The opinion of the court was delivered by: Judge Virginia M. Kendall
MEMORANDUM OPINION AND ORDER
In early 2010, plaintiff Trading Technologies International, Inc. ("TT") filed a dozen cases in this District alleging infringement of various patents concerning electronic trading software that traders use to place orders on electronic exchanges like Chicago's Mercantile Exchange and Board of Trade. Specifically, the patents at issue concern the functionality in the software that displays market information to traders and allows them to submit orders to those exchanges and others to make their trades. After the Court consolidated the cases, the parties identified several issues to be decided as a matter of law that would help the parties streamline discovery and potentially resolve the cases between them. Pursuant to this Court's order, the parties submitted cross-motions for summary judgment on the following issues:
1. Whether a particular part of the sole independent claim relating to user input of default quantities in TT's patent no. 7,553,056 ('056 patent)-which TT has asserted against every defendant-meets 35 U.S.C. § 112's written description requirement; and
2. Whether the claims of TT's patent no. 7,676,411 ('411 patent), which claim price axes that are static as well as ones that move automatically, are invalid for lack of a written description in light of the Federal Circuit's analysis and decision in Trading Technologies, International, Inc. v. eSpeed, Inc., 595 F.3d 1340 (Fed. Cir. 2010) ("eSpeed Decision").
Specifically, with respect to the '056 patent, the parties disagree whether the '056 patent's specification discloses the concept of a trader selecting and then using a default quantity for multiple orders. As for the '411 patent, the parties dispute whether the Federal Circuit's comments on patent no. 6,772,132's ('132 patent) specification-which is the same specification used by the '411 patent-means that the specification discloses only static price axes (that is, price axes that move only after the user re-centers them manually), and that consequently the claims in the '411 patent that cover price axes in general (including, presumably, those that move on their own) are too broad.
Before the Court entered its scheduling order directing the parties to brief these preliminary matters, Defendants TradeStation Securities, Inc. and TradeStation Group, Inc. (together, "Tradestation") moved for partial summary judgment, asserting that in light of the eSpeed Decision, various patents in TT's "Brumfield family" that the United States Patent and Trademark Office ("PTO") issued in 2010, including the '411 patent, are not entitled to claim priority from earlier filings. TT concedes that, because the '411 patent shares a specification with those earlier filings, if the '411 patent's claims are held invalid based on the eSpeed Decision, then the issue of priority is moot. The defendants other than Tradestation note that the written description analysis is the same under either approach. In short, Tradestation's motion is really a spin on the other summary judgment motion (which TradeStation joined) and rises and falls with the Court's interpretation of the eSpeed Decision.
Finally, Defendants Open E Cry, LLC and optionsXpress Holdings, Inc. (together "OEC") filed a separate motion for partial summary judgment, also based on the eSpeed Decision, asserting that TT should be barred from asserting that products with price axes that move automatically infringe under the doctrine of equivalents, because the Federal Circuit found that TT disclaimed all price axes that move automatically when it prosecuted the claims of the '132 patent and another parent patent.
For the reasons below, the Court:
1. grants TT's cross-motion for summary judgment (Doc. 393) and denies the moving defendants' motion (Doc. 372) with respect to the '056 patent;
2. grants the moving defendants' motion for summary judgment (Docs. 375/378) that under the eSpeed Decision, the '411 patents claims are invalid to the extent they cover price axes that move automatically or through automatic re-centering and denies TT"s cross-motion that the '411 patent's claims meet the written description requirement (Doc. 394);
3. denies as moot Tradestation's motion for summary judgment (Docs. 178/181) concerning the priority issue of the '411 patent;
4. grants OEC's motion for summary judgment regarding prosecution history estoppel (Doc. 377) with respect to the first set of Brumfield family patents, denies it as moot with respect to the second set of Brumfield family patents, and denies TT's cross-motion (Doc. 394).
I. MATERIAL UNDISPUTED FACTS
A. '056 Patent Specification and Claims*fn1
TT owns the '056 patent, issued by the PTO on May 12, 2009 from application no. 11/417,544, filed on May 3, 2006. (TT '056 56.1 Resp. ¶ 1.)*fn2 The '544 application was a continuation of an earlier application, no. 09/289/550, which was filed on April 9, 1999 and issued as patent no. 7,212,999 on May 1, 2007. (Id. at ¶ 2; Def. '056 56.1 Resp. ¶ 4.) The '056 patent's specification is the same, in all relevant respects, to the specification submitted in 1999 as part of the '550 application. (TT '056 56.1 Resp. ¶ 5.)
