     United States Court of Appeals for the Federal Circuit
                                     2008-1392, -1393, -1422

                      TRADING TECHNOLOGIES INTERNATIONAL, INC.,

                                                        Plaintiff-Appellant,

                                                 v.

                             ESPEED, INC., ECCO LLC,
                   ECCOWARE LTD., and ESPEED INTERNATIONAL, LTD.,

                                                        Defendants-Cross Appellants.


         Steven F. Borsand, Trading Technologies International, Inc., of Chicago, Illinois, argued
for plaintiff-appellant. Of counsel on the brief were Paul H. Berghoff, Leif R. Sigmond, Jr.,
Matthew J. Sampson, Michael D. Gannon, S. Richard Carden, Jennifer M.Kurcz and Paul A.
Kafadar, McDonnell Boehnen Hulbert & Berghoff LLP, of Chicago,
Illinois. Of counsel was George I. Lee.

      Gary A. Rosen, Law Offices of Gary A. Rosen, P.C., of Philadelphia, Pennsylvania,
argued for defendants-cross appellants. Of counsel on the brief were George C. Lombardi,
Raymond C. Perkins and James M. Hilmert, Winston & Strawn, LLP, of Chicago, Illinois. Of
counsel were Ivan M. Poullaos, of Chicago, Illinois and John K. Hsu, of Washington, DC.

      Lora A. Moffatt, Salans LLP, of New York, New York, for amici curiae GL Trade SA, et al.
With her on the brief was Walter Scott, Alston & Bird LLP, of New York, New York.

Appealed from: United States District Court for the Northern District of Illinois

Senior Judge James B. Moran
    United States Court of Appeals for the Federal Circuit

                                 2008-1392, -1393, -1422

                  TRADING TECHNOLOGIES INTERNATIONAL, INC.,

                                                         Plaintiff-Appellant,

                                             v.

                            ESPEED, INC.,
        ECCO LLC, ECCOWARE LTD., and ESPEED INTERNATIONAL, LTD.,

                                                         Defendants-Cross Appellants.


Appeals from the United States District Court for the Northern District of Illinois
in case no. 04-CV-5312, Senior Judge James B. Moran.

                            ___________________________

                             DECIDED: February 25, 2010
                            ___________________________


Before LOURIE, RADER, Circuit Judges, and CLARK, District Judge. 1

Opinion for the court filed by Circuit Judge RADER, in which District Judge CLARK
joins. Circuit Judge LOURIE concurs in the result. Concurring opinion filed by District
Judge CLARK.

RADER, Circuit Judge.

       The United States District Court for the Northern District of Illinois held that

eSpeed, Inc., Ecco LLC, Eccoware Ltd., and eSpeed International Ltd. (collectively,

“eSpeed”) infringed the asserted claims of U.S. Patent No. 6,772,132 (“’132 patent”)

and U.S. Patent No. 6,766,304 (“’304 patent”) with one accused service product, but not


1
        Honorable Ron Clark, District Judge, United States District Court for the Eastern
District of Texas, sitting by designation.
willfully. The district court further held that the two other accused products did not

literally infringe and then precluded Trading Technologies International, Inc. (“TT”) from

asserting infringement under the doctrine of equivalents. After giving the patents-in-suit

a filing date back to the provisional application, the district court found that the on-sale

bar of 35 U.S.C. § 102(b) did not apply. The district court also found no indefiniteness

problem in the asserted claims.         Finally the district court detected no inequitable

conduct during the prosecution of the patents-in-suit. Because this record discloses no

reversible error, this court affirms.

                                              I.

       TT is the owner by assignment of the ’132 and ’304 patents. Both patents share

a common provisional application filed on March 2, 2000. The United States Patent and

Trademark Office (“PTO”) issued the ’132 patent on August 3, 2004, based on a June 9,

2000 application. The PTO issued the ’304 patent on July 20, 2004, based on a June

27, 2001 application.      The ’304 patent is a divisional of the ’132 patent.         The

specifications of the patents are, for all relevant purposes, identical.

       The patents claim software for displaying the market for a commodity traded in

an electronic exchange.       ’132 patent col.3 ll.11-16.    The software’s graphical user

interface (“GUI”) includes “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.” Id. The claimed invention facilitates more accurate and

efficient orders in this trading environment. Id. col.3 ll.21-24.

       Prior art computer trading displays showed the best bid price and the best ask

price (together, “the inside market”) in fixed, predetermined grids. The best bid price is




2008-1392, -1393, -1422                       2
the highest price at which there is an offer to buy the contract. The best ask price is the

lowest price at which there is an offer to sell the contract. The inside market is the focal

point of trading activity because these offers most accurately reflect the current price of

the commodity.

       Returning to the prior art, these displays had grids for the inside market that

never changed. As the market fluctuated, however, the prices listed in those grids

changed—often times very rapidly. To buy at the inside market, a trader, for example,

placed the mouse cursor on the grids for the inside market and clicked the mouse. Of

course, as traders sent bids and offers to the market, the price and quantity of the

traded commodity changed. These changes altered the inside market. In the prior art

era with fixed grids for the inside market, traders had a problem. A trader who wished

to place an order at a particular price would miss that market opportunity if the inside

market moved as the trader tried to enter an order. In a fast moving market, missing an

intended price could happen often and have very significant economic consequences.

       The invention addressed the problem by implementing static price levels.

Figures 3 and 4 of the ’132 patent illustrate the invention.




2008-1392, -1393, -1422                      3
’132 patent, figs.3, 4. The figures display the bids and offers for a certain commodity in

an electronic exchange. Column 1005 labeled “Prc” shows the contract prices. Id. col.7

ll.36-38. Column 1003 labeled “BidQ” and column 1004 labeled “AskQ” respectively

show the bid quantities and the ask quantities for the associated price. Id. col.7 ll.35-36.

In Figure 3, the inside market labeled 1020 indicates the best bid price of 89 and the

best ask price of 90.   Id. col.7 ll.40-42. A trader may enter an order by clicking in the

bid or ask grid corresponding to the trader’s price. Id. col.4 ll.9-19.

       Figure 4 displays the same market at a later time. The bid and ask quantities

dynamically change in response to market fluctuations. Id. col.7 ll.48-51. In Figure 4,

the inside market has shifted upward such that the best bid price is now 92 and the best

ask price is 93. Id. col.8 ll.38-48. While the inside market has changed, the values in


2008-1392, -1393, -1422                       4
the price column remained fixed. Id. col.8 ll.44-48. Over time, the inside market could

shift to prices not currently displayed on the trader’s screen. Id. col. 8 ll.49-51. In this

case, the price column must be re-centered to keep the inside market in view. Id. col.8

ll.49-60.

