IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

TRADING TECHNOLOGIES
INTERNATIONAL, INC.,

Plaintiff,
No. 04 C 5312

vs.

eSPEED, INC., eSPEED, INTERNATIONAL,
LTD., and ECCO WARE, LTD.,

wwe ee SS

Defendants.

MEMORANDUM OPINION AND ORDER
TT brings this motion in /imine to preclude eSpeed from contradicting the court’s
“single action” construction, requesting that we preclude expert testimony, arguing that the
term “single action” can cover (I) any number of user actions so long as they are performed
in a “short period of time”; (ii) the order entry process of the alleged Tokyo Stock Exchange
(“TSE”) prior art; and (iii) a screen which requires that a user click on a sereen and move a

cursor to click on a button in a pop-up window to send an order. Essentially, TT argues that

a product requiring (1) clicking or double clicking on an order entry screen; (2) typing a

quantity in an order ticket that pops up; and (3) clicking on a send button within the order
ticket to send the order cannot come within our construction of “single action order entry
region.” Therefore, TT contends, eSpeed should not be able to introduce its argument at trial,

eSpeed fails to respond to the substance of TT’s motion. Rather, eSpeed focuses on the
process underlying a patent infringement suit. That process, eSpeed points out, involves two
separate and distinct steps: (1) claim construction (i.e., what do the claims mean?); and (2)
applying the construed claims to the prior art, eSpeed is perfectly right — there are two
elements of a patent case, construing the patent and determining whether infringement

occurred. Markman v. Westview Instruments, Inc., 517 U.S, 370, 384 (1996). In fact, the



No. 04 C 5312 Page 2

Supreme Court supports eSpeed’s argument that the first inquiry is a question of law to be
determined by the court and the second inquiry is a question of fact to be submitted to a jury.
dd, In fact, the Federal Circuit has guided us to “provide the jury in a patent case with
instructions adequate to ensure that the jury fully understands the court’s claim construction
rulings and what the patentee covered by the claims,” Sulzer Textil A.G. v. Picanol N.V., 358
F.3d 1356, 1366 (Fed.Cir.2004).

Although eSpeed correctly states the process of a patent infringement trial, we think
this presents a special circumstance. In our claim construction ruling, we construed “single
action of a user input device” to be “an action by a user within a short period of time that may
comprise one or more clicks of a mouse button or other input device.” Trading Technologies
Int’l, Inc. v. eSpeed, Inc., 2006 WL 3147697, *8 (N.D.111.2006) (“Claim Construction”). We
went on to explain: “As we have continually noted, however, plaintiff's patents generally were
written from the perspective of the user. Therefore, this claim refers to the user’s single action,
not the action(s) the computer performs to execute the user’s command,” Jd. We made it very
clear that, from the perspective of the user, a single action had to be just that — a single action.
We think it is very clear that a double click, followed by entry of a quantity, followed by an
“enter” (as described by eSpeed’s attorney Mr. Perkins) is not a single action under our

construction.

While such is generally a decision left to the jury, we pause to recognize the complexity

of this case and the difficulty the jurors will encounter in attempting to keep track of all of the
different features and arguments. The parties have no lack of theories, especially when it
comes to invalidity and prior art. Therefore, as we are convinced that it would be impossible

for a reasonable jury to find that the three steps described by eSpeed’s attorney could fit into



No, 04 € $312 Page 3

our definition of single action, we grant TT’s motion to exclude evidence that it does.’ Rather
than throw a non-starter at the jury or deal with this issue during post-trial motion practice,
we exclude the evidence from the start. Although our decision is nearly akin to a partial
summary judgment ruling, we are convinced that it is correct, it will save precious judicial
resources, and simplify the case for the jury. See Colassi_v. Cybex Int’l., Inc., 2007 WL
490969, *3 (Fed.Cir.2007) (unpublished Federal Circuit opinion finding that district court did
not abuse its discretion in granting plaintiff’s motion in imine to preclude competitor from
arguing non-infringement under the reverse doctrine of equivalents even though it was a “de

facto summary judgment”), TT’s motion is granted in part.

ons. Weve

JAMES B. MORAN
Senior Judge, U. S. District Court

S-8. fo _,2007.

‘We limit our ruling to exclusion of evidence of a prior art “single action” feature that
requires a double click, entry of a quantity, and an enter by the user, Because of the unusual
nature of our determination, we reject TT’s request that we go any further. Specifically, we
reject TT’s request that we exclude expert testimony that “single action” can cover a screen
which requires that a user click on a screen and move a cursor to click on a button in a pop-up
window to send an order. TT can argue its case to the jury and we will, per the guidance of the
Federal Circuit, submit detailed claim construction instructions to the jury.