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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: TT

Court Does Not Dismiss “Me Too” Patent Counterclaims

Posted in Pleading Requirements

Trading Techs. Int’l., v. CQG, No. 05 C 4811, Slip Op. (N.D. Ill. Oct. 31, 2012) (Coleman, J.).

Judge Coleman granted in part plaintiff Trading Technologies’ (“TT”) Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant CQG’s affirmative defenses and declaratory judgment counterclaim.  The Court dismissed CQG’s bare-bones defenses which stated in their entirety:

  •  “Plaintiff’s claims are barred by the doctrines of estoppels, acquiescence, implied license, and/or unclean hands.”
  • “Plaintiff is not entitled to any damages for the time period that it was not in compliance with the marking requirements under 35 U.S.C. § 287.”

The Court, however, gave CQG twenty-one days to amend the defenses to include sufficient factual support.

The Court denied TT’s motion to dismiss CQG’s declaratory judgment counterclaims as redundant.  While some judges in the Northern District dismiss such claims, the Court held that CQG’s counterclaims would allow the Court to retain jurisdiction if TT dismissed its claims and, therefore, were not redundant.

Patent Marking Based Lanham Act Claims Require Showing of Bad Faith

Posted in Pleading Requirements

GL Trade Ams., Inc. v. Trading Techs Int’l., Inc., No. 11 C 1558, Slip Op. (N.D. Ill. Jan. 23, 2012) (Holderman, C.J.).

Judge Holderman granted defendant Trading Technologies’ (“TT”) Fed. R. Civ. P. 12(b)(6) and 9(b) motion to dismiss plaintiff GL Trade Americas’ (“GL”) false advertising, unfair competition and deceptive trade practices claims based upon allegedly misrepresenting the scope of TT’s patents.  GL alleged that TT falsely and misleadingly caused others to believe that its patents covered electronic trading software with automatic recentering functionality, even after Judge Moran held that TT’s patents did not cover automatic recentering.

Preemption by the Patent Act

TT argued that GL’s claims were preempted by the marking provisions of the Patent Act.  But the Court held that the Lanham Act claims were not preempted because they required an additional showing of bad faith.

Allegations of Bad Faith

 GL contended that it sufficiently pled bad faith, without using the words bad faith, by alleging that TT knew the scope of its patents, but despite that marked its products incorporating automatic recentering with its patents.  Noting that patent marking allowed for “[s]ome inexactness”, the Court held that it was legally plausible for TT to believe that its accused produts were coverd by the patents.  And the Court found no support for the proposition that a patent holder must notify users of which components in a program were covered by patents and which were not.  As such, it was enough that a single mode of the software package did not have the patented feature, and TT was not required to identify to the user which aspects might read on the patents and which might not.  Because GL had not pled bad faith, both its Lanham Act and deceptive trade practices act claims were dismissed.

** For much more on this case and related cases, check out the Blog’s archives.

 

 

 

Trading Technologies: Final Judgment Amended to Include Monetary Damages

Posted in Trial

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.

Trading Technologies: Court Consolidates 2010 Cases

Posted in Local Rules

Trading Technologies, Inc. v. BGC Partners, Inc., No. 10 C 715, Slip Op. (N.D. Ill. Feb.3, 2011) (Kendall, J.).*

Judge Kendall consolidated plaintiff Trading Technologies’ ("TT") patent infringement cases that were filed in 2010 – Judge Coleman previously denied TT’s motions to consolidate the cases filed in 2005 with those filed in 2010. The Court held that the 2010 cases were sufficiently related pursuant to Local Rule 40.1. While the products were not identical and the asserted patents were not identical for each defendant, the accused products were similar and were all accused of infringing one or more of three of TT’s patent families. Additionally, consolidation would conserve substantial time and effort without causing delay.

The Court also ordered the parties to file a summary of all pending motions and discovery status.

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

Trading Technologies: Motion Not Allowed to Lie “Fallow”

Posted in Local Rules

Trading Techs. Int’l., Inc. v. CQG, Inc., No. 10 C 718, Slip Op. (N.D. Ill. Jan. 6, 2011) (Shadur, Sen. J.).

Judge Shadur denied plaintiff Trading Technologies’ ("TT") motion to strike certain of defendants’ (collectively "CQG") affirmative defenses and counterclaims.* The motion was originally filed September 1, 2010 and had been stayed by agreement as the parties attempted to negotiate a global settlement. Because allowing motions to lie "fallow" for so long was "undesirable" the Court dismissed the motion with leave to refile it should the parties restart the substantive portion of the case.

Click here for much more on this and the related Trading Technologies cases in the Blog’s archives.

