Key terms Patent Act Term # 14: Plaintiff

1. Term #14
Plaintiff & Defendent
Indian Patents Act 1970
Key Terms of Indian Patents Act
Ms Bindu Sharma, Founder & CEOSpeaker
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2. Plaintiff
• Plaintiff, also known as a claimant
or complainant, is the party who
initiates a lawsuit before a court.
• Plaintiff seeks a legal remedy, and
if successful, the court will issue
judgment in favor of the plaintiff
and makes the appropriate court
order like an order for damages.

3. Defendant
A defendant is any party who is
required to answer the complaint of a
plaintiff in a civil lawsuit before a
court, or any party who has been
formally charged or accused of
violating a statute.

4. Apple Inc vs VirnetX
• VirnetX sued Apple Inc for infringement
of its four patents used by Apple in its
FaceTime video calling service (U.S.
Patent Nos. 6,502,135, 7,418,504,
7,921,211 and 7,490,151).
• Apple was ordered to pay US$368.2
million in damages to VirnetX
VirnetX - Plaintiff
Apple Inc - Defendant
Court order: US$368.2 million damages

5. S 104A [Burden of proof
in case of suits concerning infringement]
• Infringement in simple words
is violation of rights of a
patent holder
• In any suit for infringement of
a patent, plaintiff (Patentee)
has burden of proof.
• This is specifically for the
product patent.

6. S 104A [Burden of proof in case of
suits concerning infringement]
• But where the subject matter of patent is a
process for obtaining a new product and the
patentee could not establish through reasonable
efforts to determine the process actually used
by the infringer, the court may direct the
defendant to prove that the process used by
him to obtain the product, identical to the
product of the patented process, is different
from the patented process.
• Hence, in case of process patent infringement,
burden of proof shifts from plaintiff to the
defendant.

7. S 106 [Power of court to grant relief in cases of
groundless threats of infringement proceedings]
The court may grant to the plaintiff [aggrieved person]
all or any of the reliefs prayed for, if defendant fails to
prove that:
▪ Threats were not groundless; or
▪ Proceedings threatened really constitute or would
constitute an infringement of a patent or of rights
arising from the publication of a complete
specification in respect of a claim of the plaintiff
to be invalid.

8. S 107 [Defenses, etc., in
suits for infringement]
• When a law-suit is filed by the plaintiff
for infringement of his patent rights,
the defendant shall defend himself and
prove that he is not infringing rights of
the plaintiff.
• All the grounds of revocation U/S 64
can be used as defense by the
defendant.

9. U/S 108 [Relief in suit for infringement]
• The reliefs which a court may grant in
any suit for infringement include:
▪An injunction
▪Damages or
▪An account of profits.
• The court may also order that infringing
goods shall be seized, forfeited or
destroyed.

10. Account of profits
• An equitable remedy most commonly used
in cases of infringement. It is an action taken
against a defendant to recover the profits
taken as a result of infringement, in order to
prevent unjust enrichment.
• In conducting an account of profits, the
plaintiff is treated as if he was conducting
the business of the defendant, and made
those profits which were attributable to the
defendant’s wrongful actions.

11. S 109 [Right of exclusive licensee to take
proceedings against infringement]
In any suit for infringement of a patent by an
exclusive licensee, if the patentee does not
join as plaintiff, he is added as a defendant,
but a patentee so added as defendant shall
not be liable for any costs unless he enters an
appearance and takes part in the proceedings.

12. Question
Generally, in a patent infringement
case, the burden of proof lies on:
a. Defendant
b. Plaintiff
c. Both (a) and (b)
d. None of the above

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