Full opinion text
MEMORANDUM OPINION COBB, District Judge. In this patent infringement action, plaintiff Vernon F. Minton (“Minton”) alleges that The National Association of Securities Dealers, Inc. (“NASD”) and The NASDAQ Stock Market (“NASDAQ”) (“Defendants”) infringe Minton’s United States Patent No. 6,014,643 (’643 patent) entitled “INTERACTIVE SECURITIES TRADING SYSTEM.” Currently before the court is Defendants’ motion for summary judgment [Dkt. # 59] of invalidity under the on-sale bar provision of Title 35 U.S.C. § 102(b) and Minton’s cross-motion for partial summary judgment [Dkt. # 63] of non-invalidity under the on-sale bar provision. Additionally, the court ordered the parties to provide further briefing and relevant evidentiary submissions regarding the four factual obviousness inquiries enunciated in Graham v. John Deere Co. relevant to a § 102(b)/103 bar determination. Because Minton offered to commercially lease a network and software program to a brokerage firm to practice his patented invention more than one year before he filed his application for the patent, the court grants the motion for summary judgment of invalidity of the patent under the § 102(b) on-sale bar. Furthermore, because Minton’s invention is rendered obvious by the addition of the leased network and software program to the prior art, the court enters summary judgment of invalidity of the patent under the § 102(b)/ 103 bar. 1. Background A. Problem to Be Solved Relevant portions of the Background section of Minton’s patent are quoted here at length because they familiarize the reader with the relevant technology and describe the problem that Minton’s invention aims to solve. For hundreds of years, institutions have existed which allow people to buy and sell securities (e.g., stocks, futures, options, commodities, etc.) from one another. Today, examples of these institutions are: The New York Stock Exchange (N.Y.SE), The National Association of Security Dealers Automated Quotation (NASDAQ) System, and The American Stock Exchange (AMEX). These modern security exchanges facilitate the exchange of several hundred million shares of stock every business day. While a significant portion of this trading is initiated by individuals, either directly or indirectly, these individuals cannot trade securities directly on the above mentioned exchanges. If a user wishes to buy or sell stock or other securities, they must go through a brokerage firm or a stock broker. These brokers are the ones who actually execute a customer’s order to buy or sell a security. There are two primary ways brokers generate income from executing customer orders. First, brokers often charge a commission for executing a customer’s order. Depending on the broker, this commission may vary with the number of shares traded. For example, a broker may charge a base rate of $50.00 to execute a trade, plus an-additional 5 cents per share for every share traded. There is nothing secretive about the commission a broker charges, and customers are familiar with the commissions charged by their brokers. A second way brokers derive income from customers is by taking advantage of the difference between the selling (ask) price and the buying (bid) price of a security. Unlike most consumer items, securities are often listed at two prices: a first price if one is buying the security, and a second price’ if one is selling the security. The selling price is known as the ask price and the buying price is known as the bid price. For example, if a user asks Broker A for the price of a share of stock from ABC Company, the broker may tell the customer that a share of ABC stock can be bought for $ 50.50, and a share of ABC stock may be sold for $50.10. The bid and ask price are not numbers set by a single entity or government agency, rather, these numbers are generated by a broker and constantly fluctuate as the price of a security moves up or down. The difference between the bid price and the ask price is known as the spread. A broker can make money on the spread by connecting customers who want to sell a security at a relatively low price with other customers who wish to buy a security at relatively high price. Due to the advanced nature of today’s communications systems, a broker is in constant contact with many other brokers and institutions which buy and sell securities. These other brokers and institutions are constantly communicating to a given, broker various offers to buy and sell securities, at a range of prices. As stated above, a broker can make money from executing a customer’s order by connecting two customers who are willing to pay different amounts for the same security. For instance, Customer A goes to Broker B and informs Broker B that he wishes to buy one hundred shares of ABC stock for $50.00. Broker B can then log into his communications network to see what other brokers and institutions are charging for one hundred shares of ABC. Broker B may find another broker willing to sell one hundred shares of ABC for $49.50. In this instance, Broker B will, on behalf of Customer A, buy one hundred shares of ABC for the price of $49.50. However, Customer A will- be charged $50.00 per share for the stock that Broker B bought for $49.50 per share. Thus, Broker B will be able to keep 50 cents per share, or $50.00 for the one hundred shares of ABC purchased. This type of profit making is allowed to happen, despite the many regulations that brokers operate under. This same situation, repeats itself when a broker finds another user willing to pay a higher price than what a given seller is asking. The above situation repeats itself many times a day, and creates substantial revenues for commodity and stock brokers. Further, a customer has no way to protect himself from this type of exploitation, since customers do not have access to the communications networks of the broker. Also, customers often do not realize a broker is making money from them in this fashion.... Therefore, what is needed is a data processing system and a network of data processing systems whereby individuals can buy and sell directly from each other, with only minimal involvement by a broker. In such a communications network an individual would be in a similar position to that of a broker, ie., an individual would have access to many other individuals wishing to buy and sell securities. In such a network, an individual would be able to select among many competing offers to buy and sell, and thus would be able to get a better deal than if they were going though a broker. B. Patent Claims Minton asserts that NASDAQ’s Workstation II software program, when used in conjunction with NASD’s services, infringes the claims of his patent. The patent has four claims, each claim defining an invention that aims to solve the problem identified above. The parties have focused the bulk of their briefing on claim 1, to which the court will first address its analysis. Claim 1 of the patent reads as follows: 1. A method for trading securities between individuals, comprising: (1) entering an offer of a first individual to trade a security on a first data processing system; (2) transmitting the offer to additional data processing systems, including a second data processing system, over a public communication network; (3) transmitting to the second data processing system additional offers to