Trading Tech. v. Open E: How Much Deference to Jurisprudence involving Parent Patents?

Category: Civil Procedure
 Goose Family
By: Jesus Hernandez, Blog Editor/Contributor  
TitleTrading Tech. Int'l, Inc. v. Open E Cry, LLC, No. 2012-1583 (August 30, 2013).
Issue(s)[1-2] "[W]hether the claims of the ’411 patent[, a continuation, and the '055 patent, a CIP,] satisfied the written description requirement of 35 U.S.C. § 112(a) in light of eSpeed [a previous case involving parent patents] [...]” Trading Tech. Int'l, Inc., at *12 (text added).
[3] "[W]hether prosecution history estoppel [and/or disclaimer in a parent patent of a CIP at issue] barred TT from asserting infringement under the doctrine of equivalents as to products with price columns that move automatically.” Id. at *12 (text added).
Holding(s)[1] “The ’411, ’768, and ’374 patents all rely on the same underlying disclosure as the ’132 and ’304 patents discussed in eSpeed. But the claims of the patents now before us are different, as are the issues at play, and eSpeed’s ruling on claim construction does not govern the written description inquiry in this case. “ Trading Tech. Int'l, Inc., at *17.
[2] “[T]he ’055 patent differs fundamentally from those at issue in eSpeed, and its unique written description was never considered in that case. […] We therefore conclude that TT is entitled to summary judgment that the claims of the ’055 patent have not been proven invalid by clear and convincing evidence for lack of adequate written description.” Id. at *20-21.
[3] “[T]he intrinsic record specific to the ’055 patent distinguishes eSpeed […]. The ’055 patent, as a continuation-in-part of the ’132 patent, includes extensive disclosures that were not present in the ’132 or ’304 patents, and those subsequent disclosures directly contradict the prosecution-based surrenders of claim scope discussed in eSpeed.” Id. at *24-25.

Procedural History“In this patent infringement action, Plaintiff-Appellant Trading Technologies International, Inc. (“TT”) appeals from the district court’s entry of summary judgment that (i) the asserted claims of TT’s U.S. Patents 7,676,411 (the “’411 patent”), 7,693,768 (the “’768 patent”), 7,904,374 (the “’374 patent”), and 7,685,055 (the “’055 patent”) are invalid for failure to comply with the written description requirement of 35 U.S.C. § 112; and (ii) prosecution history estoppel bars TT from asserting the ’055 patent against software products that include certain display functions. The district court premised both holdings on deference to our prior decision in Trading Technologies International, Inc. v. eSpeed, Inc., 595 F.3d 1340 (Fed. Cir. 2010) (“eSpeed”), which considered two related patents from TT’s portfolio.” Trading Tech. Int'l, Inc., at *4.
Legal Reasoning (Lourie, Plager, Benson)
Brief Discussion of eSpeed
Relationship of Patents“In eSpeed, we considered, inter alia, the correct construction of certain claim terms used in the ’132 patent and in another of its many descendants, U.S. Patent 6,766,304 (the “’304 patent”). The ’304 patent, like the ’411, ’768, and ’374 patents, shares the written description of the parent ’132 patent.” Trading Tech. Int'l, Inc., at *7.
Surrendering Scope“[During prosecution of the application] the examiner had first considered the term “static display” to be indefinite, but the applicants responded by explaining that the values in the price column would not change absent a recentering command, and the claims were then allowed on that basis." Id. at 8-9 (text added).
[1] Effect of eSpeed on the ’411, ’768, and ’374 Patents' Written Description Requirement
Reclaiming Scope in Child Applications via Claim Amendment“With the applications for the ’411, ’768, and ’374 patents—three parallel continuations that relied on the original written description of the ’132 patent—TT sought claims that removed the term “static” from references to the price column. For example, following the district court’s adverse claim construction determinations in the eSpeed litigation,3 TT amended the application for the ’411 patent.” Trading Tech. Int'l, Inc., at *9-10.
Claim Language in the '411 Patent Determines Reliance on Past Findings“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. […] 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. […] 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.” Trading Tech. Int'l, Inc., at *18-19.
“[W]e express no opinion as to whether or not the claims of the ’411, ’768, and ’374 patents now before us satisfy the written description requirement. We leave that determination for the district court to make in the first instance based on its own review of the disclosures underlying those particular claims. We hold only that eSpeed did not settle the issue, and we therefore reverse the district court’s entry of summary judgment of invalidity and remand for further proceedings on the merits under § 112.” Trading Tech. Int'l, Inc., at *19.
[2] Effect of eSpeed on the ’055 Patent's Written Description Requirement
Reclaiming Scope in Child Applications via CIP“TT pursued a different strategy with the application for the ’055 patent. That application claimed priority from the ’132 patent as a continuation-in-part, which allowed TT to add new disclosures to the parent’s written description. In part, those additional disclosures were aimed at redefining the term “static” as used in the ’055 patent: […] It is to be understood that, in this context, static does not mean immovable, but rather means fixed in relation. For example, with a static price scale, the scale itself may be movable, but the prices represented remain fixed in relation to each other …” Trading Tech. Int'l, Inc., at *10-11.
The '055 Patent Was Specifically Drafted to Have Adequate Written Description"In contrast to the ’411, ’768, and ’374 patents, the ’055 patent was filed as a continuation-in-part application, which allowed TT to disclose and claim additional subject matter in the ’055 patent. […] [T]he supplemental disclosures in the ’055 patent are extensive —the ’055 patent’s written description spans thirty- four printed columns, compared to just eleven in the ’132 patent—and directly relevant to the written description question presented here. For example, the new matter added to the ’055 patent includes express descriptions of “static” price axes that can automatically re-center based on predefined criteria […] Given such unambiguous support for claims requiring “automatic[] repositioning the static price axis,” it cannot be said that the ’055 patent’s written description does not “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” of the ’055 patent." Id.at *20-21.
[3] Prosecution History of Parent Patent with regards to the '055 Patent
Legal Standard“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 general, the prosecution history regarding a particular limitation in one patent is presumed to inform the later use of that same limitation in related patents, “unless otherwise compelled.” Omega Eng’g, 334 F.3d at 1334.” Trading Tech. Int'l, Inc., at *24.
Prosecution History of Parent Patent Not Probative if Child Patent has different Disclosure/Claim Language as to relevant Issue“While it retains the “static price axis” claim language of its predecessors, the ’055 patent thus differs from the ’132 and ’304 patents in both its claims and its relevant supporting disclosures on the issue of automatic re-centering. Those differences render eSpeed’s earlier prosecution-based restrictions inapplicable to the ’055 patent. […] “When the purported disclaimers are directed to specific claim terms that have been omitted or materially altered in subsequent applications . . . those disclaimers do not apply.” Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed. Cir. 2007). Accordingly, the claims of the ’055 patent, unlike those of the related ’132 and ’304 patents, need not be limited to displays with price axes capable only of manual re-centering, whether by prosecution disclaimer or prosecution history estoppel.” Trading Tech. Int'l, Inc., at *25.
“[W]e conclude that eSpeed does not govern the issues of written description or prosecution history estoppel raised in this appeal. We reverse and remand for further proceedings consistent with this opinion.” Trading Tech. Int'l, Inc., at *25-26.
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