Case: 1:10-cv-00715 Document #: 373 Filed: 08/15/11 Page 1 of 25 PageID #:13649
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`TRADING TECHNOLOGIES
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`INTERNATIONAL, INC.
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`Plaintiff,
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`v.
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`BCG PARTNERS, INC.
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`Defendant.
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`Case No. 10 C 715
`(Consolidated with:
`10 C 716, 10 C 718,
`10 C 720, 10 C 721,
`10 C 726, 10 C 882,
`10 C 883, 10 C 884
`10 C 885, 10 C 929,
`10 C 931)
`
`Judge Virginia M. Kendall
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`DEFENDANTS’ MEMORANDUM OF LAW IN SUPPORT OF JOINT
`MOTION FOR SUMMARY JUDGMENT THAT THE ’056 PATENT IS
`INVALID UNDER 35 U.S.C. § 112 ¶ 1 FOR LACK OF WRITTEN
`DESCRIPTION
`
`
`
`
`TDA 1028
`CBM of U.S. Pat. No. 7,533,056
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`

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`Case: 1:10-cv-00715 Document #: 373 Filed: 08/15/11 Page 2 of 25 PageID #:13650
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ......................................................................................................... ii
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`Page(s)
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`I. PRELIMINARY STATEMENT ................................................................................................ 1
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`II. UNDISPUTED FACTS ............................................................................................................. 1
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`A. The Specification ......................................................................................................... 2
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`1. Priority View Embodiment ....................................................................................... 3
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`2. The Value/Quantity View Embodiment .................................................................... 6
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`3. Trading Pit View Embodiment .................................................................................. 7
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`B. The Originally Presented Claims ................................................................................... 8
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`C. The 2007 Amended Claims ......................................................................................... 10
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`III. ARGUMENT ......................................................................................................................... 12
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`A. The Written Description Requirement ........................................................................ 12
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`B. The ’056 Patent is Invalid for Lack of Written Description ........................................ 14
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`IV. CONCLUSION...................................................................................................................... 18
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`i
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`Case: 1:10-cv-00715 Document #: 373 Filed: 08/15/11 Page 3 of 25 PageID #:13651
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`TABLE OF AUTHORITIES
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`CASES (cid:3)
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`Page(s)
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`Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009) ........................... 14
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003) ...................... 13, 18
`
`Anascape, Ltd. v. Nintendo of America, 601 F.3d 1333 (Fed. Cir. 2010)......................... 15, 16, 18
`
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ................................................................ 12
`
`Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336
`
` (Fed. Cir. 2010) (en banc) .............................................................................. 12, 13, 14, 17
`
`Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 636 F.3d 1341 (Fed. Cir. 2011) .............. 14
`
`ICU Medical, Inc. v. Alaris Medical Systems, 558 F.3d 1368 (Fed. Cir. 2009) ............... 13, 16, 18
`
`In re NTP, Inc., No. 2010-1277, 2011 WL 3250466 (Fed. Cir. Aug. 1, 2011) ................ 14, 17, 18
`
`LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) ................... 13
`
`Lockwood v. American Airlines, 107 F.3d 1565 (Fed. Cir. 1997) ................................................ 13
`
`Martin v. Mayer, 823 F.2d 500 (Fed.Cir.1987) ............................................................................ 13
`
`New Railhead Mfg., LLC v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002) ......................... 14
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) ................. 13, 14, 17, 18
`
`Reiffin v. Microsoft Corp., 214 F.3d 1342 (Fed. Cir. 2000). .................................................. 12, 18
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`Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir. 2008) .......................... 14
`
`United States v. Diebold, Inc., 369 U.S. 654 (1962)..................................................................... 12
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`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991) ....................................................... 13
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`STATUTES AND RULES
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`35 U.S.C. § 112 ...................................................................................................................... passim
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`35 U.S.C. § 120 ............................................................................................................................. 14
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`Fed. R. Civ. P. 56(c) ..................................................................................................................... 12
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`
`ii
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`Case: 1:10-cv-00715 Document #: 373 Filed: 08/15/11 Page 4 of 25 PageID #:13652
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`The Undersigned defendants in consolidated patent infringement cases 10-
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`C-715, -716, -718, -720, -721, -882, -883, -884, -885 & 929 (“Defendants”) respectfully submit
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`this memorandum of law in support of their joint motion for summary judgment of invalidity of
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`United States Patent No. 7,533,056 (the “‘056 Patent”) (DSUF Ex. A) under 35 U.S.C. § 112, ¶
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`1.
