Patented Product and Accessories

Gerry E...

Of course no professional can render an opinion on your question without seeing your product and the patent. But assuming that your statements are accurate, it is possible to respond to the generalities you ask about. There is no principle of U.S. patent law that "ANY device that is made for use with his invention and sold without his permission would consitute infringment." To assert an infringement, the owner of the patent would need to point to at least one claim of the patent that recites subject matter that would be performed or constituted by the accused product. That said, I would point out that how patent claims are "construed" legally is a complex and artful task, called "claim construction," which the courts keep tweaking in a series of published decisions. Thus it would be wise for you to consult a patent attorney, who would be up to date on the principles of claim construction and could advise whether or not your product would infringe the patent in question. To speculate further, I wonder whether the patent owner is confused about the doctrines of "contributory infringement" and "inducing infringement" which are set forth in the patent law at 35 U.S.C. sec. 271. If someone sells a component of a patented invention or instructs a customer to use a product in a way which infringes a patent claim, then one of those forms of indirect infringement could be implicated. However, there cannot be an instance of indirect infringement without an act of infringement of a patent claim. It is also true that a patent claim can sometimes be infringed even if the conduct in question is not literally within the language of a claim. This would take place under the "doctrine of equivalents" wherein the infringing conduct is close to what the claim recites and is different from it by "mere inconsequential differences." Even so, it is possible that arguments and amendments made to the Patent Office while the application was pending could have limited the applicability of the Doctrine of Equivalents in this particular patent. You also ask about "misuse" of the patent. The U.S. Supreme Court established the patent misuse doctrine in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917). Its application lies at the intersection of patent law and antitrust law. Coincidentally, I served for six years as a trial attorney with the Antitrust Division of the U.S. Department of Justice, and am familiar with the pertinent issues. I would of course need to know more facts before advising anyone in that regard.

Nancy D...

I'd need to take a look at the patent in question to render an opinion as to whether your strap used with it infringes. You're welcome to contact my office to discuss this matter. THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.