507 F.Supp.2d 854
`(Cite as: 507 F.Supp.2d 854)
`
`(plf's response, at 4). To support its argument
`that eSpeed's pop-up window feature does not avoid
`literal infringement, TT suggests that the addition
`of features does not avoid infringement if all the
`elements of the patent claims have been adopted,
`TT is correct in theory. See Vulcan Engineering
`Co., Inc. v. Fata Aluminum. Inc., 278 F.3d 1366,
`1375 (Fed.Cir.2002) (“When the claimed function
`is performed in the accused system, by the same or
`equivalent structure, infringement of that claim ele-
`ment is established”); Texas Instruments, Inc. v.
`U.S. Int'l Trade Comm'n, 805 F.2d 1558, 1568
`(Fed.Cir.1986) (“As a matter of law, subsequent
`improvements do not in themselves preclude a find-
`ing of infringement”) (internal citations omitted).
`
`
`eSpeed argues that the pop-up window, not the
`price axis, is the location from which a trader sends
`his or her trade order, and therefore, its products do
`not meet all of TT's claim limitations. eSpeed ex-
`plains:
`
`
`The eSpeed products display pop-up windows
`when a user depresses the mouse in the price lad-
`der. In this pop-up window the trader can confirm
`the order is correct, change a parameter of *869
`the order, or cancel the order before it is sent to
`the exchange. This all occurs after the initial se-
`lection of a cell in the price column of the product.
`
`
`
`
`
`(defs' reply, at 12) (emphasis in original). Be-
`cause the order is actually sent from the pop-up
`window, not the price column, eSpeed asserts its
`products cannot meet the literal language of our
`construction of “order entry region”-that selection
`of a cell in the order entry region does more than
`initiate an order, it sends or executes the order, eS-
`peed argues that our construction “forecloses any
`pop-up window from coverage by the claims be-
`cause selecting the cell in a price column merely
`initiates the pop-up window from which the trade
`can then either be sent, changed, or aborted.” (Id.,
`at 13). In support of its argument, eSpeed points to
`TT's statement of facts. Therein, TT claimed:
`TT never amended the claims to distinguish its
`
`
`
`Page 17 of 18
`
`Page 16
`
`invention from all screens having pop-up win-
`dows. Instead, TT amended the claims to distin-
`guish screens with order entry regions requiring
`multiple actions to both initiate and send a trade
`order, i.e., lacking single action order entry. For
`example, a screen that requires one action to ini-
`tiate an order (e.g., one click on a price) and
`then another separate action to send the order
`(e.g., one click on a send/verify button in a pop-
`up window) was being distinguished as it does
`not constitute a single action.
`
`
`
`(defs' reply, at 14) (citing plf's statement of
`facts, ¶ 3) (emphasis in defs' reply).
`
`
`We think that eSpeed purposefully shifts TT's
`argument. There is no dispute that in eSpeed's
`products a trader can click on a price cell in the
`price column and send a trade order. From the
`trader's perspective it is possible to execute a trade
`from the price column. For example, if a trader
`clicks his mouse on a certain price (one click = de-
`pressing the mouse button and immediately releas-
`ing the mouse button), his order will be sent for the
`default quantity at the selected price. (See plf's re-
`sponse, exh. E, ¶ 26; Id., exh. C). We have previ-
`ously held that “order entry region” must be con-
`strued from the perspective of the trader, not the
`computer. Claim Construction Order, 2006 WL
`3147697, at *8. We explained:
`
`
`Thus, from the perspective of the user, selection
`of an area in the order entry region is the final
`step in the trader's placement of an order at the
`market. In other words, the user need not do any-
`thing more before the order is entered at the mar-
`ket. If, however, the computer or the exchange
`had to perform additional steps before the order
`was actually filled at the exchange, such would
`still fall within the ambit of “order entry re-
`gion....”
`
`
`
`Id. We think it highly unlikely that a reason-
`able jury could determine that eSpeed's products do
`not contain an “order entry region” as defined by
`TT's patents and this court. Particularly, we believe
`
`
`
`© 2012 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`http://web2.westlaw.com/print/printstream.aspx?mt=Patent&prft=HTMLE&vr=2.0&destina...
