The following presentation was delivered by Dr. Kalyan C. Kankanala, Managing Partner BananaIP Counsels, at National Law School of India University, Bangalore (NLSIU), as a part of the Patent law course offered for PGDIP students. Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

1. © BANANAIP, 2015
Dr. Kalyan Kankanala,
January 24th
, 2016
INFRINGEMENT ANALYSIS
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2. PATENT RIGHTS
• Territory
• Product Patent - Make, Use, Sell, Offer for
Sale and Import.
• Process patent - Use
© BANANAIP, 2015

3. INFRINGEMENT
Types
Direct
• Literal
• Equivalent
Indirect
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4. DIRECT INFRINGEMENT
• Claim Construction
• Comparison
• Claim by claim - element by element
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5. CLAIM CONSTRUCTION
Claim
Preamble
Transition
Body
•I claim a 'ceiling Fan' comprising of a base
connected to a solid rod, which in turn is
connected to a rotor with three wings.
© BANANAIP, 2015

6. CLAIM CONSTRUCTION
• Preamble - I claim a ‘ceiling fan’
• Transition - comprising of
• Body - base connected to a solid
rod, which in turn is connected to a
rotor with three wings.
© BANANAIP, 2015

7. CLAIM ELEMENTS
• Base
• Solid rod
• Rotor
• 3 Wings
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8. IS THIS PRODUCT INFRINGING?
• A ceiling fan having a base to be
attached to the ceiling and which has a
hollow rod connected to the base. The
hollow rod is connected to a circular rotor
having 4 wings.
• I claim a 'ceiling fan' comprising of a base
connected to a solid rod, which in turn is
connected to a rotor with three wings.
© BANANAIP, 2015

9. DOCTRINE OF EQUIVALENCE
• Equivalents of a claim
• In substance equivalent
• Function-Way-Result Test
• Prosecution History Estoppel
• Obviousness Test – Material Effect – Part of prior
art
© BANANAIP, 2015

10. 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
© BANANAIP, 2015

11. INDIRECT INFRINGEMENT
• Contributory Infringement
• Inducement to infringe
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12. DEFENSES
• Government use
• Research Exemptions
• Experiments or education
• FDA approval
• Parallel Imports
• Other Defenses
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13. EXAMPLE
• Claim
A process for preparing a flavored dried fruit product said process
comprising:
(a) treating a dried fruit with an acidulant being selected from the
group consisting of tartaric acid, malic acid, citric acid, ascorbic
acid, phosphoric acid, and fumaric acid, in an amount and for a
period of time which is sufficient to substantially remove the
natural flavor of the dried fruit;
(b) dehydrating the treated dried fruit to obtain a desired moisture
content; and
(c) treating the dried fruit during step (a) or after step (b) with a
flavoring agent having a flavor which does not substantially
correspond to the natural flavor of the dried fruit.
• Infringing?
© BANANAIP, 2015

14. EXAMPLE
 Flav sells fruits with flavours induced into them. Sells fruits
like grapes, apples and so on with orange, mango and
any other flavour induced into them. Flav's process is as
follows:
• Frozen fruits are sorted, sliced and de-frosted;
• Water and/or acid treatment is given to the fruits to
remove their natural flavour by removing sugars,
acids and other water soluble ingredients;
• Fruits are then immersed in sugar syrup and other
flavoured liquids for about three hours; and
• Air is blown on the fruits with force to dry them.
• Flav wishes to avoid patent risks in India. What should
it do? © BANANAIP, 2015

15. EXAMPLE
Patent
CLAIM 1
1) A composite gutter
guard …, said gutter
guard comprising:
(a) a guard
panel
(b) a 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….
Mesh layer
Guard
panel
© BANANAIP, 2015

16. EXAMPLE
Product
Gutter guard is comprised of a mesh
screen attached to a guard panel by
means of an adhesive, hot glue,
which is later cooled.
© BANANAIP, 2015

17. Example
• Patent Claim
• A screen apparatus for a frame, said apparatus comprising:
• an elongated element, said elongated element adapted to be secured to at least one of a
top portion of the frame and a support structure in a vicinity of the frame;
• at least one moveable element, said moveable element configured to be moveable
secured to said elongated element; and
• at least one sheet connected to the moveable element, wherein
•
• said moveable element is configured to slide on said elongated element thereby moving the
sheet between a closed and open positions.

18. Example
• Product 1
• XYZ offers innovative silk curtains for sale. The speciality of the curtains is that you will not
need curtain rings to open and close the curtains. The curtains come with loops made of silk,
which can be looped over a curtain rod of any shape. They can be easily closed and opened
at will.

19. Example
• Product 2
• ABC manufactures silk ropes for XYZ. The silk rope can be fastened to the loops of curtains.
The rope runs over a pulley and has knotted ends that allow users to open and close the
curtain.
• XYZ incorporates the rope and pulley mechanism in its curtains and sells them to customers.

20. Example
• Product 3
• XYZ Tech sells wireless curtains imported from USA. The curtains can be opened and closed
using an App on a cell phone. The App comes with a slider that allows a user to control the
extent to which a curtain needs to be opened or closed. The App interacts with a wireless
receiver on the curtain rod, which activates and moves the pulley mechanism in the requisite
direction based on user inputs.

21. FTO ANALYSIS
• Understand and Avoid Patent Risks
• Search, Shortlist and Analyze
• Invalidity Claims
• Defenses
© BANANAIP, 2015

22. Example
• Patented Drug - Sitagliptin
• Defendant's drug - Sitagliptin Phosphate Monohydrate
• Defences
• MSD V. Glenmark

23. DR. KALYAN KANKANALA’S BOOKS
www.kalyankankanala.com
© BANANAIP, 2015

24. Pre-order Upcoming Books By Dr. Kalyan
Dogs are mysteriously disappearing in the city
of gardens, Bangalore. The Dog Mafia is
organized, aggressive and ruthless.
Overburdened with work, the police are least
interested in pursuing complaints of missing
dogs. Two young boys, Appu and Chinnu,
decide to go after the Dog Mafia.
They get off to a bad start, and lose their
beloved dog, Susie, to the Dog Mafia. Their
quest for Susie takes them through a journey
filled with fun, adventure and enlightenment.
This book will be an interesting read for dog
lovers, fun lovers and children.
© BANANAIP, 2015

25. THANK YOU
How to reach Dr. Kalyan Kankanala:
♦Email: kalyan@bananaip.com
♦Phone: +91 80 2686 0414 / 24 / 34
♦Web: www.bananaip.com
♦IP News Tracker: www.sinapseblog.com
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© BANANAIP, 2015