Designing around without playing around


Hitting the Patent Wall         
Often, there comes a time, during the development of a new product, when a prior-art search reveals that someone obtained a patent for an aspect of the product, and the development process hits the patent wall. In such cases, the developer has numerous options: from abandoning the product altogether; obtaining a license from the patent holder; applying to revoke or cancel the patent; purchasing the patent; launching the product anyway and risking being sued for patent infringement. The disadvantages of all these options are that they are costly and usually require revealing information regarding the development of the new product prior to its launch.

Going Around the Wall
Another way around such a problem is by applying a development process known as “designing-around”. This process entails harnessing the inventive thought that brought the developer to hit the patent wall, to find another solution to the same problem. A solution that would be sufficiently different in order to avoid falling into the claims of the patent, thereby circumventing that patent.  This process is frequently easier said than done.

Not Going Around in Circles
Patent laws do very little to define what difference between a product and the invention claimed within the patent will be enough to avoid infringement. Courts around the world repeatedly ruled this is not quantifiable and must be decided on a case by case basis, usually after lengthy and costly trial. Judicial doctrines such as “equivalents” and “variants” have been developed to ascertain whether an allegedly infringing product genuinely employs a different technological solution than the one covered by the patent, or whether the product utilizes the essence of the patent-protected invention, with changes that are insignificant or merely “cosmetic”. Whereas engineers and developers can easily understand the need to design a product that is built and functions differently from a competitor’s product as they have a reference of what is in existence, it is often insufficient in order to avoid patent infringement. This is because patents usually cover more than one embodiment of the invention and as such include more than the description of a specific product. Therefore, in order to successfully design-around a patent, it is recommended to have the design and development team work together with professionals versed in reading, understanding and interpreting patents both technically and legally.

Case Study
In one case, the client’s competitor had a patent-protected product which included two components pushed away from one another by a spring. In an attempt to design the client’s product around that patent, the client’s engineers suggested using some sort of rubber element instead of a spring. Luckily for the client, he had sought clearance (“freedom to operate”) opinion from his legal advisors and upon inspection of the patent itself, it was revealed that while the description of the invention’s embodiment in the patent indeed described utilizing a spring, the claims of that patent were phrased to cover any elastic material or substance. Understanding the patent’s claims as well as their limits (i.e., the substance requirement), gave way to a solution of not using any material or substance at all, but instead relying on the repelling force of magnets to push the two components away from one another. That alone would not suffice to avoid the patent claims, as, under the doctrine of equivalents, it is not enough to simply substitute one element for another. Yet, in that case, the use of magnets had the extra benefit of saving the need for a room for a spring or a substance between the two components. Thus, the variation between the client’s product and the competitor’s patent was more than a mere equivalent.

The interdisciplinary approach
The above example illustrates the importance of an interdisciplinary approach to designing-around a patent and the benefit of consulting with legal and patent experts during the design-around process.
Having the patent in question well studied by patent professionals who can “translate” its claims to the engineers and developers, can save a lot of trial and error as well as much more costly infringement litigation.