Patent infringement on a very simple invention?

Question

Our competition has patented a very simple device. Its prior art was a coffee spoon with a hook on the end, to hang it over the edge of a cup. The invention modified the spoon a bit (shape is bent, bottom part is made rectangular, measuring scale is added on bottom). The device is used to scoop out a specific supplement and hang it over a cup, to make the supplement dissolve.

Their patent includes an independent claim (regarding the device itself), and several dependent claims (one of which lists the method for scooping the supplement).

Can we make and use a very similar device, for the same result (without patenting it)? Can we claim that: their invention is obvious & non-novel? A spoon with a hook has been invented before. A ruler has been invented before. A bent spoon has been invented too. However all these weren't combined before, and they weren't used for this specific supplement before.

Here is the US9903747 link from google patents:

Answer 1

Here is claim 1 of US9903747

" A combination of a container which contains a paste-like or sticky substance and a device for dispersing a quantity of the paste-like or sticky substance to dissolve in a liquid, comprising:
a first container of mineral pitch resin; and

a device for dispersing

a measured quantity of the mineral pitch resin from the first container to dissolve in a liquid, the device comprising

an elongate member

having an outer face, an inner face, and opposite first and second ends;

an outwardly directed hook at the first end of the device for

suspending the elongate member from the rim of a second container into the interior of the second container;

the elongate member having a

metered collection portion adjacent the second end configured for collection of an amount of mineral pitch resin from the first container, whereby the collected amount is adhered to the collection portion prior to dispersing of the collected mineral pitch resin into a liquid in the second container;
and the elongate member having a scale marking at least on the inner face and spaced a predetermined distance from the second end for indicating an amount of mineral pitch resin adhered to the collection portion between the scale marking and second end. "

In order to infringe a claim your product must have all of the elements called out in the claim. I tried to break down the claim so you can see its parts. Do you have a scale as-described? A metered area? Is your device used with a mineral resin?

You getting a patent on your special version of this does not affect what it takes to infringe a patent. Having a patent lets you stop others, it does not give you permission to do anything. So if your device is a patentable improvement of their device, it might still infringe their patent

Answer 2

Could you put the patent number out? The link goes to a medical patent, in which I don't see what you are describing.

Nontheless, I will give you some pointers on what you can consider.

You could be potentially infringing the patent, even if you substitute one element of the granted claims and that substitution has substantially the same function of the element and achieves substantially the same result via substantially the same way. If you have found a way to work around this, let us know.

You can file a request for post grant review and Inter parte review (time procedures apply, check USPTO). If you feel the patent has been issued despite glaring prior art out there, I recommend you to use these avenues to challenge the grant of these patents. It is far less expensive than blowing this up in court.

Gather your prior arts - patents or other research papers- and take it up with the USPTO. Remember you can use one (102) or multiple documents (103) to prove your point.

Remember, intent is a powerful concept in the US, and if caught infringing you may have to pay damages as well as potential attorney fees.

One strategy you could use, is if you find a damning prior art, share it with the patent counsel of your competitor. You can leverage a reasonable license (maybe even free) to avoid lengthy legal costs because nobody wants to go to court honestly.