What is utility patent infringement?
What makes a product noninfringing? When it comes to utility patents, what modifications would help your products avoid infringement? Let’s delve into how to win the noninfringement argument for utility patents. For design patents, see my post on design patent infringement.
Need to argue utility patent noninfringement? Contact US patent attorney Vic Lin at 949-223-9623 or email vlin@icaplaw.com to explore how we can show your products do not infringe a particular utility patent.
Noninfringement Begins With Independent Claims
Infringement of a utility patent requires that at least one independent claim “reads” on an accused product. This means that everything recited in an independent claim is found in an accused product.
A product that contains a feature in a dependent claim, but not everything in an independent claim, would not be infringing.
Would you infringe my hypothetical utility patent?
Let’s use an example to explore how utility patent infringement works. Suppose I own a utility patent with the following independent claim:
A chair, comprising:
- a backrest;
- a seat; and
- three legs.
To infringe, the product must have at least all of the above claim elements. If the product has additional features, it is still infringement. Noninfringement would require that at least one of the above claim limitations is missing in the product.
Suppose Competitor A wants to sell a chair with a backrest, seat and 4 legs. Would this product infringe my patent? Yes, because the chair has all of the claim limitations. The claim limitation of 3 legs is found in a product that has 4 legs.
Think of “comprising” as meaning at least. To infringe, the product must have at least all those things that follow “comprising” in the claim.
Suppose Competitor B wants to sell a chair with a backrest, seat and 2 legs. This product would not infringe because it fails to include at least 3 legs.
Competitor B may also want to sell a stool with a seat and three legs, but no backrest. Such a stool would not infringe because it is missing a backrest.
Why is utility patent infringement so expensive to determine?
As illustrated above, you cannot simply eyeball a product to see if it infringes a utility patent. Each limitation of the independent claim must be analyzed and compared to the accused product.
If the patent is asserting multiple independent claims, then this technical analysis must be repeated for each additional independent claim.
What if a product avoids a first independent claim, but contains all the features of a second independent claim?
A product is infringing if it contains all the features, or “limitations,” of just one independent claim. This means that every independent claim must be studied.
It is possible for a product to avoid a first independent claim, but still be infringing if it contains all the claim limitations of a second independent claim. To avoid infringing a utility patent entirely, your product must circumvent all independent claims in the patent.
Noninfringement Analysis: Every Independent Claim Must Be Analyzed
Let’s say that you are thinking of launching a new product. For peace of mind, you want to know if your new product would infringe a particular utility patent with three independent claims.
Is it enough to determine that your product does not infringe Claim 1, namely, the first independent claim? No. Every independent claim must be studied and compared to your product.
To arrive at a conclusion of noninfringement, your product must avoid having all the limitations of each independent claim in the utility patent.
Noninfringement of Dependent Claims
The noninfringement analysis begins and ends with the independent claims in the following sense. If your product does not infringe the independent claim of a claim set, then your product logically will not infringe any dependent claims in that set.
In other words, if your product omits a required feature recited in an independent claim, then you need not analyze the claims dependent thereon. You would, however, need to analyze any other independent claims as discussed below.
How to Win An Amazon APEX Utility Patent Case
To win an Amazon APEX patent case, you need to focus on the sole independent claim being asserted against your ASINs. A thorough line-by-line claim chart should be prepared to show how one or more claim limitations are missing in your accused products.
Literal Infringement vs. Doctrine of Equivalents (DOE)
You can write a whole book on the Doctrine of Equivalents, so let me share a short helpful tip. It is possible to avoid literal infringement by omitting at least one limitation recited in an independent claim. However, there is still the risk of infringement under this doctrine.
One test is whether your product has replaced the required claim feature with a substitute that provides the same function, way and result. A detailed study of the prosecution history of a patent (aka file history) can shed light on what may or may not be considered equivalents.
In my hypothetical patent above, suppose Competitor C wants to sell a chair with a backrest, seat and two legs. However, the backrest has an extension that goes beneath the seat and touches the ground. Is this extended backrest an equivalent of my third leg?
Arguments can be made on both sides. My point is not to answer the question, but to make you aware of this gray area.
Need to Show Noninfringement?
Contact US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you argue that your products do not infringe a utility patent being used against you.