`
`3/8/2012
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`CQG014202170
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`000201
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`

`
`Page 18 of 18
`
`Page 17
`
`
`
`
`507 F.Supp.2d 854
`(Cite as: 507 F.Supp.2d 854)
`
`that a reasonable jury could determine only that it is
`the computer that takes the additional steps with re-
`gard to executing the trade, as explained by the fi-
`nal sentence cited above. Because infringement is a
`matter of fact, and we believe that no reasonable
`jury could side with defendants, we would likely
`determine that eSpeed's products contain an “order
`entry region,” as defined by this court. Once that
`determination is made, the parties' doctrine of equi-
`valents argument becomes moot.
`
`
`CONCLUSION
`
`For the reasons stated above, we grant eSpeed's
`motion
`for
`summary
`judgment
`for non-in-
`fringement. We deny TT's cross-motion for sum-
`mary judgment.
`
`N.D.Ill.,2007.
`Trading Technologies Intern., Inc. v. eSpeed, Inc.
`507 F.Supp.2d 854
`
`END OF DOCUMENT
`
`
`© 2012 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`http://web2.westlaw.com/print/printstream.aspx?mt=Patent&prft=HTMLE&vr=2.0&destina...
`
`3/8/2012
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`CQG014202171
`
`000202
`
`

`
`EXHIBIT 7
`
`
`000203
`
`
`
`
`
`
`
`
`EXHIBIT 7
`
`000203
`
`

`
`
`
`
`
`595 F.3d 1340, 93 U.S.P.Q.2d 1805
`(Cite as: 595 F.3d 1340)
`
`
`
`
`
`United States Court of Appeals,
`Federal Circuit.
`TRADING TECHNOLOGIES INTERNATIONAL,
`INC., Plaintiff–Appellant,
`v.
`ESPEED, INC., Ecco LLC, Ecco Ware Ltd., and
`Espeed International, Ltd., Defendants–Cross Appel-
`lants.
`
`
`
`Nos. 2008–1392, 2008–1393, 2008–1422.
`Feb. 25, 2010.
`Rehearing and Rehearing En Banc Denied April 21,
`2010.
`
`
`Background: Assignee of two patents for commodi-
`ties trading software brought infringement action
`against competitors. After construing patent claims,
`2006 WL 3147697, 2007 WL 611258, the United
`States District Court for the Northern District of Illi-
`nois, James B. Moran, Senior District Judge, entered
`summary judgment in favor of one competitor, 507
`F.Supp.2d 854, granted summary judgment in part
`with regard to another competitor's invalidity defense,
`507 F.Supp.2d 883, denied motion for judgment as a
`matter of law (JMOL) with regard to inequitable
`conduct defense, 581 F.Supp.2d 915, and ruled that
`infringement of patents was not willful, 2008 WL
`63233. Appeal was taken.
`
`Holdings: The Court of Appeals, Rader, Circuit
`Judge, held that:
`(1) trading software with mandatory re-centering
`features did not literally infringe patent;
`(2) software did not infringe under doctrine of equiv-
`alents;
`(3) prosecution history estoppel precluded patentee
`from relying on the doctrine of equivalents;
`(4) infringement of patents was not willful;
`(5) claim limitation “single action of a user input
`device” in patent was sufficiently definite;
`(6) patents were entitled to priority of provisional
`application; and
`(7) inventor's purchase of custom software from
`software developer was not a sale of the software for
`purposes of the on-sale bar.
`
`
`
`Page 1
`
`
`
`Affirmed.
`
`
`
`
`
`
`
` Lourie, Circuit Judge, concurred in the result.
`
` Clark, District Judge, filed concurring opinion.
`
`West Headnotes
`
`226.6
`
`
`[1] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(A) What Constitutes Infringement
` 291k226.5 Substantial Identity of Subject
`Matter
` 291k226.6 k. Comparison with claims of
`patent. Most Cited Cases
`
`
`324.5
`
`of
`judgment
`summary
`of
`Evaluation
`non-infringement in a patent case requires two steps:
`proper claim construction and comparison of those
`claims to the accused product.
`
`[2] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k324 Appeal
` 291k324.5 k. Scope and extent of review
`in general. Most Cited Cases
`
`
`Despite the Supreme Court's emphasis on the trial
`court's central role for patent claim construction, in-
`cluding the evaluation of expert testimony, the Court
`of Appeals may not give any deference to the trial
`court's factual decisions underlying its claim con-
`struction.
