Dealertrack, Inc. v. Huber

United States Court of Appeals
for the Federal Circuit
__________________________

DEALERTRACK, INC.,
Plaintiff-Appellant,

v.
DAVID L. HUBER AND FINANCE EXPRESS, LLC,
Defendants-Appellees,

AND

JOHN DOE DEALERS,
Defendant,

AND

ROUTEONE, LLC,
Defendant-Cross Appellant.
__________________________

2009-1566, -1588
__________________________

Appeal from the United States District Court for the
Central District of California in consolidated case no. 06-
CV-2335, Judge Andrew J. Guilford.
__________________________

Decided: January 20, 2012
__________________________

HENRY C. DINGER, Goodwin Procter, LLP, of Boston,
Massachusetts, argued for the plaintiff-appellant. With
2 DEALERTRACK v. HUBER

him on the brief were ROBERT D. CARROLL; and FORREST
A. HAINLINE, of San Francisco, California.

LAWRENCE M. HADLEY, McKool Smith Hennigan, P.C.,
of Los Angeles, California, 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, New York, argued for defendant-cross appellant.
With him on the 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 (C.D. Cal. Sept. 27, 2008) (“Claim Construc-
tion”); Dealertrack, Inc. v. Huber, 657 F. Supp. 2d 1152
(C.D. Cal. July 7, 2009) (“Invalidity”). RouteOne, LLC
(“RouteOne”) cross-appeals the district court’s denial of
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.
DEALERTRACK v. HUBER 3

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 Pat-
ent”) 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 continuion-in-part.

Prior to Dealertrack’s invention, car dealers, in seek-
ing 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
personnel to enter the application information into their
internal computer systems; and eventually receiving
responses from each bank. Dealertrack proposed to
automate the process through the use of a “central proces-
sor,” which receives credit application data from dealers,
processes the data to conform to the individual applica-
tion 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:
4 DEALERTRACK v. HUBER

’841 Patent, fig. 1A. An important feature of the inven-
tion was to allow the dealer to fill out a single application,
to control which banks would receive the application, 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
Finance Express, LLC (“Finance Express”) for infringe-
ment 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
automobile dealers loan management services that pass
all communications between dealers and lenders through
the Internet.
DEALERTRACK v. HUBER 5
Appellees Finance Express, John Doe Dealers, and
RouteOne (collectively, “Appellees”) filed four summary
judgment motions 1 : (1) non-infringement of all asserted
claims of the ’841 Patent based on the absence of a “com-
munications medium,” as construed by the district court,
in the accused devices and based on several other pro-
posed 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) invalid-
ity of all asserted claims of the ’427 Patent for failure to
claim priority to the ’403 Patent.

The district court agreed with Appellees’ proposed
claim construction of the phrase “communications me-
dium” in the ’841 Patent as “a ‘network for transferring
data,’ not including the internet.” Claim Construction, at
19. Because “communications medium” was a limitation
in all claims of the ’841 Patent, and because it was undis-
puted 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
’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

1 Because the procedural history specific to each of
the Appellees substantially mirrors that of RouteOne, we
do not separately describe the motions and dispositions
filed by each of them.
6 DEALERTRACK v. HUBER

district 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 alternative 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
follows, with the contested limitations highlighted in
bold:

7. A computer based method of operat-
ing a credit application and routing
system, the system including a central
processor coupled to a communica-
tions medium for communicating
with remote application entry and dis-
play devices, remote credit bureau ter-
minal devices, and remote funding
source terminal devices, the method
comprising:

selectively receiving credit application
data from a remote application entry
and display device;

selectively obtaining credit report data
from at least one remote credit bureau
terminal device;

selectively forwarding the credit ap-
plication data, and credit report data if
DEALERTRACK v. HUBER 7
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 re-
mote application entry and display de-
vice, 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 devices 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. Depend-
ent 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
follows, with the limitations relevant to this appeal high-
lighted in bold:

14. A credit application and routing
system, comprising:

a communications medium;
8 DEALERTRACK v. HUBER

central processing means, operably
coupled to said communications me-
dium, for executing a computer pro-
gram which implements and controls
credit application processing and rout-
ing;

at least one credit application input
terminal device, operably coupled to
said communications medium, for key-
board entry of at least credit applica-
tion information, for visual display of
at least funding decision information,
and for sending and receiving to and
from said central processing means
over said communications medium; and

at least one funding source terminal
device, operably coupled to said com-
munications medium, for receiving at
least a portion of a credit application
over said communications medium
from said at least one credit application
input terminal device through said cen-
tral 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 communications medium,

wherein said central processing means
computer program which implements
and controls credit application process-
ing and routing, further provides for
tracking pending credit applica-
tions.
DEALERTRACK v. HUBER 9

’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
devices 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 appli-
cation input terminal device through said central process-
ing means over said communications medium, and for
sending credit information to said at least one credit
application input terminal device over said communica-
tions 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 pro-
gram which implements and controls credit application
processing and routing, further provides outcome results
including approval, decline, conditional approval or a
message.” 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 . . . 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 col-
lapses 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).
10 DEALERTRACK v. HUBER

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”

There is no dispute that if the district court’s claim
construction of “communications medium” stands, Appel-
lees are 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
specification 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
embodiment, it is reasonable to assume that when a
patent supplies a long list of examples like here, the list is
exhaustive.” Claim Construction, at 18 (internal citations
omitted). Second, the district court rejected Dealertrack’s
arguments that (1) references in the specification to
“TCP/IP” and “CompuServe” implicitly refer to the Inter-
net as a communication medium; (2) the ordinary mean-
DEALERTRACK v. HUBER 11
ing of communications medium included the Internet; and
(3) the prosecution history shows the Internet was implic-
itly considered a “communications medium” by the exam-
iner 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
Patent 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 divisional of the ’403 Patent, which includes the
Internet as an example of a “communications medium”
and is incorporated 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 “com-
munications 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 “communications medium” by ordinary
artisans in 1995, it can be captured within the claim scope
as after-arising technology.

