Patent infringement

[iassaf]

Dear Sir/Madam,

I have an invention that I am considering patenting. I did a patent search and found a patent that might be close. One of their claims has the following paragraph:

“each folding frame unit having a pivot point such that the folding frame unit is foldable from an extended position to a collapsed position allowing the upper frame to rotate towards the chassis and thereby fold the vehicle into a compact position;”

My invention needs at lease three pivot points to works. Their invention, as described in their patent and illustrated in their drawings can only work with one pivot point.

My question is:

1- Am I infringing? When they claim a pivot point (as in the above), does that mean a single pivot point or at least one pivot point?
2- Can I file a patent with my claim reading “at lease three pivot points” rather than "a pivot point"?

Thank You,

Imad

 

[CraigFL]

This is a tough one without knowing the whole picture. Have you looked at every patent referenced by that one? And maybe even the references for the references to see if there is something like yours. For example, if your invention is a folding chair, you might find you used the patented mechanism from a foldable hot-plate that works exactly the same way...

 

[iassaf]

Hi Craig,

There is nothing similar to my mechanism in the prior art. I think the whole issue revolves about the meaning of "a pivotal point", if it means a single pivotal point, then mine with three pivotal points is not infringing. If it means at least one pivotal point, it becomes a whole new game.

In the previous paragraph of the same claim (of their patent) they are using "at least one" for a different component of the invention. Giving this, I am assuming "a pivotal point" means a single pivotal point, otherwise, they would have used "at least one pivotal point" In addition, their describtion and drawings support only one pivotal point.

What do you think?

Thanks,

 

[divgradcurl]

1- Am I infringing? When they claim a pivot point (as in the above), does that mean a single pivot point or at least one pivot point?

First off, there is absolutely no way for anyone to make any sort of reasonable assessment of whether or not you are infringing without understanding your product, and reading the patent, along with it's prosecution history.

Second, "a pivot point" is generally construed to mean "at least one pivot point." In other words, even something with three or five or a hundred pivot points has "a" pivot point as well.

Now, if it said "a single pivot point" that would mean one.

Whether or not the claim can be limited to the preferred embodiment -- which is what you are describing when you say that the pictures all show one pivot point -- can only be determined by reviewing the patent and its prosecution history in light of current caselaw. Caselaw overwhelmingly disfavors limiting a claim to a preferred embodiment, but there are some narrow exceptions to the general rule. There also may be express limitations made in the prosecution history, which is why it is important to consider that as well when analyzing potential infringement.

EDIT: Enablement is another path to consider, but lack of enablement is a tough road to follow because the burden of proof -- clear and convincing evidence -- is high. The other issue is what types of claims are these? If they are means-plus-function claims, or step-plus-function claims, you generally DO limit the claims to the embodiments shown in the specification. Apparatus, system, method and process claims are generally not limited to the preferred embodiment.

2- Can I file a patent with my claim reading “at lease three pivot points” rather than "a pivot point"?

Yes, but you would have to be able to show why this current patent is not prior art -- which will require the same sorts of analysis as determining infringement.

 

[iassaf]

Thank you very much.

The patent is for a folding mechanism of a bicycle trailer. As I don't have much money, I did my own write up and filed for a provisional.

The existing patent claim is the following (important part in bold):

"A folding transport vehicle comprising:

a lower chassis defining substantially a lower limit of a cargo compartment and having a first end;

an upper frame, formed of at least one elongate member and defining substantially an upper limit of the cargo compartment, the upper frame being pivotally connected to the chassis adjacent the first end;

at least one folding frame unit, each folding frame unit having a first end and an opposite end, the first end of each folding frame unit being pivotally connected to the chassis and the opposite end of each folding frame unit being pivotally connected to the upper frame,

each folding frame unit having a pivot point such that the folding frame unit is foldable from an extended position to a collapsed position allowing the upper frame to rotate towards the chassis and thereby fold the vehicle into a compact position; and,

a displacement means. "


1- The way I understand this claim is that the folding unit is of two parts connected by a single pivot point. Correct?

2- The structure of the folding frame unit is not described, would this be considered means plus function or step plus function and thus limited to the description and illustrations?


