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    Patents 101 | Does DIY Infringe?

    We brought our intellectual property expert Mike Clifford back in for the last installment of Patents 101 and I think you’ll be a bit surprised on what qualifies as infringement. In fact many LED aquarium users are infringing right now without even knowing it… that is if the Orbitec LED patent withstands.   Although this […]

    We brought our intellectual property expert Mike Clifford back in for the last installment of Patents 101 and I think you’ll be a bit surprised on what qualifies as infringement. In fact many LED aquarium users are infringing right now without even knowing it… that is if the Orbitec LED patent withstands.  

    Although this is the last Patents 101 article, more information regarding Orbitec and LEDs is to come. Thank you to Mike for this 3 part series. If you missed the previous articles you can find them here: Part 1 & Part 2.

     

    Q: What effect do patents have on DIYers?  Do I infringe if I make a patented product at home?

    A. This is another area I’ve seen much misinformation.  Many comments have been made to the effect that, assuming a Solaris unit infringes the Orbitec patent, you could make a DIY Solaris at home or buy/sell a DIY kit of parts. These assumptions, however, are incorrect.

    As for building a patented product yourself, the patent laws prohibit making, using, and selling a patented invention.  So if you build a patented LED light in your basement, you infringe because you made the patented invention.  In fact, you technically infringe for even using an infringing product that you purchased, regardless of how reputable the company manufacturing or selling the product might be. 

     

    Q: So I could be sued for a DIY project or use of a Solaris?

    A. Technically yes, but in the real world, it is unlikely. As the damages would likely be very small compared to the cost of bringing the suit, it is not a financially viable lawsuit.  (However, please don’t think of this as a license to go building patented products – in the often analogous realm of copyright law, think about what happened to unsuspecting Napster users who downloaded music and were sued by the RIAA for infringement.  There is always an exception…)

     

    Q: What about a company selling a kit to make a product that infringes?

    A. Even though a company doesn’t actually make, use, or sell an invention, they could still be liable for indirect infringement if they sell a kit to make an infringing product.  Specifically, if a company is shown to have knowingly contributed to the infringement of another, or induced infringement by another, they can be liable for indirect infringement.

    17 Comments

    1. Nate Ellis
      February 27, 2009 at 2:37 PM | Permalink

      Wow, this is potentially scary. I always assumed that if a company isn’t offering a product (or service) implementing their patent on the market, then one would have license to DIY the product or service as long their was no buying or selling of the technologies covered.

      In this case, I assume Orbitech hasn’t developed or implemented a product in the aquarium market?? They’re basically just camping on their patents and thwarting innovation “just in case” they eventually decide to market their tech. Is this what people mean when they refer to patent trolling?

    2. Curtis Leo
      February 27, 2009 at 5:30 PM | Permalink

      I’ve build my own moonlights for my aquarium 10 years ago. Guess I’m breaking some patents now…

    3. igozoom
      February 27, 2009 at 8:12 PM | Permalink

      sosumi

    4. Nicholas Sadaka
      February 28, 2009 at 3:05 PM | Permalink

      I actually saw a post on a forum from an Orbitech spokesmen who said they actually have LED aquarium lights either made, or ready for production, but that the issues with PFO have halted them from going ahead with putting them “out there”. He said that we would start seeing their products in Spring of ’09, which is very soon. So, I guess we will soon be seeing how truthful that claim is. Thanks again Mr Clifford…great information!

    5. joe
      March 1, 2009 at 9:43 PM | Permalink

      What if someone uncovers, say, a thread on a reef forum discussing the use of LEDs on a reef tank that predates the patent. Could that be enough to invalidate the patent?

    6. March 2, 2009 at 12:06 AM | Permalink

      @ Joe, I am no expert but from my understanding that may not be enough. We have found evidence of LEDs used for growing coral prior to the patent as well as dimmable LEDs for aquariums prior to the patent.

      Again I am not sure if this will warrant the patent to be reexamined.

    7. mcliffy2
      March 2, 2009 at 10:54 AM | Permalink

      Joe – If that thread shows, discusses, or makes obvious each and every element of the claims, then that that thread on the forum likely invalidates the patent. Providing that thread as evidence could serve as the basis for filing a re-examination at the patent office, or filing a suit for declaratory judgement of invalidity in court.

