`
`
`
`674 F.3d 1315, 101 U.S.P.Q.2d 1325
`(Cite as: 674 F.3d 1315)
`
`
`
`Page 1
`
`
`
`United States Court of Appeals,
`Federal Circuit.
`DEALERTRACK, INC., Plaintiff–Appellant,
`v.
`David L. HUBER and Finance Express, LLC, Defend-
`ants–Appellees,
`and
`John Doe Dealers, Defendant,
`and
`RouteOne, LLC, Defendant–Cross Appellant.
`
`
`
`
`
`Nos. 2009–1566, 2009–1588.
`Jan. 20, 2012.
`
`
`Background: Owner of patents directed to a comput-
`er-aided method and system for processing credit applica-
`tions over electronic networks brought suit for infringe-
`ment. The United States District Court for the Central
`District of California, Andrew J. Guilford, J., 2008 WL
`5792509, and 657 F.Supp.2d 1152, granted summary
`judgment of non-infringement with respect to all claims of
`one patent, granted summary judgment of invalidity with
`respect to certain patent claims, and denied summary
`judgment of invalidity with respect to other claims, and
`parties cross-appealed.
`
`Holdings: The Court of Appeals, Linn, Circuit Judge, held
`that:
`in
`used
`as
`processing means,”
`“central
`(1)
`means-plus-function limitation of claims of patent was
`indefinite, and
`(2) certain claims were patent ineligible abstract ideas.
`
`
`Affirmed–in–part, vacated–in–part, reversed–in–part,
`and remanded.
`
`
` Plager, Circuit
`
`Judge,
`
`filed opinion concur-
`
`ring-in-part and dissenting-in-part.
`
`
`West Headnotes
`
`101(11)
`
`
`[1] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(11) k. Process or method claims. Most
`Cited Cases
`
`
`District court improperly carved-out the Internet from
`its construction of “communications medium,” as used in
`patent directed to a computer-aided method for processing
`credit applications over electronic networks, and thus, the
`proper construction of “communications medium” was a
`network for transferring data, including the Internet; con-
`text made it clear that the cited examples were not meant to
`be definitive of the scope of “communications medium,”
`and to specifically exclude the Internet would thus require
`a waiver of claim scope that was both so clear as to show
`reasonable clarity and deliberateness, and so unmistakable
`as to be unambiguous evidence of disclaimer.
`
`[2] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(11) k. Process or method claims. Most
`Cited Cases
`
`
`101(11)
`
`In the context of the patent directed to a comput-
`er-aided method for processing credit applications over
`electronic networks, “routing” was used as a generic term
`to indicate the sending of applications by a particular route;
`phrase “routing,” in the context of the patent, was not
`limited to the particular species of routing occurring when
`
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`
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`Apple Exhibit 1035
`
`

`

`
`
`674 F.3d 1315, 101 U.S.P.Q.2d 1325
`(Cite as: 674 F.3d 1315)
`the user selected multiple funding sources.
`
`[3] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Patent
` 291IX(B) Limitation of Claims
` 291k167 Specifications, Drawings, and Models
` 291k167(1) k. In general. Most Cited Cases
`
`
`167(1)
`
`165(4)
`
`It is necessary to consider the specification as a whole,
`and to read all portions of the written description, if pos-
`sible, in a manner that renders a patent internally con-
`sistent.
`
`[4] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Patent
` 291IX(B) Limitation of Claims
` 291k165 Operation and Effect of Claims in
`General
` 291k165(4) k. Reading limitations or ele-
`ments into claims, or disregarding limitations or elements.
`Most Cited Cases
`
`
`By specifically and separately claiming each of the
`disclosed routing schemes in different claims of patent
`directed to a computer-aided method for processing credit
`applications over electronic networks, and by using the
`term “selectively forwarding” in those claims, patentee
`made clear that he intended at least some of the claims to
`cover embodiments that implement only one of the routing
`schemes; thus, “selectively forwarding” limitation could
`not be construed as requiring that a user select between
`multiple different routing schemes.
`
`[5] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Patent
`
`167(1.1)
`
`Page 2
`
` 291IX(B) Limitation of Claims
` 291k167 Specifications, Drawings, and Models
` 291k167(1.1) k. Specification as limiting or
`enlarging claims. Most Cited Cases
`
`
`As a general rule, it is improper to read limitations
`from a preferred embodiment described in the specifica-
`tion, even if it is the only embodiment, into the claims
`absent a clear indication in the intrinsic record that the
`patentee intended the claims to be so limited.
