Patent infringement

Introduction
Patent is a type of intellectual property granted by the patent authority to the inventor for a
limited period of time for exercising monopoly over his specific innovation. A patent is
considered to be an exclusive monopoly right as it excludes others from using, selling,
distributing the invention of innovators. Patent Infringement is illegal as it violates the
exclusive right of the patent holder. It is crucial for individuals and companies to be aware of
patent laws and the consequences of patent infringement. It is important to take steps to
protect one’s own patents, as well as to avoid infringement of the same by others. With
technology rapidly advancing, it has become increasingly important to understand the
complexities of patent infringement and how it affects innovation and progress. This article
aims to reflect the same.

Types of patent infringement

Classification of patent infringement have been discussed hereunder.

Direct infringement

Direct infringement is a most common and obvious form of patent infringement. When a
third party without the permission of the patent holder:

 Commercially uses the invention.

 Reproduces the invention.
 Import a protected idea/ invention in India.
 Selling patented inventions.
 Offer to sell patented inventions.
Direct infringement can either be intentional or unintentional during the term of patent. Only
requirement to be fulfilled is the performance of a substantially deceptive function of an
invented product without obtaining a legal licence from the owner for the usage. For
example, Samsung started using the same manufacturing process as the Apple company for
making phones, without taking permission. This is a direct infringement of a patent existing
on the product, owned by the Apple company.

Literal infringement

Literal infringement is a type of direct infringement in which each and every element or
composition protected by either product or process patent is copied, in other words, a replica
of the original product is used, manufactured, sold or imported.
In the case of Polaroid Corp. vs. Eastman Kodak Co (1986), Polaroid claimed that Kodak
had violated its patent right related to instant photography. The central dispute revolved
around Kodak’s instant photography system, which Polaroid argued had utilised its patented
technology. Polaroid believed that four of its patents related to instant photography, including
the process of developing an instant image and the instant camera itself, were infringed by
Kodak. After a prolonged trial, the court ruled in favour of Polaroid, determining that Kodak
had indeed infringed upon Polaroid’s patents. As a result, Kodak was ordered to stop the
production and sale of its instant photography system and Polaroid was awarded substantial
damages.

Non-literal infringement

Non-literal infringement is also recognised by the name of Doctrine of Equivalence. In this

type of infringement, the alleged invention has to pass through the “Triple Identity Test”.
This means when an invention is similar to the patented invention hence performing
significantly the same function, in the same way and producing the same result, may even
differentiate in name, shape or form, that invention will be said to have caused non-literal
infringement of the previously patented invention.

In the landmark case of Ravi Kamal Bali vs. Kala Tech. & Ors (2008), the plaintiff was
granted patent for ‘tamper lock/seals’ and the defendant constructed a similar kind of product
by the name of ‘Seal Tech’, which had the similar functional features as the plaintiff’s lock.
The court of law had applied the Doctrine of Equivalence, and gave the decision in favour of
the plaintiff stating that both the products had exactly the same function and also was made
up from the same material with the only slight differentiation was of construction which did
not constitute an innovation.

Indirect infringement

Indirect infringement occurs when a third party supports, contributes or promotes the direct
infringement. The infringement can either be accidentally or knowingly.

Induced infringement

Induced infringement involves wilful aiding of the infringing process, with or without any
intention to infringe. In either case, the infringer shall be held liable for infringement. The
aiding can be in the form of:

 Assisting in manufacturing of the product.

 Assembling the patented product without proper licence.
 Providing instructions to third parties on production of product.
  Printing the instructions of patented items and selling them.
 Licensing plans or processes.

Contributory infringement

Contributory infringement is a kind of indirect infringement in which the infringer sells or

supplies the parts of a product used exclusively to manufacture the patented products. The
infringer is held liable even if he doesn’t actively participate in the manufacturing process.

Wilful infringement

Wilful infringement occurs when someone disregards the patent invention voluntarily. The
burden of proof in this case lies on the patent holder. The infringer can take the defence of
legal opinion thoroughly in writing. Three step process for willful infringement are:

 Knowledge about the patented invention,

 Good faith belief that the infringer wouldn’t be liable for patented invention,
 Infringer’s belief is reasonable.
If the wilful infringement is proved, the court can order strong deterrents (3 to 4 times of
actual damage), inclusive of court costs, lawyer’s fees etc.

Burden of proof
The burden of proof in patent infringement originally lies upon the patentee (the plaintiff).
However, TRIPS amended the Patents Act, 1970 by insertion of Section 104A thereby
introducing the concept of “reversed burden of proof”. This signifies that if the subject
matter of patent is a process and results to;

1. A new product, and

2. There is substantial likelihood that an identical product is made by the same
process and the patentee, despite reasonable efforts, failed to determine the
process.
Then the burden of proof is on the defendant to prove the non-infringement.