My mechanism can be described and potentially claimed as follows (important part in bold):

"A folding transport vehicle comprising:

a lower chassis defining substantially a lower limit of a cargo compartment;

an upper frame, defining substantially an upper limit of the cargo compartment and being pivotally connected to the lower chassis;

at least two pivotal brackets, each pivotal bracket allows for rotation about at least two axis, at least one pivotal bracket is pivotally connected to the upper frame and at lease one pivotal bracket is pivotally connected to the lower chassis;

at least one folding frame unit, each folding frame has a first end, an opposite end and at least one pivot point between the two ends, one end of each folding frame is pivotally connected to the pivotal bracket connected to the upper frame and the other end of each folding frame is pivotally connected to the pivotal bracket connected to the lower chassis;

a displacement means,"


3- My mechanism has two extra components (pivotal brackets) that add two extra pivot points. Even if somebody is to argue that the pivotal brackets are part of the folding frame unit, then my folding frame unit will have four essential components and at least three pivot points. Based on this, what do you think? Am I infringing?

I really appreciate any help!

Thanks,

 

[divgradcurl]

1- The way I understand this claim is that the folding unit is of two parts connected by a single pivot point. Correct?

No. The claim requires "at least one folding frame unit" and each "folding frame unit" has a pivot point. The is no limit to how many "folding frame units" the claim covers, and therefore no limit how many pivot points a trailer might have.

That, and like I said, this language does not preclude having more than one pivot point per folding frame unit. If a folding frame unit has 2 pivot points, then it also has "a" pivot point.

2- The structure of the folding frame unit is not described, would this be considered means plus function or step plus function and thus limited to the description and illustrations?

No. See 35 U.S.C. 112, paragraph 6. Means (or step) plus functions claims require certain language, and are written in a certain format, which this claim is not. This is a regular apparatus claim.

Again, you really can't determine infringement or not without really delving into all of the actual facts of the situation. What you might want to do is take a look at the prosecution history of the patent in question, and see if the applicants made any express limitations to a single pivot during the prosecution of the patent.

 

[iassaf]

Hi,

1- In my first question, I was referring to each folding frame unit (I understand there could be more than one). The way the claim describes only first end, opposite end and pivot point, means a structure of two pieces connected by a pivot point. If it had more pivot points, it will have more pieces in the structure. Correct?

2- Is the way I am describing/claiming my mechanism infringing on their claim?

3- How do I obtain the prosecution history of the patent?


Thanks again,

 

[divgradcurl]

1- In my first question, I was referring to each folding frame unit (I understand there could be more than one). The way the claim describes only first end, opposite end and pivot point, means a structure of two pieces connected by a pivot point. If it had more pivot points, it will have more pieces in the structure. Correct?

Again, the use of the term "a" does not necessarily limit the claim element to only a first end, opposite end and pivot point. The real question here is whether "having" is a "open" or "closed" group. If it is an "open" group, then this claim elements means "at least one." If it is a "closed" group, then it means "only one." You need to look at the specification in detail, along with the prosecution history, to determine whether or not this is a closed or open group. See MPEP 2111.03:

"Transitional phrases such as "having" must be interpreted in light of the specification to determine whether open or closed claim language is intended. See, e.g., Lampi Corp. v. American Power Products Inc., 228 F.3d 1365, 1376, 56 USPQ2d 1445, 1453 (Fed. Cir. 2000) (The term "having" was interpreted as open terminology, allowing the inclusion of other components in addition to those recited); Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l Inc., 246 F.3d 1336, 1348, 57 USPQ2d 1953, 1959 (Fed. Cir. 2001) (term "having" in transitional phrase "does not create a presumption that the body of the claim is open"); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1573, 43 USPQ2d 1398, 1410 (Fed. Cir. 1997) (In the context of a cDNA having a sequence coding for human PI, the term "having" still permitted inclusion of other moieties.)."

2111.03 Transitional Phrases [R-3] - 2100 Patentability

2- Is the way I am describing/claiming my mechanism infringing on their claim?

You are asking for a legal opinion here. If you want a legal opinion, you need to hire an attorney. Nobody can say whether or not you are infringing without looking at all of the facts of the situation.

3- How do I obtain the prosecution history of the patent?

Go to Public PAIR on the the USPTO website: United States Patent & Trademark Office

One you have entered the patent number in question, you may have one of two choices. There will be a hyperlink in the upper righthand corner of the page (among other links) that says "order certified file wrapper" -- by clicking on that link, you can order a full prosecution history. I don't know how much these cost or how long they take, we always use a service, like Metropatent, to order our prosecution histories.

There may also be a tab entitled "image file wrapper." If there is, you can go there, and you can download (individually or as a group) all of the documents in the file wrapper for free, and create your own prosecution history from that (note that the term "file wrapper" and "prosecution history" in this context means the same thing).

