Federal Circuit Rules That Order Of Steps Sometimes Does Matter

by | Mar 11, 2025 | Amendment Practice, Claim Construction, Federal Circuit Appeal, PTAB News

By Simon Maxwell and Carl Kukkonen –

Back in May of 2020, European patent-licensing company Sisvel filed a flurry of lawsuits against a dozen tech companies who had allegedly infringed Sisvel’s portfolio of wireless communication and networking patents.  A consortium of tech companies, including Telit Cinterion, reciprocated by filing IPR petitions challenging the claims being asserted by Sisvel.

Lately, these IPRs have not been going well for the patent pooling giant, at least on appeal.  The Federal Circuit issued a series of decisions either affirming the PTAB’s decisions to declare Sisvel’s claims unpatentable, or vacating the PTAB’s decisions to uphold Sisvel’s claims.  A recent ruling in the case of Telit Cinterion Deutschland GmbH v. 3G Licensing S.A. is no exception to this apparent trend.  On February 3, 2025, the Court vacated the Board’s determination that two of Sisvel’s substitute claims were patentable, finding error in their proposed claim construction.

The specific substitute claims at issue in this IPR proceeding were claims 69 and 77 (which is treated as substantively identical to claim 69) of U.S. Patent 7,580,388 (the ‘388 patent).  Substitute claim 69 is a dependent claim in a cascade of multiple dependent claims as follows:

66. A method of transmitting control information from a mobile terminal in a network, the method comprising: receiving a first message in the mobile terminal, the first message including information indicating at least one available configuration for transmitting a second message . . .

68. The method of claim 66, wherein the at least one available configuration comprises a predefined configuration mode and a predefined configuration identity.

69. The method of claim 68, wherein the predefined configuration mode comprises utilizing a new message format;

wherein the new message format adapts a message format by omitting data;

wherein another message is transmitted using the adapted message format;

wherein omitting data includes omitting START values transmitted in a message preceding another message.

The underlined limitations were added by Sisvel to amend claims 69 and 77 during the IPR proceedings.  The bolded terms represent the four different messages that are transmitted, according to the claims.  In Sisvel’s original Motion to Amend Claims, claims 69 and 77 each recited “[w]herein the new message format adapts the second message to omit one or more START values.”  In response to the Board’s observation that Sisvel had not provided any explanation as to where the Specification supported these limitations, Sisvel submitted a Revised Motion to Amend Claims that included the versions of claims 69 and 77 reproduced above.

In their Final Written Decision, the Board found that the revised substitute claims 69 and 77 were supported by the combination of lines 12:15 – 18 and Figure 15 of the ‘388 patent, shown here for reference:

Lines 12:15 – 18 recite: “[a] fourth embodiment allows a new message format to be utilized. The new message format may be adapted to include only the most necessary data. For example, the START values may be omitted in an RRC Connection Request message since the Start values are also transmitted in the Initial Direct Transfer Message.”

According to Telit, the amended claims, at best, mean the same thing as they did before, with “another message” referring to “the second message” and “a message preceding another message” referring to the first message.  They pointed out that the RRC Connection Request message is the only message that is described in the ’388 patent as omitting START values.  Furthermore, according to FIG. 15, the RRC Connection Request message is the first message and not just “a message” or “another message”.

The Board responded to Telit with the following:

The argument is unavailing, because “first message” does not have to be “first” in time. “First” is just a designation in the claim for identification purposes. As explained by Patent Owner, the RRC Connection Setup message is the “first message”; the RRC Connection Setup Complete message is the second message; the RRC Connection Request message is the “another message”; and the Initial Direct transfer message (not shown) preceding the RRC Connection Request message is the “message preceding the another message.”

In the decision on appeal, the Court declined to address whether there is a lack of written description, or if multiple embodiments of the ‘388 patent were improperly combined.  Instead, the Court stated that the claims themselves necessarily require that the “first message” also be the first in time, such that it precedes both the “another message” and the “message preceding another message.”

In the analysis of claim 69, the Court found that the “predefined configuration [mode] must be in use before the new message format can be utilized.”  Working backwards from this, “the predefined configuration mode” is part of “the at least one available configuration” (claim 68), which is indicated by information included in the “first message” (claim 66).  The Court concluded that the “first message” provides the format used to adapt the “message preceding another message” into the “another message,” and therefore the “first message” must be received prior to the steps of claims 69 and 77.  Going one step further, the Court remanded to the PTAB to determine patentability of the claims in light of the requirement that the “first message” and the “second message” precede the “another message” and the “message preceding another message”.

In a rebuke of the PTAB’s reasoning, the Court stated “[w]hile there is a presumption that steps of a method claim are not required to occur in the order they are listed, that presumption can be overcome when ‘logic or grammar requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.’” (citing Mformation Techs., Inc. v. Rsch. in Motion Ltd.).

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Carl Kukkonen

Partner at Jones Day
An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.