United States Court of Appeals
`for the Federal Circuit
`______________________
`
`TRADING TECHNOLOGIES INTERNATIONAL,
`INC.,
` Plaintiff-Appellant,
`
` v.
`
` OPEN E CRY, LLC, AND OPTIONSXPRESS
`HOLDINGS, INC.,
` Defendants-Appellees,
`
`AND
`
` TRADESTATION SECURITIES, INC., AND
`TRADESTATION GROUP, INC.,
`Defendants-Appellees,
`
`AND
`
` IBG, LLC, THINKORSWIM GROUP, INC.,
`TD AMERITRADE, INC., TD AMERITRADE
`HOLDING CORP., AND INTERACTIVE BROKERS,
`LLC,
`Defendants-Appellees,
`
`AND
`
` CQG, INC., AND CQGT, LLC,
`Defendants-Appellees,
`
`AND
`
`
`
`TRADING TECH EXHIBIT 2006
`TD Ameritrade v. Trading Technologies
`CBM2014-00136
`
`Page 1 of 26
`
`

`
`2
`
` TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
`
`FUTUREPATH TRADING LLC,
`SUNGARD DATA SYSTEMS, INC.,
` SUNGARD INVESTMENT VENTURES LLC, AND
`GL TRADE AMERICAS, INC.,
`Defendants-Appellees,
`
`AND
`
`STELLAR TRADING SYSTEMS, LTD., AND
`STELLAR TRADING SYSTEMS, INC.,
`Defendants-Appellees,
`
`AND
`
`ESPEED MARKETS, LP,
`BGC CAPITAL MARKETS, LP, AND
`ECCOWARE LTD.,
`Defendants-Appellees,
`
`AND
`
`ROSENTHAL COLLINS GROUP, LLC,
` Defendant.
`______________________
`
`2012-1583
`______________________
`
`Appeal from the United States District Court for the
`Northern District of Illinois in consolidated No. 10-CV-
`0715, Judge Virginia M. Kendall.
`______________________
`
`Decided: August 30, 2013
`______________________
`
`
`Page 2 of 26
`
`

`
`TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
` 3
`STEVEN F. BORSAND, Trading Technologies Interna-
`tional, Inc., of Chicago, Illinois, argued for plaintiff-
`appellant. Of counsel on the brief were LEIF R. SIGMOND,
`JR., MICHAEL D. GANNON, PAUL A. KAFADAR, and SARAH E.
`FENDRICK, McDonnell Boehnen Hulbert & Berghoff LLP,
`of Chicago, Illinois. Of counsel were JENNIFER KURCZ and
`MATTHEW SAMPSON.
`
`
`ANTHONY B. ULLMAN, Salans LLP, of New York, New
`York, argued for all defendants-appellees. With him on
`the brief for FuturePath Trading, LLC, et al., was LORA A.
`MOFFATT. Of counsel on the brief were PHILIPPE BENNETT
`and AOIFE BUTLER, Alston & Bird, LLP, of New York,
`New York. On the brief for IBG, LLC, et al., were
`MICHAEL BRETT LEVIN and CHRISTOPHER P. GREWE,
`Wilson Sonsini Goodrich & Rosati, of Palo Alto, Califor-
`nia, and NATALIE J. MORGAN, of San Diego, California.
`On the brief for CQG, Inc., et al., were ADAM G. KELLY,
`WILLIAM J. VOLLER, and J. SIMONE JONES, Loeb & Loeb,
`LLP, of Chicago, Illinois. On the brief for eSpeed Mar-
`kets, LP, et al., was GARY A. ROSEN, Law Offices of Gary
`A. Rosen, P.C., of Ardmore, Pennsylvania. On the brief
`for TradeStation Securities, Inc., et al., were DAVID J.
`HEALEY, Fish & Richardson P.C., of Houston, Texas, and
`ADAM KESSEL and KEVIN SU, of Boston, Massachusetts.
