This article has been written by Nammrata Singh, a student of  LLM(1st Semester) from Chandigarh University

Abstract – 

This abstract explores the multifaceted landscape of defending against patent claims, providing a comprehensive guide for entities facing allegations of patent infringement. In the realm of intellectual property, defending against patent claims necessitates a nuanced understanding of legal principles, a thorough examination of the asserted patent, and strategic maneuvers to challenge the validity of claims. This paper delves into key strategies for mounting a robust defense, emphasizing proactive measures to mitigate legal risks.

The document begins by stressing the importance of a meticulous analysis of the patent claim, dissecting its components to identify areas for potential defense. A systematic prior art search is then advocated, aiming to unveil evidence that challenges the novelty or non-obviousness of the asserted patent. The discussion extends to constructing compelling invalidity arguments, leveraging issues such as lack of novelty, obviousness, or inadequate disclosure.

Non-infringement arguments take center stage, exploring ways to demonstrate that the accused product or process diverges substantially from the patented claims. The document also scrutinizes equitable considerations, exploring the possibility of inequitable conduct during the patent application process as a defense tactic.

Further, procedural defenses, such as challenges to venue or assertions of laches, are explored for their potential impact on the litigation landscape. The abstract encourages a proactive stance in negotiations, advocating for license agreements or settlements that circumvent protracted legal battles.

In the context of evolving patent law, this abstract underscores the importance of post-grant proceedings, such as Inter Partes Review (IPR) or Post-Grant Review (PGR), as viable avenues for reexamining patent validity. The integration of experienced patent litigators into the defense strategy is emphasized, with a focus on effective trial tactics, expert testimony, and legal arguments.

Introduction  – 

In today’s dynamic technological landscape, the assertion and defense of patent claims have become pivotal aspects of innovation-driven industries. As businesses strive to push the boundaries of scientific and technological advancement, they concurrently face the challenges posed by patent infringement allegations. Defending against patent claims requires a strategic blend of legal acumen, technical expertise, and proactive measures to navigate the complexities of intellectual property law.This introduction delves into the multifaceted nature of defending against patent claims, outlining the critical considerations and strategies that entities must adopt when confronted with allegations of patent infringement. In a world where innovation is a driving force, a thorough understanding of the legal frameworks surrounding patents is essential for both patent holders and those seeking to protect their products and processes from infringement accusations.

The landscape of patent defense is characterized by a delicate interplay of legal doctrines, prior art assessments, and procedural intricacies. As such, entities embroiled in patent disputes must be equipped with the knowledge and tools necessary to construct a robust defense. This involves a careful examination of the asserted patent’s claims, a systematic exploration of prior art to challenge patent validity, and the development of comprehensive arguments asserting non-infringement.

Moreover, the defense against patent claims extends beyond legal arguments, incorporating strategic negotiations, proactive engagement in licensing discussions, and a keen awareness of post-grant proceedings that can reexamine the validity of the contested patent. The stakes are high, as successful patent defense not only safeguards against legal repercussions but also preserves the integrity of innovation and competition within the marketplace.

As a subset of intellectual property law, patent law is protected by the intangible asset framework. In essence, a patent is the patent holder’s exclusive right to bar others from importing, selling, utilizing, or offering for sale their patented process or product without permission. In addition to having the exclusive right to prevent patent infringement and maintain a healthy competitive environment in the market, the patent owner or patentee is also entitled to do whatever they please with the patented product or process.

Patent Infringement- 

Since The Patents Act of 1970 contains no definition for the term “infringement,” one must infer the meaning of “infringing a patent” from the rights specified in the patent specifications. The boundaries or limitations of the patentee’s use are essentially these rights granted to them. The claim specifications, which are appended to the patent application, clearly and unequivocally define the boundaries of the rights that are extendable to be shielded from infringement. Any encroachment upon the limits established by these claim specifications may be deemed as patent “i It is comparable to “trespassing” on real estate or other conventional properties. Trespassing is the act of entering, disturbing, or generally invading upon privately owned property. In the context of intellectual property, trespassing essentially means “infringement.”.