trade in the security formed by additional individuals; (4) ranking the offer formed by the first individual and the additional offers formed by the additional individuals according first to a price value, then secondly, according to a quantity value; (5) displaying the offer formed by the first individual and the additional offers by the additional individuals according to the ranking step on a graphical user interface on the second data processing system; (6) entering a reply of a second individual on the second data processing system, wherein the reply is in response to the offer; (7) executing a trade of the security based on information contained in the offer for consideration specified in the reply to the offer, whereby the security is traded efficiently between the first individual and the second individual. Minton filed his application for patent with the United States Patent and Trademark Office (PTO) on June 28,1996. C. TEXCEN In the early 90’s, Mr. Minton created a company called the Texas International Stock Exchange (TISE) and devoted a substantial amount of time to developing a telecommunications network and software program called the Texas Computer Exchange Network (“TEXCEN”). The TEXCEN Software Assistance Guide describes TEXCEN and TISE as follows: The Texas International Stock Exchange, Inc. (TISE) is an international telecommunications company that developed the Texas Computer Exchange Network (TEXCEN). TEXCEN will be leased to a member of the National Association of Securities Dealers, Inc. (NASD) and the Securities Investor Protection Corporation (SIPC). TEXCEN is an interactive program available in the Windows environment for public viewing, monitoring, and downloading stock market data. If you decide to become a client of the NASD member, on-line order execution will be added to these services. TEXCEN will be available to the public 24 hours a day, seven days a week. Minton approached two NASD member brokerage firms — Milkie/Ferguson Investments, Inc. (MFII) and R.M. Stark & Co. (RMST) — about licensing TEXCEN. On March 8,1995 — more than one year before Minton filed his patent application with the PTO on June 28, 1996 — Minton entered into a license agreement with RMST to license TEXCEN, which states: WHEREAS, TISE has developed a telecommunications network and software program called the Texas Computer Exchange Network (“TEXCEN ”) whereby individuals can access international financial information twenty four hours a day through personal computers; ... 3. RENT. For use of TEXCEN, RMST agrees to pay TISE rent in the amount of ... Defendants assert that TEXCEN includes all the elements of the claims of Minton’s patent, that Minton offered TEX-CEN for sale more than one year before he filed for his patent, and therefore the patent is invalid under the on-sale bar of the patent statute. Minton concedes that TEXCEN was offered for sale more than a year before his patent was filed, but contends that TEXCEN does not include all the elements of the patent claims. Minton did not disclose TEXCEN to the PTO; therefore, the patent examiner who allowed the claims of Minton’s patent was not able to consider the effect of TEXCEN on the patentability of Minton’s invention. Figure A of the APPENDIX is a block diagram from the TEXCEN Software Assistance Guide of the TEXCEN network, which apparently was prepared at a time when Minton planned to engage in a license agreement with MFII. The text accompanying the block diagram states: “You will be linked via your computer and modem to the TISE Host Computer which is linked to the MFII computer network.” Figure B of the APPENDIX is Figure 3 from Minton’s patent. Although the lease between Minton and RMST fell through, the following describes how TEXCEN would have operated according to the TEXCEN Software Assistance Guides. A TEXCEN customer may install the TEXCEN software program on his personal computer that runs the Windows operating system. The customer may obtain TEXCEN on a floppy disk or by downloading it. The customer then runs TEXCEN, which uses the modem in the personal computer to dial up on the public phone network and connect to the TEXCEN host computer. TEXCEN then allows the customer to create an account with the brokerage firm, such as MFII or RMST. The customer may deposit money in the account by supplying a VISA card number, for example, in order to have working capital with which to buy stocks. TEXCEN allows the customer to submit offers to buy or sell shares of a particular stock at a price and quantity the customer specifies. The offers are sent to the TEX-CEN host computer, which forwards the offers to a broker. The broker validates or approves the offers by determining whether the customer has sufficient funds in his account (if buying) or sufficient shares in his account (if selling). If the broker approves the offer, it is transmitted by the TEXCEN host computer to the customer’s computer as well as other customer computers and displayed on their TEXCEN Trade and Execution Screen, which is shown in Figure C of the APPENDIX. Figure D of the APPENDIX is Figure 4 from Minton’s patent. Additionally, the TEXCEN host computer sends to the customer’s computer information about offers to buy or sell the stock made by other customers. TEXCEN displays in the Trade and Execution Screen on the customer’s computer the offers to buy in one window (designated OFFERS TO BUY in the upper left-hand quadrant ot Figure C) and the offers to sell in another window (designated OFFERS TO SELL in the lower right-hand quadrant of Figure C). The offers are listed in a sorted order by price. If any offers have the same price, they are listed in a sorted order by quantity of shares. If any offers have the same price and quantity, they are listed in a sorted order by time. Assuming for example the customer wants to buy or sell the stock at the price and quantity specified in one of the offers listed in the TEXCEN Trade and Execution Screen, he uses his mouse to select one of the offers in the OFFERS TO BUY or OFFERS TO SELL window and clicks on the “Execute” button shown in Figure C. A confirmation screen appears and the user clicks on a “Reconfirm” button. TEXCEN then sends to the TEXCEN host computer an indication that the customer wants to accept the selected offer. Exactly what happens when the TEX-CEN host computer receives the indication of acceptance is disputed, as discussed below; however, the following is clear. If the customer has insufficient shares in his account if selling or insufficient funds in his account if buying, TEXCEN displays for the customer a notice to that effect on the computer screen. Otherwise, the trade is executed, the customer’s account is updated, and TEXCEN displays for the customer a notice of confirmation that the stocks were traded. A main issue of dispute is whether TEXCEN itself executes the trade according to the claimed invention. II. Analysis “A patent shall be presumed valid.” 35 U.S.C. § 282. “Facts supporting a determination of invalidity must be proven by clear and convincing evidence.” Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253,1257 (Fed.Cir.2001). A. Summary Judgment A court shall grant summary judgment if “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). “Thus, summary judgment is proper only when no ‘reasonable jury could return a verdict for the nonmov-ing party.’ Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986).” Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d at 1257. “In determining whether there is a genuine issue of material fact, the trial court must assume that the evidence presented by the non-movant is credible and draw all justifiable inferences therefrom in the non-movant’s favor.” Id. The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient for denial of a motion for summary judgment; there must be enough evidence to enable a jury reasonably to find for the nonmoving party on that issue. See Anderson, 477 U.S. at 249, 106 S.Ct. 2505. If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). B. § 102(b) Bar The patent statute prescribes that “[a] person shall be entitled to a patent unless ... the invention was ... on sale in this country, more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b). Consequently, if the PTO issues a patent, and a district court later determines that the patented subject matter was offered for-sale in the United States more than one year before the day the patent application was filed, the court must hold the patent invalid by reason of the on-sale bar imposed by § 102(b). See Monon, 239 F.3d at 1257. The product or “subject matter” offered for sale must anticipate— ie., include all the elements and limitations of — the patent claim allegedly infringed or the on-sale bar does not apply. See Scaltech Inc. v. Retec/Tetra, LLC., 178 F.3d 1378, 1383 (Fed.Cir.1999). Whether an invention is subject to an on-sale bar is a question of law. Paragon Podiatry Lab., Inc. v. KLM Labs., Inc. 984 F.2d 1182, 1186 (Fed.Cir.1993). The Supreme Court has recently set forth the two requirements of a § 102(b) on-sale bar. “First, the product [allegedly invoking the on-sale bar] must be the subject of a commercial offer for sale” prior to the critical date, which is one year before the patent application filing date. Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 67, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998). The second requirement of the on-sale bar is that the invention must be “ready for patenting” prior to the critical date. Pfaff, 525 U.S. at 67, 119 S.Ct. 304. Stated alternatively, if the patentee “could have obtained a patent” on his novel idea at the time he offered it for sale, then it is ready for patenting. See Pfaff, 525 U.S. at 63, 119 S.Ct. 304. One way to' show an invention is “ready for patenting” is to show an “actual reduction to practice”, that is, the patentee actually made a working model of the -invention or performed the method of the invention. See Pfaff, 525 U.S. at 67, 119 S.Ct. 304. The actual reduction to practice must include all the elements and limitations of the claimed invention in order to constitute an on-sale bar. Although Min-ton denies that TEXCEN includes all the elements and limitations of the claimed invention, “Minton warranted that the TEXCEN program was operational and it was operational prior to June 1995,” that is, before the critical date. A second way to show an invention is ready for patenting is to show that “prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.” Pfaff, 525 U.S. at 67, 119 S.Ct. 304. The Court discussed in its reasoning The Telephone Cases, involving the patenting of the telephone by Alexander Graham Bell. There it was found that even though Mr. Bell had not actually made a working telephone at the time he filed his patent application, the patent application included a description of the telephone invention that a skilled mechanic could follow to construct a telephone that worked as claimed in the patent application. Pfaff, 525 U.S. at 62, 119 S.Ct. 304. Hence, even though Bell had not reduced his telephone to practice, he had obviously conceived of how to do it and had written down his conception in sufficient detail to enable a skilled mechanic to reduce it to practice. Filing a patent application containing an enabling written description is commonly referred to as a “constructive” reduction to practice. Hence, Bell’s invention was “ready for patenting” because he “could have obtained a patent,” Pfaff, 525 U.S. at 63, 119 S.Ct. 304. ' In the Pfaff case, an engineer-inventor prepared drawings of an integrated circuit socket and offered to sell the socket more than one, year before filing a patent application for the socket invention. The inventor stated in his deposition that it was his practice not to make prototypes, but instead to go directly from his drawings to production units, because his drawings were sufficient to do so. No sockets were actually reduced to practice until a date that was less than one year from the patent application filing date, nevertheless, the Supreme Court found that the drawings made the invention “ready for patenting” because the inventor “could have obtained a patent” at that time, and that the pre-critical date commercial offer for sale invalidated the patent. One of the policies behind the on-sale bar is to prohibit an inventor from extending the length of time he is allowed to commercially exploit his invention beyond the time set out by the patent statute. See Envirotech Corp. v. Westech Eng’g Inc., 904 F.2d 1571, 1574 (Fed.Cir.1990) (citing additional policies: “discouraging removal of inventions from the public domain that the public reasonably has come to believe are freely available; favoring the prompt and widespread disclosure of inventions; allowing the inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent”). In light of the relevant statutes and case law cited above, the court now determines whether any genuine issue exists with regard to the material facts of whether TEX-CEN includes each element and limitation of patent claim 1. Before delving into the claim elements individually, a general discussion of the summary judgment evidence is helpful. According to the Supreme Court’s second manner of showing the invention was “ready for patenting,” the pre-critical date drawings or other descriptions of the invention prepared by the inventor must be “sufficiently specific to enable a person skilled in the art to practice the invention.” Pfaff, 525 U.S. at 67, 119 S.Ct. 304. This “enablement” requirement parallels the language of the enablement requirement of 35 U.S.C. § 112 ¶ 1, which requires the specification of a patent to contain a written description of the invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art ... to make and use the [invention].” Thus, it may be concluded that if the pre-critical date drawings or descriptions are at least as enabling as the patent specification, then the pre-critical date drawings and descriptions are enabling and show that the invention was “ready for patenting” as Pfaff requires; otherwise, the patent itself would be invalid as failing the § 112 enablement requirement. In this regard, significant portions of Minton’s patent specification are substantially similar to pre-critical date screen output generated by TEXCEN, descriptions of TEXCEN in the TEXCEN Software Assistance Guide provided with TEXCEN, and text files taken from a .TEXCEN program diskette. Significant portions of the text of the patent specification are essentially verbatim from the TEXCEN Software Assistance Guide. Additionally, there is great similarity between the figures of the patent and TEX-CEN. A comparison of Figures