patent infringment?

[Jeffery Tomas]

I have a device that, by itself, does not infringe a patent, but does when
the user uses it, it is still patent infringement?

That is, by itself, it doesn't violate all the claims when made and in fact
doesn't even have to be like the device in the patent, but can be(and is
intended) to be used like the device in the patent.

Here is very simple example

Patent Claims

1. A device that is square
2. Said device in claim 1 has a round dot on it.

My device is square but no round dot on it. I intend the user to put the
round dot on it for similar reasons in the patent so the device will be used
the right way but they don't have to and it will still function. My device
is not exactly like the patent device but very close.

The problem is, that the patented device uses some very general language and
some things that are simply almost necessary. For example. Claim: The square
is made out of wood. Well, there really is no other option. It can't be made
out of metal, moth balls, cotton candy, etc... There are only 2 things that
it can be made out of that will at all make it useful and the patent gets
them both. It would be possible to make it out of the other things to get
around the patent but then the device wouldn't be useful. Just take my word
on it.

Another example is claim 2. It is necessary for the dot because without the
dot the device can't function in any useful way. (just take it for
granted... this is just a silly example)

It would be like patenting a bolt and the dots being analogous to the
threads.. although at least that has a bit more alternatives. In my case
there is no other way since either you put the dot on and the device works
or you don't and it doesn't.

I know the example is silly but if it take it only in the context I've given
and don't try to add anything extra and think about the logic itself it
shouldn't be too hard to answer.

My guess is if I created my device and sold it I would get sued either
way(since my device is better). Even though I created my device without any
knowledge of the other and, while it is different it is also similar(but
similar because there are very few ways to do it in the first place... and
any engineer given the criteria would come up with a similar device). My
device is better as it provides more utility but, again, had to follow
certain fundamental engineering properties because it is the nature of the
problem.

In the patent one of the claims is the thickness of the square and they say
"Approximately 0.0001 in to 1.5 in" but if the device was even anywhere
greater than 0.2 in it would be useless(too thick for the user).

The patent branches out a bit and covers many different variations of the
device. It basically prevents any variations. Of course they did this to
prevent competition. Unfortunately I've created a device, already have it
done, that improves on the concept(again though, I didn't steal the idea
because I didn't know about it until I started research the patents). Seems
like my device may never see the light of day though. My only thought is
that I could sale the device without the dot and let the user add the dot to
it... even if that was possible it wouldn't be very viable as it is a bit
difficult to add the dot(the average user would have to take it to a tech).

In the original patent they talk about assemblies an patent all the parts of
the assembly(although each part except what I have come up with is has been
around for centuries). They created their device, to be built as one while I
created mine to be easily inserted into the already existing assemblies.
Mine was about economy while theirs is not.

What gets me is that just about any engineer could come up with basically
the same things if given just a few requirements and goals. The patent
though prevents all these ideas by basically patenting how the device is to
be used in another device(that isn't patented but is required to make the
new device useful).

Another simple silly analogy is patenting a battery by patenting the devices
that will use it and using general enough language to get all the devices
that will use it. If you could do that you could prevent any other similar
batteries, from being used. In my case the main device(the thing actually
created) consists of just a simple circuit board with a few common ic's with
very basic function(like just simple sensors and a ic to read them).

 

[Ecnerwal]

Standard patent crap (as currently practiced). It all comes down to how
deep are your pockets .vs. how deep are theirs - ie, you can take it to
court and get the bogus claims invalidated, and see if there really is a
patentable concept left at the end - but it will cost you, and generally
the deeper pockets win. I, for one, am deeply disappointed with the
state of the patent system in the US at this point in time. As far as i
can tell, right now the best thing you can do with a patentable idea is
to publish it as soon as possible to prevent it being (validly) patented
by anyone else, unless you have a few million $ you want to fund a set
of patent lawyers with.

Unless, of course, it's suitable for being treated as a proprietary
secret, and staying that way when someone else can buy your device and
try to reverse engineer it. Not the case here from what you've said.

Or, just have a Chinese factory pump out a few million of the things.
They don't seem to be affected by the concept of intellectual property -
of course, that applies to yours as well as theirs.

