Full opinion text
OPINION & ORDER SHIRA A. SCHEINDLIN, District Judge. I. INTRODUCTION This opinion resolves four motions for summary judgment involving claim one of a method patent owned by Liquidnet Holdings, Inc. (“Liquidnet”). In brief, Liquidnet has alleged that certain electronic methods for integrating buy-side firms’ order management systems with electronic securities marketplaces, developed and marketed by Investment Technology Group (“ITG”) and Pulse Trading, Inc. (“Pulse”), literally infringe claim one of Patent '834, and that ITG willfully infringed the Patent. ITG and Pulse allege that Patent '834 is invalid, unenforceable, and not infringed by ITG’s and Pulse’s products. On January 19, 2010, 2010 WL 199912, following a Markman hearing, I issued an opinion adopting certain constructions of claim one. ITG and Liquidnet, and Pulse and Liquidnet, now cross-move for summary judgment on literal infringement; ITG moves for summary judgment on Liquidnet’s willful infringement claim; and Liquidnet moves for partial summary judgment on ITG’s inequitable conduct claim (part of its claim that Patent '834 is unenforceable). For the following reasons, I grant ITG’s and Pulse’s motions for summary judgment of no literal infringement and deny Liquidnet’s motions on that claim. I also grant ITG’s motion for summary judgment on Liquidnet’s willful infringement claim and deny Liquidnet’s motion for partial summary judgment on ITG’s inequitable conduct claim. II. BACKGROUND On November 14, 2006, the Patent and Trademark Office (“PTO”) issued Patent '834 — entitled “Electronic Securities Marketplace Having Integration with Order Management Systems” — to Liquidnet. In basic terms, the patented invention allows institutional investment management firms to connect with an electronic marketplace and trade securities (or other financial instruments) with one another. A. Claim One of Patent'834 Claim one of the Patent — the only claim at issue in this case — describes a method for integrating an order management system (“OMS”) with an electronic marketplace (“ETM”) for the purpose of sending non-binding indications to that marketplace: 1. A computer-implemented method for generating non-binding indications for at least one security comprising: i) accessing, by at least one computer, all records of open orders from a database of an order management system wherein the order management database is associated with a trading firm and wherein the order management system is coupled to at least one workstation utilized by the trading firm wherein the order management system database comprises at least the following fields. (a) security name, symbol or identifier, (b) transaction type, (c) total order size, (d) quantity of the security placed elsewhere, and (e) quantity of the security executed; ii) generating, by at least one computer, all non-binding indications from the accessed records of orders that are suitable for transmission to at least one electronic marketplace, each non-binding indication comprising security name, symbol or identifier, the transaction type, and an available quantity, such available quantity being determined by the accessed records; iii) sending the suitable non-binding indications to the at least [sic] one electronic marketplace. iv) periodically determining if at least one accessed record of order of the order management system database has changed, then subsequently generating, for the changed record of order, at least one updated non-binding indication; and v) if updated, subsequently sending the updated non-binding indication to the at least [sic ] one electronic marketplace. B. Claim Construction In an Opinion and Order dated January 19, 2010, I construed the disputed terms (italicized above) as follows: “Accessing” means “gaining entry to.” “All” means “each and every.” “Open orders” means “instructions to buy or sell a quantity of a security not yet placed elsewhere (ie., where the total order size exceeds the quantity, if any, committed to another broker or other execution venue).” “Generating” means “producing nonbinding indications in a format understood by the electronic marketplace.” “Non-binding indications” means “non-binding purchase or sale offers that allow traders to enter into negotiation to trade securities, which cannot be executed without a further, affirmative action by a trader.” “Suitable for transmission” means “appropriate for transmission.” “Electronic marketplace” means “an electronic destination that (1) receives and processes non-binding indications, (2) allows for the matching of non-binding indications with their contra interests and for the negotiation and execution of trades, and (3) has the capacity to record trades if and when they are executed.” “Sending” means “transmitting.” “Periodically determining” means “determining from time to time.” “Subsequently generating” means “subsequently producing.” “Subsequently sending” means “subsequently transmitting.” III. LEGAL STANDARD Summary judgment is appropriate “if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” “ ‘An issue of fact is genuine if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. A fact is material if it might affect the outcome of the suit under the governing law.’ ” “[T]he burden of demonstrating that no material fact exists lies with the moving party ....” In determining whether a genuine issue of material fact exists, the court must “constru[e] the evidence in the light most favorable to the non-moving party and draw all reasonable inferences” in that party’s favor. However, “[wjhen the burden of proof at trial would fall on the nonmoving party, it ordinarily is sufficient for the movant to point to a lack of evidence to go to the trier of fact on an essential element of the non[-]movant’s claim.” IY. DISCUSSION A. ITG and Pulse Are Entitled to Summary Judgment of Non-Infringement ITG and Liquidnet, and Pulse and Liquidnet, now cross-move for summary judgment of literal infringement. ITG and Pulse argue they are entitled to summary judgment of no literal infringement, while Liquidnet argues that ITG and Pulse literally infringe Patent '834 as a matter of law. Upon a finding that either ITG or Pulse fails to perform even one of the claim’s five steps, it is entitled to summary judgment. ITG’s and Pulse’s primary arguments for non-infringement are as follows: (1) ITG and Pulse do not perform step (i) because they do not “access” “all” records of open orders from a database of an OMS; (2) ITG and Pulse do not perform step (ii) because they do not generate “non-binding indications”; (3) ITG does not perform step (iii) because it does not send “nonbinding indications” to an “electronic marketplace”; and (4) ITG and Pulse do not enable traders to enter into negotiations to trade securities (relevant to steps (ii)-(v) in light of my construction j of “non-binding indications” and “electronic marketplace”). I agree with ITG and Pulse that, with the exception of one integration employed by ITG (“MacGregor XIP integrations”), ITG and Pulse do not “access” “all” records of open orders from databases of OMSs. I also agree with ITG that, because its accused products do not constitute an “electronic marketplace” as this Court has construed that term, it cannot perform steps (iii) and (v) of claim one, which require “sending” “non-binding indications” to at least one “electronic marketplace.” Accordingly, I deny Liquidnet’s motions for summary judgment of literal infringement and grant summary judgment to both ITG and Pulse with respect to literal infringement. I need not (and do not) address ITG’s and Pulse’s other arguments for non-infringement. 