C and D provides an example of this fact. The patent contains Figures 1 through 12. Figures 1 through 3 are figures of a computer system and a computer network as are well known in the art. Figures 9 through 12 pertain to the claims in the patent application as originally filed directed to a method and network for individuals to “make a market” in a security. The PTO rejected the market making claims, and the court can find no relevance in figures 9 through 12 to the allegedly infringed claims. Figures 4 through 7 are screen shots of screen output generated by TEX-CEN. (Figure 4 of the patent is shown above as Figure C of the' APPENDIX.) Thus, Figure 8 is the only figure of the patent that is not either directed to the rejected market making claims, well-known prior art, or produced by TEX-CEN. However, the steps in the flowchart of Figure 8 are described in text files printed from a TEXCEN program diskette. Furthermore, the description of Figure 8 in the patent is mainly references to Figures 4 through 7, and includes text taken almost verbatim from the TEXCEN Software Assistance Guide. These similarities are not coincidental. Minton stated in his deposition that he provided a copy of the TEXCEN program and TEXCEN Software Assistance Guide to his patent attorney who used them to prepare the patent application. The conclusion to be drawn is to the extent some or all of the elements of the allegedly infringed claims - are described in the pre-critical date drawings or descriptions in a manner similar to the description in the patent specification, Minton cannot argue that his pre-critical date drawings and descriptions do not meet the Pfaff “ready for patenting” requirement. The vast bulk of Minton’s statement of genuine issues is devoted to disputing that TEXCEN performs the “executing a trade” step. The other elements are not disputed individually, but generally with the claim as a whole, based on Minton’s deposition testimony. 1. “entering an offer” step The first element of claim 1 is the step of “entering an offer of a first individual to trade a security on a first data processing system.” Chapter 4 of the TEXCEN Software Assistance Guide describes TEXCEN’s “Buy Parameters Screen.” Chapter 4 includes a screen shot of the Buy Parameters Screen, Screen 21, and a four-page description thereof. Screen 21 is essentially identical to FIG. 6 of the patent specification, which states: “FIG. 6 illustrates the screen where information relating to an order to buy a security is entered.” The screen enables a user of TEXCEN to enter order parameters, such as price, quantity, and order expiration criteria associated with an offer “to purchase a security for your portfolio.” Similarly, Chapter 5 of the Guide describes TEXCEN’s “Sell Parameters Screen,” which performs a similar function with regard to an offer to sell a security, and which is essentially identical to FIG. 7 of the patent. To dispute Defendants’ evidence, Minton offers only his deposition testimony. Initially, Minton acknowledged that the “entering an offer” step is present in TEX-CEN: 16 17 18 19 Q. Of the ’643 patent. Mr. Minton, I’d like to go through — I’d like to refer you to the first element, “entering an offer of a first individual to trade a security on a first data processing system”? 20 A. Okay. 21 22 Q. That element is found in the TEXCEN computer program, is it not? 23 A. Yes, sir. However, after a break in the deposition, Minton decided the step was not present in TEXCEN. “Exhibit 33,” referred to in the deposition excerpt below,' is a two-column table in which the elements of claim 1 are written in the left-hand column, and the right-hand column was blank so that Mr. Minton could indicate whether each element of the claim was found in TEXCEN. A. Okay. Before I do that, I wanted to let you know that I marked these other elements “no” as well on Exhibit 33, for the same reason. Wherever the word “individual” is used, on the TEXCEN program, it may or may have not been an individual. 11 12 13 14 15 So I wanted to let you know that before you got surprised and looked at this document. 16 17 Q. So you have now changed your — in the document itself, you have just written “no” in every block; is that right? 18 19 20 A. Yes, sir. 21 Q. And you did that after — after the break we just took? 22 23 A. Yes, sir. 24 Q. After — okay. After talking to your counsel? 25 A. It — I talked to them, but they didn’t — they’re not the ones that told me to do this. 1 2 Q. I’m not asking you to tell me what they said. 3 A. Okay. 4 Q. And — but the only reason you put “no” in each block was because of the word “individual”? 5 6 A. Yes, sir. In this — this—in the context of this patent, an individual is not a broker, a specialist, or a market maker. In the TEXCEN program, the buyers could be brokers. 7 8 9 10 Q. Okay. So — and under your — under the ’643 patent, you’re saying that an individual cannot be a broker, market maker, or specialist? 11 12 13 A. Yes, sir. 14 Q. And is that — is that anywhere in — explained in the — in any of the elements of the patent that are listed on the left-hand side of Exhibit 33? 15 16 17 A. No, it’s in the specification. 18 Q. Is it in your — strike that. 19 In the TEXCEN program, the buyer — the buyers could be individuals, could they not? 20 21 A. Yes. And they could be brokers and market makers. 22 As the quoted deposition extract shows, Minton’s reason for changing his mind about whether TEXCEN performed the “entering an order” step — and other steps of the claim — was his belief that the term “individual” in the patent claims should be construed to exclude brokers, specialists, and market makers. Hence, according to Minton, it is a limitation of the claim that an “individual” cannot be a broker, specialist, or market maker. For this reason, Mr. Minton apparently believed that TEX-CEN did not anticipate claim 1 because TEXCEN did not include that limitation, since TEXCEN could be used to buy securities not only by “individuals” as he defined the term, but also by brokers, specialists, and market makers. Minton’s changed answer is based on his erroneous construction of the claim term “individual.” Minton’s deposition statements were given before the court’s opinion on claims construction was issued, and the statements concerning Minton’s belief of the proper construction of the term “individual” conflict with the court’s construction of the term. The court determined that the plain language of the claim did not preclude brokers from using the invention to trade “as individuals for their own sake” and that “the explicit language of the claims places no restriction or limitation on the identity of the traders.” Furthermore, Minton’s alleged construction of the term “individual” is somewhat dubious in light of the fact that in the context of being asked whether the NASDAQ Workstation II software infringes his patent he stated: 21 Q. Your system is designed to allow brokers to trade? 22 A. Brokers could trade on it, sure. 23 Q. For other people’s accounts? 