Patent Risk Analysis

By
Kal yan C . Kankanala
Chief Knowledge Of ficer
Br ain Lea gue IP Ser vices
kal yan@br ainlea gue.com

Copyright, Brain League IP Services,

Non-commercial use is permitted
 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

• What I claim is a ceiling fan comprising

of a base, which is 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?
• What I claim is a ceiling fan comprising
of a base, which is connected to a solid
rod, which in turn is connected to a
rotor with three wings.

• The product is a fan with a light

attached to it. The fan has a flat solid
plate to which a hollow rod is attached.
The rotor of the fan has four wings.
 Doctrine of
Equivalence

• Equivalents of a claim
– Function
– Way
– Result
• Prosecution History
Estoppel
Indirect Infringement

• Contributory Infringement
• Inducement to infringe
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
 NTP v. RIM

• Black Berry Technology

• RIM held liable for
infringement
• Damages – 612 million
dollars
 Example
• Claim:

• A phone comprising

• a housing in an interior wall,

• a push-button dialing pad mounted within a front wall of the
housing,
• a telephone handset means being a handle comprising a
earpiece at one end and a mouthpiece at an opposite end
and
• a handset cord electrically connected between the push-
button dialing pad and the telephone handset.
 Example
• Product:

• A telephone used as a pay phone, which is

incorporated in a casing. The casing has a
dial pad for enabling dialing. A person may
use the phone through a head set having ear
phones and a microphone. The headset being
wirelessly connected to the telephone in the
casing.
 Defenses

• Patent Invalid
– Subject Matter
– Utility
– Novelty
– Non-obviousness
– Specification
 Defenses

• Government Use
– By or For
• Research Exemptions
– Experiment
– FDA Approval
• Parallel Imports
 Equitable Defenses

• Patent Misuse
• Inequitable Conduct
• Laches
 Example
• Vini gets a patent on a drug for AIDS and a
method for making the kit in USA, India
and Bangladesh. Dizer comes up with an
alternative cost-effective, process for
making the drug and acquires a patent on
the same in USA, India and Bangladesh.
Dizer manufactures and sells the drug in
India and Bangladesh.

• Is Dizer liable for patent infringement?

 Example
• Anil files for a patent over a twin
spark plug used on motor cycles before
the Indian patent office. In the
application, Anil forgets to disclose his
foreign application in USA and the
name of his co-inventor, Raju. Zenta
makes bikes having the spark plug.
Anil sues Zenta for patent
infringement.

• Is Zenta liable?
 Example
• The defence department
manufactures night vision devices
for use by the army without
permission of the patent holder. The
patent holder sues the defence for
patent infringement.

• Is the defence department liable?

 Example
• X, a professor at IISc, uses a
patented robot in the laboratory for
understanding its functioning under
controlled conditions. X develops an
improved robot based on his
findings and files for a patent. The
patent holder sues X.

• Is X liable?
 Example

• X purchases patented pens from

an authorized dealer in USA and
imports such pens to India.

• Would X’s sale of pens in India

amount to patent infringement?
 Example
• Mr. Guav Kumar holds a patent
over a cell phone in USA and
India. Guav authorizes Sprint in
USA to sell his patented cell
phone. Rollonce purchases the
cell phones from Sprint and sells
them in India.

• Is Rollonce liable?
Kalyan C. Kankanala
Chief Knowledge Officer
Brain League IP Services
Email: kalyan@brainleague.com
Ph: 91-80-41489502/4
Url: www.brainleague.com
Blog: www.indianipinfo.blogspot.com