Will selling individual off the shelf components or kits of a commercial product infringe on its patent? 5 Answers as of August 13, 2011

A commercial product 'X' available in the market costs like $30,000. By using cheap off the shelf components, I was able to make the prototype for about ~$200; however, it follows the same patented principles of operation that device 'X' does. What I am trying to say here is my prototype method of operations is already claimed in the device 'X' claims section. My question here is, Is it possible that I make a DIY or Open Source instructions manual for how I made my prototype and then sell individual off the shelf parts on a website and still not infringe the device 'X' patent? Is it also possible that if a customer wants to buy a kit, I can sell them combo packages that have all the materials they need to make the prototype that I built; for instance, pre cut laser parts and holes in box

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Intellectual Property Center, LLC
Intellectual Property Center, LLC | Ak Shaf
Great question. The answer lies in the details. Generally, in order to adequately provide advise regarding whether you infringe or don't infringe someone elses patent, is complicated and very time consuming. I would strongly suggest contacting a patent attorney (913-345-0900) to discuss your concerns. Good Luck!!
Answer Applies to: Kansas
Replied: 8/13/2011
DANIEL NESBITT | Hasse & Nesbitt
35 USC 271(b) of the Patent Act provides that (b) "Whoever actively induces infringement of a patent shall be liable as an infringer." Inducing an infringement includes instructing, directing, or advising a third party as to how to infringe a patent, and would cover supplying a kit (or kits) of components, with instructions, with intent that the end users use it for assembly of an infringing product. You might want to work directly with a patent attorney on an alternative approach that involves far less risk of infringement.
Answer Applies to: Ohio
Replied: 7/16/2011
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
First unless you are a patent lawyer it is very doubtful that you know if your product infringes. Generally this cant be decided until there has been a claim construction hearing. Second I cant possibly tell you if what you want to do is infringing or not based on the small fact pattern. But if you are asking me if you can send out instructions or sell the a kit in parts etc that you think infringes - the answer is NO. There are two types of infringement - direct or indirect. Under indirect there is inducement and contributory infringement. Under direct infringement there is literal infringement.
Answer Applies to: Oregon
Replied: 7/15/2011
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
Initially, the patent itself should be clear enough for someone who is knowledgeable in the field to make the product. As such, there shouldn't be a need for your kit for the public to practice the patent. However, your kit may provide valuable information as to method of manufacturing the product and depending on the patent claims, you may or may not be infringing. As to the product itself, the difference between $30,000 and $200 is the value of the patent. In other words, the patent owner is in a position to make the product, probably cheaper than your prototype, and still dictate his price of $30,000. To that end, patents are quite valuable. In your scenario, if you make, sell, offer to sell, or use the prototype you are directly infringing the patent (assuming the patent is valid and enforceable). If you make a kit that shows how to make the product and someone else manufacture it, then you may be held liable as contributory infringer.
Answer Applies to: California
Replied: 7/14/2011
Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
I would need to see the patent. But if you supply components with the intention of teaching and encouraging others to combine the components to make an infringing product you are liable for inducing patent infringement
Answer Applies to: New York
Replied: 7/14/2011
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