Using Patent Design-Around Strategies to Reduce Infringement Risk

Identifying a potentially relevant patent during product development does not necessarily prevent a company from bringing its product to market. Depending on the patent claims and available technical alternatives, a company may be able to design around the patent while preserving the product features that provide commercial value.

The Federal Circuit – a federal court of appeals specializing in patent cases - has recognized that designing around patents can promote innovation and competition. In fact, the Federal Circuit has said, “keeping track of a competitor's products and designing new and possibly better or cheaper functional equivalents is the stuff of which competition is made and is supposed to benefit the consumer.” State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226, 224 (Fed. Cir. 1985). And, intentional design-around efforts are not, by themselves, improper. Slimfold Manufacturing Co. v. Kinkead Industries, Inc., 932 F.2d 1453, 1457 (Fed. Cir. 1991).

In practice, an effective design-around strategy begins by defining the critical technical and commercial elements of the product. The next step is to identify and analyze potentially relevant patent claims and related patent families to understand the scope of the patent landscape and determine which claim limitations may present infringement concerns. Engineers and patent counsel can then evaluate alternative technical approaches that preserve critical product functionality while creating meaningful distinctions from the patent claims.

Importantly, the analysis should consider not only literal infringement but also the doctrine of equivalents. Under that doctrine, a product that does not literally satisfy a claim limitation may, in some circumstances, still infringe if the difference is legally insubstantial. Accordingly, replacing a claimed element with a slightly different component or implementation may not provide a sufficient design-around. The analysis should instead consider whether the alternative creates a meaningful technical distinction, as well as whether prosecution history or other legal limitations affect the potential scope of equivalents.

The goal is not merely to make cosmetic or nominal changes. A defensible design-around should be grounded in claim-level analysis and meaningful technical differences, taking into account both literal infringement and, where applicable, the doctrine of equivalents.