 

[Jeffery Tomas]

wrote in message

Violating any claim is enough to infringe.

I'm sorry but that proves you don't know how a patent works.

 

[Jeffery Tomas]

"Phil Hobbs" wrote in message news:[email protected]...

<snip>

Google for "induced infringement". Also, a device with the same
utility isn't necessarily an infringing device--to infringe, it has to
meet all the limitations of at least one claim.

Of all claims!!! It only takes one claim not to hold to not infringe.

I'm not a lawyer, and I have a limited amount of experience in this,
having been an expert witness on five cases so far. (Two have settled,
one is stuck waiting for claim construction, and two are in progress.)

The three basic ways I've seen people defend against an infringement
suit are:
(a) Show that the device doesn't infringe;
(b) Show that the patent, or at least all asserted claims, are invalid;
(c) Countersue for infringing _their_patents and settle, one way or
another--usually by cross-licensing, I think.

There's a strong presumption in law that an issued patent is valid, so
(a) and (c) are usually much easier than (b), unless of course the
accused device obviously infringes.

My main issues have to do with the language. It is very general in some
cases and very specific in others. My device, depending on how you define
things, can clearly be made to not have some claims met... and hence should
be patentable.

For example, at least from my limited and very recent knowledge on patents,

suppose a device has a claim "Is made out of wood" and no other claims
pertaining to the composition(Such as metal, plastic, etc....) and you make
your device out of metal... then your device is different and does not
infringe.

This is why the patents tend to make many claims like "Is made out of X"
where we have a claim for each material it can be made out of. This way, it
prevents anyone from using possible materials to get around the patent.

But in some claims they use dimensions "Thickness is approximately between X
and Y". It would seem to me that if your device is outside this then you do
not meet the claim and hence are not infringing... except it uses the term
approximately... which leaves it open and hence they could easily sue you
and probably win if that is the only difference.

All I know is my idea provably better simply because it has more things than
the other device... but otherwise is very similar simply because of the
constraints put on such devices. My device, at least how I did it, is
different in some regards and I need to find out if those differences are
enough or not. The biggest problem is that the patent under discussion
includes the "assembly" and many of the claims are about the assembly...
even though the assembly by itself has existed for centuries. All it takes
is a minor modification of the assembly to use the device... but the claims
in the patent are almost exclusively about the assembly.

For example. The assembly is made out of wood.. One of there claims is "The
assembly is made out of wood or plastic". Another claim is "The assemble
will have holes in it". This may or may not be true of the common assembly
but you have to add holes to it if you want to use the device(mounting holes
or whatever).

There is only 2 claims out of about 50 that have anything to do with the
actual device I created and which is rather unique. All the others describe
how the pre-existing assembly is and/or interfaces with the device... but
only 2 or 3 of these actually have anything specific with the device.

It seems as if they basically patented the assembly instead of the device
which then prevents any such device from being used since it has to use the
assembly... but they did it in a very subtle way since the assembly cannot
be patented.

 

[Nico Coesel]

wrote in message


I'm sorry but that proves you don't know how a patent works.

Again asking questions you already know the answer for?

 

[Jeffery Tomas]

Again asking questions you already know the answer for?

Sounds like you are getting confused... I didn't ask what a patent was or
how it worked but about specific details. Essentially how far reaching a
claim.

Anyways, I can see you not interested in logic nor facts...

 

[Jeffery Tomas]

I'm sorry Phil but you don't seem to know much about patents either. Just
about every resource I have read has mentioned that you have to infringe on
ALL the claims. See my other post for single reference. THINK ABOUT IT!!!
If you were right then a single patent could cover everything. The claims
are all logically AND'ed together to form the complete patent.

Else I could add a single claim to some valid set of claims "... the device
exists" and by your logic it would then patent all devices that exist...
whether or not they actually infringed on the other claims or not.

Have you even read any patent claims before? If you were right then you
would see just how absurd it would be. "Claim X: The device is made of
wood". By your logic all devices then made out of wood, regardless of what
they are would infringe on such a patent.

 

[Jeffery Tomas]

It is my understanding that the patent system is not about proving patents.
They simply create a "legal" date of an invention that can be used to
"prove" when it was invented.

