Patent Design Around...Fail! | Thompson Patent Law | Austin TX

Patent Design Around... Fail!

Two competitors recently learned that they could still be punished despite their good faith attempt at a patent design around!

Before I describe what happened in that case, first I would like to ask: How do you respond when a competitor comes up with a better design?

For many, one step is to take away your competitive disadvantage by reverse-engineering and, perhaps, even copying the improvement.

But what if you then learn that your competitor has a pending patent application attached to the improvement?

For some, the first instinct would be to try to do the right thing and re-design their product to avoid infringement before the patent application matures into a patent.

Well, in Meadwestvaco v. Rexam and Valois, our two competitors, Rexam Beauty and Valois, both tried to do “the right thing” by designing around Meadwestvaco’s patent application directed to an ‘invisible” dip tube for perfume spray bottle pumps.

Patent Design Around Failure

The invisible dip tube evidently makes high end perfume bottles, of the likes of Chanel and Estee Lauder, more visually appealing (and thus more profitable).

Rexam attempted to avoid a limitation of “XRD crystallinity not greater than 13%” by engineering their product to be greater than 13%.

Valois attempted to avoid a limitation of “quenched” by cooling their products in air over a chilled water bath, as opposed to dipping the tubes into a liquid bath.   The Federal Circuit’s opinion hints that this “air cooling” design around was promoted by Valois’ tube supplier.

The consequences of following the counsel of their manufacturer were less than satisfactory because the Courts did not accept Valois position that cooling in air is not a form of “quenching.” In fact, Valois is liable for infringing the MWV’s patent!

So the first takeaway I’d like to leave with you is this: just because you “try” to design around a patent does not mean you will not be tagged for infringement. You may make a “gesture” of doing the right thing, but that does not protect you from infringement.

It is your business decision on how to respond to this scenario. But with stakes this high, I would not rely on counsel of a supplier without first seeking a competent patent assessment on which to base your patent design around.

The second takeaway is: a patent design around can be highly effective and successful for both business and engineering outcomes.  Patent design arounds done properly are one of the OPTIMAL ways to avoid litigation so you can go about your business instead of writing painfully big checks to lawyers.

But don’t just take the advice of a supplier who offers an attractively convenient suggestion for design around.  You may still get tagged and dragged into an infringement fight you really want to avoid.

Get competent freedom-to-operate advice from a seasoned patent attorney with battle-tested litigation successes. Then you can make an informed risk assessment and business decision that you can live with.








Click here to learn why most patents are doomed to fail and what to do about it. 

Craige Thompson, JD, EE, PE, Patent Attorney

Craige Thompson JD, EE, PE Patent Attorney Author of Amazon #1 Best seller, Patent Offense

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