Discussing the Madras High Court’s Microsoft Technology Licensing v. Asst. Controller of Patents decision on the role of PSITA in determining non obviousness, we are pleased to bring to you this post by Kevin Preji. Kevin is a second-year law student at NLSIU Bangalore and wrote this post while interning with us. His passion lies in understanding the intersection of economics and public health with intellectual property rights. His previous posts can be accessed here.
Problem Statement Precision: A Key Factor in TSM-Based Non-Obviousness Determination?
By Kevin Preji
On 28th Feb, 2024, the Madras High Court in Microsoft Technology Licensing LLC vs Assistant Controller of Patents and Designs in allowing an appeal, clarified the role of the ‘person skilled in the art’ (‘PSITA’) in determining non-obviousness. This post attempts to critically analyse the relevance of difference in the purported function of the invention and prior art to determine non-obviousness in identifying the inventive step.
Background
The appellant (Microsoft) filed a patent application on 27 February 2012 for an invention titled “Message Communication of Sensor and other Data.” The invention aimed to simplify the communication of sensor data to applications by converting raw sensor data into lightweight messages. The patent office issued a first examination report in June 2019, (7 years later!) and after the appellant responded with amended claims, a hearing took place in July 2020. Subsequently, the patent application was rejected in September 2020.
The appellant argued that the invention addressed the complexity in designing software to handle sensor data by introducing a lightweight messaging system. The rejection was based on the argument that the claimed invention lacked inventive step. The appellant contended that the patent office failed to conduct a proper inventive step analysis.
Invention
Conventionally, computers provide an interface to the sensors so that software on the machine can read data from sensors such as accelerometer, light sensor, GPS etc. The computer’s Operating System might offer an Application Programming Interface (API) for applications to access sensor data, but using these sensor interfaces can make software design more complicated due to the complex control flow loops required to respond to events. To resolve this problem, the appellant stated that the invention titled “Message Communication of Sensor and other Data” is a simple lightweight messaging system whereby applications that want to receive sensor values subscribe to sensor notifications through the sensor service which determine that messages should be generated on the basis of triggers such as changes in sensor values or passage of time. These lightweight messages do not require the writing and use of code.
Comparison with Prior Art
The prior art envisaged that the sensor readings would be integrated into the application’s time loop, necessitating the inclusion of code within the application to initialise and utilise the API, as well as to handle the data generated by the API. The Assistant Controller of Patents and Designs (Respondent) pointed out that sensor service acts as an intermediary between applications and a sensor interface and that it communicates sensor data to the application in the form of messages, thus being identical to the prior art where the only difference is in the terminology used. The Respondents additionally pointed out that the sensor service of the claimed invention sends messages depending on subscription request and, therefore, the claimed invention is also directed at managing data at the sensor service level.
The Court, while rejecting the contentions of the respondents, placed emphasis on the following differences between prior art and the claimed invention.
- The claimed invention aims towards the reduction of complexity by converting raw sensor data into lightweight messages which are transmitted or communicated to the subscribing application.
- The claimed invention contained the sensor service which was absent in the prior art.
- The claimed invention enables the subscribing application to receive and process messages rather than to read raw sensor values
- The claimed invention converts raw sensor data into messages that can be sent to the subscribing application in a readable manner, which sets it apart from the prior art that does not address the conversion of raw sensor data into easily interpreted messages.
- While both the cited prior art and the claimed invention provide for the transmission of sensor data to a subscribing application, the difference lies in the manner in which such data is transmitted
Person Skilled in the Art
The Court held that the fundamental question to be answered was whether the difference or delta between the cited prior art and the claimed invention would be obvious to a person skilled in the art as per Section 2(1)(ja) of the Patents Act, 1970. While in the US, the level of skill exhibited through the lens of an imaginary person having ordinary skill in the art (PHOSITA), the bar is higher in India where for example, very recently in Jan 2024, the Madras High Court in Rhodia Operations v. Assistant Controller of Patents, held that the perspective to identify non-obviousness would be through the perspective of the person skilled in the art (PSITA), who possesses skills greater than the average person in the industry (although not omniscient). This is important since this distinction affects the application of different methods (the standards would be higher) to determine non-obviousness (taken from US case laws).
Difference in Function
A notable reason for upholding the appeal was the fact that the prior art was focused on the publication of sensor values upon occurrence of an event of interest while the claimed invention enabled transmission of sensor data in an easy to process format by the subscribing application. Evidently, while one possessed a publication function, the other aimed to simplify the format of the information transferred. Based on the fact that the problems aimed to be resolved by the claimed invention and the prior art were different, the court stated that the prior art didn’t contain the teaching, suggestion or motivation (TSM) to lead the PSITA to the claimed invention.
