School of Law of CHRIST (Deemed to be University) NCR

campus Lecture Series On the Intellectual Property Rights

Interaction with Industry Expert Series on Practical Aspects of IPR Law

Infringement of Patents &

remedies in case of infringement
Vijay Kumar Makyam
97000 29123
vijay@i-winip.com
Presentation Disclaimer
This Presentation is intended for educational
purposes only and do not replace independent
professional judgment. The audiences are
encouraged to consult separately for binding legal
opinions.

The views, thoughts, opinions and Statements of

facts expressed in this presentation belong solely to
the presenter, and not necessarily to the Presenter’s
organization, committee or other group or
individual/s.
Infringement of Patents
This presentation demonstrates
what rights a patent owner gets by
getting a patent grant from the
governments, when his rights get
infringed, what remedies he has in
case of infringement of his patent
rights, defenses available in patent
infringement cases and some case
studies of patent infringement.
Requirements of Grant of Patent

 Subject Matter
 Novelty
 Utility / Industrial Applicability
 Non-obviousness / Inventive Step
 Specification
 Body of Specification
 Claims
 Drawings
 Unity of Invention
Patent Process Flow Chart
Patent Rights ( Patent Grant)
A patent is a monopoly right granted
to an inventor, giving the inventor
the right for a limited period of time
to prevent others from making,
using or selling his invention without
due permission from the inventor.
Offering for Sale
Section 48: The exclusive right to
prevent third parties, who do not have
his consent, from the act of making,
Selling
using, offering for sale, selling or
importing for those purposes that
product in India; Importing

In case of Process Patent ( Use of the

process)
Patent Infringement
Any of the patent Rights exercised by
third parties without any permission Literal
Literal
from the patentee (the person whom
patent is granted) is an infringement
of patent granted to patentee.

whoever without authority makes,

uses, offers to sell, sells, or imports
any patented invention during the
term of the patent, infringes the
patent.
With out
Claim Construction:
 Literal
 Equivalents
© Brain League Consultants – 2006 -2007
© Brain League Consultants – 2006 -2007
© Brain League Consultants – 2006 -2007
Infringement can be
Direct infringement

 Making the invention

 Using the invention
 Selling the invention
 Offering the invention for sale
 Importing the invention

Indirect
infringement

 Inducing infringement
 Contributing to infringement
How to determine infringement

 Determining  File History of the Patent

the
Meaning of the  All Prior Art Cited during
Prosecution
claim terms and
 A reliable description of
the scope of the
the Accused Device
claims
 Other Possible
 Comparison of the Evidences
Properly Construed  Reliance on Legal
Claims to the Authority/Scientific
Accused Device Principals
What can be based on
 Claim terms
 Intrinsic Evidence are to be given their ordinar
 Claim language y and
 Written Description customary meaning in the fi
 Accompanying eld of invention
Drawings  When the specification
 Prosecution History explains and defines a term
used in the claims, without
 Extrinsic Evidence ambiguity or
 Inventor/Expert incompleteness, stop there
Testimony  Means Plus Function Claims
 Treatises/Technical
 Prosecution History
Articles Estoppel
Visualize It!
 Determine the scope of
the claim(s)
 Compare the elements
of the claim to the
composition or method
accused of infringement
using the “all elements”
rule: every element
required by the claim
must be present in the
accused composition or
method either literally
or under Doctrine of
Equivalents
Basic Literal Infringement Example
The claim
 An apparatus, comprising: A, B, and C.
The infringing product contains:
 A, B, and C
 Literal Infringement
 A and B
 No Literal infringement
 A, B, C, D and E
 Literal Infringement
Literal Infringement

C
No Literal Infringement

B
No Literal Infringement E

B A

D
PITH AND MARROW –
Literal Infringement
 Normally an invention consists of essential and/or
non essential components

 If the infringing device has essential components

then it is infringement, even if there is substantial
difference between the non-essential elements

 This type of comparison is called comparison of PITH

AND MARROW of invention with the alleged
infringing products or DOE.
 Elements
recited
Cheese

Edible Salad

2 Slices of Bread

Meat Product

Source: Presentation of Tina McKeon, Ph.D., Fish & Richardson P.C.

