Infringement- Doctrines on Infringement

Project on - Patent Infringement- Doctrines on Infringement

Project submitted to

Mrs. Debmita Mondal

Faculty: IPR(PATENTS)

Project submitted by

Prashant Kerketta

Semester VIII

Roll no. 119

HIDAYATULLAH NATIONAL LAW UNIVERSITY

RAIPUR, C.G.

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 Infringement- Doctrines on Infringement

ACKNOWLEDGEMENT

I am highly elated to carry out my research on the topic, ‘Patent Infringement- Doctrines

on Infringement ’. I would like to give my deepest regard to my course teacher Mrs.

Ddebmita Mondal , who held me with her immense advice, direction and valuable assistance,
which enabled me to march ahead with this topic. I would like to thank my friends, who gave me
their precious time for guidance and helped me a lot in completing my project by giving their
helpful suggestion and assistance. I would like to thank my seniors for their valuable support. I
would also like to thank the library staff and computer lab staff of my university for their
valuable support and kind cooperation.

Prashant Kerketta

Semester VIII

BATCH- 13

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TABLE OF CONTENTS

Introduction…………………………………………………………………………….………4

Research Objectives……………………………………...…………………………….………5

Scope of study……………………………………………………………………….…………5

Research Methodology……………………………………………………………….………..5

Patent Infringement…………………………………………………………….….…………..6

Literal Infringement……………………………………………………………………………9

Non-Literal Infringement………………………………………………………………..…….11

All Elements Rule………………………………………………………………………..……13

Pith and Marrow Doctrine…………………………………………………………….………14

Equivalent Doctrine……………………………………………………………………….…..15

Conclusion………………………………………………………………………………….….17

Bibliograpgy/Webliography…………………………………………………………….……..18

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Introduction

Patents are rights created by statute. Intellectual Property Rights (IPRs) have long played
important roles in the innovation systems of most advanced economies. India, These are negative
rights and stop everyone except the inventor to get the benefits of the invention. This paper
explains about the effects of the legislative provisions concerning enforcement and litigation
under Indian Patents Act and its compliance of TRIPS agreement. This paper attempts to point
out several changes that should be brought about in the system or steps to be taken to provide
better Patent protection to the inventors.

In India, the law governing patents is the Patents Act, 1970 (Patents Act). In India’s continued
efforts to comply with its commitment under TRIPS the Patents Act has been amended thrice
since 1995, by the Patents (Amendment) Act, 1999 (First Amendment), the Patents
(Amendment) Act, 2002 (Second Amendment) and Patents (Amendment) Act, 2005 (Third
Amendment), Prior to the Third Amendment, the President of India had promulgated Patents
(Amendment) Ordinance, 2004 (Ordinance), which was later replaced by the Third
Amendment.The legislation is supported by the Patents Rule, 2003 (Rules).

Not all innovations are inventions within the definition of the Patents Act.The term “invention”
is defined under Section 2(1) (j) of the Patents Act as ‘a new product or process involving an
inventive step and capable of industrial application.’. Thus, the traditional aspects of novelty,
non-obviousness, and utility have been specifically included in the definition of the term
“invention”.

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Objectives

• To have a Brief study of Infringement literally and Non literally.

• To Study about the Doctrines of Infringement.

Scope of Study

The scope of this project is limited.

Research Methodology

The method of research adopted for the project is the analytical and descriptive method.

The texts that were used for the project include articles, research papers and news given in
various websites as well as online journals.

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Patent Infringement

The Indian Patents Act 1970 does not specifically define activities that constitute infringement of
patents. Section 48 of the Indian Patents Act 1970, however, confers exclusive rights upon the
patentee to exclude third parties from making, importing, using, offering for sale or selling the
patented invention, patented product or patented process. It can therefore be concluded that
violation of aforementioned monopoly rights would constitute infringement of a patent. Where
the infringer has taken all the essential features claimed in the patent , while manufacturing an
article, it will be a direct infringement. Where the infringer uses all features claimed in the patent
but alters one or more unessential features then also it will be an infringement but since it is
indirect it is called colourableimitation.Copying the essential features of the invention is
sometimes referred to as taking the pith and marrow of the invention.

.In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries1, the Supreme Court of
India has laid down the following guidelines to determine infringement of a patent,

(1) Read the description and then the claims.

(2) Find out what is the prior art.

(3) What is the improvement over the prior art.

(4) List the broad features of the improvement.

(5) Compare the said broad features with the defendant’s process or apparatus.

(6) If the defendant’s process or apparatus is either identical or comes within the scope of the
plaintiff’s process or apparatus, there is an infringement.

