Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 6, 2008) (Moran, Sen. J.).*
After a two-day hearing and two rounds of briefing, Judge Moran held that defendants (collectively “eSpeed”) had not met their burden of proving that plaintiff Trading Technologies (“TT”) engaged in inequitable conduct before the Patent & Trademark Office (“PTO”). The Court held that one of the TT patent’s inventors engaged in commercial use between the priority dates for the patent’s provisional and parent applications. But the Court held that TT was not required to disclose the commercial use to the PTO because it was not material to patentability. First, TT sought priority from its provisional application in good faith and had a reasonable belief that priority from the provisional was warranted. The reasonableness of the belief was born out when both the jury and the Court determined that the patent could claim priority from the provisional application. Because the commercial use happened after the patent’s critical date (based upon the provisional application), it was not material.**
Additionally, TT did not commit inequitable conduct when it responded to the Examiner’s request for, among other things, “any use of the claimed invention” with a series of brochures and presentations that described the software’s features, but without identifying the inventor’s commercial use. TT argued that the Examiner was seeking an explanation of all of the features of TT’s software because it had identified anticipatory prior art from TT’s website in a prior Office Action. The Court held that this was a reasonable reading of the Examiner’s request because the Examiner accepted TT’s response which did not address whether the software had been in use. Had the Examiner wanted an answer to that question, he could have asked again, instead of allowing the patent to issue.
Many readers will be wondering what is next. The Court has a few more pending motions, and a motion for reconsideration would not be surprising in this case. But for the most part, I suspect that this case is now on a fast track to the Federal Circuit, where the Court predicted it was going months ago. As always, I will keep you updated as the case develops, both in the Northern District and at the Federal Circuit.