Espeed, Inc. v. Brokertec Usa, L.L.C., Civ.A. 03-612-KAJ.

• Decision Date: 05 December 2005
• Docket Number: No. Civ.A. 03-612-KAJ.,Civ.A. 03-612-KAJ.
• Citation: 404 F.Supp.2d 575
• Parties: ESPEED, INC.; Cantor Fitzgerald, L.P.; and CFPH, L.L.C., Plaintiffs, v. BROKERTEC USA, L.L.C.; Garban, L.L.C., OM Technology AB; and OM Technology (US), Inc., Defendants.
• Court: U.S. District Court — District of Delaware

404 F.Supp.2d 575

ESPEED, INC.; Cantor Fitzgerald, L.P.; and CFPH, L.L.C., Plaintiffs, v. BROKERTEC USA, L.L.C.; Garban, L.L.C., OM Technology AB; and OM Technology (US), Inc., Defendants.

No. Civ.A. 03-612-KAJ.

United States District Court, D. Delaware.

December 5, 2005.

David Ellis Moore, Richard L. Horwitz, Potter Anderson & Corroon, LLP, Wilmington, DE, for defendant.

Jack B. Blumenfeld, Morris, Nichols, Arsht & Tunnell, Wilmington, DE, for plaintiff.

MEMORANDUM ORDER

JORDAN, District Judge.

I. INTRODUCTION

This patent infringement case was tried beginning on February 7, 2005. (Trial Transcript ["Tr."], Volume ["Vol."] 1.) Plaintiffs eSpeed Inc., Cantor Fitzgerald, L.P., CFPH, L.L.C., and eSpeed Government Securities, Inc. (collectively, "eSpeed") accused Defendants BrokerTec USA, L.L.C., Garban, L.L.C., OM Technology AB, and OM Technology (US), Inc. (collectively, "BrokerTec") of infringing claims 20-23 of U.S. Patent No. 6,560,-580B1 (the "'580 patent"). (Docket Item ["D.I."] 512; Tr., Vol. 1 at 191-92.) BrokerTec counterclaimed for a judgment that the '580 patent was invalid, that the '580 patent was procured by inequitable conduct, and that BrokerTec did not infringe the patent. (D.I. 520; Tr., Vol. 1 at 192.) On February 22, 2005, the jury returned a verdict finding that the accused Garban GTN system literally infringed claims 20-23 of the '580 patent, but that those claims were invalid because the patent failed to provide an adequate written description. (D.I. 643; Tr., Vol. 11, at 3014:12-3015:20.) Presently before me is eSpeed's Motion for Judgment as a Matter of Law or, In the Alternative, For a New Trial. (D.I.649.) Also before me is BrokerTec's Motion for Judgment as a Matter of Law on Invalidity and Non-Infringement. (D.I.651.) Jurisdiction over this matter is proper under 28 U.S.C. §§ 1331 and 1338. For the reasons that follow, all of the pending motions will be denied.

II. BACKGROUND

The background of this case has been set forth in several prior opinions and orders, and will not be set forth in detail here. See eSpeed, Inc. v. BrokerTec USA, L.L.C., 69 U.S.P.Q.2d 1466, 2004 WL 62490 (D.Del.2004) (denying preliminary injunction); eSpeed, Inc. v. BrokerTec USA, L.L.C., 2004 WL 2346141 (D.Del. Sept.9, 2004) (claim construction); eSpeed, Inc. v. BrokerTec USA, L.L.C., 2004 WL 2346137 (D.Del. Sept.13, 2004) (granting motion to dismiss for lack of personal jurisdiction as to Defendant ICAP PLC); eSpeed, Inc. v. Brokertec USA, L.L.C., 342 F.Supp.2d 244 (D.Del.2004) (granting-in-part and denying-in-part motion for summary judgment).

eSpeed filed U.S. Patent Application No. 08/766,733 (the "'733 application") in December of 1996, (DX 42 at FN 00001792), which issued as U.S. Patent No. 5,905,974 (the "'974 patent") in May of 1999. (DX9.) Prior to the issuance of the '974 patent, eSpeed filed a continuation application, U.S. Patent Application No. 09/294,526 (the "'526 application"). The '580 patent issued on May 6, 2003 from the '526 application. Both patents cover an electronic trading platform used in trading government securities.¹ (See, e.g., DX 9 at Col. 1, Lines 6-11.) eSpeed selected claims 20-23 of the '580 patent to assert against Broker-Tec. (Tr., Vol. 1 at 230:6-17; U.S. Patent No. 6,560,580 at col. 4, lines 4-57.)