The people reading and granting patents don't know everything and most don't
know much except patent law. So how are they suppose to know that some gizmo
isn't a complete piece of junk or completely obvious?

They simply make sure the patent can be used legally. Then, if someone wants
to challenge the patent in a court of law later on, they can...
unfortunately like everything else lawyers get there hands on, it costs a
lot of money. I've read it costs around 500k and up to challenge a patent.

One way is to do away with such a system... Let competition determine who is
the best. Unfortunately this favors big business. Another way would be to do
a better job at defining the patent specification... from what little
research I've done it seems as long as you write something up in a certain
formal way you will get your patent. It doesn't matter if the language is
somewhat vague or it's claims are complete lunacy... as long as they follow
a certain patent logic the it will pass.

 

[Nico Coesel]

Sounds like you are getting confused... I didn't ask what a patent was or

Nope. Hint: quaternions

how it worked but about specific details. Essentially how far reaching a
claim.

Pay for a patent lawyer and hope you didn't waste your money.

 

[Don Y]

Hi Jeffery,

I'm sorry, but you guys that think you only have to infringe upon a
single claim in multi-claim patent are simply wrong....

http://www.iusmentis.com/patents/claims/

First of all, DEPENDANT claims can largely be ignored. They exist
mainly as a stopgap in case some element of the INDEPENDANT claim
ON WHICH THEY DEPEND is later ruled invalid/prior art/etc.

When trying to avoid infringement, you focus on the *independant*
claims.

"Only if a product has all these elements does it infringe the patent.
The validity of a patent is judged by comparing the claims against the
prior art."

"To infringe, each and every element of a claim must be present in the

The key words here are "of a claim". A patent can make MANY claims
of which *many* will be dependant (i.e., ignored for this discussion).

infringing product. If even a single element is missing, the product
does not infringe. It doesn't matter if the patent document says that
that single element is optional: if it's in the claim, it is required."

Notice the terms "each and every" and "all"...

Yes. The role of the patent examiner is to get the applicant to
refine his claims as tightly as possible. The role of your patent
lawyer is to get those claims to be as GENERAL as possible!

The examiner wants to add lots of qualifications to your claims.
The attorney wants to *eliminate* them.

E.g., "A shovel is a device for removing dirt" is how the examiner
would like to see it worded.

"A shovel is a device for moving material" is how your attorney
wants it worded!

The examiner's wording would allow someone else to patent a
"snow shovel" without infringing.

The attorney's wording would consider a *bulldozer* to be an
infringement!

Also, if you actually spent the time to think about it, it would be
absurd to have patents you were correct...

In general, patents only make sense if you have the pockets to
defend them. I believe the terms are way too lengthy. Nowadays,
patents should fade away much quicker as all they do is present
hurdles that you *will* find a way around (perhaps that's fostering
the goal of innovation?) Patents are a throwback to a day when
people based their *careers* on single ideas AND where it was
easier to deal with infringement.

Imagine if someone could turn out 1,000,000 cotton gins from their
"garage" and distribute them, overnight; accept payment almost
anonymously and "disappear" into the countryside before the
authorities could mount their horses...

How would *you* deal with YOUR "cotton gin" invention in that
scenario?

 

[[email protected]]

No. Claims are often arranged in chains, but not always. You can have
several independent claims, but it has to be one invention.

If it's more than one "invention" the patent examiner will simply split it
into multiples. BTDT, got paid for all. ;-)

If you don't meet all the limitations of a claim, you don't infringe any
claim that depends on it.


There are reasons for the way things are, but the USPTO's examiners are
far from perfect and have heavy work loads.

The problem is that the courts assume the USPTO are experts. You have to
prove otherwise.

Having good prior art to invalidate their patent will generally make
them quiet down--other folks may not have seen that prior art, and of
course patents are very important for company valuation in a takeover or
IPO.

When in doubt, bluff.

 

[[email protected]]

I'm sorry Phil but you don't seem to know much about patents either. Just
about every resource I have read has mentioned that you have to infringe on
ALL the claims. See my other post for single reference. THINK ABOUT IT!!!
If you were right then a single patent could cover everything. The claims
are all logically AND'ed together to form the complete patent.