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
attempted to insert it during prosecution; and (3) the
incorporation by reference of the ’403 Patent is inapposite
because the Internet was improperly included in the ’403
12 DEALERTRACK v. HUBER

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 origi-
nally 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 Phillips 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
necessarily 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 specifica-
tion in [] context, it will become clear whether the pat-
entee 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 specifi-
cation to be strictly coextensive.” Id. Here, the context
makes clear that the examples were not meant to be
definitive of the scope of “communications medium.” The
section 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 de-
scribed embodiment(s) is only presented by way of exam-
ple 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:
DEALERTRACK v. HUBER 13

“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 commu-
nications network, a commercial value added net-
work (VAN) ordinary telephone lines, or private
leased lines. . . . The communications medium
used need only provide fast reliable data commu-
nication between its users.”

Id. col.17 l.67 – col.18 l.9 (emphases added). The specifi-
cation thus gives a basic definition of a communications
medium as anything that “need only” provide “fast reli-
able data communication between its users.” Id. The list
itself is explicitly prefaced with a description that the
enumerated articles are “example[s].” The natural read-
ing of this paragraph, and the only reading that does not
violate this court’s repeated prohibition against importing
limitations from the specification, is of a non-exhaustive
list that, if anything, broadens the definition of “commu-
nications 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 evi-
dence 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 communica-
tions 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 unambigu-
ous evidence of disclaimer.” Omega Eng’g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003) (internal
citations and parentheticals omitted). There was no such
waiver here. The only part of the record that bears on
14 DEALERTRACK v. HUBER

this is a post-allowance examiner’s amendment deleting
the phrase “the InterNet” from the list of examples in the
specification and cancelling the claims specifically di-
rected to the Internet. The examiner did not provide
reasons for the amendment, and there is no evidence that
the applicant made any statements supporting patentabil-
ity on the basis of the removal of that phrase from the
specification. This alone is insufficient to create a waiver.

Moreover, Dealertrack points out that during prosecu-
tion 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
reference into the ’817 Patent, the specification expressly
includes the Internet as an example of a communications
medium. Appellees counter that only the text as filed of
the application that gave rise to the ’403 Patent was
incorporated by reference, not the text as later amended.
Appellees also contend that regardless of any incorpora-
tion by reference, 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
Application”), 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
included 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
DEALERTRACK v. HUBER 15
date was anything other than applicant’s compliance with
the formal requirement to “[c]learly identify” the patent
being incorporated by reference. 37 C.F.R. § 1.57(b)(2). 2

We also reject Appellees’ argument based on new mat-
ter. 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
incorporation by reference. Therefore, we conclude that
the inclusion of the Internet as an example of a “commu-
nications 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 F.3d 1370, 1378 (Fed. Cir. 2007).

Appellees’ argument that the Internet does not fit the
definition of a communications medium because the
Internet was not reliable and secure is also inapposite.
Appellees’ only support for the unreliability of the Inter-
net is a statement by its expert, Derek M. Kato, that
“achieving appropriate levels and qualities of service
through the Internet for the credit application and rout-
ing system of the ’403 Patent would have been problem-
atic.” This ambivalent statement allegedly relating to
reliability is insufficient to show that ordinary artisans
would have considered “communications medium” to
exclude the Internet. As for security, that aspect of the
Internet is addressed merely as an object of the invention,
and there is no indication in the patent that the security
of the data transferring network was understood by

2 We need not decide here whether what is incorpo-
rated 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 reference to the Internet as a commu-
nications medium was contained in the parent at both of
these stages.
16 DEALERTRACK v. HUBER

ordinary artisans to be a limit on what constituted a
“communications medium.”

Thus, this court concludes that the proper construc-
tion of “communications medium” is a “network for trans-
ferring data, including the Internet” and that the district
court erred in granting summary judgment of non-
infringement based on a construction that carved out the
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,
these claim constructions did not form the basis of the
district court’s grant of summary judgment of non-
infringement of the ’841 Patent.

Appellees argue here that they are entitled to sum-
mary judgment of non-infringement of all claims of the
’841 Patent on the alternative grounds that the accused
products lacked these three elements when properly
construed.

1. “Routing”
Claim Term District Court’s Appellees’
Construction Proposed
Construction
“Routing” “Sending or “Sequencing
forwarding by a (order) and tim-
particular route” ing”
All asserted claims of the ’841 Patent contain the
“routing” limitation in the preamble, and certain claims
contain it as a recitation in the body of those claims.
DEALERTRACK v. HUBER 17
Appellees argue that “routing” necessarily includes the
ability to select “sequencing (order) and timing,” and that
the district court erred by construing the phrase as “send-
ing or forwarding by a particular route.” Appellees argue
that because users of the accused device can only select
one or more funding sources and not the order and se-
quencing by which the program sends applications, there
can be no infringement of a claim requiring “routing.”

Appellees specifically argue that the patent twice de-
fines “routing” as “sequencing (order) and timing” in
describing the preferred embodiment:

As already mentioned, the present in-
vention provides flexibility in funding
source selection, and routing, i.e., se-
quencing and timing. Dealer selected
defaults for source and routing are pro-
vided at installation, but can be over-
ridden on a case-by-case basis.

In block 146, a funding source (or
sources) is selected to send the credit
application, along with credit bureau
information, if applicable. If multiple
sources are to receive the credit appli-
cation, then the timing and order of
sending is also selected, that is, the
routing of the credit application. Rout-
ing selections include one funding
source at a time in sequence until a
positive decision is returned or until a
set time has elapsed (conditional), or
all funding sources at once (shot-
gunning), for example.

