Claims with "comprising"

Started by Patiobob, 01-25-18 at 12:05 AM

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Patiobob

I received notification in the mail today telling me to cease and desist on a product I am working on.   I've actually met with the original inventor and went to him with a huge upgrade to his product, plus I filed for a method patent for the new way of using the product.    Now that he is not "playing nice" I'd like to just go around him.  I had some ideas prior, but have two questions.    As I read his claims, he has 6....the first one is independent, and the next two relate to the first.   Then the 4th claim is exactly the same as the first with numbers 5 and 6 referencing number 4 in exact same wording.   My first question would be why would duplicate claims be on same patent?   
  My next question has to do with the first (and 4th) claims.   There is a general statement, followed by the word "comprising" and then a list of a, b, and c each stating "means" and then some sort of definition of which none of the defining words are in the general statement.    A and B have single means statements that I am clearly infringing.   C however has 3 separate means statements in one sentence.   Basically, for this example,  statement "c" states a "chair" will have 4 legs and the legs will be inter connected by way of some sort of structure.   The third part of the sentence statement is to the effect that the chair will have a back on it.       I know as a fact the product is being produced without the connecting structure..  In another part of the patent description it does say that it "may have this structure", but that is not how it is worded in the claims.  So that is a lot of info to get to these questions....So, is the original inventor in compliance with his own claims since he does not have the connecting structure?   Can I simply build a 3 legged chair and be clear of his claims?  If I remove the connecting structure am I clear of his patent?  Or does every part (3 parts) of the entire means sentence under "C" have to be avoided to not be infringing?    Thanks in advance!

Robert K S

You are asking for specific legal advice and so you ought to be consulting an attorney.  You will not find the help you need on an Internet forum.

Speaking generally, and not with reference to the specific facts of your case, nothing about the U.S. patent system requires a patentee to practice a patented invention, as claimed in the patent, as a prerequisite for the enforceability of the patent against alleged infringers.
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

Patiobob

Quote from: Robert K S on 01-25-18 at 12:20 AM
You are asking for specific legal advice and so you ought to be consulting an attorney.  You will not find the help you need on an Internet forum.

Speaking generally, and not with reference to the specific facts of your case, nothing about the U.S. patent system requires a patentee to practice a patented invention, as claimed in the patent, as a prerequisite for the enforceability of the patent against alleged infringers.
I am going to see a patent attorney.  I keep reading on infringement and everything always states you have to not use every item in the specifics of the patent.     I was sent a letter basically telling me I was infringing, but I don't have everything in my product under the list of "comprising" claims.  My confusion is neither does the original inventor.  I understand the word "comprising" to mean the product must encompass these specific features.  More features plus the list is still in violation, but if any specification is left out of your own product then you are not infringing.     

smgsmc

Quote from: Patiobob on 01-25-18 at 12:33 AM
Quote from: Robert K S on 01-25-18 at 12:20 AM
You are asking for specific legal advice and so you ought to be consulting an attorney.  You will not find the help you need on an Internet forum.

Speaking generally, and not with reference to the specific facts of your case, nothing about the U.S. patent system requires a patentee to practice a patented invention, as claimed in the patent, as a prerequisite for the enforceability of the patent against alleged infringers.
I am going to see a patent attorney.  I keep reading on infringement and everything always states you have to not use every item in the specifics of the patent.     I was sent a letter basically telling me I was infringing, but I don't have everything in my product under the list of "comprising" claims.  My confusion is neither does the original inventor.  I understand the word "comprising" to mean the product must encompass these specific features.  More features plus the list is still in violation, but if any specification is left out of your own product then you are not infringing.   
It's not clear what you mean by "every item in the specifics of the patent".  Infringement is based on what is claimed.  Also, as Robert pointed out, what the inventor himself produces or does not produce has no bearing on whether your product infringes his claims.  What if the inventor has no product in production at all?  Then he obviously doesn't satisfy any element of his claims.  Do you think that you would then be totally free to do what you want without concerns of infringement?  Those are generic issues.  Your attorney will address your specific case.

Tobmapsatonmi

Just to sort of clarify some of the things mentioned, general stuff for you to know before you see the attorney:

As Robert mentioned (oops, and also smgsmc), it doesn't matter if the patent owner's own product does not meet his patent claims.  This is completely irrelevant to you, and to the question of whether your product may be infringing his claims.

As you (Patiobob) mentioned, if your product does not meet every required element of his patent claims, you are not infringing.  However, this is sometimes not as simple to determine as it seems, and sometimes particularly in the case of a claim reciting "means for".  Also, there is a patent doctrine that says that even if your product does not actually contain every required element - let's say it's clearly missing one of them - your product can still be deemed to "equivalently" contain that item.

The 4th claim being exactly the same as the first claim is a mistake.  Either the patentee (and the patent examiner) made a mistake, or you are making a mistake in reading it.

Finally, are you sure what you are looking at is a patent (7-digit number) as opposed to a published patent application (4-digit year code followed by a 7-digit number)?
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

Patiobob

Quote from: Tobmapsatonmi on 01-25-18 at 02:36 AM
Just to sort of clarify some of the things mentioned, general stuff for you to know before you see the attorney:

As Robert mentioned (oops, and also smgsmc), it doesn't matter if the patent owner's own product does not meet his patent claims.  This is completely irrelevant to you, and to the question of whether your product may be infringing his claims.

As you (Patiobob) mentioned, if your product does not meet every required element of his patent claims, you are not infringing.  However, this is sometimes not as simple to determine as it seems, and sometimes particularly in the case of a claim reciting "means for".  Also, there is a patent doctrine that says that even if your product does not actually contain every required element - let's say it's clearly missing one of them - your product can still be deemed to "equivalently" contain that item.