       The claimed invention features static price levels. These unmoving figures have

numerous advantages over the prior art. First, a trader can visually follow the market

movement as the inside market shifts up and down along the price column. Id. col.5

ll.58-65.   Second, and perhaps most important, a trader has confidence in making an

offer at the intended price. Id. col.3 ll.3-4. Because the invention has static price levels,

the order entry region will remain associated with the same price. Therefore, the trader

does not need to worry about “clicking on” or entering an order at the instant after a

price change. Thus, the invention prevents accidental orders at an unintended price.

The patents tout that these improvements ensure fast and accurate execution of trades.

Id. col.3 ll.21-24.

       eSpeed, Inc. provides an electronic exchange for trading commodities. It also

designs and sells trading platforms for use with its electronic exchange. On August 12,

2004, TT initiated this suit against eSpeed, Inc., alleging that eSpeed, Inc.’s trading

platforms infringed TT’s patents. After eSpeed, Inc. acquired Ecco LLC in October

2004, TT joined Ecco LLC in the suit. In December 2005, TT amended its complaint to

join the subsidiaries eSpeed International, Inc. and EccoWare Ltd. This opinion refers

to all defendants collectively as “eSpeed.”      TT asserts the following claims against

eSpeed: claims 1, 2, 7, 14, 15, 20, 23-25, 27, 28, 40, 45, 47, 48, 50, and 52 of the ’132




2008-1392, -1393, -1422                      5
patent; and claims 1, 11, 14, 15, and 26 of the ’304 patent.              Claim 1 is the

representative claim for both patents.

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.

’132 patent col.12 ll.1-27 (emphases added).

Claim 1 of the ’304 patent:

      A method for displaying market information relating to and facilitating
      trading of a commodity being traded in an electronic exchange having an
      inside market with a highest bid price and a lowest ask price on a
      graphical user interface, the method comprising:
             dynamically displaying a first indicator in one of a plurality of
                    locations in a bid display region, each location in the bid
                    display region corresponding to a price level along a
                    common static price axis, the first indicator representing
                    quantity associated with at least one order to buy the
                    commodity at the highest bid price currently available in the
                    market;
             dynamically displaying a second indicator in one of a plurality of
                    locations in an ask display region, each location in the ask



2008-1392, -1393, -1422                     6
                    display region corresponding to a price level along the
                    common static price axis, the second indicator representing
                    quantity associated with at least one order to sell the
                    commodity at the lowest ask price currently available in the
                    market;
             displaying the bid and ask display regions in relation to fixed price
                    levels positioned along the common static price axis such
                    that when the inside market changes, the price levels along
                    the common static price axis do not move and at least one of
                    the first and second indicators moves in the bid or ask
                    display regions relative to the common static price axis;
             displaying an order entry region comprising a plurality of locations
                    for receiving commands to send trade orders, each location
                    corresponding to a price level along the common static price
                    axis; and
             in response to a selection of a particular location of the order entry
                    region by a single action of a user input device, setting a
                    plurality of parameters for a trade order relating to the
                    commodity and sending the trade order to the electronic
                    exchange.

’304 patent col.12 ll.35-col.13 ll.3 (emphases added).

      TT accuses the following categories of eSpeed software of infringement: (1)

Futures View, Autospeed Basis, and Price Ladder (collectively, “Futures View”); (2)

Dual Dynamic and Ecco Scalper (“Dual Dynamic”); and (3) eSpeedometer and Ecco

eSpeedometer (“eSpeedometer”). These accused products are identical in all relevant

aspects. eSpeed concedes that Futures View satisfies all claim limitations. The parties

dispute whether Dual Dynamic and eSpeedometer have a “static display of prices” or

“static price axis.” This dispute turns on the way that the accused products re-center

the price levels when the inside market moves away from the center of the display.

      eSpeed sold Futures View before the patents-in-suit issued. Dual Dynamics is a

redesign of Futures View. Dual Dynamic has two re-centering features. First, a trader

can click a mouse to manually re-center the price levels.        Second, Dual Dynamic

automatically and instantaneously re-centers the price levels so as to move the inside



2008-1392, -1393, -1422                     7
market back to the field of the trader’s view if the inside market shifted a pre-determined

number of ticks from the center of the display. Traders could not disable this automatic

re-centering feature.     eSpeedometer is the second redesign of Futures View.

eSpeedometer has an automatic re-centering feature only. Unlike Dual Dynamic, the

entire display slowly drifts towards the center of the trader’s screen after each and every

change in the inside market.

       eSpeed manufactured and sold the accused products at different times during

the suit. eSpeed began selling Futures View long before TT’s patents-in-suit issued in

August 2004.     Just before the hearing for a preliminary injunction in this case in

December 2004, eSpeed pulled Futures View off the market and replaced it with Dual

Dynamic. After the district court found that Dual Dynamic likely infringed the patents-in-

suit, eSpeed launched eSpeedometer.

       In this case, the district court entered numerous orders on claim construction,

motions for summary judgment, motions in limine, and motions for a judgment as a

matter of law (“JMOL”). After holding a three-day claim construction hearing, the district

court issued a claim construction order. Of particular importance to this appeal, the

district court construed the word “static” in the limitation “static display of prices” in the

’132 patent and in the limitation “common static price axis” in the ’304 patent. Based on

the claim construction, eSpeed moved for summary judgment of non-infringement for

Dual Dynamic and eSpeedometer.

       The district court found that neither product literally infringed. The district court

also found that Dual Dynamic did not infringe under the doctrine of equivalents because

finding otherwise would vitiate the claim element “static.” The district court held that




2008-1392, -1393, -1422                       8
prosecution history estoppel precluded application of the doctrine of equivalents as to

eSpeedometer.      Therefore, the district court granted summary judgment of non-

infringement as to both the Dual Dynamic and eSpeedometer redesigns.

        In September and October 2007, the district court held a four-week jury trial.

During the trial, the district court granted TT’s motion in limine to preclude eSpeed from

asserting an on-sale bar defense at trial. The district court also granted-in-part TT’s

motion in limine to preclude expert testimony that the construction of “single action of a

user input device” was indefinite. On October 10, 2007, the jury found that Futures

View willfully infringed the patents-in-suit. The jury also awarded the patents-in-suit the

benefit of their provisional application’s filing date.   Based on that finding, the jury

determined that the prior art did not anticipate or render obvious the claimed invention.

The jury awarded TT $3,500,000 in damages based on a reasonable royalty.

        After the jury trial, the district court held a two-day bench trial on inequitable

conduct. Based on that record, the trial court ruled that eSpeed did not show that TT

engaged in inequitable conduct. The district court also denied eSpeed’s JMOL motions

on validity, indefiniteness, priority date, and the patent misuse defense, but vacated the

jury’s finding of willful infringement and remitted the damages award to $2,539,468.

The district court further denied TT’s motions for enhanced damages and for attorney

fees.

