2

Suppose an accused product implements all but one of the elements in claim 1:

The invention claimed is:

  1. A storage system comprising:

a platform containing a plurality of container stacks...;

a handling device configured for pushing a plurality of containers from a stack...

etc.

If the accused product is configured for pulling containers rather than pushing containers, will it mean that it fails to meet the second limitation and thus, no patent infringement took place (assuming the remaining claims depend on claim 1 by "The system of claim 1, ...")? Will the accused product actually be regarded as novel if it pulls?

Thanks

4
  • Perhaps you should draft it as a handling device configured for moving a plurality...? Then you can have a dependent claim for the pushing. If you foresee these embodiments, you should try to encompass all of those in the claims. – the Europeist Aug 24 '20 at 8:55
  • But the existing patent makes a claim about pushing specifically. No way that they didn't foresee the other direction. Maybe pulling is already prior art. – John M. Aug 24 '20 at 9:39
  • My bad, I understood the question differently. Infringement could exist if Doctrine of Equivalents is applied to the case, but not every country has such legal provision and each country may have its own criteria for establishing whether infringement exists in this case. Very often patent applications do not describe obvious alternatives because inventors are so focused on their actual product, not the entire scope of the invention, then you end up having claims narrower than what the prior art allows you to. – the Europeist Aug 24 '20 at 13:40
  • @theEuropeist That makes sense. Thanks. – John M. Aug 25 '20 at 2:09
1

Infringement occurs when someone implements each and every aspect of a claim. Thus if the product avoids one step then no infringement occurs. In the example provided if person pulls instead of pushes then there is no infringement.

Will the accused product actually be regarded as novel if it pulls?

Perhaps you didn't mean the term "novel". Avoiding infringement doesn't imply novelty at all, it only means you're avoid infringing on the specific claim cited. Novel means new and potentially patentable. Pulling instead of pushing might or might not be inventive, but avoiding infringing a patent doesn't necessarily mean you are guaranteed to obtain your own patent.

3
  • Good answer and congrats on being our moderator. One note - "novelty" means new, period, not new and inventive, as you mention right after that. – George White Aug 21 '20 at 19:06
  • @GeorgeWhite I made a small edit per your suggestion. I sort of volunteered to moderate mostly to get the spam deleted promptly. – Eric S Aug 21 '20 at 21:28
  • We needed that - thanks very much for taking it on. – George White Aug 21 '20 at 22:06

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