24 25 A. And for themselves. They just can’t hide the orders anymore. Thus, TEXCEN is not precluded from anticipating the claim for the reason Min-ton gave, ie., with respect to the meaning of the term “individual.” Consequently, Minton’s deposition testimony confirms that TEXCEN performs the “entering an offer” step, rather than raising a genuine issue of the fact. 2. “transmitting the offer,” “transmitting ... additional offers,” and “entering a reply” steps Elements (2), (3), and (6) of claim 1 are the steps of “transmitting the offer to additional data processing systems, including a second data processing system, over a public communication network,” “transmitting to the second data processing system additional offers to trade in the security formed by additional individuals,” and “entering a reply of a second individual on the second data processing system, wherein the reply is in response to the offer.” The TEXCEN Software Assistance Guide shows that TEXCEN performs these steps. Again, Minton offers only his deposition testimony as evidence to dispute the evidence that TEXCEN performs elements (2), (3), and (6). Like the first element, Minton initially acknowledged in his deposition that all three of these steps are present in TEXCEN, but later changed his mind based on his erroneous construction of the claim term “individual.” For the reasons discussed above with respect to the first element, Minton’s deposition testimony supports the fact that TEXCEN performs elements (2), (3), and (6), rather than raising a genuine issue about the fact. 3. “ranking the offer ... and additional offers” and “displaying the [ranked] offers” steps Elements (4) and (5) of claim 1 are the steps of “ranking the offer formed by the first individual and the additional offers formed by the additional individuals according first to a price value, then secondly, according to a quantity value” and “displaying the offer formed by the first individual and the additional offers by the additional individuals according to the ranking step on a graphical user interface on the second data processing system.” Chapter 3 of the TEXCEN Software Assistance Guide describes TEXCEN’s “Trade and Execution Screen.” Chapter 3 includes a screen shot of the Trade and Execution Screen, Screen 18, and a six-page description thereof. Screen 18 is essentially identical to Figure 4 of the patent specification, which states: “FIG. 4 illustrates the trading screen of the program controlling a user’s data processing system according to the present invention.” As the Software Assistance Guide states: “The Trade and Execution Screen is divided into four quadrants: The upper left quadrant lists all Offers to Buy (Bids) of the selected security (stock). The offers are listed in order with respect to price, size, and time, in that order.” “The lower right quadrant lists all Offers to Sell (Asks) of the selected security. These offers are listed in order with respect to price, size, and time, in that order.” To dispute NASD’s evidence, Minton again offers only his deposition testimony. Minton’s testimony confirms rather than disputes the fact that TEXCEN ranked offers first according to price, second according to quantity and displayed the ranked offers. Minton confirmed that TEX-CEN does rank offers according to price, then according to quantity. However, Minton stated that TEXCEN was different because it further ranks according to time. Yet, the fact that TEXCEN also ranks third according to time does not keep the “ranking” element from reading upon TEXCEN, i.e., does not keep TEX-CEN from anticipating the “ranking” element. It is a fundamental tenet of claim anticipation that if “everything in the claim appear[s] in the item of prior art ... then the terms of the claim are satisfied by the item under review. The claim is said to ‘read’ upon that item. It matters not that other elements or structures appear in that item which do not appear in the claim.... If the claim ‘reads’ upon ... a statutory item of prior art, then the claim is ‘anticipated’ by that item of prior art and is invalid or unpatentable.” Thus, the fact TEXCEN does more than the patent claim step requires does not negate the fact that TEXCEN anticipates the step. Therefore, Minton’s answer does not raise a genuine issue of material fact with respect to the “ranking” step. Minton stated in his deposition that TEXCEN does not perform the “displaying” step. However, Minton’s answer is again based upon an erroneous construction of the claim term and/or a misunderstanding of the law regarding claim anticipation. Minton’s reason for believing TEXCEN did not anticipate the “displaying” step is that TEXCEN did not display all the orders. However, according to the court’s construction of claim 1, “it is only necessary that a minimum of two offers be transmitted in the transmitting step and that three or more offers to trade in a security be ranked by the ranking step and then displayed by the displaying step. It is not necessary that all offers be transmitted, ranked, or displayed.” Again, rather than raising a genuine issue, Minton’s deposition testimony supports Defendant’s evidence that TEXCEN performs the “displaying” step. 4. “executing a trade” step Element (7) of claim 1 is the step of “executing a trade of the security based on information contained in the offer for consideration specified in the reply to the offer, whereby the security is traded efficiently between the first individual and the second individual.” In his brief for the Markman hearing, Minton proposed the meaning of the trade execution step was “that an agreement has been reached between two individuals for the purchase and sale of a security.” Defendants did not dispute the meaning of the executing step. The court adopted Minton’s proposed construction, and in the context of identifying the corresponding structure of claim 3’s means-plus-function language, the court construed the trade execution step as follows: The function “executing” is essentially the smallest part of the invention, in that it requires only a status change in one or possibly two memory loeation(s). It is that switching of state where offer and acceptance come together to form a contract. The only explanation in Minton’s patent specification of how a memory location in a computer might be changed to indicate an agreement has been reached is as follows: “Once User B selects User A’s order, this information is sent back to the server (840). Once User B’s selection arrives at the server, the server can then note that a transaction has occurred.” As may be seen, Minton gives very little description about how his invention executes the trade other than “the server can then note that a transaction has occurred.” This is commensurate with the court’s description of the trade execution step as essentially the smallest part of the invention. The pre-critical date drawings and descriptions are much more extensive than the patent specification’s description of the trade execution step as the following citations show. Hence, there is no genuine issue about whether the pre-critical date drawings and descriptions enable one skilled in the art to practice the trade execution step; otherwise, Minton’s patent would be invalid for lack of § 112 enablement. The TEXCEN Software Assistance Guide lists as one of TEXCEN’s highlights: Immediate Execution — TEXCEN has an exclusive agreement with the broker dealer RMST. All Offers to Buy (Bids) and Offers to Sell (Asks) are firm and not indications of interest (quotes). This means RMST has the verified funds and securities are available (deposited) for every offer to buy and every offer to sell BEFORE the order is entered on the Trading Screen. Therefore, when you click TEXCEN Market in the Buy or Sell Parameters Screen, TEXCEN and RMST are able to immediately execute your trade and issue your confirmation. Additionally, Minton’s deposition testimony states in reference to a description of TEXCEN in a text file taken from a TEXCEN program diskette: 20 21 22 23 Q. In the — could you skip down a few paragraphs, Mr. Minton, to the one that says — it begins “Therefore, quotes are not firm, but only a snapshot.” Do you see that paragraph? It’s the fourth from the bottom. 