Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 1 of 35 PageID #:21038
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`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
`
`) ) ) ) ) ) ) ) ) ) ) )
`
`TRADING TECHNOLOGIES
`INTERNATIONAL, INC.
`
` Plaintiff,
` v.
`
`BCG PARTNERS, INC.
`
` Defendant.
`
`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.
`
`2.
`
`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
`
`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
`
`TDA 1030
`CBM of U.S. Pat. No. 7,533,056
`
`

`

`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 2 of 35 PageID #:21039
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`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
`
`2
`
`

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`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 3 of 35 PageID #:21040
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`that TT should be barred from asserting that products with price axes that move automatically
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`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.
`
`2.
`
`3.
`
`4.
`
`grants TT’s cross-motion for summary judgment (Doc. 393) and denies the
`moving defendants’ motion (Doc. 372) with respect to the ‘056 patent;
`
`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);
`
`denies as moot Tradestation’s motion for summary judgment (Docs. 178/181)
`concerning the priority issue of the ‘411 patent;
`
`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 Claims1
`
`TT owns the ‘056 patent, issued by the PTO on May 12, 2009 from application no.
`
`2
`11/417,544, filed on May 3, 2006. (TT ‘056 56.1 Resp. ¶ 1.) The ‘544 application was a
`
`1
`
`TT and the moving defendants filed expert declarations in support of their cross-motions on the issue of
`whether the specific claim language at issue in the ‘056 patent met the written description requirement. Because the
`Court determines below that, as a matter of law based on the specification itself, no reasonable fact-finder could find
`that the language does not meet the written description requirement, the Court does not consider those expert
`declarations. See Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333, 1339 (Fed. Cir. 2010) (setting aside an
`expert’s conclusion because it could not “override the objective content” of the specification at issue).
`
`2
`
`The parties filed two separate sets of Local Rule 56.1 statements: one set pertaining to the ‘056 patent and
`the other set pertaining to the eSpeed Decision and the ‘411 patent.
`
`3
`
`

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`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 4 of 35 PageID #:21041
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`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:
`
`4
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`

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`(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:
`
`5
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`

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`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 6 of 35 PageID #:21043
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`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;
`
`3
`TT ‘056 56.1 Resp. ¶ 14.) 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.) 4
`
`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
`
`3
`
`The trader can also enter an order without tokens by using the order task bar at the bottom of the screen.
`(TT ‘056 56.1 Resp. ¶ 16.)
`
`4
`
`The specification describes two other “views” in addition to the priority view, namely the “value/quantity
`view” and the “trading pit view.” (TT ‘056 56.1 Resp. ¶¶ 8, 19.) Unlike the priority view, these views do not use
`the size of tokens to indicate order quantity. For instance, the value/quantity view uses bid and offer tokens, but the
`trader selects the quantity by putting the token on a quantity axis, not by resizing the token. (Id. at ¶¶ 19-20.) The
`trading pit view, per the specification, provides a visual representation of the activity level of various traders in a pit,
`which helps a trader determine how volatile prices will be. (See Doc. 396-1 at Col. 12; TT ‘056 56.1 Resp. ¶¶ 24-
`25.) For the purposes of the cross-motions, it is sufficient to note for these other views, the specification does not
`use the term “default quantity” and these views do not utilize re-sizable tokens to put in order quantity. (Id. at ¶¶ 20,
`22, 26.)
`
`6
`
`

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`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 7 of 35 PageID #:21044
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`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
`
`7
`
`

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`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
`
`8
`
`

`

`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 9 of 35 PageID #:21046
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`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.)
`
`B.
`
`‘411 Patent5
`
`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 patent at
`
`issue has, for all relevant purposes, the same specification as the ‘132 patent at issue in the eSpeed
`
`5
`
`The Court ignored the moving defendants’ “replies” to TT’s responses to the moving defendants’ Local
`Rule 56.1 facts. (See Doc. 412.) Local Rule 56.1 does not provide for replies and only permits the moving party to
`put facts before the Court once. See L.R. 56.1; Koszola v. Bd. of Ed. of Chicago, 385 F.3d 1104, 1109 (7th Cir.
`2004) (district court has broad discretion to require compliance with Local Rule 56.1); see also Woods v. Von Maur,
`Inc., No 09 C 7800, 2011 W L 3796724, at *4 (N.D. Ill. Aug. 24, 2011) (Kendall, J.); Trepanier v. Davidson, No. 03
`C 6687, 2006 W L 1302404 at *1 n.3 (N.D. Ill. M ay 5, 2006) (noting it is improper to file replies within the Local
`Rule 56.1 factual framework).
`
`9
`
`

