PATENT INFRINGEMENT Author: Som Shekar Ramakrishna1 Introduction A patent provides exclusivity with respect to the invention that

is claimed in the patent document.2 The exclusive rights granted to a product patent include the right to manufacture, use, sell, offer for sale in the country or import into the country in which a patent is granted.3 With respect to a process patent, the patent holder gets the right to use the process to the exclusion of others.4 A process patent also grants the right to prevent others from manufacturing, using, selling, offering for sale or importing the product made using the process. The rights of a patent holder start from the date of publication of the patent application and last until the expiry of the patent term. However, the patent holder can enforce his patent rights only after the patent is granted. Infringement of a patent Patent infringement exists if any person exercises the exclusive rights of the patent holder without permission within the country of patent grant and during the patent term. While assessing patent infringement it is important to ascertain the following:
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Whether the person alleged of infringement exercised the rights of the patent holder with respect to the patented invention?; Whether the rights have been exercised without authorization of the patent holder?; Whether the actions of the alleged infringer are within the country or territory of patent grant?; and Whether the patent has not expired or lapsed?

, Email: rsshekar@brainleague.com Section 48, The Patents Act, 1970 Section 48 reads as follows: Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee (a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India; (b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India. 3 Section 48(a), The Patents Act, 1970. 4 Section 48(b), The Patents Act, 1970.

A person will be liable for infringement only if answers to all the aforestated questions is affirmative. Among the questions, the most important and contentious question is the first one. As per the question, a person would be liable for infringement if his product or process is same as the patented invention. As the claims in a patent define the metes and bounds of the invention claimed, a product or process will be infringing if it falls within the scope of a claim in the patent. Therefore, understanding the meaning and scope of patent claims (claim construction) is important for determining infringement. Claim construction is the act of understanding the meaning and scope of a claim.5 It is ascertained by identifying the elements or limitations in a claim and understanding their meaning. The scope of a claim will be influenced by the specification, prosecution history, state of the art, dictionaries and so on. Preamble of the claim may some times act as a limitation of the scope of the claim. Based on its nature, infringement may be classified into two types: A. B. Direct Infringement; and Indirect Infringement.

Direct Infringement is once again classified into two types: a. b. a. Literal Infringement; and Equivalence Infringement. Literal Infringement

Literal infringement exists if all elements of a claim are literally present in an alleged product or process. Determination of literal infringement is done by comparing elements of a claim to those of a product or process one on one. b. Equivalence Infringement

Equivalence infringement determination is carried out only if a product or process does not literally infringe on claims of a patent. Infringement by equivalence exists if the elements of a product or process differing from those of claim elements are present by equivalence. Assessment of
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Mariappan Vs.A.R. Safiullah, MANU/TN/0828/2008 at Para 36 citing Raj Prakash v. Mangat Ram Choudhary and Ors., MANU/DE/0152/1977.

equivalence of an element to that of an element in a claim is done through various tests. In India, a product or process is infringing if the product is in substance equivalent to that of the claim. Non-essential elements and insubstantial changes are not sufficient to alienate an otherwise infringing product or process from infringement. Substantial equivalence is said to exist if the core of the claimed invention is copied in a product or process. US Courts follow the function-way-result test for determining equivalence. As per the test, a product or process is said to be infringing if the elements differing from elements in the claim perform the same function in substantially the same way to produce substantially the same result. Equivalence cannot be applied if the claims are narrowed during prosecution.6 This is called as Prosecution History Estoppel. Equivalence determination in UK is done based on purposive construction of claim elements. UK Courts follow a three step analysis, which includes assessing material effect of the variant elements, obviousness of such elements and intended scope of the invention as it can be understood from the claims. A product or process would not be equivalent if its differing elements from the claim produce a material effect when compared to the invention. Equivalence would also not exist if the differing elements and their effect are not obvious to a skilled person in the light of the patented invention. Furthermore, if the intended scope of claim elements may not be expanded to the differing elements in the alleged product or process, there would be no equivalence. 7 Unlike US Courts, UK Courts do not use prosecution history as a standard source to identify the scope of claims in a patent. Example Consider Patent A granted to Inventor X on a composite gutter guard. Gutter guard is a device that can be attached to a conventional gutter in order to allow the free flow of water into the gutter while filtering out dirt, leaves and other debris. A figure of the guttar guard is shown hereunder.

