Functional Claim Language – “Adapted To” and “Configured To” – Having Narrow Interpretations

by McDonnell Boehnen Hulbert & Berghoff LLP
Contact

Patent claim drafting is a challenging exercise that requires balancing potential infringement of the claim against the prior art. A patent practitioner may easily draft a claim of very narrow scope, but if such claim has a low likelihood of being infringed, the value of the claim is extremely diminished.

Analyzing potential infringement of a claim requires consideration of who may be an infringer. An infringer is generally defined as “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor.”[1] It is often desirable to draft a claim to potentially cover the possible infringing activities of making, using, or selling the patented invention. However, selection of claim terms, or even simple selection of verb tense in a claim, may limit infringement to only one category of infringing activity.

For inventions characterized by functional elements, a claim may recite a device or component of the device that is “configured to” or “adapted to” perform a function, in contrast to a claim that recites a device or component that “performs” the function. A claim that explicitly recites that a device “performs” a particular function raises a question of whether making or selling the device would infringe the claim, since neither the act of making or selling the device would generally require the device to actually perform the function (of course, an end user of the device could use the device to perform the claimed function, but patent holders generally avoid suing such parties).

Claims that recite a device that is “configured to” or “adapted to” perform a particular function have a greater likelihood that making or selling the device could infringe the claim. However, claims that recite such “configured to” or “adapted to” language have recently been construed by courts in a more limited manner similar to means-plus-function claim terms. This may have unintended consequences for claim drafters.

In re Raymond Giannelli—“adapted to”

As one example, in In re Raymond Giannelli, the Court of Appeals for the Federal Circuit found that the claim term “adapted to” had been incorrectly construed to have the same meaning as “capable of.”[2] Due to this overly broad interpretation of the claim term “adapted to,” the Federal Circuit reversed the final rejection of the patent claims.[3]

The applicant had filed a patent application disclosing “an exercise machine on which a user can perform a rowing motion against a selected resistance, thereby strengthening the back muscles.”[4] On appeal, representative claim 1 recited:

1. A row exercise machine comprising an input assembly including a first handle portion adapted to be moved from a first position to a second position by a pulling force exerted by a user on the first handle portion in a rowing motion, the input assembly defining a substantially linear path for the first handle portion from the first position to the second position.

The Board of Patent Appeals at the US Patent Office (the “Board”) characterized the dispositive issue as being whether the chest press machine was “capable of being used by exerting a pulling force on the handles in a rowing motion.”[5] Affirming an obviousness rejection, the Board deemed it reasonable that a user could face the handles of the chest press machine of a prior art patent and exert a pulling force on its handles in a rowing motion.[6]

On appeal, the Federal Circuit found that the Board erred in sustaining the examiner’s rejections that the claims were obvious over the prior art patent chest press machine.[7] In particular, the Federal Circuit emphasized that the phrase “adapted to” within the claims of the application should have been given a narrower meaning, i.e., “that the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles.”[8] This reasoning was in line with the applicant’s argument that the Board’s decision was “based on an incorrect assertion that the chest press machine disclosed in the ’447 patent could be used as a rowing machine rather than considering how it would be used.”[9]

Although the Federal Circuit recognized that the claim phrase “adapted to” can also mean “capable of” or “suitable for,” in this situation, the Court stressed that the specification made it clear that “adapted to” has a narrower meaning in the claimed machine.[10] In particular, the Court reasoned that the specification discussed how the particular position of the handles relative to the primary and secondary lever arms and the resistance mechanism renders them “adapted” to be moved by the user’s pulling force.[11] The Court found that the location of those handles relative to other components is one of their structural attributes that enables performance of the rowing motion against the selected resistance and, thus, interpreted “adapted to” to mean “configured to.”[12] In making its decision, the Court referenced other decisions that also involved limiting the claim term “adapted to” to a narrower definition, such as “configured to.”[13]

Thus, using a narrow interpretation for the phrase “adapted to,” the Court found that the cited prior art failed to disclose handles that are adapted to be pulled in a rowing motion, but rather described a structure that “simulates as natural a human musculoskeletal outward pushing motion as possible while maintaining proper biomechanical alignment of the joints” and “the proper alignment of the wrists.”[14] Although the result was positive for the applicant by requiring an interpretation of the claims that was more specific to the structure/function described in the patent application (using somewhat of a means-plus-function analysis) so as to distinguish over prior art, this holding may cause concern for how courts are now interpreting functional claim language.

