Infringement

[Blakeblake]

NJ.

If I own a patent with two claims:

Claim 1: A tool, including:

A) a handle (wood)
b) an anvil (metal) attached to an end of the handle; and
c) a light source attached to the anvil.

Claim 2: A tool, including:

A) a handle (wood)
b) a anvil (metal) attached to an end of the handle; and
c) means for illuminating an object to be struck by the anvil.

Accused Product:
Has a handle (durable plastic), a mallet (metal) instead of an anvil, with a lighter assembly (controls the flame and insures that flame doesn't touch the plastic handle) attached, and a switch (turn flame on and off).

Does the accused product infringe claim 1 and/or 2. How do you resolve?

 

[divgradcurl]

Is this a real situation or a homework assingment?

Does the accused product infringe claim 1 and/or 2.

Who knows? I assume the terms "wood" and "metal" are not spelled out in the claims, but are instead a "preferred embodiment" from the specification. Does the spec identify a "species" or "genus" of materials that can be used for either part? If not, were the claims ever modified or limited during the prosecution of the patent (prosecution history estoppel, plus ramifications for doctrine of equivalents)?

Same thing with "anvil." Is "anvil" a term of art known to one of "reasonable skill in the art," does it use it's "plain meaning," or does the patentee act as his own lexicographer and define "anvil" in his own way?

Claim 2(c) is a means+function claim under 35 USC 112 paragraph 6. What is the structure described in the specification for carrying out the "means?" Does it include a lighter? A switch?

In other words, if this is a real situation, the answer is, nobody can tell without doing an infringement analysis, which requires reading the patent in detail, a thorough understanding of the accused device, and more than likely, a review of the prosecution history of the patent, combined with a review of relevant caselaw.

If this is a real problem, you will need to see a patent attorney who can review ALL of the facts of the case.

 

[Blakeblake]

The structure described in the specification is a flashlight. Does this mean that the "light source" in claim 1 is limited to a flashlight or may be anything that provides light.



Who knows? I assume the terms "wood" and "metal" are not spelled out in the claims, but are instead a "preferred embodiment" from the specification. Does the spec identify a "species" or "genus" of materials that can be used for either part? If not, were the claims ever modified or limited during the prosecution of the patent (prosecution history estoppel, plus ramifications for doctrine of equivalents)?

Same thing with "anvil." Is "anvil" a term of art known to one of "reasonable skill in the art," does it use it's "plain meaning," or does the patentee act as his own lexicographer and define "anvil" in his own way?

Claim 2(c) is a means+function claim under 35 USC 112 paragraph 6. What is the structure described in the specification for carrying out the "means?" Does it include a lighter? A switch?

In other words, if this is a real situation, the answer is, nobody can tell without doing an infringement analysis, which requires reading the patent in detail, a thorough understanding of the accused device, and more than likely, a review of the prosecution history of the patent, combined with a review of relevant caselaw.

If this is a real problem, you will need to see a patent attorney who can review ALL of the facts of the case.[/QUOTE]

 

[divgradcurl]

The structure described in the specification is a flashlight. Does this mean that the "light source" in claim 1 is limited to a flashlight or may be anything that provides light.

Again, and I quote from my previous post:

"nobody can tell without doing an infringement analysis, which requires reading the patent in detail, a thorough understanding of the accused device, and more than likely, a review of the prosecution history of the patent, combined with a review of relevant caselaw."

There isn't a simple answer to this question -- it requires significant research to come up with an answer.