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`I.
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`PRELIMINARY STATEMENT
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`This motion focuses on a single limitation of the ‘056 Patent:
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`… 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. (DSUF Ex. A, col.14:11-
`14)
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`This method step is recited in the sole independent claim of the ‘056 Patent (claim 1) and is
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`therefore also, by definition, incorporated into every dependent claim. 35 U.S.C. § 112, ¶ 4.
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`But no such step was disclosed in the parent patent application filed in 1999 from which
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`the ‘056 Patent claims priority, or in the 2006 continuation patent application which later issued
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`as the ‘056 Patent. To the contrary, the step first appeared when amended claims were filed in
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`2007, more than eight years after the parent patent application was filed. The ‘056 Patent is
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`invalid under § 112, ¶ 1 because its specification fails to provide a written description adequate
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`to show that the inventors were in possession of an invention that included the step of receiving a
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`user-selected default quantity to be used to determine a quantity for multiple orders at one or
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`more different price levels.
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`II.
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`UNDISPUTED FACTS
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`The ‘056 Patent issued on May 12, 2009 from U.S. Patent Application Serial No.
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`11/417,544 (the “’544 Application”). Certificates of Correction were issued on February 9,
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`1
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`2010, March 22, 2011, and April 19, 2011. (Defendants’ Rule 56.1 Statement of Undisputed
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`Facts [“DSUF”], ¶ 1)
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`The ’544 Application was filed in the United States Patent and Trademark Office
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`(“PTO”) on May 3, 2006 as a continuation of U.S. Patent Application Serial No. 09/289,550 (the
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`“’550 Application”), which was filed on April 9, 1999 and issued as U.S. Patent No. 7,212,999
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`on May 1, 2007. (DSUF, ¶ 2) The inventors listed on the ‘056 Patent are Richard W. Friesen
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`and Peter C. Hart. (DSUF, ¶ 3)
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`Friesen and Hart assigned their invention to Epit, Inc. in 1999. Epit, Inc. assigned it to
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`Hitachi, Ltd. in 2002, and Hitachi, Ltd. assigned it to Plaintiff Trading Technologies
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`International, Inc. (“TT”) in 2003. (DSUF, ¶ 4)
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`The specification of the ‘056 Patent as issued in 2009 is the same as the specification that
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`was set forth in the ’550 Application when it was filed in 1999, with the exception of a few
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`corrections which, TT told the PTO, were not substantive. (DSUF, ¶ 5) (cid:3)
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`A.
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`The Specification
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`The specification of the ‘056 Patent summarizes the “present invention” as “a user
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`interface for an electronic trading system that allows a remote trader to view trends in the orders
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`for an item, and provides the trading information in an easy to see and interpret graphical
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`format.” (DSUF, ¶ 6)
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`The specification further states that:
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`[I]n accordance with the present invention, each client terminal
`displays all of the outstanding bids and offers for an item, in
`contrast to the conventional systems and methods in which only
`the highest bid and lowest offer were known to the individual
`trader. This allows the trader to view trends in orders for an item,
`and thus better enables the trader to anticipate demand for the item.
`(DSUF, ¶ 7)
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`2
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`

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`The specification goes on to describe three alternative embodiments of the invention: the
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`“priority view” embodiment; the “value/quantity view” embodiment; and the “trading pit view”
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`embodiment. (DSUF, ¶ 8) (cid:3)(cid:3)(cid:3)
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`1. Priority View Embodiment
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`In the priority view embodiment, orders are displayed at a location corresponding to their
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`value (e.g., bid or offer price) with respect to a “value axis.” (DSUF, ¶ 9) (cid:3)(cid:3)
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`Figure 3a of the ‘056 Patent is an illustration of the priority view embodiment:
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`(DSUF, ¶ 10) (cid:3)(cid:3)(cid:3)
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`In Figure 3a, the value axis appears on the right and is numbered 332, icons representing
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`bids are numbered 300(_), and icons representing offers are numbered 304(_). The rightmost
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`bid 300(1) is the best (highest) bid and the rightmost offer 304(1) is the best (lowest) offer. The
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`(cid:3)(cid:3)
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`3
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`top edge of the bid icon and the bottom edge of the offer icon are aligned with their respective
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`values on the value axis. The relative quantity of each order is represented by the vertical size of
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`the icon, with icons having a larger size representing larger orders. Where there is more than
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`one order in the market at a given value – for example, bids 300(7), 300(6), and 300(5) -- they
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`are “stacked,” one on top of the other, based on their priority in time (i.e., the time order in which
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`they were entered). (DSUF, ¶ 11) (cid:3)(cid:3)
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`A trader can place orders in the priority view embodiment by using either the “order task
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`bar” 328 at the bottom of the screen, or the “tokens” 320 and 324 at the left of the screen.
