You just received a letter from a technology provider, competitor or patent troll, demanding that you immediately stop production of your new ethanol processing methods and products or else face a patent infringement lawsuit. Now what do you do?  One available option is to design around a patent, with two goals in mind: to modify your product in a manner that avoids infringement liability altogether; and at the very least, to remove the risk of an enhanced damages award if it is later determined that your product infringes the patent.  

A design-around analysis is always unique to the particular patent and product at issue. However, the following steps can be taken in any design-around effort:

1. Provide your intellectual property (IP) attorneys with a sample of the accused product and have them meet with the appropriate employees of your company to fully understand the accused product and how it works.

2. For any patent to be infringed, each and every element of at least one independent claim must be present in the accused device. Therefore, the most important aspect of any design-around analysis is to thoroughly study the patent, the claims and the prosecution history to determine the meaning and scope of the patent claims and whether the inventors made a deal with the patent office to obtain their patent (a deal on which they cannot later renege).  

3. Say the patent claim refers to elements A, B, C and D. The most successful design-around is one that eliminates an element. If you cannot remove a part corresponding to one of those elements, you need to decide how to modify your current device to avoid infringement. The prosecution history of the patent can be highly relevant when modifying your product. For example, if the inventors have argued in court that their invention is novel because it includes element D, substantial modification to element D in your accused product could have a high likelihood of reducing infringement liability.

4. Finally, your IP attorneys should ensure that the design modifications do not result in your product covering prior patents owned, perhaps, by another of your competitors.  

The benefits of having a new design that avoids infringement are apparent.  However, because the above analysis is conducted prior to a court decision on the meaning and scope of the patent claims, there is always a chance that your design-around efforts may still result in infringement. But even under this worst-case scenario, evidence of your reasonable efforts to design around the patent can be enough to avoid enhanced damages.  

Enhanced damages in patent litigation are appropriate when there is evidence that the infringement was willful, which is the case when there was an objectively high likelihood of infringement that was known, or so obvious that it should have been known, by the alleged infringer. Since you knew of the patent, your ability to rebut arguments that you willfully infringed will strongly turn on your evidence of your design-around efforts. Even if your design-around efforts ultimately are unable to avoid infringement, if done properly, they can significantly reduce the risk that you will be liable for any enhanced damages.  

Designing around a patent is just one of many options available for reducing the risk of infringement liability and maintaining a competitive product on the market.  Having competent, experienced IP counsel and ensuring they understand your product are keys to any successful design-around.

Author:
Andrew McCoy
Associate, Faegre Baker Daniels LLP
andrew.mccoy@FaegreBD.com
317-237-8338