        The district court entered its final judgment on May 22, 2008. Both eSpeed and

TT appealed to this court on May 27, 2008. The judgment on which TT based its

appeal was not final at that time. The district court then re-entered its final judgment

nunc pro tunc on June 13, 2008. Because this court ruled that appellate jurisdiction




2008-1392, -1393, -1422                      9
ripened upon the entry of the judgment nunc pro tunc, it has jurisdiction under 28 U.S.C.

§ 1295(a).

                                           II.

       Both TT and eSpeed raise numerous issues on appeal. TT’s appeal focuses on

patent infringement. First, TT appeals the claim construction of “common static price

axis” and “a static display of price.”   Second, TT argues that Dual Dynamic and

eSpeedometer infringe the patents-in-suit based on TT’s proposed claim construction.

Third, TT asserts that a finding that Dual Dynamic infringes under the doctrine of

equivalents would not vitiate the claim element “static.”      Fourth, TT argues that

prosecution history estoppel does not preclude showing that eSpeedometer infringes

under the doctrine of equivalents. Finally, TT claims that the district court incorrectly

granted eSpeed’s JMOL motion on willful infringement.

       eSpeed’s cross-appeal focuses on patent validity. First, eSpeed argues that the

patents-in-suit do not deserve priority back to March 2, 2000—the filing date of the

provisional application.   Second, eSpeed claims that the patents-in-suit are invalid

under the on-sale bar because Harris Brumfield, one of the inventors of the patents-in-

suit, entered into a sales contract with TT more than one year before March 2, 2000.

Third, eSpeed argues that the term “single action of a user input device” is indefinite.

Finally, eSpeed claims that TT engaged in inequitable conduct by failing to submit

Brumfield’s custom software embodying the patented invention to the PTO during the

prosecution of the patents-in-suit.




2008-1392, -1393, -1422                    10
                                            III.

                                            A.

       The district court granted summary judgment of non-infringement for the Dual

Dynamic and eSpeedometer products. This court reviews a grant of summary judgment

without deference. O2 Micro Int’l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1359

(Fed. Cir. 2006). Evaluation of summary judgment of non-infringement requires two

steps—proper claim construction and comparison of those claims to the accused

product. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009). Because

the parties dispute the meaning of terms in the asserted claims, this court reviews the

district court’s claim construction order under the requirements of Markman v. Westview

Instruments, Inc., 517 U.S. 370 (1996).

       The Supreme Court in Markman held that “the construction of a patent, including

terms of art within its claim, is exclusively within the province of the court.” Id. at 372.

The Supreme Court recognized that claim construction “falls somewhere between a

pristine legal standard and a simple historical fact.” Id. at 388 (quoting Miller v. Fenton,

474 U.S. 104, 114 (1985)). Although claim construction is not a purely legal matter, the

Supreme Court found “sufficient reason to treat construction of terms of art like many

other responsibilities that we cede to a judge in the normal course of trial,

notwithstanding its evidentiary underpinnings.” Id. at 390.

       Nevertheless, in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir.

1998) (en banc), this court interpreted Markman as holding that claim construction was

solely a question of law, which this court should review without deference. Id. at 1451.

The question presented before the Supreme Court was “whether the interpretation of a




2008-1392, -1393, -1422                     11
so-called patent claim . . . is a matter of law reserved entirely for the court, or subject to

a Seventh Amendment guarantee that a jury will determine the meaning of any disputed

term of an art about which expert testimony is offered.” Markman, 517 U.S. at 372.

Although the Supreme Court addressed only the role of the trial court in claim

construction, this court understood that “the Supreme Court was addressing under

which category, fact or law, claim construction should fall.” Cybor, 138 F.3d at 1455.

This court concluded that “[n]othing in the Supreme Court’s opinion supports the view

that the Court endorsed a silent, third option—that claim construction may involve

subsidiary or underlying questions of fact.” Id.

       An examination of the Supreme Court’s ruling in Markman shows multiple

references to factual components of claim construction:

            •   “[C]onstruing a term of art following receipt of evidence” is “a
                mongrel practice.” Id. at 378.
            •   Claim construction “falls somewhere between a pristine legal
                standard and a simple historical fact.” Id. at 388.
            •   “We accordingly think there is sufficient reason to treat construction
                of terms of art like many other responsibilities that we cede to a
                judge in the normal course of trial, notwithstanding its evidentiary
                underpinnings.” Id. at 390.

       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.

       In order to resolve this case, this court must confront findings by the trial court

about the meaning of the disputed claim term “static.” In reaching the meaning of that

term, the trial court explored and made findings about the technical background of the

invention—the inventive features and the timing of those features against the backdrop

of the prior art. In addition, the district court determined the meaning that an artisan of


2008-1392, -1393, -1422                       12
ordinary skill in this discipline would assign the term “static.” The trial court also made

findings about the understanding of such an ordinary artisan about the metes and

bounds of the asserted claims.        In still another factual setting, the district court

determined the way that the ordinary artisan would interpret the patent applicant’s

statements made to the PTO examiner during the prosecution of the patents-in-suit.

These factual determinations about the timing and nature of the history of the patent

acquisition process also informed the trial court’s claim construction. In sum, claim

construction involves many technical, scientific, and timing issues that require full

examination of the evidence and factual resolution of any disputes before setting the

meaning of the disputed terms.

      Of course, as the Supreme Court repeatedly clarified in Markman, the trial court

occupies the best vantage point and possesses the best tools to resolve those

evidentiary questions:

          •   “[A] jury’s capabilities to evaluate demeanor to sense the
              mainsprings of human conduct or to reflect community standards
              are much less significant than a trained ability to evaluate the
              testimony in relation to the overall structure of the patent.” Id. at
              389-90 (citations and internal quotation marks omitted).
          •   “The decisionmaker vested with the task of construing the patent is
              in the better position to ascertain whether an expert’s proposed
              definition fully comports with the specification and claims and so will
              preserve the patent’s internal coherence.” Id. at 390.

      Despite the Supreme Court’s emphasis on the trial court’s central role for claim

construction, including the evaluation of expert testimony, this court may not give any

deference to the trial court’s factual decisions underlying its claim construction. This

court’s prior en banc decision requires a review of the district court’s claim construction

without the slightest iota of deference. See Cybor, 138 F.3d at 1451.




2008-1392, -1393, -1422                     13
                                            B.

       To construe a claim, courts must determine the meaning of disputed terms from

the perspective of one of ordinary skill in the pertinent art at the time of filing.

Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008). The

claim terms “are generally given their ordinary and customary meaning.” Phillips v.

AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he claims themselves

provide substantial guidance as to the meaning of particular claim terms.” Id. at 1314.