24 A. Okay. 25 1 ■ 2 3 4 5 Q. And then it says, “It is impossible for the broker to give you this information in real time, but not with TEXCEN.” Could you explain what that sentence means? ■ That’s, I think, a reference to — it’s a contrast — a comparison of a program not using TEXCEN with one using TEXCEN, is it not? 6 A. Yes, sir. 7 8 Q. Okay. And what is that — what are you talking about there? 9 10 11 12 13 A. If you call your broker and ask for a quote during this time frame in our history, it wasn’t a firm quote; in other words, those quotes were not executable. They were just indications of the market. They weren’t find contracts. 14 Q. But under TEXCEN, they were firm contracts? 15 A. Yes, sir. 16 17 18 Q. And in fact, in the next sentence, you say, “All offers are firm,” all caps, “and ready to be negotiated or executed,” correct? 19 A. Yes, sir. 20 Q. And that’s what the TEXCEN program did? 21 A. Yes, sir. 22' 23 Q. Gave, each individual firm offers ready to be executed immediately? 24 A. Yes, sir. 25 Q. So that they could trade electronically? 1 A. Yes, sir. 2 Q. With each other? 3 A. No, not directly with each other, but— 4 Q. Subject to the approval of the broker? 5 A. Yes, sir. 6 7 Q. Through the trading desk and a specialist, I think you said? 8 A. Yes, sir. Finally, Table 1 illustrates the similarity of the language of the TEXCEN Software Assistance Guide and Minton’s patent regarding trade execution. TEXCEN S/W Assistance Guide _’643 Patent_ click on the specific Offer to Buy (Bid) or Sell (Ask), then click Execute. Once the Execute button is clicked and Reconfirmed, the order will be directed through TEXCEN to RMST for immediate validation, approval, and execution. RMST will verify funds are available when buying to Open, securities are in good deliverable form when Selling to Close [Dkt # 46] Exh. 4, p. 26, MI 01436 After the user selects a given offer to buy or sell, the user will then activate execute button 420. Next, the user will be given one more chance to reconfirm the order they entered into buy screen 600 or sell screen 700. After a user reconfirms the order, the order will be directed through the network for immediate validation, approval, and execution. Validation by a broker consists of verifying that funds are available when buying securities and, that the securities are in good deliverable form when selling, col. 12, lines 39-47 TEXCEN only — Your limit order will be entered only on TEXCEN [Dkt. #46] Exh. 4, p. 114, MI 01530 If RMST only field is activated, a user’s order will only be displayed to other users of the individual securities trading network, col. 11, lines 34-36. Table 1. As with other steps in claim 1, Minton conceded that TEXCEN performed the trade execution step were it not for a limitation based on his interpretation of claim 1. Minton stated in his deposition that — based on his proposed Markman construction of the executing step the court adopted — the executing step would be found in TEXCEN if the word “efficiently” were not included in the claim. As with other claim elements, Minton’s assertion that TEXCEN does not perform the executing step is based on an erroneous construction of claim 1. The “efficiently” limitation to which Minton refers is in a “whereby” clause of claim 1. The normal rule of construction is that “a whereby clause that merely states the result of the limitations in the claim adds nothing to the substance of the claim.” Lockheed Martin Corp. v. Space Systems/Loral, Inc., 249 F.3d 1314, 1324 (Fed.Cir.2001) (citing Texas Instruments Inc. v. United States Int'l Trade Comm’n, 988 F.2d 1165, 1172, 26 USPQ2d 1018, 1023-24 (Fed.Cir.1993)); cf. McClarin Plastics, Inc. v. LRV Acquisition Corp., 215 F.3d 1343, 1999 WL 507188 at *2 (Fed.Cir.1999) (unpublished opinion). Minton’s proposed construction of the executing step of claim 1 does not include a limitation that the trade be executed “efficiently,” but only “that an agreement has been reached between two individuals for the purchase and sale of a security.” Min-ton did not argue at the Markman stage for inclusion of the limitation, much less provide the court with an explanation of what might constitute a security being “efficiently traded.” Therefore, the court concludes that the “traded efficiently” language is not a claim limitation. Rather, that the security is traded efficiently between the two individuals is simply an inherent result of the claimed steps of displaying the various ranked offers, replying to one of the offers, and reaching an agreement of the trade based on the offer and reply. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 782 (Fed.Cir.1985). Based on the court’s construction of the claim, Minton’s deposition testimony does not create a genuine issue of whether TEXCEN performs the trade execution step, but instead supports that fact. Minton raises two other objections to the proposition that TEXCEN could execute trades according to the executing step of claim 1 that require analysis. Minton’s first objection is that TEX-CEN did not allow for trading securities “between individuals,” but merely allowed an individual to communicate an offer to his broker, similar to but more expeditiously than sending a fax or making a phone call, and the broker had to execute the trade in the traditional way. This argument ignores an important distinction between the information TEXCEN provides to a broker and the information provided to a broker via a fax or phone call in the traditional scenario. In the traditional scenario, the individual faxes his broker a message that says, “sell 500 shares of GM stock at $100 per share,” or “buy 100 shares of Microsoft at market.” Importantly, the fax does not specify the other side of the trade. That is, the identity of the other party to the contract is not identified, and in the second message an agreed upon price is not supplied. In contrast, TEXCEN provides the broker with information identifying the other side of the trade and an agreed upon price. This is possible because TEXCEN’s Trade and Execution Screen allows the individual to select the other side of the trade, enabling TEXCEN to provide the broker with critical additional information not present in the traditional fax or phone call, namely the other side of the trade at an agreed upon price. Thus, with TEXCEN the broker does not execute the trade in the traditional way. Rather, in the traditional way, the broker must find the 'other side of the trade as part of trade execution; however with TEXCEN, the broker does not have to find the other side of the trade in order to execute the trade, because TEXCEN provides this information. In other words, the information received by the broker from TEXCEN includes all the information necessary to form a contract, namely the identity of the two parties