Section 48 of the Act grants the following rights to the patentee. In the case of a product patent,
the following actions would amount to infringement:

1
(1978)2 SC 553

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 Making,
 Using,
 Offering for sale,
 Selling, or
 Importing for these purposes, the product in India without the permission of the patentee.

In the case of a process patent, the following would amount to infringement:

 Using,
 Offering for sale,
 Selling, or
 Importing for these purposes the product obtained directly by that process in India without
the permission of the patentee. Any person without the consent of of the patentee performs
the above activities of the infringes the patent.

In patent infringement suits, the damages are not granted for the use of the patented invention
during the period prior to the date of acceptance of the patent application. In a patent
infringement action, the defendant can file a counterclaim for a revocation of the patent.
Consequently, the main suit and the counterclaim are heard together.

What acts do not Constitute Infringement?

Section 107A in the Act, incorporates Bolar provision and provision for parallel imports. Section
107A states that the following acts do not constitute infringement.

 Any act of making, constructing, using, selling or importing a patented invention solely for
uses reasonably related to the development and submission of information required under
any Indian law, or law of a country other than India, that regulates the manufacture,
construction, use, sale or import of any product.
 The importation of patented products by any person from a person who is duly authorized
by the patentee under the law to produce and sell or distribute the products.

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Patent infringement generally falls into two categories: literal infringement and infringement
under the doctrine of equivalents. The term "literal infringement" means that each and every
element recited in a claim has identical correspondence in the allegedly infringing device or
process. However, even if there is no literal infringement, a claim may be infringed under the
doctrine of equivalents if some other element of the accused device or process performs
substantially the same function, in substantially the same way, to achieve substantially the same
result. This "expansion" of claim coverage permitted by the doctrine of equivalents, however, is
not unbounded. Instead, the scope of coverage which is afforded the patent owner is limited by
(i) the doctrine of "prosecution history estoppel" and

(ii) the prior art.

An infringement analysis determines whether a claim in a patent literally "reads on" an accused
infringer's device or process, or covers the allegedly infringing device under the doctrine of
equivalents. The steps in the analysis are:

1. Construe the scope of the "literal" language of the claims.

2. Compare the claims, as properly construed, with the accused device or process, to determine
whether there is literal infringement.

3. If there is no literal infringement, construe the scope of the claims under the doctrine of
equivalents.

The doctrine of equivalents is an equitable doctrine which effectively expands the scope of the
claims beyond their literal language to the true scope of the inventor's contribution to the art.
However, there are limits on the scope of equivalents to which the patent owner is entitled.

Also, the scope of equivalents to which the patent owner is entitled is bounded by the prior art.
The patent owner cannot expand the claims for purposes of finding infringement if the scope of
equivalency sought would ensnare the prior art. Therefore, if infringement under the doctrine of
equivalents is found, a prior art search should be performed to determine if the scope of
equivalency ensnares the prior art.

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Literal Infringement

As indicated above, infringement of a claim requires that the accused device meet every
limitation of the claim, either literally or under the doctrine of equivalents. In the case of literal
infringement, if a claimed element is missing, then literal infringement is avoided. In other
words, a "literal" construction of such a limitation may encompass only the disclosed structure
and its equivalents.2

In the case of a claim with a "means plus function" element, the element is met literally when

(i) an accused device performs the same function recited in the element, and

(ii) the accused device embodies the corresponding structure, material, or acts described
by the specification or an equivalent thereof. provides that claim limitations
"expressed as means ... for performing a specified function without the recital of
structure ... in support thereof, ... shall be construed to cover corresponding structure
... described in the specification and equivalents thereof."

Patent Claims

The invention is literally defined by the exact wording of the patent claims. Roughly speaking,
each and every claim in a patent is essentially a check list of the features which the offending
product has to include in order to "pass" the test of infringement. Think of a claim as a numbered
list of features, and if the offending product has all of the features listed in the claim, then the
offending product "infringes" that claim in the patent. This is what is generally referred to in
patent circles as "literal infringement". If there is more than one claim (and there usually is), then
the total number of claims infringed does not matter. Infringing one claim or infringing all of
them makes no difference from a legal point of view.

