Trading Technologies v. Open E Cry: Doctrinal Formalism in Patent Law

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.

26 thoughts on “Trading Technologies v. Open E Cry: Doctrinal Formalism in Patent Law

  1. 25

    But it shouldn’t be protectable as a utility patent.

    As you have shown no legal basis for this belief, and in fact you resort to twisting law in order to ‘support’ your belief, the portrayal of you as creationist-minded remains accurate.

    And that is a fact.

  2. 24

    That’s just math.

    Is that your final answer?

    LOL – show us your command of copyright law, Malcolm.

  3. 23

    These old boys just reconstructed the patent- the patent that should have never been.
    May be the litigation attorneys and the prosecution attorneys may have a circular argument in the wind.

    link to

  4. 22

    Yea, my point above exactly – the ‘actually invented’ standard et al. Written description witch hunt for what you ‘actually invented’ and then saying your claims are invalid – for???? failing to claim?, not sufficiently? covering too little, too much of what you -actually invented.

  5. 21

    My point being – a limitation being imported into a claim – via a markman definitional order – like “plank” means – a board cut from wood – and then finding the claim can’t be supported under the written description requirement because the written description only supports extruded planks. I know sounds ridiculous but … that’s the logic of it.

    Now if you said: written description is a prohibition to late claiming and the inventor needed to ‘possess’ his invention at the time of filing and the original claims as filed contained a claim to extruded planks. And then was the objective end to it – then fine. But written description has morphed into something more than that. – I mean what is it besides gist or heart of the invention? It is not enablement – it’s ‘something’ more – which is exactly what?

  6. 19

    “You almost always end up in a situation you can’t ‘prove’ written description support – under a court’s claim construction.”

    If the claim is that bad, why on earth would you try in the first place?

  7. 18

    Not really Ned – we did not discuss as part of your hypo what was also included in the case at hand.

    Nice try though.

  8. 17

    Anon, what you just said is exactly what the overruled district court judge said in the present case.  I think you need to reconsider your advice to your client.

  9. 16

    Enjoy your copyright protection

    LOL – Malcolm returns yet again to butcher the difference in copyright and patent law.


  10. 15

    For a continuation, the possibilites (and all proper equivalencies under the doctrine of equivalents) are a closed universe based on the parent application.

    Advise accordingly.

    No more (nor less) difficult than any other situation – and “gist” and “heart of the invention” is not even necessary.

  11. 14

    would your attitude about displays change if the patent covered a display of threats, and the patent called for adjusting the font, the color, the brightness and/or whether the threat display would flash depending on the degree of threat?

    You’ve managed to come up something that is perhaps even more obvious than the invention claimed here. Also, “degree of threat” is abstract nonsense. You mean the “likelihood of something occurring”? That’s just math. Dressing it up with an old computer and monitor should make no differnce from the perspective of patent law. You got some really nifty software that calculates a “degree of threat” and shows it in a nifty display? That’s great. Enjoy your copyright protection. Market away! Go after the copiers with the DMCA. Nothing else is needed.

    If someone wants to write their own software on their own computer to perform the same function, they should have every right to do that and every right to market their own version (or not — they could just use existing tools to market the patent ineligible information that is spewed out in whatever form or manner is suitable; that’s really all that anyone cares about anyway — the information).

    I also don’t feel differently about a monitor that displays [insert your favorite US President]’s head with a fish swimming around it so it looks like the head is severed and floating in a tank of fish. That awesome “invention” allows people to “expres themselves creatively”, just like an orange g-rbage bag with a pumpkin on it. But it shouldn’t be protectable as a utility patent.

  12. 13

    Can I get a utility patent on an old control panel (e.g., a control panel with a big knob with the numbers 1-10 on it) merely by describing a new function for the old control panel?

    Of course not, because describing the new function turns the “old control panel” into a whole new control panel, just as sure as it would be patentable to have the knob go up to 11. Sorry, “configured to” go up to 11.

  13. 12

    From the Summary:

    the present invention is directed to a graphical user interface for displaying the market depth of a commodity traded in a market, including a dynamic display for a plurality of bids and for a plurality of asks in the market for the commodity and a static display of prices corresponding to the plurality of bids and asks. In this embodiment the pluralities of bids and asks are dynamically displayed in alignment with the prices corresponding thereto.