       But the claims “must be read in view of the specification, of which they are a

part.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en

banc), aff’d, 517 U.S. 370 (1996). A patent’s specification “is always highly relevant to

the claim construction analysis.” Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d

at 1582 (Fed. Cir. 1996)). When consulting the specification to clarify the meaning of

claim terms, courts must not import limitations into the claims from the specification.

Abbot Labs., 566 F.3d at 1288.        Therefore, when the specification uses a single

embodiment to enable the claims, courts should not limit the broader claim language to

that embodiment “unless the patentee has demonstrated a clear intention to limit the

claim scope using ‘words or expressions of manifest execution or restriction.’” Liebel-

Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 905 (Fed. Cir. 2004) (quoting Teleflex, Inc.

v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)). In addition, “other

claims of the patent . . . can also be valuable sources of enlightenment as to the

meaning of a claim term.” Id. (citing Vitronics, 90 F.3d at 1582).




2008-1392, -1393, -1422                     14
       In claim construction “a court ‘should also consider the patent’s prosecution

history . . . .’” Phillips, 415 F.3d at 1318 (quoting Markman, 52 F.3d at 980). “[T]he

prosecution history can often inform the meaning of the claim language by

demonstrating how the inventor understood the invention and whether the inventor

limited the invention in the course of prosecution, making the claim scope narrower than

it would otherwise be.” Id. (citing Vitronics, 90 F.3d at 1582-83). For example, “a

patentee may, through a clear and unmistakable disavowal in prosecution history,

surrender certain claim scope to which he would otherwise have an exclusive right by

virtue of the claim language.” Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317,

1324 (Fed. Cir. 2009) (citations omitted).       At the same time, because prosecution

history represents an ongoing negotiation between the PTO and the inventor, “it often

lacks the clarity of the specification and thus is less useful for claim construction

purposes.” Netcraft Corp. v. eBay, Inc., 549 F.3d 1394, (Fed. Cir. 2008).

       TT disputes the construction of the word “static” in the phrase “static display of

prices” in the ’132 patent and in the phrase “common static price axis” in the ’304

patent. All asserted claims of the ’132 patent include the limitation “static display of

prices.” Likewise, all asserted claims of the ’304 patent include the limitation “common

static price axis.” TT and eSpeed agree that the difference in terminology between

“static display of prices” and “common static price axis” is immaterial.

       The district court construed “static display of prices” in the ’132 patent as “a

display of prices comprising price levels that do not change positions unless a manual

re-centering command is received.” Trading Techs. Int’l, Inc. v. eSpeed, Inc., 2006 U.S.

Dist. LEXIS 80153, at *11 (N.D. Ill. Oct. 31, 2006) (emphasis added). The district court




2008-1392, -1393, -1422                     15
similarly construed “common static price axis” as “a line comprising price levels that do

not change positions unless a manual re-centering command is received and where the

line of prices corresponds to at least one bid value and one ask value.” Id. (emphasis

added). A “price level” is “a level on which a designated price or price representation

resides.” Id. at *15. The district court later clarified that “a static condition – requires

permanency” and, thus, “the price axis never changes positions unless by manual re-

centering or re-positioning.” Trading Techs. Int’l, Inc. v. eSpeed, Inc., 2007 U.S. Dist.

LEXIS 12965, at *20, 22 (N.D. Ill. Feb. 21, 2007) (emphasis added). Under the district

court’s construction, the patents-in-suit only cover software with a manual re-centering

feature and without automatic re-centering feature.       Given that Dual Dynamic and

eSpeedometer automatically re-center the price columns in response to changes in the

inside market, TT argues for a broader construction of the word “static” (i.e., “static”

does not mean immovable).

       The inventors acted as their own lexicographers and defined the word “static:”

       The values in the price column are static; that is, they do not normally
       change positions unless a re-centering command is received (discussed in
       detail later).

’132 patent col.7 ll.46-48; ’304 patent col.7 ll.65-67.     The district court made two

important changes to this express definition in construing the word “static.” First, the

district court added the word “manual” in front of the term “re-centering command.”

Second, it deleted the word “normally.”        The district court’s definition may seem

narrower than the inventors’ express definition at first glance. However, the claims, the

rest of the specification, and the prosecution history support the district court’s

definition.   Therefore, this court, after reconstruing this term based on its own




2008-1392, -1393, -1422                     16
understanding of the claims, specification, prosecution history, and record, agrees with

the district court’s claim construction of the word “static.”

       In the first place, the “re-centering command” must indeed occur as a result of a

manual entry. The specification shows that the inventors defined the term “static” in the

specification.   Notably, that definition expressly promises to discuss “a re-centering

command . . . later” in the specification. Id.     From that point forward, the specification

only discusses manual re-centering commands.                The specification contains no

reference to automatic re-centering. Perhaps in response to the promise to discuss re-

centering later, the patents describe the invention as follows:

       As the market ascends or descends the price column, the inside market
       might go above or below the price column displayed on a trader’s screen.
       Usually a trader will want to be able to see the inside market to assess
       future trades. The system of the present invention addresses this problem
       with a one click centering feature.

’132 patent col.8 ll.49-54; ’304 patent col.9 ll.14-19 (emphasis added). This reference to

“the present invention” strongly suggests that the claimed re-centering command

requires a manual input, specifically, a mouse click. See Honeywell Int’l, Inc. v. ITT

Indus., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (concluding that the invention was limited

to a fuel filter because the specification referred to the fuel filter as “this invention” and

“the present invention”).

       This court recognizes that this interpretation relies heavily on the specification

and risks reading improperly a preferred embodiment into the claim.           See Saunders

Group, Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1332 (Fed. Cir. 2007) (holding that claim

scope is not limited to the disclosed embodiments “unless the patentee has

demonstrated a clear intention to [do so]”). This court takes some comfort against this




2008-1392, -1393, -1422                       17
risk from the inventors’ use of the term “the present invention” rather than “a preferred

embodiment” or just “an embodiment.” The inventors’ own specification strongly

suggests that the claimed re-centering feature is manual.

      Because an inventor must evince a “clear intention” to limit the claim terms to a

specification embodiment, this court examines other claims to detect any contrary

intentions. In that respect, this court observes that all claims of the ’132 patent have a

“wherein” clause explaining that “the static display of prices does not move in response

to a change in the inside market.” ’132 patent col.12 l.1–col.16 l.57. Although the

“wherein” clause does not exclude automatic re-centering from the claim scope (it does

not exclude software that automatically re-centers whenever the trader enters an order,

for example), it expressly excludes software that automatically re-centers when the

inside market changes.       These clauses thus support the district court’s claim

construction.

      TT argues that even if this court construes the “re-centering command” as

manual, this court cannot limit the claims to only the enumerated elements (i.e., manual

re-centering command).     According to TT, because the claims use the transitional

phrase “comprising,” they also cover un-recited features such as automatic re-centering.

