Patent Litigation (Compatibility Mode)

Workshop on IPR: Patents
& Trademarks
Christ College, Rajkot
January 21, 2018

Pranit K. Nanavati
Partner, Nanavati Associates
Reliefs in Suit for Infringement
S. 108
• Injunction (subject to such terms, if any, as the
Court thinks fit)
• At the option of the Plaintiff, either damages or
account of profits
• Seizure, forfeiture, or destruction of infringing
goods and materials/implements predominantly
for creating infringing goods without any
compensation
2
Pranit K. Nanavati +91-9879106229 pranit@nanavatiassociates.com
Innocent Infringement
S. 111
• No damages or an account of profits
against the Defendant who proves that on
infringement date either he was not aware
of the Patent or had no reasonable
grounds for believing that the Patent
existed on such date.
3
Innocent Infringement (Cont’d)
• Unless the Patent number accompanies

the word “Patent” or “Patented” or other
words implying Patent, the Defendant may
plead innocent infringement and avoid
having to pay damages or account of
profits.
4
Infringement not defined
• The Patents Act, 1970 does not define what

constitutes Infringement of a Patent.
• Infringement will have to be understood from the
rights granted under S. 48 which are subject to
other provisions and the conditions under S. 47.
5
Patent Rights
S. 48
• Subject to other provisions and S. 47 conditions
– Excludes others from making, using, selling, importing
the Patented Product
– Excludes others from using the Patented Process to
sell or import products obtained directly by the
Process
6
Patents granted with Conditions
S. 47
• Patented invention may be used by or on behalf
of Government
• Any person may use Patented inventions for
experiment or research or to instruct pupils
• Government may import a Patented medicine for
use in Government hospital or dispensary or
medical institution
7
Certain Acts Not Infringing
S. 49
• Use for actual need on board of a foreign vessel
or aircraft temporarily or accidentally in India or
in the construction or working of such vessel or
aircraft or accessories thereof
8
Certain Acts Not Infringing (Cont’d)
S. 107A
• Making, constructing, using, selling, or importing
for development and submission of information
required by law in force in India or elsewhere
• Importing Patented products form a person who
can legally produce, sell, or distribute
9
Suit for Infringement
S. 104
• District Court
• If counter-claim for revocation filed by
defendant, suit from District Court shall be
transferred to High Court
10
Burden of Proof
S. 104A
• For a process Patent for obtaining a
product, Defendant to prove that the
process used for obtaining identical
product is different from the patented
process, if
– the patented process is for obtaining a new
product, or
11
Burden of Proof (Cont’d)
– the patentee, despite reasonable efforts is
unable to determine the actual process used
by the Defendant and proves that the
Defendant is making a product identical to the
product obtained by the patented process
• Court shall not require disclosure of any
manufacturing or commercial secrets, if it
would be unreasonable to do so
12
Defences in Infringement Suit
S. 107
• Every ground for revocation under S. 64 is
available as a ground for defence.
• Provisions under S. 47 available as
grounds for defence
13
Revocation
S. 64
• Lack of novelty
• Patentee was not entitled to apply
• Wrongfully obtained in contravention of
someone’s rights
• Subject of any claim not an invention
• Lack of inventive step
14
Revocation (Cont’d)
• Invention is not useful

• Insufficient disclosure
• Patent obtained by false suggestion or
representation
• Subject of any claim not Patentable
• Invention was secretly used in India before
filing
• Applicant failed to provide undertaking
about any foreign filing
15
Revocation (Cont’d)
• Secrecy directions contravened

