Taking Method Claim Steps Out of Order?
A method claim lists a series of steps. Does the order of steps matter in interpreting the claim? The answer is a favorite one of lawyers – it depends. A recent Federal Circuit case addressed the issue and found a specific order of steps required by implication, based on the claim language used.
Of course, method steps may explicitly recite an order, for example with a first step involving an action such as “transmitting,” and the next step beginning with the phrase “after the transmitting.” When a claim explicitly sets an order for at least some of the method steps, that order controls the interpretation of the claim. (It is possible for some, but not all, of the method steps to state that they occur before, after, or even simultaneously with other of the steps.)
But when method claims don’t explicitly specify an order of the steps, the general rule is that the steps may be performed in any order, unless logic or grammar indicates that there is an implicit order for the method steps. Thus, MPEP 2111.01(II) states that it is “improper to read a specific order of steps into method claims where, as a matter of logic or grammar, the language of the method claims [does] not impose a specific order on the performance of the method steps, and the specification did not directly or implicitly require a particular order,” citing Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003).
Such “logic or grammar” considerations were found to implicitly require an order for a pair of method steps in Sound View Innovations v. Hulu, No. 2024-1092 (Fed. Cir. Jan. 29, 2026). The claim at issue involved a method for reducing network latency for a network hosting streaming media (SM) objects, that included as its first recited steps “receiving a request for SM objects” from a client, and “allocating a buffer … to cache at least a portion of said requested SM object." The claims did not explicitly recite an order for these two steps, and the question of infringement depended on whether the claim required the two steps to be performed in the order listed, since the accused infringer allocated a buffer before a request for an SM object was received.
The court focused on the past participle “requested” in the second-listed method step, stating that “for ‘requested SM object’ to make sense, a request must have occurred before the object can be described as ‘requested.’” The two steps had an implicit order in that the steps had to be performed in their written order because, as the court state, the “subsequent step references something logically indicating the prior step had been performed,” quoting Altiris, 318 F.3d at 1370. The lower court’s summary judgment of noninfringement of this claim was therefore affirmed.
When it comes to patent claims, the devil is in the details, and the words chosen can have significant effects on the scope of the patent.
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