To the contrary, automatic re-centering is not an additional feature, but rather negates a

claimed requirement that the price level remains static and does not move.           See

Spectrum Int’l v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed. Cir. 1998) (“‘Comprising’ is

not a weasel word with which to abrogate claim limitations.”). A price level that only

moves in response to a manual re-centering command cannot also move in response to




2008-1392, -1393, -1422                    18
an automatic re-centering command. Thus, this court construes the claims to require a

manual re-centering command.

       The claims also contain a limitation that “the price axis never changes positions

unless by manual re-centering or re-positioning.”      Trading Techs., 2007 U.S. Dist.

LEXIS 12965, at *22. The district court found that the ordinary and customary meaning

of “static” was “motionless: not moving or changing, or fixed in position.”       Trading

Techs., 2006 U.S. Dist. LEXIS 80153, at *11. TT did not present evidence or dispute

that a person of ordinary skill in the art would understand the word “static” differently.

Moreover, allowing the price axis to automatically change positions would defy the

invention’s goal to “ensure[] fast and accurate execution of trades.” ’132 patent col.3

ll.5-6. The invention would present the same problem as the prior inventions if the price

axis moved automatically even in rare instances. The “static display of prices” could

automatically re-center just as the trader was getting ready to execute a trade, causing

the trader to miss the intended price.

       Also, the inventors jettisoned the word “normally” during prosecution.   The PTO

examiner initially rejected the claims because the term “‘static display’ [was] vague and

indefinite.” The examiner requested the applicants “to claim ‘to what extent’, ‘to what

degree’, and ‘on what basis’ the displays ‘change.’”        In response, the applicants

explained that “the values in the price column . . . do not change (unless a re-centering

command is received).” The examiner allowed the claims at least partly based on the

understanding that the price column did not re-center itself automatically. The manual

re-centering feature also avoided the possibility of mistakes when the price column

moved automatically at the same time a trader wished to make a purchase. Of course,




2008-1392, -1393, -1422                    19
traders might make mistakes despite precautions built into the software. Nonetheless,

to “provide the trader with improved efficiency and versatility in placing,” ’132 patent

col.3 ll.21-24, the price column cannot shift unexpectedly.

       This court also addresses claim 55 of the ‘132 patent, a dependent claim from

claim 1:

       The method of claim 1 wherein the market depth is based on an exchange
       order book and the static display of prices never moves in response to a
       price change in the exchange order book relating to a price which is
       displayed.

Id. col.16 ll.52-55 (emphasis added). TT argues that construing “static” to mean the

price axis never moves would render dependent claim 55 superfluous. To the contrary,

claim 55 adds another limitation to claim 1, namely, that the market depth is based on

“an exchange order book.” Moreover, problems with any overlapping claim scope “will

be overcome by a contrary construction dictated by the written description or

prosecution history.”     Regents v. Dakocytomation, 517 F.3d 1367, 1375 (Fed. Cir.

2008). The invention’s contribution to the prior art, its specification, and its prosecution

history show that the static display of prices cannot move without a manual re-centering

command from the trader.        Accordingly, the district court correctly construed the

disputed word “static.”

       Because Dual Dynamic and eSpeedometer systems have mandatory re-

centering features, these products do not infringe the patents-in-suit based on the

district court’s construction of the word “static.” With that feature, these products lack

“price levels that do not change positions unless a manual re-centering command is

received.”   This court affirms the district court’s finding that Dual Dynamic and

eSpeedometer do not literally infringe the patents-in-suit.



2008-1392, -1393, -1422                     20
                                            IV.

       The district court prevented TT from relying on the doctrine of equivalents. The

trial court reasoned that claim vitation barred assertion of infringement by equivalents

against the Dual Dynamic system. The trial court reasoned that prosecution history

estoppel barred TT from asserting equivalents against the eSpeedometer system. The

Supreme Court discussed these “legal limitations on the application of the doctrine of

equivalents” in Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17,

39 n.8 (1997). Under the “all-elements rule,” a patentee may not assert “a theory of

equivalen[ce] [that] would entirely vitiate a particular claim element.”       Id.   Under

prosecution history estoppel, a patentee may not seek to recapture as an equivalent

subject matter surrendered during prosecution.       Id.   This court reviews both legal

limitations without deference. Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324

F.3d 1308, 1318 (Fed. Cir. 2003).

       The all-elements rule requires this court to consider “the totality of circumstances

of each case and determine whether the alleged equivalent can be fairly characterized

as an insubstantial change from the claimed subject matter without rendering the

pertinent limitation meaningless.” Freedman Seating Co. v. Am. Seating Co., 420 F.3d

1350, 1359 (Fed. Cir. 2005). In other words, this rule empowers a court to perform

again the standard “insubstantial variation” test for equivalency, but this time as a

question of law. Claim vitiation applies when there is a “clear, substantial difference or

a difference in kind” between the claim limitation and the accused product. Id. at 1360.

It does not apply when there is a “subtle difference in degree.” Id.




2008-1392, -1393, -1422                     21
       In this case, the trial court considered whether an occasional automatic re-

centering of the price axis in Dual Dynamic is equivalent to “never chang[ing] positions

unless by manual re-centering or re-positioning.”        The court determined that the

automatic re-centering would render the claim limitation “static”—synonymous with only

manual re-centering—meaningless. The trial court’s construction of the claim limitation

“static” specifically excludes any automatic re-centering.     See SciMed Life Sys. v.

Advanced Cardiovacsular Sys., 242 F.3d 1337, 1347 (Fed. Cir. 2001) (“[I]f a patent

states that the claimed device must be ‘non-metallic,’ the patentee cannot assert the

patent against a metallic device on the ground that a metallic device is equivalent to a

non-metallic device.”).

       On appeal, this court observes that the Dual Dynamic system may only

automatically re-center its price axis once or twice per trading day. Still this occasional

automatic re-centering is not a “subtle difference of degree” because the claim forbids

all automatic re-centering.   This court concludes that the occasional automatic re-

centering is not merely an insubstantial variation. The relevant standard for measuring

the difference in this instance is not the frequency of automatic re-centering. Instead

this court must detect the difference between a price axis that moves only in response

to the trader’s instruction and a price axis that adjusts itself without prompting. This

difference is not subtle. Rather, as discussed above, this difference lies at the heart of

the advantages of the patented invention over prior art.        Specifically the invention

“ensures fast and accurate execution of trades.”         ’132 patent col.3 ll.5-6.    Dual

Dynamic’s automatic re-centering feature still presents the potential problem of the prior

art that allowed the inside market price to move while a trader was trying to secure a




2008-1392, -1393, -1422                     22
deal. Thus Dual Dynamic’s automatic re-centering feature is substantially different from

the claimed invention and cannot fall within the scope of the claims under the doctrine of

equivalents without doing violence to the “static” claim element. Accordingly, this court

affirms the trial court’s judgment that TT cannot rely on the doctrine of equivalents to

show that Dual Dynamic infringes.