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`(DSUF, ¶ 12) (cid:3)(cid:3)
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`If the trader opts to use the order task bar 328, “[t]he options to specify value and
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`quantity of either a bid or offer, and the expiration period are provided. After the information is
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`entered, the trader selects Place Order, and the order is submitted to the transaction server … and
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`an offer or bid icon 304, 300 is generated and displayed at the desired location at the desired
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`size.” (DSUF, ¶ 13) (cid:3)(cid:3)
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`Alternatively, the trader can place a bid or offer by selecting the tokens 320 or 324
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`respectively using a pointing device. “After being selected, the trader adjusts the size of the offer
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`or bid token 324, 320 until the size of the token matches the desired quantity of the order. . . .
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`Next, the token is dragged to a location on the screen which corresponds to the desired value of
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`the order.” When the trader releases the pointing device button, a pop-up window showing the
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`order information appears which allows the trader to modify the order, cancel the order, or
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`submit it as shown. (DSUF, ¶ 14) (cid:3)(cid:3)
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`Figure 6 of the ‘056 Patent, a flow chart illustrating “an embodiment of a method of
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`generating an order icon in accordance with the priority view,” shows a “specified” quantity and
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`4
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`

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`a price being received for each order 604 and contains no step of receiving a default quantity
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`input by the user to be used to determine a quantity for plurality of orders (i.e., more than one
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`order) at one or more price levels:
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`
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`(DSUF, ¶ 15)
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`The text accompanying Figure 6 states that an order type, value, and quantity is specified
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`for each order, and that “[t]he quantity … is specified by the trader either entering the number
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`directly into the order task bar or by adjusting the size of the order token.” (DSUF, ¶ 16) (cid:3)(cid:3)
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`The specification’s description of order entry in the priority view embodiment does not
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`include the term “default quantity” and contains no disclosure that a trader may input a “default
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`5
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`quantity” to be used to determine a quantity for multiple orders to be placed at one or more price
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`levels or that the invention can receive such an input. (DSUF, ¶¶ 17-18) (cid:3)(cid:3)(cid:3)
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`2. The Value/Quantity View Embodiment
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`The value/quantity view embodiment, shown in Figure 4 of the ‘056 Patent reproduced
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`below, “illustrates the market for the item using a first axis of values 408 and a second axis 412
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`for quantity. Thus, the location of each offer icon 400 and each bid icon 404 represents the value
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`for the offer or bid and the quantity for which the offer or bid is made.”
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`(DSUF, ¶ 19) (cid:3)(cid:3)
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`Orders in the value/quantity embodiment “are placed by selecting an offer token 416 or a
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`bid token 417 and moving the token to a location which corresponds to the desired quantity and
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`value.” (DSUF, ¶ 20) (cid:3)(cid:3)
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`(cid:3)
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`6
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`In another portion of the specification, it is stated that an order may be generated by “the
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`trader entering in the information directly or dragging an order token to the proper location and
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`confirming the order.” (DSUF, ¶ 21) (cid:3)(cid:3)
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`The specification’s description of order entry in the value/quantity view embodiment
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`does not include the term “default quantity” and contains no disclosure that a trader may input a
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`“default quantity” to be used to determine a quantity for multiple orders to be placed at one or
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`more price levels or that the invention can receive such an input. (DSUF, ¶¶ 22-23)
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`3. Trading Pit View Embodiment
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`The trading pit view embodiment, illustrated in Figure 9 of the ‘056 Patent reproduced
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`below, “displays trader icons for each trader and positions the trader icons reflective of the
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`activity level of the trader. Floor brokers and other bystanders are also displayed and identified
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`to allow the trader to understand at a glance the respective positions and activity of all users
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`currently connected to the transaction server for that trading pit.”