Doctrines related to patent infringement

Doctrine of equivalents

Doctrine of equivalents is a legal rule that is applied to find out the patent infringement. The
doctrine classifies even a minor change to the product as an infringement. In simple words, if
the infringed product performs significantly the same function, in the same way and produces
the same result, then it shall lead to patent Infringement under the doctrine of equivalents.

Limitations to the doctrine of equivalents

1. All elements rule: All the elements of a patented product should be present in the
infringed product.
2. Doctrine of public dedication: This doctrine is applicable when a patentee
discloses publically the subject matter of patent but does not claim it. Anyone can
then use it without fear of infringement.
3. Existence of prior art: Invention already publicly available and known, before
filing of the patent application signifies existence of prior art. In other words, the
invention is not unique or exists already in some form.
4. Prosecution of history estoppel: Also known as File-Wrapper Estoppel, it arises
as a legal defence to infringement. It applies where a patent application amends or
cancels a claim rejected by the Patent Office as unpatentable based upon prior art.
In the landmark case of Graver Tank vs. Linde Air (1950), the disputed patented formulation
was a mixture of alkaline earth metal silicate (using magnesium) and calcium. The accused
used manganese, and silicate but not any alkaline earth metal. Experts stated that manganese
served the purpose of magnesium and was equivalent to it. In this case, the court had opined
that “a person reasonably skilled in his work would have known of the replaceable element“.
Interchanging of magnesium with manganese was obvious to anyone working in the same
field and was an insubstantial change. Therefore the court upheld the finding of patent
infringement under the doctrine of equivalents.

Doctrine of colourable variation

The doctrine is derived from a latin maxim, “Quando aliquid prohibetur ex directo,
prohibetur et per obliquum” which means “what cannot be done directly, should also not be
done indirectly”. According to this doctrine, the practice of making minor changes to a
patented invention in order to invade the patent infringement claims, is substantially
considered to be the same as the patented invention, even though it may have some apparent
differences. This means that an infringer cannot neglect liability by making minute changes
to the patented invention. Some of the factors considered by court in order to decide whether
a variation is colorable or not are provided hereunder:

1. The extent of resemblance between the alleged invention and the accused product
or process.
2. The degree of distinction between the two products or processes.
3. The aim or intended usage of the accused product or process.
 4. The competency level of the relevant industry at the time the patent was in use.
5. The level of difficulty involved in creating the accused product or process
6. The level of certainty in the relevant industry.
7. The degree of self-creation or prior knowledge.
8. Proof of Copying or other methods of direct violation of patent infringement.
The case of Pfizer Inc. vs. Cadila Healthcare Ltd (2020), involves a dispute over the patent
for the anti-inflammatory drug Celecoxib. Pfizer alleged that Cadila’s generic version of the
drug infringed Pfizer’s patent, but Cadila argued that its product was different from Pfizer’s
product and therefore did not infringe the patent. The Supreme Court of India found that
Cadila’s product was a colorable variation of Pfizer’s product, and amounted to
infringement.

