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.” 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.” Due to this overly broad interpretation of the claim term “adapted to,” the Federal Circuit reversed the final rejection of the patent claims.
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.” 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.” 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.
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. 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.” 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.”
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. 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. 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.” 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.”
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.” 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.
Superior alleged that Masaba infringed multiple claims of five patents directed towards a dump truck. In general, the patents asserted by Superior fell into two categories, referred to by the parties as the “undercarriage patents” and the “unloader patents.” 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.” 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. 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. 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. Thus, the Federal Circuit felt that the missing context made it difficult to understand the issues and provide meaningful review.
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.”
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.”
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.
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 35 U.S.C. § 271(a).
 In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. Jan. 13, 2014).
 Id. at 1381.
 Id. at 1376.
 Id. at 1379.
 See Id.
 Id at 1380.
 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”).
 Id at 1380.
 Superior Indus., Inc. v. Masaba, Inc., 2013-1302, 2014 WL 163046 (Fed. Cir. Jan. 16, 2014).
 Id at 2.
 Id. at 4.
 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).