`
`
`SCOTT J. BORNSTEIN, Greenberg Traurig, LLP, of New
`York, New York, for defendants-appellees Open E. Cry,
`LLC, et al. With him on the brief was JAMES J. LUKAS,
`JR., of Chicago, Illinois.
`
`
`LAURA A. LYDIGSEN, Brinks Hofer Gilson & Lione, of
`Chicago, Illinois, for defendants-appellees, Stellar Trad-
`ing Systems, Ltd., et al. Of counsel were RALPH J. GABRIC
`and MARC V. RICHARDS.
`______________________
`
`
`Page 3 of 26
`
`

`
` TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
`4
`Before LOURIE and PLAGER, Circuit Judges, and BENSON,
`District Judge.*
`LOURIE, Circuit Judge.
`
`In this patent infringement action, Plaintiff-Appellant
`Trading Technologies International, Inc. (“TT”) appeals
`from the district court’s entry of summary judgment that
`(i) the asserted claims of TT’s U.S. Patents 7,676,411 (the
`“’411 patent”), 7,693,768 (the “’768 patent”), 7,904,374
`(the “’374 patent”), and 7,685,055 (the “’055 patent”) are
`invalid for failure to comply with the written description
`requirement of 35 U.S.C. § 112; and (ii) prosecution
`history estoppel bars TT from asserting the ’055 patent
`against software products that include certain display
`functions. The district court premised both holdings on
`deference to our prior decision in Trading Technologies
`International, Inc. v. eSpeed, Inc., 595 F.3d 1340 (Fed.
`Cir. 2010) (“eSpeed”), which considered two related pa-
`tents from TT’s portfolio.
`We conclude that eSpeed does not control the issues
`presented in this appeal, and the district court’s rulings
`based on that case are therefore incorrect. Accordingly,
`and as described more fully below, we reverse and remand
`for further proceedings.
`BACKGROUND
`A. The TT Patent Family
`TT owns a number of related patents generally di-
`rected to software used for electronic trading on a com-
`modities exchange, including the ’411, ’768, ’374, and ’055
`patents at issue in this appeal. Issued between March
`2010 and March 2011, those four patents claim priority
`
`* Honorable Dee V. Benson, District Judge, United
`States District Court for the District of Utah, sitting by
`designation.
`
`Page 4 of 26
`
`

`
`TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
` 5
`from U.S. Provisional Patent Application 60/186,322, filed
`on March 2, 2000, and U.S. Patent Application
`09/590,692, which was filed on June 9, 2000, and later
`issued as U.S. Patent 6,772,132 (the “’132 patent”) on
`August 3, 2004. The ’411, ’768, and ’374 patents all arose
`from a series of continuation applications stemming from
`the parent ’132 patent. See, e.g., ’411 patent, at [63].
`Accordingly, the ’411, ’768, and ’374 patents share a
`common written description matching that of the progeni-
`tor ’132 patent in all material respects. In contrast, the
`’055 patent traces its priority from the ’132 patent as a
`continuation-in-part, see ’055 patent, at [63], and as such,
`the ’055 patent contains substantial new matter relative
`to the original written description of the ’132 patent.
`In general, the subject TT patents concern a graphical
`user interface that can display essential data from a
`commodities market and allow a user to enter electronic
`trade orders on an exchange. Drawings common to the
`’411, ’768, ’374, and ’055 patents exemplify several key
`aspects of the disclosed displays:
`
`
`
`
`
`
`
`Page 5 of 26
`
`

`
` TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
`.g., ’411 patent, figs. 3, 4. Figure 3 depicts a trading
`display that conveys up-to-date market information,
`including the pending bids and offers at various price
`points. Column 1005, labeled “Prc,” represents various
`contract prices for the commodity of interest. Id. col. 7
`ll. 55–58. Adjacent to the price column are bid and ask
`columns 1003 and 1004, labeled “BidQ” and “AskQ,”
`respectively. Those columns show the current bid quanti-
`ties (offers to buy) and ask quantities (offers to sell) at
`each price, id. col. 7 ll. 54–55, and a trader can enter new
`trade orders by clicking on the bid and ask columns, id.