Determination of Patent Infringement – 

The following inquiry can assist you in determining whether a patent has been violated:

1. Determine the precise act that violates the patent.
2. Verify whether it falls within the claims’ definition of invention (an invention is defined as a new product or method that requires inventive thinking and can be used in an industrial setting).
3. Is the patent holder’s right being violated in any way? (exceeding the limits specified in the claim specifications)
4. For what act is someone liable?
5. Whether the aforementioned act is covered by the exceptions listed in The Patents Act, 1970’s Sections 49 (government use and research) and 64 (causes of revocation).

Any commercial use of the patented invention without the patentee’s consent can be summed up as an act of patent infringement.

A patentee’s rights are outlined in Section 48 of the Act, which grants them the sole authority to stop third parties [who do not have their consent] from using, marketing, importing, or offering to sell their patented invention (product or process) in India.

This section should be read in conjunction with Section 10, which discusses the specification’s contents. The specifications must conclude with a claim or claims that define the scope of the invention for which protection is claimed, according to the same subsection 4(c).

Subsection 5 further clarifies that the claims are limited to a single inventive process or invention. In addition, they must be focused on the patent’s subject matter and be brief and accurate. The Patents Act’s protected rights for the patentee are essentially summed up in these two sections.

Types of Patent Infringement

There are two types of patent infringement

The most frequent type of infringement is known as “direct infringement,” which occurs when a product that is incriminating is made, used, sold or attempted to be sold, and imported without the proper owner of the patent’s consent. In terms of functionality or design, it is typically the same as the patented invention.

2. Indirect Infringement: This happens when someone coerces someone else into directly violating a patent. It encompasses two things: 1) purchasing or importing materials intended for use in a patented process; and 2) a third party inciting someone to engage in direct infringement (usually involving distributors and retailers).

All Element Test – 

The different kinds of violations lead us to the “Doctrine of Equivalents,” an intriguing body of law. Courts can now determine whether the contested goods or processes are essentially the same or just substantially similar thanks to this doctrine. It makes a distinction between two types of infringement: those that are literal (just like the patent) and those that fall under the doctrine of equivalents (substantially similar).

This doctrine is helpful when someone copies a patented product, makes a few minor adjustments, and then sells it. Since the patent is not being violated “directly,” it may be challenging to file a claim and obtain relief. In this case, the doctrine of equivalents is applied to ascertain whether the purported product achieves the same outcome by carrying out the same function essentially in the same manner. It assesses the “equivalency” of the constituent materials, manufacturing procedures, and output.

The “All elements test,” which mandates that each component of a patent and the product be evaluated separately rather than collectively in order to compare their similarities, is used to apply the doctrine. In the 1950 case Graver Tank & Mfg. Co. v. Linde Air Prods., Inc., the US Supreme Court established the test. It concluded that if a device performs essentially the same function in essentially the same way to achieve the same outcome, the patentee may use this doctrine to pursue legal action against the manufacturer of the device.

The ‘All elements’ rule was applied in the Warner-Jenkinson v. Hilton Davis Chemical Co. (1997) case, further solidifying this doctrine by enabling each and every element to be compared and examined to verify that the products or processes were identical. A cursory glance at the products’ appearance is insufficient to determine the extent of infringement. To ascertain the degree of “sameness” between inventions and validate the allegation of infringement, every component and technique used to assemble the product or develop the process must be scrutinized.

In the 2008 Bombay High Court case of Ravi Kamal Bali v. Kala Tech and Ors., this doctrine was initially applied in India. In short, the plaintiff claimed that the defendant was infringing on its patents on its products (tamper locks) and that the defendant should pay damages and an injunction. The Plaintiff argued that the Defendant’s products violated the Plaintiff’s patents because they performed the same task in a substantially similar manner and produced a substantially similar outcome. The defendant refuted this, claiming that they produced their goods using an alternative technique.

The Judge ordered a more thorough examination of the methods and materials used to create the products, and after comparing every element in a tabular format, concluded that the incriminating product was indeed created using highly similar methods, and basically did the same work, establishing infringement. The judge agreed that the two products operated on the same principles, but added that “the difference in the shape of the main body does not, by any stretch of the imagination, constitute the Defendants product as a separate or new invention.” It lacked functional novelty and thus could not be considered a ‘inventive step’.

