One issue in TTI v Espeed was whether the provisional patent application provided support (112P1 - adequate written description) for a broader claim in the regular patent application that claimed priority back to the provisional application. The provisional application describes only one species while the regular application claimed a broader genus. “ The provisional application never refers to a “single action of a user input device,” but instead refers solely to “a single click of a computer mouse.”” Op. p. 28. The Court found the record contained substantial evidence to support the jury’s verdict that the provisional application’s written description was adequate.
The provisional application distinguished between order entries performed in a single action and multiple-step actions. “Moreover, the parties’ experts did not dispute that one of ordinary skill in the art would have known about other forms of “single action” such as a double-click or pressing a key.” Op. p. 32.
Below are relevant sections from the opinion.
Excerpts of Claim 1 of the '304 patent:
A method for displaying market information relating to and facilitating trading of a commodity ….. , the method comprising:
dynamically displaying a first indicator in one of a plurality of locations in a bid display region, ……; and
in response to a selection of a particular location of the order entry region by a single action of a user input device, setting a plurality of parameters for a trade order relating to the commodity and sending the trade order to the electronic exchange.Regarding claim interpretation, the opinion stated:
The district court construed "single action of a user input device" 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." Trading Techs., 2006 U.S. Dist. LEXIS 80153, at *11. In this context, the word "an action" means one user action. An action may include multiple sub-elements as long as the user views all sub-elements as one user action (e.g., double-click comprising of two single-clicks is "an action"). The invention is different from prior art inventions that required a trader to click on multiple locations before submitting the order. The district court's construction correctly sets objective boundaries by distinguishing the invention from multiple-action systems found in the prior art.
The court presents the legal standard as:
Claims enjoy the earlier filing date only if the provisional application provided adequate written description under 35 U.S.C. § 112, ¶ 1. New Railhead Mfg. v. Vermeer Mfg., 298 F.3d 1290, 1294 (Fed. Cir. 2002). 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." Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997). Therefore, the provisional application must describe the invention in such a way that one of ordinary skill in the art "would understand that the genus that is being claimed has been invented, not just the species of a genus." Carnegie Mellon Univ. v. Hoffman-La Roche, Inc., 541 F.3d 1115, 1124 (Fed. Cir. 2008).The court held :
Turning to the merits, the record shows substantial evidence to support the jury's verdict that the provisional application's written description was adequate. TT's expert, Craig Pirrong explained that the provisional application distinguished between order entries performed in a single action and multiple-step actions. He did not distinguish a single-click from other types of single actions. Therefore, one of ordinary skill in the art could read the provisional application to encompass any single actions.
Moreover, the parties' experts did not dispute that one of ordinary skill in the art would have known about other forms of "single action" such as a double-click or pressing a key. Considering the undisputed knowledge of those skilled in the art, disclosure of a species in this case provides sufficient written description support for a later filed claim directed to a very similar and understandable genus. Accordingly, the patents-in-suit are entitled to claim priority to the provisional application.The patents asserted were U.S. 6,766,304 and 6,772,132.
Opinion: http://www.cafc.uscourts.gov/opinions/08-1392.pdf