`col. 10 ll. 19–23. The “inside market,” labeled 1020, spans
`the highest current bid price and the lowest current ask
`price. Id. col. 4 ll. 60–62. In general, the inside market
`approximates the commodity’s market price and therefore
`marks a focus of trading activity. In figure 3, the inside
`market includes a highest bid price of 89 and a lowest ask
`price of 90.
`Figure 4 shows the same display, with data for the
`same market, viewed at a later point in time. ’411 patent
`col. 3 ll. 47–48. Over time, the inside market can “ascend
`and descend as prices in the market increase and de-
`crease.” Id. col. 9 ll. 4–5. As illustration, the inside
`market in figure 4, labeled 1101, has shifted up the price
`column to 92/93 from its earlier range of 89/90 in response
`to intervening trades.
`
`According to the patents, traders able to view and
`quickly appreciate such detailed market data can more
`readily identify (and capitalize upon) developing trends in
`an active market. Id. col. 6 ll. 12–30. To that end, the
`disclosed graphical user interfaces offer a logical and
`intuitive means to convey dynamic market information
`using bid, ask, and inside market indicators that visually
`track ongoing price fluctuations along the price column.
`Moreover, the patents combine a market grid, a summary
`of market orders, and an order entry system into a single
`display. In short, “[s]uch a condensed display materially
`
`6 E
`
`Page 6 of 26
`
`

`
`TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
` 7
`simplifies the trading system by entering and tracking
`trades in an extremely efficient manner.” Id. col. 7 ll. 40–
`42.
` Nonetheless, allowing the inside market to move up
`and down the display presents a problem: “As the market
`ascends or descends the price column, the inside market
`might go above or below the price column displayed on a
`trader’s screen.” Id. col. 9 ll. 15–17. Because the inside
`market informs most trading decisions, the display must
`provide a way to re-center the price column and bring the
`inside market back into view. The parent ’132 written
`description shared by the ’411, ’768, and ’374 patents
`explains that the values in the price column “are static;
`that is, they do not normally change positions unless a re-
`centering command is received,” id. col. 7 ll. 64–66, and
`further describes a “one click” centering feature that
`allows a user to re-center the price column around the
`inside market with a single mouse click, id. col. 9 ll. 17–
`25.
`
`B. The eSpeed Decision
`As noted, this appeal is not the first to reach this
`
`court concerning TT’s trading software patents. In
`eSpeed, we considered, inter alia, the correct construction
`of certain claim terms used in the ’132 patent and in
`another of its many descendants, U.S. Patent 6,766,304
`(the “’304 patent”). The ’304 patent, like the ’411, ’768,
`and ’374 patents, shares the written description of the
`parent ’132 patent.1
`
`In eSpeed, TT had asserted claims from the ’132 and
`’304 patents against several providers of electronic trad-
`ing software. 595 F.3d at 1347–48. Each of the asserted
`
`1 The ’304 patent issued from a division of the
`application underlying the ’132 patent. ’304 patent, at
`[62].
`
`Page 7 of 26
`
`

`
` TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
`laims required a graphical user interface having a “stat-
`ic” display of market price information,2 and the district
`court had construed that term to require “a display of
`prices comprising price levels that do not change positions
`unless a manual re-centering command is received.” Id.
`at 1352. On appeal, TT argued that a “static” price col-
`umn could work with non-manual modes of re-centering.
`Id. at 1353.
`
`Relying on the ’132 and ’304 patents’ shared written
`description, the surrounding claim language, and the
`relevant prosecution history, we adopted the district
`court’s construction. See id. at 1353–55. In particular, we
`concluded that “[t]he inventors’ own specification strongly
`suggests that the claimed re-centering feature is manual”
`because the written description “only discusse[d] manual
`re-centering commands” and referred to “the present
`invention” as including a manual one-click re-centering
`feature. Id. at 1353–54. Consistent with that view, we
`also noted that the claims of the ’132 patent recited an
`additional limitation stating that the “static” price display
`would not move in response to changes in the inside
`market, expressly excluding displays that re-center auto-
`matically when the inside market shifts. Id. at 1354.
