Analyzing the interplay between claim construction and the written description requirement, the U.S. Court of Appeals for the Federal Circuit reversed and remanded a lower court’s summary judgment of invalidity for failure to comply with the written description requirement, finding that prior claim construction rulings do not control compliance with the written description requirement.  Trading Techs. Int’l, Inc. v. Open E Cry, LLC, Case No. 12-1583 (Fed. Cir., Aug. 30, 2013) (Lourie, J.). 

Trading Technologies (TT) filed a complaint alleging infringement of four of its patents relating to electronic trading in commodities.  The patents claimed priority to an earlier-filed parent patent.  Three of the asserted patents share a common written description, while the other is a continuation-in-part that contains substantial new disclosure. 

The district court entered summary judgment for the defendants, holding all four patents to be invalid for failure to comply with the written description, premised on the previous claim construction ruling in eSpeed.  In eSpeed, the Federal Circuit held that “static,” as used in the claims of the earlier-filed parent patent on which the four asserted patents rely for priority, referred to a display of price columns that does not change positions unless manually re-centered.  The term expressly excluded displays that re-center automatically.  In the asserted patents, TT amended the claims by removing the term “static” from references to the price column display.  In the CIP patent, TT provided additional disclosure aimed at redefining and broadening the term “static.”  The claims of the CIP patent still include the term “static.” 

The defendants argued that the eSpeed decision was dispositive to the present dispute because the claim construction analysis turned on the same basic issue of whether the written description disclosed a display of price columns that move through means other than manual re-centering, such as automatic re-centering.  The district court entered summary judgment of invalidity.

In reversing the district court, the Federal Circuit emphasized the difference in purpose of claim construction and the written description requirement.  Claim construction, while guided by the specification, focuses only on defining a discrete claim term in order to better ascertain the boundaries of the claims.  In contrast, the written description focuses on preventing patentees from claiming more than they have invented and disclosed to the public through the written description. 

In eSpeed, the Federal Circuit determined the best construction of a single disputed claim term.  This analysis did not conclusively find that the same written description could never support any claim to a display with a non-static price axis.  Therefore, eSpeed did not address whether the written description of the asserted patents supported a non-static price axis.  The Court also held that, in addition to the problems of analysis of the lower courts surrounding the other three patents, the analysis of the CIP patent suffered the additional problem of ignoring additional disclosure that is material to the present issue. 

The Court also reversed a grant of summary judgment of prosecution history estoppel concerning the CIP patent.  It held that the CIP patent’s additional and extensive disclosure that was not present in the earlier-filed parent patent directly contradicted the prosecution-based surrenders at issue in eSpeed.