`
`[6] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(8) k. Functions, advantages or results
`of invention. Most Cited Cases
`
`
`101(8)
`
`With respect to means-plus-function limitation, “cen-
`tral processing means, operably coupled to said commu-
`nications medium, for executing a computer program
`which implements and controls credit application pro-
`cessing and routing,” as used in patent directed to a com-
`puter-aided method for processing credit applications over
`electronic networks, appropriate structure included the
`algorithms disclosed in the specification that implemented
`and controlled credit application processing and routing.
`35 U.S.C.A. § 112.
`
`[7] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(8) k. Functions, advantages or results
`of invention. Most Cited Cases
`
`
`101(8)
`
`in
`used
`as
`processing means,”
`“Central
`means-plus-function limitation of claims of patent directed
`to a computer-aided method for processing credit applica-
`tions over electronic networks was indefinite for failure to
`
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`

`

`5
`
`
`
`674 F.3d 1315, 101 U.S.P.Q.2d 1325
`(Cite as: 674 F.3d 1315)
`recite sufficient structure to perform its claimed functions.
`35 U.S.C.A. § 112.
`
`[8] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k5 k. In general. Most Cited Cases
`
`Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k6 k. Principles or laws of nature. Most Cited
`Cases
`
`
`6
`
`Any invention within the broad statutory categories of
`patent eligibility statute that is made by man, not directed
`to a law of nature or physical phenomenon, and not so
`manifestly abstract as to preempt a fundamental concept or
`idea is patent eligible. 35 U.S.C.A. § 101.
`
`[9] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k5 k. In general. Most Cited Cases
`
`
`5
`
`Claims of patent directed to a computer-aided system
`for processing credit applications over electronic networks
`were patent ineligible abstract ideas; the claims did not
`require a specific application, nor were they tied to a par-
`ticular machine, and simply adding a “computer aided”
`limitation to claims covering an abstract concept, without
`more, was insufficient to render the claims patent eligible.
`35 U.S.C.A. § 101.
`
`[10] Patents 291
`
`324.5
`
`Page 3
`
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k324 Appeal
` 291k324.5 k. Scope and extent of review in
`general. Most Cited Cases
`
`
`328(2)
`
`Whether a patent claim is drawn to patent-eligible
`subject matter is an issue of law that is reviewed de novo.
`35 U.S.C.A. § 101.
`
`Patents 291
`
`291 Patents
` 291XIII Decisions on the Validity, Construction, and
`Infringement of Particular Patents
` 291k328 Patents Enumerated
` 291k328(2) k. Original utility. Most Cited Cases
`
`
`5,878,403. Cited.
`
`328(2)
`
`
`Patents 291
`
`291 Patents
` 291XIII Decisions on the Validity, Construction, and
`Infringement of Particular Patents
` 291k328 Patents Enumerated
` 291k328(2) k. Original utility. Most Cited Cases
`
`
`6,587,841. Invalid and Not Infringed.
`
`
`Patents 291
`
`291 Patents
` 291XIII Decisions on the Validity, Construction, and
`Infringement of Particular Patents
` 291k328 Patents Enumerated
` 291k328(2) k. Original utility. Most Cited Cases
`
`
`328(2)
`
`7,181,427. Invalid.
`
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`
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`

`

`
`
`674 F.3d 1315, 101 U.S.P.Q.2d 1325
`(Cite as: 674 F.3d 1315)
`
`*1316 Henry C. Dinger, Goodwin Procter, LLP, of Boston,
`MA, argued for the plaintiff-appellant. With him on the
`brief were Robert D. Carroll; and Forrest A. Hainline, of
`San Francisco, CA.
`
`Lawrence M. Hadley, McKool Smith Hennigan, P.C., of
`Los Angeles, CA, argued for the defendants-appellees.
`With him on the brief were Roderick G. Dorman, Brian L.
`Yates and Mieke K. Malmberg.
`
`Laurence S. Rogers, Ropes & Gray, LLP, of New York,
`NY, argued for defendant-cross appellant. With him on the
`*1317 brief were Jesse J. Jenner, Ching–Lee Fukuda and
`Brian P. Biddinger.
