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
[email protected] 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 Span Diagnostics copied the HCV
Diagnostics– CS (OS) No. 2020/2006 - Tridot product
Judgment dated 22.02.2008 passed by
Ld. Single Judge of Delhi High Court,
Hon’ble Mr. Justice Sanjay Kishan Kaul Span had initially opposed the
grant of patent and the patent
J. Mitra developed a highly qualitative office in India had rejected the
fourth generation Hepatitis – C diagnostic objections and had granted the
kit which enable the disease to be patent to J. Mitra in 2006
diagnosed within 10-15 days after the virus
enters the human body
J. Mitra had applied for a patent on this After the grant of the patent, J.
product before the Indian Patent Office as Mitra filed a case against Span
far back as in 2000
Diagnostic seeking injunction
The Patent disclosed an invention which against the manufacture of Signal
comprised of a specific set of antigens used HCV which was the copied device
in specific proportions and the device built
in a unique manner 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
[email protected] +91 -9293123797
+91-40-23061803