Divided by a common language: a comparison of patent claim interpretation in the English and American courts E.I.P.R. 2004, 26(12), 528-537 Patent infringement in Europe: the British and the German approaches to claim construction or purposive construction versus equivalency E.I.P.R. 2008, 30(9), 364-370

Mesh layer

Guard panel

U. S Patent No. 6,463,700 Claim 1 of Patent A recites 1) A composite gutter guard adapted to be positioned at an opening of the gutter, said gutter guard comprising: a guard panel; a mesh layer configured to be positioned on the said guard panel, wherein said mesh layer is attached to said guard panel by continuous heat weld. A person Y manufactures gutter guards having guard panel and a mesh layer. However, the mesh layer is attached to the guard panel by an adhesive instead of a continuous head weld. Given the above scenario, the guttar guard of Y does not literally infringe because all elements of claim 1 are not literally present in Ys gutter guard. Though Ys guttar guard has a panel and a mesh mentioned in the patent claim, the attachment mechanism of mesh to the panel are

different. The claim states that the mesh layer and the guard panel are attached by continuous weld but Ys gutter guard uses adhesive instead of weld to attach the mesh layer and the guard panel. As the attachment element is different from the patent claim, Ys guttar guard does not literally infringe on the claim. However, Y may be considered to infringe claim 1 of patent A by equivalence if attaching the guard panel and the mesh layer through adhesive may be considered equivalent to attaching the guard panel and the mesh layer through continuous heat weld as stated in the claim. As per the in substance equivalent test in India, Ys element for attachment may be considered to be equivalent if the heat weld is not an essential element. Furthermore, it can be easily argued that Y copied the core concept of the claimed invention to prove equivalence. Having said that, as Indian courts have not laid down specific tests for equivalence analysis, tests from other jurisdictions may be borrowed for performing the analysis. Considering the function-way-result test used in USA for such a determination, though Ys attachment mechanism by adhesive performs the same function and produces the same result, the way is different from heat weld. Therefore, the element would not be considered to be equivalent and so there would be no infringement by equivalence. If Ys guttar guard is analyzed using the three step analysis in UK, there would also be no infringement by equivalence. Though the material effect of the Ys element having adhesive is same as the heat weld and It would be obvious for a skilled person to think about adhesive in place of heat weld, it would be difficult to prove that the claimed invention was not intended to be limited to the heat weld and would include other modes of attachment as well. Expansion of the claim to other modes of attachment cannot be read from the language of the claim. Therefore, as the answer to the third question is no, there would be no infringement by equivalence. Indirect Infringement Indirect infringement is said to exist if a person induces, encourages or instigates another person to infringe a patent. There cannot be indirect infringement without direct infringement. In case of indirect infringement, the person inducing or encouraging does not directly infringe a patent but encourages another person to infringe. Intention is an important factor for determining existence of indirect infringement. Indirect infringement may exist if a person induces another person to infringe through advertisement, sales and so on. One kind of indirect infringement is contributory infringement. In case of contributory infringement, a person will be liable if he knowingly facilitates infringement through sales of a material component of a patented product. The material component in such a case must not be a staple, which is generally available in the market and has non-infringing uses. Defenses

Defenses to infringement help a person to save himself from infringement liability. A person falling within the scope of a defense will not be liable for infringement though his product or process is infringing. Some of the important defenses are: a. b. c. d. e. f. a. Experiment, Research or Education; Bolar Exemption; Government use; Patent Exhaustion; Patent Misuse; and Inequitable Conduct. Experiment, Research or Education

Use of a patented invention for experimentation or research is a valid defense to patent infringement. The provision relating to experiment and research under the Indian law uses expansive language and can be interpreted to have a very broad scope.8 In addition to research, use of a patented invention for education to pupils is also a valid defense in India. b. Bolar Exemption;

A patented drug may be used without any infringement liability for conducting studies, experiments and trials to get authorization from the drug approval authorities.9 This defense is also called as the Bolar Exemption because it was enacted in USA after the decision in the case of Roche v.

Section 47(3), The Patents Act, 1970. Section 47(3) reads as follows: The grant of patent under this Act shall be subject to the condition that (3)any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; Section 107A(a), The Patents Act, 1970. Section 107A(a) reads as follows: For the purposes of this Act, -

Bolar.10 In India, the provision is worded in very broad language and extends to government approval for any invention and not just drug related inventions

C.

Government use

Importation, manufacture or use of a patented invention by or on behalf of the government is a valid defense to patent infringement.11 Such a defense is available only if the activity is merely related to purposes of governments own use. Initially, the scope of the defense for government use was expounded by the courts to be limited to use by government officers and government departments. However, the Delhi High Court in a recent decision stated that the government use exemption to infringement will extend to contractors of the government as well.

D.