`
`Before LINN, PLAGER, and DYK, Circuit Judges.
`
`Opinion for the court filed by Circuit Judge LINN.
`
`Opinion concurring in part and dissenting in part filed by
`Circuit Judge PLAGER.
`
`LINN, Circuit Judge.
`Dealertrack, Inc. (“Dealertrack”) appeals the grant of
`summary judgment of noninfringement of claims 7–9, 12,
`14, 16, and 17 of U.S. Patent No. 6,587,841 (“'841 Patent”)
`and the grant of summary judgment of invalidity of claims
`1, 3, and 4 of U.S. Patent No. 7,181,427 (“'427 Patent”) for
`failure to claim patentable subject matter under 35 U.S.C. §
`101. Dealertrack, Inc. v. Huber, No. CV–06–2335, 2008
`WL 5792509 (C.D.Cal. Sept. 27, 2008) (“ Claim Con-
`struction ”); DealerTrack, Inc. v. Huber, 657 F.Supp.2d
`1152 (C.D.Cal.2009) (“ Invalidity ”). RouteOne, LLC
`(“RouteOne”) cross-appeals the district court's denial of
`
`Page 4
`
`summary judgment of invalidity of claims 14, 16, and 17 of
`the '841 Patent for indefiniteness. For the reasons set forth
`below, we affirm-in-part, vacate-in-part, reverse-in-part,
`and remand.
`
`
`BACKGROUND
`I. The Patents in Suit
`Dealertrack is the owner of the '841 and '427 Patents,
`directed to a computer-aided method and system, respec-
`tively, for processing credit applications over electronic
`networks. The '841 Patent claims priority to and incorpo-
`rates by reference U.S. Patent No. 5,878,403 (“'403 Pa-
`tent”) and uses the following incorporation language:
`“This is a division of application Ser. No. 08/526,776, filed
`Sep. 12, 1995, hereby incorporated by reference. Now U.S.
`Pat. No. 5,878,403.” '841 Patent col.1 ll.5–7. The '427
`Patent also claims priority to the '403 Patent, of which it is
`a continuation-in-part.
`
`
`Prior to Dealertrack's invention, car dealers, in seeking
`car loans on behalf of their customers, would apply to
`funding sources (i.e. banks) by: filling out application
`forms particular to each bank; faxing or transmitting the
`application to the respective banks; waiting for bank per-
`sonnel to enter the application information into their in-
`ternal computer systems; and eventually receiving re-
`sponses from each bank. Dealertrack proposed to automate
`the process through the use of a “central processor,” which
`receives credit application data from dealers, processes the
`data to conform to the individual application forms of
`different banks, forwards the completed applications to
`banks selected by the dealer, receives answers from the
`banks, and forwards those answers back to the dealer.
`Figure 1A of the '841 Patent, below, displays a preferred
`embodiment of the system:
`
`
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`
`674 F.3d 1315, 101 U.S.P.Q.2d 1325
`(Cite as: 674 F.3d 1315)
`
`Page 5
`
`
`
`
`
`*1318 '841 Patent, fig. 1A. An important feature of the
`invention was to allow the dealer to fill out a single ap-
`plication, to control which banks would receive the ap-
`plication, and to control the order and timing in which the
`applications were sent to the banks.
`
`
`II. District Court Proceedings
`Dealertrack sued appellees David L. Huber and Fi-
`nance Express, LLC (“Finance Express”) for infringement
`of the '841, '427, and '403 Patents by their FEX system, and
`sued appellee RouteOne for infringement by its Credit
`Aggregation System (“CAS”) and its Messenger system.
`The validity of the '403 Patent and infringement of any of
`the patents by RouteOne's Messenger system are not in
`dispute on appeal. All of the accused products offer au-
`tomobile dealers loan management services that pass all
`communications between dealers and lenders through the
`Internet.
