
Novelty (Section 25(2)(b))
The Court referred to Lava International Ltd. v. Telefonaktiebolaget LM Ericsson as a guiding framework for assessing novelty, particularly the “Seven Stambhas” approach. The Controller, in the impugned order, had identified key features of the invention, including the storage of correlations between actions, association of actions with tags, execution of actions based on such correlations, and generation of a single output page, and compared these features with prior art documents D1 to D3. On such comparison, these features were not disclosed in their entirety. The Court found no error in this analysis and upheld the conclusion that the invention was novel.
Public knowledge/use (Section 25(2)(d))
The objection based on alleged public knowledge or use, including reliance on systems such as SIRI, was rejected on the ground that no technical comparison had been provided. The Court found no error in this approach and agreed that the objection could not be sustained in the absence of supporting analysis.
Inventive step (Section 25(2)(e))
In assessing inventive step, the Controller examined additional prior art documents D4 to D7, along with D1 to D3. The analysis showed that while certain individual elements of the claimed invention were present in different prior art documents, the complete combination of features, particularly the correlated execution of actions and the defined modes of correlation, was not disclosed either individually or in combination. The Court found this feature-based analysis adequate and upheld the Controller’s stance that the invention involved an inventive step.
Section 3(k)
The Court agreed with the Controller that the claims were not directed to a computer program per se. The independent claim described a sequence of technical steps performed by the virtual agent, and the dependent claims further defined the implementation of those steps. On this basis, the invention was considered to possess technical character and was not excluded under Section 3(k).
Insufficiency and Section 8
The objection on the ground of insufficiency under Section 25(2)(g) was rejected, as it had not been raised during the examination or hearing stages, and the claims were supported by the specification, including amendments made through Form 13. The objection under Section 25(2)(h) relating to Section 8 compliance was also rejected, as the required disclosures had been made and any delay had been addressed through a petition for condonation.
Natural justice
The Court found that the parties had been afforded sufficient opportunity during the opposition proceedings, including the filing of pleadings, submission of evidence, and participation in hearings. The Controller had considered the prior art, the Opposition Board’s recommendations, and the submissions of both parties. The Court was satisfied that the impugned order contained adequate reasoning and did not suffer from any violation of the principles of natural justice.
Findings
The Madras High Court opined that:
- The Controller had considered the relevant materials and had analysed each opposition ground.
- The analysis on novelty and inventive step, including the comparison with D1 to D7, was found to be adequate.
- The invention was not excluded under Section 3(k), as the claims were treated as involving technical steps and technical validity beyond a mere computer program per se.
- The insufficiency and Section 8 grounds were rightly rejected.
- There was no violation of natural justice, since the parties had been heard and the Controller had provided a reasoned analysis.
Decision
The appeal was dismissed. The Madras High Court declined to interfere with the Controller’s order dated 9 October 2023 and upheld continuation of Patent No. IN312437. No costs were awarded.
Citation: Flipkart Internet Private Ltd. v. The Joint Controller of Patents and Designs & Anr., CMA(PT) No. 9 of 2024 (Madras High Court, decided on 05 January 2026)
Article review and accessibility review: Dr. Neetha Mohan