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`(DSUF, ¶ 24) (cid:3)(cid:3)
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`(cid:3)
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`7
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`In the pit view embodiment, the pit icon 916 is a series of concentric polygons, where
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`each polygon represents a level of trading activity. Icons 912 representing more active traders
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`are placed closer to the center. This view is used in conjunction with the priority or
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`value/quantity view and no independent order entry mechanism is described. (DSUF, ¶ 25) (cid:3)(cid:3)
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`The specification’s description of the trading pit view embodiment does not include the
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`term “default quantity” and contains no disclosure that a trader may input a “default quantity” to
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`be used to determine a quantity for multiple orders to be placed at one or more price levels or
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`that the invention can receive such an input. (DSUF, ¶¶ 26-27)
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`B.
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`The Originally Presented Claims
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`When it was filed in May 2006, the ‘544 Application included 58 claims, many of them
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`directed to the three methods of order entry described in the specification and summarized
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`above, in which the user specifies a price and quantity for each individual order either by (1)
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`directly entering the order information, (2) by adjusting the size of a token to reflect the desired
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`quantity and positioning it on a value axis (priority view embodiment only), or (3) by placing a
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`token at a position that corresponds to both the desired price and quantity on a price-quantity grid
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`(value/quantity embodiment only). (DSUF, ¶ 28) (cid:3)(cid:3)
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`None of the originally presented claims included the term “default quantity” or recited
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`the later-claimed step of receiving a default quantity input by the user to be used to determine a
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`quantity for a plurality of orders at one or more different price levels. (DSUF, ¶ 29) (cid:3)(cid:3)
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`Originally presented independent claim 1 generally covered display aspects of the
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`priority view embodiment:
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`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:
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`8
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`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. (DSUF, ¶ 30)
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`Claims depending directly or indirectly from originally presented claim 1 covered order
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`entry aspects of the priority view embodiment described in the specification – either resizing an
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`order token to reflect quantity and dragging it to the desired price level, or alternatively directly
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`entering order information and the computer then generating and placing the appropriate-sized
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`token. (DSUF, ¶ 31)
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`Dependent claims 2 and 3 as originally presented recited:
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`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.
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`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. (DSUF, ¶ 32)
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`Originally presented dependent claim 16 recited:
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`16. The method of claim 1 further comprising:
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`receiving a new order for a quantity of items for a specified value;
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`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. (DSUF, ¶ 33)
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`Originally presented independent claim 28 generally covered aspects of the
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`value/quantity embodiment, including the method of placing an order by moving it to a position
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`“with respect to a value axis and a quantity axis which corresponds to the desired value and
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`quantity for the order”:
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`9
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`28. A method for placing an order for an item at a desired value for a
`desired quantity in a system in which remote terminals display all
`outstanding orders for the item wherein orders comprise bids and
`offers, and a transaction server receives orders transmitted by each
`remote terminal and communicates the received orders to all
`remote terminals, comprising:
`
`displaying at least one order token;
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`receiving a selection for an order token; and
` moving the order token to a user specified location with
`respect to a value axis and a quantity axis which
`corresponds to the desired value and quantity for the order.
`(DSUF, ¶ 34)
`
`
`
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`The originally presented claims do not include the term “default quantity” and contain no
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`disclosure that a trader may input a “default quantity” to be used to determine a quantity for
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`multiple orders to be placed at one or more price levels or that the invention can receive such an
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`input. (DSUF, ¶¶ 35-36)
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`C.
`
` The 2007 Amended Claims
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`On July 6, 2007, shortly after the ‘999 patent had issued with claims directed to the
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`priority view embodiment and the two methods of order entry summarized in section II-A-2
`
`above, TT presented a wholly new set of 15 claims (the “2007 Amended Claims”) which, for the
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`first time, used the term “default quantity” and introduced for the first time the step of receiving
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`a user-selected default quantity to be used to determine a quantity for a plurality of orders at one
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`or more price levels. (DSUF, ¶ 37-38)
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`The 2007 amendment to claim 1 is reproduced below:
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`10
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`(DSUF, ¶ 39)
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`TT relied heavily on the newly added limitation beginning “receiving a user input
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`indicating a default quantity . . .” to distinguish prior art that the PTO cited against the claims.
