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.
Of evidence during prosecution to the contrary:
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 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.
Of the scope of incorporation by reference:
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 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
Footnote 2: 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 reference to the Internet as a communications medium was contained in the parent at both of these stages.
Note that Footnote 3 begins: 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.
The conclusion of the decision:
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.
Judge PLAGER, concurring-in-part and dissenting- in-part, wrote:
At issue before the trial court was the validity of a patent (the ’427 patent) which the patentee was attempting to enforce against an alleged infringer. The trial court had before it several summary judgment motions, including 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 administration 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.