Trading Techs. Int’l., Inc. v. BCG Partners, Inc., No. 10 C 715 (Consolidated), Slip Op. (N.D. Ill. Jul. 26, 2011) (Kendall, J.).
Judge Kendall denied the SunGuard defendants’ (collectively “SunGuard”) summary judgment motion arguing that plaintiff Trading Technologies (“TT”) second suit against the same SunGuard products should be dismissed based upon claim splitting or claim preclusion. There is much more on this case and the related cases in the Blog’s archives. The parties and the accused products were the same in both cases (filed in 2005 and 2010, respectively), but the patents were different. The Federal Circuit has held that suits based upon different patents involving similar inventions are not the same claims because each patent covered a separate invention. Kearns v. General Motors Corp., 94 F. 3d 1553, 1555 (Fed. Cir. 1996). Because the TT asserted different patents in the two suits, there was no preclusion. It did not matter that that TT could have arguably amended its first suit to add some or all of the later asserted patents.
The Court also deemed TT’s Local Rule 56.1 additional statements of fact admitted because SunGuard failed to respond to them.

Continue Reading Second Suit on Different Patents Not Precluded

Trading Techs. Int’l., Inc. v. BCG Partners, Inc., No. 10 C 715, Slip Op. (N.D. Ill. May 5, 2011) (Kendall, J.).
Judge Kendall granted the FuturePath defendants’ and denied the SunGuard defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Trading Technologies’ (“TT”) patent claims regarding trading software.
FuturePath: The Court dismissed TT’s direct infringement claims against FuturePath because TT did not accuse a specific FuturePath product or even category of product. TT’s reference to unspecified “products” did not meet the Twomby or Iqbal standards, nor did it meet the Federal Circuit’s requirements in McZel v. Spring Nextel Corp., 501 F. 3d 1354 (Fed. Cir. 2007). Identification of an accused product in TT’s briefing and reference to FuturePath’s website in TT’s indirect infringement claims were insufficient.
TT did not allege that FuturePath had knowledge of TT’s patents. Without an allegation of knowledge, TT’s claims were deficient. The Court, therefore, dismissed all of TT’s claims against FuturePath with leave to replead correcting the deficiencies.
SunGuard: TT alleged that SunGuard had constructive knowledge of TT’s patents, but not actual knowledge. Constructive knowledge was sufficient to maintain TT’s claims, regardless of whether the Federal Circuit might later hold constructive knowledge insufficient.

Continue Reading Patent Complaint Must Identify Accused Product at Least Generally

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.

Continue Reading Exclusion of Lead Trial Counsel as Trial Witness Premature Until Trial Witnesses are Identified

Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Jul. 19, 2011) (Coleman, J.).
Judge Coleman granted declaratory judgment plaintiff Rosenthal Collins Group’s (“RCG”) motion for protective order and to quash third party subpoenas as to third party CQG. The subpoenas sought information regarding RCG’s use of CQG’s trading software. The Court previously entered judgment against RCE and the only issue left in the case is a January 23, 2012 damages trial. But the judgment and the damages trial were limited to RCG’s use of its software, not other third parties that have not yet been held to infringe, such as CQG’s software.

Continue Reading Trading Technologies: Court Quashes Subpoena

Rosenthal Collins Group, LLC v. Trading Techs. Int’l., Inc., No. 05 C 4088, Slip Op. (N.D. Ill. June 1, 2011) (Coleman, J.).
Judge Coleman denied plaintiff Rosenthal Collins Group’s (“RCG”) motion to reconsider or clarify the Court’s February 23, 2011 Order entering defendants judgment in favor of declaratory judgment defendant Trading Technologies (“TT”) and sanctioning RCG $1 million. While the discovery misconduct – which the Court described as “attempted fraud” – related to invalidity, it was appropriate to enter default judgment as to infringement because TT’s infringement case would have been “futile” if the “fabricated” evidence had been successfully used to invalidate the patents. Furthermore, RCG should not be allowed to benefit from the thwarting of its misconduct.
Finally, the Court’s sanctions were not criminal, they were made pursuant to Fed. R. Civ. P. 37 and the Court’s inherent powers.

