Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Trading Techs. Int'l, Inc. v. BCG Partners, Inc., No. 10 C 715 (N.D. Ill. May 5, 2011) (Kendall, J.).

Judge Kendall denied defendant GL Trade Americas' ("GL") motion to disqualify plaintiff Trading Technologies' ("TT") lead litigation counsel and in-house counsel Borsand, without prejudice to reconsider whether Borsand should be excluded from testifying should he seek to testify. GL alleged that Borsand received confidential information when TT briefly retained a European law firm to represent it in patent prosecution matters without realizing that the firm represented an entity working on behalf of GL. Borsand only had two contacts with the firm, and it was reasonable that during those two contacts no confidential information was transferred to Borsand. As such, the drastic measure of disqualification was not warranted.

GL's request that Borsand be excluded as a trial witness because of his role as lead trial counsel was denied as premature with leave to refile at a later date. The Court could not determine what discovery would show, what facts would be disputed at trial or whether Borsand would even testify at trial.
 

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Bone Care, Int'l v. Pen Tech Pharm., No. 08 C 1083, Slip Op. (N.D. Ill. Mar. 30, 2011) (Dow, J.).

Judge Dow denied defendants' (collectively "Pentech") motion for summary judgment of invalidity for lack of enablement and written description. The Court also denied plaintiff Bone Care International's cross-motion for summary judgment that the patent-in-suit was enabled by its specification, in this patent case involving methods of treating hyperparathyroidism that is secondary to end-stage renal disease. The parties finished briefing their cross-motions weeks before a bench trial began, including the issues in the motion. And by the time of the opinion, the parties had filed extensive post-trial briefing -- the Court allowed briefs up to 280 pages in length. As such and in light of its coming opinion ruling on all factual issues, the Court did not provide a detailed analysis of its reasoning. Instead, it focused on one of the most common hurdles to summary judgment, the battle of the experts. The parties' experts set forth competing views of the facts and circumstances on the case. Because both parties relied upon those experts to make their cases, summary judgment was not proper.

The Court, however, did commit to resolve the issues as part of its written trial decision.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Mar. 29, 2011) (Dow, J.).

Judge Dow amended the final judgment in this case to reflect the jury verdict and post-remittitur damages award of about $2.5M -- go to the Blog's archives for much more on this case and related cases. The Court also, after a de novo review, adopted Judge Schenkier's report and recommendation on the motion. Plaintiff Trading Technologies ("TT") sought to amend the Court's final judgment, entered by the late Judge Moran, pursuant to Fed. R. Civ. P. 59(e) or 60(a), to reflect the damages award, and sought its fees for bringing the instant motion. The Court held as follows:

• While it may have been too late to amend the judgment pursuant to Rule 59(e), the Court had discretion to amend pursuant to Rule 60(a) to correct an "oversight or omission." The record established that TT and defendants (collectively "eSpeed") understood that there was a money judgment. For example, eSpeed moved the Court to waive the supersedes bond normally required to appeal a case with money damages.
   
• The Federal Circuit and the parties understood the appeal to be on all issues, not just injunctive relief. As such, eSpeed cannot argue that it held back arguments on appeal, that it might otherwise have made if eSpeed had known the appeal went beyond injunctive issues.
   
• Whatever TT's reason for not seeking to correct the judgment with Judge Moran while the case was still pending before him, all parties understood that the judgment included the money damages.

Finally, the Court denied TT's request for it fees incurred bringing the motion. First, both parties should have sought to correct the judgment when it was entered. Second, TT's fee request was undermined by its unreasonable demand in the initial motion that eSpeed pay the money damages within five days.
 

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Chamberlain Group v. Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Mar. 1, 2011) (Posner, J.).

Judge Posner, sitting by designation, ordered a series of pre-trial deadlines in this garage door opener patent case. The following deadlines were of particular note:

• All objections to exhibits were to be in the form of motions in limine, not one-word objections.
   
• Exhibits were limited to what could fit into one binder per side.
   
• The Court was to draft jury instructions and voir dire.
   

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Trading Techs. Int'l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Oct. 29, 2010) (Dow, J.).

Judge Dow denied defendants' (collectively "eSpeed") motion to strike or stay consideration of plaintiff Trading Technologies' ("TT") bill of costs, and awarded TT $381,831.04 in costs.* Because TT received a damages award at trial, TT was the prevailing party and costs were warranted, absent TT's trial misconduct or eSpeed's inability to pay. The fact that TT lost on the issue of eSpeed's alleged willfulness did not change TT's status as the prevailing party, nor did the fact that eSpeed was found not to infringe based upon several of its software packages. The Court had previously stayed a determination of the bill of costs pending the Federal Circuit appeal. So, with the appeal complete, there was no reason left to delay the Court's decision.

The Court then turned to the bill of costs. The following determinations were of particular note:

The Court awarded all undisputed witness travel, attendance and subsistence costs, totaling approximately $21,000. The Court denied travel costs for a trial witness that was flown to trial from Switzerland, rather than from his home in Ohio. Witness fees are only allowed for the shortest possible route from the witness's residence.

The Court awarded videography costs only for depositions of foreign witnesses that TT disclosed as potential trial witnesses.

Court reporter appearance fees were denied because they are only allowed to the extent the fee plus the per-page rate charged does not exceed the Judicial Conference's limit. In this case, the per page rate was already more than the allowed per-page recovery.

Because hearing transcripts played a significant role in the case, the Court awarded TT the allowable hearing transcript fees.

The Court awarded 25% of TT's photocopying request. The reduction accounted for various non-copying charges, such as OCR, blowbacks, etc. and multiple copies of some documents. Recovery is only allowed for a single copy of a document, in most cases.

No costs were awarded for translation because § 1920(6) does not authorize recovery of translation costs, except for "check interpreters" used at trial to dispute certain interpretations.

The Court refused to apportion TT's costs based upon the portion of the case that eSpeed won (summary judgment of noninfringement) versus the jury award that TT won.

* Click here for much more on this case in the Blog's archives.
 

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RNA Corp. v. The Procter & Gamble Co., No. 08 C 5953, Slip Op. (N.D. Ill. Oct. 21, 2010) (Zagel, J.).

Judge Zagel held that defendant Procter & Gamble's ("P&G") intellectual property rights could not be held infringed based upon the available evidence and held that on the available record, the Court could not grant attorney's fees because a prevailing party could not be determined, in this Lanham Act case regarding P&G's alleged trademarks and trade dress in its Herbal Essence hydrating shampoos and conditioners. Through a series of settlement conferences, the parties agreed to the scope of a preliminary and then a permanent injunction, but were unable to determine money damages issues. The parties, therefore, agreed to submit the remaining issues to trial by the Court on the papers. The Court, therefore, ruled based upon the parties' written submissions. In my experience, this is a relatively unique way to resolve and especially to try a case in federal court. And it is an excellent example of how willing the Northern District bench tends to be to find cost-effective ways to resolve what are otherwise often prohibitively expensive intellectual property disputes.
 