`
`[3] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(A) In General
`
`161
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`CQG014202172
`
`000204
`
`

`
`
`
`595 F.3d 1340, 93 U.S.P.Q.2d 1805
`(Cite as: 595 F.3d 1340)
`
` 291k161 k. State of the art. Most Cited
`Cases
`
`
`157(1)
`
`To construe a patent claim, courts must determine
`the meaning of disputed terms from the perspective of
`one of ordinary skill in the pertinent art at the time of
`filing.
`
`[4] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(A) In General
` 291k157 General Rules of Construction
` 291k157(1) k. In general. Most Cited
`Cases
`
`Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(B) Limitation of Claims
` 291k165 Operation and Effect of Claims in
`General
` 291k165(1) k. In general. Most Cited
`Cases
`
`
`165(1)
`
`167(1)
`
`Patent claim terms are generally given their or-
`dinary and customary meaning; the claims themselves
`provide substantial guidance as to the meaning of
`particular claim terms.
`
`[5] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(B) Limitation of Claims
` 291k167 Specifications, Drawings, and
`Models
` 291k167(1) k. In general. Most Cited
`Cases
`
`
`Patent claims must be read in view of the speci-
`fication, of which they are a part.
`
`[6] Patents 291
`
`167(1)
`
`Page 2
`
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(B) Limitation of Claims
` 291k167 Specifications, Drawings, and
`Models
` 291k167(1) k. In general. Most Cited
`Cases
`
`
`167(1.1)
`
`A patent's specification is always highly relevant
`to the claim construction analysis.
`
`[7] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(B) Limitation of Claims
` 291k167 Specifications, Drawings, and
`Models
` 291k167(1.1) k. Specification as limit-
`ing or enlarging claims. Most Cited Cases
`
`
`When consulting the specification to clarify the
`meaning of patent claim terms, courts must not import
`limitations into the claims from the specification;
`therefore, when the specification uses a single em-
`bodiment to enable the claims, courts should not limit
`the broader claim language to that embodiment unless
`the patentee has demonstrated a clear intention to limit
`the claim scope using words or expressions of mani-
`fest execution or restriction.
`
`[8] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(B) Limitation of Claims
` 291k165 Operation and Effect of Claims in
`General
` 291k165(5) k. Construction of particular
`claims as affected by other claims. Most Cited Cases
`
`
`165(5)
`
`Other claims of the patent can be valuable sources
`of enlightenment as to the meaning of a claim term.
`
`[9] Patents 291
`
`
`168(2.1)
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`CQG014202173
`
`000205
`
`

`
`Case: 1:05-cv-04811 Document #: 720-15 Filed: 03/17/14 Page 4 of 24 PageID #:19205
`
`
`595 F.3d 1340, 93 U.S.P.Q.2d 1805
`(Cite as: 595 F.3d 1340)
`
`Page 3
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(B) Limitation of Claims
` 291k168 Proceedings in Patent Office in
`General
` 291k168(2) Rejection and Amendment
`of Claims
` 291k168(2.1) k. In general. Most
`Cited Cases
`
`
`168(2.1)
`
`In claim construction, a court should consider the
`patent's prosecution history, which can often inform
`the meaning of the claim language by demonstrating
`how the inventor understood the invention and
`whether the inventor limited the invention in the
`course of prosecution, making the claim scope nar-
`rower than it would otherwise be.
`
`[10] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(B) Limitation of Claims
` 291k168 Proceedings in Patent Office in
`General
` 291k168(2) Rejection and Amendment
`of Claims
` 291k168(2.1) k. In general. Most
`Cited Cases
`
`
`A patentee may, through a clear and unmistakable
`disavowal in prosecution history, surrender certain
`claim scope to which he would otherwise have an
`exclusive right by virtue of the claim language.
`
`[11] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(2) k. Construction in general. Most
`Cited Cases
`
`
`101(2)
`
`Term “static” in phrases “static display of prices”
`and “common static price axis,” in patents claiming
`commodities trading software, meant that values in the
`price column of trader's display did not normally
`change positions unless a re-centering command was
`
`235(2)
`
`received; invention's contribution to the prior art, its
`specification, and its prosecution history showed that
`the static display of prices could not move without a
`manual re-centering command from the trader.