Based on the following factual enquiries (delineated by the US Supreme Court in 1966, in Graham v. John Deere Co), Obviousness which is a question of law is determined by:
- Determination of the content and scope of the prior art
- Ascertainment of the differences between the prior art and the claimed invention
- Resolving the level of ordinary skill in the pertinent art.
With respect to point 3, the TSM approach (Originated from the US) was accepted in Nov 2022 by the Delhi High Court in Avery Dennison Corporation vs Controller Of Patents And Designs (Avery Case) as a valid approach. As per the TSM approach (laid down in KSR International v. Teleflex (2007)), if an ordinary skilled person can modify the prior art reference or combine prior art references to arrive at the claimed invention, then the subject matter being claimed is obvious. Nevertheless, one ought to remember that the US Supreme Court in KSR International v. Teleflex (2007) cautioned that the TSM test shouldn’t be interpreted restrictively. (Prof. Basheer describes the judgement in detail here.) The US Supreme Court criticises the narrow approach of the Court of Appeals regarding the problem statement analysis. This can be seen in the following extract:
“The Circuit first erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed. Second, the appeals court erred in assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem.”
There may be multiple forces (eg: market forces) that may prompt variations/modifications of the prior art and as such wouldn’t be patentable (See slide 15, WIPO). The US Supreme Court explicitly rejected the assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. Thus, the TSM test could be applied even when the prior art is not designed to solve the same problem and should be looked at broadly. As the US Supreme Court rightly noted, familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. Additionally, the perspective to be applied here is that of a person of above-average skill (PSITA) in the field, a standard higher than in the US (PHOSITA).
A quick look at the USPTO Examination Guidelines for Determining Obviousness shows the same inference. The Office Personnel are notified that prior art may exist either in the field of the inventor’s endeavour, reasonably linked to the concerned problem or may even exist in a field of endeavour other than that of the inventor or solves a problem which is different from that the inventor was trying to solve.
In the present case, the patent was filed in 2012. Having been nearly 12 years later (just in prosecution!), if shown that a similar device wasn’t created, it would shift the presumption towards non-obviousness as reiterated by the Court in the Avery case. Interestingly, the Court in the Avery case placed emphasis on the problem statement of the prior art documents to determine whether they can even be considered by the person skilled in the art as relevant. As the PSITA must have some motivation to even consider a document as relevant, the problem statement of the invention-in-question usually makes for valid motivation in that context. Since the problem statement of the cited prior art document was different from the problem statement of the invention, the Madras High Court stated that the PSITA may not even have the motivation to arrive at this document (with a different problem statement) in an attempt to look for a solution to the problem as addressed by the invention (Read here to explore more). Following the pattern in the Avery case, the Court explains that it reaches its conclusion since the cited prior art places emphasis on publication of sensor values upon the happening of certain events while the claimed invention reduces the complexity of the sensor data, converting it into an easy to process format by the subscribing application. Since the problem statements are different (the prior art deals with data management and the claimed invention’s problem statement deals with complexity in the communication), the Court held that there lacked no material to teach, suggest or motivate the PSITA to reach the claimed invention.
This aspect is seemingly contradictory to that of the US jurisprudence which would allow the PHOSITA to draw motivation even when the prior art is not designed to solve the same problem (usually through other factors such as market forces etc). The KSR judgement criticises this exact narrow approach of the TSM test stating that Courts cannot conclude non-obviousness merely due to the problem that the invention and the prior art aims to solve are different. Given that the standards are higher in India (considering PSITA and not PHOSITA), the TSM standard in India should also be read widely, letting the PSITA derive motivation to refer to documents even when the problem statement is different.
Conclusion
The Madras High Court in the case of Microsoft Technology Licensing LLC vs Assistant Controller of Patents and Designs ought to have determined non-obviousness based on other factors (like long time gap or other differentiating factors) and not primarily on the fact that the problems purported to be resolved by the claimed invention was different from that of the problems resolved by the prior art. While the case did rightly follow precedent (Avery case), it seems to contradict the application of the TSM test in KSR International v. Teleflex given that the standards ought to be higher in India. Please do let us know in the comments in case you have a differing opinion or would like to add to the arguments above.
[Edit: Please note that instead of Madras High Court, earlier it was mistakenly mentioned as the Delhi High Court. We have now rectified this issue.]
