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I have a question regarding how “close” a product can be in terms of IP infringement in the US and the use of language in a claim.

We make a specific kind of paracord / kernmantle. This includes additional cores of Jute tinder material, woven line (for fishing and emergency suturing) and copper wire.

We have been told to cease trading this product as it infringes on IP in the USA.

The IP holders IP states in the Claims section of their IP that do not apply to our product. For example:

IP CLAIM: “a continuous full-length strand of abrasion-resistant and clear and transparent nylon or fluorocarbon monofilament and added to said core”

OUR VERSION: Does not contain clear monofilament line. It is a tightly woven additional thread.

IP CLAIM: “the abrasion-resistant and transparent nylon or fluorocarbon monofilament has at least a fifty pound test rating.:

OUR VERSION: As above - There is no monofilament, the breaking strain is less than 50 lb

IP CLAIM: “a continuous metal wire that runs inside the full-length of the improved woven mantle sheathing; wherein the mantle further provides electrical insulation for the continuous metal wire.

OUR VERSION: This is correct - we have a continuous metal wire running through the length - however….

IP CLAIM: “a plastic coating applied to the surface of the continuous metal wire, and protecting the material from corrosion, and for mitigating any wire breaks; wherein the plastic coating further provides a degree of electrical insulation for the continuous metal wire.”

OUR VERSION: Our wire is NOT covered in a protective coating of any kind.

The Claims section then broadens out in language toward the end to state:

at least one strand adapted for fire-starting and tindering; at least one strand adapted for inclusion in a fishing line, leader, and tippet; a number of strands in combination adapted for roping with at least a 550-pound breaking strength; and a single woven covering that sheaths the above together into a single pliable cord; a single length of the whole is twisted, looped, knotted, and otherwise fashioned into a bracelet adaptable to the wrist of a user; and a strand of metal wire included within said single length.

The patent then further broadens in the description stating:

“      Although the present invention has been described in terms of the presently preferred embodiments, it is to be understood that the disclosure is not to be interpreted as limiting. Various alterations and modifications no doubt become apparent to those skilled in the art after having read the above disclosure. Accordingly, it is intended that the appended claims be interpreted as covering all alterations and modifications as fall within the “true” spirit and scope of the invention. “

I have been told that “In order to infringe on a claim, your device must include each and every element of the claim.”

If this is true, then the CLAIMS area is the critical part - however, the claims goes from very specific for example from a metal wire covered in plastic - through to a “metal wire”

Am i infringing on this patent? If the patent issued has language in the claims section that goes from specific to broad - which one applies?

Really appreciate any advice you can give me.

  • It would be helpful if you would list the patent you are accused of infringing instead of just fragments of claims. – Eric Shain Jun 15 '17 at 12:04
  • @EricShain from searching for that part of the claims: us9528204 – DonQuiKong Jun 15 '17 at 12:42
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First of all

We have been told to cease trading this product as it infringes on IP in the USA.

This is the part where I tell you to get a lawyer. What I'm providing next is my opinion, but if I'm wrong, you're the one with the problem and furthermore, I don't know anything more about your situation than what's in the question, there could be something crucial which you didn't recognize as crucial.

That said,

“In order to infringe on a claim, your device must include each and every element of the claim.”

is true. (Equivalents might infringe too though) If your product implements all limitations of any (so not all , one is enough) claim, you are infringing the patent.

Claim language is normally as broad as the patent holder could get it through the examination. The description is used for defining purposes if necessary and to some extent, but at that point we're deep in a lawsuit, so please don't try to interpret a claim yourself. If you are sure that there are parts in every claim which your product does not implement (and it sounds like you are from the question), then chances are, you are not infringing that patent. there might be others though.

So, what to do? Again, get a lawyer. But for starting, you could try talking to the opposing party and asking them why they think you infringe their IP if your product doesn't insert argumentation.

You should also know that time is playing against you if you are, in fact, infringing. If you ignore such allegations or stall them, you can be found guilty of willfull infringement - that means treble damages (You pay 3x what you would have without if you lose a lawsuit).

The right way is to get a non-infringement-opinion by a patent professional (lawyer) and then -unless your attorney advises differently - send that to the other party. The non-infringement-opinion should have a detailed argumentation why your product is not infringing the patent. This will also serve as a defense against a willfull infringement claim because then you can say you were sure you did not infringe. It should cost some thousand dollar, unless the case is for some reason very difficult, then it might be a few more.