`
`(DSUF, ¶ 40) With only immaterial additional amendments, the 2007 Amended Claims issued
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`as claims 1-15 of the ’056 Patent. (DSUF, ¶ 41)
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`11
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`III. ARGUMENT
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`Summary judgment is proper when no genuine issue as to any material fact exists and the
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`movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). Although inferences are
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`drawn and facts are viewed in the light most favorable to the non-movant, the mere existence of
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`some factual dispute will not prevent an otherwise proper summary judgment from being
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`granted; only genuine disputes over material facts will defeat summary judgment. United States
`
`v. Diebold, Inc., 369 U.S. 654, 655 (1962); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-
`
`48 (1986).
`
`A.
`
`The Written Description Requirement
`
`Section 112, ¶ 1 of the Patent Act provides as follows:
`
`The specification shall contain a written description of the
`invention, and of the manner and process of making and using it, in
`such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most
`nearly connected, to make and use the same, and shall set forth the
`best mode contemplated by the inventor of carrying out his
`invention.
`
`The Federal Circuit, sitting en banc, recently confirmed long-standing case law that this
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`paragraph contains two separate description requirements: it requires a description of “the
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`invention” and it requires a description of “the manner and process of making and using it.”
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`Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (en banc).
`
`The first requirement is referred to as “written description.”
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`The written description requirement ensures that the scope of the claimed invention “does
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`not overreach the scope of the inventor’s contribution to the field of art as described in the patent
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`specification.” Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000). More
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`specifically – and especially pertinent in this case – it prevents a patentee “from later asserting
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`12
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`that he invented that which he did not; the applicant for a patent is therefore required to ‘recount
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`his invention in such detail that his future claims can be determined to be encompassed within
`
`his original creation.’” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed.
`
`Cir. 2003) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). This
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`requirement serves to “‘ensure fair play in the presentation of claims after the original filing date
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`and to guard against manipulation of that process by the patent applicant.’” PowerOasis, Inc. v.
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`T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citation omitted). It also provides a
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`safeguard against sweeping, overbroad claims that, if upheld, would “entitle an inventor to a
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`claim scope far greater than what a person of skill in the art would understand the inventor to
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`possess . . . .” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir.
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`2005). Finally, “[t]his requirement protects the quid pro quo between inventors and the public,
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`whereby the public receives ‘meaningful disclosure in exchange for being excluded from
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`practicing the invention for a limited period of time.’” ICU Medical, Inc. v. Alaris Medical
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`Systems, 558 F.3d 1368, 1377 (Fed. Cir. 2009).
`
`The written description requirement focuses on whether the disclosure apprises one
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`skilled in the art that the inventor actually was in possession of, and had invented, the claimed
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`invention as of an earlier application date. See Ariad, 598 F.3d at 1351; PowerOasis, 522 F.3d at
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`1306. Importantly, under the written description requirement “[t]he question is not whether a
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`claimed invention is an obvious variant of that which is disclosed in the specification,”
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`Lockwood v. American Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997), nor is it “a question of
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`whether one skilled in the art might be able to construct the patentee’s device from the teachings
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`of the disclosure. . . . Rather, it is a question whether the application necessarily discloses that
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`particular device.” Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir.1987) (emphasis in original);
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`see also PowerOasis, 522 F.3d at 1310 (“Obviousness simply is not enough; the subject matter
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`must be disclosed to establish possession.”). Section 112, ¶ 1 “requires that the written
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`description actually or inherently disclose the claim element.” Id., at 1306-07. Where, as here,
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`the patent at issue claims priority under 35 U.S.C. § 120 to an earlier application, the earlier
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`application must provide the requisite written description. Agilent Technologies, Inc. v.
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`Affymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (“The written description doctrine
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`prohibits new matter from entering into claim amendments, particularly during the continuation
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`process.”).
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`B.
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`The ’056 Patent is Invalid for Lack of Written Description.
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`Compliance with the written description requirement is a question of fact, “but it is
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`amenable to summary judgment in cases where no reasonable fact finder could return a verdict
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`for the non-moving party.” PowerOasis, 522 F.3d at 1307. The adequacy of the written
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`description requirement is properly assessed “from the face of the application.” New Railhead
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`Mfg., LLC v. Vermeer Mfg. Co., 298 F.3d 1290, 1295 (Fed. Cir. 2002); Centocor Ortho Biotech,
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`Inc. v. Abbott Laboratories, 636 F.3d 1341, 1348 (Fed. Cir. 2011); see also Ariad, 598 F.3d at
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`1350 (decision based upon “objective inquiry into the four corners of the specification”).
