Process Capability
Cybersettle v. National Arbitration Forum (CAFC 07-1092) [non-precedential]
The patented system iteratively compares settlement offers for claims, reporting results each round, until close-enough convergence results in a settlement.
NAF had argued non-infringement because the claims required multiple offers, and that those offers occurred before comparison starts. The district court took the view that having the capability of accepting multiple offers was sufficient, Cybersettle's take. On that point, the CAFC disagreed: the claimed method must be performed, beyond sheer capability. No one bought the argument that method order was important if not specified as such.
A patented method is a series of steps, each of which must be performed for infringement to occur. It is not enough that a claimed step be “capable” of being performed. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006) (rejecting an argument that a claim requiring the replacement of appliances can be performed if the appliances are merely “capable of” being replaced); NTP v. Research in Motion, Ltd., 418 F.3d 1282, 1318 (Fed. Cir. 2005) (“[T]he use of a [claimed] process necessarily involves doing or performing each of the steps cited.”). A party that does not perform a claimed step does not infringe a method claim merely because it is capable of doing so.
Absent affirmative indication to the contrary, method steps need not be performed in the order in which they are recited. Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1343 (Fed. Cir. 2001).
Infringement decision vacated; case remanded under CAFC-modified claim construction.