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`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 10 of 35 PageID #:21047
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`Decision. (Id. at ¶¶ 6, 23.)
`
`As general background, the common specification states:
`
`Specifically, the present invention is directed to a graphical user
`interface for displaying the market depth of a commodity traded in a
`market, including 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. at ¶¶ 7, 11.) In other words, the specification discloses that the software has a graphical interface
`
`that dynamically displays bids (offers to buy) and asks (offers to sell) in a market for a particular
`
`item. (Id. at ¶ 8.) The following figures, reproduced from the common specification, are helpful:
`
`10
`
`

`

`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 11 of 35 PageID #:21048
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`(Doc. 380-1, ‘132 patent spec., at 6-7.) In the part of the specification that describes the figures, it
`
`states:
`
`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). The values in the Bid and Ask columns,
`however, are dynamic; that is, they move up and down (in the vertical
`example) to reflect the market depth for the given commodity.
`
`(TT ‘411 56.1 Resp. ¶ 12; ‘132 patent spec. at col. 7, ll. 46-51.) Referencing the difference between
`
`figure 3 and figure 4 above, the specification explains that in latter, which reflects a market change,
`
`“the price column remained static, but the corresponding bids and asks rose up the price column.”
`
`6
`(Id. at col. 8, ll. 45-48.) As discussed in the specification, displays like figures 3 and 4 are easier
`
`for traders to follow than displays that always kept the inside market in the same squares on a grid.
`
`(Def. ‘411 56.1 Resp. ¶¶ 22-25; ‘132 Patent Spec. at Fig. 2; Col. 6, ll. 60-65.) Specifically, displays
`
`like those in figures 3 and 4 “fluctuate[] logically up or down . . . as the market prices [sic]
`
`fluctuates. This allows the trader to place trade orders quickly and efficiently.” (Def. ‘411 56.1
`
`Resp. ¶ 26.)
`
`As for the re-centering feature mentioned in the above quote, the only explicit example of
`
`re-centering in the specification reads as follows:
`
`As the market ascends or descends the price column, the inside
`[7]
`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
`
`6
`
`The ‘411 patent claims priority from the ‘322 provisional application, which describes the price axis as
`follows: “The inside market and market depth ascend and descend as prices in the market increase and decrease. For
`example, [when the inside market changes,] [t]he price column remained static, but the corresponding bids and asks
`rose up the price column.” (Doc. 427, TT ‘411 Resp. Add’l Facts ¶ 4.)
`
`7
`
`As used in the specification, the “inside market” refers to the highest bid and lowest offer for the particular
`item. For example, the 1020 and 1101 notations in figures 3 and 4 above indicate the inside market.
`
`11
`
`

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`addresses this problem with a one-click centering feature. With a
`single click . . . the system will re-center the inside market on the
`trader’s screen.
`
`(TT ‘411 56.1 Resp. ¶ 13; Def. ‘411 56.1 Resp. ¶ 15.) Similarly, provisional application ‘322, from
`
`which the ‘132 and ‘411 patents claim priority, states in reference to figures identical to figures 3 and
`
`4:
`
`The inside market and market depth ascend and descend as prices in
`the market increase and decrease. [After the market change, the] price
`column remained static, but the corresponding bids and asks rose up
`the price column.
`
`(Id. at ¶ 16; Doc. 395-1, ‘322 app., at 53, 58-59.) The provisional application also provides, as a
`
`separate innovation, the one-click re-centering described in the common specification. (Def. ‘411
`
`56.1 Resp. ¶ 16.)
`
`The claims of the ‘132 patent, in turn, all have the limitation of a “static display of prices.”
`
`(TT ‘411 56.1 Resp. ¶ 14.) For instance, claim 1 of the ‘132 patent reads:
`
`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 devises to send trade orders, each area
`
`12
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`

