It is not Enough for Infringement that a Claimed Step is Capable of Being Performed

Cybersettle, Inc. v. National Arbitration Forum, Inc., [2007-1092] (July 24, 2007) [BRYSON, Michel, Lourie] NON-PRECEDENTIAL The Federal Circuit vacated one aspect of the district court's claim construction of U.S. Patent No. 6,330,551 that resulted in a finding of infringement, and remanded.
SIGNIFICANCE: One does not infringe a method claim merely by being capable of performing the required step, but only if the step is performed.
BRIEF: The claim was directed to a method of dispute resolution which required the step of "receiving a plurality of demands". The patentee argued that this meant that the system be capable of receiving a plurality of demands, while the accused infringer argued that it required actual receipt of a plurality of demands. The district court agreed with the patentee, but the Federal Circuit did not, stating "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." The Federal Circuit added: "A party that does not perform a claimed step does not infringe a method claim merely because it is capable of doing so." The patentee argued that the accused infringers construction was illogical, because it would require the running of a second round, even if the dispute was settled in the first round. However, the Federal Circuit did not find that construction illogical. The patentee also argued that the construction was wrong because it excluded the preferred embodiment, but the Federal Circuit noted that while that was the case, other claims in the patent covered the "excluded" embodiment. The accused infringer also argued that the claims required receipt of multiple demands and offers before the first comparison, but the Federal Circuit rejected this construction because methods steps need not be performed in the order in which they are recited.