“If … then” Claims

If you are currently dealing with patents that recite “if …then” claim limitations, you might find the oral argument in Sutton v. Nokia, 2010-1218 (Fed. Cir. Dec. 15, 2010) to be of interest.  The Federal Circuit only issued a Rule 36 opinion in the case; so, for background, the district court opinion in Sutton v. Nokia, 647 F.Supp.2d 737 (E.D. Texas 2009) is available here [Link].

 The claim language discussed in the oral argument is shown below.  Most of the oral argument focuses on whether the claim can logically satisfy both steps (1) and (2) or whether the claim fails for impossibility: 

(1) if the received packet has a predetermined header and the receiver is configured to receive unmodified messages, then processing the packet as a modified packet according to steps (2) to (8), otherwise sending the packet to a user’s application as an unmodified paging message,

(2) if the receiver is configured to receive only data information messages processing the packet according to steps (3) to (8),

(3) treating the packet as 7 bit characters and reconstituting any characters indicated by a predetermined flag,

(4) packing the 7 bit characters into 8 bit characters,

(5) checking a frame byte for type of packet and compression,

(6) decompressing the packet to data,

(7) validating the subchannel and if valid releasing security passing the data to an end user application, and

(8) if the message is a control message parsing and processing the control message.

Arguing contingent claim limitations requires a flair for formal logic, such as this statement by the patent owner’s counsel [Listen]:

That’s denying the antecedent fallacy, where you read into the contingent step that if the contingent is false then the negative of the consequent must be true.  You’re basically saying if the receiver is not configured as in step 2 then don’t do step (3) to (8).  And, that’s the logical fallacy that we pointed out in our briefing . . . . 

Another case mentioned during the oral argument is Cybersettle v. National Arbitration Forum, 2007-1092 (Fed. Cir. July 24, 2007).  That opinion is availble here for reference: [Link].  That non-precedential case makes the following statement about “if . . . then” claims without citation of any precedent:

It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.

Id. at page 7 of slip opinion.



You can listen to the entire oral argument in Sutton v. Nokia here: [Listen].

You can read the court’s opinion in Sutton v. Nokia here: [Read].

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