According to the '056 patent's specification, the invention disclosed is a "user interface for an electronic trading exchange which allows a remote trader to view in real time bid orders, offer orders, and trades for an item." (TT '056 56.1 Resp. ¶ 5; Doc. 396-1 at 1.) More specifically, the interface displays all the outstanding bids and offers for an item (rather than just the highest bid and lowest offer), which "allows the trader to view trends in orders for an item, and thus better enables the trader to anticipate demand for the item." (TT '056 56.1 Resp. ¶ 7.) The specification describes various types of interfaces, but for purposes of the issue of user input of default quantities, the parties focus on the "priority view," shown by the following diagram from the specification:
(TT '056 56.1 Resp. ¶ 10; Def. '056 56.1 Resp. ¶ 5.) The figure shows the y (or "value") axis (332), with icons representing bids (labeled 300(_)) and offers (labeled 304(_)). (TT '056 56.1 ¶ 11.) The relative size of each order is represented by the vertical size of the icon, with larger icons representing larger orders; where there is more than one order at a given value (like 300(5), 300(6) and 300(7) above), the orders are "stacked," one on top of the other, based on their priority. (Id.) As shown on the left side of the figure, the priority view includes a bid token (labeled 320) and an offer token (labeled 324). (Def. '056 56.1 Resp. ¶ 6.) Per the specification, to submit an order for a trade, the trader selects one of the tokens on the left side with his mouse and resizes it to the desired amount (again, a larger token representing a larger offer or bid). (Id at ¶ 10; TT '056 56.1 Resp. ¶ 14.) Specifically, with respect to the re-sizing of the tokens, the specification states:
After being selected, the trader adjusts the size of the offer or bid token 324, 320 until the size of the token matches the desired quantity of the order. (Def. '056 56.1 Resp. ¶ 20.) After resizing the token, the trader drags it to the location on the screen with the desired price and releases it to start the order process. (Def. '056 56.1 Resp. ¶ 10; TT '056 56.1 Resp. ¶ 14.) For instance, the arrows in the above figure (which appear in the specification) show a trader dragging a bid token into the window at a specific price. (Def. '056 56.1 Resp. ¶ 17; TT '056 56.1 Resp. ¶ 14.)*fn3 This triggers a pop-up window to confirm the trade; the system auto-populates the window with the quantity reflected by the size of the token and the price corresponding to the location where the trader dragged the token. (Def. '056 56.1 Resp. ¶¶ 10, 20, 23; TT '056 56.1 Resp. ¶ 14.) The trader may, but does not have to, modify the auto-populated information before submitting the order. (Def. '056 56.1 Resp. ¶ 10.)*fn4
The specification does not describe tokens that have no size (and thus no quantities associated with them). (Id. at ¶ 14.) The diagrams show that when the tokens are not being used in the order process, they remain visible on the side, and the specification has no disclosure that the tokens ever disappear or are set to zero after the trader enters an order. (Def. '056 56.1 Resp. ¶¶ 16, 19.) The specification and the originally filed claims do not require a user to specify a different quantity for each order, though a flowchart for the priority view lists "receive a quantity specified for order" as a step in the order process. (Id. at ¶¶ 24, 26, 28-30, 32-33; TT '056 56.1 Resp. ¶ 15.) The words "default quantity" do not appear anywhere in the specification for the '056 patent, nor did the term appear in the original claims presented as part of the '544 application. (TT '056 56.1 Resp. ¶¶ 17, 29, 35.) The claims for the priority view, as originally presented to the PTO in the '544 application, read in part as follows:
1. A method for displaying transactional information regarding the buying and selling of items in a system where orders comprise a bid type or an offer type, and an order is generated for a quantity of items at a specific value, the method comprising: displaying at least one bid icon, corresponding to a bid for a quantity of items, at a location along a first axis of values corresponding to the value of the bid; and displaying at least one offer icon, corresponding to an offer type order for a quantity of items, at a location along a first axis of values corresponding to the value of the offer.
2. The method of claim 1 further comprising: providing an order token whose size is adjustable by the user to reflect the quantity of the order.
3. The method of claim 2 wherein providing an order icon further comprises: providing an order icon which can be moved to a location corresponding to the value of the order.
16. The method of claim 1 further comprising: receiving a new order for a quantity of items for a specified value; generating an order icon whose size corresponds to the quantity of items for which the offer is made; and placing the order icon at a location with respect to the axis of values corresponding to the specified value of the offer. (Id. at ¶¶ 30, 32-33.) In June 2007, a month after the '999 patent issued, TT presented 15 amended claims that would, with immaterial changes, issue as the claims in the '056 patent. (Id. at ¶¶ 37, 41.) The amendments to claim 1 (additions underlined, deletions struck out) are as follows:
1. (Currently Amended) A method of operation used by a computer for displaying transactional information and facilitating trading regarding the buying and selling of items in a system where orders comprise a bid type or an offer type, and an order is generated for a quantity of items at a specific value, the method comprising: receiving bid and offer information for a product from an electronic exchange, the bid and offer information indicating a plurality of bid orders and a plurality of offer orders for the product; displaying a plurality of bid indicators representing quantity associated with the plurality of bid indicators being displayed at locations corresponding to prices of the plurality of bid orders along an axis of prices; at least one bid icon, corresponding to a bid for a quantity of items, at a location along a first axis of values corresponding to the value values of the bid; and displaying a plurality of offer indicators representing quantity associated with the plurality of offer orders, the plurality of offer indicators being displayed at locations corresponding to prices of the plurality offer orders along the axis of prices; at least one offer icon, corresponding to an offer type order for a quantity items, at a location along the first axis of values corresponding to the value of the offer. receiving a user input indicating a default quantity to be used to determine a quantity for each of a plurality of orders to be placed by the user at one or more price levels; receiving a user input indicating a desired price for an order to be placed by the user, the desired price being specified by a selection of one of a plurality of locations corresponding to price levels along the price axis, and Sending the order for the default quantity at the desired price to the electronic exchange. (Id. at ¶ 39; bolded language added). The bolded language regarding "default quantity" above, the language at the heart of the dispute on the parties cross-motions, was one limitation TT used to distinguish prior art. (Id. at ¶ 40.)
1. The '132 and '411 Patents and Their Common Specification
TT owns the '411 patent, which issued from application no. 11/585,907, filed October 25, 2006. (Def. '411 56.1 Resp. ¶ 4.) The '411 patent is a continuation of application no. 09/590,692 (filed June 9, 2000), which in turn claims priority from provisional application no. 60/186,322 (filed March 2, 2000). (Id.) The '692 application eventually issued as the '132 patent, also owned by TT and also claiming priority from the '322 application. (Id.; TT '411 56.1 Resp. ¶ 5.) In short, the '411 and '132 patents claim priority from the same provisional application and the '411 ...