Out of Order: The Order of Steps in a Method Claim

In Mformation Technologies, Inc. v, Research in Motion Limited, [2012-1679, 2013-1123] (Fed. Cir. 2014), the Federal Circuit affirmed the grant of JMOL because it agreed that the order of the steps was important to infringement.  The Federal Circuit noted the general rule that “[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (citation omitted).  However, the Federal Circuit went on to explained that a claim “requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires” an order of steps. TALtech Ltd. v. Esquel Apparel, Inc., 279 F. App’x 974, 978 (Fed. Cir. 2008); see also Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1320 (Fed. Cir. 2013) (concluding that a claim that recites “processing” an “electronic advertisement” necessarily indicates that “the creation of the ad must happen before the processing begins”).

The order of the steps in a method claim is in the control of the claim drafter:  if the order of steps is not important, then the draft should make sure the words chosen don’t imply an order as a matter of “logic or grammar.”  Numbering or lettering the steps can also imply an order, and should be used judiciously.