Configuring My Claims

David S. Carus, August 7, 2014

The claims of a patent application are configured to define the metes and bounds of what is regarded as one’s invention.  It seems that the term “configured to” is causing some controversy these days inasmuch as Federal Circuit Chief Judge Rader1 went out of his way to give his two cents on the topic.  To appreciate the use of the term “configured to,” one must understand how it is that witty patent prosecutors started using the term.  Back quite a few years ago, the use of means-plus-function language (where a claim is written in terms of function rather than structure) was rather common.  A case limited the interpretation of the element being described by the functional language to the structure disclosed in the patent specification for performing.  All of a sudden the use of means-plus-function language no longer looks appealing.

However, to broadly define an apparatus by its function, as with means-plus-function language, yet to avoid an interpretation under the means-plus-function provision (and thus, invoking the strict limitation noted above), witty patent prosecutors latched onto the “configured to” language.  While the PTO has recently been paying more attention to claim language with respect to “means-plus-function” language, the concurring opinion by Chief Judge Rader in the Superior Industries2 case seems to suggest that the “configured to” language be scrutinized to determine whether such language should be interpreted under means-plus-function.

Indeed, from a prosecution perspective, what we are seeing at the PTO is a renewed interest in the means-plus-function analysis.  It may be just a matter of time before “configured to” is determined to be an equivalent to “means for” however limited to cases where the structure is capable of reasonably being described in terms of its structure rather than by way of function.  For example, in the Superior Industries case the recitation at question was a support frame configured to support an earthen ramp. Indeed, a support frame can more likely be described in terms of its structural components rather than by its function.

In contrast, in cases where the structural components do not necessarily define the function, the “configured to” language may not be considered a substitute for “means for.”  For example, a processor, a controller, etc., structurally includes millions of interconnected electronic components.  It is this controller or processor that is configured to perform the function.  Merely reciting the components that make up the processor does nothing to convey the function they perform, as they can perform at least several functions.  In this case, the use of “configured to” without invoking means-plus-function seems more appropriate.

1Chief Judge Rader has since resigned from the Federal Circuit.
2See Superior Industries, Inc. v. Masaba, Inc., (Fed. Cir. 2014).

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