to the contract, and the price and number of shares of the particular stock to be traded. The only limitation in the executing step is that the trade be executed “based on information contained in the offer for consideration specified in the reply to the offer,” which is precisely the information TEX-CEN provides to the broker. Finally, the offer that TEXCEN provides the individual the ability to select is a “firm” offer, according to Minton’s deposition testimony and the pre-critical date drawings, which is possible because the broker approves the offers before they are displayed for acceptance. By asserting that TEXCEN merely allowed an individual to communicate an offer to his broker, similar to but more expeditiously than sending a fax or making a phone call, and the broker had to execute the trade in the traditional way, perhaps Minton is referring to the fact that TEXCEN enables trades of securities in two modes. One mode is in fact a traditional mode, and a second mode is the one described in the previous paragraph. These two modes are referred to in the Software Assistance Guide as “Broker Execution” and “TEXCEN Execution,” respectively. In the Broker Execution mode, the customer does not select the other side of the trade, but merely communicates to the broker the “sell 50 shares of GM at $100” message. However, in the TEXCEN Execution mode, the customer selects the other side of the trade, and TEXCEN provides to the broker all the information necessary to form a contract for sale of the security, as discussed above. However, Minton is mistaken if he believes the on-sale bar requires that all modes or embodiments offered for sale anticipate the claimed invention. If any embodiment of the claimed invention was offered for sale prior to the critical date, the first prong of Pfaff is satisfied. See Scaltech, Inc. v. Retec/Tetra, LLC., 269 F.3d 1321, 1329-30 (Fed.Cir.2001). Minton’s second objection is that the broker trade desk executed the trades, not TEXCEN. To support Minton’s contention, he offers the TEXCEN Software Assistance Guide, a letter from RMST, and Minton’s own deposition testimony and declaration. The TEXCEN Software Assistance Guide states: “Once the [Execute] button is clicked and verified, the order will be directed through TEXCEN to the broker for immediate validation, approval, execution, confirmation, then your account will be updated.” The Guide further states: “This [Trade and Execution] screen allows you to identify, select and execute securities transactions through a broker dealer and member of the NASD.” Additionally, in a letter from RMST to NASD answering questions posed by NASD about TEXCEN’s capabilities, the following statement appears: “TEXCEN will not provide order execution. When RMST receives an order from its customer via TEXCEN, it will, as always, be responsible for transmitting the order to the RMST trading desk for routing and execution.” Finally, Minton’s deposition testimony indicates that TEX-CEN did not execute a trade, but required a broker to do so. There are two implicit assertions in Minton’s argument that TEXCEN does not execute trades. The first implicit assertion regards the construction of claim 1, namely that claim 1 excludes any broker involvement in the executing a trade step. The second implicit assertion regards exactly what was included in the lease agreement between Minton and RMST, namely that the lease agreement did not include the computer having the memory location that is changed to indicate an agreement was reached between the TEXCEN customer making the offer accepted by another TEXCEN customer. For the following reasons, the first assertion is incorrect, and the second is resolved in Minton’s favor in the summary judgment context. The reader is referred to Figure A of the Appendix, and reminded that the TEX-CEN Software Assistance Guide states: “You will be linked via your computer and modem to the TISE Host Computer which is linked to the MFII computer network.” Hence, there exists the TEXCEN network of computers that includes the customer workstations linked to the TEXCEN Host Computer. Linked to the TEXCEN network is the broker network of computers, which includes the broker “Trading Executions” computer (“trade desk computer”). The trade desk computer includes the memory location that is changed to indicate that an agreement had been reached between the parties to the trade. When a first TEXCEN customer accepts the offer of a second TEXCEN customer by clicking on the second customer’s offer in the TEX-CEN Trade and Execution Screen, the first customer’s computer sends a message to the TEXCEN Host Computer, which in turn sends a message to the trade desk computer with the information contained in the offer and acceptance. The evidence supports two possibilities regarding what occurs when the TEXCEN Host Computer sends the message to the trade desk computer. One possibility is that the trade desk computer notifies the broker — such as displaying a message on the trade desk computer screen — that the parties want to trade, and the broker performs an action — such as entering keystrokes on the trade desk computer keyboard — to change the memory location to indicate the agreement was reached. Another possibility is the trade desk computer automatically changes the memory location — without any broker involvement — to indicate the agreement was reached. The court resolves the dispute in favor of the non-movant Minton and concludes the first possibility. Implicit in Minton’s argument is that claim 1 requires a limitation that the broker be excluded entirely from the step of changing a memory location to indicate that an agreement has been reached between the two individuals based on the information received in the offer and reply. With an eye toward infringement during the Markman proceedings, Minton argued' for a broad construction of the trade execution step; now in-the peril of invalidity, Minton argues for a narrower construction. The only limitation appearing in the executing step of claim 1 is that a memory location in a computer is changed to indicate the sale agreement “based on information contained in the offer for consideration specified in the reply.” The executing step of claim-1 includes no limiting language to exclude an intermediate step between the entering of the reply and the changing of the memory location to indicate the agreement has been reached. There is no recitation in claim 1 that the causal link between the entering of the reply and the changing of the memory location must be direct so as to exclude the broker performing an intermediate step. If Minton had wanted to narrow the scope of his invention to include such a limitation, he could have included it in claim 1 or drafted a narrowing claim depending from claim 1. Although the patent specification discloses an embodiment with the narrowing limitation, the court declines to import the non-recited limitation into claim 1. In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed.Cir.1994). It is a well-settled principle of claim construction that as long as a prior art reference includes all the limitations of a claim, the reference anticipates the claim even if it includes additional limitations beyond the claimed limitations. There is no genuine issue that TEXCEN performs the first six steps of claim 1, and that