’841 Patent col.22 ll.46-59 (italicized emphases added).
Relying on Abbott Labs. v. Novopharm Ltd., 323 F.3d
18 DEALERTRACK v. HUBER

1324, 1327, 1330 (Fed. Cir. 2003), Appellees argue that
the “i.e.” and “that is” phrases are used to define what
“routing” means in the context of the patent.

Dealertrack responds that (1) the specification re-
peatedly allows sending the application to a single fund-
ing source (including in the above-cited passage), and that
in such a situation there is no user-defined choice of
timing or order; (2) the invention performs “routing” even
when shot-gunning is selected (which sends to all at the
same time), for which the order of the funding sources
selected is irrelevant; (3) the specification discusses
routing as incorporating a source selection component,
noting, for example, a “routing means for selectively
forwarding the credit application data to remote funding
sources,” ’841 Patent col.15 ll.39-43; and (4) in the context
of the patent as a whole, see Pfizer, Inc. v. Teva Pharms.,
USA, Inc., 429 F.3d 1364, 1373-74 (Fed. Cir. 2005), the
“i.e.” phrase was not used definitionally.

This court agrees with Dealertrack. In the context of
the patent, “routing” is used as a generic term to indicate
the sending of applications by a particular route. The
patent contemplates that a user may “route” the applica-
tion data by selecting the sequencing, timing, or both that
the invention will use in sending data to several funding
sources. See id. col.13 ll.30-40 (“As already noted, a
dealer is able to select a plurality of funding sources to
which the credit application will be sent, and if more than
one funding sources is selected, various options are avail-
able. For example, the dealer may optionally send to all
at once (shot-gunning), send to each in turn if the previ-
ous funding source has declined the application, send to
each if the previous funding source has not responded in
‘N’ (a selectable number of) minutes, send to each in turn
if the previous funding source has declined or conditioned
the application, or any combination of the last three
ways.”); id. col.22 ll.53-55 (noting that “if multiple sources
DEALERTRACK v. HUBER 19
are to receive the credit application,” then the routing
that takes place is “the timing and order of sending” the
applications); id. col.28 ll.28-32 (“If more than one funding
source is requested, the present invention can route the
application to the next funding source either manually or
automatically, after a predetermined time delay or a [sic]
application rejected response, for example.”). See also id.
col.32 ll.24-37 (“5. A credit application and routing sys-
tem . . . further comprising . . . routing means for selec-
tively forwarding the credit application data to remote
funding sources . . . wherein the routing means comprises
. . . means for sending at least a portion of a credit appli-
cation to more than one of said remote funding sources
substantially at the same time.”).

The patent also contemplates that a user may select
only a single funding source. See, e.g., ’841 Patent, Ab-
stract (“The computer program includes routines . . . for
selectively forwarding a received credit application to at
least one funding source.”); id. col.5 ll.1-5 (“It is an object
of the invention to provide a dealer with on-line and off-
line entering of application data, for transfer to one or
more funding sources sequentially and automatically.”);
id. col.13 ll.10-12 (“Once the dealer selects one or more
funding sources, the present invention prompts the dealer
for any additional information.”); id. col.16 ll.23-30 (“Ac-
cording to another embodiment, there is provided a com-
puter program having . . . means for selectively
forwarding a received credit application to at least one
funding source.”); id. col.26 ll.2-5 (“‘Funding Selection,’
represents the operations related to funding sources and
the operations related to sending a credit application to
one or more sources.”). The patent also categorizes this
selection as “routing.” Id. Abstract (“A credit application
and routing system includes a central processor having
and executing a program . . . for selectively forwarding a
received credit application to at least one funding
source.”); id. col.7 ll.54-55 (“It is an object of the present
20 DEALERTRACK v. HUBER

invention to route an application to one or more banks as
directed by the user, or alternatively, a dealer can indi-
cate which bank or banks to send the application to.”); id.
col.15 ll.24-30 (“In order to implement the above advanta-
geous features, there is provided according to one em-
bodiment a credit application and routing system
comprising a central processor having a program and
operation to . . . selectively forward the credit application
data to at least one remote funding source terminal
device.”). Where only a single funding source is selected,
there is no user selection of timing or sequencing as there
is when multiple funding sources are selected. Moreover,
when shot-gunning is selected, there is no user selection
of the order in which the applications are sent, yet the
patent categorizes this too as “routing.” Thus, the phrase
“routing,” in the context of this patent, is not limited to
the particular species of routing occurring when the user
selects multiple funding sources.

The only way that the “i.e.” in this patent could be
read definitionally is if it excluded from the claim scope
the embodiments discussed throughout the claim where
only a single funding source is selected. This “is rarely, if
ever, correct.” Pfizer, 429 F.3d at 1374. Moreover, the
most natural reading of the “i.e.” here is as citing exam-
ples, which, as discussed by the district court, is the way
it was used throughout the specification in other contexts.
See Claim Construction, at 6 (citing ’403 Patent col.10
ll.41-44) (“‘I.e.’ as used in this patent . . . . appears to
supply examples. For instance, the patent refers to
‘selecting the funding sources for a type of credit applica-
tion, i.e., finance versus lease, ‘A’ quality versus ‘B & C’
quality.’”).

This is precisely the type of contextual analysis we
required in Pfizer, in determining whether the patentee’s
use of “i.e.” was definitional. 429 F.3d at 1373-74 (requir-
ing consideration of written description as a whole and
DEALERTRACK v. HUBER 21
concluding that “i.e.” as used in the specification was not
definitional because of inconsistent usage in the specifica-
tion). “It is necessary to consider the specification as a
whole, and to read all portions of the written description,
if possible, in a manner that renders the patent internally
consistent.” Id. at 1373 (citing Budde v. Harley-Davidson,
Inc., 250 F.3d 1369, 1379-80 (Fed. Cir. 2001)). Here,
internal consistency can only be achieved by reading “i.e.”
as exemplary. Under that reading, “sequencing (order)
and timing” is a species of routing, achieved when the
user selects more than one funding source, and the gen-
eral construction of routing incorporates both that species
and the species of routing involving the sending of appli-
cation data to a single funding source and shot-gunning to
all sources at once. The district court’s construction of
“routing” as “sending or forwarding by a particular route”
adequately maintains consistency in the patent in a way
that a definitional reading of “i.e.” would not.

