The lesson to be learned in this case is that claim construction and invalidity based on the written description are separate issues that have their own tests, and serve different purposes.
In this case, Trading Technologies owns a family of patents that are related to presenting interfaces to users associated with commodities exchanges, think stock market prices. The patents allowed traders to view and quickly appreciated market data to identify trends. See Figure below.
The patents describe that as a market ascends of descends a price column, the inside market of a commodity might go above or below the price column displayed on a trader’s screen. Because the inside market informs most trading decisions, the display must provide a way to re-center the price column and bring the insider market back into view. The first set of patents explains a process that the values in the price column are static and do not normally change positions unless a reentering, manual command is received.” Continuation patents were filed that were substantially the same as the parents, except missing the term “static” from the claims.
The district court held that continuation patents were invalid based on lack of adequate written description under 35 USC Section 112. Specifically, the district court held that because the static limitation was missing from the continuations, the claims cover displays with automatic re-centering, which is not supported by the specification.
On appeal, the Federal circuit rejected this reasons. The Federal Circuit reversed their appeal based on the distinctions between claims construction and written description. The Federal circuit elaborated that claim constructions seeks to discern the meanings of claims in terms, and that claim construction can be guided by the specification. On other hand, the written description requirement under 35 USC 112 prevents Applicants from claiming more than they have actually invented, and is measured by the written description of the invention within the patent application. Accordingly, the Federal Circuit remanded the case for further proceedings.
Patent Attorney Take-A-Ways:
- The written description requirement and claim construction are two independent tasks. It is likely when constructing the claims, the court will hold that the re-centering is done manually based on static information
- When writing a specification for a patent try to think of possible design arounds. For example, here if trading technologies had created a system that could automatically re-center their columns, then the likely would not be having this issue. The re-centering could be based on different factors or inputs, but they could have still obtained broader claims than what they are likely to be given based on their specification. Dynamically vs. statically obtaining data or presenting data can be very important in software or “big data” patent applications. Therefore, it is paramount for patent attorneys to state that data can either be statically or dynamically obtained, transmitted, presented, etc. while drafting patent applications.
- In this case, although the patent attorneys removed the term “static” from the claims, it is likely during claim construction that the term will be construed in the definition of the claims because there is only support for “static” re-centering in the patent application.