The 4th claim being exactly the same as the first claim is a mistake.  Either the patentee (and the patent examiner) made a mistake, or you are making a mistake in reading it.

Finally, are you sure what you are looking at is a patent (7-digit number) as opposed to a published patent application (4-digit year code followed by a 7-digit number)?
I'm definitely looking at a patent and not an application.  I do absolutely get it.  If I did not have a sample of his product in my office I never would have known it did not match the claims.    I would have looked at the claims, thought to myself I am missing items B and C and moved on with production.   I have a meeting now with an attorney later this week, so I'll get some final answers. I do like your interpretation of "equivocally" containing an item....that is food for thought on how I am going to circumvent this problem.   I went to the inventor and offered him royalties so there was no way I could end up with this problem, and I still got a cease and desist letter.  You try and be honest and do things the right way and it still comes back to bite you.   

Tobmapsatonmi

Quote from: Patiobob on 01-25-18 at 03:00 AM...  I went to the inventor and offered him royalties so there was no way I could end up with this problem, and I still got a cease and desist letter.  You try and be honest and do things the right way and it still comes back to bite you.   


Some people just aren't civilized yet. 

Also, note he may have been in negotiations with another party to license to them, and/or already licensed someone else and promised they'd be the sole licensee.  In which case, he (a) can't really entertain your offer, (b) may not be permitted to tell you the other guy exists, and (c) may be obligated by his contract with the other guy to chase would-be potential infringers.
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

Patiobob

#7
Quote from: smgsmc on 01-25-18 at 01:16 AM
Quote from: Patiobob on 01-25-18 at 12:33 AM
Quote from: Robert K S on 01-25-18 at 12:20 AM
You are asking for specific legal advice and so you ought to be consulting an attorney.  You will not find the help you need on an Internet forum.

Speaking generally, and not with reference to the specific facts of your case, nothing about the U.S. patent system requires a patentee to practice a patented invention, as claimed in the patent, as a prerequisite for the enforceability of the patent against alleged infringers.
I am going to see a patent attorney.  I keep reading on infringement and everything always states you have to not use every item in the specifics of the patent.     I was sent a letter basically telling me I was infringing, but I don't have everything in my product under the list of "comprising" claims.  My confusion is neither does the original inventor.  I understand the word "comprising" to mean the product must encompass these specific features.  More features plus the list is still in violation, but if any specification is left out of your own product then you are not infringing.   
It's not clear what you mean by "every item in the specifics of the patent".  Infringement is based on what is claimed.  Also, as Robert pointed out, what the inventor himself produces or does not produce has no bearing on whether your product infringes his claims.  What if the inventor has no product in production at all?  Then he obviously doesn't satisfy any element of his claims.  Do you think that you would then be totally free to do what you want without concerns of infringement?  Those are generic issues.  Your attorney will address your specific case.

I guess what I am really getting at is if he builds his own product, not following his own patent claims, and what it is "compromising"  then what would stop me from copying his product exactly as he is currently producing it?  If I leave the same 3 items out that the claims state it is "comprising", and in exact same way he did to produce the product, then I shouldn't be infringing even if I am copying exactly what he is currently producing?     

Tobmapsatonmi

If his patent claims do not "read on" his own product, either literally or by the equivalents doctrine I mentioned earlier, then you are correct that an exact copy of his product also does not infringe his patent claims.

Note that he may not be aware that his patent claims do not cover his product.  Many people seek a patent and have a vague notion that it relates to their product, generally, and may have even OK'd the patent attorney making some claim amendment that was necessary to get the patent allowed, without paying attention to the fact that this same amendment may have also made the claims no longer cover the product.
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

MYK

#9
"Comprising" in a patent claim means "has at least the following elements".  A car "comprising" a steering wheel can also have tires and an engine.  A car "consisting of" a steering wheel can't have anything but the steering wheel (so it isn't really a car, but this is just to tell you what "comprising" means in this context).

If your product has more than just the elements listed, then it still infringes.  If your product DOES NOT HAVE at least one of the elements listed, then it does not infringe.

Also, the "doctrine of equivalents" is very narrow and is meant to encompass blatantly obvious substitutions, such as when transistors were invented in the 1950s and replaced vacuum tubes.  A 1960 product that used a transistor in a circuit instead of a vacuum tube would be considered to infringe a  1947-issued patent patent claiming the circuit with a vacuum tube.
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

Patiobob

I wanted to say thank you to everyone for the input and thoughtful responses.   I've met with council and confirmed I was accurate in both my understanding of how the claims are written, and of the possibility of my own product infringement based on those claims.   
    In addition, in answer to my theoretical question of an inventor producing a product that does not match his/her own claims of "comprising".   If the product claims to be protected with a patent number on it and he produces it without everything the patent "compromises" then inventor is potentially opening himself/herself to a false advertising issue. In which case, the product could also potentially be produced by another party, exactly how the inventor currently is, and without infringement.         

MYK

Quote from: Patiobob on 01-26-18 at 11:01 PM
If the product claims to be protected with a patent number on it and he produces it without everything the patent "compromises" then inventor is potentially opening himself/herself to a false advertising issue.
That's sort of true, but the 2011 patent law "reforms" cut down the false marking damages (money) to the point that there's no point in suing over it unless you like throwing away your own money.  I forget whether they eliminated private actions completely on that or not.  In fairness, because of the way the old statute had been (IMHO) misinterpreted by the courts, the risks and damages calculations had gone insane.  IIRC one of the big lawsuits was over a long-expired patent that was still being marked on a product as a sort of historical advertising thingie, on a Brooks Brothers bow tie.   Another was against Solo Cup for not removing the marking because they didn't want to replace all of their tooling;  they were potentially liable for over five trillion-with-a-T dollars.
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.



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