In Videoshare, LLC v. Google Inc., C.A. No. 13-990-GMS; v. Vimeo, LLC, C.A. No. 13-992-GMS (D. Del. Jan. 6, 2016), Judge Gregory M. Sleet’s claim construction order included consideration of whether the steps in method claims had to be performed in their recited order (i.e., “converting, generating, and embedding”). Id. at 4 n.8. Defendants argued that, among other things, “the enumeration of steps as (b1 ) [re: converting], (b2) [re: generating], and (b3) [re: embedding] in claim 1 of the [patent-in-suit] implies an order.” Id. The Court agreed with Plaintiff that such “enumeration alone [was] not dispositive.” Id. Plaintiff argued that although “step (b2) must be completed before step (b3) . . . step (b1) can be performed at any point in the process — before, after, or simultaneously with steps (b2) or (b3).” Id. The Court agreed and concluded that “[t]he claim is not limited to its embodiments, and the only order required by the intrinsic record is for the generating step, (b2), to precede the embedding step, (b3).” Id.
Accordingly, the Court construed the disputed term “executing in response to the video, an automated function automatically performing each of” (i.e., the phrase that preceded steps (b1) through (b3) in the claim) to mean “in response to the receiving computer receiving the video file, carrying out computer instructions, without the need for intervention by a human operator, for each of the following operations (not necessarily in this order).” Id. at 4 (emphasis added).