the TEXCEN Host Computer provides to the trade desk computer the information contained in the offer and reply indicating the two TEXCEN customers want to trade the security. Furthermore, there is no genuine issue that the trade desk computer memory location is changed in response to the broker entering input into the trade desk computer in response to the offer and reply information received from TEXCEN. Thus, even resolving in Minton’s favor that the broker performs an intermediate step in TEXCEN, because the court does not import Minton’s implicit claim limitation, claim 1 reads upon the operation of the network- shown in- Figure A. There is no genuine issue that Minton’s invention was ready for patenting prior to the critical date. That is, any reasonable jury would find that Minton “could have obtained a patent” on the invention of claim 1 prior to the critical date, thereby satisfying the second prong of Pfaff. However, this does not end the inquiry. Minton’s second implicit assertion is that the lease agreement did not include leasing the entire network of Figure A, namely the trade desk computer — - the computer having the memory location which is changed to indicate an agreement is reached between the two TEXCEN customers — and that consequently the first prong of Pfaff is not met. “[T]he first determination in the § 102(b) analysis must be whether the subject of the barring activity met each of the limitations of the claim, and thus was an embodiment of the claimed invention.” Scaltech Inc. v. Retec/Tetra, LLC., 178 F.3d 1378, 1383 (Fed.Cir.1999). There is a genuine issue as to whether the trade desk computer of Figure A was part of the lease agreement between Minton and RMST. Because this is a material fact, the court resolves the dispute in favor of the non-movant Minton and concludes the trade desk computer was not part of the lease agreement. However, this does not prevent a § 102(b) on-sale bar for the following reasons. First, changing the memory location in the trade desk computer to indicate that an agreement has been reached between the two TEXCEN customers is the natural result flowing from the message sent to the trade desk by the TEXCEN Host Computer. Scaltech, Inc. v. Retec/Tetra, LLC., 269 F.3d 1321, 1328-29 (Fed.Cir.2001). Executing the trade is not simply a probable or possible result; it is the only result taught by the message. Id. The message is sent for no other purpose than to instruct the trade desk' to execute the trade. Indeed, it is not even sent to instruct the broker to find another individual who might be willing to trade at the offered price; instead, the other party to the trade and agreed upon price are provided to the broker in the message. Second, the TEXCEN Software Assistance Guide is part of the product offered for lease. As discussed, above, there is no genuine issue that the Software Assistance Guide teaches the trade execution step — as well as the other claimed steps. Minton objects that the Software Assistance Guide is not prior art. However, Minton provides no evidence to raise a genuine dispute that the Software Assistance Guide was not included in the offer for sale in the face of evidence that indicates the contrary. Furthermore, it cannot genuinely be argued that a lease of a product as sophisticated as TEXCEN would not include documentation instructing the lessee and its customer users on how to use the leased product. Third, in the context of a method claim — in contrast to an apparatus or composition of matter claim — the court questions whether “the subject of the barring activity” might allow inclusion of a tool or device clearly in the public domain needed to practice a step of the method which is already owned by the purchaser in the barring offer for sale. Commonly in on-sale bar cases involving a method claim, it is not the method itself that is offered for sale. Instead it is a product — a device, system, or composition of matter — offered for sale that enables the purchaser to practice the claimed method. See, e.g., Robotic Vision Systems, Inc. v. View Engineering, Inc., 249 F.3d 1307 (Fed.Cir.2001). Although the court can find no case applying Pfaff to address the question directly, the court concludes the lease of the TEXCEN network and software — even if the trade desk computer was already owned by RMST — satisfies the first Pfaff prong because it would have enabled RMST to practice Minton’s claimed method. The case of Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339 (Fed.Cir.2000), although not explicitly addressing the question, is instructive. Blok-Lok involves a patented method of securing two walls of masonry together using steel rods having spiral-shaped flutes similar to a drill bit. The rods are not inserted into the walls by drilling them in, because this would create a cylindrical hole the diameter of the rod. Instead, the rods are hammered into the walls using a hammering tool similar to a jackhammer. The tool does not grip the rod, but instead allows the rod to freely rotate as it penetrates the walls. The rotation of the rod causes the rod to corkscrew in the wall, which creates grooves in the walls shaped like the flutes of the rod. The friction force between the grooves and the rod create a binding force between the two walls superior to what would occur simply by drilling cylindrical holes in the walls and inserting cylindrical rods therein. The steps in the method include essentially: 1) drilling a hole in the first wall with a diameter smaller than that of the steel rod; 2) drilling a pilot hole in the second wall; 3) driving the rod into the walls through the hole and pilot hole using the hammering tool as described above which creates the grooves; 4) removing the tool from the rod; and 5) finishing the exposed end of the rod according to mandates of the site. The patent owner distributed fliers at a trade show more than one year before the patent’s filing date that described the method and offered the rods for sale. The appeals court opined that if on remand the district court determined that a pre-critical date hammering tool that enabled performance of the driving step had been developed, then an on-sale bar would apply. The relevant point is that there are at least three steps in the claimed method — the hole drilling steps and the finishing step — that would likely be performed using tools already owned by the buyer of the rods and/or hammering tool and not necessarily sold by the patent owner. In the instant case, there is no genuine issue that the products necessary to perform all the steps of the claimed invention were ready for patenting prior to the critical date. Similarly, the fact that the lessee may have already owned one of the “tools” necessary to perform one of the steps of the claimed method should not prevent application of the on-sale bar. This reasoning is consistent with the policy of the on-sale bar articulated by the Supreme Court. Pfaff, 525 U.S. at 64-65, 68, 119 S.Ct. 304. Minton has commercially benefited — or would have if the lease had not fallen through — from his invention for more than the year grace period allowed by the statute. The fact that the lease fell through makes Minton’s situation a sympathetic one. It would appear that in Min-ton’s case one year was not sufficient time for him to determine the potential economic value of his pat