Not all prosecution histories are available via an "image file wrapper" link -- for those that are not, you will need to order (and pay for) the prosecution history.

I guess if you live in Virginia or Maryland, you could also physically travel to the USPTO in DC and obtain a file wrapper directly from the help desk there.

 

[iassaf]

Thank you very much.

The patent was filed in 1995 as a continuation of a patent filed in 1993. I can only order a paper file wrapper (no image file wrapper). It costs $225 and takes 25 days to ship (each). Do I need to order file wrapper for the two patents or the recent one will include the previous one?

I live in Canada. Due to lack of funds, my plan was to write the patent my self then give it to a lawyer to double check. I have generated drawings, specifications and some claims. This infringing issue was unexpected. I need professional help in determining if “having” in this patent is an “open” or “closed” group. Are you qualified to help in this? What would your rates be?

Thank You,

 

[divgradcurl]

Thank you very much.

The patent was filed in 1995 as a continuation of a patent filed in 1993. I can only order a paper file wrapper (no image file wrapper). It costs $225 and takes 25 days to ship (each). Do I need to order file wrapper for the two patents or the recent one will include the previous one?

I live in Canada. Due to lack of funds, my plan was to write the patent my self then give it to a lawyer to double check. I have generated drawings, specifications and some claims. This infringing issue was unexpected. I need professional help in determining if “having” in this patent is an “open” or “closed” group. Are you qualified to help in this? What would your rates be?

Thank You,

A file wrapper only covers one patent, so you would need a file wrapper for each patent.

Your best bet is to go to the USPTO website, click on patents, then "find an attorney or agent" and then search for someone to help you out. You may find it difficult to find someone to just "look over" your application, but if you check around, you might be able to find someone. And generally an agent will be cheaper than an attorney, but now always. You might also want to use Google to search for agents that specialize in working with solo inventors.

Yes, I am qualified to do the work, but I work for a law firm, and cannot take matters without going through my firm. My firm doesn't really do patent prosecution work, so I wouldn't be able to help you out, sorry.

 

[iassaf]

No worry, you helped a great dea.l

One last question:

Usually a pivot connection is a connection that turns about a fixed axis. Can a pivot connection meaning, in a patent, extend to include universal joints or ball and socket joints?

Thanks again,

 

[divgradcurl]

No worry, you helped a great dea.l

One last question:

Usually a pivot connection is a connection that turns about a fixed axis. Can a pivot connection meaning, in a patent, extend to include universal joints or ball and socket joints?

Thanks again,

It depends on what exactly is enabled in the specification, along with any limitations in the prosecution history and what one of ordinary skill in the art would believe was meant by the term "pivot."

 

[iassaf]

I lied; I have two more general questions. I hope you don't mind.

1- In the patents I am referencing, there is the independent claim then there are lots of dependent claims that I think are useless. For example,

- The unit in claim 1 where the frame is made of aluminum.
- The unit in claim 1 where the displacement means are wheels.

These independent claims are described in the specifications so nobody can patent them. I don't they provide any value. Am I correct or they serve another purpose?

2- Does the number of cited references (patents) affect the cost of the patent?

Thanks Again,

 

[divgradcurl]

I lied; I have two more general questions. I hope you don't mind.

1- In the patents I am referencing, there is the independent claim then there are lots of dependent claims that I think are useless. For example,

- The unit in claim 1 where the frame is made of aluminum.
- The unit in claim 1 where the displacement means are wheels.

These independent claims are described in the specifications so nobody can patent them. I don't they provide any value. Am I correct or they serve another purpose?

Dependent claims have several uses. During the prosecution of the patent, if the independent claims are found to lack novelty, for example, sometimes they can be combined with one or more dependent claims to create a new independent claim that is novel, although narrower than the original claim.

Dependent claims can also be used to clarify what exactly is being disclosed by the patent.

Finally, dependent claims can be used to save a patent during litigation. One of the defenses against patent infringement is that the patent itself is invalid -- however, to invalidate a patent, you have to invalidate each and every claim separately. There may be a case where, in a lawsuit, a narrow dependent claim is infringed along with a broader independent claim -- even if the independent claim is invalidated, if the dependent claim cannot be invalidated, then the infringement case survives.

2- Does the number of cited references (patents) affect the cost of the patent?

Thanks Again,

Not directly. If you have enough references so that you need to file multiples IDS's, each IDS has a fee associated with it. But you don't get charged by the reference.