Continue Reading Court Upholds $1M Sanction for Fabricated Prior Art

Trading Techs. Int’l., Inc. v. TradeHelm, Inc., No. 10 C. 931, Slip Op. (N.D. Ill. May 2011) (Kendall, J.).
Judge Kendall entered the parties – Trading Technologies (“TT”) and TradeHelm – agreed consent order, as part of their settlement in this futures trading software – there is much more on this and related cases in the Blog’s archives case. The parties agreed as follows:
TT’s patent infringement claims as to its ‘999 and ‘056 patents were dismissed.
TradeHelm admitted infringement as to TT’s ‘411, ‘768, ‘382 and ‘992 patents, but not the ‘056 and ‘999 patent-in-suit.
TradeHelm admitted validity and enforceability of the ‘304, ‘132, ‘411, ‘768, ‘382 and ‘996 patents, but again not the ‘056 or the ‘999 patents-in-suit.
TradeHelm was permanently enjoined from infringing, unless TT permitted it, the ‘132, ‘304, ‘411, ‘768, ‘382 and ‘996 patents. But again, not the ‘056 and ‘999 patents-in-suit.

Continue Reading Trading Technologies: Settlement and Consent Judgment

Trading Techs., Int’l, Inc. v. BGC Partners, Inc., No. 10 C 715 (Consolidated Cases), Slip Op. (N.D. Ill. Apr. 22, 2011) (Schenkier, Mag. J.).
Judge Schenkier ruled upon various proposed modifications to the 2006 Protective Order in the twelve consolidated 2010 cases. Judge Moran entered the governing protective in 2005, and it has stood since with some revisions. The key rulings included:
The Court denied various proposals to limit plaintiff Trading Technologies’ (“TT”) in-house counsel Steve Borsand’s access to technical documents. While there was some risk of inadvertent disclosure because Borsand is involved in strategic decisions as to the scope of patent protection, the risk was small compared to the harm TT would suffer if it lost Borsand, who had been active in these litigations since 2003.
The Court denied efforts to expand the scope of the patent prosecution bar, limiting counsel from prosecuting related patents for a year after the litigation ended. Defendants’ proposed expansion would have limited counsel from prosecuting in completely unrelated areas of trading software technologies. And the current bar balanced protecting the parties against the livelihood of counsel well.
The Court denied to add an additional level of protection for source code or to add additional protections for source code. The Court characterized the proposed protections as “elaborate,” “extensive” and “labyrinthian.”
The Court held that co-defendants should produce their confidential information to each other. To do otherwise, would limit the value of the case consolidation. And it was unnecessary to limit production because the Protective Order provided sufficient protections for the co-defendants just as it did for information exchanged between TT and a defendant.
Parties were allowed to add additional in-house counsel to the Protective Order, so long as they met the same criteria that Borsand met for TT.
The Court modified the Protective Order to include a specific method for challenging confidentiality designations made pursuant to the Protective Order.

Continue Reading Trading Technologies: Court Maintains Existing Protective Order

Trading Techs. Int.’l, Inc. v. BCG Partners, Inc., No. 10 C. 715 (Consolidated), Slip Op. (N.D. Ill. Mar. 28, 2011) (Kendall, J.).
Judge Kendall denied without prejudice defendant’s (collectively “BCG”) motion to dismiss for lack of personal jurisdiction. BCG argued that its named entities were holding companies without operational responsibility, and that none had officers in Illinois. Plaintiff Trading Technologies (“TT”), however, produced evidence that one or more of the BCG entities had Illinois officers in Illinois for the purposes of selling the accused eSpeed software. Furthermore, certain government filings suggested that one or more of the BCG entities were operational entities. The Court, therefore, denied BCG’s motion with leave to refile after the parties completed limited jurisdictional discovery and TT replead to the extent it felt necessary.

Continue Reading Trading Technologies: Court Grants Limited Jurisdictional Discovery

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.

Continue Reading Trading Technologies: Final Judgment Amended to Include Monetary Damages

Trading Technologies Int’l, Inc. v. CQG, Inc., No. 10 C 718, Slip Op. (N.D. Ill. Jan. 24, 2011) (Shadur, Sen. J.).*
Judge Shadur sua sponte dismissed defendants’ (collectively “CQG”) noninfringement and invalidity counterclaims. The Court explained that “mirror image” noninfringement and invalidity patent counterclaims are “seemingly meaningless.” And the “amorphous nature” of CQG’s counterclaims resulted in them being especially unnecessary. The Court, therefore, dismissed the declaratory judgment counterclaims.
*Click here for much more on this and TT’s other cases in the Blog’s archives.

Continue Reading Trading Technologies: “Mirror Image” Patent Counterclaims Struck Sua Sponte as “Meaningless”