“Configured to” and “capable of”

While some examiners at the PTO push back on the limiting effect of “configured to” or “capable of” claim language in apparatus claims and other examiners do not, the Federal Circuit typically treats such language as limiting during litigation.  The recent oral argument of Bally Technologies, Inc. v. Business Intelligence Systems Solutions, Inc., App. No. 2013-1131 (Fed. Cir. Nov. 8, 2013) not only highlights that the Federal Circuit treats such language as limiting but it also raises some questions about apparatus claims that recite a claim element as “configured to [achieve a particular result].”

The Federal Circuit panel merely issued a Rule 36 judgment.; however, you can review the relevant district court order [here] for more background.  An example of a claim at issue in the case was claim 1 of the ‘367 patent:

1.  A data visualization system comprising . . . a contour generator configured to generate and display one or more contour lines at least partly around each data point or group of data points, each contour line representing data values that are less than the data value[] of the data point[] around which the contour line is displayed.

The relevant discussion concerning the “configured to” language is available [here].

Some of the questions raised were:

1) Does use of the phrase “configured to [produce a particular result]” in an apparatus claim require that the result be produced every time the apparatus is used rather than just some of the time?

2)  Does the case law that addresses claims using the phrase “capable of” apply to claims that recite “configured to?”  For example, does the Finjan case apply to “configured to” claims.

At one point during the oral argument, the appellant mentioned a district court case from August concerning Versata.  Apparently the judge in that case treated “configured to” language and “capable of” language differently.  I wasn’t able to locate a link to the Versata opinion.

For an interesting discussion of functional claiming from a prosecution perspective see “Functional Claiming and Functional Disclosure,” 6th Annual Advanced Patent Law Institute, January 20-21, 2011, Alexandria, VA by Bradley L. Wright [Link].

UPDATE September 15, 2018

Here are some more “configured to” and “capable of” opinions:

Parkervision, Inc. v. Qualcomm Inc., __ F.3d __ (Fed. Cir. 2018)

Dell Inc. v. ACCELERON, LLC, 818 F.3d 1293 (Fed. Cir. 2016)

Ericsson, Inc. v. D-Link Systems, Inc., 773 F.3d 1201 (Fed. Cir. 2014).

Nazomi Communications, Inc. v. Nokia Corporation, 739 F.3d 1339 (Fed. Cir. 2014).

UPDATE October 4, 2018

Versata Software, Inc. v. SAP America, Inc.,717 F.3d 1255, 1262-63 (Fed. Cir. 2013),

ViaTECH TECHNOLOGIES INC. v. Microsoft Corporation, No. 2017-2276 (Fed. Cir. May 23, 2018).



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