Method Claim with Inherently Ordinal Steps

In E-Pass Technologies, Inc. v. 3Com Corporation (also known as 3Com, Inc.), et al. (January 12, 2007), the Federal Circuit concluded that the following claim 1 E-Pass’s U.S. Patent No. 5,276,311 required that the method steps be completed in order:

A method for enabling a user of an electronic multi-function card to select data from a plurality of data sources such as credit cards, check cards, customer cards, identity cards, documents, keys, access information and master keys comprising the steps of:

transferring a data set from each of the plurality of data sources to the multi-function card;

storing said transferred data set from each of the plurality of data sources in the multi-function card;

assigning a secret code to activate the multi-function card;
entering said secret code into the multi-function card to activate the same;

selecting with said activated multi-function card a select one of said data sets; and

displaying on the multi-function card in at least one predetermined display area the data of said selected data set.

According to Circuit Justice Linn:

Substantively, because the language of most of the steps of its method claim refer to the completed results of the prior step, E-Pass must show that all of those steps were performed in order. E.g., ’311 patent, claim 1 (“transferring a data set . . . ; storing said transferred data set”); see Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1376 (Fed. Cir. 1998) (holding that “the sequential nature of the claim steps is apparent from the plain meaning of the claim language and nothing in the written description suggests otherwise”).