This document discusses various aspects of patent infringement including direct and indirect infringement. It provides examples of direct infringement analysis which involves claim construction, comparing claims to the allegedly infringing product, and determining if each element is literally present or equivalent. Indirect infringement includes contributory infringement or inducing infringement. Defenses to infringement include invalidity, experimental use, government use, and parallel imports. Equitable defenses and remedies like injunctions and damages are also covered. The document concludes with topics on patent revocation, compulsory licensing, and examples analyzing potential infringement liability.

1. Patent Infringement
By
Dr. Kalyan C. Kankanala
Brain League IP Services Now Banan
© 2009 Brain League IP Services Pvt. Ltd Now BananaIP

2. Patent Rights
• Territory
• Product Patent - Make, Use,
Sell, Offer for Sale and
Import.
• Process patent - Use

3. Infringement
• Types
– Direct
•Literal
•Equivalent
– Indirect

4. Direct Infringement
• Claim Construction
• Comparison
• Claim by claim - element by
element

5. Claim Construction
• Claim
• Preamble
• Transition
• Body
• What I claim is a cricket bat
comprising an elongated circular
wooden handle connected to an
elongated wooden blade along the
longitudinal axes of said blade and
handle to form a continuous
elongated implement.

6. Claim Elements
• Elongated circular wooden
handle
• elongated wooden blade
• handle to blade connection
- longitudinal axis of blade

7. Is this product
infringing?
• A cricket bat having a octogonal
shaped handle to provide grip to the
batsman. The handle has a conical
end, which is hollow and which sits
into a long flat piece of wood.
• What I claim is a cricket bat
comprising an elongated circular
wooden handle connected to an
elongated wooden blade along the
longitudinal axes of said blade and
handle to form a continuous

8. Doctrine of
Equivalence
• Equivalents of a claim
– Function
– Way
– Result
• Prosecution History
Estoppel

9. Indirect Infringement
• Contributory Infringement
• Inducement to infringe

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

11. Raj Prakash V. Mangat
Ram
• Process - Printing picture
films for use in film strip
viewer
• Respondents - Film Viewers
- Pictures and films of
different dimensions
• Held liable - Substantially
Equivalent

12. NTP v. RIM
• Black Berry Technology
• RIM held liable for
infringement
• Damages – 612 million
dollars

13. L.B. Plastics V.
Amerimax
• Claim:
• 1) A composite gutter guard
... comprising:
• (a) an elongate polymer
guard panel ...
• (b) a polymer-coated 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 ...

14. Product
• The product has a frame
and a mesh connected to
the frame with the help of a
hot glue. The mesh is
welded at various points
and a hot glue is poured in
the gaps. The hot glue
solidifies and the mesh
attaches to the frame
continuously.

15. Defenses
• Patent Invalid
– Subject Matter
– Utility
– Novelty
– Non-obviousness
– Specification

16. Defenses
• Government Use
– By or For
• Research Exemptions
– Experiment
– FDA Approval
• Parallel Imports

17. Equitable Defenses
• Patent Misuse
• Inequitable Conduct
• Laches

18. Example
• Vini gets a patent on a drug for AIDS
and a method for making the kit in
USA, India and Bangladesh. Dizer
comes up with an alternative cost-
effective, process for making the
drug and acquires a patent on the
same in USA, India and Bangladesh.
Dizer manufactures and sells the
drug in India and Bangladesh.
• Is Dizer liable for patent
infringement?

19. Example
• Anil files for a patent over a twin
spark plug used on motor cycles
before the Indian patent office. In
the application, Anil forgets to
disclose his foreign application in
USA and the name of his co-inventor,
Raju. Zenta makes bikes having the
spark plug. Anil sues Zenta for
patent infringement.
• Is Zenta liable?

20. Example
• The defence department
manufactures night vision
devices for use by the army
without permission of the
patent holder. The patent holder
sues the defence for patent
infringement.
• Is the defence department
liable?

21. Example
• X, a professor at IISc, uses a
patented robot in the laboratory
for understanding its
functioning under controlled
conditions. X develops an
improved robot based on his
findings and files for a patent.
The patent holder sues X.
• Is X liable?

22. Example
• X purchases patented pens
from an authorized dealer in
USA and imports such pens
to India.
• Would X’s sale of pens in
India amount to patent
infringement?

23. Example
• Mr. Guav Kumar holds a patent
over a cell phone in USA and
India. Guav authorizes Sprint in
USA to sell his patented cell
phone. Rollonce purchases the
cell phones from Sprint and
sells them in India.
• Is Rollonce liable?

24. •Patent Revocation

25. Revocation
• Any person
• Central Government
• High Court

26. Grounds
• Patentability Requirements
• Not entitled or Wrongfully
obtained
• Fraud or False
representation
• Contravention of secrecy
directions
• Source of origin of
biological materials …

27. Other modes of
Revocation
• Revocation for Government
Use
• Revocation of patents
relating to atomic energy
• Revocation based on public
interest
• Revocation for non-working
• Revocation on surrender

28. Compulsory
Licensing
• Non-working
• Reasonable requirements of
the public
• Not available at reasonably
affordable prices
• National Emergency or
Extreme Urgency

29. • Thank you
© 2009 Brain League IP Services Pvt. Ltd Now BananaIP