A claim limitation describing a previously recited element as “being provided” in a particular way may be interpreted as a characteristic of that element rather than a separate method step. Here, for example, a “pre-processing” step at a client device in accordance with “pre-processing parameters” that included the limitation “said one or more pre-processing parameters being provided to said client device from a device separate from said client device” was found to not require that the pre-processing parameters be provided to the client device as a separate step of the computer-implemented method because the “being provided to” language was merely a reference to a characteristic of the pre-processing parameters. “It is not a step of the method, nor does it require current or ongoing activity.” It may therefore be best to relegate characteristics of any claim elements to sub-clauses such as “being provided by” to prevent additional steps from being required for infringement unless it is important how those characteristics are obtained.
Background / Facts: The patent being asserted here is directed to the processing of digital content, such as a digital photo, including software that allows a user to place the photo into a website form either by dragging and dropping the photo from the user’s computer or by using a mouse click within the website. The claims recite “pre-processing” digital content at a client device in accordance with one or more pre-processing parameters, with “said one or more pre-processing parameters being provided to said client device from a device separate from said client device.” The accused device sends photographs via a multimedia messaging service (“MMS”) as used by smartphones and tablets with similar pre-processing parameters, but these parameters are pre-programmed in the device by the manufacturer.
Issue(s): Whether the asserted claims of the patent require that pre-processing parameters be provided to the client device as part of the computer-implemented method for pre-processing digital content.
Holding(s): No. “We find that ‘being provided to’ is not used as a verb in [the] claim [], but instead is a part of a phrase that conveys information about the ‘pre-processing parameters.’ In this claim, the pre-processing parameters are ‘being provided to’ the client device from a second device. [] This is not a step in the claimed method. It is, instead, a phrase that characterizes the claimed pre-processing parameters. The use of the term ‘said’ indicates that this portion of the claim limitation is a reference back to the previously claimed ‘pre-processing parameters.’ [] That the pre-processing parameters come from a second device is merely a characteristic of the parameters. It is not a step of the method, nor does it require current or ongoing activity.”