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Trading Techs. Int'l, Inc. v. Speed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Sep. 8, 2010) (Schenkier, Mag. J.).

Judge Schenkier recommended denying plaintiff Trading Technologies' ("TT") motion to enforce the final judgment and for sanctions. The Court also recommended correcting the final judgment to reflect the jury verdict and the remitted damages award. A jury previously awarded TT $3.5M in damages and found defendant's infringement willful. The Court later overturned the willfulness finding and ordered a remittitur of damages to $2.5M, which TT accepted. The Court then granted a permanent injunction and entered a final judgment, but that judgment did not reflect the damages award.

Defendant argued that, despite the jury award and remittitur, there was no damages award because it was not reflected in the final judgment and after the Federal Circuit had decided to appeal it was too late to revise the final judgment.

The Court agreed that the first judgment should have included the award, but not that it was too late to fix it. The Court noted that the most likely explanation for the omission was "the fallibility of human beings (judges included)." The Court also noted that TT should have sought to correct the final judgment immediately. But despite the imprecise judgment, the Federal Circuit ruled upon several issues related to the jury verdict, although not the award itself. And neither TT nor defendants disputed the fact or the amount of the damages award. Based upon those facts, the Court recommended that revising the final judgment to reflect the award would merely "correct a clerical mistake or a mistake arising from oversight or omission" pursuant to Fed. R. Civ. P. 60(a). Finally, the Court recognized TT's frustration over not having received payment 34 months after the jury verdict and 6 months after the Federal Circuit's decision. But the Court recommended not awarding TT its fees because TT's failure to promptly get the judgment corrected was the only reason there was a delay in paying the judgment.

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Bone Care Int'l, LLC v. Pentech Pharms., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. Sep. 30, 2010) (Dow, J.)

Judge Dow issued an Order resolving the parties' dispute in the pre-trial joint status report regarding the order of proofs at trial, in light of defendants' stipulation of infringement. The Court ordered that:

1.  Defendant would present its burden of proof evidence regarding invalidity first, citing Howard T. Markey, On Simplifying Patent Trials, 116 F.R.D. 369 (1987). 
    
2. Plaintiffs will then respond to defendants' invalidity case and present evidence of any secondary considerations. 
    
3. Defendants will then be allowed to respond to the secondary consideration proofs and rebut, as appropriate, plaintiffs' validity proofs. 
    
4. Plaintiffs will be allowed a rebuttal case regarding its secondary consideration. 

The Court noted, however, that it would use its broad discretion pursuant to Fed. R. Evid. 611(a) to prevent either party from sandbagging the other with its respective rebuttal case.

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Lorilland Tobacco Co. v. Elston Self Service Wholesale Grocs., Inc., Case No. 03 C 4753, Slip Op. (N.D. Ill. Oct. 21, 2009) (Gottschall, J.).

Judge Gottschall ruled upon the parties’ motions in limine in this Lanham Act case regarding the alleged sale of counterfeit Newport cigarettes. Of particular interest, the Court denied in part plaintiff’s motion to exclude evidence of the religious belief of any party or witness. In order to ensure that “no anti-Muslim prejudice infect[ed] the jury’s deliberation," the Court allowed one defendant to state once that he was a Christian. The Court also noted that it would reconsider its order if plaintiff suggested a reasonable way for the Court to resolve the issue in voir dire.

The Court also agreed to read the jury a statement regarding the fact that the health of one defendant prevented his attendance at trial and that the jury should not hold his absence against him or consider it in their deliberations.

*  Click here for much more on this case in the Blog’s archives.

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Minemyer v. B-Roc Reps., Inc., No 07 C 1763, Slip Op. (N.D. Ill. Nov. 9, 2009) (Cole, Mag. J.).

Judge Cole granted in part defendants' motion to extend the trial date.  The Court continued the trial, but not to the early 2010 date defendants requested.  Instead, the Court continued the trial until early 2011.  An early 2010 trial date would have prevented plaintiff from attending the patent trial because plaintiff begins serving a one-year federal prison sentence in December 2009.  The Court held that holding a trial that plaintiff would be unable to attend in person would prejudice plaintiff.  Instead, the Court delayed the trial until plaintiff will be able to attend.  Plaintiff argued that he would be prejudiced by the one-year delay because his damage award would be delayed an additional year.  The Court, however, held that any prejudice from a delayed award was too speculative to be considered because there was no way to know that plaintiff would be awarded any damages.  Additionally, the Court noted that the delay would benefit plaintiff if he ultimately prevails because his award would include an additional year of damages.

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SPSS Inc. v. Nie, No. 08 C 66, Slip Op. (N.D. Ill. Aug. 19, 2009) (Darrah, J.).*

Judge Darrah granted plaintiff SPSS's motion to strike defendants' jury demand on their counterclaim. Defendants' claims for an injunction and destruction of items bearing the trademark were equitable and, therefore, not triable by a jury. And defendants' claim for attorney's fees is also not triable by a jury. 

The remaining claims for an accounting of SPSS's profits and a trebling of actual damages could be legal claims warranting a jury trial, but defendants had repeatedly characterized their claims as equitable unjust enrichment claims. And defendants could not claim actual damages from a breach of contract claim because the license that governed the parties' relationships was royalty-free. Defendants' counterclaims were, therefore, equitable and not triable to a jury.

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DeVry Inc. v. Int'l Univ. of Nursing d/b/a Robert Ross Int'l Univ. of Nursing, No. 06 C 3364, Slip Op. (N.D. Ill. Jun. 30, 2009) (Guzman, J.).

After a bench trial, Judge Guzman issued findings of facts and conclusions of law, holding plaintiffs Ross University marks infringed and enjoining defendants from using the Ross name in conjunction with medical or nursing schools.  Plaintiffs operated the Ross University School of Medicine and the Ross University School of Veterinary Medicine, both off which plaintiffs bought along with the related trademarks from Robert Ross.  Both institutions are offshore and cater to US students.  Ross later associated himself with defendant, after which defendant, an offshore nursing school, began using the Ross name.  Defendant claimed plaintiffs' claims were moot because defendant stopped using the Ross name.  But the Court held that an injunction could be appropriate to guarantee that the misconduct does not restart after the case.

The Court held that defendants' "Robert Ross International University of Nursing" mark was confusingly similar to plaintiffs' "Ross University" marks for the following reasons:

• Defendant's marks were "strikingly similar" to plaintiffs' in both appearance and suggestion;
   
• Both sets of marks represent offshore medical institutions;
   
• The parties promote their institutions and hire faculty and staff through the same channels; and
   
• There have been numerous instances of actual confusion.

