Previous Claim Construction Decision Does Not Control Written Description Inquiry

In Trading Technologies International, Inc. v. Open E Cry, LLC, No. 12-1583 (Fed. Cir. Aug. 30, 2013), the Federal Circuit reversed entry of SJ that (1) the asserted claims of Trading Technologies International, Inc.'s ("TT") U.S. Patent Nos. 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 (2) prosecution history estoppel bars TT from asserting the '055 patent against software products. The district court premised both holdings on deference to the Federal Circuit's 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. Here, because the Federal Circuit concluded that eSpeed does not control, the Court reversed and remanded for further proceedings.

TT owns a number of related patents generally directed to software used for electronic trading on a commodities exchange, including the '411, '768, '374, and '055 patents. Those four patents are continuations of and claim priority from U.S. Patent No. 6,772,132 ("the '132 patent"). Accordingly, the '411, '768, and '374 patents share a common written description matching that of the '132 patent in all material respects. In contrast, the '055 patent traces its priority from the '132 patent as a continuation-in-part and contains new matter relative to the original written description of the '132 patent.

In eSpeed, the Federal Circuit considered, inter alia, the correct construction of certain claim terms used in the '132 patent and in another of its descendants, U.S. Patent No. 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. In eSpeed, each of the asserted claims required a graphical user interface having a "static" display of market price information. The district court had construed that term to require "a display of prices comprising price levels that do not change positions unless a manual re-centering command is received," and the Federal Circuit adopted that construction on appeal. Slip op. at 7-8 (quoting eSpeed, 595 F.3d at 1352).

While the written descriptions of the '411, '768, and '374 patents match those of the earlier '132 and '304 patents, the '411, '768, and '374 patents claim trading methods and...