Sorry, but you're wrong on all counts. Phil is exactly correct. He's been
around this block a few times.

Else I could add a single claim to some valid set of claims "... the device
exists" and by your logic it would then patent all devices that exist...
whether or not they actually infringed on the other claims or not.

If you can get the claim accepted, go for it.

Have you even read any patent claims before? If you were right then you
would see just how absurd it would be. "Claim X: The device is made of
wood". By your logic all devices then made out of wood, regardless of what
they are would infringe on such a patent.

Don't be an ass.

 

[John Devereux]

"Phil Hobbs" wrote in message news:[email protected]...

Of all claims!!! It only takes one claim not to hold to not infringe.

Why are you ignoring the advice of everyone? You are wrong. Clearly so,
since many or even most claims are mutually exclusive. Look at a few
patents, see if it is even *possible* for all claims to be true
simultaneously!

A single claim can include several clauses which all have to be true for
an infringement to occur. But each numbered *claim* stands alone.

(I am not an expert, but the people you are arguing with know a lot more
about it than you do!)

[...]

 

[Don Y]

Hi Jeffery,

I'm revisiting this subject -- avoiding the minutia of of the previous
legalese arguments -- to focus on a different, though highly related,
aspect. (and hoping not to get diverted to still more legalese)

I have a device that, by itself, does not infringe a patent, but does
when the user uses it, it is still patent infringement?

Here is very simple example

Patent Claims

1. A device that is square
2. Said device in claim 1 has a round dot on it.

Claim 1 is too silly to be even a simple example.

But, an example with a similar appeal might be worth pursuing.
(I am not even bothering to look into the exact nature of
the countless? patents that are probably in place but, rather,
speculating on a hypothetical case with real world items).

ASSUME <somebody> -- let's say Apple, just for the sake of
argument -- had patented a "Personal Media Player" (e.g., iPod).
[I am guessing such a patent, if it ever existed, is no longer
in play as PMP's have become ubiquitous and offered in a
variety of manufacturer's, etc.]

Several cases present themselves:

1) Someone writes some code for a PC (i.e., a general purpose
device) that effectively provides the same functionality
covered by the PMP patent(s)

2) Someone packages that code WITH a "stylized" PC effectively
turning it *into* a PMP.

3) Someone develops and sells a "device" (that sure looks a lot
like that PMP! -- perhaps, literally, an "iPod clone"!) sans
firmware with the full knowledge that firmware images to convert
this device into a functional PMP (NOT copyrighted images by
the original patent holder) exists AT ARM'S LENGTH -- maybe even
providing a pointer to those resources or a "service provider"
that could install them for the customer.

4) Same as #3 but the device seller writes and maintains
those images (but doesn't sell them "bundled" with the "device")

Opinions on how each of these would be handled, legally?

[Note this is a spin on the OP's comment that "the user ADDS
the dot to the device"]

 

[Michael Karas]

[This followup was posted to sci.electronics.design and a copy was sent
to the cited author.]

I have a device that, by itself, does not infringe a patent, but does when
the user uses it, it is still patent infringement?

That is, by itself, it doesn't violate all the claims when made and in fact
doesn't even have to be like the device in the patent, but can be(and is
intended) to be used like the device in the patent.

Here is very simple example

Patent Claims

1. A device that is square
2. Said device in claim 1 has a round dot on it.

My device is square but no round dot on it. I intend the user to put the
round dot on it for similar reasons in the patent so the device will be used
the right way but they don't have to and it will still function. My device
is not exactly like the patent device but very close.

The problem is, that the patented device uses some very general language and
some things that are simply almost necessary. For example. Claim: The square
is made out of wood. Well, there really is no other option. It can't be made
out of metal, moth balls, cotton candy, etc... There are only 2 things that
it can be made out of that will at all make it useful and the patent gets
them both. It would be possible to make it out of the other things to get
around the patent but then the device wouldn't be useful. Just take my word
on it.

Another example is claim 2. It is necessary for the dot because without the
dot the device can't function in any useful way. (just take it for
granted... this is just a silly example)

It would be like patenting a bolt and the dots being analogous to the
threads.. although at least that has a bit more alternatives. In my case
there is no other way since either you put the dot on and the device works
or you don't and it doesn't.