Having held that plaintiffs' mark was infringed, the Court held that injunctive relief was appropriate.  Plaintiffs were irreparably harmed  because of the ongoing actual confusion between the parties' marks and plaintiffs' inability to control its image when confusion occurs.  Furthermore, the balance of hardships weighed in favor of plaintiffs.  Plaintiffs faced "potential devastation" if an injunction was not issued, but defendant's only harm was Ross's temporary inability to use his name in connection with offshore medical services.  And the public would not be harmed by an injunction.  In fact, the injunction would serve the public interest by clarifying the source of medical education services for consumers.

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Krippelz v. Ford Motor Co., No. 98 C 2361, Min. Order (N.D. Ill. Dec. 5, 2008) (Zagel, J.).

Judge Zagel ruled upon various motions in limine.  Of particular interest, the Court denied defendants motion for reconsideration of the Court's grant of summary judgment of infringement.  The Court held that the evidence defendant used to create a material question of fact was inadmissible.  And while the motion could be construed to include new arguments, they were too late to overcome summary judgment.

The Court also granted plaintiff's motion to preclude defendant's evidence of noninfringing alternatives because plaintiff was only seeking a reasonable royalty, not lost profits.  Finally, the Court denied defendant's motion to exclude evidence of defendant's vehicle sales as evidence of commercial excess.  While it is unlikely that anyone purchased a vehicle because of the infringing puddle lamp, the fact that defendant used the lamps in its vehicles and sold a "fair number" is evidence of commercial success.

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Anne Reed has an excellent post at her Deliberations blog about improving the voir dire system based upon Judge Mize's and Center for Jury Studies director Paula Hannaford-Agor's new paper, Building a Better Voir Dire  -- click here to read the post and for a link to a pdf of the article, which is also worth the read.  Reed's post and the article fit well with my recent series of posts on the Seventh Circuit's American Jury Project report -- to read those posts and for a copy of the report, click here (juror questions); here (preliminary jury instructions); here (12 person juries); here (interim statements by counsel)and here (Phase I principles). 

Reed nails a huge problem with improving voir dire specifically or the trial process generally -- judges and lawyers have different interests.  Judges who do lots of trials while facing bulging dockets and populations with little interest in appearing for jury duty often want trials over quickly and efficiently using the smallest jury pool possible.  Lawyers want to know as much as possible about as large a pool of jurors as possible.  Of course, the more in-depth the voir dire process, the more time it takes.  And the process of testing new ideas and improving upon voir dire, or any part of the trial process, also takes time up front, even if it saves time in the long term.  But Reed, Mize and Hannaford-Agor identify two resources that help limit the upfront costs for judges -- the American Jury Project and the NCSC's State-of-the-States Survey.  Both are incredible resources for judges that want to try new approaches to better serve all trial stakeholders.

Most of all though, it is exhilirating to see important groups like the NCSC and the Seventh Circuit massing their resources to evaluate and improve the trial process.  I look forward to covering more efforts like these and to continuing the discussion about how to best try cases in our courts.

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I previously described the high-level findings of the Seventh Circuit’s American Jury Project – click here for that post, including links to PDFs of the report and related documents. Having discussed the four Principles studied in Phase Two,* this post looks at the additional three Principles considered only during Phase One: juror questionnaires, deliberation guidance, and trial limits.

The Phase One study showed strong value in having potential jurors answer questionnaires prepared by the court and counsel before voir dire. It streamlined the voir dire process, preserving judicial resources and benefiting jurors who are not comfortable with public speaking. The Commission recommended using questionnaires. For much more on questionnaires and a great library of them, check out Anne Reed’s Deliberations blog – click here for Reed’s questionnaire library.

The Phase One analysis of adding deliberation guidance instructions was inconclusive. Judges in sixteen trials used the following instructions regarding picking a foreperson and deliberating:

A.                 Jury Instruction on the Role of the Presiding Juror:

You are free to deliberate in any way you decide or to select whomever you like as a foreperson. However, I am going to provide some general suggestions on the process to help you get started. When thinking about who should be foreperson, you may want to consider the role that the foreperson usually plays. The foreperson serving as the chairperson during the deliberations should ensure a complete discussion by all jurors who desire to speak before any vote. Each juror should have an opportunity to be heard on every issue and should be encouraged to participate. The foreperson should help facilitate the discussion and make sure everyone has a chance to say what they want to say.

 

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I previously described the high-level findings of the Seventh Circuit’s American Jury Project – click here for that post, including links to PDFs of the report and related documents. Having discussed the Commission’s findings, I am now looking at findings for the specific Principles studied. This post focuses on twelve person juries.

In seventeen trials, counsel were allowed to make interim statements before or after witness testimony and at the end or beginning of each week, as follows:

• Counsel could make interim statements before or after their questioning of a witness, on either direct or cross;
   
• The statements were given outside the presence of fact witnesses;
   
• Counsel could object having interim statements just as in an opening or closing, but could not respond to them, to avoid excessive contentiousness;Advance notice of interim statements was not required;
   
• Counsel’s statements for a trial were time-limited at the start of trial; and
   
• Counsel were given ten minutes at the end and beginning of each trial week to summarize old testimony or preview the coming testimony.

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I previously described the high-level findings of the Seventh Circuit’s American Jury Project – click here for that post, including links to PDFs of the report and related documents. Having discussed the Commission’s findings, I am now looking at findings for the specific Principles studied. This post focuses on twelve person juries – click here for a previous post regarding juror questions and click here for a previous post regarding preliminary jury instructions.

Twelve person juries had the least conclusive results of the four Phase Two Principles. Mathematical modeling and other data suggested that twelve person juries would increase jury diversity and, therefore, presumably fairness. Fifty trials used twelve person juries. 50% of the judges in the trials believed the larger panels resulted in increased diversity, but only 39% of the trial attorneys agreed. But relatively few judges (25%) and trial attorneys (25%) thought the larger juries increased the fairness of the trial. Judges (78%) and trial attorneys (64%) largely agreed that the larger juries did not decrease trial efficiency. Finally, 93% of jurors and 77% of attorneys agreed that “the right number” of jurors were empanelled expanded in their cases.

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I previously described the high-level findings of the Seventh Circuit’s American Jury Project – click here for that post, including links to PDFs of the report and related documents. Having discussed the Commission’s findings, I am now looking at findings for the specific Principles studied.

