´Whereby´ Clause can Limit Scope of Method Claim

Applying well-settled principles of claim construction, the U.S. Court of Appeals for the Federal Circuit has held that the "whereby" clause of a claim limits the scope of the claim where the clause "states a condition that is material to patentability." Hoffer v. Microsoft Corp., Case No. 04-1103 (Fed. Cir. Apr. 22, 2005) (per curiam) (Newman, J. concurring).

Hoffer’s patent describes a method for remote computer users to obtain economic index data. The claim in issue ends with a "whereby" clause that describes how the claimed method enables users to conduct interactive data messaging. Pointing to cases holding that "whereby" clauses in method claims are given no weight when they simply express the intended result of a process step positively recited, Hoffer argued that the district court should not construe the clause as a limitation. The district court disagreed, construed the clause as limiting and granted summary judgment on no infringement. Hoffer appealed.