Design-arounds are a well-recognized pathway for the public to benefit from the patent system. “One of the benefits of a patent system is its so-called ‘negative incentive’ to ‘design around’ a competitor’s products, even when they are patented, thus bringing a steady flow of innovations to the marketplace.” Design-arounds are therefore an example of how patents can spur innovation, and thereby promote progress in the useful arts.

Design-arounds, also known as “redesigns,” have become an increasingly important and common element in patent litigation both in district court and before the US International Trade Commission (ITC). Potential design-arounds create strategic challenges for both plaintiffs and defendants relating to timing, discovery, claim construction, and procedures. For example, in district court litigation, plaintiffs must choose between broadly seeking discovery related to potential design-arounds and risking a finding of noninfringement by those design-arounds, or sitting back and attempting to preclude evidence regarding potential design-arounds. By contrast, defendants must choose between introducing potential design-arounds early in discovery and risking an adverse adjudication, or waiting until later on in litigation and risking preclusion or other unwanted consequences.

Originally published in IP Litigator on December 2, 2014.