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

Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Jul. 17, 2008) (Moran, Sen. J.).

Judge Moran denied declaratory judgment defendant Trading Technologies' ("TT") contempt motion and, instead, provided declaratory judgment plaintiff Rosenthal Collins Group's ("RCG") two weeks to produce the previously compelled documents and to schedule the ordered deposition of third party declarant Walter Buist, the creator of the alleged prior art trading software Wit DSM. RCG previously filed a motion for summary judgment of invalidity of TT's patents based upon a declaration by Buist regarding his Wit DSM software that he developed, at least partially, more than a year before TT filed its patent applications. In a previous opinion, the Court held that RCG's motion was "somewhat misleading" and possibly "disingenuous," but refused to dismiss the case (you can read the Blog's discussion of that opinion here, as well as more on this case generally in the Blog's archives). 

During a deposition after RCG filed its summary judgment motion, Buist stated, among other things, that various drafts of his declaration were created, that he created a "differences" list and provided it to RCG's counsel and that he had used various computers during his work related to the case.  TT sought all drafts of the declaration, a list of any destroyed drafts, the differences list, any drives or computers used by Buist and all documents reflecting communications between Buist or his associates and RCG and its counsel or associates.  And the Court ordered RCG to:

1. reproduce all such documents;
   
   
2. produce any remaining responsive documents (including the computers requested);
   
   
3. produce documents reflecting relationships between Buist and RCG or its counsel, so long as such documents are not privileged; and
   
   
4. produce Buist for an additional deposition to answer questions related to the compelled documents, as well as Buist's relationship with RCG and its counsel.

(Click here to read the Blog's post about that opinion). RCG, however, never produced the compelled documents or Buist for another deposition. RCG explained that it thought the Court stayed the compelled discovery when it stayed all other discovery pending the Federal Circuit's resolution of the cross-appeals of the TT v. eSpeed case. Additionally, RCG noted that during a hearing four days before the start of the TT v. eSpeed trial the Court told the parties to put the Buist deposition on the “back burner.” The Court explained that its “back burner” comment was not intended to stay its order, just to delay resolution of the issue until after the looming trial. And as for the stay pending the Federal Circuit appeals, the Court held that the Wit DSM-related discovery was not relevant to the appealed issues and would not be affected by them. Furthermore, the Court had already ordered their production, a production that would be required regardless of the outcome of the Federal Circuit appeal. But the Court gave RCG the benefit of the doubt that it had misinterpreted the Court's orders and instructions, and gave RCG two weeks to complete the compelled production.

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Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, 2007 WL 1597928 (N.D. Ill. May 16, 2007) (Moran, Sen. J.).

Judge Moran granted declaratory judgment defendant Trading Technologies' ("TT") motion to compel documents and things identified by third party declarant Walter Buist during his deposition, despite declaratory judgment plaintiff Rosenthal Collins Group's ("RCG") assurances that the documents and things had already been produced.  RCG previously filed a motion for summary judgment of invalidity of TT's patents based upon a declaration by Buist regarding software that he developed, at least partially, more than a year before TT filed its patent applications.  In a previous opinion, the Court held that RCG's motion was "somewhat misleading" and possibly "disingenuous," but refused to dismiss the case (you can read the Blog's discussion of that opinion here, as well as more on this case generally in the Blog's archives). 

After RCG filed its motion, TT deposed Buist regarding, among other things, the creation of his declaration and his interactions with RCG's counsel related thereto.  During that deposition, Buist stated, among other things, that various drafts of his declaration were created, that he created a "differences" list and provided it to RCG's counsel and that he had used various computers during his work related to the case.  TT sought all drafts of the declaration, a list of any destroyed drafts, the differences list, any drives or computers used by Buist and all documents reflecting communications between Buist or his associates and RCG and its counsel or associates. 

In light of RCG's statements that it had already produced many of the requested documents and things, the Court ordered RCG to:  1) reproduce all such documents; 2) produce any remaining responsive documents (including the computers requested); and 3) produce documents reflecting relationships between Buist and RCG or its counsel, so long as such documents are not privileged.  The Court also required that RCG produce Buist for an additional deposition to answer questions related to the compelled documents, as well as Buist's relationship with RCG and its counsel, so long as the questioning does not violate Buist's attorney-client privilege.

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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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Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, 2007 WL 844610 (N.D. Ill. Mar. 14, 2007) (Moran, Sen. J.).*

Judge Moran denied in part and granted in part declaratory judgment defendant Trading Technologies' ("TT") Rule 37 motion for sanctions.  The Court held that declaratory judgment plaintiff Rosenthal Collins Group's ("RCG") motion for summary judgment of invalidity was "somewhat misleading" and possibly "disingenuous," but refused to dismiss the case.  Instead the Court struck the declaration underlying RCG's motion, denied RCG's summary judgment motion with leave to refile a motion "supported by proper evidence" and awarded TT its costs and attorneys fees associated with the Rule 37 motion, as well as its software expert's fees.  RCG filed a summary judgment motion arguing that TT's patents covering "double click" methods for executing an electronic trade were anticipated by the alleged prior art system "Wit DSM" as embodied in a software package RCG presented to the Court and TT on a laptop and claimed was essentially the software as it is existed more than one year prior to TT's patent filing.  TT's software expert identified that several lines of code had been added to the software by RCG's declarant, and that the added code performed certain functionalities required for anticipation.  When RCG's declarant was deposed, he stated that he had not written the "double click" portion of the original code and could not be sure that it was in the alleged prior art version of the WIT DSM.  These facts did not warrant dismissal of the case or barring of any evidence because RCG and its declarant had not made any false statements, although they had made deliberately vague statements.  Furthermore, while RCG did not identify that the software package included added code which the Court found disturbing, it did include a comparison program on the laptop it provided to TT and the Court which would have identified the added code.

This case involves the several of the same patents as the other TT case before Judge Moran.

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