`
`[12] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(A) What Constitutes Infringement
` 291k233 Patents for Machines or Manu-
`factures
` 291k235 Identity of Principle or Mode
`of Operation
` 291k235(2) k. Particular patents or
`devices. Most Cited Cases
`
`
`Commodities trading software with mandatory
`re-centering features for trader's price display did not
`literally infringe patented commodities trading soft-
`ware, which had price levels that did not change po-
`sitions unless a manual re-centering command was
`received.
`
`[13] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(A) What Constitutes Infringement
` 291k233 Patents for Machines or Manu-
`factures
` 291k237 k. Substitution of equivalents.
`Most Cited Cases
`
`
`237
`
`168(2.1)
`
`Under the “all-elements rule,” a patentee may not
`assert a theory of equivalence that would entirely
`vitiate a particular claim element.
`
`[14] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(B) Limitation of Claims
` 291k168 Proceedings in Patent Office in
`General
` 291k168(2) Rejection and Amendment
`of Claims
` 291k168(2.1) k. In general. Most
`Cited Cases
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`CQG014202174
`
`000206
`
`

`
`
`
`595 F.3d 1340, 93 U.S.P.Q.2d 1805
`(Cite as: 595 F.3d 1340)
`
`
`
`237
`
`Under “prosecution history estoppel,” a patentee
`may not seek to recapture as an equivalent subject
`matter surrendered during prosecution.
`
`[15] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(A) What Constitutes Infringement
` 291k233 Patents for Machines or Manu-
`factures
` 291k237 k. Substitution of equivalents.
`Most Cited Cases
`
`
`Commodities trading software that automatically
`re-centered its price axis did not infringe, under doc-
`trine of equivalents, patented trading software, which
`had price levels that did not change positions unless a
`manual re-centering command was received; although
`the allegedly infringing software only re-centered
`once or
`twice per
`trading day,
`the automatic
`re-centering feature still presented the potential prob-
`lem of the prior art that allowed the inside market
`price to move while a trader was trying to secure a
`deal.
`
`[16] Patents 291
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(B) Limitation of Claims
` 291k168 Proceedings in Patent Office in
`General
` 291k168(3) k. Rejection and amend-
`ment of claims of particular patents. Most Cited Cases
`
`
`168(3)
`
`Prosecution history estoppel precluded patentee
`from relying on the doctrine of equivalents to prove
`that competing commodities trading system which
`automatically re-centered price levels on trader's dis-
`play infringed patented trading software which re-
`quired manual re-centering of price levels; amend-
`ments to patents' claims during prosecution clarified
`that the claimed price levels “do not move” when the
`inside market changed.
`
`[17] Patents 291
`
`
`168(2.1)
`
`Page 4
`
`291 Patents
` 291IX Construction and Operation of Letters Pa-
`tent
` 291IX(B) Limitation of Claims
` 291k168 Proceedings in Patent Office in
`General
` 291k168(2) Rejection and Amendment
`of Claims
` 291k168(2.1) k. In general. Most
`Cited Cases
`
`
`227
`
`Prosecution history estoppel applies at the time of
`infringement to determine whether the applicant sur-
`rendered claim scope during prosecution.
`
`[18] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(A) What Constitutes Infringement
` 291k227 k.
`Intent or purpose, and
`knowledge. Most Cited Cases
`
`
`To establish willful infringement, a patentee must
`show by clear and convincing evidence that the in-
`fringer acted despite an objectively high likelihood
`that its actions constituted infringement of a valid
`patent; patentee must also show that the infringer
`knew or should have known of this objectively high
`likelihood.
`
`[19] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(A) What Constitutes Infringement
` 291k227 k.
`Intent or purpose, and
`knowledge. Most Cited Cases
`
`
`227
`
`Manufacturer of commodities trading software
`did not willfully infringe patented software, where it
`began redesigning its software immediately after in-
`fringement suit commenced and replaced the software
`with updated software within a few months, and there
`was no evidence that manufacturer sold the software
`during that time, or could have updated or disabled
`software that was already in its customers' computers
`any earlier.
`
`[20] Patents 291
`
`101(6)
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`CQG014202175
`
`000207
`
`

`
`
`
`595 F.3d 1340, 93 U.S.P.Q.2d 1805
`(Cite as: 595 F.3d 1340)
`
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(6) k. Ambiguity, uncertainty or
`indefiniteness. Most Cited Cases
`
`
`Statutory requirement of particularity and dis-
`tinctness in patent claims is met only when the claims
`clearly distinguish what is claimed from what went
`before in the art and clearly circumscribe what is
`foreclosed from future enterprise; however, absolute
`clarity is not required. 35 U.S.C.A. § 112.