First up is allowing jurors to submit written questions for witnesses. As I discussed previously, jurors and judges both overwhelmingly believed juror questions benefited both juries and trials. It is hard to imagine that juror questions would not benefit trials and justice. If you ever have the opportunity for a post-trial discussion with a jury, a common theme is what the jury did not understand about the trial and the questions jurors wanted the lawyers to ask. While it is a little frightening for trial lawyers to give up some control of the trial process, overall both sides are better off with the jurors’ questions answered, removing a huge distraction for jurors. And you can learn much about how a jury is leaning or what you need to do in your case by listening to jurors’ questions.

Of course, as with most things during a trial, the details are very important. The Commission used the following initial jury instruction explaining that written questions could be submitted, that they would be asked only if allowed by the Fed. R. Evid., that they might be revised to comport with the Rules, and that questions may or may not be asked of all witnesses:

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The Seventh Circuit instituted a Commission to study the implementation of the ABA Jury Project.  The Northern District was heavily represented on the Commission.  The following Northern District Judges were members of the Commission:  Bucklo, Brown, Coar, Darrah, Denlow, Der-Yeghiayan, Gottschall, Holderman, Kennelly, Lefkow, Moran, Schenkier, St. Eve, and Zagel.  The Commission recently published its report -- click here to read it.  The report describes a two phase analysis.  In the first phase, district judges tested the following seven ABA Principles:

1.       Twelve-Person Juries;

2.       Jury Selection Questionnaires;

3.       Preliminary Substantive Jury Instructions;

4.       Trial Time Limits;

5.       Juror Questions;

6.       Interim Trial Statements by Counsel; and

7.       Enhanced Jury Deliberations.

Other Principles, such as juror notebooks and allowing jurors to take notes, were already in such widespread use that they were not tested.  Click here for the Phase One Project manual detailing the principles, the rationales and authority behind them, and suggested procedures.  Phase One resulted in questionnaires from 22 participating federal trial judges, 74 participating attorneys and 303 jurors from 38 trials that used one or more of the seven Principles.  Based upon the analysis of Phase One results and questionnaires, the Commission focused Phase Two on the following four Principles:

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Kelley v. Chicago Park District, No. 04 C 7715, Slip Op. (N.D. Ill. Sep. 29, 2007) (Coar, J.).

Judge Coar entered judgment for defendant the Chicago Park District (“CPD”) on plaintiff Chapman Kelley’s (“Kelley”) two Visual Artists Rights Act (“VARA) claims and for Kelley as to his implied breach of contract claim, after holding a bench trial.* Kelley brought this suit arguing that his work of art “Wildflower Works” (“WW”) was copyrightable as a sculpture pursuant to the Copyright Act and the VARA. Kelley originally installed his WW in Chicago’s Grant Park in 1984 pursuant to a permit from the City of Chicago. WW was an installation of wild flowers in two elliptical shapes surrounded by gravel — click here for pictures from Kelley's website — that Kelley replanted and tended each year. Chicago periodically renewed the permit until 1994, when Kelley continued his WW pursuant to an oral permit renewal. Then in 2004, Chicago fenced off WW, effectively destroying it. 

As an initial matter, the Court noted that there was a significant tension between the laws desire to define things, like what a sculpture is, and modern art:

There is a tension between the law and the evolution of ideas in modern or avant garde art; the former requires legislatures to taxonomize artistic creations, whereas the latter is occupied with expanding the definition of what we accept to be art. While Andy Warhol’s suggestion that “art is whatever you can get away with” is too nihilistic for the law to accommodate, neither should VARA be read so narrowly as to protect on the most revered work of the Old Masters. In other words, the “plain and ordinary” meanings of words describing modern art are still slippery.

The Court held that WW was a sculpture, or three dimensional art work, based upon Kelley’s manipulation of the flowers, metal and gravel used to form the contours and colors of WW. Similarly, while WW was not just two dimensional, it was also a painting because it “corral[ed] the variegation of wildflowers in bloom into pleasing oval swatches . . . .”

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The Seventh Circuit's Judge Posner is scheduled to begin a bench trial this morning on the issue of inequitable conduct in New Medium Technologies LLC v. Barco NV, No. 05 C 5620.  The trial is scheduled to last today and tomorrow, but could go as long as Wednesday.  I represented a party that was in the case, but settled and was dismissed from the case last year.  As a result, I have not covered any opinions from the case, previously before Judge St. Eve.  But I am going to observe some of the trial, and I may blog about the trial if I find some interesting things to say that relate more to the trial techniques of counsel or Judge Posner's courtroom than the facts of the case.

But if you are interested in watching Judge Posner hear a patent case or what I expect to be some excellent advocacy from the Niro firm, for plaintiffs, and Baker & McKenzie, for defendants, the bench trial is being heard in Judge St. Eve's courtroom.

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Anne Reed has an excellent post at Deliberations identifying the numerous ways that litigators misunderstand jurors.  Her post is based upon an article titled To Deal Better With Juries, Stop Thinking Like a Lawyer!, by Patricia Steele of Varinsky Associates -- click here for Reed's post and for a link to a pdf of Steele's article.  Steele provides numerous examples of the way the common legal wisdom about juriors directly opposes jurors' realities.  For example:

• It is not the lawyer or her closing that makes the case, but the facts.
  
• Clever legal arguments lose cases, themes of justice, and rights or wrongs win cases.
  
• Voir dire should be used to get to know the jurors, not to teach the case.

Steele's observations square perfectly with my observations as the son of a trial attorney, a former federal district court law clerk and a practicing lawyer.  Each of the misconceptions Steele identifies comes from one of two basic and common misunderstandings:

1. Trials are stages for lawyers.  Wrong.  Trials are a stage for the facts and the themes lawyers wrap the facts in.  Good facts generally beat good lawyering.
   
2. Lawyers understand jurors.  Almost always wrong.  As most lawyers know, law school is intellectually transformative.  After three years of law school (plus years of practice) a lawyer thinks differently.  One of the critical tools for a trial attorney is access to non-legal thinking.  One way to get it is to learn to strip away the legal framework we have built up and think like a juror.  This is hard to do, especially as you are in the whirlwind of a trial or trial preparation.  The best lawyers recognize this issue and turn to juror proxies -- their assistants, spouses, children, neighbors, friends, baristas or anyone else they know without legal training -- to get non-legal perspectives.  Of course, consultants, focus groups and mock juries can also provide juror thinking.

Everyone who tries cases, or who aspires to, should go to Reed's post and download Steele's article to read and re-read.

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Judge Moran denied the party's cross motions for attorney's fees. Plaintiff Trading Technologies (“TT”) argued that the case was exceptional. But the Court held that it was not for the following reasons:

• eSpeed's refusal to admit infringement was reasonable. A defendant requiring plaintiff to make its proofs does not alone make a case exceptional.
  
