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Words matter! April 22, 2016

Posted by Brian Schar in Federal Circuit, General, Patent prosecution.

In patent prosecution, the specific word choices made in both the specification and the claims are critical to the validity and enforceability of those claims.

The Federal Circuit confirmed this in In re Man Machine Interface Technologies LLC.  The claims included “adapted to” limitations, such as “a body adapted to be held by the human hand.”  The drafter may have thought that “adapted to” was equivalent to the more-common “configured to.”  However, the Federal Circuit pointed out that, according to its precedent, “the phrase ‘adapted to’ generally means ‘made to,’ ‘designed to,’ or ‘configured to,’ through it can also be used more broadly to mean ‘capable of’ or ‘suitable for.'”  (In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).

Indeed, this language is lifted almost directly from In re Giannelli, which in turn lifted that language almost directly from Aspex Eyewear, which utilized dictionaries to construe the phrase “adapted to.”  (Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).

The Federal Circuit clearly considers “capable of” to be a broader construction than “configured to.”  That makes sense.  For example, the tip of a butter knife might be “capable of” turning a conventional slotted screw, but that butter knife is not “configured to” be used for that purpose.

However, anyone who has prosecuted patents at the USPTO knows that the Office tends to apply a “capable of” construction to every claim limitation, whether the applicant has chosen to limit his or her claims with an “adapted to” or “configured to” phrase, or in some other manner.

Here, the patentee was saved by the “reasonable” prong of the broadest reasonable interpretation standard, just as happened in In re Giannelli.  The specification made it clear that “adapted to” had its narrower meaning of “made to” or “designed to.”  Further, the specification expressly distinguished the type of device disclosed in the key reference cited by the Examiner.  As the Federal Circuit stated,” [t]he broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification.”

There are two lessons here.  First, make sure you fully understand the meaning of terms like “adapted to” before using them in a patent claim.  There are hidden pitfalls in virtually every approach to claim drafting, and it takes time to learn them, but you must learn them.  Second, the Federal Circuit continues to emphasize that the broadest reasonable interpretation of claim language must in fact be reasonable.  While it may be difficult to convince Examiners of this at times, hold fast to this argument, and emphasize it on appeal.



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