`
`
`Appellees Finance Express, John Doe Dealers, and
`RouteOne (collectively, “Appellees”) filed four summary
`judgment motions FN1: (1) non-infringement of all asserted
`claims of the '841 Patent based on the absence of a
`“communications medium,” as construed by the district
`
`
`court, in the accused devices and based on several other
`proposed claim constructions; (2) invalidity of claims 14,
`16, and 17 of the '841 Patent for indefiniteness under 35
`U.S.C. § 112, ¶¶ 2, 6 for failure to disclose adequate
`structure
`corresponding
`to
`the
`purported
`means-plus-function “tracking” limitation; (3) invalidity of
`all asserted claims of the '427 Patent for failure to claim
`patent-eligible subject matter under 35 U.S.C. § 101; (4)
`invalidity of all asserted claims of the '427 Patent for fail-
`ure to claim priority to the '403 Patent.
`
`
`FN1. Because the procedural history specific to
`each of the Appellees substantially mirrors that of
`RouteOne, we do not separately describe the mo-
`tions and dispositions filed by each of them.
`
`
`
`The district court agreed with Appellees' proposed
`claim construction of the phrase “communications me-
`dium” in the '841 Patent*1319 as “a ‘network for trans-
`ferring data,’ not including the internet.” Claim Construc-
`tion, at 19. Because “communications medium” was a
`limitation in all claims of the ' 841 Patent, and because it
`was undisputed that the accused products transferred data
`only over the Internet, the district court granted summary
`judgment of non-infringement of all asserted claims of the
`
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`

`
`
`674 F.3d 1315, 101 U.S.P.Q.2d 1325
`(Cite as: 674 F.3d 1315)
`'841 Patent. The district court denied summary judgment
`of invalidity for failure to disclose adequate structure for
`the “tracking” limitation of the claims of the '841 Patent
`because the district court determined that “tracking” was
`not part of the function of the central processing means
`limitation. The district court granted summary judgment of
`invalidity of all claims of the '427 Patent for failure to
`claim patent-eligible subject matter under § 101. The dis-
`trict court denied summary judgment of invalidity of the
`'427 Patent for failure to claim priority to the '403 Patent.
`These rulings are all at issue on appeal—directly, as al-
`ternative grounds of affirmance, or in the cross-appeal.
`
`
`Dealertrack timely appealed, and RouteOne properly
`cross-appealed. We have jurisdiction pursuant to 28 U.S.C.
`§ 1295(a)(1).
`
`
`DISCUSSION
`I. The '841 Patent
`Independent claim 7 of the '841 Patent reads as fol-
`lows, with the contested limitations highlighted in bold:
`
`
`7. A computer based method of operating a credit ap-
`plication and routing system, the system including a
`central processor coupled to a communications me-
`dium for communicating with remote application entry
`and display devices, remote credit bureau terminal de-
`vices, and remote funding source terminal devices, the
`method comprising:
`
`selectively receiving credit application data from a re-
`mote application entry and display device;
`
`selectively obtaining credit report data from at least one
`remote credit bureau terminal device;
`
`selectively forwarding the credit application data, and
`credit report data if appropriate, to at least one remote
`funding source terminal device; and
`
`forwarding funding decision data from the at least one
`remote funding source terminal device to the respective
`
`
`
`
`
`
`
`
`
`Page 6
`
`remote application entry and display device, wherein the
`step of selectively forwarding the credit application data
`and credit report data to at least one remote funding
`source terminal device comprises:
`
`sending at least a portion of the credit application data,
`and the credit report data if appropriate, to more than one
`of said at least one remote funding source terminal de-
`vices substantially at the same time.
`
`
`
`
`
`'841 Patent col.32 l.55–col.33 l.10. Dependent claim 8
`adds “[the method of claim 7] further comprising the step
`of enabling reviewing, analysis and editing of the credit
`application data at the remote application entry and display
`device prior to the step of selectively forwarding the credit
`application data.” Id. col.33 ll.11–15. Dependent claim 9
`adds, “wherein said remote application entry and display
`device is located at a vehicle dealer.” Id. col.33 ll.16–18.
`These claims are not argued separately.
