Common Sense Claim Construction in Dealertrack, Inc. v. Huber
We introduced Dealertrack, Inc. v. Huber (“Dealertrack II”), a U.S. Court of Appeals for the Federal Circuit (the “CAFC”) decision, in a post on January 27. That post provides an overview of the case and discusses CAFC’s Section 101 patent eligibility analysis. This post will discuss CAFC’s de novo claim construction review. Dealertrack II at 9.
Dealertrack’s invention relates to automating the process by which car dealers seek loans on behalf of their customers from one or multiple funding sources. Id at 3. Dealertrack sued David L. Huber and Finance Express, LLC and RouteOne (the “Defendants”), claiming that each of their various competing products infringed, among others, U.S. Patent No. 6,587,841 (the “’841 Patent”). Id. at 4.
The district court granted summary judgment of noninfringement of all asserted claims in the ‘841 Patent. Id. at 5; see also Dealertrack, Inc. v. Huber, No. CV-06-2335 (C.D. Cal. Sept. 27, 2008) (“Dealertrack Claim Construction”). In reversing, CAFC explained that a list of examples in a patent specification is typically not considered exhaustive. Further, it explained that a contextual analysis that focuses on internal consistency throughout the patent is required to determine whether i.e. is used in an exemplary or definitional manner. But CAFC gave with one hand and then took with the other. It then reversed the district court’s denial of summary judgment of invalidity for indefiniteness on some of the asserted claims. Here, CAFC’s analysis should serve as a warning to those drafting means-plus-function claims in software patents.
CAFC reviewed the construction of the terms communications medium, routing, selectively forwarding, and central processing means. Claim 7 demonstrates the use of these terms, except for central processing means.
7. A computer based method of operating a credit application and routing system, the system including a central processor coupled to a communications medium for communicating with remote application entry and display devices, remote credit bureau terminal devices, and remote funding source terminal devices, the method comprising:
. . .
selectively forwarding the credit application data, and credit report data if appropriate, to at least one remote funding source terminal device;
Id. at 6–7 (emphases added by CAFC). Claim 14 demonstrates the use of central processing means and is included later in this post.
“The district court construed ‘communications medium’ as ‘a network for transferring data, not including the internet.’” Id. at 10 (quoting Dealertrack Claim Construction at 19). Because each of the asserted claims included a communications medium and the accused products all pass communications through the Internet, this construction was fatal to Dealertrack’s infringement claims. See id. at 10. The district court’s decision rested on this language from the specification: “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 commercial value added network (VAN) ordinary telephone lines, or private leased lines.” Id. at 10 (quoting ’841 Patent col.17 l.67 – col.18 l.5). The district court reasoned that while “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.” Id. at 10 (quoting Dealertrack Claim Construction at 18).
CAFC was not persuaded. Instead, it recognized that “[t]he disclosure of multiple examples does not necessarily mean that such list is exhaustive or that non-enumerated examples should be excluded.” Id. at 12. CAFC concluded that “the only reading that does not violate this court’s repeated prohibition against importing limitations from the specification, is of a non-exhaustive list.” Id. at 13. It further noted that the specifications also said that “[t]he communications medium used need only provide fast reliable data communication between its users.” Id. at 13. And this, along with the list of examples, “if anything, broadens the definition of ‘communications medium.’” Id. at 13.
CAFC determined that a communications medium was a “network for transferring data,” and that the Internet would have been consider as such a network, even in 1995, the priority date of the ‘841 Patent. Id. at 3, 13. The court was not persuaded by Defendants’ argument that in 1995 “the Internet was not reliable.” Id. at 15. It noted that an “ambivalent statement” about reliability from Defendants’ expert witness was “insufficient to show that ordinary artisans would have considered ‘communications medium’ to exclude the Internet.” Id. at 15.
CAFC affirmed the district court’s construction of the term routing as “[s]ending or forwarding by a particular route.” Id. at 16, 21. In doing so, it rejected Defendants’ proposed construction of routing: “Sequencing (order) and timing.” Id. at 17. Defendants “argue[d] that the patent twice defines ‘routing’ as ‘sequencing (order) and timing’ in describing the preferred embodiment.” Id. at 17. For example: “As already mentioned, the present invention provides flexibility in funding source selection, and routing, i.e., sequencing and timing.” Id. (quoting ‘841 Patent col.22 ll.46–48) (italicized emphases added by CAFC).
