add a feature to avoid patent infringement -- can I do that?

[littlelady]

Q1: I have a product which contains every limitation of a patent claim owned by a third party. Can I add a non-obvious substantial feature to my product to avoid infringing that patent claim???

Q2: If the answer to Q1 is that yes I can avoid the patent infringement, would your answer be different if my feature is to make the product separable into smaller pieces for portability?

Thank you whoever can shed some light !!!

Lily

[JimIvey]

The answer is "No."  ... unless the claim is worded such that adding new features does not infringe.  For example, if the claim recites "no more than one widget", adding a second widget would avoid infringement.

Regards.

[DogDayPM 9er9er9er]

Adding to Jim_Ivey's comment - if the patent claims in question say, "product consisting of XYZ" or "product consisting essentially of XYZ", then adding a substantial additional feature would take it outside of the claims in the US, because the "consisting" language is limiting.

Another comment (not part of your question) is to note that as described in Q1, the known/patented product with a "non-obvious substantial" additional feature should be patentable at least over the known patent.  Patenting your widget does nothing legally for you from a right to practice standpoint, but may give you leverage should you decide to negotiate with the patent holder for a license.

Breaking your product into an assemblage and providing this as a kit (for example) to be later assembled by the end purchaser is normally still an infringing act.  Otherwise, many product patents could be easily circumvented.

Also, if you break your product into an assemblage missing an easily obtained patent-claimed element or two and then sell the kit and "hint hint" let the end user go get his own final missing element(s) to complete the infringing product, you'd likely be viewed as infringing in a secondary fashion (such as contributory infringement, inducing infringement).

Here's a question for you.  You say your product "contains every limitation of a patent claim".  Ya shure?  Is this a very simple product with simple components/elements of patent claims?  Or are certain limitations interpretable?  Also, have you reviewed the patent's file history?  (If recent enough, check on PAIR).  The patentee may have said some things that define the claim terms a little differently than common thought would tell you.

[littlelady]

The problem is that the patent at issue contains many very widely drafted claims and mean-plus-functions. The only point we can rely on is that the patent and its prosecution history shows that:

The original claim -- comprises of ....; and at least 3 legs
Rejected because of a prior art with 4 legs
They changed it to two claims: one with 3 legs and one with a leg means.
Then it was allowed!!

My questions are:
(i) can I now get a patent exactly the same as the patent at issue but with 5 legs??
(ii) if I don't have a patent and create something with 5 legs, would it be an infringement of the patent at issue??

Thank you, all the smart people here!!

[DogDayPM 9er9er9er]

The problem is that the patent at issue contains many very widely drafted claims and mean-plus-functions. The only point we can rely on is that the patent and its prosecution history shows that:

The original claim -- comprises of ....; and at least 3 legs
Rejected because of a prior art with 4 legs
They changed it to two claims: one with 3 legs and one with a leg means.
Then it was allowed!!

My questions are:
(i) can I now get a patent exactly the same as the patent at issue but with 5 legs??
(ii) if I don't have a patent and create something with 5 legs, would it be an infringement of the patent at issue??

Thank you, all the smart people here!!

(i) again, if your 5-legged beastie is more than an insubstantial difference which is indeed (as you mentioned initially, anyway) not an obvious improvement in view of the prior art (known patent w/ 3 and art cited against that patent w/ 4 legs), then it should be patentable at least in view of those 2 docs.  Since our model seems to be office furniture, though, I will say that knowing of 3- and 4-legged beasties makes me give the fish eye to the non-obviousness of the 5-legged beastie unless the 5-legged beastie was formerly impossible without some new way of doing it that you've come up with... ...in which case you might want to patent that (new method) also/instead.

(ii) sounds like you're getting closer to what JimIvey mentioned, although by pros.history estoppel rather than explicitly in the claims.  That is, the patentee may have limited itself to a "not more than" situation based on arguments and amendments in view of the art.  But I wouldn't want to opine further without explicit info (and don't want to see it) except to say that this is the point where I usually seek opinion of patent counsel.

The M+F type claiming in the other independent claim may be very narrow also, but this itself is another intensely fact-dependent review.  M+F claims formerly were given fairly broad coverage but now are essentially limited to those means taught in the spec to perform said function and the obvious equivalents to those means.  Not to mention, at least as you've described it ("leg means" v. "means for supporting said substantially horizontal surface", for example), it may not really be an M+F claim from a legal standpoint but really just recite the same as "a leg".  Here's a fairly recent thread on M+F claims http://www.intelproplaw.com/ip_forum/index.php/topic,10519.0.html

If you're no longer dealing with hypotheticals (HOW'd the test go?!), I'd get the info to patent counsel.

[JimIvey]

You should feel safe practicing anything taught (described) in the prior art of the patent in question.  In other words, if you make a widget with 4 legs and otherwise exactly like the prior art widget, you're safe (from that patent -- perhaps not from the prior art if it was a patent as well).

Following on the distinction between "comprising" and "consisting [essentially] of", you might see if the new claim with just 3 legs also modified "comprising" to "consisting [essentially] of", thereby limiting the claimed invention to embodiments with legs numbering exactly 3.

"comprising" (nearly always used) ==> adding more does not escape infringement.
"consisting [essentially] of" (rarely used) ==> adding more escapes infringement.

Regards.