An express or implied order of operations may be used to infer that the operations constitute separate steps that must be completed in sequence, otherwise one of the steps would be subsumed by another and superfluous. For example, establishing a connection and transmitting a message implies that the connection must be established prior to and separately from the message transmission. Otherwise, if the transmission itself was sufficient to establish the connection, the separately recited establishing step would be superfluous. Care should be taken to avoid separately claiming features that may in reality be sub-features with respect to other features of the claim.
Background / Facts: The patent being asserted here is directed to the wireless activation and management of a wireless electronic device without the need to have physical access to the device. In this way, a business may remotely delete sensitive data from an employee’s smartphone or remotely deploy updates and troubleshooting, for example. The claims recite delivering a mailbox command from a server to the wireless device “by establishing a connection between the wireless device and the server [and] transmitting the contents of the mailbox from the server to the wireless device … wherein the connection is established based on a threshold condition.” Although the accused infringer transmits a similar command and the command establishes a connection with the server, it piggybacks this transmission on a pre-established Wi-Fi or cellular Internet connection, without a separate connection to the server being established prior to the server receiving the transmitted command.
Issue(s): Whether the “establishing a connection” sub-step must be completed before the “transmitting the contents” sub-step can commence.
Holding(s): Yes. “We are persuaded by [the accused infringer’s] argument that the separate sub-step for establishing a connection would become ‘superfluous’ if we concluded that a connection did not have to be established (completed) before transmission. That is because, under such construction of the claim, establishing a connection is necessarily encompassed in transmitting a command. … Further, we note that other sub-steps in claim 1 inherently require an order-of-steps. As a matter of logic, a mailbox must be established before the contents of said mailbox can be transmitted.”