I know the example is silly but if it take it only in the context I've given
and don't try to add anything extra and think about the logic itself it
shouldn't be too hard to answer.

My guess is if I created my device and sold it I would get sued either
way(since my device is better). Even though I created my device without any
knowledge of the other and, while it is different it is also similar(but
similar because there are very few ways to do it in the first place... and
any engineer given the criteria would come up with a similar device). My
device is better as it provides more utility but, again, had to follow
certain fundamental engineering properties because it is the nature of the
problem.

Welcome to the patent world!!

 

[[email protected]]

On Fri, 02 Mar 2012 14:21:25 -0500, Phil Hobbs

On 03/02/2012 02:13 PM, Don Y wrote:
Hi Jeffery,

I'm revisiting this subject -- avoiding the minutia of of the previous
legalese arguments -- to focus on a different, though highly related,
aspect. (and hoping not to get diverted to still more legalese)

On 3/1/2012 6:53 AM, Jeffery Tomas wrote:
I have a device that, by itself, does not infringe a patent, but does
when the user uses it, it is still patent infringement?

Here is very simple example

Patent Claims

1. A device that is square
2. Said device in claim 1 has a round dot on it.

Claim 1 is too silly to be even a simple example.

But, an example with a similar appeal might be worth pursuing.
(I am not even bothering to look into the exact nature of
the countless? patents that are probably in place but, rather,
speculating on a hypothetical case with real world items).

ASSUME <somebody> -- let's say Apple, just for the sake of
argument -- had patented a "Personal Media Player" (e.g., iPod).
[I am guessing such a patent, if it ever existed, is no longer
in play as PMP's have become ubiquitous and offered in a
variety of manufacturer's, etc.]

Several cases present themselves:

1) Someone writes some code for a PC (i.e., a general purpose
device) that effectively provides the same functionality
covered by the PMP patent(s)

May or may not infringe, depending on what he does with the code and on
how the original patent is written. Could also be a target for a
continuation patent with the original spec plus a new set of claims
drafted so as to clobber it.


2) Someone packages that code WITH a "stylized" PC effectively
turning it *into* a PMP.

Probably infringes, unless the attorney who drafted the original patent
was lazy or incompetent. (There are good ones and bad ones, of course.)


3) Someone develops and sells a "device" (that sure looks a lot
like that PMP! -- perhaps, literally, an "iPod clone"!) sans
firmware with the full knowledge that firmware images to convert
this device into a functional PMP (NOT copyrighted images by
the original patent holder) exists AT ARM'S LENGTH -- maybe even
providing a pointer to those resources or a "service provider"
that could install them for the customer.

Probably induced infringement, unless the device can plausibly be
presented as having separate utility, i.e. apart from the music player
use. A cell phone probably wouldn't infringe.


4) Same as #3 but the device seller writes and maintains
those images (but doesn't sell them "bundled" with the "device")

Opinions on how each of these would be handled, legally?

Probably the same as #2.


[Note this is a spin on the OP's comment that "the user ADDS
the dot to the device"]

Cheers

Phil "still not a lawyer" Hobbs

I have a couple of extra questions....

In the end, doesn't it really come down to the decision of either a
judge or a jury after all the lawyers have argued their clients' cases
? ???

And have those of you that have been involved in patent infringement
cases noticed that the side who had the most money, (or spent the most
money on the case), had finally succeeded in winning the case ??

If one side has much better lawyers than the other, or one side runs out
of money, then that will make a difference, sure.

That's the real sad part about patents I think.

It's, perhaps, a flaw in the legal system, itself. The same holds for any
civil case and even criminal, for that matter. Your solution?

 

[Tom Del Rosso]

No. They're independent unless specifically stated otherwise. With
18 patents I've learned from my attorneys to not be too specific with
your claims... be general and sweeping... claim the whole world and
then see what the examiner disallows ;-)

You're patents are mostly owned by employers, right? So many people say
that individuals shouldn't bother with them. I suppose it just depends on
how good the idea is.