• Leave to amend specification was obtained by
fraud
• Wrong source mentioned for biological material
• Anticipated due to oral or otherwise knowledge
of local or indigenous community anywhere
16
R.C.A. Photophone v. Gaumont British
Picture Corp. [1936] 53 RPC 167
• The claim must be construed as a

document without having in mind the
alleged infringement.
• Court must first ascertain essential
integers of the claim and then consider the
infringing article.
• To constitute infringement, the article must
take each and every one of the essential
integers of the claim.
17
R.C.A. Photophone v. Gaumont British
Picture Corp. (Cont’d)
• Omission of non-essential integers or

replacement thereof by equivalents
will not help avoid infringement.
18
Rodi and Weinberger v Henry Showell
[1969] RPC 367 (HL)
• Unnecessary limitation in claims of

essential features may allow a copier
escape infringement by using an
equivalent under a pretext that not
every essential integer of the claim
has been taken.
19
Bristol-Myers Co. (Johnson’s)
Application [1975] RPC 127
• The law of patents is about stopping
people from using things.
• Irrespective of how a patented product is
produced, the Patent is infringed when the
product is made or supplied commercially
even though the infringer may not know
that it is the patented product he is making
or supplying.
20
Smith Kline v. D.D.S.A.
Pharmaceuticals [1978] FSR 109
• Plaintiff need not show commercial loss
• Importing the patented drug and exporting
after tableting held as infringement
21
Farbwerke Hoechst v. Unichem
Lab. [1969] RPC 55
• For a process patent for a new substance,
any substance of the same chemical
composition/constitution will, in the
absence of evidence to the contrary, be
deemed to have been produced by the
patented process.
• Burden of proving the process used by the
Defendant is on him, since that would be a
fact specially within his knowledge. 22
Raj Prakash v. Mangat Ram
Choudhary AIR 1978 Del 1
• Court to construe only claims
• Description may be referred to only in
case of ambiguity or difficulty construing
the claims in question.
• Whether the method of defendant is
covered by the claim is relevant, even if
the claim is wide enough to cover all
methods for achieving the particular result.
23
Raj Prakash v. Mangat Ram
Choudhary (Cont’d)
• Claim need not be simplified to make it
easy for infringers to evade it.
• Patent should enable the court to
formulate questions of fact to be
answered.
• Complete Specification must describe “an
embodiment” claimed in claims.
• Description must be sufficient, fair, and not
unnecessarily difficult to follow. 24
Saccharin Corporation v. Dawson
(1902) 19 RPC 169
• Plaintiff’s patents covered all known
methods of making pure saccharin.
• Defendant unable to prove that pure
saccharin was produced using an expired
Patent
• Injunction granted despite inability of the
Plaintiff to prove which of their patents was
infringed since one of the patents was held
to have been infringed 25
Proctor v. Bennis
(1887) 4 RPC 333
• Patentee not obligated to warn the
infringer
• Right of Patentee to sue for infringement
independent of Defendant’s knowledge of
infringement
26
Tweedale v. Ashworth
(1890) 7 RPC 426
• For deciding infringement, intention, or
absence of intention, is immaterial.
27
Declaration as to Non-Infringement
S. 105
• Any person may institute a Suit seeking declaration that
– the use by him of any process, or
– the making, use or sale of any article by him
would not constitute infringement of a Patent
• The Patentee or the exclusive licensee must have
refused or neglected to give the Plaintiff an
acknowledgement to the effect of the declaration claimed
• Validity of a Patent not to be questioned in such a Suit
28
Groundless Threats
S. 106
• Any person threatened of a Patent
infringement proceeding may file a Suit
seeking
– a declaration that the threat is unjustifiable
– an injunction against such threat
– such damages, if any, sustained thereby
29
Exclusive Licensee can sue
S. 109
• Exclusive licensee can institute a suit for
infringement committed after the date of
license
• Patentee becomes a Defendant in such a
suit, if not joined as a Plaintiff
30
Certificate of Validity
S. 113
• Validity of a claim contested in revocation
proceedings before IPAB or High Court
may be certified by IPAB or High Court.
• After obtaining a favourable final order or
judgment in a subsequent suit, relying on
the certified validity of a claim, the
Patentee shall be entitled to full costs,
charges, and expenses in such a suit.
31
Scientific Advisors
S. 115
• Scientific Advisors may be appointed by a
Court in an infringement suit or any other
proceeding to assist the Court or to inquire
and report upon any such question of fact
or of opinion (not interpretation of law) as
the Court may formulate.
32
Strategies to Combat Infringement
• Sue first the smallest of the infringers, if there