`Finally, we highlighted statements made by the appli-
`cants during prosecution. Specifically, the examiner had
`first considered the term “static display” to be indefinite,
`but the applicants responded by explaining that the
`values in the price column would not change absent a re-
`
`2 The asserted claims of the ’132 patent required a
`“static display of prices,” while the asserted claims of the
`’304 patent required a “common static price axis.” The
`eSpeed claim construction debate nonetheless turned on
`the meaning of “static” because all agreed that “the
`difference in terminology between ‘static display of prices’
`and ‘common static price axis’ [was] immaterial.” eSpeed,
`595 F.3d at 1352.
`
`8 c
`
`Page 8 of 26
`
`

`
`TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
` 9
`centering command, and the claims were then allowed on
`that basis. Id. at 1354. Accordingly, the full record before
`us in eSpeed led us to conclude that the proper construc-
`tion of “static,” as used in the claims of the ’132 and ’304
`patents, required a price column that moves only in
`response to a manual re-centering command.
`
`In addition, we rejected TT’s attempts to invoke the
`doctrine of equivalents to find that products practicing
`automatic re-centering nonetheless infringed its claims to
`“static” displays. See id. at 1355–57. We held that prose-
`cution history estoppel precluded such infringement
`theories because the applicants had amended the claims
`of the ’132 and ’304 patents to make clear that the
`claimed “static” price levels did not move in response to
`changes in the inside market, thus “surrender[ing] any
`subject matter that moves automatically.” Id. at 1357.
`Thus, in eSpeed, “both claim construction and prosecution
`history estoppel operate[d] . . . with similar limited re-
`sults.” Id.
`C. Prosecution of the ’411, ’768, ’374, and ’055 Patents
` While the eSpeed litigation progressed through the
`courts, four patent applications that eventually became
`the ’411, ’768, ’374, and ’055 patents were filed in the
`United States Patent and Trademark Office. TT followed
`two distinct approaches to prosecuting those applications
`in view of eSpeed. Those approaches are key to the reso-
`lution of this appeal.
`1. The ’411, ’768, and ’374 Continuations
`With the applications for the ’411, ’768, and ’374 pa-
`tents—three parallel continuations that relied on the
`original written description of the ’132 patent—TT sought
`claims that removed the term “static” from references to
`the price column. For example, following the district
`court’s adverse claim construction determinations in the
`
`Page 9 of 26
`
`

`
` TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
`10
`eSpeed litigation,3 TT amended the application for the
`’411 patent. Up to that time, the application had claimed
`methods requiring “statically” displayed market price
`information, similar to the claims of the related ’132 and
`’304 patents at issue in eSpeed. But TT’s amendment
`cancelled every pending claim and introduced new claims
`that lacked the term “static” in any form, and that term
`remained absent from the claims issued in the ’411 pa-
`tent. In addition, TT made comparable amendments to
`the co-pending applications that gave rise to the ’768 and
`’374 patents.
`Therefore, while the written descriptions of the ’411,
`’768, and ’374 patents match those of the earlier ’132 and
`’304 patents, the claims differ between the two groups in
`at least one key respect—unlike the ’132 and ’304 patents
`at issue in eSpeed, the ’411, ’768, and ’374 patents claim
`trading methods and software without limitation to a
`“static” price column display.