Despite the fact that the judgment was reserved and the injunction was not granted, this case is significant in Indian patent law because it introduced the doctrine of equivalents to our country.

Imphase Power Technologies v. ABB India (Karnataka High Court, 2016) was another case in which this doctrine was applied. The case was an appeal filed against a Trial Court Order restraining Imphase from infringing on ABB’s patent and misappropriating their confidential information (Imphase was founded by a former ABB employee). This case dealt with a variety of issues, including trade infringement, patent infringement, and misappropriation of confidential information.

In terms of patent infringement, ABB owned patent rights to a ‘Dynamic Reactive Power Compensator’ – STATCON. They claimed that Imphase’s product infringed on their patent rights because it was nearly identical to ABB’s product. The Court saw no merit in Imphase’s minor technical differences and concluded that ABB had presented prima facie enough evidence to warrant an injunction. As a result, the Court upheld the existing injunction and dismissed the appeal with no costs.

Defenses that can be used against patent infringement – 

In the rapidly evolving world of technology, it’s critical to stay informed about both patent infringement offenses and defenses against such accusations. Every field that advances with IP law faces fierce competition. Therefore, anyone working with patented goods or procedures needs to be ready for a lawsuit or other legal action alleging infringement. Some defenses are derived from legal interpretations, while others are provided by the Patents Act of 1970 itself.

• Section 47: This section addresses a patent’s government use and research exemption. A patented process or product that is granted to the government may only be used for that purpose. It can be applied to research and experimentation, including teaching, among other things. When it comes to drugs and medications, the government is free to import any kind of medication it thinks appropriate for any hospital or pharmacy, either for internal use or distribution. In these kinds of situations, a patent infringement claim is easily dismissed.
• Section 49: This section makes it clear that the Patents Act will not apply to the temporary or unintentional use of foreign vessels (aircraft, machinery, vehicles, or boats) within the borders of India. Even if the invention is used on a vessel within Indian territorial waters, this will not give rise to a claim of patent infringement.
• The Bolar exemption, found in Section 107.A (a), provides pharmaceutical companies with a defence. According to the principle, a patented product may only be used by a third party for legitimate purposes pertaining to the creation and filing of data that is mandated by law. So, pharmaceutical companies have a lot of protection under the Bolar exemption to carry out clinical trials and file for patents as soon as their present ones expire.

Gillette Defense

This defense is outlined in Sections 64(e) and (f), which allow for the revocation of a patent due to prior art or publicly known or used information. In essence, it indicates that the invention is not novel and is only a copy of prior knowledge, and as such, it is revocable. The name comes from the 1913 Gillette Safety Razor Co. v. Anglo American Trading Co. Ltd. case, in which Gillette found it challenging to demonstrate that their razor was an original invention because it was based on prior art. They were successful in obtaining patent validity, but no evidence of infringement could be found.

The idea behind this defense is that the invention is not novel. It is not even patentable in the first place because it is an obvious invention based on prior use and public knowledge. This is an extremely effective defense to show a patent’s invalidity and protect your own. The defendant may argue that the patent was invalid or that their invention was not infringing upon another person’s work because it was based on prior publication, knowledge, or use.

   Conclusion

It is not impossible to defend a claim against patent infringement, even though it can be challenging. The defenses listed above are some fundamental ones that can be used to counter such a claim, and they can help you win if they are used skillfully.

Every case is unique, encompassing a range of distinct situations and situations. Therefore, in order to develop the most effective defense against a claim, a thorough analysis of the available evidence is necessary. The Act’s defenses must be used in light of the specific facts of each case.

In conclusion, the global progress in technology demands that the Indian legal system and judiciary evolve in order to create techno-legal principles and laws that are enforceable. It will reduce the uncertainty surrounding these cases and offer specific formulations that will be useful in the future.

   Reference

https://sagaciousresearch.com/blog/3-ways-you-can-defend-a-patent-infringement-lawsuit/

https://www.techinsights.com/blog/defending-against-infringement-claims-patent-invalidation

https://www.wipo.int/patent-judicial-guide/en/full-guide/japan/7.5