are multiple infringers
• If successful, despite the doubt about validity of
the Patent, an early success may encourage
subsequently sued parties to settle
• Explore the possibility of granting licenses
33
Injunction
• Granted where validity was established and
infringement prima facie established
– K. Ramu v. Adyar Ananda Bhavan and Muthulakshmi
Bhavan reported as 2007 (34) PTC 689 (Mad)
– Telemacanique & Controls Intl. Ltd. v. Schneider
Electric Industries SA reported as 94 (2001) DLT 856
• Declined when validity was challenged
– Bilcare v. The Supreme Industries reported as 2007
(34) PTC 444
– Standipack Pvt. Ltd. & Anr. v. M/s Oswal Trading Co.
Ltd. reported as MANU/DE/0471/1999
– Ram Narain Kher v. Ambassador Industries New
Delhi & Anr reported as MANU/DE/0034/1976 34
Injunction (Cont’d)
• Following Smith v. Grigg reported as 1924 (1)
KB 655, Indian Courts earlier declined to grant
interim injunction despite weak ground of
alleged invalidity
• After American Cyanamid Co. v. Ethican Ltd.
reported as [1975] 1 All ER 504, Courts started
granting injunctions holding that a prima facie
case will be established where there is a “triable
issue.”
35
Injunction (Cont’d)
• The Supreme Court of India in Gujarat Bottle
Mfg. Co. Ltd. v. Coca Cola Co. reported as AIR
1995 SC 2372 diluted the rule of “triable issue”
in favour of the requirement to establish prima
facie case.
• Ex-parte injunctions are almost never issued
due to the complexity of the issues involved.
• S. 13(4) can come in the way of grant of a
temporary injunction.
36
TSM Test
• TSM: Teaching-Suggestion-Motivation
• US Federal Circuit and other Courts used
it for ascertaining the mode of combination
of prior art for determining non-
obviousness.
• If the prior art teaches, suggests, or
motivates a person with ordinary skill in
the art to combine the prior art in a
particular manner to make the invention,
then the invention would be obvious, else
it would be non-obvious. 37
KSR Intern. Co. v. Teleflex Inc.
• US Supreme Court invalidated TSM test