1. Facts Relating to Literal Infringement Claim The accused products in this case— ITG’s “Channel” and “POSIT Alert” and Pulse’s “BlockCross” — are used by hedge funds and asset management firms to facilitate the electronic execution of U.S. equity (stock) trades. These firms, which include mutual fund managers, pension funds, and private equity funds, are often referred to as “buy-side firms.” Portfolio managers at buy-side firms direct the investment of the firms’ funds; they decide which securities will comprise the “portfolio” of assets in which then-funds are invested. These investments can span U.S. and foreign stocks, bonds, options, futures, currencies, and derivatives. When a portfolio manager decides to purchase or sell a particular security, she enters that instruction, or “order,” into an OMS. OMSs are software-based systems used by buy-side firms to manage their investment strategies. All records of orders for an entire firm are maintained in the firm’s central “OMS database.” Buy-side firms also employ traders who manage, or “work,” the actual buying and selling of assets for the firm — as opposed to deciding which assets to buy and sell (the portfolio managers’ job). Traders are given permission to call up (or see) only certain orders in a firm’s portfolio. They view those orders on their trader desktop computers, or “workstations,” using OMS graphical user interfaces (“GUIs”). The GUIs include electronic “blotters” that display certain information from the records in the OMS database that the trader is responsible for working. Traditionally, buy-side traders traded securities by picking up the phone and calling sell-side brokers to fill orders. Since the mid-1990s, however, traders have been able to place orders electronically directly from their OMS blotters, or from other electronic trading platforms, such as execution management systems (EMSs). Using an OMS or EMS, a trader can electronically place, change, cancel, and update his orders, and receive execution information electronically, without using the phone. a. ITG’s Accused Products: Channel and POSIT Alert Liquidnet accuses two ITG products, “ITG Channel” (“Channel”) and “POSIT Alert,” of infringing the Patent. Channel is an EMS and “desktop trading tool” that ITG developed to help buy-side traders electronically route (or channel) firm orders “strictly to ITG trading destinations.” Through some integration with buy-side firms’ OMS databases, Channel obtains only those records of open orders for U.S. equities. Channel then displays the unplaced share data for which a particular trader is responsible for “working” on that trader’s Channel “blotter,” a GUI located on her workstation. From her Channel blotter, a trader has two, non-mutually exclusive options. First, the trader can convert the unplaced share data into a “firm order” by sending it directly to one of ITG’s trading destinations for execution. Second — or in addition — she can expose the unplaced share data in POSIT Alert. POSIT Alert is not a trading destination, but rather an alerting mechanism — it “alerts” traders when it finds matching (1) binding indications in POSIT and other ITG trading destinations or (2) non-binding indications in POSIT Alert. When POSIT Alert finds a potential match, it notifies all the traders having relevant exposed unplaced shares in POSIT Alert that a potential match exists. Upon such notification, each trader has a limited number of seconds to decide whether she wishes to act on that alert by sending a firm order to POSIT — ie., converting the non-binding indication into a binding indication for potential execution in POSIT. POSIT Alert does not ideiitify the number of traders matched, the identity of those traders, the quantity of securities on either side of the trade, or the price at which any trader may wish to execute a trade The trader only knows that (1) there are one or more traders on the opposite side of the desired trade (2) with unknown quantities of shares available, (3) with whom she might match in POSIT (4) if both sides send firm orders to POSIT and those firm orders have compatible terms. b. Pulse’s Accused Product: BlockCross Like Channel, BlockCross receives only U.S. equity order information from buy-side firms’ datacenters by integrating in some way with those firms’ OMS databases and displaying only those orders for which individual traders are responsible on those traders’ BlockCross “blotters.” As with Channel, a trader using Block-Cross can designate a trade in one of two modes — “Confirm” mode or “Auto-Ex” mode — or both. For trades designated for Confirm mode, BlockCross (like POSIT Alert) alerts traders of crossing opportunities. Like POSIT, BlockCross automatically executes “Auto-Ex” trades at the NBBO price upon finding a matching eontra-Auto-Ex indication. All BlockCross trades execute at the NBBO or “midpoint” price. c. Obtaining Order Information Located in OMS Databases As noted above, Channel and Block-Cross obtain information about open orders for U.S. equities from their clients’ OMS databases by “interfacing” or setting up “integrations” with OMS vendors — integrations that vary depending on the vendor. Pulse has integrations set up with ten different OMS vendors. Of the ten, eight involve “stored procedure” integrations and two involve “web service” integrations. In the stored procedure integrations, BlockCross issues a “call” to the OMS through an application programming interface (“API”) written by the OMS vendor or its client. The call requests information about U.S. equity orders from the OMS by asking the API to execute a “stored procedure” in the OMS database. After issuing the call to the API, Block-Cross has no further involvement with the OMS database until the API returns the U.S. equity order information to Block-Cross. In the web server integrations, BlockCross retrieves U.S. equity order information from a web server, which is separate from the OMS. Unlike Pulse, ITG owns an OMS — the MacGregor XIP — that integrates with Channel. For ITG clients who use Channel with the MacGregor XIP, Channel prompts or “calls” a specific stored procedure in MacGregor XIP, as in the Pulse “stored procedure” implementations described above. This stored procedure, written by MacGregor, locates U.S. equity orders in the database, “reads in memory only those records, retrieves the read data, and sends it to Channel.” For non-MacGregor OMS clients, the technology used by Channel to obtain unplaced share information varies depending on the client and the OMS it uses. Like BlockCross, Channel utilizes both stored procedure and non-stored procedure implementations. Channel’s stored procedure implementations work similarly to its MacGregor XIP implementations: a “call” prompts a customer-provided program that is either written by the OMS vendor or buy-side firm to send order information to Channel. Channel then stores the unplaced share data in a Channel database. Channel’s non-stored procedure interfaces include “socket