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Law Educator, Esq.
Law Educator, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 113493
Experience:  Attorney practicing all aspects of copyright/trademark law
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I interested in selling vaporizers that looks like Pax 2 by

Customer Question

Customer: Hi, I interested in selling vaporizers that looks like Pax 2 by Ploom, my manufacturer is willing to help me make my own brawn and logo but the appearance is very similar to Pax 2 and I also uses LED lights but the "X" is changed to "E". I have seen you answered questions about Pax when Ploom has no patent but now I have just noticed that Ploom has been granted two patent. So does it mean that it is illegal?
JA: Thanks. Can you give me any more details about your issue?
Customer: Patent number:(###) ###-####and patent Patent number:(###) ###-#### ***** been granted to Ploom
JA: OK got it. Last thing — JustAnswer charges a fee (generally around $18) to post your type of question to Intellectual Property Law Experts (you only pay if satisfied). There are a couple customers ahead of you. Are you willing to wait a bit?
Customer: yes
JA: OK. Now I'm going to take you to a page to place a secure deposit with JustAnswer. Don't worry, this chat is saved. After that, we will finish helping you.
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Attorney2 replied 1 year ago.

Welcome and thank you for your question. Is this question for the United States? Can you provide me with the link for the question you are referencing?

Customer: replied 1 year ago.
http://my.justanswer.com/question/guest/bc269036e0644bd2b04a1efda63f7374
this is the question
Customer: replied 1 year ago.
This is the patent http://patents.justia.com/patent/8915254
if I am not copying one of the claim3. The device of claim 1, wherein said air inlet is directed along a diagonal through the mouthpiece.Is it still legal?
Expert:  Attorney2 replied 1 year ago.

Thank you. Please give me a few moments to review the links that you attached.

Customer: replied 1 year ago.
Hi, Have you reviewed the links?
Expert:  Attorney2 replied 1 year ago.

Yes. Thank you for your patience. The links you provided were very helpful. I am typing my response and will it post in a few moments.

Customer: replied 1 year ago.
I am sorry to annoy you. But around how long will it take?
Expert:  Attorney2 replied 1 year ago.

I am apologize I have been having issues with the site and couldn't post to you. I have been told that there should be no further problems.

The issue is that Ploom could have sued prior to the patent, although is not a given that they would win such a suit. Now that they have a patent the situation changes as patent infringement can be a very expensive lawsuit to defend.

As you maybe aware there are two types of patent infringements: Literal and Doctrine of Equivalents.

“Under the Doctrine of Equivlents there can be patent infringement if the predicts are substantially similar. The basic rule is that patent holders can claim infringement if:

    • the accused device performs substantially the same function,
    • in substantially the same way,
    • to obtain the same result. “

In order to determine whether there has been an infringement of a patent, it's necessary to familiarize yourself with patent terminology. Patents are made up of "claims," which are different elements that make the invention unique. "Prior art" is a term that refers to previously awarded patents.

If another invention has the exact same claims as a patented invention, then there is literal infringement(copying of every claim). There is another type of infringement called the Doctrine of Equivalents, which means that the invention is so close to the claims described in a patent that a court will find it to be substantially similar and therefore infringing.

  • Literal Infringement. If you take all of the claims of a prior art and add elements, you are still infringing. On the other hand, if you take some, or even most, elements of a prior art, then you are not infringing.
    For example, a patent has claims A, B, C and an accused invention has claims A, B, C, and D. It literally infringes because it incorporates all the elements, even though it adds another. But if the accused devise has claims A and C, then there is no literal infringement because it is missing claim B.
  • Doctrine of Equivalents. Courts found that limiting infringement to only literal infringement was very restrictive (and often unfair) and came up with this doctrine to combat substantially similar inventions. The basic rule is that patent holders can claim infringement if:
    • the accused device performs substantially the same function,
    • in substantially the same way,
    • to obtain the same result.

There are, however, limits to the doctrine of equivalents. During the back and forth of the application stage, owners and the USPTO argue about certain elements of the prospective patent.Courts prevent patent owners from going back and claiming protection for claims that they had to give up during the application stage. If a claim is made or amended during the application of the patent to avoid prior art, then the patent owner can't argue infringement on that claim. If the patent owner can prove, however, that the amendment was made for a reason other than avoiding prior art and it was not meant to be surrendered, then the owner can a still argue infringement under the Doctrine of Equivalents.”

http://smallbusiness.findlaw.com/intellectual-property/patent-enforcement-faq.html

This link also sets out what constitutes patent infringementhttp://www.nolo.com/legal-encyclopedia/enforcing-patent-faq-29148.html

I don’t know that I would take the chance of having an infringement lawsuit filed against me. Where are you located so I can provide a link for intellectual property attorneys in your area that provide free consultations?

If you have any additional questions please do not hesitate to let me know. If you would be kind enough to rate my service positively so I may receive credit for my work I would appreciate it.

Thank you for using JA! We appreciate your business.

Customer: replied 1 year ago.
Thank you for your reply. Now if I changed my design of my mouthpiece for example into some other shape which is not diagonal.THis is the patent link
http://patents.justia.com/patent/89152543. The device of claim 1, wherein said air inlet is directed along a diagonal through the mouthpiece.Is it considered Literal Infringement and is it legal to produce such a product?
Expert:  Attorney2 replied 1 year ago.

I understand that the mouthpiece is different so my concern would be the Doctrine of Equivalents

Customer: replied 1 year ago.
There are, however, limits to the doctrine of equivalents. During the back and forth of the application stage, owners and the USPTO argue about certain elements of the prospective patent. Courts prevent patent owners from going back and claiming protection for claims that they had to give up during the application stage. If a claim is made or amended during the application of the patent to avoid prior art, then the patent owner can't argue infringement on that clam. If the patent owner can prove, however, that the amendment was made for a reason other than avoiding prior art and it was not meant to be surrendered, then the owner can a still argue infringement under the Doctrine of Equivalents.Is there anyways for me to see the process of the patent application and see what claim has been amended?
Expert:  Attorney2 replied 1 year ago.

Let me opt out for another attorney to assist you. I am having too many issues with the site and do I not want to delay a response any further.

Customer: replied 1 year ago.
thanks
Customer: replied 1 year ago.
hellO?
Expert:  Attorney2 replied 1 year ago.

Please do not respond as that removes the question. I will again place you in the open questions link. Please do not respond. Thank you for using JA!

Expert:  Law Educator, Esq. replied 1 year ago.
Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.
I am a DIFFERENT CONTRIBUTOR.
Your previous contributor was right about the infringement and doctrine of equivalents. In order for you to avoid the patent infringement claims it would have to be a completely new improvement on the existing device. You could seek to obtain a substitution or addition patent on the fact you have made the existing patented device better or more efficient. The device has to provide you a worthwhile competitive advantage. An addition patent is adding something new to an existing device. A substitution patent is taking a previously used part and putting in something new to make the device better.
Also, you have to be concerned that they have multiple parts patented, so while you can change one piece and likely get an improvement patent on this piece, the remainder of the device being unchanged can cause you to be infringing still.
This is something where your entire design has to be reviewed in depth by a local patent attorney side by side the original to determine conclusively if you could succeed in obtaintin a new patent.