Changing aspect/step of system/method of patent claim to avoid infringing upon patent

Question

I recently asked some questions relating to the scope of claims in utility (specifically, technology) patents. The user "George White" then answered the following in response to question 2:

2. To infringe a claim a product must contain all of the elements of that claim. In a method claim that would mean performing all of the steps. In a system claim it would require possess all elements with those elements related to each other as defined in the claim.

I'm presuming this means that, for example, by creating a system (or method) that satisfies every aspect, except one, of a system (or method) outlined in a claim, then that new system/method is outside the scope of the patent claim (that is, it does not infringe upon the patent claim)? If this presumption is correct, then is there a requirement as to how "different" the aforementioned single different aspect must be? I know that the idea of a step being "inventive" or "non-obvious" exists in patent law; must this single different aspect also satisfy the requirement of being "non-obvious" or "inventive"? Or is it simply enough that the aspect/step be strictly different from that presented in the patent, even though it might not be "inventive"?

For a random example, imagine that a technology/device patent claim for generating some image provides a method consisting of 5 steps. The first step is that the light used in generating said image must have a power of around 8100 to 8500 (just random, unitless numbers). Let's say I then wish to manufacture a device that satisfies the other 4 steps of the method, but instead of using light of around 8100 to 8500 energy to generate the image, my device uses light of around 9000 energy. Am I infringing the patent/claim in this case?

And I think the aforementioned example suggests another interesting question: Assuming that the modified invention does not infringe the patent, then does that mean that it is itself patentable? I can't see how this would be true, since the modified invention does not include a "non-obvious" step; so, in such a case, even though it doesn't infringe upon the patent, it at the same time does not satisfy the requirements to be patented.

I would greatly appreciate it if people would please take the time to clarify this.

Answer 1

Similar questions abound on this site. For the first question:

For a random example, imagine that a technology/device patent claim for generating some image provides a method consisting of 5 steps. The first step is that the light used in generating said image must have a power of around 8100 to 8500 (just random, unitless numbers). Let's say I then wish to manufacture a device that satisfies the other 4 steps of the method, but instead of using light of around 8100 to 8500 energy to generate the image, my device uses light of around 9000 energy. Am I infringing the patent/claim in this case?

It is rare for a patent to limit an aspect of a claim to a range narrower than necessary. It happens, but usually only with patents filed and prosecuted by inventors rather than patent attorneys. Based on the description in your question, you would not infringe on that claim. However, this does not mean you don't infringe on some patent's claim. It is possible that there is another patent that claims a wider power level.

Assuming that the modified invention does not infringe the patent, then does that mean that it is itself patentable? I can't see how this would be true, since the modified invention does not include a "non-obvious" step; so, in such a case, even though it doesn't infringe upon the patent, it at the same time does not satisfy the requirements to be patented.

Non-infringement does not in any way assure patentability.

Answer 2

Answering one aspect of the question - the step or element left out of a product to avoid infringe a claims does not need to be a novel step. Claims are novel and non-obvious as a whole and leaving out any positively claimed element avoids literal infringement.

There is a claim format (Jepson or two-part) often used in the rest of the world but rarely used in the the U.S. where the "old part" is specifically admitted to be old and the "new part" is set out distinct from the admitted old part.