• Rigid application of TSM test found
erroneous
• Obviousness analysis cannot be confined
by a formalistic conception of the words
teaching, suggestion, and motivation, or
by overemphasis on the importance of
published articles and the explicit content
of issued Patents
38
KSR Intern. Co. v. Teleflex Inc.
(Cont’d)
• Non-obviousness has to be determined by
a person of ordinary skill in the art, who is
considered to have the ability to fit the
teachings of multiple Patents in different
fields or addressing various problems
together like pieces of a puzzle.
39
Bishwanath Prasad Radhey Shyam
v. H.M. Industries [1979]2SCR757
• Patented invention must have novelty and
utility
• Essentially for a validity of a Patent, it
must be the inventor’s own discovery as
opposed to mere verification of what was
already known before the date of the
Patent
• Presumption in favour of the validity of the
Patent cannot be accepted
40
Boots Pure Drug Co. v. May and
Baker Ltd. 1948 (52) CWN 253
• To get an interim injunction, prima facie
validity of the Patent should be shown and
prima facie infringement must be proved
apart from favourable balance of
convenience
• A rule of practice is that if a Patent is new
one, a mere challenge at the Bar would be
sufficient for refusing interim injunction
• If a Patent is fairly old and has been up
into use, validity may be presumed
41
Franz Xaver Humer v. New Yash
Engineers AIR 1997 Delhi 79
• The Plaintiff has to prove prima facie case,
balance of convenience and irreparable
injury
• Registration of Patent alone would not be
sufficient
• The Court must look at the whole case i.e.
the strength of the case of both the
litigants
42
Hubbard v. Vosper
(1972) 1 All ER 1023
• While considering the grant of an
interlocutory injunction, the Judge should
look at the whole case
• The Judge must have regard not only to
the strength of the claimant, but also to the
strength of the defendant.
43
Standipack Pvt Ltd v. Oswal
Trading Co Ltd AIR 2000 Delhi 23
• No presumption of validity is attached to a
patent granted by the Controller under the
Act notwithstanding examination and
investigation made under Sections 12 and
13 of the Act.
• When revocation is sought and validity is
questioned, the Court should not grant an
injunction more so when serious
controversy exists as to whether or not the
invention involves any new inventive skill
having regard to what was known or used
prior to the date of the patent. 44
Novartis AG v. Mehar Pharma
2005(3)BomCR191
• When the Patent is of a recent date, no
interim injunction should be granted
especially when there is serious question
as to the validity of the patent was raised
by the defendant to be tried in the suit.
45
Dhanpat Seth v. Nil Kamal Plastic
2006 (33) PTC 339
• By virtue of Section 107(1) of the Patents
Act, in any suit for infringement of patent,
every ground, on which it may be revoked
under Section 64, is available as a ground
for defence.
46
F. Hoffmann-La Roche v. Cipla
I.A. 642/2008 in CS(OS)89/2008
• Where the patent is of recent origin and its
validity has not been tested, the Court
should not grant injunction based on the
alleged infringement.
• Mere grant of patent does not guarantee
its validity.
47
Lallubhai Chakubhai v. Chimanlal
AIR 1936 Bom 99
• A patentable combination is one in which
the component elements are so combined
as to produce a new result or to arrive at
an old result in a better or more
expeditious or more economical manner.
• If the result produced by the combination
is either a new article or a better or a
cheaper article than before the
combination may afford subject for a
patent.
48
AIR 1936 Bom 99 (Cont’d)
• A specification must be construed
impartially, and the Court is generally slow
to construe it against the patentee. But the
construction must not only be a
'benevolent', but a reasonable one.
• A patent may sometimes be infringed by
taking a part only of the invention, but that
depends upon the part for which protection
is asked is a new and material part,
especially in the case of a combination.
49
AIR 1936 Bom 99 (Cont’d)
• If it is not new and material, the Court
must consider what is the substance of the
invention, and to do so it has to consider
the relative importance of all the parts of
the invention.
• The essential part or the substance of the
plaintiff's invention is, in his own words,
the use of pressure, and therefore there
could be no infringement unless the use of
pressure by the defendants in their
process was proved.
50
William Needham & James Kite v.
Johnson & Co. 1884 (6) RPC 49
• There is not an infringement if you have
produced the same results by a different
combination of different elements. That is
another and a different combination, and is
not either an improvement or anything else
of the other.
• It is absolutely and wholly different, if there
is a different combination of different
elements.
51
Lubrizol Corp. and Anr. v. Esso
Petroleum 1998 RPC 727
• Patent specifications are intended to be
read by persons skilled in the relevant art,
but their construction is for the Court. Thus
the Court must adopt the mantle of the
notional skilled addressee and determine,
from the language used, what the notional
skilled addressee would understand to be
the ambit of the claim.
52
Lubrizol Corp. and Anr. v. Esso
Petroleum (Cont’d)
• To do that it is often necessary for the