`
`[21] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(6) k. Ambiguity, uncertainty or
`indefiniteness. Most Cited Cases
`
`
`101(6)
`
`101(6)
`
`Only patent claims not amenable to construction
`or insolubly ambiguous are indefinite. 35 U.S.C.A. §
`112.
`
`[22] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k101 Claims
` 291k101(6) k. Ambiguity, uncertainty or
`indefiniteness. Most Cited Cases
`
`
`Claim limitation “single action of a user input
`device” in patent for commodities trading software
`was sufficiently definite; district court construed the
`term to mean an action by a user within a short period
`of time that may comprise one or more clicks of a
`mouse button or other input device, which distin-
`guished the invention from multiple-action systems
`found in the prior art. 35 U.S.C.A. § 112.
`
`[23] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k110 k. Renewal of application. Most
`Cited Cases
`
`110
`
`Page 5
`
`
`
`For patent claims to enjoy the earlier filing date of
`the provisional application, the prior application itself
`must describe an invention in sufficient detail that one
`skilled in the art can clearly conclude that the inventor
`invented the claimed invention as of the filing date
`sought; therefore, the provisional application must
`describe the invention in such a way that one of or-
`dinary skill in the art would understand that the genus
`that is being claimed has been invented, not just the
`species of a genus. 35 U.S.C.A. § 112.
`
`[24] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k323 Final Judgment or Decree
` 291k323.2 Summary Judgment
` 291k323.2(3) k. Particular cases.
`Most Cited Cases
`
`
`323.2(3)
`
`Genuine issue of material fact as to whether in-
`ventors' disclosure of a “one click of a mouse” feature
`in provisional application was sufficient to show that
`the inventors possessed a “single action of a user input
`device” as claimed in patents for commodities trading
`software precluded summary judgment on issue of
`whether patents could claim priority of the provisional
`application. 35 U.S.C.A. § 112.
`
`[25] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k324 Appeal
` 291k324.5 k. Scope and extent of review
`in general. Most Cited Cases
`
`
`324.5
`
`Court of Appeals reviews the legal sufficiency of
`jury instructions on an issue of patent law without
`deference to the district court.
`
`[26] Evidence 157
`
`157 Evidence
` 157XII Opinion Evidence
` 157XII(B) Subjects of Expert Testimony
` 157k506 k. Matters directly in issue. Most
`
`506
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`CQG014202176
`
`000208
`
`

`
`
`
`595 F.3d 1340, 93 U.S.P.Q.2d 1805
`(Cite as: 595 F.3d 1340)
`
`Cited Cases
`
`
`Expert who testified generally in patent in-
`fringement case about the written description re-
`quirement but did not offer legal conclusions as to the
`adequacy of the provisional application's disclosure
`did not usurp the district court's role of instructing the
`jury on the law. 35 U.S.C.A. § 112.
`
`[27] Federal Courts 170B
`
`170B Federal Courts
` 170BVIII Courts of Appeals
` 170BVIII(K) Scope, Standards, and Extent
` 170BVIII(K)1 In General
` 170Bk763 Extent of Review Dependent
`on Nature of Decision Appealed from
` 170Bk765 k. Judgment notwith-
`standing verdict. Most Cited Cases
`
`
`765
`
`Court of Appeals reverses a denial of a judgment
`as a matter of law (JMOL) motion only if the jury's
`factual determinations are not supported by substantial
`evidence or the legal conclusions implied from the
`verdict cannot be supported in law by those findings.
`Fed.Rules Civ.Proc.Rule 50(b), 28 U.S.C.A.
`
`[28] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k110 k. Renewal of application. Most
`Cited Cases
`
`
`110
`
`Provisional application for patents covering
`commodities trading software with “single-click”
`trading feature adequately disclosed “single action”
`trading feature claimed in the issued patents, entitling
`the patents to priority of the provisional application;
`the provisional application distinguished between
`order entries performed in a single action and multi-
`ple-step actions, and one of ordinary skill in the art
`would have known about other forms of “single ac-
`tion” such as a double-click or pressing a key.
