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I have made a product and another company got a patent on a similar idea. Problem is that their first independent claim looks meaningfully different(in my opinion) from mine but there is the same idea among the dependent claims of the independent claim that might be critical and unavoidable.

I would like to hear your advice before I bring it to a patent attorney around my place.

Independent claim

  1. A method for orienting an optical device to view a first subject, the method comprising:

    coupling a coupling device to the optical device, wherein the coupling device comprises a mirrored surface;

    coupling an image capture device to the coupling device in a manner that enables adjustment of an orientation of the image capture device relative to the coupling device, wherein the image capture device comprises a front-facing display screen and a rear-facing camera, and wherein the mirrored surface of the coupling device is positioned to reflect light entering the optical device onto the rear-facing camera of the image capture device;

    adjusting the orientation of the image capture device relative to the coupling device;

    using the image capture device to generate image data of a reference subject;

    at a processor, comparing the image data with stored information regarding celestial objects to identify one or more celestial objects appearing in the image data and to ascertain a first orientation of the optical device;

    at the processor, ascertaining a second orientation of the optical device, at which the first subject is viewable using the optical device

    at the processor, determining a rotation of the optical device needed to reorient the optical device from the first orientation to the second orientation;

    and at the processor, using the determined rotation to guide motion of the optical device from the first orientation to the second orientation.

Explanation:

their patent uses a smartphone(image capture device) to recognize dark sky and let the users move their manual telescope to the target object(stars, nebular..). Thus, you can see the system described in this claim includes a phone holder(a coupling device). My product does the same function but instead of the phone, it uses an independent camera and processing unit so that any device can be connected to it.

The point is that my device can be seen as an image capture device too. In that case, the only differences are the following two descriptions

"wherein the coupling device comprises a mirrored surface;" as mine does not include any mirror,

and

"wherein the image capture device comprises a front-facing display screen and a rear-facing camera, and wherein the mirrored surface of the coupling device is positioned to reflect light entering the optical device onto the rear-facing camera of the image capture device;"

as mine does not have any front-facing display.

Q: As far as I know, this simple difference(existence of mirror) is enough to avoid patent infringement. Will you consider it as a patent infringement or not?

The following claim is also a problem.

Dependent claim

  1. The method of claim 1, wherein: the method further comprises, at the processor,obtaining an angular offset between fields-of-view of the optical device and the image capture device; and using the image data to ascertain the first orientation comprises using the obtained angular offset.

Explanation:

As the phone camera and telescope view are slightly looking at different locations, there should be a method to estimate the difference and account for the difference when it guides the user to the target object.

Q: I have the exact same component in my system. Will it be a problem?

Here is the link to the original patent: https://patents.google.com/patent/US11181606B1/en?q=Celestron&before=priority:20210101&after=priority:20170101

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    Your claims are hard to read. Could you please use the block quote feature and do some formatting to make them more legible?
    – Eric S
    Dec 13 '21 at 15:43
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    Can you please link both patents? Which one was applied for first?
    – Eric S
    Dec 13 '21 at 19:20
  • @Eric S Mine is not patented but I was just concerned as the competition's patent was filed before I reveal my project to the public. Dec 14 '21 at 2:48
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As @EricS says - dependent claims, by definition, narrow the claim(s) they depend from. Therefore there is no way to not infringe an independent claim but infringe a claim that depends from that independent claim.

If an independent claim 1 (in a device claim) requires an A, a B, and a C, a dependent claim 2 might also require a D. If C is a mirror and you don't have a mirror or anything that acts as a mirror you would not infringe claim 1 and, by the requirement that dependent claims narrow, you wouldn't infringe claim 2. In your case this is a method claim comprised of steps using descried objects. If your "coupling device" does not have a mirrored surface, then the operation of your device does not include "coupling a coupling device to the optical device, wherein the coupling device comprises a mirrored surface;"

You should look for other patents that might not require this element.

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  • Thanks! It was a great help. Dec 14 '21 at 2:58
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I am not a lawyer, but I believe that if you don't infringe the independent claim, you can't infringe any claims dependent on that claim. If the independent claim includes a mirror and you don't implement a mirror, then you should be alright. Still, it is always better to get an opinion by a proper patent attorney for freedom to operate matters rather than rely on the advice of unqualified individuals on the internet. Especially when you don't supply both of the actual patents in question.

I see that I may have misread your question and you don't have a patent of your own. It doesn't change my answer but I would like to point out that if you have been selling your product before the patent in question was filed you should also be free and clear of it's claims.

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  • EricS - good answer but I'm not sure two patents are involved. He is comparing his product to someone else's existing patent. I didn't see where he has a patent, and it wouldn't be relevant to infringing someone else's patent anyway.
    – George White
    Dec 14 '21 at 1:23
  • @Eric S Thank you! Dec 14 '21 at 5:39

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