 Literal Infringement Analysis
The Claimed Two Slices Cheese Edible Meat Literal
Burger Infringement?
of Bread Salad Product

#1 Yes

#2 No
Non-literal Infringement
 Non-literal Infringement Analysis
The 2 Slices Cheese Edible Meat Infringement
Claimed Of Bread Salad Product under the
Burger Doctrine of
Equivalents?

#2 Yes, if cheese-
flavored dressing
Cheese is the legal
Flavored equivalent to
Dressing
cheese.
Doctrine of Equivalence
 Function
 Way
 Result

 A product will infringe the claims of a patent if it

“performs substantially the same function in
substantially the same way to obtain the same
result”
 It is not a statutory provision in the Patent Law in
India, rather a set of rules established by a series of
cases wherein the courts decided infringement
 Prosecution History
Estoppel
 An exception to Doctrine of Equivalence
 According to US Court Decision [Festo Corp V
Shokestsu Kinzoku Kogyo Kabushiki Co] popularly
called the “FESTO” decision:-
 ‘an elementof a patent cannot be infringed by an
equivalent measure if that element was “amended for
reasons of patentability”
“Prosecution History Estoppel” or “File Wrapper Estoppel”
 A legal limit to the ‘Doctrine of Equivalents’ any
surrender of subject matter during patent
prosecution to avoid the prior art, may not be
recovered by the patent owner later, even it is
equivalent to the matter expressly claimed.
Remedies
for
Patent
Infringement
Remedies for Infringement
 Section 108-The relief which a court may grant in
any suit for infringement includes an injunction and
at the option of the plaintiff, either damages or an
account of profits.
 In brief, the relief which may be awarded in a suit for
infringement are-
 Interlocutory/interim injunction.
 Appointment of local commissioner by the court for
custody/ sealing of infringing material / accounts
 Damages or account of profits.
 Permanent injunction.
 Infringing goods shall be seized, forfeited or destroyed
How do we need claim Infringement

 Cease and Desist Notice

 Circulars
 Notice in Rem
 Public Caution Notices
 Marking on the Product as Patented / Patent
Pending
 Filing appropriate Infringement suits at
District Couts
Defenses
in cases of
Patent
Infringement
 Defenses
 Section 107 A
 Patent Invalid  Research Exemptions
 Did not meet the  Experimental purposes
requirements of Granting  For submitting data to Govt.
Patent Agency like FDA (Bolar Provision)
 Patentable Subject Matter  Parallel Imports
 Novelty  importation of patented products by any person
from a person who is duly authorised under the
 Non-Obviousness law to produce and sell or distribute the product,
shall not be considered as an infringement of
 Utility patent rights.
 Specification  Other equitable Defenses
 Government Use  Patent Misuse
 By Govt.  Inequitable conduct
 Laches in filing suit
 For Govt.
Counter suit for
Ground Less Threats
 Section 106. Court has the power to grant
following relief in cases of groundless threats
of infringement proceedings:
 A declaration to the effect that the threats
are unjustifiable.
 An injunction against the continuance of the
threats and
 Such damages, if any, as he has sustained
thereby.
Cases
J. Mitra Company Pvt. Ltd. Vs. Span
Diagnostics– CS (OS) No. 2020/2006 -
Judgment dated 22.02.2008 passed by
Ld. Single Judge of Delhi High Court,
Hon’ble Mr. Justice Sanjay Kishan Kaul
 J. Mitra developed a highly qualitative
fourth generation Hepatitis – C diagnostic
kit which enable the disease to be
diagnosed within 10-15 days after the virus
enters the human body
 J. Mitra had applied for a patent on this
product before the Indian Patent Office as
far back as in 2000
 The Patent disclosed an invention which
comprised of a specific set of antigens used
in specific proportions and the device built
in a unique manner
 Span Diagnostics copied the HCV
Tridot product
 Span had initially opposed the
grant of patent and the patent
office in India had rejected the
objections and had granted the
patent to J. Mitra in 2006
 After the grant of the patent, J.
Mitra filed a case against Span
Diagnostic seeking injunction
against the manufacture of Signal
HCV which was the copied device
of Span – Argued that antigens are
commonly known and the
methodology is nothing but protein
sequences
Judgment
 Vide judgment dated 22.02.2008, Hon’ble Mr. Justice Sanjay Kishan Kaul of the
Delhi High Court has held that:
 Sufficient documents were filed showing the research conducted by J. Mitra.
 The international preliminary examination report issued by the PCT Office does not
have a bearing on the validity of the patent. The validity patent has to be examined
by the court considering the merits of the case.
 That the defendant showed no research or development towards its infringing
product
 That the defendant had not been able to show that it had developed the product or
had applied for the approval of the product prior to the patent application of J.
Mitra.
 That J. Mitra’s patent was an invention and none of the earlier U.S. patents relied
upon by the defendant Span were identical to J. Mitra’s product
 The other products shown by the defendant are different types of tests and not the
Rapid fourth generation test device as patented by J. Mitra
 Evaluation of W.H.O. reveals 98.9% specificity and 100% sensitivity of J. Mitra’s
product
 The only difference between the plaintiffs and defendants device was that J. Mitra’s
device had three dots and Span’s device had two dots
 The life of a patent being limited in nature i.e. in this case only till 2020, it is
necessary to protect the patent and restrain Span
Bilcare vs. Amartara Pvt. Ltd MIPR2007(2)42

