Categories: Published Articles
      Date: Aug  5, 2017
     Title: ''Adapted to'' After Aspex

''Adapted to'' After Aspex

Sean Burke

A recent trio of Federal Circuit cases has exposed uncertainty about the meaning of the linking phrase “adapted to.” Under the new intrinsic evidence standard, “adapted to” is initially presumed to mean “configured to,” but may be broadened to mean “capable of” if there exists support in the claims and specification.

The intrinsic evidence test has caused three problems for patent practitioners. First, the presumption of the narrower “configured to” meaning violates the broadest reasonable interpretation standard at the Patent & Trademark Office. Second, the use of intrinsic evidence unavoidably imports limitations from the specification into the claims. Finally, litigators have exploited, and likely will continue to exploit, the two definitions of “adapted to” by advocating either the broad definition or the narrow definition, depending upon whether the party owns the patent in question.

These problems are caused by the fact that Aspex allows inventors to define a legal term of art. Ordinarily, every claim at the PTO is construed under the broadest reasonable interpretation in view of the specification. However, this rule only applies to the elements of the claim, not the underlying claim structure. Claim formatting language, like “comprising” or “consisting of” carries important and immutable legal meaning. Legal terminology ordinary cannot be redefined at the convenience of the inventor.

A better, case law-consistent alternate already exists in the MPEP. Starting with the presumption that “adapted to” means “configured to,” the MPEP requires a determination of whether the “configured to” element is purely functional. If it is, the next inquiry should be whether the element is valid under 35 U.S.C. § 112(f). If so, then it should be construed as a “means for” element. If not, the claim is indefinite under 35 U.S.C. §112(b).

If the “adapted to” element is not purely functional and contains some structural elements, then it should be treated as an ordinary functional element. Under the MPEP test, non-§112(f) structural/functional elements must adequately disclose the claimed element. Presumably, this should also include whether the structural/functional element is “configured to” or “capable of” performing the function. If the element does not adequately disclose this relationship, it should be considered indefinite.

The MPEP inquiry does not hinge on the ephemera of the specification as much as it does the structure of the claim. It also allows the PTO to return to BRI without importing limitations from the specification. Additionally, making “adapted to” an acceptable linking phrase under §112(f) would allow the courts to employ seventy years of case law in construing the element.

98 J. Pat. & Trademark Off. Soc’y 594(2016)

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