For the reasons set forth above, we find no fault in the
district court’s construction of “routing.”

2. “Selectively Forwarding”
Claim Term District Court’s Appellees’
Construction Proposed
Construction
“Selectively “Forwarding to “Forwarding using
Forwarding” particular (i.e. a selected se-
‘selected’) desti- quence (order) and
nation(s)” and in timing”
claim 7, “[t]he
‘selection’ de-
scribed involves
choosing the
remote funding
source terminal
devices.”
22 DEALERTRACK v. HUBER

Appellees next argue that the district court erred in
its construction of “selectively forwarding.” The basis for
Appellees’ argument is that FIGs. 3T, 2C-1, and 2C-2, in
claims 7-9 of the ’841 patent, show a preferred embodi-
ment having three possible “[r]outing selections” for
sending a credit application to multiple lenders, includ-
ing: (1) sending the application to “one funding source at a
time in sequence until a positive decision is returned”; (2)
sending the credit application to a first lender, and then
sending the application to a second lender after “a set
time has elapsed”; or (3) sending the credit application to
“all funding sources at once (shotgunning).” ’841 Patent
col. 22 ll. 46-65. RouteOne contends that the “selectively
forwarding” claim limitation should be construed such
that the claims require a user to select one of multiple
such routing schemes, excluding methods and systems
that permit only one routing selection scheme (such as
only the “shotgunning” method). We disagree.

As discussed in connection with the “routing” con-
struction above, the patent contemplates a user’s ability
to apply to only a single funding source, in which instance
neither the timing nor the sequence is relevant. As a
general rule, “it is improper to read limitations from a
preferred embodiment described in the specification—
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.” Enzo Biochem, Inc.
v. Applera Corp., 599 F.3d 1325, 1342 (Fed. Cir. 2010),
cert. denied on other grounds, --- S. Ct. ---, 2011 WL
2437054 (June 20, 2011). There is no such indication in
the intrinsic record here and, thus, no basis to overturn
the district court’s construction of this claim term.

Moreover, the language of the claims using the term
“selectively forwarding” clearly indicates that the pat-
entee intended some claims to cover embodiments that
implement only one of the disclosed routing schemes, as
DEALERTRACK v. HUBER 23
opposed to limiting every claim to the preferred embodi-
ment that offers all three. For example, claim 1 of the
’841 Patent is directed to the first routing scheme de-
scribed above, as it recites “means for sending at least a
portion of a credit application to more than one of said
remote funding sources sequentially until a funding
source returns a positive funding decision . . . .” ’841
Patent col.31 ll.51-65 (emphasis added). Similarly, claim
3 is directed to the second routing scheme, reciting
“means for sending at least a portion of a credit applica-
tion to a first one of said remote funding sources, and
then, after a predetermined time delay, sequentially
sending to each other remote funding source in turn . . . .”
Id. col.32 ll.3-17 (emphasis added). Finally, claim 7 is
directed toward the “shotgunning” approach, as it recites
the step of “selectively forwarding the credit application
data . . . to more than one . . . funding source terminal
devices substantially at the same time.” Id. col.33 ll.8-10
(emphasis added). Claim 5 recites an embodiment includ-
ing all three schemes. See id. col.32 ll.25-50.

By specifically and separately claiming each of the
disclosed routing schemes in different claims, and by
using the term “selectively forwarding” in those claims,
the patentee made clear that he intended at least some of
the claims to cover embodiments that implement only one
of the routing schemes. We therefore decline to construe
the “selectively forwarding” limitation as requiring that a
user select between multiple different routing schemes.
24 DEALERTRACK v. HUBER

3. “Central Processing Means”
Claim Term District Court’s Appellees’
Construction Proposed
Construction
“Central Process- “A mainframe, “A main-frame,
ing Means” super-mini or super-mini, or
minicomputer minicomputer
system and a system, with an
database.” operating system
and a computer
program on a
computer readable
storage medium
for executing the
specific algorithms
disclosed in FIGs.
2, 2B, 2C-1, 2C-2,
and 2D.”
Claims 12, 14, 16, and 17 contain the limitation, “cen-
tral processing means, operably coupled to said communi-
cations medium, for executing a computer program which
implements and controls credit application processing and
routing.” E.g., ’841 Patent col.33 ll.61-64. Both parties
agree that the claim is written in means-plus-function
terms and thus invokes section 112, paragraph 6. Both
parties also agree that the function of the limitation is to
“execute a computer program which implements and
controls credit application processing and routing.”

The parties dispute the associated structure. Specifi-
cally, Appellees argue that the structure necessarily
includes the algorithms disclosed in the specification in
FIGs. 2, 2B, 2C-1, 2C-2, and 2D under WMS Gaming v.
International Game Technology, 184 F.3d 1339 (Fed. Cir.
1999), and Aristocrat Technologies. Austl. PTY Ltd. v.
International Game Technology, 521 F.3d 1328 (Fed. Cir.
2008). Appellants argue that the district court properly
DEALERTRACK v. HUBER 25
determined that the structure was “[a] mainframe, super-
mini or minicomputer system and a database,” because
including the algorithm within the structure would re-
quire that a computer with a computer program that
implements and controls credit application processing and
routing would have to be the structure that “execut[es]”
that same program.