Trading Technologies: Court Denies Motion to Consolidate Sixteen Pending Cases

Posted in Local Rules

Rosenthal Collins Group, LLC v. Trading Technologies Int’l, Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Nov. 23, 2010) (Coleman, J.).

Judge Coleman denied plaintiff Trading Technologies’ ("TT") Local Rule 40.4 motion to consolidate TT’s sixteen pending patent cases,* involving nine patents. Initially, the Court noted that TT did not seek consolidation of all sixteen cases in a single case, but consolidation of the four remaining cases that TT filed in 2005, and separately the twelve cases TT filed in 2010. LR 40.4 requires that a motion to consolidate be filed in the lowest number case. So, while the instant case was the lowest number of the 2005 cases, it was not the lowest number 2010 case. As to the 2010 cases, therefore, the Court did not address consolidation. As to the 2005 cases, TT failed to show that the cases were sufficiently related — while they involved common patents, the accused products operated in "very different manner[s]." Furthermore, while Judge Moran previously coordinated discovery of all of the 2005 cases before the cases were reassigned, TT did not demonstrate that consolidating the 2005 cases would conserve resources.

Click here for much more on these cases in the Blog’s archives.

Trading Technologies: “Willful and Intentional” Evidence Fabrication Leads to $1M Fine & Default Judgment

Posted in Discovery

Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Feb. 23, 2011) (Coleman, J.).*

Judge Coleman granted defendant/counter-plaintiff Trading Technologies’ ("TT") motion for evidentiary sanctions and default judgment.  Judge Moran previously dismissed plaintiff/counter-defendant Rosenthal Collins Group’s ("RCG") motion for summary judgment regarding the alleged prior art Buist trading program for discovery abuse, ordered RCG to produce additional documents and things related to the Buist program, and ordered RCG to pay certain of TT’s attorney’s — click here for the Blog’s post on that decision.  Initially, the Court the severity of a default judgment as a sanction, calling it "extreme," and noted that the Seventh Circuit required a showing of willfulness, bad faith or fault by a preponderance of the evidence in order to justify dismissing a case.

The Court held that the high standard was met in this case, for at least the following reasons:

  • During his deposition, Buist admitted modifying and overwriting source code in 2006 that he and by extension RCG held out as having been created in 1998 or 1999.  And in the face of clear evidence of these facts, RCG continued to deny them, even calling the claims "libelous," "audacious," and "Oliver Stone-esque."
  • Buist later admitted "wiping" or erasing six of seven zip disks that originally contained the relevant source code and that were later produced by RCG because they allegedly contained the code.  The seventh was also wiped, although there was a dispute regarding whether Buist or others had access to it when it was wiped.  But the Court held that it was "impossible to believe that it is merely coincidence that the seventh disk happened to be wiped on May 2, 2006, which just happened to be the same day that TT was scheduled to inspect it."
  • There was evidence that "virtually every piece of media ordered produced by the Court in May 2007 and July 2008 was wiped, altered, or destroyed after those orders were entered . . . ." (emphasis in original).
  • Even if RCG and its counsel had no knowledge of the destruction of the evidence, the destruction might have been avoided if RCG had timely complied with the Court’s orders to produce the materials.  And regardless, RCG and its counsel should have preserved the evidence by taking custody of it.
  • Buist was RCG’s agent and, therefore, RCG was bound by Buist’s behavior and actions.

Based upon these determinations, the Court found clear and convincing evidence that "RCG, and its counsel, acted in bad faith and with willful disregard for the rules of discovery and this Court’s orders."  And because a monetary sanction alone was not sufficient, the Court entered a default judgment in favor of TT and dismissed RCG’s complaint and struck its defenses to TT’s counterclaim.  The Court also fined RCG $1,000,000 for "egregious conduct before the Court" and ordered RCG’s counsel to pay TT the attorney’s fees and costs related to TT’s motion for default judgment.

*  I have a few earlier opinions from the Trading Technologies cases, but this one was significant enough that I moved it up.  Click here for more on the case in the Blog’s archives.

Court Will Not Apportion Costs to Prevailing Party Based Upon How Much of the Case was Won

Posted in Trial

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.

Trading Technologies: No Need for Jurisdictional Discovery Because Defendant Withdrew Its Motion to Dismiss

Posted in Jurisdiction

Trading Techs. Int’l, Inc. v. GL Consultants, Inc., No. 05 C 4120 & 5164, Slip Op. (N.D. Ill. Oct. 20, 2010) (Schenkier, Mag. J.).

Judge Schenkier denied plaintiff Trading Technologies’ ("TT") motion for jurisdictional discovery as moot because defendant GL Consultants withdrew its motion to dismiss. The Court also set an abbreviated process for filing the pending motion for a protective order. Click here for the procedures required of the parties before filing a discovery motion.