© BANANAIP, 2015

Dr. Kalyan Kankanala,

BananaIP, Formerly Brain League

kalyan@bananaip.com

www.bananaip.com

Blog: www.bananaip.com/sinapse

INFRINGEMENT ANALYSIS

PATENT RIGHTS

• Territory

• Product Patent - Make, Use, Sell, Offer for Sale and Import

• Process patent – Use

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INFRINGEMENT

Types

Direct

• Literal

• Equivalent

Indirect

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DIRECT INFRINGEMENT

• Claim Construction

• Comparison

• Claim by claim - element by element

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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.

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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.

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CLAIM ELEMENTS

• Base

• Solid rod

• Rotor

• 3 Wings

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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.

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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

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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

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INDIRECT INFRINGEMENT

• Contributory Infringement

• Inducement to infringe

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DEFENSES

Government Use

Research Exemptions

• Experiments or education

• FDA approval

Other Defenses

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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?

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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."

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.

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

EXAMPLEPatent 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

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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.

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FTO ANALYSIS PROCESS

• Identify key elements of the product

• Develop a search strategy

• Patent screening

• Patent analysis

• Report

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COPYRIGHT, BANANAIP, 2014

Available On

ANY QUESTIONS, COMMENTS OR

OBSERVATIONS?

Blog: www.bananaip.com/sinapse

Books: www.kalyankankanala.com

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