In Aristocrat, this court stated:

For a patentee to claim a means for
performing a particular function and
then to disclose only a general purpose
computer as the structure designed to
perform that function amounts to pure
functional claiming. Because general
purpose computers can be programmed
to perform very different tasks in very
different ways, simply disclosing a
computer as the structure designated
to perform a particular function does
not limit the scope of the claim to “the
corresponding structure, material, or
acts” that perform the function, as re-
quired by section 112 paragraph 6.

Aristocrat, 521 F.3d at 1333. Therefore, “in a means-plus-
function claim ‘in which the disclosed structure is a com-
puter, or microprocessor, programmed to carry out an
algorithm, the [corresponding] structure is not the general
purpose computer, but rather the special purpose com-
puter programmed to perform the disclosed algorithm.’”
Id. (quoting WMS Gaming, 184 F.3d at 1349).

While Appellees’ argument has a purely semantic ap-
peal, we do not believe the inclusion of the phrase “for
executing a computer program which,” takes the claim out
of the Aristocrat and WMS Gaming rule.
26 DEALERTRACK v. HUBER

First, section 112, paragraph 6 incorporates a deliber-
ate quid pro quo: the patentee is allowed to claim a limita-
tion in broad functional language, “provided that the
specification indicates what structure constitutes the
means for performing the claimed function.” Biomedino,
LLC v. Waters Techs. Corp., 490 F.3d 946, 948 n.1 (Fed.
Cir. 2007). The indicated structure must limit the claim
so as not to allow pure functional claiming. Here, the
“mainframe, super-mini or minicomputer system, and a
database” structure as construed by the district court
places no limits on the functional language of the claim.
Without specifying a program, a computer alone “does not
limit the scope of the claim to ‘the corresponding struc-
ture, material, or acts’ that perform the function, as
required by section 112 paragraph 6.” Aristocrat, 521
F.3d at 1333.

Second, the claim here recites that the program “im-
plement[s] and control[s] credit application processing
and routing.” The claim would not be saved from pure
functional claiming, and thus indefiniteness, without
reference to the algorithms set forth in the specification,
which are necessary to the performance of those recited
functions.

A general purpose computer can perform the claimed
function of “executing a computer program which imple-
ments and controls credit application processing and
routing” only if the program it executes is capable of
performing those functions. That the true functional
requirements of the limitation are nested within the
generic function of executing a program does not change
this fact; though the computer itself may execute a com-
puter program, it may not execute that computer program
without the algorithms.

Finally, claims 14, 16, and 17 demonstrate the pat-
entee’s understanding that the phrase “executing a com-
DEALERTRACK v. HUBER 27
puter program which” does not change the basic means-
plus-function calculus. Those claims contain the following
limitation: “wherein said central processing means com-
puter program which implements and controls credit
application processing and routing . . . .” ’841 Patent
col.35 ll.3-5. Thus, the patent itself equates “central
processing means computer program” with “central proc-
essing means for executing a computer program.”

Dealertrack’s argument that a program cannot be in-
cluded in the structure that executes the program is
inapposite. In light of the above, the claims here are no
different than the claims at issue in WMS Gaming and
Aristocrat.

We therefore conclude that the appropriate structure
must include the algorithms disclosed in the specification
that “implement[] and control[] credit application process-
ing and routing.” Dealertrack argues that even if the
structure includes the algorithms in the specification, the
accused product need not contain equivalent structure to
all the algorithms disclosed in Figures 2, 2B, 2C-1, 2C-2,
and 2D, but only equivalent structure to at least one of the
“distinct and alternative structures for performing the
claimed function,” Creo Prods., Inc. v. Presstek, Inc., 305
F.3d 1337, 1345 (Fed. Cir. 2002), disclosed in the specifi-
cation. For example, Dealertrack argues that the accused
may infringe if it sends credit application data simultane-
ously to all banks, even if it cannot send the data sequen-
tially or with a predetermined time delay, as disclosed in
Figure 2C-2.

This court agrees. In Creo, the written description
contained four algorithms, corresponding to four different
offset corrections in a printing process. Id. We noted that
“the written description may disclose distinct and alterna-
tive structures for performing the claimed function” and
that the performance of any one of which (or their equiva-
28 DEALERTRACK v. HUBER

lents) would fall within the scope of the claims, where
“[n]othing in the patent requires a single structural
embodiment corresponding to the ‘means for offsetting’ in
original claim 1 to be capable of performing all four of the
algorithms disclosed.” Id. The same reasoning applies
here. The routing algorithms disclosed in the written
description here “implement[] and control[] credit applica-
tion processing and routing,” and constitute alternative
structures for purposes of construction of the means-plus-
function element.

Because we modify the district court’s claim construc-
tions of “communications medium” and “central process-
ing means,” we vacate the district court’s summary
judgment of non-infringement and remand to the district
court to determine infringement in the first instance
applying these constructions.

D. Cross-Appeal: Invalidity for Indefiniteness

Claims 14, 16, and 17 add the following limitation:
“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.35 ll.3-6.

In its cross-appeal, RouteOne argues that this limita-
tion must be added to the function of the central process-
ing means limitation, and that, because there is no
structure disclosed in the specification for tracking pend-
ing credit applications, the claims are indefinite. Dealer-
track responds that this case is substantially similar to
BBA Nonwovens Simpsonville, Inc. v. Superior Nonwov-
ens, LLC, 303 F.3d 1332 (Fed. Cir. 2002), where we held
that the limitation “corona means cooperating with [the
attenuator] and positioned for electrostatically charging
the filaments” did not include “positioned for electrostati-
DEALERTRACK v. HUBER 29
cally charging the filaments” within the function of the
“corona means.”