What acts do not amount to patent infringement

There are several acts that does not amount to infringement-

1. Independent invention: The impugned product or process was independently

developed by the accused party, without any reference to or use of the claimed
invention of the patent. To prove independent invention, the accused party
typically needs to provide evidence of their invention, such as records of their
development activities, laboratory notebooks, or testimony from witnesses. This
evidence should demonstrate that the accused party was working on the same
problem as the patent holder and arrived at the same solution independently and
without reference to the claimed invention of the patent.
2. Patent expiration: When a patent expires, the inventor’s exclusive rights to the
invention are no longer in effect and anyone may use the invention without
infringing the patent.The term of a patent is typically set by law and is typically 20
years from the filing date of the patent application. After the patent has expired,
the claimed invention becomes part of the public domain and can be freely used by
anyone without fear of infringing the patent.To prove that the patent has expired,
the accused party can typically provide evidence of the filing date of the patent and
the relevant patent law to demonstrate that the patent has reached the end of its
term.
3. Research and experimentation: Experimental use of a patented invention for the
purpose of testing or evaluating it is not considered infringement. In other words,
the accused party is claiming that they were using the claimed invention to test and
evaluate its performance, and that they did not intend to sell or otherwise
commercially exploit the invention.
4. Government use: In many countries, the government has the right to use a
patented invention without infringing the patent for the purpose of fulfilling its
 responsibilities and providing services to the public. The accused product or
process is used by or on behalf of the government and is therefore not subject to
the patent. This defence is based on the idea that the government should have the
right to use patented inventions for various public purposes, such as for national
security or for the provision of essential services, without being subject to
infringement claims.
5. Prior use: If a person has been using a patented invention before the patent was
granted, they may be able to continue using it without infringing the patent,
depending on the laws of the relevant jurisdiction. To prove prior use, the accused
party typically needs to provide evidence of their use of the accused product or
process before the filing date of the patent.
6. Fair use: The concept of fair use allows for limited use of a patented invention
for purposes such as criticism, commentary, news reporting, teaching, scholarship,
or research. The defence is based on the idea that certain uses of a patented
invention should be allowed without infringing the patent, even if they would
otherwise be considered infringing, in order to promote the public good and
encourage creative and intellectual activity. To prove fair use, the accused party
typically needs to show that their use of the patented invention was for a
permissible purpose under copyright law and that it was reasonable in scope and
impact.
7. First sale doctrine: The first sale doctrine, also known as the exhaustion doctrine,
provides that the sale of a patented item by the patent holder or with their
authorization exhausts their patent rights and allows the buyer to use or resell the
item without infringing the patent. The doctrine is based on the idea that the patent
holder’s exclusive rights to the patented invention are limited and that the rights of
others to use, sell, or distribute a patented product should not be unduly restricted.
The first sale doctrine is often invoked in cases involving the resale of patented
products, such as used books, CDs, or other products that were legally obtained
through a sale or transfer. By applying the first sale doctrine, these products can be
resold or otherwise distributed without infringing the patent, provided that the
product was not altered or modified in a way that would give rise to a new patent
infringement.
8. Invalidity or unenforceability of the patent: If a patent is found to be invalid or
unenforceable, any act that would have otherwise constituted infringement would
not be considered infringing.
Defences available against patent infringement

1. Estoppel: Estoppel is a legal principle that can be used as a defence against a

claim of patent infringement. The principle of estoppel states that a person cannot
assert a right that they have previously renounced or abandoned. In the context of
patent infringement, estoppel can be used as a defence when the patent holder has
 made statements or taken actions that indicate that they do not believe the accused
party is infringing their patent. For example, if the patent holder has licensed the
accused party to use the patented invention or has allowed the accused party to use
the patented invention for a significant period of time without asserting their patent
rights, the patent holder may be stopped from later claiming that the accused party
is infringing their patent.
2. Licence: A licence is a legally binding agreement between the patent owner and
another party, in which the patent owner grants the other party permission to use
the patented invention in exchange for some form of compensation. In the context
of a patent infringement claim, a licence defence argues that the accused product
or process is being used under a licence or other agreement with the patent owner
that permits the use. This means that the accused party has a right to use the
patented invention, and therefore cannot be held liable for infringing the patent.
3. Plaintiff is not entitled to sue: The plaintiff who is claiming patent infringement
does not have the legal right to bring a lawsuit for the infringement. This defence
can be raised for a variety of reasons, such as lack of standing, assignment of the
patent, invalidity of the patent, statute of limitations, or a settlement or licensing
agreement. For example, if the patent has been assigned to someone else, the
original owner is no longer entitled to sue for infringement and the new owner
must bring the lawsuit instead. Similarly, if the patent is found to be invalid, the
plaintiff is not entitled to sue for infringement as they do not have a valid patent to
enforce.
Remedies for patent infringement
Section 108 of Patent Act,1970 deals with the “Reliefs in suit for infringement”. The
remedies for a suit filed in the infringement of a patent can be classified into three types, they
are:

1. Injunction: In the context of patent infringement, an injunction is a court order

that requires the infringing party to stop making, using, selling, or importing the
infringing product. It is a preventative measure that aims to preserve the value of
the patent and prevent further harm to the patent holder. To obtain an injunction,
the patent holder must prove that their patent is valid and that it has been infringed
upon by the defendant. Injunction is of three kinds:

 Temporary Injunction: It is a kind of temporary remedy that is provided before

the final verdict of the case. It is used to preserve the status quo of the patent
holder. Moreover, they are likely to succeed in their lawsuit and will suffer
irreparable harm if the infringing activity is allowed to continue. The court should
consider three factors before granting temporary injunction to the patent holder-
I. Prime facie case.
II. Balance of inconvenience.