    Graphic user interfaces are old. Displaying information in a more readable way is well-known to increase the speed at which a human can process the displayed information, including information about prices. What’s new and non-obvious about this “invention”, other than the content of the patent-ineligible information being displayed?

    Can I get a utility patent on an old control panel (e.g., a control panel with a big knob with the numbers 1-10 on it) merely by describing a new function for the old control panel? Do I need to put a new non-obvious label above the knob? Or can I just describe the function of the knob?

  14. 11

    MM, would your attitude about displays change if the patent covered a display of threats, and the patent called for adjusting the font, the color, the brightness and/or whether the threat display would flash depending on the degree of threat?

  15. 10

    anon, I see.

    The patent discloses an invention where a knife blade is made out of a new alloy.

    The claims issue, but they all include that the knives have handles and the handles are made of wood.

    You know a continuation is pending.

    Your client comes to you and asks whether he can safely make a knife with the new allow, but with a handle made of a ceramic.

    Your advice?

  16. 9

    Paul, yes.

    I have been on both sides of this “problem.”

    In one case, we modified our design to avoid the claims of a patent. Good practice. But there was a continuation pending (back when they were secret.) When that issued, our design-around was now infringing.

    On the flip, at times, one begins to appreciate what the invention really is over time as companies alter their designs to avoid literal infringement but still take the heart of the invention. We fix that in continuation by removing the offending limitation, as was the case here.

    As to what is fair or unfair in this, we might consider a doctrine of equivalents that would allow us to focus on the heart of the invention. This improved doctrine allow infringement even when some elements are not present, so long as they truly are insignificant and are not required to distinguish the prior art.

    Regardless of whether the courts go this direction or not, continuation practice permits it in reality. Counsel advising their clients to design-around need to consider the heart of the invention and avoid that.

  17. 8

    display of market price information.

    Because “market price information” is so tricky to display. Computers really struggle with that kind of price information. Non-market price information on the other hand — that’s pretty simple. Of course, centering it in a display is a huge problem. Also, strangely enough, computers seem to prefer the information to be presented in blue or purple colors. They can do red, sometimes, but pink is really difficult. Also, if the market price information is next to information about historical Greek tourist sites, most computers will simply refuse to display the information unless they are horse-whipped.

  18. 7

    CAFC: the patents referred to one-click centering as part of the invention and did not discuss automatic re-centering

    Oh my, what a huge distinction. You can either tell the computer to wait for your signal before processing the data, or you can tell the computer to process the data automatically (unless instructed otherwise). Really deep stuff there. Where would we be without this progress?

  19. 6

    claims of the ‘132 patent that required a graphical user interface having a “static” display of market price information.

    J*nk of the lowest order. What a waste of everybody’s time.

  20. 5

    While I am one to echo a culling of judicial patent law writing, and “gist” or “heart of the invention” cannot (and should not) be found in our current patent law (as written by Congress), written description is statutory.

  21. 4

    It is a long opinion because written description is a pernicious doctrine. You can see it’s application logic right here: I find your invention is x – written description from the spec – and i can’t find x in the claims (as I construe them AML) ergo – claims invalid for lack of written description. IMHO, written description is a boot strap way of recreating the ‘gist or heart’ of the invention doctrine – a line of legal reasoning that was abolished by statute. So CAFC needs to be long winded to keep written description alive – but keep it from being consumed by Markman/claim construction. Almost no patent claim could survive the ipse dixit that underpins written description.

    Furthermore, written description found its original rational in an attempt to deal with so called ‘late claiming’ and submarine patents. Another issue that was specifically addressed by the statutory change to the patent term.

    You almost always end up in a situation you can’t ‘prove’ written description support – under a court’s claim construction. Here again the sloppiness of the doctrine results in improper burden shifting.

  22. 3

    Perhaps because keeping continuations or divisonals pending to cure claim limitations found in a suit on the parent patent has become SOP patent trial practice that some defendants who thought they had won don’t seen to appreciate or even get caught by surpirse by?

    BTW, isn’t this the kind of claimed subject matter the AIA Covered Business Method PGR is intended to provide a faster and simpler PTO Board invalidity trial for?

  23. 2

    That first paragraph made my head explode. You’ll receive the cleaning bill in the mail.

  24. 1

    I don’t understand why this had to be such a long opinion (yes, I read it). It seems to me that the ruling from the earlier case just didn’t stand for what the DCT said it did. This should have been a simple, nonprec reversal.

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