CAFC pointed out that “contextual analysis” was required to “determin[e] whether the patentee’s use of ‘i.e.’ was definitional.” Id. at 20. The court cited multiple other places the patent used “i.e.” to cite examples. See Id. at 20. The court also pointed out that sequencing was unnecessary when only a single funding source was selected. Id. And since the claims used the term routing with only a single funding source, “[t]he 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.” Id. CAFC concluded that “internal consistency can only be achieved by reading ‘i.e.’ as exemplary.” Id. at 21.
CAFC also affirmed the district court’s construction of the term selectively forwarding as “[f]orwarding to particular (i.e. ‘selected’) destination(s)” Id. at 21, 38. In doing so, it rejected Defendants’ proposed construction of selectively forwarding: “Forwarding using a selected sequence (order) and timing” Id. at 21.
Defendants argued that because the ’841 patent “show[s] a preferred embodiment having three possible ‘[r]outing selections’ for sending a credit application to multiple lenders,” selectively forwarding “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.” Id. at 22 (italicized emphases added by CAFC). CAFC first noted that “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.” Id. at 22 (quoting Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1342 (Fed. Cir. 2010), cert. denied on other grounds, 131 S.Ct. 3020 (2011)).
After a review of the claims, CAFC declared “[b]y 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.” Id. at 23.
Central Processing Means . . . For.
Some of the asserted claims in the ‘841 patent are “written in means-plus-function terms and thus invokes section 112, paragraph 6.” Id. at 24. For example, Claim 14 says:
14. A credit application and routing system, comprising:
a communications medium;
central processing means, operably coupled to said communications medium for, executing a computer program which implements and controls credit application processing and routing;
. . . .
wherein said central processing means computer program which implements and controls credit application processing and routing, further provides for tracking pending credit applications.
Id. at 7–8 (bolded emphases added by CAFC) (italicized emphasis added).
With a means-plus-function claim, “the patentee is allowed to claim a limitation in broad functional language, ‘provided that the specification indicates what structure constitutes the means for performing the claimed function.’” Id. at 26 (quoting Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 n.1 (Fed. Cir. 2007)). The district court determined that the structure for performing the claimed function was a “mainframe, super-mini or minicomputer system, and a database,” id. at 26, apparently looking to col. 18 ll. 10-11 of the ‘841 Patent.
Upon review CAFC noted that “[t]he indicated structure must limit the claim so as not to allow pure functional claiming.” Id. at 26. And that “[f]or 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.” Id. at 25 (quoting Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). “Therefore, ‘in a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the [corresponding] structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.’” Id. (quoting Aristocrat, 521 F.3d at 1333) (alteration in original). CAFC held that the proper construction of central processing means was thus “[a] main-frame, super-mini, or minicomputer system, with an operating system and a computer program on a computer readable storage medium for executing the specific algorithms disclosed in [the specification]” Id. at 24; see also id. at 27. It further clarified that to infringe the ‘841 patent, the accused product need only implement one, not all, of the disclosed algorithms. Id. at 27.
Finally, CAFC held that the disputed claims were invalid due to indefiniteness. It noted that the function of the means-plus function claim included “tracking pending credit applications.” Id. at 29. But “the ’841 Patent’s specification discloses no algorithm pursuant to which the ‘central processing means’ could perform the claimed function of ‘tracking.’” Id. CAFC then held that Defendants were entitled to summary judgment of invalidity for indefiniteness. Id.
CAFC used a common sense approach in its de novo claim construction review. It rejected the defendant’s narrow interpretations of routing and selectively forwarding by construing these terms in a manner that retains internal consistency with the rest of the patent. It also dismissed the defendant’s fanciful argument that the Internet is not a communications medium by reaffirming that a list in the specification should, generally, not be considered exhaustive. Careful drafting may have avoided these arguments altogether. It is, however, nice to see that the plain language meaning of a patent will be favored over spurious arguments.
CAFC also reaffirmed the holding in Aristocrat that a means-plus-function claim must be supported by adequate structure in the specification. This is a good reminder to consider carefully whether to use such claims. If you do chose to include a means-plus-function claim, make sure that the specification provides structure for every element of that claim.
[Brian Wallenfelt contributed to this posting.]
Back to All Resources