In our view, it is clear that claims 14, 16, and 17 re-
cite an additional function for the “central processing
means” to perform—i.e., the function of “further
provid[ing] for tracking pending credit applications.” As
discussed above, the appropriate structure for the “central
processing means” limitation must include the algorithms
disclosed in the specification that “implement[] and
control[]” the recited functions that the “central process-
ing means” is required to perform. However, the ’841
Patent’s specification discloses no algorithm pursuant to
which the “central processing means” could perform the
claimed function of “tracking.” The “central processing
means” term is therefore indefinite, as used in claims 14,
16, and 17, for failure to recite sufficient structure to
perform its claimed functions. See Blackboard, Inc. v.
Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009);
Aristocrat, 521 F.3d at 1333; WMS Gaming, 184 F.3d at
1349. The district court therefore legally erred in denying
the motion for summary judgment of invalidity for indefi-
niteness.

II. Invalidity of the ’427 Patent

Section 101 of the Patent Act provides that “[w]hoever
invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.” 3

3 With all due respect, the dissent’s effort to define a
more efficient judicial process, as laudable a goal as that
may be, faces several obstacles. First, the Supreme Court
characterizes patent eligibility under § 101 as a “thresh-
old test.” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010)
(“Bilski II”) (“The § 101 patent-eligibility inquiry is only a
30 DEALERTRACK v. HUBER

35 U.S.C. § 101. The Supreme Court has set forth three
broad categories of subject matter ineligible for patent
protection: “laws of nature, physical phenomena, and
abstract ideas.” Bilski II, 130 S. Ct. at 3225 (2010). It
therefore generally follows that any invention within the
broad statutory categories of § 101 that is made by man,
not directed to a law of nature or physical phenomenon,
and not so manifestly abstract as to preempt a fundamen-
tal concept or idea is patent eligible. See Diamond v.

threshold test.”). Second, the “defenses provided in the
statute,” § 282, include not only the “conditions of pat-
entability” in §§ 102 and 103, but also those in § 101. See
Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 543
F.3d 657, 661 (Fed. Cir. 2008) (“It has long been under-
stood that the Patent Act sets out the conditions for
patentability in three sections: sections 101, 102, and
103.” (citing Graham v. John Deere Co. of Kansas City,
383 U.S. 1 (1966))). See also Pa. Dep’t of Corrs. v. Yeskey,
524 U.S. 206, 212 (1998) (“The title of a statute . . . cannot
limit the plain meaning of the text. For interpretive
purposes, it is of use only when it sheds light on some
ambiguous word or phrase.” (quoting Trainmen v. Balti-
more & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947))).
Finally, the motion for summary judgment alluded to by
the dissent was filed by Dealertrack, not Appellees, and
sought summary judgment of nonobviousness. See Plain-
tiff Dealertrack’s Uncontroverted Facts and Conclusions
of Law in Support of Motion for Summary Judgment of
Failure to Prove Invalidity of the Patents-In-Suit Based
on Coinlink, Dealertrack, Inc. v. Huber, No. 06-cv-2335
(C.D. Cal. May 18, 2009), ECF No. 703. In opposition,
Appellees argued to the district court that summary
judgment of obviousness was improper and that the issue
should go to trial. Thus, the resolution of Dealertrack’s
motion would not have decided the case absent a sua
sponte determination of obviousness as a matter of law.
DEALERTRACK v. HUBER 31
Chakrabarty, 447 U.S. 303, 309 (1980) (“Congress in-
tended statutory subject matter to ‘include anything
under the sun that is made by man.’” (internal citation
omitted)); Research Corp. v. Microsoft Corp., 627 F.3d 859,
868 (Fed. Cir. 2010). The vast number of claims pass this
coarse eligibility filter. Their patentability is properly
measured against other provisions of Title 35.

Turning to the claims at issue here, claim 1 of the ’427
Patent reads:

1. A computer aided method of manag-
ing a credit application, the method
comprising the steps of:

[A] receiving credit application data
from a remote application entry and
display device;

[B] selectively forwarding the credit
application data to remote funding
source terminal devices;

[C] forwarding funding decision data
from at least one of the remote funding
source terminal devices to the remote
application entry and display device;

[D] wherein the selectively forwarding
the credit application data step further
comprises:

[D1] sending at least a portion of a
credit application to more than one of
said remote funding sources substan-
tially at the same time;

[D2] sending at least a portion of a
credit application to more than one of
32 DEALERTRACK v. HUBER

said remote funding sources sequen-
tially until a finding [sic, funding]
source returns a positive funding deci-
sion;

[D3] sending at least a portion of a
credit application to a first one of said
remote funding sources, and then, after
a predetermined time, sending to at
least one other remote funding source,
until one of the finding [sic, funding]
sources returns a positive funding deci-
sion or until all funding sources have
been exhausted; or,

[D4] sending the credit application
from a first remote funding source to a
second remote finding [sic, funding]
source if the first funding source de-
clines to approve the credit application.
’427 Patent col.20 l.54 – col.21 l.14. The patent eligibility
of dependent claims 3 and 4 is not separately argued on
appeal and, therefore, will not be separately addressed.
The district court determined that “computer aided
method” in the preamble was limiting, but did not further
define the phrase. The district court then construed
“remote application entry and display device” as “any
device, e.g., personal computer or dumb terminal, remote
from the central processor, for application entry and
display.” Id. at 27. Similarly, “terminal device” was
construed as “any device, e.g., personal computer or dumb
terminal, located at a logical or physical terminus of the
system.” Id. at 20. Appellant has not appealed these
constructions.
Applying this court’s then definitive machine-or-
transformation test, the district court determined that
claims 1, 3, and 4 of the ’427 Patent did not constitute
DEALERTRACK v. HUBER 33
patent-eligible subject matter. Because Dealertrack did
not argue that the claims effected a transformation, the
court applied only the machine prong of the test. Relying
on a number of decisions by the Board of Patent Appeals
and Interferences and the decision in Cybersource Corp. v.
Retail Decisions, Inc., 2009 U.S. Dist. LEXIS 26056 (N.D.
Cal. Mar. 26, 2009), affirmed No. 2009-1358 (Fed. Cir.
Aug. 16, 2011), the district court determined that because
the computer implicated was not “specially programmed”
and “nothing more than a general purpose computer that
has been programmed in some unspecified manner,” it
could not constitute the “particular machine” required to
confer patent eligibility under the machine prong of In re
Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc) (“Bilski I”).
See Cybersource, 2009 U.S. Dist. LEXIS 26056; Ex parte
Nawathe, No. 2007-3360, 2009 WL 327520 (BPAI Feb. 9,
2009); Ex parte Gutta, No. 2008-3000, 2009 WL 112393
(BPAI Jan. 15, 2009); Ex Parte Cornea-Hasegan, 89
U.S.P.Q.2d (BNA) 1557 (BPAI Jan. 13, 2009).

On appeal, Dealertrack argues that (1) the claims
here are unlike those in Gottschalk v. Benson, 409 U.S. 63
(1972) (“Benson”), Parker v. Flook, 437 U.S. 584 (1978)
(“Flook”), and Bilski II, 130 S. Ct. 3218, where the claims
were held patent ineligible, because those cases involved
claims reducible to a mathematical formula, and there is
no mathematical formula implicated in the claims of the
’427 Patent; (2) the claims here are not abstract because
they provide “a concrete, practical solution to a long-felt
problem in the automotive finance industry” that “greatly
increased the efficiency of processing automotive credit
applications” and was “rapidly adopted in the industry,”
Appellant Br. at 47; (3) to be patent eligible, claims need
not be tied to a “special purpose” computer, i.e. a pro-
grammed computer, but rather it is sufficient that they be
tied to a “general purpose” computer, which they are here:
the central processor, remote application entry and dis-
play devices, and funding source terminal devices; and (4)
34 DEALERTRACK v. HUBER

even if a general purpose computer may not constitute the
“machine” for § 101 purposes, the claims describe how to
program the computer by reference to the flow charts in
the specification, and the steps set forth in the claims
constitute the programming of the general purpose com-
puter, making it a special purpose computer sufficient to
meet the machine prong.

Appellees counter that (1) the claims “preempt all
manner of sending information back and forth, at speci-
fied time intervals or in sequence, from a dealer to a
lender or from a lender to another lender,” and thus are
claims to an abstract idea, Huber Br. at 28; (2) the field of
use restriction to auto dealers does not save the claim
from abstraction because the restriction is just like that in
Flook; (3) the claims here are unlike those in Diamond v.
Diehr, 450 U.S. 175 (1981) (“Diehr”) because no transfor-
mation took place here; (4) the claims are not tied to a
particular machine because “computer aided” only re-
quires performance with the “aid” of a computer for any
single step, e.g., as a display device; (5) even if the claims
require the computer to perform all the steps, the claim
only requires a general purpose computer, which is not a
“particular machine”; and (6) the claims do not require a
specific algorithm because if they did, the claims would be
indefinite for failure to disclose sufficient structure.

“Whether a patent claim is drawn to patent-eligible
subject matter is an issue of law that is reviewed de
novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d
1319, 1331 (Fed. Cir. 2010). In Research Corp., we re-
cently admonished that for abstractness to invalidate a
claim it must “exhibit itself so manifestly as to override
the broad statutory categories of eligible subject matter
and the statutory context that directs primary attention
on the patentability criteria of the rest of the Patent Act.”
627 F.3d at 868. This is in recognition of the clear con-
gressional mandate that a very broad swath of inventions
DEALERTRACK v. HUBER 35
be eligible for patent protection. Bilski II, 130 S. Ct. at
3225 (citing Chakrabarty, 447 U.S. at 308); Prometheus
Labs. v. Mayo Collaborative Servs., 628 F.3d 1347, 1353
(Fed. Cir. 2010); Research Corp., 627 F.3d at 867. In this
case, however, we are compelled to conclude that the
claims are invalid as being directed to an abstract idea
preemptive of a fundamental concept or idea that would
foreclose innovation in this area.

Dealertrack’s claimed process in its simplest form in-
cludes three steps: receiving data from one source (step
A), selectively forwarding the data (step B, performed
according to step D), and forwarding reply data to the
first source (step C). The claim “explain[s] the basic
concept” of processing information through a clearing-
house, just as claim 1 in Bilski II “explain[ed] the basic
concept of hedging.” See Bilski II, 130 S. Ct. at 3231. The
steps that constitute the method here do not “impose
meaningful limits on the claim’s scope.” Bilski I, 545 F.3d
at 961-62 (citing Benson, 409 U.S. at 71-72). Neither
Dealertrack nor any other entity is entitled to wholly
preempt the clearinghouse concept.

Dealertrack’s primary argument is that the “com-
puter-aided” limitation in the preamble sufficiently limits
the claims to an application of the idea. We disagree.

Although the district court construed “computer
aided” as a limitation, the ’427 Patent “does not specify
how the computer hardware and database are specially
programmed to perform the steps claimed in the patent.”
See Invalidity at 6-7. The claims are silent as to how a
computer aids the method, the extent to which a computer
aids the method, or the significance of a computer to the
performance of the method. The undefined phrase “com-
puter aided” is no less abstract than the idea of a clear-
inghouse itself. Because the computer here “can be
programmed to perform very different tasks in very
36 DEALERTRACK v. HUBER

different ways,” Aristocrat, 521 F.3d at 1333, it does not
“play a significant part in permitting the claimed method
to be performed.” Cybersource, slip op. at 19 (citing SiRF
Tech., 601 F.3d at 1333). Simply adding a “computer
aided” limitation to a claim covering an abstract concept,
without more, is insufficient to render the claim patent
eligible. See SiRF, 601 F.3d at 1333 (“In order for the
addition of a machine to impose a meaningful limit on the
scope of a claim, it must play a significant part in permit-
ting the claimed method to be performed, rather than
function solely as an obvious mechanism for permitting a
solution to be achieved more quickly, i.e., through the
utilization of a computer for performing calculations.”).