Patent Exhaustion

The exclusive rights with respect to a product are exhausted on sale of the product by the patent holder. Exhaustion applies to a process patent also on sale of a product made by the process. This is also called as the first sale doctrine in USA. Exhaustion of patent rights may be national, international or regional. In case of national exhaustion, the rights of a patent holder are exhausted within a country on sale of a patented product in that country. International exhaustion is a scenario where rights of a patent holder are exhausted within a country on sale of the patented product in any country. With respect to regional exhaustion, the rights of a patent holder are exhausted in region if the patented product is sold in any country within the region. The European Union follows the system of regional exhaustion.
(a) any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably relating to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product;
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Roche Products, Inc. v. Bolar Pharmaceutical Co. Inc., 733 F.2d 858 (C.A.Fed.,1984).

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Section 47(1), The Patents Act, 1970. Section 47(1) reads as follows: The grant of patent under this Act shall be subject to the condition that (1) any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;

India follows the principle of international exhaustion. As per the Patents Act in India, the rights of a patent holder will be exhausted if the sale of the product in another country is duly authorized under the law of that country. If a person purchases the product in a country from a person authorized to sell in that country and imports the same into India, he would not be liable for patent infringement. 12 This exemption is also called as Parallel Imports exemption because it allows parallel imports of a product without liability. E. Patent Misuse

Using a patent beyond the scope of rights granted to the patent holder is called as patent misuse. It generally includes anti-competitive activities, extension of patent rights beyond those granted under the patent and inequitable conduct. Any action of the patent holder with respect to the patented invention that amounts to abuse of dominance, restraint of competition and so on would amount to patent misuse.13 Furthermore, any activity of the patent holder that amounts to expansion of patent rights to non-patented inventions through the exercise of patent rights would also amount to patent misuse. Inequitable Conduct, which has been explained under the next title might also be considered as patent misuse. Misuse of a patent by the patent holder is an equitable defense to patent infringement and is well recognized by the US Courts. F. Inequitable Conduct

A patent holder will be liable for inequitable conduct if he defrauds the patent office or provides false or misleading information to the patent office. Inequitable conduct can exist in circumstances such as disclosure of false information relating to the invention, inventorship, foreign applications and so on. Inequitable conduct will be assessed based on intention of the patent holder and materiality of the information that hass been withheld or wrongfully disclosed. Inequitable conduct is a ground for patent revocation in India.14 Remedies Remedies for patent infringement include
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Section 107A(b), The Patents Act, 1970. Section 107A(b) reads as follows: For the purposes of this Act, (b) importation of patented products by any person from a person who is duly authorised under the law to produce and sell or distribute the product, shall not be considered as an infringement of patent rights. 13 Some common comments on Contributory and Induced Patent Infringement; Implications for software developers, 81 JPTOS 777
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Section 66, The Patents Act, 1970.

a. b. c. d. a.

Injunction Damages; Account of profits;15 and Costs. Injunction

Injunction is an equitable remedy granted by a court ordering a party to act or refrain from acting in a particular manner. An injunction may be temporary or permanent. Temporary injunction is generally granted during the pendency of the suit and permanent injunction is granted after the determination of infringement is made by the court. Temporary injunction is generally granted by a court after reviewing the following factors: a. b. c. b. Whether the applicant for the injunction has a prima facie case?; Whether the applicant will suffer an irreparable loss if the injunction is not granted?; and Whether the balance of convenience is in favour of the applicant?16 Damages

Damages is the money paid to the patent holder to make good the loss sustained by him due to the infringement. It is the loss in terms of money that is caused due to infringing action of the infringer. On proving infringement, a patent holder can get the actual damages suffered by him. Courts may also grant punitive damages to deter infringers in case of willful infringement. c.
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Account of profits

Section 108(1), The Patents Act, 1970. Section 108(1) reads as follows: The reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits. National Research Development Corporation of India Vs. The Delhi Cloth & General Mills Co. Ltd. and Ors., MANU/DE/0304/1979. at Para 7.

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Account of profits are the profits made by an infringer based on the infringing action. In addition to damages, the patent holder can also get profits made by the infringer after succeeding in an infringement case. Courts generally grant the higher among damages and account of profits and not a cumulation of both. d. Costs

After succeeding in an infringement suit, the patent holder may also apply for costs incurred for the infringement suit. The court may grant costs such as lawyer fee, court fee and so on. Summary Patent infringement exists if a person exercises the rights of the patent holder with respect to the patented invention during the patent term within the patent territory. A product or process will infringe a patent if it falls within the scope of patent claims. Infringement may be literal or by equivalence. India follows a very broad standard for determining infringement. Defenses to patent infringement exempt a person from liability even if his product or process is infringing. Most important defenses are research exemption, bolar exemption, government use, parallel import exemption, patent misuse and inequitable conduct. Remedies to patent infringement include injunction, damages, account of profits and costs.