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Results: 4 Answers
Patents
8.
Claim construction
8.1
When during a patent infringement action are claim terms defined by the tribunal?
 
India
There is no specific step during an infringement action when claim terms are defined by the IPAB or the courts. However, most judges will try to understand the scope and meaning of the claims, including all terms, before determining infringement. The same was discussed by the high court in F Hoffmann-La Roche Ltd v Cipla Ltd RFA (OS) Nos 92/2012 & 103/2012, as follows:

(xiv) At the beginning of an infringement action the Courts in the United States conduct what is known as a ‘Markman hearing’ to define the scope of the claims or to throw light on certain ambiguous terms used in the claims. Although this is not technically done in India but functionally most Judges will resort to a similar exercise in trying to understand the scope and meaning of the claims including its terms.

In the case of (52 F.3d 967 also 517 US 370) Herbert Markman Vs. Westview the Courts held that an infringement analysis entails two steps:-

(a) First step is to determine the meaning and scope of the patent claims asserted to be infringed.

(b) Second step is to compare the properly construed claim with the device accused of infringing.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
8.2
What is the legal standard used to define claim terms?
 
India
Claims terms are defined on their own terms. The specification is referred to in case of ambiguity in the claims. Extrinsic evidence such as inventor testimony, dictionaries and treaties is used by the courts, but only with caution, as extrinsic evidence is treated as of lesser significance in comparison with intrinsic evidence.

In F Hoffmann-La Roche Ltd v Cipla Ltd RFA (OS) Nos 92/2012 & 103/2012, the high court discussed the aspect of claim construction in detail.

The court referred to 415 F. 3d 1303 Edward H.Phillips Vs. AWH Corporation, which explained that :

“66…In the decision reported as 415 F. 3d 1303 Edward H.Phillips Vs. AWH Corporation it was held that claims have to be given their ordinary and general meaning and it would be unjust to the public, as well as would be an evasion of the law, to construe a claim in a manner different from plain import of the terms and thus ordinary and customary meaning of the claim term is the meaning of the term to a Person Of Ordinary Skill in the Art as of effective date of filing of the patent application. In case of any doubt as to what a claim means, resort can be had to the specification which will aid in solving or ascertaining the true intent and meaning of the language employed in the claims and for which the court can consider patent prosecution history in order to understand as to how the inventor or the patent examiner understood the invention. The Court recognized that since prosecution is an ongoing process, it often lacks clarity of the specification and thus is less useful for claim construction. The Court also recognizes that having regard to extrinsic evidence such as inventor testimony, dictionaries and treaties would be permissible but has to be resorted to with caution because essentially extrinsic evidence is always treated as of lesser significance in comparison with intrinsic evidence.”

The court also referred to 457 F.3.1284 (United States) Pfizer Vs. Ranbaxy, where it was held that

“…the statements made during prosecution of foreign applications are irrelevant as they are in response to unique patentability requirements overseas. The Court also held that the statement made in later unrelated applications cannot be used to interpret claims of prior patent.”

The court further referring to the judgement of the division bench in FAO (OS) No.190/2013 Merck Vs. Glenmark clarified that “Abandonment of an application cannot remove what is patented earlier nor can it include something that was excluded earlier and that a patent is construed by the terms used by the inventor and not the inventors subjective intent as to what was meant to be covered. Merely because an inventor applies for a latter patent that is already objectively included in a prior patent, but which inventor subjectively feels needs a separate patent application, doesn‘t mean it is to be taken at face value and therefore neither Section 3(d) or abandonment of subsequent patent application can be used to read into terms of prior application, which has to be construed on its own terms.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
8.3
What evidence does the tribunal consider in defining claim terms?
 
India
Evidence that is considered in defining claims terms was extensively discussed in F Hoffmann-La Roche Ltd v Cipla Ltd RFA (OS) Nos.92/2012 & 103/2012, as discussed in question 8.2.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates