Friday, February 26, 2010

Trading Technologies v. eSpeed addresses many issues

A business method patent survived in the case Trading Technologies v. eSpeed .

A relevant claim:

Claim 1 of the ’132 patent:

A method of placing a trade order for a commodity on an electronic
exchange having an inside market with a highest bid price and a lowest
ask price, using a graphical user interface and a user input device, said
method comprising:
setting a preset parameter for the trade order;
displaying market depth of the commodity, through a dynamic
display of a plurality of bids and a plurality of asks in the
market for the commodity, including at least a portion of the
bid and ask quantities of the commodity, the dynamic display
being aligned with a static display of prices corresponding
thereto, wherein the static display of prices does not move in
response to a change in the inside market;
displaying an order entry region aligned with the static display
prices comprising a plurality of areas for receiving
commands from the user input devices to send trade orders,
each area corresponding to a price of the static display of
prices; and
selecting a particular area in the order entry region through single
action of the user input device with a pointer of the user input
device positioned over the particular area to set a plurality of
additional parameters for the trade order and send the trade
order to the electronic exchange.

This case has much to say about claim construction. For the moment,
consider some of the other issues.

The defendant eSpeed argued, as one issue, that the
patents-in-suit do not deserve priority back to March 2, 2000—
the filing date of the provisional application.

Of this matter, the CAFC wrote:

Claims enjoy the earlier filing date only if the provisional application provided
adequate written description under 35 U.S.C. § 112, ¶ 1. New Railhead Mfg. v.
Vermeer Mfg., 298 F.3d 1290, 1294 (Fed. Cir. 2002). The “prior application itself must
describe an invention . . . in sufficient detail that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing date sought.”
Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997). Therefore, the
provisional application must describe the invention in such a way that one of ordinary
skill in the art “would understand that the genus that is being claimed has been
invented, not just the species of a genus.” Carnegie Mellon Univ. v. Hoffman-La Roche,
Inc., 541 F.3d 1115, 1124 (Fed. Cir. 2008).


Turning to the merits, the record shows substantial evidence to support the jury’s
verdict that the provisional application’s written description was adequate. TT’s expert,
Craig Pirrong explained that the provisional application distinguished between order
entries performed in a single action and multiple-step actions. He did not distinguish a
single-click from other types of single actions. Therefore, one of ordinary skill in the art
could read the provisional application to encompass any single actions.

Moreover, the parties’ experts did not dispute that one of ordinary skill in the art
would have known about other forms of “single action” such as a double-click or
pressing a key. Considering the undisputed knowledge of those skilled in the art,
disclosure of a species in this case provides sufficient written description support for a
later filed claim directed to a very similar and understandable genus.
Accordingly, the
patents-in-suit are entitled to claim priority to the provisional application.

Of an on-sale bar:

This court affirms the district court’s de facto summary judgment that ICA2 was
not a sales transaction for a product embodying the patented invention. Under ICA2,
TT promised to develop trading software for Brumfield because he lacked the technical
expertise to do so. ICA2 was a contract for providing hourly programming services to
Brumfield—not a computer software license. Brumfield did not sell or offer for sale
anything embodying the invention. Therefore, the trial court properly determined that
the invention had not been offered for a commercial sale.

eSpeed’s reliance on Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 182 F.3d
888 (Fed. Cir. 1999), to characterize ICA2 as a commercial software license is
misplaced. In Brasseler, the buyer and the seller of the contract each employed some
inventors of the patented invention. Id. at 890. This court found a commercial sale
because the seller manufactured over 3,000 products embodying the invention and sold
it solely to the buyer. Id. at 890. Thus, the transaction in this 1999 Federal Circuit case
is far more than occurred here. No product was ever sold to Brumfield. Also, this court
in Brasseler in dicta suggested that the outcome would be different in “a case in which
an individual inventor takes a design to a fabricator and pays the fabricator for its
services in fabricating a few sample products.” Id. at 891. Inventors can request
another entity’s services in developing products embodying the invention without
triggering the on-sale bar. Brumfield’s request to TT to make software for his own
secret, personal use could not constitute a sale under 35 U.S.C. § 102(b).

Of interest is the text: These references in the Supreme Court opinion
leaves this court stranded between the language in the Court’s decision
and the language in this court’s Cybor decision.

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