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`corresponding to a price of the static display of prices.
`
`(Doc. 380-1, Ex. 1, ‘132 patent, col. 12, ll. 2-21.) On the other hand, the claims of the ‘411 patent,
`
`after a number of application amendments filed by TT that removed references to static prices, do
`
`not use “static” as a limitation on the type of price axis disclosed. (TT ‘411 56.1 Resp. ¶¶ 25-30.)
`
`Rather, for the ‘411 claims, TT replaced the references to static with language that requires that the
`
`bid and ask indicators to move relative to the price axis, a concept TT calls “relative movement.”
`
`(Def. ‘411 56.1 Resp. ¶ 27.) As an example, one of the two independent claims in the ‘411 patent
`
`states, in part:
`
`A method of displaying market information relating to and facilitating
`trading of a commodity being traded on an electronic exchange, the
`method comprising:
`
`receiving, by a computing device, market information for a
`commodity from an electronic exchange, the market
`information comprising an inside market with a current
`highest bid price and a current lowest ask price;
`
`displaying, via the computing device, a bid display region
`comprising a plurality of graphical locations, each graphical
`location in the bid display region corresponding to a different
`price level of a plurality of price levels along a price axis.
`
`(Doc. 380-1, Ex. 10, ‘411 patent, col. 12, ll. 23-34; TT ‘411 56.1 Resp. ¶¶ 32-33, 35.) 8
`
`According to TT, the price axis claimed by the ‘411 patent is the column labeled 1005 in
`
`figure 3 above. (TT ‘411 Facts ¶ 7.) As with the ‘132 patent, in the ‘411 patent the bid indicators
`
`appear at column 1003, the ask indicators in column 1004, and the inside market at 1020. (Def. ‘411
`
`8
`
`The other independent claim, no. 26, concerns a “[c]omputer readable medium having stored therein
`instructions for execution by a computer to perform” various method steps, including “displaying, via the computing
`device, a bid display region comprising a plurality of graphical locations, each graphical location in the bid display
`region corresponding to a different price level of a plurality of price levels along a price axis.” (TT ‘411 56.1 Resp.
`¶¶ 32-34.)
`
`13
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`

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`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 14 of 35 PageID #:21051
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`56.1 Resp. ¶¶ 8-10.) In figure 4, intended to show an example of a market movement, the inside
`
`market has moved up the price axis, as denoted by 1101. (Def. ‘411 56.1 Resp. ¶¶ 11-13.) The ‘411
`
`patent’s examiner, who also examined the ‘132 patent, never rejected the price axis claims in the
`
`‘411 patent for lack of a written description. (Id. at ¶¶ 28-29.)
`
`2.
`
`Other Brumfield Family Patents
`
`The ‘132 patent is one of what the parties refer to as TT’s “Brumfield family” of patents. (TT
`
`‘411 56.1 Resp. ¶ 52.) Every claim of the ‘132 patent either recites the limitation “static display of
`
`prices” or depends on a claim that recites the same. (Id.; Def. ‘411 56.1 Resp. ¶ 46.) Patent no.
`
`6,766,304 (‘304 patent), which issued on July 20, 2004, is a divisional of the ‘132 patent and each
`
`of its claims either recites the limitation “static price axis” or depends on a claim that does. (TT ‘411
`
`56.1 Resp. ¶ 53; Def. ‘411 56.1 Resp. ¶ 47.) For instance, the first independent claim of the ‘304
`
`patent reads as follows:
`
`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
`location 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
`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;
`
`14
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`

