“Configured To”

Historically, operations of elements of apparatus claims were written in present tense (e.g., “displaying”).  Accused infringers sometimes argued their electronic devices did not infringe when in a powered-down state.  Rather, the accused infringers would suggest their customers infringed the patent.

For example, the accused infringers might argue their electronic devices, in a non-operational state, do not perform the “displaying.”  Rather, the device that performs the “displaying” is their customers’ powered-up devices.

This distinction could be important when trying to establish jurisdiction before the US International Trade Commission (ITC).

Patent prosecutors therefore adopted “configured to” language.  Patentees argued the electronic devices are “configured to” perform their operations, even when the devices are powered off.

Accused infringers responded by evolving their arguments.  These parties started arguing each word in a patent must be considered.  Thus, in the accused infringers’ view, the term “configured to” must be distinguished from the term “to.”

Specifically, the accused infringer might argue an element of a powered-down electronic device is “to” perform an operation, such as after receiving power.  The accused infringers might argue that, in contrast, an element “configured to” perform the operation must have some additional attribute, pertaining to its configuration.  Thus, in the view of these accused infringers, there must be some special configuration of an element “configured to” perform the operation.  The accused infringers would then argue to import into the claim some configuration described in the specification that is not performed by their electronic device.

It is difficult for patent prosecutors to respond effectively.  Notably, Examiners sometimes interpret the word “to” (e.g., in the context of “to display”) as intended use.  MPEP 2114 II.  Accordingly, the Examiners might give such features limited patentable weight.

Rather than construct a blanket approach, I suggest a fact-based approach based on a variety of factors.  The first factor is the nature of the invention.  Is the invention software, non-software electrical or electronic, or mechanical?  Another factor is the nature of the element: in the context of the claim, is the element performing novel and inventive operations, or is the element performing the same operations as a conventional element?  I also consider where in the claim the operation is being recited: in the body of a claim, in a “wherein” clause, or in a dependent claim.  In addition, I suggest considering how other elements in the claim are recited, as well as the phrasing in other claims in the same (or related) applications.