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Deed

EncroachmentPatent

Infringement

A patent granted to a person bestows exclusive right to the person to make,distribute, mortgage, or sell the invention in India. Patents are jurisdictionalrights, and are therefore restricted to a country that grants the patent.

Patents are analogous to Real-estate property. Both grant exclusive rights tothe owner. Violation of the exclusive rights of a Real-estate property bysomeone who unlawfully uses an area of the real-estate property is called"encroachment". Similarly, an encroachment upon the invention patented bythe owner is called "infringement".

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Patent infringement is the unauthorized making, using, offering for sale, selling any patented invention within India, or importing into India of any patented invention during the term of a patent.

In India, Section 104 to section 114 of the Indian Patents Act 1970 provides guidelines relating to patent infringement.

A Patent does not infringe another patent. Only a product or a process or anapparatus can infringe a patent, and to do so the product, process or apparatusneed only infringe a single claim of the patent no matter how many claims thepatent has.

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PATENT INFRINGEMENT

INDIRECT

INDUCING CONTRIBUTORY

DIRECT

-Making the invention- Using- Selling- Offering for sale- Importing

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A B

Holds a patent for a device Manufactures a device substantively similar to A’s device

C

Supplies material to facilitate B’s manufacturing

Inducing Contributory

If B is unaware of A’s product but C is aware

If B is aware and C participates knowing that A’s product is patented

Indirect Infringement

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Test of infringementDetermine the scope of the claim(s)

Compare the elements of the claim to the accused

product or process using the “all elements” rule:

every element required by the claim must be present in the accused product or process either literally or under Doctrine of Equivalents

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To determine literal infringement, you must compare the accused [[product][method]] with each claim that [the Plaintiff] asserts is infringed, using myinstructions as to the meaning of the patent claims.

A patent claim is literally infringed only if [the Defendant]’s [[product] [method]]includes each and every [[element] [method step]] in that patent claim. If [theDefendant]’s [[product] [method]] does not contain one or more [[elements][method steps]] recited in a claim, [the Defendant] does not literally infringe thatclaim.

You must determine literal infringement with respect to each patent claimindividually.

The accused [[product] [method]] should be compared to the invention describedin each patent claim it is alleged to infringe. The same [[element] [method step]]of the accused [product] [method] may satisfy more than one element of a claim.

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The

Claimed

Product/

Process

Element A Element B Element C Element D Literal

Infringement?

Accused #1

Accused #2

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The "Doctrine of Equivalents" is a judicially created, butsolely developed by courts) doctrine having a three part"function/way/result" substantial identity test (Tripleidentity or tripartite test) embodying the following steps:

■ Determine whether the accused device or process

1. performs substantially the same function as the claimedinvention.

2. operates in substantially the same way as the claimedinvention.

3. achieves substantially the same result as the claimedinvention.

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The

Claimed

Product/

Process

Element A Element B Element C Element D Infringement

under

Doctrine of

Equivalence?

Accused #2

Yes, if c is

technically

equivalent to

C

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• This is the figure of a spring loaded putter being accused of infringement.

• It includes an hourglass shaped steel spring as part of its shaft.

• Shaft includes a top gripping end and a bottom end.

• Putter also includes a putter head connected to bottom of the shaft.

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Kickback’ Putter v/s Accused Springback Putter

Note the diamond shaped titanium spring

Figure A

Hour-glass shaped steel spring

Figure B

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Diamond Shaped spring loaded “Kickback’ putter:

1. A golf club comprising:a) A generally longitudinal extending shaft

having a top end section serving as gripping handle for a user and bottom end;

b) A head connected with the bottom end of said shaft for engaging a golf ball (hopefully) when the shaft is moved in specific way; and

c) An arrangement which forms a section of said shaft and which is more flexible than the rest of the shaft.

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Spring loaded ‘Kickback’ putter (Cont.)

2. A golf club according to claim 1 wherein said arrangement is spring.

3. A golf club according to claim 2 wherein the said spring is diamond shaped as viewed in elevation.

4. A golf club according to claim 1 or 2 wherein said flexible arrangement is constructed of titanium metal.

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Hour Glass Shaped putter1. A golf club comprising:

a) A generally longitudinal extending shaft having a top end section serving as gripping handle for a user and bottom end;

b) A head connected with the bottom end of said shaft for engaging a golf ball (hopefully) when the shaft is moved in specific way; and

c) An arrangement which forms a section of said shaft and which is more flexible than the rest of the shaft.

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Accused putter (Cont.)

2. A golf according to claim 1 wherein said arrangement is spring.

3. A golf club according to claim 2 wherein the said spring is hour glass shaped as viewed in elevation.

4. A golf club according to claim 1 or 2 wherein said flexible arrangement is constructed of steel spring.

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• Claim 1: Shaft & Head recited in paragraph a & b are found in the accused putter.

• Description of flexible arrangement as given in 1.c is broad and does not mention any shape or type of arrangement.

• The hour-glass shape of the accused putter is flexible.

• All elements of Claim 1 are found in accused putter, it can be said that the hour-glass putter literally infringes the claim 1 kickback putter.

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• Claim 1 is literally infringed if the claim 1 exists or is valid if it does exist.

• However, if there exists a S-shaped rubber putter, the claim 1 would be so broad as not to be novel.

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Assuming claim 1 is invalid:• Claim 2 is derived from claim 1 and is more detailed

(narrower) as defines flexible arrangement to be spring.

• Assuming claim 2 is valid (survives novelty requirement and inventive step rejections).

• Then hour-glass spring is a spring and therefore accused putter literally infringes claim 2.

• If on the other hand, claim 2 does not survive novelty and inventive step rejections because of the s-shaped rubber putter, then claim 2 will be invalid.

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Assuming claim 2 is invalid:• Claim 3 depends on claim 2 and specifies

spring to be diamond shaped.

• The spring in accused putter is hour-glass shaped and hence it does not literally infringes claim 3.

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• Claim 4 is multi dependent claim.

• It derives from claim 1 & 2 and requires that flexible arrangement (in case of claim 1) and the spring itself (in case of claim 2) be made up of titanium metal.

• The spring in accused putter is made up of steel, and so it does not literally infringe claim 4.

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• Because of the lack of literal infringement of claims 3 & 4, the importance of claim 2 is apparent.

• In case claim 1 is invalid, claim 2 is the only claim that is literally infringed by accused putter.

• It is important to convince that claim 2 is novel and non obvious in view of the prior art s-shaped rubber putter.

• But for claim 2 (assuming claim 1 is not novel), there is no literal infringement.

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The

Claimed

Product/

Process

Element A Element B Element C Element D Infringement

under

Doctrine of

Equivalence?

Accused #2

Element

c

Yes, if c is

technically

equivalent to

C

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• In case only claim 3 & 4 are valid (dealing with shape and material of spring), there will be no literal infringement of patent by accused putter.

• Therefore, in order to prove infringement, we have to resort to doctrine of equivalents.

• To prove that claim 3 is infringed, it will have to be proved that the hour-glass spring is technically equivalent to diamond shaped spring.

• For claim 4 to be infringed, it will have to be proved that steel spring is technically equivalent to titanium spring.

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• For this, it is important to analyze – Whether or not the difference between the claimed

diamond shaped spring and accused hour-glass shaped spring is insubstantial

– Whether the hour-glass spring functions in the same way as diamond shaped spring to reach substantially the same results

If the answer to the above is YES, then there is infringement, otherwise there is not.

– This is a subjective test and the Jury decides this.

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