       This court further agrees with the district court that prosecution history estoppel

precludes TT from relying on the doctrine of equivalents to prove the eSpeedometer

system infringes. After the USPTO issued a notice of allowance, TT submitted for the

first time a prior art reference that described a static price display and petitioned to have

the application withdrawn from issuance. TT then amended claim 22 of the ’132 patent,

which ultimately issued as claim 1, as follows (deletions marked in brackets, additions

underlined):

       displaying [the] market depth of [a] the commodity [traded in a market],
       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;


Similarly, TT amended claim 41 of the ’304 patent, which ultimately issued as claim 1,

as follows:

       displaying the bid and ask display regions in relation to fixed price levels
       positioned along the common static price axis such that when the inside
       market changes, the price levels along the common static price axis do
       not move and at least one of the first and second indicators [can] moves in
       the bid [and] or ask display regions relative to the common static price axis
       [when the inside market changes];

The PTO examiner then allowed the claims. The amendments clarified that the claimed

price levels “do not move” when the inside market changes. Therefore, the applicants



2008-1392, -1393, -1422                      23
clearly surrendered a GUI with price levels that move in response to inside market

changes.

      TT argues that amending the claims to require that the price levels “do not move”

did not narrow the claim scope, because the claims already included the term “static,”

which the district court has construed to mean that the price levels “do not move.” This

contention, however, is circular. Placed in the proper context of the timing for claim

construction and prosecution history estoppel, the district court properly prevented the

recapture of surrendered subject matter.        The trial court construed the claims as

amended and properly limited the claims to manual re-centering. Prosecution history

estoppel applies at the time of infringement to determine whether the applicant

surrendered claim scope during prosecution. See Warner-Jenkinson, 520 U.S. at 39

n.8. TT’s argument assumes that the trial court and this court would have construed

“static” the same without the full prosecution history. This court need not engage in this

conjecture because the inventors narrowed the claim scope during prosecution. Thus,

both claim construction and prosecution history estoppel operate in this case with

similar limited results. The first limits the claims to manual re-centering. The latter

prevents TT from asserting that eSpeedometer is an equivalent, because its price level

automatically drifts towards the center of the display after every change in the inside

market. Thus, during prosecution, the inventors surrendered any subject matter that

moves automatically.    Accordingly, this court affirms as a matter of law the district

court’s finding that Dual Dynamic and eSpeedometer do not infringe the patents-in-suit

under the doctrine of equivalents.




2008-1392, -1393, -1422                    24
                                            V.

       The district court granted eSpeed’s motion for JMOL that it did not willfully

infringe the patents-in-suit. This court reviews a district court’s grant of a motion for

JMOL under the law of the regional circuit, in this case the United States Court of

Appeals for the Seventh Circuit. Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1248

(Fed. Cir. 2005). The Seventh Circuit reviews a district court’s grant of a JMOL motion

without deference, while viewing all the evidence in the light most favorable to the

nonmoving party. Harper v. Albert, 400 F.3d 1052, 1061 (7th Cir. 2005). JMOL is

proper when “a party has been fully heard on an issue and there is no legally sufficient

evidentiary basis for a reasonable jury to find for that party on that issue." Fed. R. Civ.

P. 50(a).

       In In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en

banc), this court held that “proof of willful infringement permitting enhanced damages

requires at least a showing of objective recklessness.” “[A] patentee must show by

clear and convincing evidence that the infringer acted despite an objectively high

likelihood that its actions constituted infringement of a valid patent.” Id. The patentee

must also show that the infringer knew or should have known of this objectively high

likelihood. Id.

       TT’s argument focuses on eSpeed’s post-issuance activities from August to

December 2004, during which eSpeed’s customers continued to use Futures View to

trade on its electronic exchange.     The parties do not dispute that eSpeed began

redesigning Futures View immediately after this suit commenced and replaced Futures

View with the redesigned Dual Dynamic by the end of December 2004.                 Prompt




2008-1392, -1393, -1422                     25
redesign efforts and complete removal of infringing products in a span of a few months

suggest that eSpeed was not objectively reckless.

       Also, TT offered no evidence that eSpeed sold Futures View to new customers

during the contested time period. Nor did TT offer any evidence that eSpeed could

have disabled the infringing feature or removed Futures View that was already installed

on the customers’ computers. eSpeed replaced Futures View with Dual Dynamic via a

mandatory software update in December 2004; however, this does not prove that

eSpeed could have updated its software before this date. The record shows that some

customers paid monthly license fees on Futures View after August 2004. Nonetheless,

eSpeed was merely receiving monthly installments on licenses that it had previously

sold. Moreover, eSpeed could not have terminated these licenses without providing

three months advance notice.

       Because the record shows no objective recklessness during the contested period

of time, no reasonable jury could have found that eSpeed willfully infringed the patents-

in-suit. Therefore, this court affirms the district court’s grant of JMOL motion on willful

infringement.

                                            VI.

       The parties dispute whether the limitation “single action of a user input device” is

indefinite as construed. A patent specification must “conclude with one or more claims

particularly pointing out and distinctively claiming the subject matter which the applicant

regards as his invention.”     35 U.S.C. § 112, ¶ 2.      “The statutory requirement of

particularity and distinctness in claims is met only when [the claims] clearly distinguish

what is claimed from what went before in the art and clearly circumscribe what is




2008-1392, -1393, -1422                     26
foreclosed from future enterprise.” United Carbon Co. v. Binney & Smith Co., 317 U.S.

228, 236 (1942). However, absolute clarity is not required. Datamize, LLC v. Plumtree

Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). Only claims “not amenable to

construction” or “insolubly ambiguous” are indefinite. Id. (citation omitted). This court

reviews definiteness without deference. AllVoice Computing v. Nuance Commc’ns, 504

F.3d 1236, 1240 (Fed. Cir. 2007).

       This court agrees with the district court that the claim term as construed is

sufficiently definite. The district court construed “single action of a user input device” to

mean “an action by a user within a short period of time that may comprise one or more

clicks of a mouse button or other input device.” Trading Techs., 2006 U.S. Dist. LEXIS

80153, at *11. In this context, the word “an action” means one user action. An action

may include multiple sub-elements as long as the user views all sub-elements as one

user action (e.g., double-click comprising of two single-clicks is “an action”).        The

invention is different from prior art inventions that required a trader to click on multiple

locations before submitting the order. The district court’s construction correctly sets

objective boundaries by distinguishing the invention from multiple-action systems found

in the prior art.