• eSpeed's decision not to agree to an interlocutory appeal of claim construction and noninfringement decision was not grounds to make the case exceptional. Although eSpeed argued against an interlocutory appeal, the Court made the ultimate determination.
  
• eSpeed's pursuit of its inequitable conduct claim, which it lost after a bench trial, did not make the case exceptional. In the Court's opinion regarding inequitable conduct, the Court ruled for TT, but noted that eSpeed's case was not frivolous – click here to read the Blog's post about that opinion.
  
• The jury's willfulness finding did not make the case exceptional. This was especially true because the Court overturned the jury's willfulness decision based upon In re Seagate – click here to read the Blog's post about that case.

The Court noted that neither party in this case acted more outrageously than the other. Counsel for both parties were zealous advocates that pushed, but did not go beyond, the envelope.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 2008-1392 & 1393 (Fed. Cir.).*

As Judge Moran predicted, the parties have appealed this case to the Federal Circuit.* The parties’ appeals were consolidated, leaving a single appeal with a substantial number of issues. The great, new Patent Appeal Tracer* reported that plaintiff Trading Technologies (“TT”) is appealing at least the following decisions (click here to read Tracer’s post on the cross-appeals):

Claim constructions, specifically constructions of "static price axis" and "order entry region"  (click here and here and here for the Blog’s posts regarding claim construction opinions);

• Summary judgment of noninfringement of most of defendant eSpeed’s software packages, including the following titles: Dual Dynamic, eSpeedometer, and modified eSpeedometer programs (click here for the Blog’s post regarding this opinion);
  
• Partial summary judgment for TT regarding prior use (click here for the Blog’s post regarding this opinion); and
  
• Judgment as a matter of law overturning the jury’s willfulness finding (click here for the Blog’s post regarding this opinion).

And eSpeed is appealing, at least, the following decisions:

• The permanent injunction regarding certain of eSpeed’s software packages (click here for the Blog’s post regarding the Court’s permanent injunction).

* Thanks to Patent Tracer for linking to the Blog’s TT v. eSpeed coverage. Click here to read much more about this case in the Blog’s archives.

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Judge Moran granted plaintiff Trading Technologies' (“TT”) motion for a protective order, but denied its request for its fees related to the motion. TT used two videos of third part Walter Brumfield's trading screen and a portion of one of Brumfield's daily trading records (collectively the “Evidence”) as evidence during the Court's inequitable conduct bench trial. Despite prior designation as “Attorneys' Eyes Only” pursuant to a protective order and having been sealed in the parties' previous filings, the Evidence was presented in open court without any protections. Additionally, it was designated on exhibit lists submitted in connection with the bench trial without any confidentiality designation.

The first business day after the bench trial, TT contacted defendant eSpeed to confirm that the Evidence was to be treated as confidential. But eSpeed, and the other defendants in the related cases, objected arguing that by using the Evidence at trial without any protections or designations, TT waived confidentiality.

The Court acknowledged a “strong presumption of public access to court proceedings and records . . . .” But noting that the presumption is not absolute and that the parties seeking disclosure here were defendants not the press or public, the Court held that the Evidence retained its confidential status for the following reasons:

• The videos showing Brumfield's custom-designed computer screen configuration was a trade secret and its disclosure could harm Brumfield's competitive trading advantage;

• TT's public disclosure of the Evidence was inadvertent as evidenced by the numerous times the Evidence was previously treated as confidential; and

• To the extent the Court relied on the Evidence in its opinion (click here to read the Blog's post about the opinion), it did not do so in sufficient technical detail to disclose the confidential elements of the Evidence.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Min. Order (N.D. Ill. Feb. 20, 2008) (Moran, Sen. J.).*

Judge Moran is scheduled to begin a two-day inequitable conduct bench trial this morning, and everything appears to be ready.  The deposition designations, exhibit lists and motions in limine have all been filed.  The eSpeed defendants have also filed motions to preclude Trading Technologies' counsel from testifying and to enforce eSpeed's understanding  of a stipulation (not surprisingly, the parties disagree as to what was stipulated) regarding the critical date.

Trial is scheduled to begin this morning at 10:30 am CDT.  Unfortunately, client obligations will prevent me from attending.  But I will continue to keep you updated based upon the Court's rulings.

* Click here to read much more about this case in the Blog’s archives.

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Cement-Lock v. Gas Tech. Institute, No. 05 C 0018 (N.D. Ill. Mar. 11, 2007) (Pallmeyer, J.).

Judge Pallmeyer presided over a jury trial resulting in a verdict for plaintiffs Cement-Lock LLC and Alderman Richard Mell on behalf of Cement-Lock Group (collectively "CLG") on various RICO and breach of fiduciary duty claims.  The jury awarded CLG $15M in damages.  The jury also returned a verdict for defendants on CLG's trademark infringement and Illinois Uniform Deceptive Trade Practices Act claims.  Click here for Judge Pallmeyer's Order entering the verdict and here for the jury instructions (Count IX is the trademark infringement count and Count XI is the Illinois Deceptive Trade Practices Act count).

This was a dispute over the control and use of Cement–Lock technology (the “Technology”) which decontaminated certain waste products and used the decontaminated waste as a beneficial cement additive. CLG asserted various IP claims, including Lanham Act unfair competition, deceptive trade practices and trademark infringement. CLG alleged that defendants permitted defendant Gas Technology Institute (“GTI”) to secure funding for Technology-related activities, despite defendants’ knowledge that GTI had no license to use the Technology and kept knowledge of the funding from CLG. GTI also allegedly claimed to own and have developed the Technology.

For more about this case and the verdict, check out:

• The Blog's archives; and
  
  
• The Chicago Sun-Times.
  

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The Chicago Tribune has set up a live blog, written by Bob Secter and Jeff Coen, of the government's criminal case against Tony Rezko.  The blog promises daily, "gavel-to-gavel" coverage of the Rezko trial -- click here for background on the case from the Tribune.  This case does not have an intellectual property angle that I am aware of, but it provides an excellent view of a trial as seen through the eyes of non-lawyers, a very important perspective for litigators.  Additionally, Judge St. Eve gets at least her share of IP cases -- click here for discussion of Judge St. Eve's opinions in the Blog's archives.*

Here is some of the Tribune's coverage of the voir dire from yesterday, largely performed by the Court:

Another potential juror, No. 475, teaches cooking classes, often on Fridays. St. Eve sounded as if she was ready to work with the cooking teacher to accommodate her schedule. "If we structured the trial so that it would go Mondays through Thursday and not have trial on Fridays, the days you have cooking classes, would that be good for you?" the judge asked.

Some of St. Eve's questions were more chatty than legal. The cooking teacher, for example, was asked what was on the menu at her next class. The answer: Beef Bourguignon and mashed potatoes.

