Is it possible for a ridiculously simple invention to infringe an existing patent?

Question

When searching if there was a patent covering this product: https://www.frownies.com/collections/facial-patches/products/facial-patches-forehead-between-eyes

... which is basically a piece of tape to put on your face, I found this patent: https://patents.google.com/patent/US20090234382A1/en

First of all, the patent describes, in addition to just the simple idea of a patch, something more complicated than the actual product. The real product is just a patch while the patent also describes a patch that can have cosmetic additives added.

If I cut a piece of medical tape to a similar shape (a triangle), could this be considered an infringement of this patent?

In other words, can the combination of a simple shape with an existing material ever be considered a patent infringement?

Is the purpose (keeping the skin in place) part of the invention/patent? Is there a difference in a piece of tape for your face vs a piece of tape for industrial use, in the context of deciding weather patent infringement occurred?

Answer 1

The document you cited was a patent application, not a granted patent. The subsequent patent is US9414970B2. It is important to look at an actual patent instead of it's application because the claims in a patent are often narrower than the corresponding application. Patent coverage is defined by its claims. Reading the bulk of a patent can sometimes give the impression that it broadly covers a technology where the actual claim language might be fairly narrow. Here is the first claim:

1. A method of noninvasively reducing facial wrinkles formed in facial skin, comprising the steps of

   providing a skin patch comprising a membrane and having a skin contacting surface, the skin contacting surface comprising a film of silicone-containing material to which an additive has been added to said silicone-containing material prior to cross-linking of the silicone-containing material, said silicone-containing material having the additive impregnated therein and after cross-linking of the silicone-containing material to said membrane,

   wherein said additive is a therapeutic active ingredient,

   wherein said skin patch skin contacting surface comprises a cross-linked composition of said silicone-containing material and said therapeutic active ingredient on said membrane, said silicone-containing material being cross-linked to said membrane,

   applying the skin contacting surface of the skin patch over and into contact with facial wrinkles, and

   maintaining the skin patch in place over and in contact with the facial wrinkles for an effective amount of time to tighten the skin at and around the facial wrinkles, thereby reducing the facial wrinkles in said skin, by contacting the skin with said skin patch silicone material film and delivering a treatment of said active ingredient contained in said patch to said skin by contacting the skin with the already cross-linked together surface of silicone-containing material and membrane containing said active ingredient to deliver said active ingredient from said film;

   the additive being useful for wrinkle reduction and/or other clinical indications; and

   the additive being peptides, vitamin compounds, antioxidants, growth factors, glycolic or alphahydroxy acids, or combinations thereof.

As you can see, this claim is fairly long and involved. In order to infringe on a patent, you need to infringe on at least one claim. To infringe on a claim, you need to implement each and every aspect of the claim. Thus if a claim details steps A, B, C and D and you only implement steps A, B and D, you don't infringe. This claim has a lot of steps in it. For instance it specifies a silicone containing material with a "therapeutic active ingredient". If you use a non-silicone adhesive you are free from this claim. Similarly the additive must be one or more of the following: "peptides, vitamin compounds, antioxidants, growth factors, glycolic or alphahydroxy acids".

A similar analysis must be done with each of the claims in the patent. Note that a claim that refers to another claim is a dependent claim and is only infringed if the cited claim is also infringed. Thus it is usually best to focus on the independent claims first.

To try to address your specific questions:

If I cut a piece of medical tape to a similar shape (a triangle), could this be considered an infringement of this patent?

In other words, can the combination of a simple shape with an existing material ever be considered a patent infringement?

I don't believe so since the medical tape wouldn't incorporate a therapeutic active ingredient.

Is the purpose (keeping the skin in place) part of the invention/patent? Is there a difference in a piece of tape for your face vs a piece of tape for industrial use, in the context of deciding whether patent infringement occurred?

Again, the patent's coverage is defined by its claims. Every independent claim refers to skin, in particular facial skin. If you have a product using tape for something other than reducing wrinkles in skin, I suspect it is clear of this patent.

Please be advised that I am not a lawyer and this isn't legal advice. I always recommend consulting with an actual patent attorney when determining freedom to operate.

Answer 2

There are two questions to answer with respect to infringement. The first question of claim construction asks what is covered by the granted claims in the patent or patents in question. Claims in a granted patent must be identified, and each claim limitation must be interpreted for what it teaches. Second, elements (or process steps) of the alleged infringing product must be identified that are the same or equivalent to all of the claim limitations.

A simplified version of a product that lacks some distinguishing limitations of the claim, would not infringe on the patent claims. However, an infringing item need not be exactly identical to what was disclosed by the inventor. Substitution of one element for an element recognized as equivalent is not enough to distinguish a product from a patent claim. Furthermore, insubstiantial differences do not distinguish a product from a patent claim. (For further information see this essay at Justia: https://www.justia.com/intellectual-property/patents/infringement/ )

With respect to this question, the document cited is a patent application. The attorney proposed some independent claims, but those were not granted a patent. For the patent that directly issued from this application, see https://patents.google.com/patent/US9414970B2/en. Several other patent applications and patents in this family, the beginning of which can be seen at Google patents under the heading "Related Applications". (https://patents.google.com/patent/US9414970B2/en#relatedApplications).

In order to determine whether your proposed bandage/plaster/patch infringes a patent, one would identify potential patent claims, identify all of the important elements of those claims, and determine whether or not the proposed bandage/plaster/patch has all of those elements, or substantially equivalent elements. Making such a determination is beyond the scope of this essay, but I hope this gives you enough information to work in a productive direction.