`
`
`Independent claim 14 of the '841 Patent reads as fol-
`lows, with the limitations relevant to this appeal high-
`lighted in bold:
`
`
`14. A credit application and routing system, compris-
`ing:
`
`a communications medium;
`
`central processing means, operably coupled to said
`communications medium, *1320 for executing a com-
`puter program which implements and controls credit
`application processing and routing;
`
`at least one credit application input terminal device,
`operably coupled to said communications medium, for
`keyboard entry of at least credit application information,
`for visual display of at least funding decision infor-
`mation, and for sending and receiving to and from said
`central processing means over said communications
`medium; and
`
`
`
`
`
`
`
`
`
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`

`
`
`674 F.3d 1315, 101 U.S.P.Q.2d 1325
`(Cite as: 674 F.3d 1315)
`at least one funding source terminal device, operably
`coupled to said communications medium, for receiving
`at least a portion of a credit application over said com-
`munications medium from said at least one credit ap-
`plication input terminal device through said central
`processing means, and for sending a funding decision to
`said at least one credit application input terminal device
`through said central processing means over said com-
`munications medium,
`
`
`
`wherein said central processing means computer pro-
`gram which implements and controls credit application
`processing and routing, further provides for tracking
`pending credit applications.
`
`
`
`'841 Patent col.34 l.48–col.35 l.6. Independent claim
`12 is the same as claim 14 except for the wherein clause,
`which reads “wherein there are a plurality of funding
`source terminal devices connected to said communications
`medium, and wherein a credit application is sent to more
`than one of said plurality of funding source terminal de-
`vices over said communications medium through said
`central processing means.” Id. col.34 ll.14–19. Independ-
`ent claim 16 is identical to claim 14, but adds “at least one
`credit bureau terminal device, operably coupled to said
`communications medium, for receiving at least a portion of
`a credit application from said at least one credit application
`input terminal device through said central processing
`means over said communications medium, and for sending
`credit information to said at least one credit application
`input terminal device over said communications medium
`through said central processing means.” Id. col.35
`ll.35–43. Claim 17 depends on claim 16, and adds
`“wherein said central processing means computer program
`which implements and controls credit application pro-
`cessing and routing, further provides outcome results in-
`cluding approval, decline, conditional approval or a mes-
`sage.” Id. col.35 ll.49–53.
`
`
`A. Standard of Review
`Claim construction is a question of law which this
`court reviews de novo. Cybor Corp. v. FAS Techs., Inc.,
`138 F.3d 1448, 1451 (Fed.Cir.1998) (en banc). “Where ...
`
`Page 7
`
`the parties do not dispute any relevant facts regarding the
`accused product[ and] disagree [only] over which of two
`possible meanings of [the claim at issue] is the proper one,
`the question of literal infringement collapses to one of
`claim construction and is thus amenable to summary
`judgment.” Athletic Alternatives, Inc. v. Prince Mfg., Inc.,
`73 F.3d 1573, 1578 (Fed.Cir.1996).
`
`
`This court reviews the grant or denial of summary
`judgment under the laws of the regional circuit. Mi-
`croStrategy, Inc. v. Bus. Objects, S.A., 429 F.3d 1344,
`1349 (Fed.Cir.2005). The Ninth Circuit reviews grants or
`denials of summary judgment de novo, asking “whether
`there are any genuine issues of material fact” while
`“[v]iewing the evidence in the light most favorable to the
`nonmoving party.” Burke v. County of Alameda, 586 F.3d
`725, 730–31 (9th Cir.2009).
`
`
`B. “Communications Medium”
`[1] There is no dispute that if the district court's claim
`construction of “communications medium” stands, Ap-
`pellees are *1321 entitled to summary judgment of
`non-infringement.
`
`
`The district court construed “communications me-
`dium” as “a ‘network for transferring data,’ not including
`the internet.” Claim Construction, at 19. The district court
`grounded its construction on two bases. First, the specifi-
`cation included the following statement in its “Detailed
`description of the preferred embodiment(s)” section:
`“Although illustrated as a wide area network [in FIG. 1], it
`should be appreciated that the communications medium
`could take a variety of other forms, for example, a local
`area network, a satellite communications network, a
`commercial value added network (VAN) ordinary tele-
`phone lines, or private leased lines.” '841 Patent col.17
`l.67–col.18 l.5. The district court noted that though “it is
`improper for a court to limit a patent to its preferred em-
`bodiment, it is reasonable to assume that when a patent
`supplies a long list of examples like here, the list is ex-
`haustive.” Claim Construction, at 18 (internal citations
`omitted). Second, the district court rejected Dealertrack's
`arguments that (1) references in the specification to
`
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`
`
`674 F.3d 1315, 101 U.S.P.Q.2d 1325
`(Cite as: 674 F.3d 1315)
`“TCP/IP” and “CompuServe” implicitly refer to the In-
`ternet as a communication medium; (2) the ordinary
`meaning of communications medium included the Inter-
`net; and (3) the prosecution history shows the Internet was
`implicitly considered a “communications medium” by the
`examiner and the patentee.
