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let's suppose that a patent claims

a machine that executes Y when A is less than or equal to B.

If a competitor invented

a machine that executes Y only when A is equal to B

In both machines, A is an input from a first user and B is an input from a second user.

Does the competitor's invention infringe upon the claim?

Why or why not?

EDITED:

Let's suppose that the judge rule in favor of the competitor, deciding that it doesn't infringe.

At this point, would the original inventor be able to file a continued application to add a claim that covers the competitor's machine? It's clear that the invention that allows the inventor's original claim would also allow a claim that would cover the competitor's workaround?

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    Note that “inventions” do not infringe, physical things like products infringe,
    – George White
    Commented Sep 4 at 15:53

2 Answers 2

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NOTE: This answer between the bars was written prior to edits to the question that clarified and changed some of the considerations and assumptions I made for this response.

This response originally assumed that the inequality was creating a predetermined range as inferred from the Question Title, however, the inequality is a relationship between two inputs, not a range.


Yes, the competitor's invention likely infringes upon the first claim. (However, keep in mind that during litigation, Terms of the first claim will be defined and Expert Witnesses will be called to opine on what everything means. It is somewhat unlikely that the claims as interpreted prior to litigation will mean the same as the same claims during the trial.)

The first claim includes the condition that the machine executes Y when A is equal to B.

For this, we can look towards an Obviousness determination for overlapping ranges (which, while "obviousness" is different from an infringement analysis, whether portions of overlapping ranges teach other ranges is illustrative of how various ranges may be interpreted for infringement).

The Courts have held: In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).

In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990):

The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.

In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997):

Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."


In response to the Second Question in the most recent edit:

Let's suppose that the judge rule in favor of the competitor, deciding that it doesn't infringe.

At this point, would the original inventor be able to file a continued application to add a claim that covers the competitor's machine? It's clear that the invention that allows the inventor's original claim would also allow a claim that would cover the competitor's workaround?

That really depends: If there is no currently pending family in the original patent family, then "No."

If the specification does not include the specific limitation of the "only" part, then "Probably not" since the "only" language would likely be viewed as new matter.

If during prosecution, the Applicant made an argument that the 'less than' part is essential to the invention, then "Most Probably Not". That is prosecutorial estoppel.

If there is currently pending family, and the specification includes the restriction that machine that executes Y only when A is equal to B, and while getting the prior application, the applicant did not create prosecutorial estoppel in choosing that specific condition, then the patentee may be able to get another patent that has that claim.

BUT- it would almost certainly require a Terminal Disclaimer for Obviousness-type Double Patenting. HOWEVER, there are currently some cases going up that have this situation and it really isn't looked too fondly on. I think there was a case from earlier this week or maybe last week that addressed this issue. This situation also may bring up some Inequitable Conduct issues if the litigation is not properly disclosed to the USPTO.

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    Excellent answer. Welcome to Ask Patents.
    – Eric S
    Commented Sep 4 at 16:36
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    Sorry, but I fail to see what obviousness has to do with the question. Infringement is a question of whether the patented claim reads on the competitor's design. That which infringes if later, anticipates if earlier. By considering obviousness as infringement the breadth of the claim is unduly expanded.
    – bhuff36
    Commented Sep 4 at 18:51
  • @bhuff36 I am using that for the overlapping range since that is the only element here. It is the same analysis for overlapping ranges whether anticipation or obviousness. Note: the word "only" was added after my answer was posted. It there were adjacent ranges then it would be more of an obviousness-type issue.
    – Andrew
    Commented Sep 4 at 19:09
  • Well it's your answer but I still think it would be better to rephrase it to avoid conflating obviousness with the issue at hand, even if the result of the analysis is the same. Also conditions behave oddly b/c "X when C" means "C implies X" means "X or not C" logically so due to the inherent negation they behave rather differently from other limitations and I wouldn't be surprised if they don't follow the usual rules for ranges when the condition relates to a range.
    – bhuff36
    Commented Sep 4 at 19:35
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    @Bear The "only" makes a huge difference. A machine that does Y when A could do Y at other times also while remaining within the specification. Whereas as a machine that does Y only when A cannot do Y at other times also. In other words, if the competitor's machine is specified to do Y only when A==B, then it does NOT do Y when A<B.
    – bhuff36
    Commented Sep 5 at 2:21
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As phrased, the question seems to be whether the competitor's product infringes the claim of a (presumed earlier) patent. Note that this is distinct from the question of whether the competitor can patent their innovation when taking the earlier patent as valid prior art (hence I will not address this latter question).

The competitor's machine does not do Y when A is strictly less than B, but this is required by the patent claim. Hence the competitor's machine does not literally infringe.

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  • If it does not "literally infringe", can it still be considered infringement somewhere, for example by the doctrine of equivalence, etc? Commented Sep 4 at 18:59
  • The prior art covers when A<B OR when A=B. The infringing machine practices A=B. So, it "literally infringes". Alternatively, if we look at it as a range (ignoring the enablement issue), the range of the infringing machine is entirely contained within the claimed range. The subrange inherently includes a negative limitation for values outside the smaller range. The fact that the machine does not execute 𝑌 when 𝐴<𝐵 does not avoid infringement because A=B is explicitly included in the prior claim. I think this would really turn on the terms defined in the Markman.
    – Andrew
    Commented Sep 4 at 19:43
  • @Andrew A and B are not "predetermined", they are inputs. Otherwise we should statically know whether Y is done or not, and the machine need not know A and B at all. The case law you are basing your arguments on considers only predetermined ranges.
    – bhuff36
    Commented Sep 4 at 19:51
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    @Andrew I haven't thought through the implications of only B being predetermined while A is input/measurement. Perhaps the original poster can clarify the question and specify which are inputs/measurements and which are predetermined.
    – bhuff36
    Commented Sep 4 at 20:22
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    @bhuff36, I have updated the original post. A is an input from a first user and B is an input from a second user. Commented Sep 4 at 22:43

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