Superior Industries, Inc. v. Masaba, Inc. – “configured to”

Some interesting claim construction principles were also discussed in Superior Industries, Inc. v. Masaba, Inc., which was a non-precedential opinion from the Federal Circuit in which the Court remanded the case for further clarification.[15]

Superior alleged that Masaba infringed multiple claims of five patents directed towards a dump truck.[16] In general, the patents asserted by Superior fell into two categories, referred to by the parties as the “undercarriage patents” and the “unloader patents.”[17] The district court had previously construed multiple terms in the “unloader patents” to be consistent with the constructions proposed by Masaba, including constructions for the claim features of “configured to support an earthen ramp at a level even with the drive over surface,” and “frame member configured to support an end of an earthen ramp constructed against the frame member.”[18] As a direct result of the claim constructions of the district court, Superior conceded that it could not prevail on its infringement claims against Masaba, and successfully moved for summary judgment of non-infringement and dismissal of Masaba’s invalidity counterclaims.[19] Thereafter, Superior appealed the district court’s claim construction.

On appeal, the Federal Circuit reversed the district court’s decision and remanded the case for clarification due to the district court’s failure to explain how its claim term constructions would affect the patentee’s infringement claims and for sufficient factual context.[20] Although Superior acknowledged that it originally could not establish infringement under the district court’s claim construction, the district court’s opinion did not provide any context with respect to how disputed claim construction rulings related to accused products.[21] Thus, the Federal Circuit felt that the missing context made it difficult to understand the issues and provide meaningful review.[22]

However, in a concurring opinion, Chief Judge Rader articulated a few claim construction principles for the district court to consider when deciding subsequent constructions of the claims on remand. Judge Rader decisively indicated that “a system claim generally covers what the system is, not what the system does…[t]hus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function.”[23]

As a result, Judge Rader seemed to imply that a system claim covers the structure, not the function for the system disclosed in the specification. This interpretation seems to contradict the decision issued a few days earlier by the Federal Circuit in In re Giannelli, as discussed above. Perhaps the statements by Judge Rader may be considered in-line with the previous decision; however, it is unclear how Judge Rader would define a “non-functional claim term” versus a “functional claim term.”

Conclusion

As the courts continue to sort out how to interpret so-called functional claim terms, applicants may consider avoiding “adapted to,” “configured to,” or other possibly functional terms when unnecessary. But, in contrast to means-plus-function claim terms, “adapted to” or “configured to” is not currently an automatic trigger for the narrow interpretations limited to the structure/function described in the specification, and may depend on further details in the claims.

Optionally, a patent applicant may draft multiple claim sets including claims that have functional terms and claims without functional terms. With increasing excess claim fees, however, this is not always a practical option, and some choices must be made to balance cost with the potential risks of unwanted claim interpretations.

[1] 35 U.S.C. § 271(a).

[2] In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. Jan. 13, 2014).

[3] Id. at 1381.

[4] Id. at 1376.

[5] Id.

[6] Id.

[7] Id. at 1379.

[8] See Id.

[9] Id.

[10] Id at 1380.

[11] Id.

[12] Id.

[13] See Sta-Rite Indus., LLC v. ITT Corp., 682 F. Supp. 2d 738, 753 (E.D. Tex. 2010) (construing “adapted to,” in context, to mean “designed or configured to,” not “having the capacity to”); Boston Scientific Corp. v. Cordis Corp., 2006 WL 3782840 (N.D. Cal. Dec. 20, 2006) (construing “adapted to,” in light of patent as a whole, to mean “configured to,” not “capable of”).

[14] Id at 1380.

[15] Superior Indus., Inc. v. Masaba, Inc., 2013-1302, 2014 WL 163046 (Fed. Cir. Jan. 16, 2014).

[16] Id.

[17] Id.

[18] Id at 2.

[19] Id.

[20] Id. at 4.

[21] Id.

[22] Id.

[23] Id. at 5; see also Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009); Hewlett–Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).

 

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP
Contact
more
less

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!