Another juror was asked where she liked to go snowboarding. Still another was asked about her desire to learn Spanish. "Have you learned any words yet?" the judge asked.

"Just the bad things," the woman responded.

St. Eve also complimented No. 475 on an answer the prospective juror gave to a presubmitted question about whether people who contribute to a campaign should expect something in return. "A thank-you would be nice," the woman wrote.

I will keep an eye on the Tribune's blog and will highlight other especially interesting items from it.

*  Judge St. Eve also gets her share of high profile cases.  She must be tired of the publicity after having the Conrad Black trial and now the Rezko trial within twelve months of each other.

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I have run across a couple of items that fall outside of the Blog's Northern District IP focus, but that are useful for all of us focused on resolving IP disputes in the courts:

• An Idaho Business Review* article about a patent trial between Rambus and Micron reminded me of the importance of viewing trial proceedings through the eyes of the jury.   The reporter explained that after a week and a half of proceedings, much of them under seal, the Court has issued an order requiring that the jury be provided daily refreshments paid for by the United States.  That was the extent of what the reporter knew about the proceedings.  Of course, the Court likely decided numerous complex issues during the week and a half, but all the reporter, and likely the jury, saw was mysterious and sometimes frustrating delay.  Lawyers often forget how juries see repeated sidebars and morning or mid-day motion hearings.  Do your best to fill in or at least explain the gaps and delays for your jury, otherwise they will do it themselves. 
  
• Patent Troll Tracker identified this blog by E.D. Texas patent defendant Desire2Learn chronicling its ongoing patent infringement trial.  This is dangerous territory for a litigant, but it could be a fascinating look at the trial process from the corporate litigant's vantage point.

*  Why do I read the Idaho Business Review?  I don't.  I found the article through the wonders of RSS feeds and content searches.  Thank you Kevin O'Keefe and LexBlog for teaching me the power of RSS.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Jan. 2, 2007) (Moran, Sen. J.).*

Judge Moran denied defendants’ (collectively “eSpeed”) motion for judgment as a matter of law that plaintiff Trading Technologies’ (“TT”) patent was invalid for indefiniteness based upon the claim term “single action of a user input device” (“Single Action”). The Court previously construed Single Action as “an action by a user within a short period of time that may comprise one or more clicks of a mouse button or other input device.” Before trial, the Court used the definition to exclude evidence regarding a Tokyo Stock Exchange (“TSE”) software package that required double clicking, entering a quantity and pressing “enter” – click here for the Blog’s discussion of that opinion.

TT argued that the phrases “one or more clicks” and “short period of time” in the Court’s construction were indefinite because they did not sufficiently delineate the scope of the term. The Court noted that it did not need absolute clarity to define a claim term and held that the Single Action was sufficiently definite. The Court reasoned that it had been able to construe the term based largely upon the specification. And neither “one or more clicks” nor “short period of time” rendered the claim indefinite because the phrases are part of the definition, not the claim language. 

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Jan. 3, 2007) (Moran, Sen. J.).*

Judge Moran granted defendants’ (collectively “eSpeed”) motion for judgment as a matter of law that their infringement was no willful. The Court instructed the jury using the objective recklessness standard from In re Seagate Techs., LLC, 497 F.3d 1360 (Fed. Cir. 2007), but when the Court reviewed the totality of the circumstances it found no support for the willfulness verdict and, more specifically that plaintiff Trading Technologies (“TT”) had not met its burden of proving that there was an objectively high likelihood of infringement when eSpeed sold its infringing product, Futures View. When eSpeed launched Futures View, TT’s patent had not issued. And while eSpeed was aware of the application, knowledge of an application does not prove willfulness. Furthermore, TT produced no evidence of post-issuance willfulness. TT submitted two internal eSpeed emails, but both were sent before TT’s patent issued and the emails only suggested that eSpeed should mimic certain features of the TT software. And upon learning of TT’s issued patent, eSpeed immediately began a redesign of Futures View, resulting in new software products that the Court granted summary judgment of noninfringement. As a result of the redesign, the infringing Futures View was only on the market for five months after TT’s patent issued. 

TT also argued that eSpeed’s failure to make noninfringement arguments in preliminary injunction proceedings showed willfulness. But the Court held that eSpeed denied infringement in its answer and that there was no need to argue noninfringement of Future View in preliminary injunction proceedings because eSpeed was not selling Future View. There was no danger of an injunction over a product eSpeed was not selling. 

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RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, 2007 WL 495254 (N.D. Ill. Feb. 14, 2007) (Coar, J.).

As promised last week, the jury instructions are now available -- click here for a copy.  Additionally, although the verdict form is not available electronically, the Court's minute order (click here for a copy) gave some additional detail.  The jury found for plaintiff RRK on each of eleven counts and awarded damages as follows:

Damages Award

RRK's Actual Losses	$11,664,105
Sears's Unjust Enrichment	$1,688,136
Punitive Damages	$8,011,344
Total Damages	$21,363,585

For more on this case, click here for the Blog's archives.

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RRK Holding Co. v. Sears, Roebuck & Co., No. 04 C 3944, 2007 WL 495254 (N.D. Ill. Feb. 14, 2007) (Coar, J.).

The Chicago Sun-Times is reporting that a jury returned a $21.5M verdict, including $8M in punitive damages, Monday for plaintiff RRK Holding Co. ("RRK") in its Illinois Trade Secret Act ("ITSA") suit against defendant Sears, Roebuck & Co. ("Sears").  RRK alleged that, pursuant to a nondisclosure agreement, it disclosed to Sears its plans for a next generation “combination tool” which consisted of a rotary saw, also called a spiral saw, which could be converted into a plunge router. But after negotiations broke down over price, Sears allegedly took RRK's plans and used them to make Sears's Craftsman "All-in-One" tool.  Sears has said it will appeal the verdict.  The Court's docket has not been updated yet with a verdict form or jury instructions, but I will post them when they become available, likely next week.

For more on this case, click here for the Blog's archives.

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I have already posted on the verdict generally, but the jury's completed verdict form is now available and provides some more detailed information -- click here for a copy.  The jury found infringement, either literal, contributory or induced, for every accused product on every asserted claim.  The $3.5M damages award was split $1.5M against eSpeed and $2M against Ecco.  And both eSpeed and Ecco were found to have willfully infringed the patents.

Additionally, click here for the final jury instructions.  Of particular interest, the willfulness instruction, at page 35, is likely one of the first that used the new objective recklessness standard from In re Seagate.

