Past Webinars

  • February 27, 2014
"Configured to"—Patent Claim Friend or Foe?

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “Configured to”—Patent Claim Friend or Foe?, presented by Steven G. Parmelee. The webinar will take place on Thursday, February 27, 2014, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

The number of issued U.S. patents having at least one independent claim that includes the phrase “configured to” has increased six-fold since the year 2000. But what does that expression really mean? To date, most of the time the Patent Trial and Appeal Board (PTAB) gives full weight to the features characterized by that expression. In a minority of decisions, however, the Board holds otherwise. What makes the difference? And in a recent decision by the U.S. Court of Appeals for the Federal Circuit, Chief Judge Rader argued that no patentable weight need be given to claim expressions that describe how a device is configured to perform a particular task. Has the PTAB been wrong most of the time?

During this webinar we will address these topics and more:

  • A brief history of “configured to”
  • A brief related history of functional claim language
  • Possible substitutes for “configured to”
  • Possible drafting solutions to avoid bad results with “configured to”

Our speaker will be Fitch Even partner Steven G. Parmelee. For over 35 years, Steve has assisted clients with global patent portfolio management, freedom-to-operate issues, complex litigation, and transactions. Having prepared well over 1,000 U.S. patent applications, he has extensive experience in complex patent preparation and prosecution in the U.S. and abroad.


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