Have you ever found yourself in a situation where a product was infringing on your patents, but you could do nothing because the product was designed to avoid infringement?

We often encounter a situation where we identify many potentially infringing products; however, these products have one or two features preventing them from completely overlapping the patent. Further, these features used to be variations of the features already available in the patent. Despite this, we can’t conclude that these products infringe the subject patent.

This happens because such products have been designed around an existing patent to avoid infringement issues. Many companies follow this practice as a counter strategy. On the other hand, this problem has troubled almost everyone in the IP industry.

The Way to Defeat Designed Around to Prove Infringement by a Product

One possible way is to file continuation applications with amended claims covering these products. This would bring such products under the scope of the patent and increase the patent’s monetization potential.

You can perform the claim amendment to expand the scope of a patent in the following ways:

Re-Analyze the Identified Products

The identified products may have few features differentiating it from the patent. Check if these features are supported by the patent description and the prosecution history. If yes, you can file a continuation having new claims covering these features. Here is an in-depth article for you to explore: how to tactically use filing continuation to increase monetization potential of your portfolio

Consider patent US8321124, claiming a tracking and security apparatus. The patent mentions that whenever the distance between two units increases, a signal is generated from either of those units. Further, in the description, US’124 discloses that the first unit can be attached to a vehicle as well: “Multiple signaling units may also be placed in various components of a material asset, for example in a cellular phone and stereo of a motor vehicle “.

Therefore, in simple words, the car would generate a signal to lock itself when the driver (with the key in his pocket) would walk away from the car.

Leading electric automobile manufacturer “Tesla” provides similar features in its cars. Now, doesn’t this concept seem similar to the one claimed by US’983? Claim variation can be filed to bring all such products into the scope of the patent.

One more embodiment in the description mentions that “Additional information may also be transmitted to the remote receiver.” Therefore, after the units are separated by a specific distance, either of them could send some additional information apart from the signal.

This similar concept is used by Aeroscout to track lost kids in amusement parks. The location directions are sent in the form of additional information. This concept can also be filed as a claim variation to bring all such products into the scope of the patent.

Identify Patents/Patent Applications

Analyze the patents/patent applications in similar technology domains filed after the priority date of the patent under study. Identify the differentiating features in these patents/patent applications. Using these features, you can file for continuations. But as stated previously, ensure the new features are supported by the patent description and the file wrapper.

Let’s again consider the patent US8321124 (Priority Date – March 31, 1999) claiming a tracking and security apparatus. The patent mentions that whenever the distance between two units increases, a signal is generated from either of those units. We noticed an application US20160119760 filed on December 29, 2015 (after the priority date of US’782) which claims tracking a mobile resource at a manufacturing site.

Both US’124 and US’760 focus on tracking. Further, the inventor of the US’124 patent can use the claimed invention of US’760 to file a continuation of US’124 covering the scope of – check if a mobile resource goes away from the destined routine. In this way, he can bring all products that overlap US’760 into the scope of US’124.

A Note From the Author

Before employing the above-mentioned solution to defeat a design around a product to prove infringement, please ensure that:

• The amended claims are supported by the description and prosecution history of the parent patent.
• There should be at least one pending patent application in the patent family to file the continuation application.

Related Case Study: This is how we proved patent infringement even when no information was available

 Authored by: Rohit Sood, Team Lead, Infringement