connections, web services, COM API’s and flat files (i.e., file drops’).” As with the stored procedure integrations, in all of these non-stored procedure integrations, the buy-side firm “decides what orders it wants to be able to trade at ITG through Channel and it works directly with its OMS vendor to gather the pertinent information. Some form of vendor-written computer program obtains order data by methods known only to the vendor-author, and provides the data to Channel, either by transmitting the order data to Channel or by storing the order data in an agreed upon network location, such as in a flat file or a port.” The OMS vendors maintain, create, and own the software code that they write and do not give ITG access to it. 2. Applicable Law Patent infringement refers to “the unauthorized making, using, selling, offering to sell, or importing into the United States of any patented invention during the term of the patent.” Determination of infringement involves two steps: (1) a construction of the terms of the asserted claims (“Claim Construction”) and (2) a determination of whether the accused method infringes the claims as construed. Claim construction is a question of law, the purpose of which is to determine what is covered by the claims of a patent. In cases where “the parties do not dispute any relevant facts regarding the accused product but disagree over [claim interpretation], the question of literal infringement collapses to one of claim construction and is thus amenable to summary judgment.” A plaintiff may establish infringement either by proving literal infringement or by using the doctrine of equivalents. To prove literal infringement, the patentee must show by a preponderance of the evidence that the device accused of infringement contains every limitation in the asserted claims. “For process patent or method patent claims, infringement occurs when a party performs all of the steps of the process.” “An infringement issue is properly decided upon summary judgment when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device.” “[Wjhere the actions of multiple parties combine to perform every step of a claimed method, the claim is directly infringed only if one party exercises ‘control or direction’ over the entire process such that every step is attributable to the controlling party, i.e., the ‘mastermind.’ At the other end of this multi-party spectrum, mere ‘arms-length cooperation’ will not give rise to direct infringement by any party.” “[T]he control or direction standard is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method.” Although the standard requiring control or direction for a finding of joint infringement may in some circumstances allow parties to enter into arms-length agreements to avoid infringement ... [t]he concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement by a single party----[A] court will not unilaterally restructure the claim or the standards for joint infringement to remedy [ ] ill-conceived claims. 3. Neither Pulse nor ITG (Other than MacGregor XIP Implementations) Literally Infringes Step (i) of Claim One of the '834 Patent Pulse and ITG argue that their products do not, as a matter of law, “access [ ] ... all records of open orders from a database of an order management system,” as required by step (i) of claim one. With the exception of Channel’s MacGregor XIP integrations, I agree. As I explain below, the parties do not dispute any relevant facts regarding the accused methods, but instead disagree over the meaning of the word “accessing” in step (i). Thus “the question of literal infringement collapses to one of claim construction and is ... amenable to summary judgment.” The relevant, undisputed facts make clear that the only orders Pulse and ITG (in nonMacGregor OMS integrations) could possibly “access” — if they access any orders at all — are U.S. equity orders. However, because ITG controls or directs the stored procedures responsible for locating U.S. equity orders in MacGregor XIP databases, I cannot find as a matter of law that ITG does not perform step (i) for those implementations. a. Claim Construction Step (i) of claim one requires “accessing, by at least one computer, all records of open orders from a database of an order management system ....” During Claim Construction, I defined “accessing” to mean “gaining entry to” and “all” to mean “each and every.” Thus, to infringe claim one, Pulse’s and ITG’s products must (1) gain access to (2) each and every record of open orders from a database of an OMS. In defining “accessing” as “gaining entry to,” I explained that “when the patent applicants used the term ‘accessing,’ they contemplated a process in which [an OMS interfacing module (“OIM”) ] would be able to gain entry to the records and read them while they remained within the database.” I pointed to language in the specification describing a process by which an “OMS database integration module [ODIM] in the OIM reads data records stored in the OMS database” to support my conclusion that “accessing” refers to “a mode of ‘communication’ between the OIM and the OMS database wherein the OIM reads and monitors records within the OMS database.” I found this definition supported by extrinsic evidence — a computer dictionary published by Microsoft in 2002 that defines “access” as “[t]o gain entry to memory in order to read or write data.” Thus, records of open orders located in an OMS database are “accessed” when an OIM gains access to those records by reading them in OMS databases’ memory. And, according to the plain language of step (i), all records of open orders must be accessed in order for claim one to be infringed. In other words, Liquidnet must show that Pulse and ITG utilize OIMs that read data about — or gain entry to — “each and every” record of open orders contained within the OMS databases with which they are integrated. As I explained in Claim Construction, the process of gaining entry to each and every record of open orders in the OMS database is different from the process of “retrieving” some or all of those records— a step that occurs after a trader logs on to the OMS and after the records have been accessed, or read in memory, and determined to be “suitable for transmission”: Once a determination is made that a trader has logged on to the OMS the OIM retrieves data records about orders suitable for transmission to the ETM from the OMS database. In one embodiment of the present invention, all open orders are suitable for transmission to the ETM. In other embodiments of the present invention, the OIM, through the filtering module, makes the determination of suitable orders based on other criteria, such as the security type (e.g., stock or bond), security name (e.g., IBM or T), order type (e.g., market or limit order), order quantity, and/or price. In other words, after an OIM reads in the OMS database’s memory data about each and every record of open orders in the OMS database, it determines which of the “accessed records” are suitable for transmission to the ETM. If only some records are suitable for transmission to the ETM, an OIM will filter the accessed records and then retrieve only those suitable for transmission to the ETM. As I made clear in Claim Construction, these retrieving and filtering steps are not part of the “accessing” that