`
`[29] Patents 291
`
`291 Patents
` 291II Patentability
` 291II(E) Prior Public Use or Sale
`
`76
`
`Page 6
`
` 291k76 k. What constitutes public sale.
`Most Cited Cases
`
`
`Inventor's purchase of custom software incorpo-
`rating his ideas from software developer for his own
`secret, personal use was not a sale of the software for
`purposes of patent statute's on-sale bar; developer
`produced the software for inventor because inventor
`lacked the technical expertise to do so, and parties
`entered into a contract for hourly programming ser-
`vices, not a computer software license. 35 U.S.C.A. §
`102(b).
`
`[30] Patents 291
`
`291 Patents
` 291II Patentability
` 291II(E) Prior Public Use or Sale
` 291k76 k. What constitutes public sale.
`Most Cited Cases
`
`
`76
`
`Statutory on-sale bar applies when the invention
`was both the subject of a commercial sale and ready
`for patenting before the critical date; the transaction at
`issue must be a “sale” in a commercial law sense. 35
`U.S.C.A. § 102(b).
`
`[31] Patents 291
`
`291 Patents
` 291II Patentability
` 291II(E) Prior Public Use or Sale
` 291k76 k. What constitutes public sale.
`Most Cited Cases
`
`
`76
`
`A “sale” for purposes of patent statute's on-sale
`bar is a contract between parties to give and to pass
`rights of property for consideration which the buyer
`pays or promises to pay the seller for the thing bought
`or sold. 35 U.S.C.A. § 102(b).
`
`[32] Patents 291
`
`291 Patents
` 291II Patentability
` 291II(E) Prior Public Use or Sale
` 291k76 k. What constitutes public sale.
`Most Cited Cases
`
`
`76
`
`The invention is ready for patenting under the
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`CQG014202177
`
`000209
`
`

`
`
`
`595 F.3d 1340, 93 U.S.P.Q.2d 1805
`(Cite as: 595 F.3d 1340)
`
`97.8
`
`statutory on-sale bar if there is proof of reduction to
`practice before the critical date. 35 U.S.C.A. § 102(b).
`
`[33] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k97.7 Unenforceability of Patent; Inequi-
`table Conduct or Fraud on Office
` 291k97.8 k. In general. Most Cited Cases
` (Formerly 291k97)
`
`
`324.54
`
`A patent may be rendered unenforceable for in-
`equitable conduct if an applicant, with intent to mis-
`lead or deceive the examiner, fails to disclose material
`information or submits materially false information to
`the Patent and Trademark Office (PTO) during pros-
`ecution.
`
`[34] Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k324 Appeal
` 291k324.54 k. Presumptions and dis-
`cretion of lower court. Most Cited Cases
`
`Patents 291
`
`291 Patents
` 291XII Infringement
` 291XII(B) Actions
` 291k324 Appeal
` 291k324.55 Questions of Fact, Verdicts,
`and Findings
` 291k324.55(2) k. Clearly erroneous
`findings. Most Cited Cases
`
`
`324.55(2)
`
`Where a judgment regarding inequitable conduct
`follows a bench trial in patent case, Court of Appeals
`reviews the district court's findings of materiality and
`intent for clear error and its ultimate conclusion for an
`abuse of discretion.
`
`[35] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k97.7 Unenforceability of Patent; Inequi-
`
`97.9
`
`Page 7
`
`table Conduct or Fraud on Office
` 291k97.9 k. What information is material.
`Most Cited Cases
` (Formerly 291k97)
`
`
`Inventor's use of custom trading software incor-
`porating his idea after the priority date of patent for
`commodities trading software was not material to the
`application, and thus patentee's failure to disclose such
`use to the Patent and Trademark Office (PTO) was not
`inequitable conduct, where the examiner did not per-
`ceive any priority date issue and allowed the claims.
`
`[36] Patents 291
`
`291 Patents
` 291II Patentability
` 291II(E) Prior Public Use or Sale
` 291k75 k. What constitutes public use. Most
`Cited Cases
`
`
`75
`
`97.9
`
`Experimental uses of the patented invention may
`in some instances give rise to an issue of patentability.
`
`[37] Patents 291
`
`291 Patents
` 291IV Applications and Proceedings Thereon
` 291k97.7 Unenforceability of Patent; Inequi-
`table Conduct or Fraud on Office
` 291k97.9 k. What information is material.