`2. The ’055 Continuation-in-Part
`TT pursued a different strategy with the application
`for the ’055 patent. That application claimed priority
`from the ’132 patent as a continuation-in-part, which
`allowed TT to add new disclosures to the parent’s written
`description. In part, those additional disclosures were
`aimed at redefining the term “static” as used in the ’055
`patent:
`
`
`3
`In that case, the district court issued an initial
`claim construction ruling on October 31, 2006, and then
`issued another order clarifying its original construction on
`February 21, 2007. Trading Techs. Int’l, Inc. v. eSpeed,
`Inc., Nos. 04-c-5312, 05-c-1079, 05-c-4088, 05-c-4120, 05-c-
`4811, 05-c-5164, 2006 WL 3147697 (N.D. Ill. Oct. 31,
`2006), clarified, 2007 WL 611258 (N.D. Ill. Feb. 21, 2007).
`
`Page 10 of 26
`
`

`
`TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
` 11
`Certain of the trading tools work particularly well
`with a trading display that shows working orders .
`. . displayed in association with a static price scale
`or axis. . . . It is to be understood that, in this con-
`text, static does not mean immovable, but rather
`means fixed in relation. For example, with a stat-
`ic price scale, the scale itself may be movable, but
`the prices represented remain fixed in relation to
`each other . . . .
`’055 patent col. 4 ll. 48–57 (emphases added); see also id.
`col. 25 ll. 4–12 (“In one embodiment, the trading applica-
`tion tracks the market’s activity by automatically center-
`ing, for example, the inside market . . . on the display
`with respect to a static axis or scale of prices.”); id. col. 26
`ll. 30–37 (“A trader may use automatic positioning to
`always have a visual reference of where the market is
`trading . . . . In addition, automatic positioning may be
`used in conjunction with manual positioning.”).
`
`The claims of the ’055 patent likewise recite steps that
`include displaying “a static price axis” and “automatically
`repositioning the static price axis on the graphical user
`interface.” Id. col. 34 ll. 15–67. By their terms, the claims
`of the ’055 patent thus require a “static price axis” capable
`of re-centering via automatic rather than manual com-
`mands.
`
`D. District Court Proceedings
`In early 2010, TT filed twelve separate infringement
`
`actions targeting numerous defendants, including: Open
`E Cry, LLC; optionsXpress Holdings, Inc.; TradeStation
`Securities, Inc.; TradeStation Group, Inc.; IBG, LLC;
`thinkorswim Group, Inc.; TD Ameritrade, Inc.; TD Ameri-
`trade Holding Corp.; Interactive Brokers, LLC; CQG, Inc.;
`CQGT, LLC; FuturePath Trading, LLC; SunGard Data
`Systems, Inc.; SunGard Investment Ventures LLC; GL
`Trade Americas, Inc.; Stellar Trading Systems, Ltd.;
`Stellar Trading Systems, Inc.; eSpeed Markets, LP; BGC
`
`Page 11 of 26
`
`

`
` TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
`12
`Capital Markets, LP; Eccoware, Ltd.; and Rosenthal
`Collins Group, LLC (collectively, “Defendants”).4 Through
`a series of supplements and amendments to the original
`complaints, TT variously accused the Defendants of
`infringing claims from more than ten patents relating to
`electronic trading software, of which only the ’411, ’768,
`’374, and ’055 patents are before us in this appeal. The
`district court consolidated the cases on February 3, 2011.
`Trading Techs. Int’l, Inc. v. BGC Partners, Inc., No. 10-cv-
`715 (N.D. Ill. Feb. 3, 2011), ECF No. 70 (Consolidation
`Order).
`
`After consolidation, the parties submitted opposing
`summary judgment motions on several issues, including
`whether the claims of the ’411 patent satisfied the written
`description requirement of 35 U.S.C. § 112(a) in light of
`eSpeed and whether prosecution history estoppel barred
`TT from asserting infringement under the doctrine of
`equivalents as to products with price columns that move
`automatically. Trading Techs. Int’l, Inc. v. BCG Partners,
`Inc., 852 F. Supp. 2d 1027, 1029–30 (N.D. Ill. 2012)
`(“Summary Judgment Order”).