  • Many thanks for the excellent - and swift (!) response. Product sales have been put on hold whilst I sort this out. Your idea on getting in touch with them and asking to explain how they think I am infringing on them when some of the claims don’t match up is of course an excellent one. I will start here. I am curious as to why the claims made in the IP move from very specific items, then closes with a much broader, all encompassing statement. Is this normal? If the broad claim is accepted as given in the IP then this makes the specific claims somewhat surplus to requirements? – James Jun 15 '17 at 10:21
  • A good answer, though I am rather concerned by the suggestion that you should explain to the patent owner why you believe you don't infringe. I can only see that that would be used against you, without any clear benefit. Moreover, I would be strongly averse to sending a non-infringement opinion to the other side: that essentially invites them into seeing exactly what your defence looks like, allowing them to strengthen their position, and waives your attorney-client privilege. In my view, when this happens, the alleged infringer should say nothing except through their attorney. – Maca Jun 15 '17 at 10:33
  • That said, I may just be cynical, and perhaps the patent owner is proceeding in good faith, such that a friendly chat is all that is needed. But plan for the worst etc. – Maca Jun 15 '17 at 10:35
  • @James yes, the dependent (the narrower) claims are .. well .. not really important. And what Maca says is important too, you cann call them to chat and ask why you would infringe if you don't have this and that, but be careful with anything written and with talking too much. – DonQuiKong Jun 15 '17 at 10:40
  • @Maca If the non-infringement opinion is good, it should stop them from suing you (in theory). And they will know your defense once they sue you anyways. In my opinion - and if you are without doud not infringing - that's a valid strategy. But that should be decided by or with an attorney that knows the whole case. – DonQuiKong Jun 15 '17 at 10:43
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You need to take each claim separately and in its entirety. For example the first claim:

  1. An improved kernmantle cord, the improvements comprising:

    an improved kern that includes:

    a plurality synthetic thread fibers braided into a parallel number of yarns that principally make up a core;

    a continuous full-length strand of jute twine fiber tinder waterproofed with paraffin-wax and added to said core;

    a continuous full-length strand of abrasion-resistant and clear and transparent nylon or fluorocarbon monofilament and added to said core;

    and an improved woven-thread mantle sheathing that is widened and supplemented along its continuous full-length and that accommodates additional threads that increase the diameter of the improved kern, and without significant gaps between threads in the mantle sheathing that would otherwise expose or allow parts of the improved kern to extrude, and environmental protection from abrasion and pliability of the improved kern.

Notice that claim one doesn't include the continuous wire. Claim 2 is dependent on Claim 1 and added the continuous wire without an insulating protective coating. Perhaps the most problematic claim is claim 10:

  1. A paracord, comprising:

    at least one strand adapted for fire-starting and tindering;

    at least one strand adapted for inclusion in a fishing line, leader, and tippet;

    a number of strands in combination adapted for roping with at least a 550-pound breaking strength; and

    a single woven covering that sheaths the above together into a single pliable cord;

    a single length of the whole is twisted, looped, knotted, and otherwise fashioned into a bracelet adaptable to the wrist of a user; and

    a strand of metal wire included within said single length.

This claim doesn't mention the monofilament line although it mentions a strand adapted to fishing, etc. It also doesn't specify the protective coating on the metal wire.

The point of my parsing the claims, is that reading and interpreting claims is tricky and you really need an attorney to help you deal with this. My own preference is to have your attorney contact the party claiming infringement, but I understand this may cost a bit more.

  • Many thanks for all the feedback guys - I have a solid footing for going ahead now. One more thing - the IP holder is about to be issued IP here in Europe, assuming this goes ahead - would I be potentially liable for all retrospective sales and so on in the UK PRIOR to the time the IP is made legal in the UK and Europe? Or just liable for any infringements from the time of the IP being issued in the UK and Europe? – James Jun 16 '17 at 16:43
  • @James you might consider either asking that as a new question or editing your current one. Also please consider accepting one of you answers. – Eric Shain Jun 17 '17 at 2:27
  • @James make that a new question and also ask what you can do against that patent being issued, there are some possibilities before and short after issuance that you do want to know about – DonQuiKong Jun 17 '17 at 8:05

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