Order of Steps Crucial for Interpreting Functional Apparatus Claims

The recent Court of Appeal for the Federal Circuit (CAFC) case Rothschild Connected Devices Innovations LLC v Coca-Cola Company 24-1253 considered whether the claim scope of an apparatus claim that contains steps is restricted to apparatus’s that are configured to perform its steps in the order in which they are written in the apparatus claim.

Rothschild had sued Coca-Cola for infringing his patent for a system and method for creating a personalized consumer product. Claim 11 of that patent is for a beverage dispenser which, amongst other integers, contained:

a communication module configured to transmit the identity of the user and the identifier of the beverage to a server over a network, receive user generated beverage product preferences based on the identity of the user and the identifier of the beverage from the server and communicat[e] the user generated beverage product preferences to controller.

The U.S. District Court for the Northern District of Georgia granted summary judgment of noninfringement to Coca-Cola finding that its Freestyle dispensers do not infringe as their communication module performs its steps in a different order to that given in claim 11 of Rothschild’s patent.

Applying CAFC precedent, the CAFC applied the following two-part test for determining if steps that do not otherwise recite an order must nonetheless be performed in the order in which they are written:

Firstly, does the claim language determine, as a matter of logic or grammar, that they must be performed in the order written?
If not, does the rest of the specification determine whether it directly or implicitly requires such a narrow construction?

In applying the first part of that test the CAFC agreed with the District Court’s finding that the “… to a server …”: and “… from the server …” elements in the communication module integer of claim 11 require as a matter of logic or grammar that the steps be performed in the order in which they are written.

The CAFC applied the second part of that test to the  “communicat[e] the user generated beverage product preferences to controller” element in claim 11’s communication module integer, finding that the specification contains language and figures describing that step occurring after the “… from the server …” step. It was also noted that the specification contains nothing suggesting Rothschild’s contrary reading of claim 11.

The CAFC were not persuaded by Rothschild’s contention that the apparatus claim cannot require ordered steps as apparatus claims cover what a device is, not what a device does. The CAFC held that the principle that apparatus claims cover what a device is, not what it does, is not applicable when an apparatus claim depends on functional claiming to describe the apparatus. In such cases what the device does (and how it does it) is highly relevant to understanding what the device is, with the result that language concerning how it must do them cannot be disregarded.

Authors: Quinn Miller and Tom Robertson

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