Patent Infringement Analysis - Presentation by Dr. Kalyan C. Kankanala at UPES School of Law

Infringement Analysis

Dr. Kalyan C. Kankanala

[email protected] URL: www.bananaip.com

Books: www.kalyankankanala.com

Patent Rights

• Territory

• Product Patent - Make, Use, Sell, Offer for

Sale and Import.

• Process patent - Use

Copyright, BananaIP, 2017. Governed by CC BY-ND-SA-NC License 4.0

Infringement

Types

Direct

• Literal

• Equivalent

Indirect


Direct Infringement

• Claim Construction

• Comparison

• Claim by claim - element by element


Claim Construction

Claim

Preamble

Transition

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.


Claim Construction

• Preamble - I claim a ‘ceiling fan’

• Transition - comprising of

• Body - base connected to a solid rod, which

in turn is connected to a rotor with three

wings.


Claim Elements

• Base

• Solid rod

• Rotor

• 3 Wings


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.


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


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


Indirect Infringement

• Contributory Infringement

• Inducement to infringe


Defenses

Government use

Research Exemptions

Experiments or education

FDA approval

Parallel Imports

Other Defenses


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?


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?


Example

Patent

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


Example

Product

Gutter guard is comprised of a mesh screen

attached to a guard panel by means of an

adhesive, hot glue, which is later cooled.


Example

Patent Claim

• A screen apparatus for a frame, said apparatus comprising:

– an elongated element, said elongated element adapted to be secured

to at least one of a top portion of the frame and a support structure in

a vicinity of the frame;

– at least one moveable element, said moveable element configured to

be moveable secured to said elongated element; and

– at least one sheet connected to the moveable element, wherein said

moveable element is configured to slide on said elongated element

thereby moving the sheet between a closed and open positions.


Example

Product 1

• XYZ offers innovative silk curtains for sale. The speciality of the

curtains is that you will not need curtain rings to open and close the

curtains. The curtains come with loops made of silk, which can be

looped over a curtain rod of any shape. They can be easily closed

and opened at will.


Example

Product 2

• ABC manufactures silk ropes for XYZ. The silk rope can be

fastened to the loops of curtains. The rope runs over a pulley and

has knotted ends that allow users to open and close the curtain.

• XYZ incorporates the rope and pulley mechanism in its curtains and

sells them to customers.


Example

Product 3

• XYZ Tech sells wireless curtains imported from USA. The curtains

can be opened and closed using an App on a cell phone. The App

comes with a slider that allows a user to control the extent to which

a curtain needs to be opened or closed. The App interacts with a

wireless receiver on the curtain rod, which activates and moves the

pulley mechanism in the requisite direction based on user inputs.


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