       Moreover, one of ordinary skill in the art would distinguish user actions as

singular or multiple. The claim construction provides an example of a singular action—

one or more clicks of a mouse button. Importantly, the district court’s construction

requires that the “action” must be done in a “short period of time.” Although a “short

period of time” may vary slightly from one circumstance to the next, an artisan of

ordinary skill would not find the term insolubly ambiguous. In fact, eSpeed’s expert




2008-1392, -1393, -1422                      27
agreed that the following actions are all single actions: a single mouse click, double

mouse clicks, a single key press, and a modal shift on the keyboard (such as

combination of the Control key or the Alt key with another key). eSpeed’s expert also

agreed that other actions, such as a right click followed by a left click, and pressing two

keys in sequential order, constituted multiple actions. Given the record and the trial

court’s definition of the term “single action,” this court agrees that the claim terms set

forth the boundaries of the claim scope.

                                           VII.

      The jury found that the patents-in-suit claimed priority to their provisional

application, which was filed on March 2, 2000. Every claim of the patents-in-suit recites

use of a “single action of a user input device.” In contrast, the provisional application

never refers to a “single action of a user input device,” but instead refers solely to “a

single click of a computer mouse.”

      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).




2008-1392, -1393, -1422                     28
       eSpeed alleges that the district court erred in finding that one of ordinary skill in

the art would understand the provisional application to mean that traders could enter

orders through a “single action of a user input device.” Specifically, eSpeed disputes

the district court’s summary judgment ruling, jury instruction, decision to admit expert

testimony, and JMOL ruling on priority date.

       First, eSpeed argues that the district court incorrectly denied its motion for

summary judgment on the ground that there was a triable issue as to whether the

provisional application’s disclosure was adequate. This court reviews a denial of a

motion for summary judgment for an abuse of discretion.             Cross Med. Prods. v.

Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1302 (Fed. Cir. 2005). On summary

judgment, the parties’ experts disagreed that the provisional application showed

possession of forms of order entry other than “a single click of a computer mouse.”

Harris Brumfield, one of the inventors of the patents-in-suit, suggested that “one click of

a mouse” is merely one way of entering orders on the exchange. Therefore, the parties

created a dispute of material fact about whether the disclosure of a species, i.e., “one

click of a mouse,” was sufficient to show that the inventors possessed the genus, i.e.,

“single action of a user input device.” The district court did not abuse its discretion by

determining that the parties’ irreconcilable testimony created a dispute of material fact,

precluding a grant of summary judgment on this issue.

       Second, eSpeed also argues that the court incorrectly instructed the jury on the

law of written description. This court reviews “the legal sufficiency of jury instructions on

an issue of patent law without deference to the district court."         Amgen Inc. v. F.

Hoffmann-La Roche, Ltd., 580 F.3d 1340, 1368 (Fed. Cir. 2009) (citation omitted). In its




2008-1392, -1393, -1422                      29
brief, eSpeed quotes one sentence from the jury instruction. The district court’s jury

instruction was much longer and included the following sentence:

        To provide adequate support you must find that the Provisional Application
        shows that one reasonably skilled in the art, reading the Provisional
        Application that explicitly calls for “single-click” user entry, would have
        known that patentee had possession of a broader “single action of a user
        input device.”

This jury instruction comports with this court’s law on written description. Moreover this

instruction gave the jury adequate information to make a decision based on the

possession standard of this court. This court finds that the jury instruction was not

legally erroneous.

        eSpeed argues as well that the testimony of TT’s expert, Larry Nixon, was

improper. This court reviews a district court’s decision to admit expert testimony under

regional circuit law. Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1391 (Fed. Cir.

2003). The Seventh Circuit reviews such evidentiary rulings for abuse of discretion.

Liquid Dynamics Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1218 (Fed. Cir. 2006).

Larry Nixon testified generally about the written description requirement and did not

offer legal conclusions as to the adequacy of the provisional application’s disclosure.

While offering general opinions on patent practices, he did not usurp the district court’s

role of instructing the jury on the law. Therefore, the district court did not abuse its

discretion by permitting his testimony.

        Finally, eSpeed contests the district court’s denial of its Rule 50(b) motion for

JMOL.     This court reverses a denial of a JMOL motion “only if the jury’s factual

determinations are not supported by substantial evidence or the legal conclusions




2008-1392, -1393, -1422                     30
implied from the verdict cannot be supported in law by those findings.”            Tronzo v.

Biomet, Inc., 156 F.3d 1154, 1157 (Fed. Cir. 1998).

       eSpeed did not submit its Rule 50(a) JMOL motion at the close of evidence. This

case, however, is not an instance where the district court entertained a Rule 50(b)

JMOL motion that was not preserved before the jury verdict. Instead, the district court

explicitly permitted each party to preserve JMOL motions by offering “placeholders” with

“the details to be filled in later.” Albeit in abbreviated form, the district court found that

eSpeed had presented and preserved its Rule 50(a) JMOL motion. This court is “not

disposed to override” a district court’s determination of non-waiver. Gaus v. Conair

Corp., 363 F.3d 1284, 1287 (Fed. Cir. 2004).

       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.




2008-1392, -1393, -1422                       31
                                          VIII.

      eSpeed also appeals the district court’s grant of motion in limine precluding it

from alleging the on-sale bar defense. The facts relevant to the on-sale bar defense are

fairly simple. In September 1998, Harris Brumfield, one of the inventors of the patents-

in-suit and an avid trader on electronic exchanges, conceived an idea that formed the

basis of the invention. Brumfield hired TT to build trading software based on his idea.

On September 29, 1998, TT and Brumfield entered into Individual Consulting

Agreement #2 (“ICA2”), which provided that “TT will build a new trading window

according to specifications provided to TT by Harris Brumfield.” In mid-February 1999,

TT delivered a “market depth trader workstation” to Brumfield. On March 2, 1999,

Brumfield agreed to pay TT for the custom software.

      An on-sale bar under 35 U.S.C. § 102(b) applies when the invention was both the

subject of a commercial sale and ready for patenting before the critical date. Pfaff v.

Wells Elecs., Inc., 525 U.S. 55, 67 (1998). The transaction at issue must be a “sale” in

a commercial law sense. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352

(Fed. Cir. 2002). “[A] sale is a contract between parties to give and to pass rights of

property for consideration which the buyer pays or promises to pay the seller for the

thing bought or sold.” In re Caveney, 761 F.2d 671, 676 (Fed. Cir. 1985). The invention

is ready for patenting, inter alia, if there is “proof of reduction to practice before the

critical date.” Plumtree Software, Inc. v. Datamize, LLC, 473 F.3d 1152, 1161 (Fed. Cir.

2006). The district court granted TT’s motion in limine to preclude eSpeed from arguing

a prior sale of the invention. TT characterizes this as a de facto summary judgment

dismissing eSpeed’s on-sale bar defense under 35 U.S.C. § 102(b).