`
`
`Dealertrack argues that in 1995 ordinary artisans
`would have understood that the Internet was a communi-
`cations medium as the phrase was used in the '841 Patent
`because: (1) the specification explicitly says that “[t]he
`communications medium used need only provide fast
`reliable data communication between its users,” '817 Pa-
`tent col.18 ll.8–9, and is not further limited anywhere; (2) it
`is undisputed that the Internet is—and was in 1995—a
`network for transferring data; (3) the '841 Patent is a divi-
`sional of the ' 403 Patent, which includes the Internet as an
`example of a “communications medium” and is incorpo-
`rated by reference into the '841 Patent; (4) the Internet is a
`wide area network, which is expressly cited as an example
`of a communications medium; and (5) during prosecution,
`(a) the examiner manifested an understanding that the
`Internet was a particular “communications medium” by
`making rejections over Internet-based prior art, and (b)
`applicant distinguished such prior art on grounds unrelated
`to the Internet. Dealertrack argues in the alternative that
`even if the Internet was not understood as a “communica-
`tions medium” by ordinary artisans in 1995, it can be
`captured within the claim scope as after-arising technolo-
`gy.
`
`
`Appellees counter that: (1) the specification requires
`that the communications medium be both reliable and
`secure, and the Internet was neither of these as of 1995; (2)
`the patentee disclaimed the Internet by capitulating to the
`examiner's requirement that “Internet” be removed from
`the specification as “new matter” after applicants at-
`tempted to insert it during prosecution; and (3) the incor-
`poration by reference of the '403 Patent is inapposite be-
`cause the Internet was improperly included in the '403
`Patent's specification during prosecution, and anyway the
`'841 Patent, by its terms, only incorporates by reference the
`application that gave rise to the '403 Patent as originally
`
`Page 8
`
`filed. As to Dealertrack's alternative argument, Appellees
`argue that the Internet may not be captured as after-arising
`technology because it was in existence as of the priority
`date of the '841 Patent.
`
`
`We agree with Dealertrack that the district court im-
`properly carved-out the Internet from its construction of
`“communications medium.” In *1322Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed.Cir.2005) (en banc), this court
`“expressly rejected the contention that if a patent describes
`only a single embodiment, the claims of the patent must be
`construed as being limited to that embodiment.” Id. at
`1323. The disclosure of multiple examples does not nec-
`essarily mean that such list is exhaustive or that
`non-enumerated examples should be excluded. As we
`noted in Phillips, “[m]uch of the time, upon reading the
`specification in [ ] context, it will become clear whether the
`patentee is setting out specific examples of the invention to
`accomplish those goals, or whether the patentee instead
`intends for the claims and the embodiments in the speci-
`fication to be strictly coextensive.” Id. Here, the context
`makes clear that the examples were not meant to be defin-
`itive of the scope of “communications medium.” The sec-
`tion in which the list of examples is found is entitled
`“Detailed description of the preferred embodiment(s).” '
`841 Patent col.17. The first paragraph of the section says:
`“It should be kept in mind that the following described
`embodiment(s) is only presented by way of example and
`should not be construed as limiting the inventive concept
`to any particular physical configuration.” Id. col.17
`ll.56–59. While in some circumstances this may be taken
`as rote language, the additional context of the list cannot:
`
`
`“Although illustrated as a wide area network, it should
`be appreciated that the communications medium could
`take a variety of other forms, for example, a local area
`network, a satellite communications network, a com-
`mercial value added network (VAN) ordinary telephone
`lines, or private leased lines.... The communications
`medium used need only provide fast reliable data com-
`munication between its users.”