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`Because there is nothing in the prosecution history to suggest that the PTO made a “considered
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`judgment” that the claims of the ‘056 Patent are supported by the written description, the burden
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`is on TT to show that there is such support. See In re NTP, Inc., No. 2010-1277, 2011 WL
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`3250466, at *8 (Fed. Cir. Aug. 1, 2011); PowerOasis, 522 F.3d at 1304-05; Technology
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`Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008).
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`In this case, however, it is apparent from the text of the specification filed in 1999 that
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`the patentees claimed invention of only methods of order entry in which a user specifies a
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`quantity and a price for each individual order either by entering that information directly in an
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`“order task bar,” by adjusting the size of a token to reflect the desired quantity and positioning it
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`on a value axis in the priority view embodiment, or by placing a token at a position that
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`corresponds to both the desired price and quantity on a price-quantity grid in the value/quantity
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`embodiment.
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`By contrast, the ’056 Patent’s claims recite an entirely different method of order entry, in
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`which the user input “indicat[es] a default quantity to be used to determine a quantity for each of
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`a plurality of orders to be placed by the user at one or more price levels.” Neither the term
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`“default quantity,” nor the concept of receiving a user-input default quantity to be used to
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`determine the quantity for multiple orders at one or more price levels, appears anywhere in the
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`specification first filed in 1999 or even in the claims that were filed with the ‘544 Application in
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`2006. Instead, this method appears for the first time only in the 2007 Amended Claims.
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`A number of recent Federal Circuit cases that invalidated patents for failure to meet the
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`written description requirement are instructive. In Anascape, Ltd. v. Nintendo of America, 601
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`F.3d 1333 (Fed. Cir. 2010) the patentee asserted claims to a video game system in which two or
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`more input devices (joysticks, trackballs, etc.) combined to operate in “six degrees of freedom”
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`to translate user hand movements into simulated three-dimensional linear and rotational
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`movement of objects on a screen. The patentee relied for priority on a parent patent application
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`that disclosed video game systems that employed a single input device by itself operating in “six
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`degrees of freedom” to achieve such screen effects. Notably, the Federal Circuit rejected the
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`patentee’s argument that the specification of the parent application is “simply is the preferred
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`embodiment, and that the inventor did not disclaim the broader scope,” noting that a patent is not
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`“presumed to support variants that are not described.” It further rejected expert testimony
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`offered by the patentee (before a jury which had found that the patent met the written description
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`requirement) that the later-filed claims were supported by the original disclosure, stating that
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`such testimony “cannot override the objective content of these documents.” 601 F.3d at 1338-39.
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`Finally, in overturning the jury verdict and concluding that the only reasonable reading of the
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`original disclosure was that it was directed to a single input device, the Court stated:
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`Whether or not the inventor could have described the ‘525
`invention more broadly, “[i]t is not sufficient for purposes of the
`written description requirement of § 112 that the disclosure, when
`combined with the knowledge in the art, would lead one to
`speculate as to modifications that the inventor might have
`envisioned, but failed to disclose.”
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`601 F.3d at 1340 (citation omitted).
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`The Federal Circuit affirmed a summary judgment of invalidity for lack of adequate
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`description in ICU Medical, supra. ICU held a patent on a valve that permitted medical
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`personnel to add fluids to a patient’s main IV line with an implement such as a syringe. The
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`original disclosure upon which ICU claimed priority described embodiments of the valve which
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`included a pointed “spike” for piercing an IV line. In litigation against Alaris, however, it
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`asserted claims that did not require a spike. There, as here, the asserted claims “were not filed
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`with the original application; rather they were added years later during prosecution.” 558 F.3d at
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`1377. ICU argued, inter alia, that the original disclosure met the written description
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`requirement because the specification showed a “preslit trampoline seal” which, as a person of
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`ordinary skill in the art would recognize, would allow fluid transmission without further piercing
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`by a spike. The Court rejected ICU’s argument: “It is not enough that it would have been
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`obvious to a person of ordinary skill that a preslit trampoline seal could be used without a spike. .
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`. . ICU has failed to point to any disclosure in the patent specification that describes a spikeless
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`valve with a preslit trampoline seal.” 558 F.3d at 1379 (emphasis added).
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`PowerOasis, supra, is another case in which the Federal Circuit affirmed a summary
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`judgment of invalidity based upon inadequate written description. The ori