In a precedential opinion, the U.S. Court of Appeals for the Federal Circuit highlighted how redesign efforts, such as software and firmware updates, could affect infringement determinations and whether redesigned products remain on the market.
In this case, the International Trade Commission (ITC) barred importation of certain wet/dry vacuums for infringing a patent. But the ITC allowed new versions of the accused wet/dry vacuums that were redesigned during the proceedings so that they did not infringe. The key is that the patented functionality could be avoided with quick software or firmware updates. Designing around patents raise strategy considerations for both patent owners and accused infringers, such design changes may also raise questions about how altered features impact consumer use and product functionality.
McCarter & English partner Erik Belt told MLex that accused infringers should carefully assess the significance to consumers of the feature being altered or eliminated as well as any corresponding impact on functionality. “In figuring out what you need to avoid or subtract to avoid the patent, sometimes you make your product less efficient or less commercially viable,” he warned.