takes place in step (i); they are unclaimed steps that take place before an OIM “generatfes] ... from” the “accessed records” “non-binding indications” in step (ii). But the disclosure of these “filtering,” “retrieving,” and “generating” steps — claimed or unclaimed — only reinforces that the patented method requires all records of open orders to be read from the OMS database’s memory. Notwithstanding my claim construction, Liquidnet argues that “the act of ‘accessing’ is the act of communicating with an OMS database that contains all records of open orders ....” But the syntax of step (i) makes clear that it is the “records of open orders” that the patented method must access, not the database. Liquidnet’s proposed construction of step (i) essentially reads out of the claim the words “all records of open orders from.” That the records — rather than the database — are the object of the verb “accessing” is only confirmed by the language of steps (ii) and (iv), which require the performance of additional steps on the “accessed records of orders” — such as “generating ... nonbinding indications from” them and “determining if at least one” of them “has changed.” However, it is true that the database itself must be accessed in order for the records within that database to be accessed. So if step (i) merely required accessing a database of an OMS, then Liquidnet would only need to show that ITG and Pulse communicate with OMS databases. After all, the specification discloses that “[t]he OIM is in communication with the OMS database and the ETM....” But this language in the specification— upon which Liquidnet bases its entire argument — does not describe step (i) of the claim, which requires “accessing ... all records of open orders from a database of an order management system.” Rather, it describes the ancillary step of accessing the database itself — a step that is necessary but not sufficient to prove literal infringement of step (i). b. ITG and Pulse Do Not “Access [ ] ... All Records of Open Orders From” Databases of Non-MacGregor OMSs Liquidnet has adduced no evidence — and does not argue — that ITG and Pulse employ OMS integration modules that read in memory all records of open orders from the OMS databases with which they interface. Rather, it argues that mere “communicat[ion] with an OMS database that contains all records of open orders” suffices to constitute infringement of step (i). But the undisputed facts make clear that in all “stored procedure” integrations, the OMSs with which Pulse and ITG integrate filter the records of open orders for U.S. equity orders before they are obtained — let alone “read in memory” or accessed — by any sort of OIM. Thus, only records of open U.S. equity orders — a subset of “all” records of open orders- — could possibly be accessed by Pulse and ITG in non-MacGregor XIP stored procedure integrations. For non-stored procedure integrations, Liquid-net has not even adduced evidence sufficient to support its argument that ITG and Pulse “communicate with” OMS databases, let alone access all records of open orders within those databases. Therefore, ITG and Pulse are entitled to summary judgment of non-infringement for all nonMacGregor OMS integrations. First, Liquidnet does not even articulate a theory of infringement for ITG’s and Pulse’s non-stored procedure integrations. In addition to stored procedures, Channel utilizes “socket connections, web services, COM API’s and flat files (i.e., ‘file drops’);” two of BloekCross’s ten integration types involve “web server” implementations. But Liquidnet fails to explain in any of its submissions or arguments what any of these things is, let alone how they involve accessing all records of open orders in an OMS database. Instead, Liquidnet waffles between (1) failing to incorporate the non-stored procedure integration methods in its analysis and (2) conclusorily asserting that Channel and BlockCross make “queries” to OMS databases via “various communications protocols” into which it lumps all non-stored procedure implementations. It makes no attempt to explain how “open[ing] up a socket” or how integrations involving “web services,” “web servers,” “COM API’s,” or “flat files (i.e., ‘file drops’)” allow ITG or Pulse to gain entry to all records of open orders in the OMS database’s memory. Second, it is undisputed that in stored procedure integrations, Channel and BlockCross issue “calls” to OMS databases, or to APIs in the OMS databases— written by OMS vendors or their respective clients — instructing the OMS databases to execute stored procedures. The order information requested by Channel and BlockCross via these calls is never more than information about U.S. equity orders, which are a subset of the records of open orders on an OMS database. For example — as Liquidnet explains in its brief — “BlockCross “mak[es] ‘calls’ to stored procedures in the OMS database, which in turn use [an] Index as a roadmap to look for the requested U.S. equity orders.” After issuing the call, Pulse and ITG have no further involvement with the OMS database until order information “suitable for transmission” to BlockCross and Channel is returned by a stored procedure in the OMS database. That information never consists of more than open U.S. equity orders. Therefore, in stored procedure implementations, Pulse (Block-Cross) and ITG (Channel) do not access all records of open orders in OMS databases. The undisputed evidence proves that the only open order information to which they could possibly “gain entry” in these implementations is the U.S. equity order data returned by OMS databases to Channel and BlockCross. This description is the only undisputed evidence that Channel and BlockCross perform any sort of OIM-like functionality. This is because, despite the fact that “ITG [for example] produced to Liquidnet over 86,000 pages of documents, as well as the actual software code for Channel, and despite the fact that Liquidnet deposed ten fact witnesses of Channel, Liquidnet does not rely on any of this testimony, or on the functional specification documents for Channel, or on the software code” to make its argument. Instead, Liquidnet’s briefing consists almost entirely of statements from Pulse and ITG documents describing Pulse integration software (“BCX”) and “BCGetOrders” stored procedures and an ITG interfacing module (“TIM”), the accuracy and implementation of which ITG and Pulse dispute. However, even if these documents fully, accurately, and undisputedly described Pulse’s and ITG’s OIM functionality, they would support the undisputed fact that any records of open orders accessed by Pulse and ITG — or read in the OMS databases’ memory — have already been filtered to exclude non-U.S. equity orders. For example, the “TIM” document explains that “the OMS Vendor will need to supply the following interface: stored procedure to access open orders from the OMS database.” And the BCX document explains that the software will periodically query the OMS database to execute a stored procedure, which will request the OMS database to “return all active U.S. equity orders whose available quantity meets a specified minimum number of shares.” Liquidnet admits that it is the stored procedures — located in the OMS database and written by OMS vendors (not ITG or Pulse) — that “look for the