Dealertrack, Inc. v. Huber

"Disclosure of multiple examples [of embodiments] does not necessarily mean that such list is exhaustive." "Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible."

Dealertrack, Inc. (“Dealertrack”) appealed from the district court’s decision of noninfringement of claims of their U.S. Patent No. 6,587,841 (“’841 Patent”) and invalidity of claims of their U.S. Patent No. 7,181,427 (“’427 Patent”) for failure to claim patentable subject matter under 35 U.S.C. § 101. RouteOne, LLC (“RouteOne”) cross-appealed the denial of invalidity of claims of the ‘841 Patent for indefiniteness. The Court of Appeals for the Federal Circuit held the challenged claims of the ‘841 Patent invalid for indefiniteness, vacated and remanded concerning the noninfringement decision of the ‘841 Patent, and affirmed the invalidity of the claims of the ‘427 Patent due to ineligible subject matter. The Court of Appeals stated that the finding of noninfringement and invalidity of the ‘841 Patent were based on the claim construction of the ‘841 Patent and that the district court had erred in construing some of the claim constructions challenged by the parties. In determining that the district court had misconstrued “communications medium” (among other terms) the Court of Appeals noted “it is improper for a court to limit a patent to its preferred embodiment” and that “disclosure of multiple examples does not necessarily mean that such list is exhaustive.” In affirming the invalidity of the ‘427 claims, the Court of Appeals stated that “simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.” AFFIRMED-IN-PART, VACATED-IN-PART, REVERSED-IN-PART and REMANDED.