Importance of configuration descriptions in a claim

Question

I am looking into a new project for which there are a few similar technologies described in patents, but nothing that includes every novel feature I have in mind. However, one of them is written in an ambiguously broad way.

For example:

I want to develop a device that has features A, B, C, D, E, and F; let's call that patent1. Yet patent2 covers features A, B, C, D, and E. However, the way claims of patent2 are written in a way that implies a certain organization of components to accomplish features A-E. Is it possible to sell a device with only features A-E if the features are configured differently?

Claim 1 from patent2 reads something like:

A device for *overall purpose* comprising:

a *Subunit1*; and
a *Subunit2*;

said *Subunit1* having:
    a *hardware1*,
    a *hardware2*,
    a *hardware3*, and
    a *software1*; and

said *Subunit2* having:
    a *hardware4*,
    a *hardware5*, and

wherein *Subunit2* can *accomplish feature A*,
and wherein Subunit1 can *accomplish features B, C, D, and E*

*Claim 2 is a method describing specific actions to use the subunits above to get features A-E"

Note: all punctuation and wording outside of ** is verbatim from the patent.

Based on how the subunits are described in patent2, can I sell a device like:

said *Subunit1* having:
    a *hardware1*,
    a *hardware2*,


said *Subunit2* having:
    a *hardware3*, and
    a *software1*; and    
    a *hardware4*,
    a *hardware5*, and

wherein *Subunit2* can *accomplish feature A, B, C*,
and wherein Subunit1 can *accomplish features D, and E*

I am assuming that I couldn't patent such a configuration, as it is probably obvious, but I am curious about where infringement standards fall on this topic. It seems to me that such a device should infringe on patent2, but the wording seems to narrowly describe the organization and (to some extent) the interconnection of components that could be avoided to achieve the same features.

I should also note that, patent2 is really an extension of other patents that cover the same concept and features A-E. The intention laid out in the description of patent2 is to add a more complex analytical package (say... feature G) on top of existing patents, yet the claims are only written to describe the necessary hardware components needed to implement that analysis. The problem is that the hardware components AND the analysis listed in the claim language are generic and not really specific to the goals of the description; feature G isn't mentioned in the claims. In my mind, they are obvious components of any solution to accomplish features A-E.

Hopefully removing the specifics of the application doesn't obscure the overall purpose of the question. I am trying to keep details of the project confidential.

Thanks!

Answer 1

Generally, yes, the configuration of the elements in a claim makes a difference in an infringement analysis. We often talk about a claim that requires an A, a B and a C but many inventions have a spring and lever and a weight but are very different things. Claims also define how the elements are interconnected and arranged. "B" could be the required relationship between A and C. To infringe, a product has to meet the "all elements" criteria and some of the elements are configurations/ inter-relationships of distinct physical things.

A semi-random claim (US9637082B2) is way more than "a mounting portion, a mechanical energy storage system, and a trigger system".

1. An actuation mechanism for releasing stored mechanical potential energy as an application force for acting on an adjacent object, the actuation mechanism comprising: a mounting portion configured for mounting the actuation mechanism to a mounting surface associated with the adjacent object; a mechanical energy storage system having a device configured for storing mechanical potential energy for displacing the adjacent object from, a first position to a second position, the release of the stored mechanical potential energy actuated by a trigger force; and a trigger system configured to provide the trigger force to release the stored mechanical potential energy, the trigger system including a trigger biasing element and a retaining element, such that destruction of the retaining element provides for the trigger force as a result of the trigger biasing element moving from a first trigger position to a second trigger position, the trigger system further comprising a destructive element for damaging a structural integrity of the retaining element, such that said release is a result of a loss of tension in the retaining element due to a decrease in the structural integrity caused by said damaging.

In your case, if the grouping of the hardware3 and hardware4 in the second subunit is actually functionally different than if they were associated with subunit 1 then you would probably not be seen as infringing.