`
`First, the district court concluded that eSpeed re-
`quired holding the claims of the ’411 patent invalid for
`lack of written description. The court acknowledged that
`eSpeed did not involve the ’411 patent or the written
`description requirement and instead dealt primarily with
`construing the term “static” in the claims of the ’132 and
`’304 patents. Id. at 1044. Nevertheless, the district court
`reasoned that eSpeed “made a number of findings regard-
`ing the specification in the course of affirming the claim
`construction that are dispositive here.” Id.
`
`
`4 Although a defendant before the district court,
`Rosenthal Collins Group, LLC is not a party to this
`appeal.
`
`Page 12 of 26
`
`

`
`TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
` 13
`According to the district court, eSpeed’s construction
`of “static” in the ’132 and ’304 patents turned “on the
`premise that the invention described in the specification
`was limited to static price axes that move only with
`manual re-centering.” Id. at 1045. Because the ’411
`patent’s claims lacked that term and therefore appeared
`to cover displays with automatic re-centering, the district
`court concluded that any decision upholding those broader
`claims as supported by the same written description
`“would be at odds with the Federal Circuit’s binding
`findings in the eSpeed Decision.” Id. In granting the
`Defendants’ motion for summary judgment, the district
`court expressly declined to evaluate the parties’ evidence
`or make its own findings on the merits because the court
`determined “as a matter of law that the eSpeed Decision
`controls.” Id. at 1038 n.9; see also id. at 1045 n.13.
`In addition, the district court held that eSpeed’s appli-
`cation of prosecution history estoppel to the ’132 and ’304
`patents applied equally to the ’055 patent as a matter of
`law.5 The court noted that the ’055 patent’s claims “in-
`clude the limitation of ‘common static price axis,’ just like
`the ’304 patent, and flow from . . . a similar specification.”
`Summary Judgment Order, 852 F. Supp. 2d at 1046–47.
`The court then concluded that when “‘multiple patents
`derive from the same initial application, the prosecution
`history regarding a claim limitation in any patent that
`has issued applies with equal force to subsequently issued
`patents that contain the same claim limitation.’” Id. at
`1046 (quoting Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d
`973, 980 (Fed. Cir. 1999)). TT argued that prosecution
`disclaimers affecting the ’132 and ’304 patents should not
`automatically limit the ’055 patent, with its distinct and
`
`5
`In addition to the ’055 patent, the district court
`applied prosecution history estoppel to two other related
`TT patents, but those patents are not included in this
`appeal.
`
`Page 13 of 26
`
`

`
` TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
`14
`contravening additional disclosures, but the district court
`disagreed. “That the ’055 patent is only a continuation-in-
`part makes no difference.” Id. at 1047 n.15. The district
`court therefore held that TT was estopped from asserting
`that any claims of the ’055 patent were infringed under
`the doctrine of equivalents by a product with a price axis
`that moves automatically. Id. at 1048.
`Following the Summary Judgment Order, the district
`court held a status hearing and ordered the parties to file
`a joint response summarizing the effects of its ruling on
`each patent in suit. The parties agreed that the decision
`had rendered the following claims invalid: all claims of
`the ’411 patent except claim 15, all claims of the ’768
`patent, and all claims of the ’374 patent except claims 7
`and 11. The parties disagreed, however, on the status of
`the ’055 patent. The Defendants contended that, in view
`of eSpeed, the ’055 patent claims remained valid but
`limited in scope. TT maintained that the ’055 patent’s
`added disclosures ascribed a different meaning to “static”
`in that patent relative to those at issue in eSpeed. There-
`fore, TT asserted, the district court’s Summary Judgment
`Order, which relied on eSpeed, should not affect the ’055
`patent for purposes of prosecution history estoppel or
`otherwise.
`The district court issued a subsequent order denying
`TT’s motion to reconsider the prosecution history estoppel
`ruling, extending its invalidity holding, and certifying
`partial judgment for immediate appeal. Trading Techs.
`Int’l, Inc. v. BCG Partners, Inc., 883 F. Supp. 2d 772 (N.D.
