Case: Trading Techs. Int’l, Inc. v. Open E Cry LLC, No. 2012-1583 (Fed. Cir. Aug. 30, 2013) (precedential). On appeal from N.D. Ill. Before Lourie, Plager, and Benson.

Procedural Posture: Plaintiff TT appealed district court’s summary judgment that (1) the asserted claims in four patents relating to electronic trading software are invalid for failure to comply with the written description requirement under 35 U.S.C. § 112, and (2) prosecution history estoppel bars assertion of one of the patents against software products that include certain display functions. District court premised both holdings on a prior CAFC decision relating to other TT patents, Trading Tech’s Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340 (Fed. Cir. 2010) (eSpeed). CAFC reversed and remanded.

  • Written Description: CAFC found the district court exercised undue reliance upon eSpeed and failed to consider the scope of the claims at issue in light of the underlying disclosures. eSpeed was distinguished because while the patents of both cases share written descriptions, the claims are different and one of the asserted patents contained new matter. Thus, the lack of written description ruling of eSpeed is not necessarily applicable to the present case. CAFC reversed summary judgment of invalidity and remanded for further proceedings under § 112 for the patents with the same written description. For the patent with new subject matter, CAFC found that it had not been proven invalid by clear and convincing evidence for lack of adequate written description, and reversed the district court’s summary judgment rulings.
  • Prosecution History Estoppel: CAFC disagreed with the district court’s reliance on the prosecution history estoppel and prosecution disclaimer finding from the eSpeed case in determining that TT’s prior family of patents created prosecution history estoppel for claims in a continuation-in-part patent. CAFC noted that the surrender of subject matter during prosecution of an earlier application is not automatically inherited by a child patent application with different claims. CAFC reasoned that because the continuation-in-part patent asserted by TT contained “extensive disclosures that were not present” in the prior family of patents and different claims, the district court erred in relying on TT’s prior family of patents to determine the meaning of claim terms in the continuation-in-part patent.