      Nicholas – I also am curious to see what Orbitech’s next move is. If PFO doesn’t challenge the patent (i.e. goes under), they’ll surely look to monetize the patent in some way.

      Curtis – If the claims of the Orbitech patent were interpreted to cover the LEDs you have been building for 10 years, its likely your LED units could be invalidating prior art for at least some of those claims (in particular, the claims that don’t require the lighting be sufficient for marine life, if the claims are interpreted without such a requirement). Who knows, you might get a call from PFO…

    8. Curtis Leo
      March 2, 2009 at 5:12 PM | Permalink

      I’m curious of what that claim to be sufficient for marine life. what lumen is that value. I can have a deep, cold water creature that only needs low lux while a fully loaded reef requires tons more.

      I have some of the first LEDs ever produced (blue) as samples and I’ve added them to my tank over the years.

      I actually wanted to build quality LED/HID/T5/CF light fixtures for the aquarium industry as trying to find quality stuff, is difficult.

    9. mcliffy2
      March 2, 2009 at 11:53 PM | Permalink

      Curtis – That is a very interesting question. If you look in the specification there are some examples of what types of LEDs and intensities are necessary to support marine life, but there could be a question which marine life it must support? What exactly the term “marine life” means could certainly be argued about in the claim construction hearing (see part II for details of claim construction and claim interpretation).

    10. M.Y.Lee
      July 2, 2009 at 2:31 AM | Permalink

      We are interested in your patent

    11. August 2, 2009 at 3:43 PM | Permalink

      To infringe a patent you not only need to copy the product, you need to copy the manufacturing process also. This process is the heart of the patent and is unique like the resulting product. If you figure out another process to build a similar product, guess what… you can file a request for another patent for a competing product.

      Also, LED lamps are made from components from different vendors. These components have technical specs and these dictate how components are used. Unless you get exclusive use licenses from these vendors, other manufacturers can use these spec’s to design and build a competing product.

      A clear example are iPods and iPhones. No one can make them except Apple, but anyone can make MP3 players and cellular’s with touch screens.

      Hope this put’s all in a realistic perspective.

    12. Neverorbitec
      December 20, 2009 at 12:29 PM | Permalink

      The fact that the patent system is open to abuse is no excuse for abusing it. Orbitech will not be getting any of my future aquarium dollars, ever.

    13. mcliffy2
      December 20, 2009 at 5:46 PM | Permalink

      @ M.M. Pagan — I’m not sure where you are getting your information, but the statement that to “infringe a patent you not only need to copy the product, you need to copy the manufacturing process also” is not correct. Infringement is defined by the claims of a patent. If claims are intended to cover and protect a product and you copy that product you will likely infringe, if the patent is held valid and construed to cover the product, but it is still possible that you could show the claims didn’t cover the copied product. Bottom line, you compare the allegedly infringing product to the patent claims, not the product intended to be covered by a product (as often, as in the case of the Orbitech patent, there is not product that is actually made by the patent owner).

    14. mcliffy2
      December 20, 2009 at 5:47 PM | Permalink

      Edit – the last sentence should read: Bottom line, you compare the allegedly infringing product to the patent claims, not the product intended to be covered by the patent (as often, as in the case of the Orbitech patent, there is not product that is actually made by the patent owner).

    15. Yourmom
      January 23, 2011 at 9:32 PM | Permalink

      Load of horsehockey.

      the concept of wiring up a few leds with an optic to point down is not something that can be patented.

      may as well go after all the car manufactures too, since they use LEDs in the their cars.

      oh My GODDDDD Traffic lights are LED now and they are near homes, and some of those homes may have fish tanks. SUE SUE SUE.

      I got a 12VDC transformer outta my box of stuff, bought some white LED’s and some plastic for clear tail lights off a car for optics.

      FU if I broke a patent doing that.

    16. justme
      January 25, 2011 at 1:35 AM | Permalink

      Patents are only infringed if the “copy” is “identical” to the “original”. A slight modification, such as shape, parts placement, etc.. will assure that it is not infringement. Otherwise, every car maker is infringing on the other.

    17. Brianhanners81
      October 9, 2011 at 1:27 PM | Permalink

      I thought if 13 percent of a patent was changed then it is considered a new product. 

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