Federal Circuit Decision May Impact Construction of Method Step Order

August 22, 2014

Thomas S. Chlebeck

What This Means to You

  • There is a risk of claims being construed as requiring an order of steps where the claims logically or grammatically require the order as written, or the specification directly or implicitly requires an order.
  • Where a single order is not desired, (1) avoid reciting acts as “steps” and basing one act on a previous act in the claims, and (2) include multiple orders and language stating that the order may vary in the specification.

Overview

Mformation Technologies, Inc. v. Research In Motion Limited, a recent decision in the U.S. Court of Appeals for the Federal Circuit (Federal Circuit), confirmed the risk of an order-of-steps requirement being read into method claims based on either the claim language or the specification. The Federal Circuit affirmed that a claim requires an order of steps where the claim language logically or grammatically requires the order or where the specification directly or implicitly requires the order.

Case Background

Mformation Technologies sued Research In Motion alleging infringement of one asserted patent. The district court jury awarded Mformation Technologies over $147 million, but the judge overturned this award with a grant of judgment as a matter of law in favor of Research In Motion because the asserted claims required an order of steps that the accused product did not infringe. A newly assigned judge awarded $206,000 to Research In Motion for costs. The Federal Circuit affirmed.

Decision Analysis

The Federal Circuit affirmed that the asserted claims required an order of steps for two independently sufficient reasons. First, the asserted claims required the order of steps as written as a matter of logic or grammar. Second, the specification directly or implicitly required the order of steps.

The claims logically or grammatically required the order of steps as written because one of the acts (“establishing a connection”) would have been superfluous if it was not distinct in time and prior to another act (“transmitting”). The specification directly or implicitly required the order of steps because the only description of “establishing a connection” stated that transmission occurs upon the connection being established.

Takeaways

For patent applicants, we recommend avoiding claim language that may logically or grammatically require the order as written, as well as language in the specification that might directly or implicitly require an order, unless such an order is desired. If a single order of acts might be too limiting, be careful about reciting method acts as “steps,” basing an act on a previous act, and referring to acts in certain language that suggests time (e.g., “established”). In the specification, we recommend describing your invention with different orders of acts whenever multiple orders may matter, as well as stating the acts may be ordered in any suitable way, including in a different way than described.

For patent litigants, if an order-of-steps requirement could affect your case, consider whether the claim language logically or grammatically requires the order as written or the specification directly or implicitly requires an order.