The claims here do not require a specific application,
nor are they tied to a particular machine. The computer
here does no more than the computer in Benson to limit
the scope of the claim. The process in Benson covered the
use of binary-coded decimal (“BCD”) to pure binary con-
version in “the operation of a train[, or the] verification of
drivers’ licenses[, or the] researching [of] the law books for
precedent . . . performed through any existing machinery
or future-devised machinery.” 409 U.S. at 68. Similarly,
here, the claims cover a clearinghouse process using any
existing or future-devised machinery.

Nor are the claims here analogous to those in Ul-
tramercial, LLC v. Hulu, LLC, No. 2010-1544 (Fed. Cir.
Sept. 15, 2011). Unlike in Ultramercial, where this court
found that the patent claimed a practical application with
concrete steps requiring an extensive computer interface,
id. slip op. at 11, the claims here recite only that the
method is “computer aided” without specifying any level
of involvement or detail. The fact that certain algorithms
are disclosed in the specification does not change the
outcome. In considering patent eligibility under § 101,
one must focus on the claims. This is because a claim
may “preempt” only that which the claims encompass, not
DEALERTRACK v. HUBER 37
what is disclosed but left unclaimed. Here, the claims of
the ’427 Patent were construed not to be limited to any
particular algorithm. Dealertrack has not appealed the
district court’s construction.

Lastly, Dealertrack argues that the claim is patent
eligible because it covers the use of a clearinghouse only
in the car loan application process, and not all uses
thereof. Although directed to a particular use, it nonethe-
less covers a broad idea. In Bilski II, the Supreme Court
explained that the dependent claims were not patent
eligible though they “limit[ed] an abstract idea to one field
of use or add[ed] token postsolution components.” 130 S.
Ct. at 3231. See also Diehr, 450 U.S. at 192 n.14 (“A
mathematical formula does not suddenly become pat-
entable subject matter simply by having the applicant
acquiesce to limiting the reach of the patent for the for-
mula to a particular technological use.”).

The restriction here is precisely the kind of limitation
held to be insufficient to confer patent eligibility in Bilski
II. The notion of using a clearinghouse generally and
using a clearinghouse specifically to apply for car loans,
like the relationship between hedging and hedging in the
energy market in Bilski II, is of no consequence without
more. See Diehr, 450 U.S. at 191 (noting that the princi-
ple that a mathematical formula “is not accorded the
protection of our patent laws . . . cannot be circumvented
by attempting to limit the use of the formula to a particu-
lar technological environment” (emphasis added)).

For the foregoing reasons, we affirm the determina-
tion of the district court that claims 1, 3, and 4 of the ’427
Patent are patent ineligible abstract ideas under § 101.

Because of our disposition of this issue, we need not
address Appellees’ alternative grounds for affirmance
concerning the ’427 Patent.
38 DEALERTRACK v. HUBER

CONCLUSION

For the foregoing reasons, we affirm the district
court’s construction of “routing” and “selectively forward-
ing,” modify the district court’s constructions of “commu-
nications medium” and “central processing means,”
reverse the district court’s denial of summary judgment
on indefiniteness, and vacate and remand the district
court’s summary judgment of non-infringement of the
asserted claims of the ’841 Patent. We affirm the district
court’s summary judgment of invalidity of claims 1, 3, and
4 of the ’427 Patent as claiming patent ineligible subject
matter under § 101.

AFFIRMED-IN-PART, VACATED-IN-PART,
REVERSED-IN-PART, AND REMANDED

COSTS

Each party shall bear its own costs.
 United States Court of Appeals
for the Federal Circuit
__________________________

DEALERTRACK, INC.,
Plaintiff-Appellant,
v.
DAVID L. HUBER AND FINANCE EXPRESS, LLC,
Defendants-Appellees,
AND

JOHN DOE DEALERS,
Defendant,
AND

ROUTEONE, LLC,
Defendant-Cross Appellant.
__________________________

2009-1566, -1588
__________________________

Appeal from the United States District Court for the
Central District of California in consolidated case no. 06-
CV-2335, Judge Andrew J. Guilford.
__________________________

PLAGER, Circuit Judge, concurring-in-part and dissenting-
in-part.
I join the court’s opinion and conclusions regarding
the several issues addressing infringement of the ’841
patent.
DEALERTRACK v. HUBER 2

However, as a matter of efficient judicial process I ob-
ject to and dissent from that part of the opinion regarding
the ’427 patent and its validity under §101, the section of
the Patent Act that describes what is patentable subject
matter. I believe that this court should exercise its inher-
ent power to control the processes of litigation, Chambers
v. NASCO, Inc., 501 U.S. 32, 43 (1991), and insist that
litigants, and trial courts, initially address patent invalid-
ity issues in infringement suits in terms of the defenses
provided in the statute 1 : “conditions of patentability,”
specifically §§102 and 103, and in addition §§112 and 251,
and not foray into the jurisprudential morass of §101
unless absolutely necessary.
At issue before the trial court was the validity of a
patent (the ’427 patent) which the patentee was attempt-
ing to enforce against an alleged infringer. The trial court
had before it several summary judgment motions, includ-
ing one addressing §103 (obviousness), as well as one
addressing §101. The trial court chose to decide the case
under §101, rather than on the §103 issue. In my view
that was an error that this court can and should correct.
I respectfully dissent from the panel’s failure to insist
that this case be heard and decided pursuant to the
Patent Act’s requirements and the efficient administra-
tion of justice. I would vacate the trial court’s judgment
regarding §101 and remand for a determination of valid-
ity under the conditions of patentability raised by the
parties, in this case specifically the §103 issue.

1 35 U.S.C. §282.