`Most Cited Cases
` (Formerly 291k97)
`
`
`Inventor's testing of custom trading software for
`his own confidential, personal purposes before filing
`of patent application was not material to the applica-
`tion, and thus failure to disclose such use to the Patent
`and Trademark Office (PTO) was not inequitable
`conduct.
`
`Patents 291
`
`291 Patents
` 291XIII Decisions on the Validity, Construction,
`and Infringement of Particular Patents
` 291k328 Patents Enumerated
` 291k328(2) k. Original utility. Most Cited
`Cases
`
`
`328(2)
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`CQG014202178
`
`000210
`
`

`
`
`
`595 F.3d 1340, 93 U.S.P.Q.2d 1805
`(Cite as: 595 F.3d 1340)
`
`6,766,304, 6,772,132. Construed and Ruled Valid
`
`by.
`
`*1344 Steven F. Borsand, Trading Technologies In-
`ternational, Inc., of Chicago, IL, argued for plain-
`tiff-appellant. Of counsel on the brief were Paul H.
`Berghoff, Leif R. Sigmond, Jr., Matthew J. Sampson,
`Michael D. Gannon, S. Richard Carden, Jennifer
`M.Kurcz and Paul A. Kafadar, McDonnell Boehnen
`Hulbert & Berghoff LLP, of Chicago, IL. Of counsel
`was George I. Lee.
`
`Gary A. Rosen, Law Offices of Gary A. Rosen, P.C.,
`of Philadelphia, PA, argued for defendants-cross ap-
`pellants. Of counsel on the brief were George C.
`Lombardi, Raymond C. Perkins and James M.
`Hilmert, Winston & Strawn, LLP, of Chicago, IL. Of
`counsel were Ivan M. Poullaos, of Chicago, IL and
`John K. Hsu, of Washington, DC.
`
`Lora A. Moffatt, Salans LLP, of New York, NY, for
`amici curiae GL Trade SA, et al. With her on the brief
`was Walter Scott, Alston & Bird LLP, of New York,
`NY.
`
`*1345 Before LOURIE, RADER, Circuit Judges, and
`CLARK, District Judge.FN1
`
`
`FN1. Honorable Ron Clark, District Judge,
`United States District Court for the Eastern
`District of Texas, sitting by designation.
`
`
`Opinion for the court filed by Circuit Judge RADER,
`in which District Judge CLARK joins. Circuit Judge
`LOURIE concurs in the result. Concurring opinion
`filed by District Judge CLARK.
`
`RADER, Circuit Judge.
`The United States District Court for the Northern
`District of Illinois held that eSpeed, Inc., Ecco LLC,
`Ecco Ware Ltd., and eSpeed International Ltd. (col-
`lectively, “eSpeed”) infringed the asserted claims of
`U.S. Patent No. 6,772,132 (“'132 patent”) and U.S.
`Patent No. 6,766,304 (“'304 patent”) with one accused
`service product, but not willfully. The district court
`further held that the two other accused products did
`not literally infringe and then precluded Trading
`Technologies International, Inc. (“TT”) from asserting
`infringement under the doctrine of equivalents. After
`giving the patents-in-suit a filing date back to the
`
`Page 8
`
`provisional application, the district court found that
`the on-sale bar of 35 U.S.C. § 102(b) did not apply.
`The district court also found no indefiniteness prob-
`lem in the asserted claims. Finally the district court
`detected no inequitable conduct during the prosecu-
`tion of the patents-in-suit. Because this record dis-
`closes no reversible error, this court affirms.
`
`
`I.
`TT is the owner by assignment of the '132 and
`'304 patents. Both patents share a common provisional
`application filed on March 2, 2000. The United States
`Patent and Trademark Office (“PTO”) issued the '132
`patent on August 3, 2004, based on a June 9, 2000
`application. The PTO issued the '304 patent on July
`20, 2004, based on a June 27, 2001 application. The
`'304 patent is a divisional of the '132 patent. The
`specifications of the patents are, for all relevant pur-
`poses, identical.
`
`
`The patents claim software for displaying the
`market for a commodity traded in an electronic ex-
`change. '132 patent col.3 ll.11–16. The software's
`graphical user interface (“GUI”) includes “a dynamic
`display for a plurality of b