2
http://lawmanblog.blogspot.in

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There are two ways in which a patent claim may be directly infringed. First, a claim may be
literally infringed. Second, a claim may be infringed under what is called the doctrine of
equivalents’ Envirotech Corp. v. Al George, Inc.3

For defendant’s product to literally infringe any one of plaintiff’s patent claims, the subject
matter of the patent claim must be found in defendant’s product, apparatus or method. In other
words, plaintiff’s patent claim(s) is literally infringed if defendant’s product apparatus or method
includes each and every component [part or method step] in plaintiff’s patent claim. If
defendant’s product omits any single component (part or method step]) recited in plaintiff’s
patent claim, defendant does not literally infringe that claim.4

Let's consider this principle of literal patent infringement with a hypothetical example. Let's
assume the patent owner has a patent for a desk lamp having seven specific features, namely:

1. a magnetic base;
2. a flexible goose neck mounted to the base;
3. a reflector mounted on the end of the goose neck;
4. an LED bulb mounted to the reflector;
5. a manual on and off turn switch for turning the LED bulb on or off;
6. a control circuit that turns on the LED bulb whenever any portion of the lamp is touched,
and
7. the control circuit keeping the LED bulb lit for 30 minutes before automatically turning it
off.

A first offending product up for consideration is a lamp and has all of the features (1) through (6)
but it does not have feature (7), the control circuit for automatically turning the lamp off after 30
minutes. In this example the first offending product does not literally infringe the claim because
it is missing a listed feature. However, a second offending product which does have all the

3
730 F.2d 753, 759, 221 U.S.P.Q. 473 (Fed. Cir. 1984).

4
http://www.gian.org

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features listed would be considered infringing. If the offending product has other features in
addition to features (1) through (7), such a dimmer switch, then it is still considered to infringe
the claim. Generally, claims are written with inclusive language so that patent infringement is not
avoided by the addition of non-listed features.

Non-Literal Infringement

Now, let's consider a third offending product - one which has all of the listed features except for
the LED bulb. Instead of an LED bulb, the third offending product has an incandescent bulb. Do
From a literal infringement point of view, no it does not since the claim specifies an LED bulb.
However, many jurisdictions, including the United States and Canada, have additional legal
doctrines which, when applied, would render this third offending product as also infringing. In
the United States it is quite likely that the third offending device would be considered to infringe
the patent because while the offending device does not have an LED bulb, it does have
something which works in substantially the same way to give substantially the same result. Both
LED bulbs and incandescent bulbs are "functional equivalents" because they both work in
substantially the same way to give substantially the same results. They both turn electricity into
light. Therefore, it is quite likely that a court in the United States would view the third offending
product as infringing. The law in Canada, while not exactly the same, is similar and would likely
yield a similar result.5

Now let's stretch this reasoning a little further and consider the case of a fourth offending
product, a lamp with all of the claimed features except for the auto shut off feature. In place of
the auto shut off circuit, this fourth lamp has a circuit which is designed to shut the lamp on or
off simply by touching. If the lamp is off, touching it will turn it on; however, if the lamp is
already on, touching it will shut it off. This "improved" lamp does away with the auto shut off
feature by providing an extended touch feature.

5
www.worldwidejournals.com

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Applying the analysis of "functional equivalents" we can agree that the "extended touch feature"
is not a functional equivalent to the auto shut off timer. The fourth offending lamp would remain
on all night long provided it was not touched again. Therefore we can say with some confidence
that the fourth offending product does not infringe the claim under the US doctrine of
equivalents.

The above example illustrates the possible difficulty if applying the United States principle of
"functional equivalence"(and the Canadian tests of "substantive infringement" and "purposive
construction). Whether or not two features are considered "functional equivalents" largely
depends on the relative importance of the missing feature. In the above examples, the LED bulb,
while important to the lamp over all, is essentially the same thing as an incandescent bulb.
Essentially, these legal doctrines boil down to extending patent protection to situations where a
relatively minor and unimportant feature of a claim is missing in the offending product being
considered.

Of course, determining whether or not a specific feature is important or not is often no small
task. But that's a topic for another day.

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DOCTRINES OF INFRINGEMENT

All Elements Rule

The "All Elements Rule" - a very simple rule, which says that in order to infringe, a product
must contain every single element in at least one claim of the patent. ... A product may (and
usually does) have other elements, but it still infringes if it has every one from the claim.

A requirement that states that for a patent to be infringed, each and every limitation of at least
one of the patent's claims must be found in the accused device or process. If a single limitation of
that claim is missing from the accused structure, there is no infringement.

The patentee's demonstration that the accused device, as a whole, performs substantially the
same function, in substantially the same way, to achieve substantially the same result as the
claimed invention is only the beginning of the analysis.

When establishing literal infringement, a patentee must demonstrate that every element of the
disputed claim is found in the accused device.If only one claim element is missing from the
accused device, then the literal infringement charge fails.

As one court has phrased this "all elements rule," "'It is . . .well settled that each element of a
claim is material and essential, and that in order for a court to find infringement, the plaintiff
must show the presence of every element or its substantial equivalent in the accused device.