Court to be informed as to the meaning of
technical words and phrases and what
was, at the relevant time, the common
general knowledge; the knowledge that
the notional skilled man would have.
53
General Tire & Rubber v.
Firestone Tyre 1972 RPC 457
• For construing the patent in suit and again
for reaching a conclusion, if there was no
anticipation, on the issue of obviousness,
it is necessary for us to put ourselves into
the position of a skilled addressee at the
time the specification was published on
20th November, 1950.
54
General Tire & Rubber v.
Firestone Tyre (Cont’d)
• For it is to a skilled addressee-a skilled
man reasonably well versed in the art #
that the specification is deemed to be
addressed, and it is by the standards of
the common general knowledge of such a
man that one tests whether the invention
was obvious or not.
55
Catnic Components v. Hill and
Smith Limited 1982 RPC 183
• A patent specification is a unilateral
statement by the patentee, in words of his
own choosing, addressed to those likely to
have a practical interest in the subject
matter of his invention (i.e. "skilled in the
art"), by which he informs them what he
claims to be the essential features of the
new product or process for which the
letters patent grant him a monopoly.
56
Smith Limited (Cont’d)
• It is those novel features only that he
claims to be essential that constitute the
so-called "pith and marrow" of the claim. A
patent specification should be given a
purposive construction rather than a purely
literal one derived from applying to it the
kind of meticulous verbal analysis in which
lawyers are too often tempted by their
training to indulge.
57
Smith Limited (Cont’d)
• The question in each case is: whether
persons with practical knowledge and
experience of the kind of work in which the
invention was intended to be used, would
understand that strict compliance with a
particular descriptive word or phrase
appearing in a claim was intended by the
patentee to be an essential requirement of
the invention so that any variant would fall
outside the monopoly claimed, even
though it could have no material effect
upon the way the invention worked. 58
Proctor v. Bennis
L.R. 36 Ch.D. 740
• In my opinion omissions and additions
may be very material in considering
whether, in fact, the machine of the
Defendant is an infringement of the
combination which the Plaintiff claims; but
if the Defendant really has taken the
substance and essence of the Plaintiff's
combination, the mere fact that certain
parts are omitted or certain parts added
cannot prevent his machine from being an
infringement of the Plaintiff's Patent.
59
Consolidated Car Heating v. Came
Privy Council decision Vol. XX 32 RPD 745
• If the merit consists in the idea or principle
which is embodied in it, and not merely in
the means by which that idea or principle
is carried into effect, a machine which is
based on the same idea or principle may
still be an infringement, although the
detailed means for carrying it into effect
may be somewhat different.
60
Canadian General Electric v. Fada
Radio AIR 1930 PC 1
• There must be a substantial exercise of
the inventive power or inventive genius,
though it may in cases be very slight.
Slight alterations or improvements may
produce important results and may
disclose great ingenuity.
61
Radio (Cont’d)
• Sometimes it is a combination that is the
invention; if the invention requires
independent thought, ingenuity and skill,
producing in a distinctive form a more
efficient result, converting a comparatively
defective apparatus into a useful and
efficient one, rejecting what is bad and
useless in former attempts and retaining
what is useful, and uniting them all into an
apparatus which, taken as a whole, is
novel, there is subject matter.
62
Radio (Cont’d)
• A new combination of well known devices,
and the application thereof to a new and
useful purpose, may require invention to
produce it and may be good subject matter
for a patent.
63
F.H. & B. Corpn. v. Unichem
Laboratories AIR1969Bom255
• An invention consisting of the production
of new substance from known materials by
known methods cannot be held to possess
subject matter merely on the ground that
the substances produced are new.
64
F.H. & B. Corpn. v. Unlchem
Laboratories (Cont’d)
• If the substances produced may serve no
useful purpose, then the inventor will have
contributed nothing to the common stock
of useful knowledge (the methods and
materials employed being already known)
or of useful materials (the substances
produced being ex hypothesis, useless).
65
Gandhimathi Appliances Limited v.
L.G.Varadaraju (2000) 3 MLJ 85
• Though the grant of a patent by itself does
not guarantee it's validity, the fact that a
patent has been granted must be given
some weight and significance while
considering the question of prima facie
case. The plaintiffs are entitled to place
reliance on the fact that they have already
secured patent. The grant of the patent
does not on the basis of such grant, make
the patent impregnable.
66
L.G.Varadaraju (Cont’d)
• The burden is always on a plaintiff to
establish its case prima facie before it can
claim any interlocutory relief. It is always
open to the defendant to question the
validity of patent.
67
• When the defendant is able to point out
some grounds for regarding the patent
already granted, as being prima facie
invalid then at the interlocutory stage, this