`

`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 15 of 35 PageID #:21052
`
`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 . . . .
`
`(Doc. 380-3, Ex. 16, ‘304 patent spec. col. 12 ll. 35-65.)
`
`Patent nos. 7,725,382 (‘382 patent), and 7,813,996 (‘996 patent), both of which issued in
`
`2010, are continuations of the ‘132 patent. (TT ‘411 56.1 Resp. ¶¶ 54-55.) Patent no. 7,685,055
`
`(‘055 patent), which also issued in 2010, is a continuation-in-part of the ‘132 patent. (Id. at ¶ 56.)
`
`Because it is only a continuation-in-part of the ‘132 patent, the ‘055 patent has a different
`
`specification than the ‘132 and ‘304 patents, including matter that explicitly relates to automatic re-
`
`centering. (Def. ‘411 56.1 Resp. ¶ 38.) Each of the claims of ‘382, ‘996 and ‘056 patents has the
`
`limitation “static price axis,” or depends on a claim that does. (TT ‘411 56.1 Resp. ¶¶ 54-56; Def.
`
`‘411 56.1 Resp. ¶¶ 30, 34, 37.) For instance, one of the two independent claims of the ‘382 patent
`
`reads, in part:
`
`A method of canceling an order entered for a commodity at an
`electronic exchange, the method comprising:
`
`* * *
`
`dynamically displaying by a computing device a first indicator
`at a first area corresponding to a first price level along a static
`price axis, the first price level along a static price axis, the
`first indicator being associated with the current highest bid
`price for the commodity;
`
`15
`
`

`

`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 16 of 35 PageID #:21053
`
`dynamically displaying by the computing device a second
`indicator at a second area corresponding to a second price
`level along the static price axis, the second indicator being
`associated with the current lowest ask price for the
`commodity;
`
`updating the dynamic display of the first and second
`indicators such that at least one of the first and second
`indicators is moved relative to the static price axis to a
`different area corresponding to a different price level along
`the static price axis in response to the receipt of new data
`representing a new inside market;
`
`displaying by the computing device an order entry region
`comprising a plurality of areas, each area corresponding to
`price level along the static price axis and each area being
`selectable by a user input device so as to receive a command
`to send an order message based on the trade order parameter
`and the price level that corresponds with the selected area to
`the electronic exchange;
`
`displaying by the computing device an entered order indicator
`at a location corresponding to a particular price level along
`the static price axis, the entered order indicator being
`associated with an order entered at the electronic exchange at
`the particular price level . . . .
`
`(Doc. 380-3, Ex. 17, col. 12, ll. 20-55.) The claims of the ‘996 patent and ‘055 patent use the term
`
`“static price axis” in the same way as the ‘382 patent. (See Doc. 380-3, Ex. 18, ‘996 patent cols. 11-
`
`12, 14; Doc. 380-4, Ex. 19, ‘055 patent cols. 34-36.)
`
`During the prosecution of the ‘382 patent, the patent examiner never corrected the following
`
`summary of his communication with TT:
`
`The Examiner acknowledged that the term “static” is not limited to
`situations where the price levels do not change positions unless a
`manual recentering command is received, but includes situations
`where the price levels change positions in response to either a
`manual (under the control of the user) or automatic (outside of the
`user’s control) re-positioning command.
`
`16
`
`

`

`Case: 1:10-cv-00715 Document #: 448 Filed: 02/09/12 Page 17 of 35 PageID #:21054
`
`(Def. ‘411 56.1 Resp. ¶ 33.) Similarly, during the prosecution history of the ‘996 patent, the
`
`Examiner did not correct the following summary provided by TT:
`
`[T]hroughout the extensive file history of this and related
`applications, including a thorough reexamination confirming
`patentability of the ‘132 and ‘304 patents, [TT] has not disclaimed or
`disavowed (e.g., to distinguish over cited art or for any other reason)
`a ‘static’ price axis in which there is a possibility that the price levels
`change positions automatically. Indeed, the fact that a price axis can
`be re-centered is indicative that the price axis is static, but a static
`price axis is not defined by how it is re-centered.
`
`(Def. ‘411 56.1 Resp. ¶ 36.) During the prosecution of the ‘055 patent, TT commented that the static
`
`price axis “is automatically repositioned when a designated price is within a designated number of
`
`price levels from a lowest or highest value along the static price axis of the displayed plurality of
`
`price levels.” (Id. at ¶ 39, Doc. 395-16 at 8.) TT concedes that the Federal Circuit issued its eSpeed
`
`Decision after the examiner allowed the claims of the ‘382 patent. (TT ‘411 Resp. Add’l Facts ¶ 9.)
`
`3.
`
`The eSpeed Decision9
`
`a.
`
`Claim Construction
`
`In 2004, TT brought suit in this District against various defendants (including some of the
`
`defendants in the present action), asser