Trading Technologies International, Inc. v. BCG Partners, Inc.
883 F. Supp. 2d 772
N.D. Ill.2012Background
- TT moved for clarification and reconsideration of the February 9, 2012 order and sought final judgments against several Brumfield family patents.
- The court previously granted summary judgments: invalidity of the '411 patent to the extent it covers price axes that move automatically or re-center; and prosecution-history-estoppel findings regarding the '055 patent.
- The court denied TT’s written-description challenge to the '411 patent and granted Open E Cry and optionsXpress’s motion regarding prosecution-history estoppel as to the first Brumfield set; moot as to the second set.
- TT argued the '411 claims could be static with an 'automatic' mode, seeking advisory clarification on non-infringement issues.
- The court held TT’s requests amount to advisory opinions and denied clarification, reaffirming eSpeed-based construction of 'static' and related conclusions.
- The court granted Rule 54(b) certification, finalizing invalidity of the '411, '768, '374, and '055 patents and allowing an interlocutory appeal, while staying remaining live issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the court should clarify its statements on '411 validity. | TT contends statements are ambiguous and seek non-infringement clarification. | Defendants argue no clarification is warranted; statements are consistent with eSpeed and prior rulings. | Clarification denied; no advisory opinion issued. |
| Whether the prosecution-history-estoppel ruling for the '055 patent should be reconsidered. | TT claims different specification meaning in '055 DOJ requires deviation from estoppel. | Defendants maintain estoppel applies across Brumfield family; no change warranted. | Reconsideration denied; estoppel remains. |
| Whether the court should grant Rule 54(b) certification for immediate appeal of certain patents. | TT seeks immediate appeal to streamline issues and promote settlement. | Defendants argue risk of piecemeal appeals and overlapping issues counsels against certification. | Rule 54(b) certification granted; final judgments entered for '411, '768, '374, and '055 patents. |
| Whether the '411, '768, '374, and '055 patents’ remaining defenses should be dismissed without prejudice. | TT desires dismissal of remaining defenses on these patents to permit appeal. | Defendants oppose dismissal to avoid prejudice and maintain litigation integrity. | Dismissals without prejudice granted as part of final Rule 54(b) order. |
Key Cases Cited
- Trading Technologies Intern., Inc. v. eSpeed, Inc., 595 F.3d 1340 (Fed.Cir. 2010) (static price axis construction and invalidity scope under eSpeed)
- Mares v. Busby, 34 F.3d 533 (7th Cir. 1994) (motions under Rule 59(e) treated by substance, not form; timing)
- Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1335 (Fed.Cir. 2003) (prosecution disclaimer attaches to progeny continuation-in-part)
- Caisse Nationale de Crédit Agricole v. CBI Industries, Inc., 90 F.3d 1264 (7th Cir. 1996) (reconsideration limited; not proper vehicle for revisiting rejected arguments)
- Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 556 F.3d 1294 (Fed.Cir. 2009) (covenant not to sue and its impact on Article III jurisdiction)