CAFC in Trading Technologies: no infringement if the product continued to present the problem of the prior art

From Trading Technologies v. Sungard :


SunGard and FuturePath respond that eSpeed controls
because we explained in that case that the “static”
limitation “specifically excludes automatic re-centering.”
Appellees’ Br. 46 (quoting eSpeed, 595 F.3d at 1356).

Moreover, Sungard and FuturePath argue that the accused
products do not provide the benefit of the claimed
invention because users could still click to buy a commodity
at the exact instant that prices change. Id. at 49–51.

We agree with SunGard and FuturePath that the
holding in eSpeed controls this case, and that the accused
products do not utilize the benefit of the claimed invention.
In eSpeed, we rejected the argument that a product
which only occasionally recentered automatically could
still infringe under the doctrine of equivalents where the
product continued to present the problem of the prior art.
eSpeed, 595 F.3d at 1356. The accused products here
recenter automatically, and the products provide no way
for the user to know whether recentering will occur.
Accordingly, the accused products fall squarely within the
eSpeed holding, and the district court did not err in granting
summary judgment. No material facts are in dispute,
and the district court made no error of law.




link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1767.Opinion.3-31-2016.1.PDF