Patent Infringement

ByDr. Kalyan C. KankanalaBrain League IP Services Now BananaIP

© 2009 Brain League IP Services Pvt. Ltd Now BananaIP

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 Now BananaIP