2008-1392, -1393, -1422                    32
      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).

                                            IX.

      A patent may be rendered unenforceable for inequitable conduct if an applicant,

with intent to mislead or deceive the examiner, fails to disclose material information or




2008-1392, -1393, -1422                     33
submits materially false information to the PTO during prosecution. Digital Control Inc.

v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006) (citation omitted).

Where a judgment regarding inequitable conduct follows a bench trial, as it did here,

this court reviews the district court’s findings of materiality and intent for clear error and

its ultimate conclusion for an abuse of discretion. ACCO Brands, Inc. v. ABA Locks

Mfg. Co., 501 F.3d 1307, 1314 (Fed. Cir. 2007). The district court held that TT did not

engage in inequitable conduct by not disclosing Brumfield’s custom software to the PTO

because the software was not material to the question of patentability.           This court

agrees.

        The first issue this court addresses is whether the use of Brumfield’s software

between March 2 and June 9, 1999 was material. The district court found that TT relied

on the March 2, 1999 priority date in good faith, and that TT did not need to disclose

Brumfield’s use of software past this priority date. The record also suggests that the

examiner never questioned the March 2, 1999 priority date. In submitting a brochure for

MD_Trader, one of TT’s commercial embodiments of the patents-in-suit, TT stated to

the examiner that the brochure was disclosed to the public no earlier than March 2,

1999.     This disclosure would have triggered a request for further information if the

examiner had detected a priority date issue. Instead, the examiner did not perceive any

issue and allowed the claims.       The district court did not clearly err by finding that

Brumfield’s software was immaterial given that his use of the software after the priority

date would not have changed the examiner’s analysis of the patent. See Reactive

Metals & Alloys Corp. v. Esm, Inc., 769 F.2d 1578, 1583 (Fed. Cir. 1985) (“[T]here is no

point in bringing sales activities to the examiner's attention which, for example, did not




2008-1392, -1393, -1422                      34
occur before the one-year grace period simply to have the examiner ‘decide’ that the

sales were not early enough to trigger the time bar.”)

      The second issue is whether TT should have disclosed any pre-March 2, 1999

activities to the PTO. eSpeed argues that TT should have disclosed TT’s “sale” of the

custom software to Brumfield.       However, as discussed above, ICA2 was not a

commercial transaction; a reasonable examiner would not have regarded ICA2 as

material to the issue of patentability. eSpeed also argues that TT should have disclosed

Brumfield’s testing of the custom software before March 2, 1999. Experimental uses of

the patented invention may in some instances give rise to an issue of patentability. See

Manville Sales Corp. v. Paramount Sys, Inc., 917 F.2d 544, 552 (Fed. Cir. 1990). In this

case, however, the record shows that Brumfield tested the software for his own

confidential, personal purposes. See Elizabeth v. Am. Nicholson Pavement Co., 97

U.S. 126, 134-35 (1878).      The district court did not clearly err by finding that a

reasonable examiner similarly would not have regarded such experimental use as

material. Brumfield kept the software secret until TT and Brumfield decided to file a

provisional application. Accordingly, the district court did not abuse its discretion in

finding that the TT did not engage in inequitable conduct.

                                            X.

      For the above-stated reasons, this court affirms on all issues presented on

appeal.

                                       AFFIRMED.



      LOURIE, CIRCUIT JUDGE, concurs in the result.




2008-1392, -1393, -1422                     35
 United States Court of Appeals for the Federal Circuit
                                  2008-1392, -1393, -1422

                  TRADING TECHNOLOGIES INTERNATIONAL, INC.,

                                                           Plaintiff-Appellant,

                                               v.

                            ESPEED, INC.,
        ECCO LLC, ECCOWARE LTD., and ESPEED INTERNATIONAL, LTD.,

                                                           Defendants-Cross Appellants.


Appeals from the United States District Court for the Northern District of Illinois
in Case No. 04-CV-5312, Senior Judge James B. Moran.

CLARK, District Judge, concurring.

       Believing that the judgment is correct and that the opinion correctly analyzes the

issues in this case in light of current law, I concur. I write separately to respectfully

suggest that the current de novo standard of review for claim construction may result in

the unintended consequences of discouraging settlement, encouraging appeals, and, in

some cases, multiplying the proceedings.

       Determination of the meaning that would have been attributed to a claim term by

one of ordinary skill in a sophisticated field of art on the date of filing often requires

examination of extrinsic evidence—a determination of crucial facts underlying the

dispute, as outlined by Judge Rader in the majority opinion. On some occasions, a

determination will be made based, in part, on the weight to be given to conflicting

extrinsic evidence or even to an evaluation of an expert’s credibility.

       The standard of review that will be applied by a higher court sets one of the

important benchmarks against which competent counsel evaluates decisions regarding
settlement and appeal. The importance is highlighted by the fact that every brief must

state the standard of review. See Fed. R. App. P. 28(a)(9)(B), (b)(5); Fed. Cir. R.

28(a)(10),(b).

       The de novo review standard has at least two practical results, neither of which

furthers the goal of the “just, speedy, and inexpensive determination of every action and

proceeding.” Fed. R. Civ. P. 1. First, rejection of settlement is encouraged, and a

decision to appeal is almost compelled, where counsel believes the client’s position is

valid, even if debatable, depending on the view taken of extrinsic evidence. It is a

natural reaction upon receiving an unfavorable claim construction from a trial court to

conclude that one’s own view of complicated facts will be better understood by the

judges of the Federal Circuit, who generally have more experience with patent cases,

and who, by their own authoritative rule, review the claim construction without regard to

any determination the lower court has made.

         A patentee has the opportunity to write clearly enough so that the meaning of

the claims can be determined from the specification. What public policy is advanced by

a rule requiring the determination of underlying facts by more than one court, especially

when the likely result is that another group of citizens will be required to “volunteer” for

lengthy jury duty on remand?

       A second, although less common, consequence of the de novo review standard

is the opportunity it offers to the party that presents a case with an eye toward appeal

rather than the verdict. Skilled counsel who believes a client may not be well received

by a jury is tempted to build error into the record by asking for construction of additional

terms, and/or presenting only a skeleton argument at the claim construction stage.

2008-1392, -1393, -1422
                                              2
This is risky, but it would be unusual for this Court to consider a point waived if a

particular claim construction had been requested of the trial court and some argument

made, but the clearest explanation was presented on appeal. An appellate court

normally does not consider an unpreserved point of error, but a more sharply focused

argument regarding points presented on appeal, from among those that are technically

preserved, is actually the goal of the appellate specialist. This tactic would be less

inviting if claim construction was officially accorded some measure of deference, even if

it was applied only in those cases in which resort to extrinsic evidence was necessary.




2008-1392, -1393, -1422
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