requested U.S. equity orders” and return only those orders to BlockCross or Channel. Therefore, only U.S. equity orders could possibly be accessed by any Pulse or ITG interfacing module. Nowhere does Liquidnet confront the most obvious implication of these undisputed facts — that it is these stored procedures, which are not part of ITG’s alleged “TIM” interfacing module or BlockCross’s BCX software, that access all records of open orders in OMS databases. Perhaps this is because Patent '834 simply does not encompass integrations with OMSs in which stored procedures filter out non-suitable orders before the records are obtained (or accessed) by an OIM. The claim’s “accessing” step is necessary because all records of open orders in the OMS databases memory must be read in order for the OIM to perform the remaining functions outlined in the specification— including filtering the data to determine which orders are suitable for transmission to the ETM. But Liquidnet has adduced no evidence that an ITG or Pulse OIM “reads in memory” any records of open orders located in any non-MacGregor OMS database as required by Patent '834. In its reply briefs, Liquidnet makes (for the first time) a conclusory “in the alternative” argument for joint infringement, asserting that “[ejven if Claim [one] were somehow construed to require the actions of an entity other than ITG, there is still direct . infringement, because [ITG and Pulse] control [] the actions of the OMS database in performing the [Channel and BlockCross] method[s].” According to Liquidnet, this control derives from (1) Channel’s and BlockCross’s “calls” to the stored procedures and (2) the fact that ITG and Pulse provide OMS vendors with “functional specifications” describing how to interface with Channel and Block-Cross. First, even if ITG and Pulse did “control” the actions of the OMS vendors, Liquidnet has adduced no evidence of how individual OMS vendors’ stored procedures work — i.e., how they might, in the alternative, constitute “accessing.” Second, even if Liquidnet had argued and proven that the stored procedures unequivocally “gain entry” to all records of open orders, and even if OMS vendors undisputedly wrote stored procedures pursuant to instructional guides provided by ITG and Pulse, Liquidnet could not prevail on a joint infringement theory because the issuance of calls to OMS databases and the provision of instructions to an arms length business partner do not constitute “ ‘control or direction’ over the entire process such that every step is attributable to” ITG or Pulse. In other words, Liquid-net misconstrues “the control or direction standard,” which inquires whether “the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party.” But Liquidnet does not dispute (and has put forth no evidence refuting) ITG’s and Pulse’s showing that their relationships with OMS vendors amount to no more than “mere ‘arms-length cooperation’ ” that “will not give rise to direct infringement by any party.” Although Liquidnet makes no legal distinction between the MacGregor XIP and other OMS databases, I cannot ignore the undisputed fact that ITG owns the MacGregor Group, which manufactures the MacGregor XIP — an OMS with which ITG integrates by calling stored procedures written by the MacGregor Group. Therefore, a court “would traditionally hold [ITG] vicariously liable for the acts committed by [the MacGregor Group] that are required to complete performance of [step (i) ].” Put differently, assuming that the MacGregor XIP stored procedures “access” all records of open orders in an OMS database — an argument that, again, Liquidnet does not make — then I would have to find that it “perform[s] the steps of the patented process by virtue of a ... relationship [with ITG] that gives rise to vicarious liability.” In other words, I would have to find that ITG controls or directs the MacGregor XIP such that it performs the “accessing” step of claim (i) for MacGregor XIP integrations. However, because I hold in Part IV.A.4. below that Channel is not an electronic marketplace as this Court has defined that term, I need not decide whether the stored procedures themselves “access all records of open orders.” 4. ITG Does Not Literally Infringe Steps (iii) and (v) of Claim One of the '834 Patent Even if the MacGregor XIP’s stored procedures “access [ ] ... all records of open orders” in its database, ITG’s products do not infringe as a matter of law because Channel is not an ETM as this Court has construed that term. Therefore, ITG cannot be found to perform steps (iii) or (v) of claim one, which require “sending” “non-binding indications to the at least one [sic ] electronic marketplace.” Liquidnet argues that all of claim one is completed when order data is “swept into Channel from the OMS database.” But steps (iii) and (v) of claim one both require “sending” non-binding indications to at least one ETM, which this Court has defined as “an electronic destination that (1) receives and processes nonbinding indications, (2) allows for the matching of nonbinding indications with their contra interests and for the negotiation and execution of trades, and (3) has the capacity to record trades if and when they are executed.” Channel allows for neither the execution nor the negotiation of trades. Therefore, it cannot be considered an “ETM” to which non-binding indications are sent. As I explained during Claim Construction, “the term ‘electronic marketplace’ suggests an electronic destination where trades are executed.” But it is undisputed that neither Channel nor POSIT Alert — the two products Liquidnet accuses of infringing Patent’ 834 — allow for the execution of trades. Thus, those venues — considered together or separately— cannot be “ETMs” to which nonbinding indications are sent. Liquidnet’s assertion that “the combination of Channel ITG, POSIT Alert, and ITG execution venues satisfy the Court’s definition of ‘electronic marketplace’ ” fails in light of the fact that “the connections between Channel, POSIT Alert, and ITG’s trading destinations are not used unless and until the trader chooses to use them.” ITG speculates that “Liquidnet is intent on arguing that all of the steps of claim one are performed by the time unplaced share information arrives in Channel because the revenues associated with the use of POSIT Alert are only about one-third of the total revenues associated with the use of Channel.” Thus, ITG suggests that Liquidnet might have had a stronger infringement argument if POSIT Alert were the “ETM” to which Liquidnet argued the non-binding indications were sent. Leaving aside for the moment that trades cannot be executed in POSIT Alert, either, even this argument would fail because POSIT Alert does not “allow for” the negotiation of trades — a “necessary feature” of an ETM as this Court has construed that term. Although “negotiation need not be an in-depth process” and “can be as basic as each party assenting to the terms of the other party’s non-binding indications,” POSIT Alert does not allow for even this functionality because the steps taken by traders in response to a “match” in POSIT Alert — a match that reveals neither trader’s proposed price or quantity— do not constitute assent to the terms of the contra-indication. It bears noting that traders using POSIT Alert merely “expose” nonbinding indications to traders at other institutions. If POSIT Alert identifies a matching contraindication — ie., an indication from a trader on the opposite side of the trade in the same security — each party is “alerted.” Each is then given the opportunity to enter a firm order — an opportunity she holds at all times, incidentally, regardless of whether her non-binding indication is matched in POSIT Alert. There is no guarantee that Trader One will ultimately execute the trade with Trader Two. In fact, Trader One’s firm order may go unexecuted; it may be filled by a firm order that was entered three hours earlier by a different trader; or it may be filled partially by Trader Two’s (subsequently entered) firm order. Even if Trader One’s decision to enter a firm order, upon the realization that Trader Two might have a matching trade, could somehow constitute “assent” to a trade with Trader Two-despite the fact that the ultimate execution could easily occur with an entirely different counterparty — there is no conceivable way that such a decision constitutes Trader One’s assent to the terms of Trader Two’s contra-indication. This is because the only information conveyed to a trader “alerted” to a match in POSIT Alert is that one or more traders want to buy the security she wants to sell, or sell the security she wants to buy. Neither trader knows how much of her nonbinding indication will be executed even if she converts it to a firm order simultaneous with the trader/s on the other side. And ITG’s products do not afford traders the ability even to expose a non-binding price indication to a counterparty through POSIT Alert, let alone negotiate that price term. The fact that “the trader has the ability to change the quantity before converting it to a firm order and sending it out for matching” or “put a specific price range on it before requesting execution” does not transform the process into a negotiation; in fact, traders’ ability to change their orders’ price and quantity terms after they are alerted to a match only underscores that neither trader could possibly be assenting to the other’s “terms.” Nor does it matter that traders know their trades will execute above a “minimum order size set for the system.” Furthermore, traders using POSIT Alert are notified when their non-binding indication is matched by either (1) a nonbinding indication or (2) a firm order already entered in POSIT Now. Surely a trader’s decision to convert a nonbinding indication to a firm order in the latter situation cannot constitute negotiation. First, given my description of the minimum requirement for negotiation — “each party assenting to the terms of the other party’s non-binding indications”— there can be no negotiation if only one of the party’s “indications” is non-binding. Second, it would make no sense to say that two traders were “negotiating” simply because Trader One decided to enter a firm order that ultimately influenced Trader Two’s decision to trade, totally unbeknownst to Trader One. In conclusion, Channel/POSIT Alert may transmit “non-binding indications” among traders, but they do not “ ‘provide information to allow traders to enter into negotiations to ultimately trade the securities.’ ” A trader does not “negotiate” a trade when he decides to execute an order based on knowledge that a contra-indication exists somewhere in the market. The prosecution history may suggest that Patent '834 “do[es] not require any particular form of negotiation,” but none of the methods by which ITG’s products facilitate trading constitutes a form of negotiation. Therefore, because Channel/POSIT Alert do not constitute an ETM as this Court has construed that term, ITG cannot literally infringe steps (iii) and (v) of claim one. 5. Conclusion For the aforementioned reasons, both ITG and Pulse are entitled to summary judgment of non-infringement with respect to claim one of the '834 Patent. B. ITG Is Entitled to Summary Judgment of No Willful Infringement Liquidnet is suing ITG not only for literal infringement, but also for willful infringement — a cause of action that carries the possibility of enhanced damages. ITG now moves for summary judgment that, as a matter of law, it did not willfully infringe the '834 Patent. Liquidnet argues that “at a minimum, there exist genuine issues of material fact for trial that preclude summary judgment on the issue of ITG’s willful infringement.” In particular, Liquidnet asserts that “ITG copied the Liquidnet System embodiment of the '834 Patent invention” and that, after the '834 Patent was brought to its attention by Liquidnet, ITG failed to articulate even one non-infringement defense, relying instead on a bogus inequitable conduct defense based on a patent application for the failed ‘Harborside’ system, while choosing to expand, rather than abate, its infringing activity. ITG also continued its willful conduct throughout this litigation by asserting baseless claims and defenses that contravene this Court’s claim construction rulings, ITG’s own production documents, and the deposition admission of ITG’s own expert witnesses. Meanwhile, ITG moves for summary judgment on the grounds that, because all of the conduct on which Liquidnet bases its willful infringement claim occurred (1) after ITG learned of Patent '834 and (2) after Liquidnet filed suit against it for willful infringement (“post-filing”), Liquid-net’s failure to move for a preliminary injunction precludes it from accruing enhanced damages based solely on ITG’s post-filing conduct. 1. Factual Background Relating to Willful Infringement Claim Liquidnet’s patent issued on November 14, 2006. Six days later, on November 20, 2006, ITG learned of the patent. The next day, Liquidnet filed a complaint in Delaware charging ITG with willful infringement. Because Liquidnet sued under the wrong name, however, subject matter jurisdiction in Delaware was improper. ITG alerted Liquidnet to this jurisdictional defect on January 24, 2007 — two months after Liquidnet sued ITG in Delaware — by sending Liquidnet a letter informing it of a declaratory judgment action it had filed in this Court one day earlier naming the proper patentee. Three days after ITG filed that suit, Liquidnet voluntarily dismissed the Delaware action in favor of this action. On February 13, 2007, Liquidnet filed an Answer to ITG’s Complaint and Counterclaims which reasserted Liquidnet’s infringement and willful infringement allegations. Liquidnet has not sought a preliminary injunction against ITG in the almost four years this litigation has been pending, either in this Court or in the Delaware action. 2. Applicable Law “To willfully infringe a patent, the patent must exist and [the accused infringer] must have knowledge of it.” Then, “a patentee must show by clear and convincing evidence [1] that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and “[2] that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.” However, a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the accused infringer’s pre-filing conduct. By contrast, when an accused infringer’s post-filing conduct is reckless, a patentee can move for a preliminary injunction, which generally provides an adequate remedy for combating post-filing willful infringement. A patentee who does not attempt to stop an accused infringer’s activities in this manner should not be allowed to accrue enhanced damages based solely on the infringer’s post-filing conduct. 