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As I posted yesterday afternoon, the jury came back for Trading Technologies ("TT").  The jury found that eSpeed willfully infringed TT's patents for a six month period in 2004, found the patents valid and awarded $3.5M in damages.  The parties have not completed their bench trial on inequitable conduct.  So, the Court may still hold the patents invalid based upon inequitable conduct, which would render the $3.5M damages award moot.  But unless and until that happens, the award stands and has the potential to be as much as trebled based upon the willfulness finding. 

There has been some press coverage already.  Here is some of the best:

• Crain's Chicago Business
  
• Wall Street Journal (subscription required)
  
• Ad Hoc News
  
• CNN Money (AP story)
  
• Futures Magazine
  
• Reuters

You can read much more about this case and its related cases in the Blog's archives by clicking here.

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The jury continued its deliberations yesterday and reconvened this morning.  That is not a very informative update, but based on the Blog's traffic this week people are looking for updates on the case.  And that is all there is right now.

A relative who is a criminal defense attorney, often said that longer jury deliberations benefited the defense.  Of course, when he had a close case and a fast jury, he sometimes thought that benefited the defense also.  It is difficult to read the tea leaves with a jury.  But I will let you know as soon as I learn the jury's verdict.  For more on the case and Trading Technologies' related cases click here for the Blog's archives.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04C 5312, Slip Op. (N.D. Ill. Sep. 25, 2007) (Moran, Sen. J.). 

Judge Moran denied plaintiff Trading Technologies’ (“TT”) supplemental summary judgment motion. The Court previously denied the original motions regarding the priority dates of the patents in suit.* In that opinion, the Court held that whether the patents could claim priority from their provisional application was a question of fact for the jury. The issue was whether disclosing the species of a single mouse click in the provisional application was sufficient support for the genus – a single action by the user – claimed in the patents in suit.

TT argued that eSpeed’s expert’s statement that the art – software engineering and user interface design – was predictable, was sufficient to take the patents out of the In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004), exception (unpredictability of a species prevents support of a genus). The Court agreed that the factual issue was predictability of the art. But the Court held that eSpeed’s expert’s statement did not resolve the dispute. A generally predictable art does not mean that one of ordinary skill would understand the patentee’s description of the particular species (one-click) was necessarily in possession of the genus (one action). So the issue went to the jury.

As of this post, the jury still has this case.  I will let you know as soon as I learn the jury's verdict.  For more on this case and Trading Technologies' related cases click here for the Blog's archives.  And keep watching the Blog, while the jury deliberates and the parties try inequitable conduct to Judge Moran this week, I will continue catching up with some prior opinions from the case.

*  To read about the original summary judgment motions click here or for a copy of this opinion click here.

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Trading Technologies (“TT”) and eSpeed rested on the issues of infringement, validity and damages last week, and the jury now has the case.  I attended closings last Thursday. Both sides made strong, persuasive arguments for their desired outcomes. What I thought was most interesting about the closings, from a trial standpoint, was the use of themes. TT’s theme was a story of a boy who eats cookies knowing he is not supposed to and, when his Mom returns and asks him about it, tries repeated lies and distractions to avoid punishment. The story was simple and compelling. Also, it fit well with TT’s case theory, that eSpeed copied its patented software and was simply trying to avoid payment for it. The only problem I saw with the theme, putting aside whether it was supported by the evidence since I did not attend the entire trial, was that it was introduced in the middle of the closing and only referred to sporadically. As a result, even though it was likely a stronger choice of theme than eSpeed’s, it was distracting instead of being integrated into TT’s and, hopefully for TT, the jury’s thinking about the case.

eSpeed’s theme was that TT engaged in a pattern of overreaching, evidenced by exaggerations and partial truths. With each TT witness discussed during its closing, eSpeed identified an alleged exaggeration or partial truth from that witness. eSpeed’s consistent use of the theme was compelling and, although I cannot comment on whether it was supported by the facts at trial, likely resonated well with the jury.

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The parties have rested on the issues of infringement, validity and damages.  Closings were Thursday and the jury now has the case.  I attended the closings.  Look for my thoughts on them Monday morning -- unlike the Northern District, other government offices, the Post Office and many schools, the Blog will be working on Columbus Day.  Judge Moran will hear the inequitable conduct case beginning next week. 

I will let you know as soon as I learn the jury's verdict.  For more on this case and Trading Technologies' related cases in the Blog's archives click here.

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Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 04 C 5312, 2007 WL 2713335 (N.D. Ill. Sep. 12, 2007) (Moran, Sen. J.).

Judge Moran granted in part plaintiff Trading Technologies’ (“TT”) motion in limine, precluding defendant eSpeed from arguing to the jury that any feature requiring the specific sequence – a double mouse click, keying in a value and pressing the enter key – fell within the Court’s construction of a “single action.”* The Court reasoned that it defined single action from the perspective of the software end-user. And from the user prospective the double-click/quantity/enter sequence was clearly more than a single action.

The Court acknowledged that taking this decision from the jury was “unusual,” but the Court believed its decision was warranted because of the complexity of the case and how clearly outside the construction of single action the double-click/quantity/enter sequence was: 

The parties have no lack of theories, especially when it comes to invalidity and prior art. Therefore, as we are convinced that it would be impossible for a reasonable jury to find that the three steps described by eSpeed’s attorney could fit into our definition of single action, we grant TT’s motion to exclude evidence that it does. Rather than throw a non-starter at the jury or deal with this issue during post-trial motion practice, we exclude the evidence from the start. Although our decision is nearly akin to a partial summary judgment ruling, we are convinced that it is correct, it will save precious judicial resources, and simplify the case for the jury.  (Citations and footnotes omitted).

I understand that the trial is ongoing.  I am hoping to make it to closing arguments and will post about them if my schedule allows me to see them. 

* Click here to read much more about this case and its related cases in the Blog’s archives.

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Trading Technologies Int’l, Inc. v. eSpeed, Inc., (N.D. Ill.) (Moran, Sen. J.).

Last week, I attended several hours of the Trading Technologies (“TT”) v. eSpeed trial. I watched the direct exam of TT’s infringement expert. Unfortunately, because of an ill-timed lunch break and other responsibilities, I missed eSpeed’s cross-exam. The jury is made up of eight members and two alternates, equally split between men and women. To their credit and that of the Northern District’s jury pool generally, the jurors appeared very engaged, dressed appropriately for court and were taking detailed notes.

None of the issues that I have written about came up (click here for the Blog’s archive on the case), but I came away with several thoughts about making your case to a jury:

• TT’s PowerPoint slides were often, although not always, very dense. This led to a jury that was over-focused on the slides and not listening to the testimony. Of course, TT’s infringement case was on the slides so they may be comfortable with that. But I want the jury focused on my expert and her credibility, not her slides.
  