factor of patent having been granted to the
plaintiff would cease to be of significance
while considering the question of prima
facie case. The burden of proof on the
plaintiffs at the interlocutory stage,
therefore is not so rigourous, as it would
otherwise be, if no patent had been
granted in the first place. 68
• The inevitable conclusion that we reach is
that the product patented by the plaintiff,
though when dissected and as part taken
separately may now show inventiveness.
• The fact is that a new use has been
discovered for a combination of known
integers.
69
• The fact that inventive steps by way of
ingenuity and skill have been displayed in
bringing about such a combination and
discovering the mode of application of
known integers for a product, whose
usefulness has been amply demonstrated
by the large number of units sold,
establish that the patent cannot be
regarded prima facie as invalid. The
plaintiffs must be held to have made out a
prima facie case for grant of an
injunction.... 70
TVS Motor Co Ltd v. Bajaj Auto Ltd
MANU/TN/0976/2009
• The validity of a patent can be challenged
in a suit on various grounds of revocation
as set out under Sections 64 and 107 of
the Patents Act.
• For the grant of interim injunction in a
patent matter, the prima facie validity of
the patent should be shown and also the
prima facie infringement should be proved
apart from the availability of balance of
convenience and irreparable loss.
71
(Cont’d)
• If the patent is a new one, mere challenge
at the Bar would be quite sufficient for the
refusal of an interim injunction as
compared to a fairly old patent.
• Even in IPR cases, apart from prima facie
case, balance of convenience and
irreparable injury, the mere registration of
the patent alone would not be sufficient
and the Court must look at the whole case
i.e. the strength of the case of the plaintiff
and the strength of the defendant.
72
(Cont’d)
• Irrespective of the examination and
investigation made under Sections 12 and
13 of the Patents Act, no presumption can
be drawn as to the validity of the patent
and whether the application for revocation
of patent is pending and when serious
controversy exist as regards the existence
of an invention based on prior art, the
Court should be slow in granting the
injunction.
73
(Cont’d)
• There can be no infringement if the
opponent has proved the same result by a
different combination of different elements.
• The general rule in regard to the
construction of the validity of a patent is,
that construction which makes it valid
should be preferred rather than the
construction which rendered it invalid.
74
(Cont’d)
• Patent specification should intend to be
read by a person skilled in the relevant art
but their construction is for the Court and
to do so it is necessary for the Court to be
informed as to the meaning of the
technical words and phrases and what
was the common general knowledge i.e.,
the knowledge that the notional skilled
man would have.
75
(Cont’d)
• In construing an allegation of infringement,
what is to be seen is whether the alleged
infringement has taken the substance of
the invention ignoring the fact as to
omission of certain parts or addition of
certain parts.
76
(Cont’d)
• While analyzing a claimed invention, it is
relevant to examine as to whether the
invention requires independent thought,
ingenuity and skill, producing in a
distinctive form a more efficient result and
there by converting a comparatively
defective apparatus into a efficient and
useful one which, taken as a whole, is
novel.
77
(Cont’d)
• Though the grant of patent by itself does
not guarantee its validity, it should be
given some weight and significance while
considering the question of prima facie
case and it is always open to the
defendant to question the validity of the
patent.
78
(Cont’d)
• Though the claimed invention may consist
of known factors, known integers i.e. if by
combination of such known integers if a
new use has been discovered that should
be construed to have displayed inventive
steps by way of ingenuity and skill.
79
(Cont’d)
• The Respondent's patent having been
granted is to be accepted prima facie as a
valid one, in the same breath, it will have
to be held that merely because such a
valid patent is existing in favour of the
Respondent, that by itself, it cannot be
held that the Respondent has made out a
strong prima facie case of infringement as
against the Appellant.
80
(Cont’d)
• A distinction as between the patented
claim and the infringed product is well
protected under the provisions of the
Patents Act.
• Even while holding that the claim of valid
patent at the instance of the Respondent
can be prima facie accepted, the alleged
infringement as against the Appellant
cannot be held to have been made out at
the instance of the Respondent.
81

Patent Litigation (Compatibility Mode)

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Workshop on IPR: Patents

January 21, 2018

• Unless the Patent number accompanies

• The Patents Act, 1970 does not define what

• Invention is not useful

• Secrecy directions contravened

• The claim must be construed as a

• Omission of non-essential integers or

• Unnecessary limitation in claims of

• Sue first the smallest of the infringers, if there

• US Supreme Court invalidated TSM test

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