By Stephen B. Schott firstname.lastname@example.org
Claim drafting language choice is critical in a patent application. One of the terms that claim drafters sometimes use is “configured to.” Although there have been some warnings about the risks in using this term, Chief Judge Rader’s recent non-precedential concurring opinion in Superior Industries, Inc. vs. Masaba is the clearest indicator yet that “configured to” is a phrase that patent claim drafters may want to avoid until its scope is clear.
Superior Industries involved several patents including US Patent 7,424,943 that included a claim element for a support frame  that is “configured to support an end of an earthen ramp .” A figure from the patent helps show the claimed device.
Although Judge Rader did not specifically call out the “configured to” language, he offered advice to the District Court on remand:
I agree with, and join in, the majority opinion. However, in reviewing the claim constructions articulated by the district court, I observe that it read a great deal into the claims in the process of construing them. Thus, I write separately to articulate a couple claim construction principles that may assist the district court on remand when it revisits its constructions. First, in claim construction, one must not import limitations from the specification that are not part of the claim. Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed.Cir.2012). Indeed, claims generally are not limited to any particular embodiment disclosed in the specification, even where only a single embodiment is disclosed. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.Cir.2004). Second, and relevant to this case, a system claim generally covers what the system is, not what the system does. Hewlett–Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (“The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.”). Thus, 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.Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed .Cir.2009).
Most commentators, including Dennis Crouch at Patently-O, interpret Judge Rader’s concurring opinion as directed at the “configured to” claim language. This is a safe assumption and may be an indicator that the Federal Circuit will take up a “configured to” case in the near future.
To date, the Federal Circuit has skirted around claims that use “configured to” and Judge Rader’s quote cites some relevant cases. The Manual of Patent Examiniton Procedures (MPEP) section 2114 advises examiners that “While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function…Apparatus claims cover what a device is, not what it does.” The MPEP cites In re Schreiber, 126 F.3d 1473 (Fed. Circ. 1997) andHewlett Packard Co. v. Bausch and Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Despite the MPEP’s confident assertion, these cases do not stand for the premise it cites, and thus it remains unclear what the scope of a functional limitation is.
When drafting a claim with functional language, a claim drafter should consider the following.
- Add depending claims with varying levels of structural detail to provide a patentability and validity position if the functional language is found to be indefinite.
- Claim structural elements in combination with functional language.
- When adding structural elements to functional language, be careful not to create a claim that is both a method and apparatus, which is prohibited. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005)
- Be careful to avoid creating a means plus function claim that would be interpreted under 35 USC 112(f).