Infringement Analysis

Copyright, BananaIP (BIP) Counsels, 2021
Infringement Analysis
Dr. Kalyan C. Kankanala
BananaIP Counsels
contact@bananaip.com

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
• 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.

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.

Claim Elements
• Base
• Solid rod
• Rotor
• 3 Wings

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.

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

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

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.

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?

Example
Flav sells fruits with flavors induced into them. Sells fruits like grapes, apples
and so on with orange, mango and any other flavor 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
flavor by removing sugars, acids and other water soluble ingredients;
• Fruits are then immersed in sugar syrup and other flavored liquids for
about three hours; and
• Air is blown on the fruits with force to dry them.

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.

Example
Product 1
XYZ offers innovative silk curtains for sale. The specialty 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.

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.

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.

Indirect Infringement
• Contributory Infringement
• Inducement to infringe

Defenses
• Government use
• Research Exemptions
– Experiments or education
– FDA approval
• Parallel Imports
• Other Defenses

Compulsory Licenses
• General
• Emergency
• Export
• Related Patents

Suggested Readings
Patents, Compulsory Licensing and Business Strategy:
https://www.bananaip.com/ip-news-center/patents-compulsory-
licensing-and-business-strategy/
Shielding Patent Attacks - A Peek at Patent Defenses in India:
https://www.bananaip.com/ip-news-center/shielding-patent-
attacks-peek-at-patent/

Download Dr. Kalyan’s books

Thank You
Contact us
BananaIP Counsels
No 40, 2nd floor, JC Industrial Estate,
3rd Main Road, Kanakapura road,
Bangalore – 560062.
Email: contact@bananaip.com
Intellepedia IP News Updates: https://www.bananaip.com/ip-news-center/

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