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Case C
Drafting a Method Claim that no Single Party would Infringe
An employee of a medical stent manufacturer noticed that, in an unrelated industry, sheets of metal can be joined to each other at their edges much more advantageously if the sheets were electro-polished and then coated with a polymer. (Remember, I simply the facts to make the legal concepts more apparent.) Such was so common-place that independent businesses existed just to electro-polish and polymer-coat sheet metal and then to sell it to that market. The employee then got the idea that his employer could make its stents at a significantly lower cost by using sheet metal that is electro-polished and then coated with a polymer before being rolled into a tubular shape. Such a method made the edges of the metal easier to join together to complete the tube.
Accordingly, the medical stent manufacturer applied for a patent on this method and filed the following claim:
A method of making a medical stent, the method comprising:
electro-polishing a rectangular strip of metal;
providing a polymer coating on the metal;
rolling the metal to bring opposite edges near each other; and
joining the near edges to form a tube.
The examiner found nothing like this in the medical stent industry or in any analogous industry, so she allowed the application to issue as a patent.
A competitor read the patent and thought about how to exploit the general idea of the invention without infringing the claim. He then realized that he could buy the sheet metal already electro-polished and polymer-coated by the independent businesses discussed above. Then, the competitor would perform only the third and fourth steps of the patent claim. By not performing the first and second steps, he would not be liable for patent infringement.
The court agreed. The patent holder had sued the competitor for infringement, but there could be no infringement without the accused infringer performing every step of the claim. As the competitor had no authority over the independent electro-polish/polymer-coat business that provided his sheet metal, the court had no basis to hold that the external business was acting as an extension of the competitor. Thus, the competitor can exploit the invention without compensating the patent holder.
* * *
What is especially sad about
this case study is that a proper claim would have been so easy to draft. Had the inventor’s patent attorney adequately
questioned the inventor, he would have learned about the independent businesses
that electro-polish and polymer-coat sheet metal. He could have easily drafted the claim
instead as:
A method of making a medical stent, the method comprising:
rolling a strip of sheet metal to bring opposite edges near each other, the sheet metal having been electro-polished and then polymer-coated; and
joining the near edges to form a tube.
(Other forms are possible, but this is a simple example.) If the examiner allowed the first claim, she would have most likely allowed this, also. (It is difficult to image that prior industry practice could justify rejecting the second claim but not the first claim.) If the stent manufacturer had this claim in the patent, it could have stopped the competitor or required license payments from it.
I see this type of mistake far too many times, and it is indeed sad, because it is so easy to draft the claim the right way. If you would like to discuss your method claims, I welcome you to contact me. We can schedule a session to see if your business is at risk of enabling a competitor to exploit your technology.
A method of making a medical stent, the method comprising:
rolling a strip of sheet metal to bring opposite edges near each other, the sheet metal having been electro-polished and then polymer-coated; and
joining the near edges to form a tube.
(Other forms are possible, but this is a simple example.) If the examiner allowed the first claim, she would have most likely allowed this, also. (It is difficult to image that prior industry practice could justify rejecting the second claim but not the first claim.) If the stent manufacturer had this claim in the patent, it could have stopped the competitor or required license payments from it.
I see this type of mistake far too many times, and it is indeed sad, because it is so easy to draft the claim the right way. If you would like to discuss your method claims, I welcome you to contact me. We can schedule a session to see if your business is at risk of enabling a competitor to exploit your technology.