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.

Continue Reading Third Parties’ Communications With Other Third Parties Are Not Relevant

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 a priority date GL had argued for, as opposed to stopping at TT’s alleged priority date. 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 he 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.

Continue Reading Court Reminds Parties of Their Discovery Obligations