Patent Infringement

By
Dr. Kal yan C . Kankanala
Br ain League IP Ser vices

© 2009 Brain League IP Services Pvt. Ltd

 Patent Rights

• Territory
• Product Patent - Make, Use,
Sell, Offer for Sale and
Import.
• Process patent - Use
 Infringement

• Types
– Direct
• Literal
• Equivalent
– Indirect
 Direct Infringement

• Claim Construction
• Comparison
• Claim by claim - element by
element
 Claim Construction
• Claim

• Preamble
• Transition
• Body
• What I claim is a cricket bat comprising an
elongated circular wooden handle connected
to an elongated wooden blade along the
longitudinal axes of said blade and handle to
form a continuous elongated implement.
 Claim Elements

• Elongated circular wooden

handle
• elongated wooden blade
• handle to blade connection
- longitudinal axis of blade
 Is this product
infringing?
• A cricket bat having a octogonal shaped
handle to provide grip to the batsman. The
handle has a conical end, which is hollow and
which sits into a long flat piece of wood.

• What I claim is a cricket bat comprising an

elongated circular wooden handle connected
to an elongated wooden blade along the
longitudinal axes of said blade and handle to
form a continuous elongated implement.
 Doctrine of
Equivalence

• Equivalents of a claim
– Function
– Way
– Result
• Prosecution History
Estoppel
Indirect Infringement

• Contributory Infringement
• Inducement to infringe
Lalabhai v. Chimanlal

• Process of treating dry fruits

• Comparison
• Sulphuric Acid - Washing Soda
• muriatic acid - Acetic acid
• Sulphur dioxide fumes under
pressure - Sulphur dioxide
fumes without pressure
 Raj Prakash V. Mangat
Ram

• Process - Printing picture films

for use in film strip viewer
• Respondents - Film Viewers -
Pictures and films of different
dimensions
• Held liable - Substantially
Equivalent
 NTP v. RIM

• Black Berry Technology

• RIM held liable for
infringement
• Damages – 612 million
dollars
 L.B. Plastics V.
Amerimax
• Claim:

• 1) A composite gutter guard ...

comprising:

• (a) an elongate polymer guard

panel ...
• (b) a polymer-coated mesh layer
overlying said guard panel ...
and (c) a
continuous heat weld defining
an uninterrupted longitudinal
weld line connecting said mesh
layer to said guard panel ...
 Product
• The product has a frame and a
mesh connected to the frame
with the help of a hot glue.
The mesh is welded at various
points and a hot glue is poured
in the gaps. The hot glue
solidifies and the mesh
attaches to the frame
continuously.
 Defenses

• Patent Invalid
– Subject Matter
– Utility
– Novelty
– Non-obviousness
– Specification
 Defenses

• Government Use
– By or For
• Research Exemptions
– Experiment
– FDA Approval
• Parallel Imports
 Equitable Defenses

• Patent Misuse
• Inequitable Conduct
• Laches
 Example
• Vini gets a patent on a drug for AIDS and a
method for making the kit in USA, India
and Bangladesh. Dizer comes up with an
alternative cost-effective, process for
making the drug and acquires a patent on
the same in USA, India and Bangladesh.
Dizer manufactures and sells the drug in
India and Bangladesh.

• Is Dizer liable for patent infringement?

 Example
• Anil files for a patent over a twin
spark plug used on motor cycles before
the Indian patent office. In the
application, Anil forgets to disclose his
foreign application in USA and the
name of his co-inventor, Raju. Zenta
makes bikes having the spark plug.
Anil sues Zenta for patent
infringement.

• Is Zenta liable?
 Example
• The defence department
manufactures night vision devices
for use by the army without
permission of the patent holder. The
patent holder sues the defence for
patent infringement.

• Is the defence department liable?

 Example
• X, a professor at IISc, uses a
patented robot in the laboratory for
understanding its functioning under
controlled conditions. X develops an
improved robot based on his
findings and files for a patent. The
patent holder sues X.

• Is X liable?
 Example

• X purchases patented pens from

an authorized dealer in USA and
imports such pens to India.

• Would X’s sale of pens in India

amount to patent infringement?
 Example
• Mr. Guav Kumar holds a patent
over a cell phone in USA and
India. Guav authorizes Sprint in
USA to sell his patented cell
phone. Rollonce purchases the
cell phones from Sprint and sells
them in India.

• Is Rollonce liable?
•Patent Revocation
 Revocation

• Any person
• Central Government
• High Court
 Grounds
• Patentability Requirements
• Not entitled or Wrongfully
obtained
• Fraud or False representation
• Contravention of secrecy
directions
• Source of origin of biological
materials …
 Other modes of
Revocation

• Revocation for Government Use

• Revocation of patents relating
to atomic energy
• Revocation based on public
interest
• Revocation for non-working
• Revocation on surrender
 Compulsory
Licensing
• Non-working
• Reasonable requirements of the
public
• Not available at reasonably
affordable prices

• National Emergency or Extreme

Urgency
• Thank you

© 2009 Brain League IP Services Pvt. Ltd