Patent Infringement Analysis 2014

Dr. Kalyan Kankanala
BananaIP, Formerly Brain League
kalyan@bananaip.com
www.bananaip.com
Blog: www.bananaip.com/sinapse-blog
INFRINGEMENT ANALYSIS
© BANANAIP, 2014 NLSIU Lecture Series

PATENT RIGHTS
• Territory
• Product Patent - Make, Use, Sell, Offer for Sale and Import.
• Process Patent - Use

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 inturn 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

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

INDIRECT INFRINGEMENT
• Contributory Infringement
• Inducement to infringe

DEFENSES
• Government use
• Research Exemptions
• Experiments or education
• FDA approval
• Other Defenses

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
• 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.

EXAMPLE
Patent 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….
© BANANAIP, 2014
Mesh
layer
Guard
panel

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.

FTO ANALYSIS PROCESS
• Identify key elements of the product
• Develop a search strategy
• Patent screening
• Patent analysis
• Report

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For more info:
www.bananaip.com/sinapse-blog
Email to: kalyan@bananaip.com
THANK YOU

Patent Infringement Analysis 2014

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Patent Infringement Analysis 2014