3. ITG Is Entitled to. Summary Judgment of No Willful Infringement ITG argues that it is entitled to summary judgment on Liquidnet’s claim that it willfully infringed Patent '834 because (1) ITG had only a single day of prelitigation (“pre-filing”) knowledge of Patent '834 and (2) Liquidnet has never sought a preliminary injunction against ITG, thereby precluding its recovery for “post-filing” willful infringement under Seagate, It is undisputed that Liquid-net’s patent issued on November 14, 2006; six days later, on November 20, 2006, ITG learned of the patent; and the next day, Liquidnet filed a complaint against ITG for willful infringement in Delaware. Aside from November 20, 2006 — the day ITG learned of the patent but one day before Liquidnet’s complaint was filed — there is no pre-filing conduct upon which Liquidnet may base a willful infringement claim. Thus, Liquidnet’s entire claim is based on post-filing conduct that has allegedly occurred over the span of four years since Liquidnet filed suit against ITG in Delaware. Liquidnet could have moved for a preliminary injunction at any time during the past four years. Because it did not, it “should not be allowed to accrue enhanced damages” for willful infringement. Liquidnet acknowledges that “the issue of whether the patentee has moved, or should have moved, for a preliminary injunction only arises under Seagate where the patentee is relying solely upon post-complaint conduct of the accused infringer to prove willfulness.” However, it argues that the “operative complaint for purposes of determining ITG’s willful infringement of Patent '834 is ITG’s declaratory judgment complaint filed in this Court [on January 23, 2007], not Liquid-net’s dismissed Delaware complaint.” Therefore, it argues, because “Liquidnet is relying upon both pre-complaint and post-complaint conduct of ITG to establish willfulness ..., it is irrelevant ... whether Liquidnet ever moved for a preliminary injunction in this action, or in the Delaware action.” I reject this argument. Liquidnet offers no logical reason why ITG’s complaint, as opposed to its dismissed Delaware complaint, should trigger the start of the post-filing period. Liquidnet filed suit against ITG in Delaware one day after ITG learned of its patent. It alleged willful infringement in both its initial and its first amended complaint. Because it named the wrong plaintiff in the Delaware complaint, however, subject matter jurisdiction was improper. Thus, three days after ITG filed suit in this Court seeking declaratory relief for non-infringement, Liquidnet voluntarily dismissed the Delaware action in favor of this action. Knowledgeable of the Patent and of Liquidnet’s grounds for alleging infringement, ITG was “force[d] to choose between [1] resting on theories of invalidity and non infringement it believe[d] to be objectively reasonable and [2] engaging in costly and potentially unnecessary redesign of its accused products.” Had Liquidnet sought a preliminary injunction, those theories would have been tested at the time ITG was relying on them. The policy rationale underlying Seagate compels a finding that Liquidnet should not be permitted, by virtue of the length of this litigation, to obtain enhanced damages for four years’ time when it could have sought a preliminary injunction as early as November 22, 2007. Liquidnet also argues that the Seagate “rule precluding a patentee from pursuing a claim of willful infringement where the patentee did not first move for a preliminary injunction” is not absolute. This is true. However, there are limited circumstances under which a patentee may sustain a claim of post-filing willful infringement despite the patentee’s failure to first seek a preliminary injunction. Such post-filing circumstances might include, e.g., (1) a patent’s surviving reexamination proceedings without narrowed claims or (2) a patentee’s neither practicing its invention nor directly competing with the accused infringer (rendering its failure to seek a preliminary injunction reasonable). However, Liquidnet makes no argument that such extenuating circumstances are present in this case; it merely urges this Court to ignore the Federal Circuit’s clear mandate. Finally, Liquidnet argues that the Sea-gate rule announced on August 20, 2007 is procedural in nature, and therefore cannot be applied retroactively “to Liquidnet’s [November 21, 2006] Delaware action.” I note at the outset that the Federal Circuit has held that Seagate’s new “objective recklessness” standard applies retroactively. However, it has not specifically addressed the retroactivity of the preliminary injunction “requirement.” First, it is not so clear that Seagate’s preliminary injunction requirement is procedural. If “failure to seek a preliminary injunction is not dispositive” — as suggested by the cases on which Liquidnet relies' — then it is better-viewed as a factor to be weighed in a totality-of-the-circumstances approach to determining whether there is an objectively high likelihood of infringement of a valid patent — a rule more substantive than procedural in nature. In other words, failure to obtain a preliminary injunction serves as evidence that the accused infringer’s defenses are “substantial, reasonable, and far from the sort of easily-dismissed claims that an objectively reckless infringer would be forced to rely upon.” Second, at least three federal district courts have applied Seagate’s preliminary injunction “requirement” retroactively — albeit without discussion of whether the rule is substantive or procedural in nature— under circumstances virtually identical to those presented here. For example, a federal court in the Eastern District of Texas relied on Seagate to grant accused infringers’ motion for summary judgment on a patentee’s pre-Seagate willful infringement claim. Applying Seagate’s guidance that “ ‘in ordinary circumstances, willfulness will depend on an infringer’s prelitigation conduct,’ ” the court denied the patentee’s claim for willful infringement because [the patentee] did not even attempt to stop any alleged infringing activity, electing instead to allow any enhanced damages to accrue. The court does not impose a categorical rule that lack of a motion for preliminary injunction automatically bars post-suit willful infringement, but rather finds that in these particular circumstances, [the patentee’s] post-suit conduct coupled with the lack of any evidence of pre-suit notice of the [] patent establishes that there is no willful infringement by [the accused infringers]. One court in this district has reasoned (in dicta) that “it is unlikely that Seagate’s discussion of the necessity of a preliminary injunction applies retroactively,” reasoning that “[i]t is one thing to apply Seagate’s objective recklessness standard retroactively and quite another to bar [a patentee’s] willful infringement claim as a matter of law because [a patentee] did not seek a preliminary injunction that it had no reason to believe was required.” However, that reasoning did not form the basis for the court’s decision; instead, it found that because the patentee’s claims for willful infringement were not based solely on the infringer’s