`Ill. 2012) (“Certification Order”). Specifically, the court
`reaffirmed its conclusion that prosecution history estoppel
`applied to the ’055 patent because of eSpeed despite the
`’055 patent’s distinct disclosures and prosecution history
`as a continuation-in-part. Id. at 778–79. And having
`concluded that eSpeed applied to the ’055 patent, the
`court decided that its Summary Judgment Order ren-
`dered the ’055 patent invalid. Certification Order, 883 F.
`
`Page 14 of 26
`
`

`
`TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
` 15
`Supp. 2d at 781 n.1. The district court also agreed with
`both parties that its earlier order had largely invalidated
`the ’768 and ’374 patents as well. Id. at 782–84. Finally,
`the court found no just reason to delay an appeal as to
`those issues and therefore entered partial final judgment
`pursuant to Federal Rule of Civil Procedure 54(b).6
`TT filed a timely appeal, and we have jurisdiction un-
`der 28 U.S.C. § 1295(a)(1).
`DISCUSSION
`Summary judgment is appropriate “if the movant
`
`shows that there is no genuine dispute as to any material
`fact and the movant is entitled to judgment as a matter of
`law.” Fed. R. Civ. P. 56(a). We apply the law of the
`regional circuit when reviewing a district court’s entry of
`summary judgment. Teva Pharm. Indus., Ltd. v. Astra-
`Zeneca Pharm. LP, 661 F.3d 1378, 1381 (Fed. Cir. 2011).
`The Seventh Circuit reviews the grant or denial of sum-
`mary judgment without deference. Omnicare, Inc. v.
`UnitedHealth Grp., Inc., 629 F.3d 697, 723 (7th Cir.
`2011). “Compliance with the written description re-
`quirement is a question of fact but is amenable to sum-
`mary judgment in cases where no reasonable fact finder
`could return a verdict for the non-moving party.”
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
`1307 (Fed. Cir. 2008). Prosecution history estoppel oper-
`ates as a legal limitation on a patentee’s ability to invoke
`
`6 The court noted that TT had agreed “to enter into
`a covenant not to sue on any of the remaining valid
`claims of the
`’411,
`’768,
`’374, and
`’055 patents.”
`Certification Order, 883 F. Supp. 2d at 782 (emphasis
`added). We interpret the district court’s statements to
`mean that its final judgment invalidated the following
`claims: claims 1–14 and 16–28 of the ’411 patent; all
`claims of the ’768 patent; claims 1–6, 8–10, and 12–36 of
`the ’374 patent; and all claims of the ’055 patent.
`
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` TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
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`the doctrine of equivalents, and we review its application
`de novo. eSpeed, 595 F.3d at 1355.
`A. Written Description
`As described, the district court granted summary
`judgment in favor of the Defendants as to the invalidity of
`most claims of TT’s ’411, ’768, ’374, and ’055 patents,
`holding that our prior decision in eSpeed rendered those
`claims invalid as a matter of law for failing to satisfy the
`written description requirement of § 112.
`
`TT argues that the district court relied on portions of
`eSpeed that dealt solely with interpreting the term “stat-
`ic” in the related ’132 and ’304 patents without determin-
`ing or addressing the scope of the patents’ shared
`disclosure. Noting that the sufficiency of a patent’s writ-
`ten description presents a question of fact, TT faults the
`district court for relying entirely on eSpeed rather than
`conducting its own analysis of whether any of the claims
`at issue find adequate written description support under
`§ 112. TT contends that, on the merits and apart from
`any misapplication of eSpeed, the claims of the ’411, ’768,
`’374, and ’055 patents satisfy the written description
`requirement.
`
`The Defendants respond that the district court
`properly relied on eSpeed because eSpeed’s claim con-
`struction analysis turned on the same basic issue as the
`present written description inquiry—whether the original
`’132 patent discloses a display with a price column that
`moves through means other than manual re-centering.
`According to the Defendants, that issue was finally and
`necessarily decided in eSpeed, precluding any contrary
`findings in this case.