In any given infringement by equivalents case, probably some or most of the elements of the
disputed claim will be met literally. The remaining claim elements must be met equivalently.
Under this "element-by-element" analysis, each element of the asserted claim must be met either
literally or equivalently. t thus follows that addition of functions to an accused device will not
defeat the patentee's protection. An accused device that includes, either literally or equivalently,

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every element of the asserted claim cannot escape infringement because it performs functions in
addition to the claimed invention.6

Pith and marrow doctrine

The doctrine of 'pith and marrow' defined the scope of patent protection by the substance of the
invention. According to the doctrine, an infringement could be established if the defendant's
device or process included all the essential elements of the patent.

The "pith and marrow" doctrine plainly de-emphasized equivalence - an accused device that
contained all essential elements of a claim would infringe regardless of whether it omitted one or
more inessential elements entirely or contained equivalents for those inessential elements. The
distinction between inessential and essential elements was of primary importance, because it
determined whether the scope of patent protection would extend to equivalents. Thus, British law
controlled the scope of patent protection principally by limiting the elements that were entitled to
any range of equivalence.

But the general rule, particularly after the 1949 Patents Act, was that every element and
limitation contained in a patent claim was essential.Because patent protection did not extend to
equivalents of essential elements, infringement by equivalents remained a very limited exception
in the United Kingdom. As one leading authority phrased it, British law gave a "passing nod" in
the direction of equivalents.

6
http://www.bananaip.com

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The Doctrine of Equivalents

The doctrine of equivalents is an important doctrine in patent law. The equitable doctrine of
equivalents gives a patentee a second chance to protect a claimed invention when an accused
infringer's device does not literally infringe, but performs the same function in the same way to
achieve the same result. This Note addresses the concern of the United States Court of Appeals
for the Federal Circuit that the doctrine of equivalents may become the second prong of every
patent infringement charge and concludes that the doctrine of equivalents should indeed be the
second prong of every patent infringement charge.

An accused device infringes if it "performs substantially the same overall function or work, in
substantially the same way, to obtain substantially the same result as the claimed invention.."

In India, the doctrine of equivalents was discussed in Ravi Kamal Bali vs Kala Tech And Ors7,
Though the matter was regarding an interim application for request of submission of additional
documents by the defendant, yet in the order the Court observed that the counsel of the plaintiff
submitted that while considering the question of infringement of patents, the Court ought to
apply the doctrine of equivalence by which a device is set to infringe a claim if it "performs
substantially the same function in substantially the same way to obtain the same result". The test
is whether the Defendants product appears to have taken the essence or what is sometimes called
the pith and marrow of the invention. Counsel for the plaintiff further submitted that even under
the Indian Patent Act, 1970 while deciding the question of infringement of patents, the Court
ought to apply the doctrine of equivalence under which the Court must determine and distinguish
the essential and nonessential elements of the product. He submitted that it is not necessary that
the infringing goods must be identical in every respect to the patented goods and it is sufficient if
it is found that what has been taken is the essence of the invention.

This case is important as it discusses Doctrine of equivalents, an important legal principle under
the patent law regime covering indirect infringement. In addition to literal infringement which is
direct and unambiguous, an indirect infringement takes place when insubstantial or minor
7
2008(110)Bom LR 2167

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changes made to the patented product or process causes it to fall outside the declared scope of
the patent i.e. patent claims, but, which in practical terms, remains a duplicate of the patented
product/process.

There seems to be many approaches towards dealing with non – literal infringement across
different jurisdictions. Doctrine of equivalent and doctrine of Pith and Marrow are two such. In
India cases have been very few where Doctrine of equivalents have been discussed. The debate
between the doctrine of equivalents and promissory history estoppels will continue to come
before the courts. It is advisable that there should be a single approach to tackle non literal
infringement among all jurisdictions. But in recent years, distinguished academics have predicted
the so-called “demise” of the doctrine of equivalents.

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Conclusion
There seems to be many approaches towards dealing with non – literal infringement across
different jurisdictions. Doctrine of equivalent and doctrine of Pith and Marrow are two such. In
India cases have been very few where Doctrine of equivalents have been discussed.. It is
advisable that there should be a single approach to tackle non literal infringement among all
jurisdictions. But in recent years, distinguished academics have predicted the so-called passesd to
the doctrine of equivalents.

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Bibliography/Webliography

 www.academia.com

 http://www.bananaip.com

 www.lawyersclubindia.com

 http://www.ssrana.in

 www.legalindia.com

 www.legalfarm.com

 www.timeofindia.indiatimes.com

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