post-filing conduct, “Seagate’s requirement of a preliminary injunction does not apply.” Thus, for the aforementioned reasons, ITG’s motion for summary judgment on Liquidnet’s claim that it willfully infringed Patent '834 is granted. C. Liquidnet’s Motion for Partial Summary Judgment on ITG’s Inequitable Conduct Claim Is Denied In its amended complaint, ITG alleges that Liquidnet’s CEO, Seth Merrin, and the other named inventors of Patent '834 did not invent what is claimed in Patent '834 but rather copied a system called “@Harborside” developed by Richard Holway at a firm called Jefferies & Co. from 1997-1999. ITG contends that Liquid-net’s failure to disclose the @Harborside system to the PTO during prosecution constitutes inequitable conduct, rendering Patent '834 unenforceable. In particular, it has alleged three bases for a finding of inequitable conduct: (1) Liquidnet’s failure to disclose a patent application filed by Harborside, (2) Liquidnet’s failure to disclose the “@Harborside” system itself, and (3) a statement Liquidnet made during prosecution that it “know[s] of no prior art system or method, manual or automated, for reading OMS records reflecting orders, deriving non-binding indications and providing such non-binding indications to a separate marketplace.” Liquidnet now moves for summary judgment that the first ground on which ITG alleges inequitable conduct — failure to disclose the patent application — fails as a matter of law because “ITG does not have any evidence that anyone at Liquidnet knew of the contents of the Harborside patent application.” 1. Factual Background Relating to ITG’s Inequitable Conduct Claim ITG has produced evidence that, prior to the formation of Liquidnet, Holway and Jefferies & Co. hired VIE Systems to write, under Holwa/s direction, the software code to integrate a system called @Harborside with OMSs used by Jefferies’ clients. According to ITG, Merrin (Liquidnet’s CEO and a named inventor on Patent '834) owned VIE, and two VIE employees — Kevin Lupowitz (another named inventor on Patent '834) and Eric LeGoff (a founder of Liquidnet) — worked on the @Harborside integration. Merrin, Lupowitz, and LeGoff left VIE and started Liquidnet, a direct competitor to @Harborside. ITG presents evidence (1) that Holway told both Lupowitz and Merrin in 2001 that he believed Liquidnet had stolen his invention, and (2) that John Halloran (a third named inventor on Patent '834) knew about this accusation. ITG also presents evidence suggesting that these persons, and others at Liquidnet, did not disclose @Harborside to the PTO during the prosecution of Patent '834, instead disclosing to the PTO only a later version of @Harborside called “Harborside + ” and telling the PTO that the later version was a copy of Liquidnet’s invention. Regarding the third basis for its inequitable conduct defense, ITG presents evidence that Liquidnet did not disclose to the PTO a patent application that Holway and his colleagues at Jefferies had filed for the @Harborside system — an application that was publicly available as of January 2, 2003. As evidence that. Liquidnet knew about this patent application, ITG points to (1) testimony by Holway that he told Merrin, Lupowitz, and LeGoff about his patent application; (2) an email dated April 7, 2005, showing that LeGoff and Merrin had been told about the Harborside patent application; and (3) testimony by Merrin and LeGoff that they were aware during the prosecution of the Liquidnet patent application that there was a Harborside patent application. As evidence that Liquidnet did not know about this patent application, Liquidnet points to Holway’s deposition testimony that he never gave a copy of the Harborside patent application to anyone at Liquidnet and could not identify anyone who provided the application to anyone at Liquidnet. 2. Applicable Law “To hold a patent unenforceable due to inequitable conduct, there must be clear and convincing evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the U.S. Patent and Trademark Office (‘PTO’).” “Clear and convincing evidence must prove that an applicant had the specific intent to ... mislead [ ] or deceiv[e] the PTO. In a case involving nondisclosure of information, clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.” Even “ ‘gross negligence’ does not ... justify an inference of intent to deceive; the involved conduct, viewed in light of all the evidence, including evidence indicative of good faith, must indicate sufficient culpability to require a finding of intent to deceive.” 3. Whether Liquidnet Made a “Deliberate Decision to Withhold a Known Material Reference’’ Raises a Genuine Issue of Material Fact Drawing all reasonable inferences in ITG’s favor, I conclude that there is a genuine issue of material fact whether, in failing to disclose the Harborside patent application, Liquidnet “made a deliberate decision to withhold a known material reference” — specifically, the Harborside patent application. Liquidnet argues that, because there is no evidence that Liquidnet received a copy of the Harborside patent application, there is insufficient evidence for a trier of fact to find that Liquidnet knew of its contents, I disagree. Based on the undisputed fact that Merrin, Lupowitz, and LeGoff knew the Harborside patent application existed — on an invention they were accused of stealing — a reasonable trier of fact could infer that Liquidnet knew of its contents, even if there is no hard evidence that it received or had in its possession a physical copy of the application. Liquidnet is patently wrong that there is “no evidence showing, what, if anything, Liquidnet personnel knew about the Harborside patent application.” However, it is for a trier of fact to determine whether the named inventors and others involved in the prosecution of Patent '834 had knowledge of the Harborside Patent application (and its contents) and deliberately withheld it from the PTO. Therefore, Liquidnet’s motion for summary judgment is denied. V. CONCLUSION For the aforementioned reasons, ITG’s and Pulse’s motions for summary judgment of no literal infringement are granted and Liquidnet’s motions are denied; ITG’s motion for summary judgment on Liquidnet’s willful infringement claim is granted; and Liquidnet’s motion for summary judgment on ITG’s inequitable conduct claim is denied. The Clerk of the Court is directed to close these motions (Docket nos. 74 and 82 (sealed) in 07 Civ. 510; Docket nos. 61 (sealed) and 62 (sealed) in 07 Civ. 6886). SO ORDERED. . 11/14/06 U.S. Patent 7,136,834 ("Patent '834"), Ex. 1 to Affidavit of Jenny Workman, counsel to ITG. . "ITG” refers collectively to Investment Technology Group, Inc., ITG Inc., ITG Solutions Network, Inc., and The MacGregor Group, Inc. . See Investment Tech. Group, Inc. v. Liquidnet Holdings, Inc., Nos. 07 Civ. 510, 07 Civ. 6886, 2010 WL 199912 (S.D.N.Y. Jan. 19 2010) ("Claim Construction"). This decision assumes familiarity with my construction of claim one, as well as the law applicable to claim construction, as stated in that opinion. . For ease of understanding, I outline the factual background and applicable law relevant to each of the three claims on which summary judgment in this case is sought— literal infringement, willful infringement, and inequitable conduct — in the separate sect