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

Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 2007 WL 1628352 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies' ("TT") motion for a protective order to prevent the deposition of Robert Klinger, related to defendant eSpeed's inequitable conduct defense (more on this case in the Blog's archives).  The Court held that discovery is a "balancing act."  eSpeed's assertion that Klinger was involved in drafting a response to a USPTO Office Action at the center of its inequitable conduct claim outweighed TT's best argument -- that the deposition was duplicative because defendants had deposed or have scheduled the depositions of two lead outside patent prosecutors, TT's in-house patent prosecutor and the relevant patent examiner.  The Court also noted that the case is approaching the discovery close, so we may start seeing fewer discovery motions in the case and more substantive motions.

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Trading Techs. Int'l., Inc. v. GL Consultants, No. 05 C 4120, Slip Op. (N.D. Ill. May 17, 2007) (Gottschall, J.).*

Judge Gottschall denied defendant GL Trade SA's ("GL SA") motion to dismiss for lack of personal jurisdiction, with leave to refile after completion of jurisdictional discovery.  GL SA is a French company located in Paris.  GL SA does not have an office or any assets in Illinois, but it does have a subsidiary, defendant GL Americas, Inc. ("GL Americas").  GL Americas maintains a regional office in Chicago.  The Court noted that despite three rounds of briefing on jurisdiction, neither party "provided anything of substance to the court."  Plaintiff Trading Technologies ("TT") treated GL SA's subsidiary GL Americas as GL SA, and had not submitted evidence of GL SA's specific contacts with Illinois.  GL SA submitted several declarations, but none sufficiently clarified that GL SA did not have minimum contacts with Illinois.  As a result, the Court held that it lacked sufficient evidence to rule upon the motion, and granted TT's motion for jurisdictional discovery.

After ruling on the motions, the Court offered its jurisdictional analysis as a "framework" for the issues the parties should address through the discovery process.  First, the Court pointed out that neither party had detailed GL SA's specific contacts with Illinois.  Neither party identified which software products were GL SA products and which were GL Americas products.  Furthermore, neither party identified any sales of GL SA or GL Americas products to Illinois consumers.  The Court noted that if none of the GL SA products at issue were sold in Illinois, the Court would not have specific jurisdiction over GL SA.  And if there were sales to Illinois consumers, discovery was still required to show whether GL SA had a purpose and intent to serve the Illinois market.  Finally, the Court noted that TT must make its case for the Court's jurisdiction over GL SA based upon GL SA's actions, without imputing GL America's actions or contacts to GL SA.

*More analysis of opinions from this case and the various related TT cases, can be found 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. May 17, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies' ("TT") motion to compel additional production from third party Chicago Mercantile Exchange ("CME").  TT served CME with a subpoena seeking, among other things, anything referring or relating to potential prior art to the patents at issue and communications between CME and any other entity regarding the patents at issue, including any joint defense agreement between CME and such parties.  After TT filed the motion to compel, CME produced thousands of pages, including what it stated were all documents in its possession regarding possible prior art.  Because all prior art documents had been produced, the Court denied TT's motion to compel additional prior art-related documents.

The Court also denied TT's motion to the extent it sought communications regarding the possible prior art.  First, the Court considered any communications CME might have had with defendants in the currently pending cases.  The Court referred to its May 1, 2007, order which required defendants to produce a list of all members in their joint defense agreement (that opinion and order, as well as numerous other opinions from this and its related cases, are in the Blog's archives).  The Court held that defendants' list would allow TT to discover whether CME was involved in a joint defense and that no further discovery from CME was necessary. 

Second, the Court considered CME's communications, including potential joint defense agreements, with any parties not involved in TT's pending suits.  The Court held that the common interest doctrine could attach to communications even before the filing of a suit, so long as the parties anticipated litigation.  Furthermore, the Court held that regardless of whether CME's communications with other third parties were part of a joint defense, they were not discoverable because they were "irrelevant" to this case.  The Court explained that while relevance is broadly defined, it does have boundaries and TT's motion ran "up against such a boundary."

*  Because Westlaw has not published this opinion yet, here is a copy of Judge Moran's original, signed opinion.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No. 05 C 4120, (N.D. Ill. May 16, 2007) (Moran, Sen. J.).

Judge Moran granted in part and denied in part plaintiff Trading Technologies' ("TT") motion to compel additional production from defendants GL Consultants, Inc. and GL Trade SA (collectively "GL").  The Court required GL to update certain interrogatory responses and to produce documents based upon an earlier priority date that GL had argued for, as opposed to stopping at the later priorit date alleged by TT.  The Court also required GL to provide TT access to original source code and certain electronic archives, without regard to whether TT had provided GL similar access.  Finally, the Court denied TT's request to lower the confidentiality designation of the source code for GL's "GL Tradepad" software.  But what is most interesting about the Court's opinion is its reminder to the parties about how the Court expects them to conduct discovery:

At the outset, we reiterate some of the points regarding discovery that we have stressed throughout this complicated and contentious litigation. First, parties should err on the side of over-production; relevance should be argued sparingly. Second, counsel are officers of the court and their word is generally sufficient. Third, there will always be additional persons to interview, additional documents to discover, and alleged prior art to be found; we must, however, put an end to discovery at some point. . . . With such guidelines in mind, we address the current dispute.