• Despite their occasional wordiness, TT’s expert interacted very well with his slides. When the expert stepped away from the witness stand and pointed out information on the slides, he recaptured the jury’s attention very well.
  
• When the expert relied upon deposition or trial testimony, TT put the testimony on a slide next to the person’s picture. This was an excellent way of humanizing the cold transcript. I suspect it also helped the jurors remember the testimony by attaching the words to a face.

I understand that trial will continue at least this week and maybe in to next week. I will try to observe the trial again, but I am traveling most of this week so it will not be until late this week or early next. And if I do make it back, I will do my best to watch both the direct and the cross of a witness or maybe both sides’ closings. That way I will be able to provide more perspective on the substance of the trial.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).*

Judge Moran denied defendant eSpeed’s motion to compel production of damages documents from plaintiff Trading Technologies (“TT”). eSpeed sought, among other things, monthly licensing reports, monthly product profitability reports and documents for determining TT’s costs and sales budgets. TT argued that it had already produced the requested information, to the extent that it was kept in the form requested. And to the extent that the information was not kept in the requested form, TT stated that it had provided documents sufficient to determine the requested information. Noting that counsel are officers of the Court, the Court relied upon TT’s representations and denied eSpeed’s motion because TT stated that the documents had been produced.

Trial is set to start in this case the week of September 10. Between now and then expect to see several more opinions in this case and its related cases (there are two weighty summary judgment opinions still in my queue, as well as several other smaller opinions and orders). Additionally, I have some other obligations that week, but am planning to blog some of the trial. Stay tuned.

*You can download this opinion here and you can read much more about this case and related cases in the Blog's archives.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).*

Judge Moran denied plaintiff Trading Technologies’ (“TT”) motions to reconsider the Court’s grant of summary judgment of noninfringement regarding defendant eSpeed’s software utilizing automatic and drift recentering of a price axis (discussed here). This opinion is most notable for the Court’s blunt footnote acknowledging that this case will be appealed to the Federal Circuit and that, therefore, the Court believes that “speedy resolution” is in all parties’ best interests:

We recognize that TT may have a valid argument [that an amendment during prosecution did not narrow the claims] and note that this was a close call. We also recognize that our decision may have been influenced by the impending trial and our disinclination to reopen a significant issue for debate. We have previously noted that this case is certain to find itself in front of the Federal Circuit for ultimate resolution and acknowledge our place as a “way station” to the Court of Appeals. Therefore, we are further convinced that speedy resolution of all issues before this court is in everyone’s best interest. . . .

Certainly other courts have thought along these lines, but few voice these opinions. 

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).*

Judge Moran denied plaintiff Trading Technologies’ (“TT”) motion to preclude defendant eSpeed from arguing its prior sale defense at trial. In a previous Order, the Court struck eSpeed’s summary judgment motion regarding its prior sale defense because it was filed after a case deadline. The Court stated eSpeed could use its “full arsenal of defenses” with the jury.

Trial is set to start in this case the week of September 10. Between now and then expect to see several more opinions in this case and its related cases (there are two weighty summary judgment opinions still in my queue, as well as several other smaller opinions and orders). Additionally, I have some other obligations that week, but am planning to blog some of the trial. Stay tuned.

*You can download this opinion here and you can read much more about this case and related cases in the Blog's archives.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 20, 2007) (Moran, Sen. J.).*

Judge Moran granted in part plaintiff Trading Technologies’ (“TT”) motion to bifurcate inequitable conduct from the rest of the trial – in another opinion issued on the same day, the Court denied defendant eSpeed’s motion to bifurcate willfulness and damages from the liability phase of the trial. The Court noted that bifurcation is the exception not the rule, but that Fed. R. Civ. P. 42(b) allows the Court to bifurcate trials for convenience, to avoid prejudice or when bifurcation benefits expediency and economy. The Court also explained that bifurcating inequitable conduct does not violate the Seventh Amendment, citing Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209 (Fed. Cir. 1987). 

TT sought an inequitable conduct bench trial after the conclusion of the jury trial. eSpeed asked the Court to try inequitable conduct before the jury and have the jury issue an advisory verdict pursuant to Fed. R. Civ. P. 39(c). The Court observed that there was substantial case law supporting both TT’s and eSpeed’s positions, showing the discretion the Court has on the issue. But the Court followed the reasoning of Judge Norgle in THK Am., Inc. v. NSK, Ltd., 1996 WL 33398071 (N.D. Ill. 1996). Judge Norgle bifurcated inequitable conduct, but heard the evidence of inequitable conduct each day after the jury was dismissed as the inequitable conduct evidence came up. The Court reasoned that this form of bifurcation prevented the jury from hearing potentially prejudicial evidence, while allowing witnesses not to have to return for additional days of testimony.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 20, 2007) (Moran, Sen. J.).*

Judge Moran denied defendant eSpeed, Inc.'s (“eSpeed”) renewed motion to bifurcate willfulness and damages from the liability phase of the trial.  The Court denied eSpeed's original bifurcation motion.  The Court noted that since the initial motion, the Court had issued claim constructions largely favorable to eSpeed and summary judgment of noninfringement as to the majority of eSpeed's accused products.  But the Court had also denied eSpeed's motions for summary judgment of invalidity, leaving invalidity to be resolved by the jury.  The Court reasoned that the Real v. Bunn-O-Matic, 195 F.R.D. 618 (N.D. Ill. 2000) factors weighed in favor of not bifurcating the trial or were neutral.  The Court's summary judgment of noninfringement rulings severely limited the damages case and "significantly simplified" the infringement issues. 

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Eolas Techs. Inc. v. Microsoft Corp., No. 99 C 626 (N.D. Ill.) (Pallmeyer, J.).

Speculation regarding Judge Pallmeyer's delay of the Eolas v. Microsoft trial is starting in the MSM and on the internet.  The Seattle Post-Intelligencer and the Internetnews.com both have pieces reporting that Eolas and Microsoft are working toward settlement.  Both stories quote a Microsoft spokesperson as saying, "[Microsoft is] in active discussions with Eolas Technologies regarding a possible settlement ."

As I said in my previous posts, I will not comment on any news from this case because of my family's connection to it, but feel free to discuss the case in the comments.

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Eolas Techs. Inc. v. Microsoft Corp., No. 99 C 626, Min. Order (N.D. Ill. Jul. 30, 2007) (Pallmeyer, J.).

Late yesterday Judge Pallmeyer entered a minute order striking the Eolas v. Microsoft trial scheduled for this week and setting a status conference for August 30.  As I said in my previous post, I will not comment on any news from this case because of my family's connection to it, but feel free to discuss the order in the comments.

And thank you to all of you who were interested in guest blogging the trial.  I will get in touch if the trial is rescheduled.  If anyone else is interested email me.

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