`
`As explained more fully below, we conclude that the
`district court placed undue reliance on eSpeed in its
`written description analysis and thus erred when it held
`
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`TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
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`TT’s claims invalid without considering the scope of the
`claims in light of the underlying disclosures.
`1. The ’411, ’768, and ’374 Patents
`The ’411, ’768, and ’374 patents all rely on the same
`
`underlying disclosure as the ’132 and ’304 patents dis-
`cussed in eSpeed. But the claims of the patents now
`before us are different, as are the issues at play, and
`eSpeed’s ruling on claim construction does not govern the
`written description inquiry in this case.
`The question here is whether the patents’ common
`disclosure provides adequate support for claims not
`limited to displays with “static” price axes, i.e., claims
`broad enough to encompass some form of automatic re-
`centering. In explaining its reliance on eSpeed, the dis-
`trict court correctly perceived that the written description
`and claim construction analyses both look to a patent’s
`specification for guidance. See Summary Judgment
`Order, 852 F. Supp. 2d at 1045 (stating that Ҥ 112 ques-
`tions and claim construction questions look to the specifi-
`cation first and foremost”). Despite their similarities,
`however, claim construction and the written description
`requirement are separate issues that serve distinct pur-
`poses.
`In construing claims, a court seeks to discern the
`meaning of a particular term used in one or more claims
`of a patent, based, inter alia, on evidence drawn from the
`specification, the surrounding claim language, the prose-
`cution history, and relevant extrinsic sources. See gener-
`ally Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`(en banc). The specification is fundamental to claim
`construction, as “‘it is the single best guide to the meaning
`of a disputed term.’” Id. at 1315 (quoting Vitronics Corp.
`v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
`While guided by the specification, the focus of claim
`construction remains on defining a discrete claim term to
`better ascertain the boundaries of a claim. In contrast,
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` TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
`18
`the written description analysis considers the bounds of
`the specification itself. The written description require-
`ment prevents patentees from claiming more than they
`have actually invented and disclosed to the public, as
`measured by the written description of the invention
`provided with their patent applications. In other words,
`the written description requirement “ensure[s] that the
`scope of the right to exclude, as set forth in the claims,
`does not overreach the scope of the inventor’s . . . patent
`specification.” Reiffin v. Microsoft Corp., 214 F.3d 1342,
`1345 (Fed. Cir. 2000).
`
`This case illustrates the distinction. In eSpeed, we
`were called upon to evaluate the proper construction of
`“static,” a term used in the claims of the ’132 and ’304
`patents. Accordingly, we considered the evidence relevant
`to a proper reading of that term, starting with those
`patents’ common written description. eSpeed, 595 F.3d at
`1353–55. Noting that the patents referred to one-click
`centering as part of the invention and did not discuss
`automatic re-centering, we concluded that the specifica-
`tion “strongly suggests” that a “static” price column would
`require manual re-centering. Id. at 1353–54. And even
`though the patents described price columns that “do not
`normally change positions unless a re-centering command
`is received,” ’132 patent col. 7 ll. 46–48 (emphasis added),
`we concluded that “the inventors jettisoned the word
`‘normally’ during prosecution” by limiting the term “stat-
`ic” in response to an indefiniteness rejection, eSpeed, 595
`F.3d at 1354. In sum, we concluded that the disputed
`claim term should be limited to require a manual re-
`centering command in the claims of the ’132 and ’304
`patents.
`
`But our decision in eSpeed did not thereby determine
`whether the same written description would also support
`different claims drawn to a non-“static” display. In par-
`ticular, we did not make “findings regarding the specifica-
`tion . . . that are dispositive” as to the present written
`
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`TRADING TECHNOLOGIES INTL v. OPEN E CRY, LLC
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`description challenge. See Summary Judgment Order,
`852 F. Supp. 2d at 1044. On the contrary, we merely
`determined the best construction for a single disputed
`claim term, a term that is absent from the claims of the
`’411, ’768, and ’374 patents now before us. That analysis
`did not r