I would like to get a better understanding on how infringement is determined in case of combined claims. Specifically I am confronted with a pending patent combining methods A and B in the following wording I abstracted out of the claims document:
A method for [goal], [hardware], the method comprising steps of [hardware operation], doing [subgoal1] by [method type], wherein [A] is used as [method type] for [subgoal1] that has property [a], doing [subgoal2], wherein [subgoal2] is done by [B], [subgoal3], output the result.
The method for [goal] according to claim 1, characterized in that in the step of [subgoal1], [A] is used as [method type].
- A system for [goal], [hardware], [more detail of hardware], configured to [copy of wording of claim 1 from [hardware operation] to the end].
Important thing here is that neither A nor B is novel. Also the hardware setup is nothing special. The combination of A and B is IMO obvious but that may be debatable. Same for the application idea, i.e. to use it for [goal]. The only novel thing is the insight that B is workable on top of A at all due to property [a]. In any case, only the combination [goal], A and B can be patentable then I suspect...? There is prior work (?) in form of a master thesis, since years ago disclosed at arxiv, using A and C to achieve [goal], yes precisely the same [goal] as in claim 1. However, C is overly complex because it does not exploit property [a] specifically. I suspect the inventors are not aware of that document as they did not cite it. There is various further work using A and X to achieve [other type of goal, yet in the same application field], none of it cited by the patent. This makes me think that claim 2 is highly questionable.
First question: Would "A and C to achieve [goal]" form prior art for claim 2? Am I right in thinking that it would not form prior art for claim 1 because C is replaced with B?
Second question: I researched a method doing A and D, where D requires property . If I ever decided to use this method beyond research and teaching, would that infringe claim 1?
I think it would likely infringe claim 2, which is why I am curious whether claim 2 could be invalidated due to prior art "A and C to achieve [goal]".
Third question: Would a method doing A and D infringe claim 2?
I also researched a method [A2] that would also yield property [a]. Assuming that [A2] is sufficiently distinct from [A] such that it would not violate claim 2 on its own, would the approach "A2 and D" infringe claim 1? More provocatively, would "A2 and B" infringe claim 1? I.e., how protective is the hint on property [a] in claim 1, especially given that neither A nor the knowledge that it has property [a] is novel?
Fourth question: Claim 8 seems to do nothing else than protecting it as a system in addition to claim 1 which protects it as a method. How would this affect answers to my previous questions?
I know that a safe answer requires consulting a patent attorney and can easily cost thousands of euros. I aim to understand and confirm as much as possible by myself with the goal to either make the consultation as efficient as possible or to submit a third party objection on my own.
If an answer requires further detail, what detail would be important? Basically I appreciate every hint, partial answer, etc.
The pending patent is filed in US and Europe. I am more interested in the Europe case if answers would much depend on this distinction. However also US-answers are welcome of course.