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   Configuration of product and infringment
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   Author  Topic: Configuration of product and infringment  (Read 523 times)
AAKKdoublesuited
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Configuration of product and infringment
« on: Sep 9th, 2007, 2:18pm »
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Let's assume Company X sells a product that does not infringe the claims on a certain patent.  However, Company Y purchases the product from Company X and configures it so that it does infringe.  
 
I understand that Company Y is liable for direct infringement and that Company X is only liable for inducing infringement if it tells/encourages Company Y to modify it to perform the invention of the patent.  Additionally, Company X may be liable for contributory infringement of a method claim in the product has no staple use.
 
However, lets assume Company Y contracts Company X to modify the product after the sale to perform the invention covered by another claim.  Under these facts, is there any way Company X can avoid infringement (i.e. direct, contributory, and inducing)?
 
I can't think of any way in the event of a product claim, as their altering the product constitutes a "making", correct?  However, if it is a method claim, are they then liable for inducement or contributory infringement for altering the product?
« Last Edit: Sep 9th, 2007, 2:18pm by AAKKdoublesuited » IP Logged
biopico
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Re: Configuration of product and infringment
« Reply #1 on: Sep 9th, 2007, 6:37pm »
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altering the product may be or may not be within the scope of the claims of the said patent in issue?
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AAKKdoublesuited
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Re: Configuration of product and infringment
« Reply #2 on: Sep 9th, 2007, 6:40pm »
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So let's assume it's a method claim.
 
If Company X modifies the product for use by Company Y to infringe the method claim, then shouldn't Company X be indirectly liable for Company Y's direct infringement?
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patent_type
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Re: Configuration of product and infringment
« Reply #3 on: Sep 15th, 2007, 12:12pm »
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As a general proposition, if Company X makes a product to Company Y's specification, and that product infringes a third party patent, Company Y will be deemed to indemnify Company X for the infringement.  There is also likely to be some provision to that effect in the contract between Company X and Company Y.  But Company X is still infringing.  See, e.g., UCC 2-312(3) (last half).
 
http://www.law.cornell.edu/ucc/2/2-312.html
 
If Company X has much deeper pockets than Company Y, Company X might bear the primary brunt of an infringement claim.
 
Not legal advice, blah, blah, blah.  I'm just posting completely random thoughts while taking a break from my 10th grade algebra homework.
« Last Edit: Sep 15th, 2007, 12:16pm by patent_type » IP Logged
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