By Jason Rantanen
Trading Technologies International, Inc. v. Open E Cry, LLC (Fed. Cir. 2013) Download Trading Tech v Open E Cry
Panel: Lourie (author), Plager, Benson (District Judge)
The traditional – and certainly most widely held – view in patent law is to view its issues as formally distinct doctrines; crystalline pillars supporting the temple. This view emphasizes the formal distinction between patent law doctrines and rejects attempts to cross between them. Each doctrine is an independent whole. Trading Technologies v. Open E Cry exemplifies this view. (It's worth noting that this opinion notwithstanding, some of the most successful patent litigators that I've met have succeeded by rejecting the formality of doctrines and building their litigation strategy around the intersticial spaces between the doctines.)
Trading Technology ("TT") owns a series of related patents generally pertaining to software for electronic trading on a commodities exchange. The four patents at issue in this appeal claim priority based on an application that ultimately issued as Patent No. 6,772,132. In an earlier appeal, Trading Technologies International, Inc. v. eSpeed, Inc., 595 F.3d 1340 (Fed. Cir. 2010), the Federal Circuit considered the correct construction of claims of the '132 patent that required a graphical user interface having a "static" display of market price information. In eSpeed, the Federal Circuit held that "static," as used in the claims of the ’132 patents, "required a price column that moves only in response to a manual re-centering command." In reaching this result, eSpeed concluded (among other things) that:
“[t]he inventors’ own specification strongly suggests that the claimed re-centering feature is manual” because the written description “only discusse[d] manual re-centering commands” and referred to “the present invention” as including a manual one-click re-centering feature.
While the earlier litigation was pending, TT filed the applications that matured into the patents involved in this suit. In those applications, TT introduced new claims that lacked the term "static" in any form. As a result, three of the new patents had identical written descriptions to the '132 patent but claims that differed in one key way: they did not include "static" limitations. (In the fourth patent TT pursued the strategy of filing a continuation-in-part; the result was that TT was able to add new disclosures).
TT filed multiple actions based on this second round of patents. The district court consolidated the actions and subsequently grand summary judgment of invalidity of the four new patents based on lack of adequate written description under 35 U.S.C. § 112(a). The district court based its ruling on the earlier eSpeed opinion, concluding that eSpeed required holding the claims invalid for lack of written description. The Federal Circuit summarized the district court's action as follows:
According to the district court, eSpeed’s construction of “static” in the ’132 and ’304 patents turned “on the premise that the invention described in the specification was limited to static price axes that move only with manual re-centering.” Id. at 1045. Because the ’411 patent’s claims lacked that term and therefore appeared to cover displays with automatic re-centering, the district court concluded that any decision upholding those broader claims as supported by the same written description “would be at odds with the Federal Circuit’s binding findings in the eSpeed Decision.” Id. In granting the Defendants’ motion for summary judgment, the district court expressly declined to evaluate the parties’ evidence or make its own findings on the merits because the court determined “as a matter of law that the eSpeed Decision controls.”
Slip Op. at 12. On appeal, the Federal Circuit rejected this reasoning, reversing the grant of summary judgment and remanding for further proceedings. The court based its conclusion on the formal distinction between the doctrines of claim construction and written description, a distinction that it explained in detail:
Despite their similarities, however, claim construction and the written description requirement are separate issues that serve distinct purposes.
In construing claims, a court seeks to discern the meaning of a particular term used in one or more claims of a patent, based, inter alia, on evidence drawn from the specification, the surrounding claim language, the prosecution history, and relevant extrinsic sources….While guided by the specification, the focus of claim construction remains on defining a discrete claim term to better ascertain the boundaries of a claim. In contrast, the written description analysis considers the bounds of the specification itself. The written description requirement prevents patentees from claiming more than they have actually invented and disclosed to the public, as measured by the written description of the invention provided with their patent applications.
This case illustrates the distinction. In eSpeed, we were called upon to evaluate the proper construction of “static,” a term used in the claims of the ’132 and ’304 patents. Accordingly, we considered the evidence relevant to a proper reading of that term, starting with those patents’ common written description. eSpeed, 595 F.3d at 1353–55. Noting that the patents referred to one-click centering as part of the invention and did not discuss automatic re-centering, we concluded that the specification “strongly suggests” that a “static” price column would require manual re-centering. Id. at 1353–54. And even though the patents described price columns that “do not normally change positions unless a re-centering command is received,” ’132 patent col. 7 ll. 46–48 (emphasis added), we concluded that “the inventors jettisoned the word ‘normally’ during prosecution” by limiting the term “static” in response to an indefiniteness rejection, eSpeed, 595 F.3d at 1354. In sum, we concluded that the disputed claim term should be limited to require a manual re- centering command in the claims of the ’132 and ’304 patents.
But our decision in eSpeed did not thereby determine whether the same written description would also support different claims drawn to a non-“static” display. In particular, we did not make “findings regarding the specification . . . that are dispositive” as to the present written description challenge. See Summary Judgment Order, 852 F. Supp. 2d at 1044. On the contrary, we merely determined the best construction for a single disputed claim term, a term that is absent from the claims of the ’411, ’768, and ’374 patents now before us. That analysis did not require us to pass on the outer limits of the pa- tents’ written description, nor did we endeavor to do so. In fact, our prior examination of that written description did not even settle the limited claim construction issue then facing the court, see eSpeed, 595 F.3d at 1353–54 (concluding that the specification “strongly suggests” that the claimed re-centering feature is manual), much less conclusively find that the same written description could never support any claim to a display with a non-“static” price axis.
Slip Op. at 17-18.
Prosecution History Estoppel: The court also reversed grant of summary judgment of prosecution history estoppel, concluding that statements made in connection with the earlier '132 patent did not extend through to the subsequent patents in the same lineage in this case. "Prosecution history estoppel can extend from a parent application to subsequent patents in the same lineage, Elkay, 192 F.3d at 981, as can a prosecution disclaimer, Omega Eng’g, 334 F.3d at 1333–34. But “arguments made in a related application do not automatically apply to different claims in a separate application.” Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1139 (Fed. Cir. 2003)….In this case, the intrinsic record specific to the ’055 patent distinguishes eSpeed and compels a different result." Slip Op. at 24.
Disclosure: Several years ago, Dennis represented Trading Technologies in a previous case at the District Court level. That said, we haven't talked about the substance of these cases.