In recently decided Sound View Innovations, LLC v. Hulu, LLC, (“Sound View”), the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a district court holding that Sound View Innovations’ patent (the ‘213 patent) required a specific order of steps. In this precedential decision, the CAFC affirmed that Hulu’s accused products did not perform the claimed limitations in the required sequence, and Hulu did not infringe the ‘213 patent.
Generally, steps of a method claim are not construed to require any particular order. However, specific steps of a method claim may be construed to require a particular order if:
- the claim specifically recites an order[1]
- for example, “step 1… step 2…”;
- the claim language requires that the steps be performed in the order written[2]
- as an order of logic; or
- as an order of grammar; or
In Sound View, the CAFC discusses the order of patent claim steps based on the logic and grammar of the claim language. Claim 16 of the ‘213 patent recites a method comprising:
“… receiving a request for an SM object from one of said plurality of clients at one of said plurality of helper servers;” and
“allocating a buffer at one of said plurality of HSs to cache at least a portion of said requested SM object…”[4]
Here, the CAFC affirmed the district court’s ruling that the grammar and logic of the claim language the ‘213 patent required the first limitation (“receiving a request…”) to be performed before the second limitation (“allocating a buffer…”).
- Grammatical basis: The court reasoned that “a request for an SM object” in the first limitation provides antecedent basis for “said requested SM object” in the second claim limitation.
- Logical basis: the past participle “requested” is:
- a grammatical descriptor; and
- a status indicator reflecting a completed action, with the completed action being the receiving of a request.
The CAFC reasoned that there is a logical relationship between “a request for an SM object” and “said requested SM object.” In particular, the CAFC indicated that “for ‘requested SM object’ to make sense, a request must have occurred before the object can be described as ‘requested.’ Indeed, only after a request is received does the SM object acquire the status of being “requested.””[5]
In response to Sound View’s unsuccessful arguments that claim 16 could be performed in any order, the CAFC noted caselaw on implicit ordering, which says, “implicit ordering exists when there are inherent logical dependencies or functional relationships between the recited steps of a method claim.”[6]
In many patent drafting circumstances, it may be beneficial to avoid or limit ordered claim language. Avoiding ordered claim language may avoid unnecessarily narrowing the claims, thereby achieving the broadest possible patent protection. To avoid implicit ordering in claim language, the following questions may be asked:
- Would the steps in the claim still make logical sense if the written order of the steps changed? If the steps would not make sense, then there may be implicit ordering in the claim language.
- Consider revising the claim language so the steps as written would still make sense if the order was rearranged.
- Are there any adjectives or modifiers that indicate a logical relationship between the feature and a previously recited feature? For example, a “an SM object” followed by “requested SM object”? If so, there may be implicit ordering in the claim language.
- Consider revising the claim language to avoid the use of modifiers or adjectives. For example, change “received SM object” to “the SM object.”
If you have questions about these developments, contact the author of this article or your Dinsmore intellectual property attorney.
[1] Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014), citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (citation omitted).
[2] Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014), citing TALtech Ltd. v. Esquel Apparel, [*1399] 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”).
[3] Id.
[4] Sound View Innovations, LLC v. Hulu, LLC, 2026 U.S. App. LEXIS 2261, *3.
[5] Id. at *10-11.
[6] Id. at *10, citing Interactive Gifts Express, Inc. v. Compuserve Inc., F.3d 1323, 1342(Fed. Cir. 2001) (citation omitted) and Mformation Techs., Inc. v. Rsch. In Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (citation omitted).