`
`Id. col.17 l.67–col.18 l.9 (emphases added). The
`
`
`
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`674 F.3d 1315, 101 U.S.P.Q.2d 1325
`(Cite as: 674 F.3d 1315)
`specification thus gives a basic definition of a communi-
`cations medium as anything that “need only” provide “fast
`reliable data communication between its users.” Id. The list
`itself is explicitly prefaced with a description that the
`enumerated articles are “example[s].” The natural reading
`of this paragraph, and the only reading that does not violate
`this court's repeated prohibition against importing limita-
`tions from the specification, is of a non-exhaustive list that,
`if anything, broadens the definition of “communications
`medium.”
`
`
`Both parties agree that a “communications medium” is
`a “network for transferring data” and only disagree about
`the Internet carve-out. There is undisputed evidence in the
`record, not challenged on appeal, that in 1995 the Internet
`was a network for transferring data. More specifically,
`Dealertrack proffered expert testimony that in 1995 the
`Internet was the world's largest wide area network, an
`enumerated species of a communications medium in the
`specification. To specifically exclude the Internet would
`thus require a waiver of claim scope that is “both so clear
`as to show reasonable clarity and deliberateness, and so
`unmistakable as to be unambiguous evidence of disclaim-
`er.” Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314,
`1325–26 (Fed.Cir.2003) (internal citations and parenthe-
`ticals omitted). There was no such waiver here. The only
`part of the record that bears on this is a post-allowance
`examiner's amendment deleting the phrase “the InterNet”
`from the list of examples in the specification and cancel-
`ling the claims specifically directed to the Internet. The
`examiner did not provide reasons for the amendment, and
`there is no evidence that the applicant made any statements
`supporting patentability on the basis of the removal of that
`phrase from the specification. This alone is insufficient to
`create a waiver.
`
`
`*1323 Moreover, Dealertrack points out that during
`prosecution of the parent '403 Patent, the examiner allowed
`the applicant to include “the internet” as an example of a
`“communication medium.” Dealertrack thus contends that
`because the '403 Patent is expressly incorporated by ref-
`erence into the '817 Patent, the specification expressly
`includes the Internet as an example of a communications
`
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`
`medium. Appellees counter that only the text as filed of the
`application that gave rise to the '403 Patent was incorpo-
`rated by reference, not the text as later amended. Appellees
`also contend that regardless of any incorporation by ref-
`erence, the examiner's inclusion of the Internet into the
`specification of the '403 Patent was new matter and should
`not have been allowed in that patent.
`
`
`We agree with Dealertrack. The '817 patent incorpo-
`rates the '403 Patent using the following language: “This is
`a division of application Ser. No. 08/526,776 (“'776 Ap-
`plication”), filed Sep. 12, 1995, hereby incorporated by
`reference. Now U.S. Pat. No. 5,878,403.” '817 patent col.1
`ll.5–7. When the divisional application that gave rise to the
`'817 Patent was filed, the ' 776 Application already in-
`cluded the Internet as an example of a communications
`medium, as did the '403 Patent as issued. To suggest that
`the inclusion of the filing date of the '776 Application in
`the incorporation language was intended to limit the same
`to the text of that application as filed instead of as issued is
`unwarranted and certainly not compelled. There is no
`reason to conclude that the reference to the filing date was
`anything other than applicant's compliance with the formal
`requirement to “[c]learly identify” the patent being in-
`corporated by reference. 37 C.F.R. § 1.57(b)(2).FN2
`
`
`FN2. We need not decide here whether what is
`incorporated is the text of the parent application
`as of the filing date of the divisional application,
`or the text of the parent as issued, because refer-
`ence to the Internet as a communications medium
`was contained in the parent at both of these stag-
`es.
`
`
`
`We also reject Appellees' argument based on new
`matter. Appellees have argued neither a lack of written
`description for failure to have possession of the Internet as
`of the priority date, nor the ineffectiveness of the incor-
`poration by reference. Therefore, we conclude that the
`inclusion of the Internet as an example of a “communica-
`tions medium” is properly incorporated by reference into
`the '817 Patent and acts “as if it were explicitly contained
`therein.” See Zenon Envtl., Inc. v. U.S. Filter Corp., 506
`
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`Internet.
`
`
`C. Alternative Grounds for Affirmance of Summary
`Judgment of Non–Infringement
`In the district court, Appellees had moved for sum-
`mary judgment of non-infringement on the basis of three
`other proposed claim constructions: “routing,” “selective
`forwarding,” and “central processing means.” The district
`court rejected Appellees' claim constructions, and so, t