by Sergei Ikovenko, Ph.D and David Booth

Abstract:

Your company, from time to time, may find they are restricted in new product design options, and subsequently market segment opportunity, because of limited freedom to practice a design. This retrospective case study highlights a method that has been used effectively to identify design options close to the target patent.

Background:

Even following the most diligent searches to determine freedom to practice a design, many companies find it necessary, part-way through the new product development process, to navigate around competitive patent barriers that become visible in the course of the project. This can cause considerable delays in the market launch and represent significant losses of planned revenue and increased project costs.

The Challenge:

Because of the need for confidentiality surrounding cases involving patents and trade secrets, a retrospective case study is used as an example to illustrate a method that can potentially help when faced with the tough situation of being immobilized by an IP barrier. This study focuses on a manufacturer's need to maneuver around the Ueda US Patent # 4,847,647, Camera Furnished with Strobe Unit Capable of Changing Angle of Illumination, and serves as an example of how to identify novelty close to a target patent. Central to the discussion is the mechanism that changes the angle of flash by changing the position of the flash tube. A methodology is shown that will successfully identify an alternative technology to change the angle of flash.

Solution:

A typical course of action in this situation is to review the target patent and work with a patent attorney to quickly propose solutions that will not infringe claims that have been already granted. Sometimes this approach is effective. More times than not, however, this approach does not yield a satisfactory solution due in part to limitations in communication about the design and the law between the inventor and the attorney. There is tremendous pressure on the inventor to articulate a non-infringing design and at the same time, they struggle with being stuck in the same paradigm of the design concept they've created. For them, it is difficult to think outside of the box that they have produced. Compounding the situation is the fact that the majority of inventors are not familiar enough with the subtlety of patent law to understand how to reformulate the design solution. On the attorney's side, many have technical backgrounds but fall short on day-to-day in-depth contact with specific fields of engineering or science to stay current with the latest technological solutions of practical problem solving. Sometimes the needed solutions are outside the resident disciplines. Trying to propose a patentable design that meets a complex set of criteria can be like trying to find a particular solution to a differential equation before finding its general solution.

The method demonstrated in this study facilitates an intermediate step which makes it easier and more effective to find non-infringing alternatives. At the same time, it helps both the inventor and the attorney shift their thinking away from the current design and come up with other solutions their competitors may envision. The strategy is to find a ‘general' solution to the problem first, then try different ‘particular' solutions over the general framework to see how well they match the problem's solution criteria. This is accomplished by looking functionally at the target patent claims. When expressed in graphical form, the complexity of the problem is reduced, a general solution is formulated and particular solutions can be tried and selected based on how well they fit.

Results:

This method has been used numerous times by start-ups to Fortune 500 companies to successfully find novel solutions that navigate competitive IP barriers resulting, in some cases, in products that represent significant portions of market share. Together, both authors have used this method to produce over 80 patents, patent applications and a considerable number of important manufacturing trade secrets.

More detail regarding this case study is available in this document, Camera Flash Case Study.

About the Authors:

Sergei Ikovenko, Ph.D., Eng.D., PEis one of leading consultants and project facilitators in innovation technology of design. He has conducted more than 400 courses on innovation and TRIZ (Theory for Inventive Problem Solving) topics for Fortune 500 companies worldwide. Dr. Ikovenko was the primary instructor to deliver corporate TRIZ training programs at Procter & Gamble (about 1,500 engineers trained during 3 years), Mitsubishi Research Institute (200 engineers), and other companies. He received special awards for development creativity at Procter & Gamble and Unilever.

Dr. Ikovenko holds two doctorate degrees - a Ph.D in Industrial Engineering and an Eng.D. in Environmental Engineering and Sciences as well as master degree in Patent Law. He is the author of more than 81 publications, and an active member of ASME, ACS, and ASEE.

He has studied and taught TRIZ since 1986 and holds a certificate of TRIZ instructor from G. Altshuller, the founder of TRIZ. Dr. Ikovenko has effectively utilized his TRIZ expertise to receive 77 patents in various engineering fields. He holds numerous silver and gold awards from international engineering shows and exhibitions for his inventions as well as Innovation Award from Oak Ridge National Lab of the Department of Energy, USA.

Sergei successfully deployed TRIZ programs at Samsung Electronics (South Korea) and specifically within Six Sigma Black Belt education. Dr. Ikovenko is a Six Sigma Green Belt and is finishing his Black Belt project.

Dr. Ikovenko is a member of the Board and a Vice-President of International TRIZ Association (MA TRIZ). He is listed in International "Who is WHO in Information Technology" and is a member of New York Academy of Sciences and effectively serves as a Vice Chairman of the Advisory Board of the Ministry of Science and Education of Australia and is a visiting professor of a number of European universities.

In addition, Dr. Ikovenko has taught seminars at MIT, Harvard University, Carnegie-Melon University, California Institute of Technology, Stanford University, Vanderbilt University, University of London, Oxford University, and other leading educational institutions worldwide. He holds a license of Professional Engineer from the Commonwealth of Massachusetts, and is a professor adjunctis of Massachusetts Institute of Technology (Cambridge, USA).

Dave Booth, PE is a principal of InvenGen Engineering and experienced both as a technical leader and manager skilled in medical device development, manufacturing implementation, and applied product R&D program management. His career as an engineer and engineering manager has spanned over 25 years in the industry, during which he has created state-of-the-art product designs and developed manufacturing processes for OEM automotive & aircraft parts, commercial electronics, and over 20 medical devices involving multiple million dollar sales volumes annually. As an inventor, his intellectual property includes both disposable and reusable medical devices as well as production equipment patents and manufacturing process trade secrets.

He holds two Master Degrees (business & engineering) from Penn State University and a Bachelor of Mechanical Engineering from Villanova University. He is a registered professional engineer in the Commonwealth of Pennsylvania and a certified manufacturing engineer through the Society of Manufacturing Engineers. Additionally, Dave has published and presented his work in artificial intelligence systems and engineering organization and design management. He is also certificated in Kirton's Adaption/Innovation Theory.