Dr. Kalyan Kankanala, Senior Partner, BananaIP Counsels, delivered a class on {inset Slide title}, for National Law School of India University, Bangalore.

1. Copyright, BananaIP (BIP) Counsels, 2021
Patent Remedies
Dr. Kalyan C. Kankanala
BananaIP Counsels
contact@bananaip.com

2. Remedies
• Injunction
• Permanent Injunction
• Temporary Injunction
• Damages
• Compensatory Damages
• Punitive Damages
• Costs
Copyright, BananaIP (BIP) Counsels, 2021

3. Interim Injunction
• Prima Facie Case
• Irreparable Loss/Damage
• Balance of Convenience
• Public Interest
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4. Example
Pacbo holds a patent over a bottle cap with a sipper for persons with
disabilities. The patent is granted in 2014, and Pacbo sells bottles with the
patented caps in select physical and online stores to both customers with
and without disabilities. From 2012 to 2021, Pacbo's sales steadily increase,
and it sells ten lakh bottles in 2020.
In 2020, Leribis launches bottles with caps having sippers. Pacbo sues Leribis
for patent infringement, and asks for an interim injunction during the
pendency of the case. Leribis challenges the validity of the patent based on
prior use, publication, prior patents and prior sales of bottles with sippers.
Pacbo argues that its caps with sippers are unique as they address needs of
persons with specific disabilities. Leribis states that even if its patent is valid, its
product is covered by prior art and is non-infringing.
Will an interim injunction be granted? What options does the Court have?
Copyright, BananaIP (BIP) Counsels, 2021

5. Example
X holds a patent over an anti-viral drug, which is used for treatment of AIDS.
During the COVID crisis, studies conclude that the drug may be used as part
of a supplementary therapy for severe COVID cases. Until then, X is the only
manufacturer and seller of the drug in India.
Owing to the increased demand of the drug, Y and Z having already
acquired drug approval, start making and supplying the patented drug to
pharmacies and hospitals. X sues Y and Z for patent infringement, and asks
for an interim injunction. Y and Z counter that interim injunction should not be
granted as the demand for the drug is not being met by x. X rebuts by
stating that it is willing to grant a license to Y and Z on reasonable terms.
Will an interim injunction be granted? What options does the Court have?
Copyright, BananaIP (BIP) Counsels, 2021

6. Example
Monsanto holds a patent over a gene sequence for drought and insect
resistance, the process for inserting the same into a plant cell, and the
resultant plant cell, which forms part of a seed. Nuzuveedu acquires a
license over the patent, and sells seeds including the patented invention to
farmers. As per the license, Nuzuveedu is required to pay a license fee/trade
fee at a given rate. After they enter into a license agreement, the
Government introduces price controls with respect to sale of seeds, and
regulates license forms. In response, Nuzuveedu reduces the fee payable to
Monsanto and asks for a refund of the excess license/trade fee payed
earlier.
Monsanto terminates the license agreement and sues Nuzuveedu for patent
infringement. Nuzuveedu counters that the patent is not valid, and that
Monsanto's license terms are anti-competitive and legally untenable.
Will an interim injunction be granted? What options does the Court have?
Copyright, BananaIP (BIP) Counsels, 2021

7. Other Reliefs
• Innocent Infringement
• Declaration of Validity
• Declaration of Non-Infringement
• Groundless Threats
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8. Example
X acquires a patent grant over a novel chair, but
forgets to pay the renewal fee. It sues Y for patent
infringement during the lapse of the patent and
thereafter after restoration.
X marks the patented chairs it sells as follows:
"Patented, Do Not Copy."
Is Y liable to pay damages?
Copyright, BananaIP (BIP) Counsels, 2021

9. Example
Zo sends a letter to Yo stating as follows:
"We learned about your patented wheel from the patent database,
and carried out an analysis with respect to our product. Our product
clearly falls outside the scope of your claims, and is non-infringing.
Find the analysis report of our attorney attached. Kindly confirm that
our product is not infringing."
Zo sues for patent infringement, and Yo files for declaration of non-
infringement.
Will Yo get relief?
Copyright, BananaIP (BIP) Counsels, 2021

10. Example
Tom acquires several patents pertaining to traditional
formulations for improving immunity. Through his attorneys, he
sends out legal notices to different ayurvedic companies and
doctors alleging them of patent infringement. Some of them
respond stating that Tom's patents cover traditional
knowledge, and are therefore invalid.
Tom goes to Court asking for a declaration that his patents
are valid. Will the Court grant him the relief?
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11. SEP Litigation
• Standard Essential Patents
• FRAND Terms
• Ericsson cases
• Royalty Fixation by Courts
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12. Basic Overview from 2014
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13. ADR
• Standard Essential Patents
• FRAND Terms
• Ericsson cases
• Royalty Fixation by Courts
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14. Resolution of Patent Disputes
• Negotiation
• Arbitration
• Mediation
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15. Intro to WIPO ADR Services
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16. Download Dr. Kalyan’s books
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17. 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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