The issues of infringement and invalidity were fully aired before a jury during the two week trial. (Tr., Vol.1-9.) Concurrently, the parties tried the issue of inequitable conduct to the court. (Tr., Vol.1-10.) At the end of trial, the jury returned a verdict finding that the accused Garban GTN System literally infringed the asserted claims of the '580 patent, but that the infringement was not willful. (Tr., Vol.11, 3014:10-23.) The jury further found that claims 20-23 of the '580 patent were invalid because the written description was insufficient to support each and every element of those claims. (Id. at 3015:13-20.) The jury further found, however, that BrokerTec had not shown that the patent was made obvious by or anticipated by the prior art. (Id. at 3014:24-3015:12.) Finally, the jury found that the proper inventors were named on the patent. (Id. at 3015:21-3016:8.)

III. STANDARD OF REVIEW

A. Judgment as a Matter of Law

"Pursuant to Federal Rule of Civil Procedure 50, judgment as a matter of law may be granted only when `there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue.'" Bullen v. Chaffinch, 336 F.Supp.2d, 342, 346 (D.Del.2004) (quoting Fed.R.Civ.P. 50(a)). In assessing the sufficiency of the evidence, the court must give the non-moving party, "as [the] verdict winner, the benefit of all logical inferences that could be drawn from the evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the record in the light most favorable to him." Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir.1991). The court must determine "whether the record contains the minimum quantum of evidence from which a jury might reasonably afford relief." Keith v. Truck Stops Corp. of America, 909 F.2d 743, 745 (3d Cir.1990) (quoting Smollett v. Skayting Dev. Corp., 793 F.2d 547, 548 (3d Cir.1986) (internal quotation marks omitted)). In deciding a motion for judgment as a matter of law on patent invalidity, that quantum of evidence must be clear and convincing. See, e.g., Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ("the inquiry involved in a ruling on a motion for summary judgment ... necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits"); Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1149 (Fed.Cir.2004) ("we must determine whether the jury had substantial evidence upon which to conclude that ... [the alleged infringer] met its burden of showing invalidity by clear and convincing evidence"). "[A] court is not free to weigh the evidence, pass on the credibility of witnesses, or substitute its judgment of the facts for that of the jury." Aloe Coal Co. v. Clark Equipment Co., 816 F.2d 110, 113 (3d Cir.1987). "The difference in views between court and the jury is an insufficient basis to enter judgment as a matter of law." Boyce v. Edis Co., 224 F.Supp.2d 814, 817 (D.Del.2002).

B. New Trial

Federal Rule of Civil Procedure 59(a) provides, in pertinent part:

A new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.

The decision to grant or deny a new trial is within the sound discretion of the trial court and, unlike the standard for determining judgment as a matter of law, the court need not view the evidence in the light most favorable to the verdict winner. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980); Olefins Trading, Inc. v. Han Yang Chem. Corp., 9 F.3d 282 (3d Cir. 1993). Among the most common reasons for granting a new trial are: "(1) ... the jury's verdict is against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage of justice; (2) ... newly-discovered evidence exists that would likely alter the outcome of the trial ...; (3) ... improper conduct by an attorney or the court unfairly influenced the verdict; ... [and] (4) ... the jury's verdict was facially inconsistent." Zarow-Smith v. N.J. Transit Rail Operations, 953 F.Supp. 581, 584 (D.N.J.1997) (citations omitted).

IV. DISCUSSION

A. eSpeed's Motion for Judgment as a Matter of Law on Invalidity Under 35 U.S.C. § 112

At the end of trial, the jury found that claims 20-23 of the '580 patent were invalid for lack of sufficient written description under 35 U.S.C. § 112. eSpeed argues that, as a matter of law, the written description was sufficient. The first paragraph of 35 U.S.C. § 112 states that "the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains ... to make and use the same...." 35 U.S.C. § 112. The Federal Circuit has stated that this requirement exists to require the applicant to "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed.Cir.1991). The written description requirement raises the question of "whether the application provides adequate support for the claim(s) at issue; it has also been analyzed in terms of new matter." Vas-Cath, 935 F.2d at 1560 (internal quotations omitted).

Here, eSpeed claims that BrokerTec failed to show by clear and convincing evidence that the '580 patent was invalid for lack of sufficient written description. First, eSpeed asserts that BrokerTec did not show what one of ordinary skill in the art would have understood in looking at the '733 application. (D.I. 650 at 8.) eSpeed argues BrokerTec's technical expert, Dr. Martin Rinard, was not a person of ordinary skill in the art, as he was familiar only with computer systems and not with the rules of securities trading. (Id. at 9-11.) eSpeed claims that Dr. Rinard failed to analyze the patent application as a whole, improperly focusing instead on one figure of the patent. (Id. at 11-13.) Further, eSpeed claims that BrokerTec improperly focused on amendments made during the prosecution of the '580 patent, rather than looking at the original disclosure of the '733 application. (Id. at 13-19.) eSpeed additionally claims that it presented unrebutted evidence showing support for claims 20-23 in the '733 application, and that BrokerTec relied on extrinsic evidence which did not support a finding that the...