III. Irreparable loss

 Permanent injunction: It is a kind of permanent remedy that is granted when the

case is finally decided by the court. It requires the infringing party to stop the
infringing activity permanently. The court may also award monetary damages,
such as compensation for any profits that the infringing party has made as a result
of the infringing activity. To obtain a permanent injunction, the patent holder must
file a lawsuit and prove that their patent is valid and that it has been infringed upon
by the defendant. However, obtaining a permanent injunction can be a complex
and time-consuming process, and the patent holder must have strong evidence to
support their claim.
 Ex-parte injunction: An ex-parte injunction is a provisional remedy that is used
in urgent situations and is granted without a hearing. It is a powerful remedy for
patent infringement, but it must be used with caution, as it may result in harm to
the defendant if it is later found to be unjustified. It is typically used in urgent
situations where the plaintiff needs immediate relief and there is not enough time
for a full hearing.

2. Damages: Damages is a remedy for patent infringement that compensates the

patent holder for any harm that they have suffered as a result of the infringing
activity. Damages may be awarded in the form of monetary compensation, such as
compensation for any lost profits or other financial losses that the patent holder has
suffered. The main objective of damages is to compensate for the loss or injury
that happened to the plaintiff.
3. Seizure, forfeiture or destruction: Courts may decree that the items determined
to be infringing should be taken into custody, forfeited, or disposed of as deemed
appropriate.
Landmark judgments
1. Novartis AG vs. Union of India (2013)

The highly significant legal dispute in India concerning the principle of patent infringement.
Swiss pharmaceutical company Novartis AG brought the case to the Supreme Court of India
after its application for a patent for its anti-cancer drug “Glivec” was denied by the Indian
Patent Office. The central issue of the case was the concept of “evergreening”, where
companies try to prolong the life of their patents by making minor modifications to their
products. Novartis claimed that its product was a new invention and thus deserving of patent
protection. However, the Patent Office rejected the patent, stating that it was just a
modification of an existing drug and not a new invention.
The Supreme Court eventually ruled against Novartis, determining that its product was not a
novel invention and therefore did not qualify for a patent. This ruling was seen as a positive
outcome for public health and access to medicine as it prevented the evergreening of patents
and ensured that generic versions of the drug would be available at more affordable prices.

2. Pfizer Inc vs. Dr. Reddy’s Laboratories Ltd. (2004)

Pfizer, a pharmaceutical company, sued Dr. Reddy’s Laboratories, a fellow pharmaceutical

company in India, for violating their patent on the anti-inflammatory drug “Celebrex”. The
central issue in the case was the interpretation of the Indian Patent Act’s provisions on
compulsory licensing of patented drugs. Dr. Reddy’s Laboratories sought a compulsory
licence to manufacture a generic version of the drug, claiming that it was necessary to ensure
access to affordable medicines for the Indian population.

The Delhi High Court ultimately ruled in favour of Dr. Reddy’s Laboratories and granted the
compulsory licence, allowing the company to produce a generic version of the drug. This
ruling was considered a significant victory for public health and access to medicine in India,
as it established key legal principles related to compulsory licensing of patented drugs.

3. Ericsson vs. Intex Technologies (2014)

The case is related to patent infringement in the mobile technology industry. The case was
brought before the Delhi High Court by Swedish telecommunications company Ericsson,
against Indian consumer electronics company Intex Technologies, for infringement of
Ericsson’s standard-essential patents (SEPs) related to mobile technology.

SEPs are patents that are considered essential for the implementation of a technical standard
and are required for the manufacture of certain products. The issue at the heart of the case
was the principle of fair, reasonable and non-discriminatory (FRAND) licensing for SEPs.
Ericsson claimed that Intex had used its SEPs without obtaining a licence from Ericsson and
that the licence fees demanded by Ericsson were fair and reasonable.

The Delhi High Court ruled in favour of Ericsson and ordered Intex to stop using Ericsson’s
SEPs and to pay a reasonable royalty to Ericsson. The court also ruled that SEP holders have
an obligation to licence their patents on FRAND terms and that licensees have the right to
seek a judicial determination of the terms of a FRAND licence.

4. BAJAJ Auto Limited vs. TVS Motor Company Limited JT (2009)

The Supreme Court of India held that TVS had infringed BAJAJ’s patent, as the design of the
three-wheeler produced by TVS was found to be substantially similar to that of BAJAJ. The
court held that the patent granted to BAJAJ was for a new and useful invention and that the
design of the three-wheeler produced by TVS was a reproduction of the patented design.

In its decision, the court emphasised the importance of treating patients as a form of property,
with infringement being a violation of the patent holder’s rights. The decision in this case
highlighted the need for companies to respect the patents of others in order to maintain a fair
and competitive business environment. Overall, the case reinforced the importance of
protecting patents and intellectual property rights in India.+