 

[Don Y]

Hi Phil,

On 03/02/2012 02:13 PM, Don Y wrote:

ASSUME <somebody> -- let's say Apple, just for the sake of
argument -- had patented a "Personal Media Player" (e.g., iPod).
[I am guessing such a patent, if it ever existed, is no longer
in play as PMP's have become ubiquitous and offered in a
variety of manufacturer's, etc.]

Several cases present themselves:

1) Someone writes some code for a PC (i.e., a general purpose
device) that effectively provides the same functionality
covered by the PMP patent(s)

May or may not infringe, depending on what he does with the code and on
how the original patent is written. Could also be a target for a
continuation patent with the original spec plus a new set of claims
drafted so as to clobber it.

OK, but see your reply to #3. Why does the cell phone "probably NOT"
infringe but the PC "may or may not"?

[Hold your comments 'til later...]

Probably infringes, unless the attorney who drafted the original patent
was lazy or incompetent. (There are good ones and bad ones, of course.)

Again, it's still a *PC* -- though possibly looking a lot more
LIKE a PMP. I.e., it still has no *set* functionality that
would allow you to claim it's a "firmwareless PMP". E.g.,
a PMP doesn't have (hardware) support for a keyboard, printer, etc.

Probably induced infringement, unless the device can plausibly be
presented as having separate utility, i.e. apart from the music player
use. A cell phone probably wouldn't infringe.

IMO (IANAL), it is this "separate utility" that gets the PC,
stylized PC, etc. "off the hook" -- that was the case I was
trying to identify in #1 and #2.

#3 I considered to be "probing the limits" of that distinction.
I.e., it starts to look less "general purpose" at this point.

Probably the same as #2.

This was intended to push #3 even further. "The defendant not only
makes a product that is a veritable clone of ours -- without the
firmware -- but also offers the firmware to those very same
customers!"

[Like selling unloaded guns and ammunition -- yet claiming you
don't sell LOADED guns... (lets not get into a "gun" discussion,
here)]

Consider how incredibly *practical* it is, nowadays, to distribute
firmware:

Buy device.
Download http://StuffIsUs.TV/product/device.firmware
Plug device in to PC.
Copy device.firmware to X:
Unplug device.

How does this interfere with the *spirit* of the law?

 

[Don Y]

It's, perhaps, a flaw in the legal system, itself. The same holds for any
civil case and even criminal, for that matter. Your solution?

Lower the effective *value* of patents. Have shorter terms
so the technology moves into the public sector faster.

When you (artifically) change the value of something, you
distort the extent to which people will work to preserve,
work-around or *cheat*. It also gives "holders" no real
incentive to push NEW products/ideas into the mainstream
(market) unless they know they are about to lose some
exclusivity from expiring protections.

I've worked at (and with) firms that very deliberately went
through a cost-benefit analysis of releasing a new product
that would compete with an existing product (of their own)
and intentionally sat on the new product until they see
sales drop -- or, a competitor entering the field (which,
sometimes, can be too late).

In fast moving fields, there's really no excuse to rely on
these sorts of protections for "generations" (when you define
a "generation" based on how quickly that *field* evolves).

 

[[email protected]]

Lower the effective *value* of patents. Have shorter terms
so the technology moves into the public sector faster.

So there is no incentive to research anything but short-term projects. No
incentive at all to expand technology, just tweak what you have.

When you (artifically) change the value of something, you
distort the extent to which people will work to preserve,
work-around or *cheat*. It also gives "holders" no real
incentive to push NEW products/ideas into the mainstream
(market) unless they know they are about to lose some
exclusivity from expiring protections.

Except that 20 years is a blink of an eye to a corporation. That's 20 years
from filing, not from commercial use.

I've worked at (and with) firms that very deliberately went
through a cost-benefit analysis of releasing a new product
that would compete with an existing product (of their own)
and intentionally sat on the new product until they see
sales drop -- or, a competitor entering the field (which,
sometimes, can be too late).

They're fools. Their competition will eat their lunch if they don't do it
themselves.

In fast moving fields, there's really no excuse to rely on
these sorts of protections for "generations" (when you define
a "generation" based on how quickly that *field* evolves).

So you think there should be a variable exclusivity period? Who decides what
the period should be? You? Obama?