* Because Westlaw has not published this opinion yet, here is a copy of Judge Moran's original, signed opinion.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 05 C 1079, 05 C 4088, 05 C 4120, 05 C 4811 & 05 C 5164, 2007 WL 1302765 (N.D. Ill. May 1, 2007) (Moran, Sen. J.).

Judge Moran granted in part and denied in part plaintiff Trading Technologies' ("TT") motion to compel production of defendants' communications between themselves (more on this case in the Blog's archives).  Defendants asserted claims of attorney-client and work product privileges regarding various communications and information exchanged as part of a joint defense agreement among, at least, the various defendants and DJ-plaintiff (collectively "defendants") in the patent suits regarding TT's patents.  The Court explained that the joint defense privilege protects communications and exchange of information between parties that have expressly decided to cooperate in a litigation -- with or without a written agreement.  The Court held that defendants had expressed a sufficient intent to cooperate in their respective litigations against TT and, therefore, held that defendants need not produce communications made in relation to their joint defense.  The Court required that defendants produce any written joint defense agreement or, in the absence of a written agreement, the identities of all members of the joint defense.  The Court further held that third parties need not be identified to the extent that their identities are protected as work product, but that third parties should be identified if defendants' communications with them are allegedly protected by attorney-client privilege.  The Court also required that defendants produce all prior art in their possession, regardless of how it was located.  And finally, the Court noted that "it must rely on the integrity of counsel to determine what is and is not privileged."  As a result, the Court required that defendants produce "any communications not protected by a legitimate privilege . . . ."

You can download the opinion here.

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The Chicago Sun-Times reported some IP-related news Sunday.  In a piece entitled "Futures Exchanges Fight Back on Patents," the Sun-Times reported that Brinks Hofer, a Chicago IP boutique, filed a petition with the PTO, on behalf of an unnamed client (PTO regulations do not require identification of Brinks's client),  seeking reexamination of patents assigned to Trading Technologies ("TT").  The patents are at issue in a series of Northern District law suits, which have been consolidated to some degree before Judge Moran.  You can read more about the suits in the Blog's archives.  According to the Sun-Times piece, the reexam petition argued that the TT patents were invalid based upon an order-entry system adopted by the Tokyo Stock Exchange several years before the filing dates of the TT patents.  TT responded to the petition's allegations in the Sun-Times piece, saying that the arguments were recycled from the Northern District lawsuits and that the Court was skeptical of the arguments. TT also noted that a trial was set for June 28, just two months away.  Finally, TT pointed out that the majority of reexam petition are granted and said that it "is confident that the validity of its patents will be upheld." 

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 2007 WL 704525 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).

Judge Moran granted plaintiff Trading Technologies' ("TT") motion to compel production of documents and answers to interrogatories regarding defendant eSpeed's patent licenses (more on this case in the Blog's archives).  The Court held that the licenses could be relevant to three of the Georgia Pacific factors:  1) Rates paid by the licensee for patents similar to the patents in suit; 2) customary royalty rates in the industry; and 3) the royalty that would have been agreed upon in an arms length negotiation.  The Court acknowledged that the eSpeed licenses were not for the same technology as the patents in suit, but held that the fact that the patents were all for technology within the futures trading industry was sufficient to make them potentially relevant.  And the Court noted that if the eSpeed patents are ultimately not comparable to the patents in suit, the licenses covering the eSpeed patents will not be given weight in the final determination.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 2007 WL 611258 (N.D. Ill. Feb. 21, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies ("TT") motion for clarification of the Court's claim construction or in the alternative for reconsideration (more on the claim construction and the case generally here).  TT sought clarification of the Court's construction of "static" and a correction to the Court's construction of "plurality."  The Court defined "static" relative to a "price axis" as a line that does not change position unless it is manually re-centered.  TT sought clarification as to whether a product that had a "static" "price axis" for periods of time in between automatic re-centering would fall within the definition of "static" at least for part-time infringement.  The Court denied to clarify the construction as TT requested and held that for something to be "static" it must have "a permanent lack of movement."

The Court did, however, reconsider its construction of "plurality."  The Court originally construed "plurality" to mean "one or more."  But the Court agreed with TT's argument that the well-established understanding of plurality was that it be "more than one."  So, the Court revised its construction accordingly.

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