The presentation herein, on patent infringement analysis, is delivered by Dr. Kalyan Kankanala at the National Law School of India University, Bangalore, for Senior officials of the Ministry of MSME, Government of India. Starting with patent rights and claim construction, the presentation covers all aspects of patent infringement such as literal infringement and infringement by equivalence with the help of Indian cases and examples. For more information about the presentation or the event itself, please contact the Sinapse team at sinapse@bananaip.com. 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,
BananaIP, Formerly Brain League
kalyan@bananaip.com
www.bananaip.com
Blog: www.bananaip.com/sinapse
INFRINGEMENT ANALYSIS

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
© BANANAIP, 2015

4. DIRECT INFRINGEMENT
• Claim Construction
• Comparison
• Claim by claim - element by element
© BANANAIP, 2015

5. CLAIM CONSTRUCTION
Claim
Preamble
Transition phrase
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 phrase - 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
© BANANAIP, 2015

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
© BANANAIP, 2015

12. DEFENSES
 Government Use
 Research Exemptions
• Experiments or education
• FDA approval
 Other Defenses
© BANANAIP, 2015

13. 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

14. Example
• SANDEEP JAIDKA V. MUKESH MITTAL & Anr. (2014)
• Invention for 4D Movie experience
• Patent Claim
• "1. A device for producing heating/cooling/aromatic effects of at least one of waterfall, rain, garden, mountains, desert, animals,
kitchen and river scenes while viewing a picture, an advertisement or playing amusement games in a cinema hall/open theater/TV
comprising:
• movie film/video tape/disc recorded with coded signals such as herein described for producing effects of at least one of waterfall,
rain, garden, mountain, desert, kitchen and river scenes of advertisements, said coded signals either recorded separately or
embedded on the sound signals;
• an electronic decoder for decoding said signals when said effect is to be expressed or a particular scene appears; and
• actuating means connected to an output of the electronic decoder for releasing gas/perfumes or energizing heating/cooling means to
produce the desired effects corresponding to the scene appearing on a scene of the cinema hall/open theater/TV."

15. Example
• Defendant's system
• Two computers are used - one fitted with a digital motion controller card (computer 1) and one which contains a simple 3D
movie (computer 2) with no special effects coded on such movie (and there's no interconnect between the two computers).
• The DMC cards/Galil cards of 2nd defendant fitted in computer 1 is used to control various motion simulations including
producing of special effects such as rain, smoke, aroma etc. The said Galil card is fitted in the PCI slot of a computer. The
Galil card works with dedicated software which are available in the free market, viz. Window Servo Design Kit, Windows
Utilities - 32bit and Windows Servo Activex Control - 32 bit. The said Galil card produces 5 volt output at a particular interval
based on the programming of the above software and that voltage output triggers a suitable electrical relay mechanism. The
relay mechanism is connected to a particular special effect medium to achieve desired effect of wind, rain etc.
• In order to achieve synchronization of the movie and the special effects, a simple technique of time-reference is used. The
Galil Card is pre-programmed in reference to a given video content such as a movie or video clipping in such a way that for
instance, if in a given video content, at its 5th minute, a scene portrays a rainfall or waterfall for duration of 5 seconds, the
Galil card can be activated through the DMC to trigger through relays, the water sprinkler effect for duration of 5 seconds at
the 5th minute after the Galil card is initiated. The programming is done manually and but for the time reference, there is no
point of convergence between the video content and the Galil card that produces the effects. The 2nd defendant operates
both video content and the Galil card parellely to achieve the synchronization, i.e., by switching on both the video content
and the Galil card at the same time.

16. 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

17. EXAMPLE
Patent A
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

18. EXAMPLE
Product B
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

19. FTO ANALYSIS PROCESS
• Identify key elements of the product
• Develop a search strategy
• Patent screening
• Patent analysis
• Report
© BANANAIP, 2015

20. COPYRIGHT, BANANAIP, 2014
Available On

21. ANY
QUESTIONS, COMMENTS OR
OBSERVATIONS?
Blog: www.bananaip.com/sinapse
Books: www.kalyankankanala.com
© BANANAIP, 2015