Blister packaging
 Ex-parte injunction
3-LAYER PACKAGING
granted on the ground
that the 3-layer
packaging was an
innovation.
 Later injunction-
Vacated:
 The PVC metallized films has
been in existence
 In absence of any evidence,
there in no element of
newness
 Plaintiff sourcing the
materials from Taiwan not
disclosed
F. Hoffmann-L.A. Roche Ltd. and Anr.
vs. Cipla Ltd. (2008)
 ERLOTINIB HYDROCHLORIDE
 Justice Ravindra Bhat held that
“Credible Challenge” is raised
 Price difference is important to
decide balance of convenience
 No injunction – accounts be filed
 Division Bench found
concealment by Roche
 Supreme Court expedited trial
 TRIAL ABOUT TO CONCLUDE
 Fastest Patent trial in less than
2.5 years since filing of suit.
Bajaj Auto Ltd., State of Maharashtra rep. by S.
Ravikumar vs. TVS Motor Company Ltd. (2009) 9
SCC 797
 Single Judge refused injunction
 Division Bench granted injunction
 Supreme Court held that in Patent matters
endeavour to be made to decide trials in 4
months
 Focus on interim injunction to be reduced.
Novartis AG vs. Union of India (UOI) and Ors.
(2007)4 MLJ 1153
 Novartis challenged the constitutional validity of section 3(d), but the
case has been dismissed by the High Court in Chennai
 Madras High Court upheld the validity of the said section.
 The term efficacy was held to mean ‘therapeutic
efficacy’.
 ‘Enhancement in efficacy’ required to be established by
way of comparative analysis of the known substance and
the alleged invention.
 India had introduced section 3(d) to prevent ever
greening as it excluded 'incremental innovations' from
protectable inventions.
 Policy Decision and Govt. Of India has to take decision on
keeping or removing the provision in the Act.
 Year Pendency as Institutions Disposals Pendency as
of 1st January on 31st
December
2007 1311 548 488 1371
2008 1371 409 450 1330
2009 1330 561 499 1392
2010 1392 154 133 1413
(Upto (Upto 24.04.
24.04. 2010)
2010)

Total Pendency as on 24.04.2010 --- --- 1413

Source: Justice Bhat – APAA World IP Day Seminar 2010

Challenges in litigation and Enforcement

 Lack of specialized courts

 Documentation
 Sensitization of Judicial Officers
 Sensitization of enforcement agencies
 Delays in judgment
 Q&A
Vijay Kumar M
I-WIN IP Services
vijay@i-winip.com
+91 -9293123797
+91-40-23061803