No, 04 C $312 Page §

with claim construction. eSpeed’s patent has different inventors, different claims, and a
different prosecution history. Neither this court nor any other court has construed the claim
terms contained in eSpeed’s patent application and we deny any suggestion that we should do
so now. The term “static” does not arise in the claims of eSpeed’s patent. Therefore, an
assurance of accuracy and efficiency in eSpecd’s patent application has no bearing on cither
our construction of “static” in the patents-in-suit or our application of that construction in
assessing claim vitiation.

We turn now to plaintiff's argument that we erred in our application of amendment-bascd
prosecution history estoppel. In granting eSpeed summary judgment of. non-infringement, we
addressed two features of eSpeed’s accused products: Dual Dynamic automatic recentering
and eSpeedometer “drift” recentering. We held that TT was barred from arguing its doctrine
of equivalents theory as against Dual Dynamic’s automatic recentering feature because “[a]
finding that a change of positions (even once or twice per trading day) is equivalent to not
changing positions unless by manual re-centering would vitiate the ‘static’ requirement,” Non-
Infringement, at *8. Unlike the automatic recentering of the Dual Dynamic product, eSpeed’s
eSpeedometer includes a “drift” recentering feature. We previously rejected eSpeed’s
argument that inclusion of “drift” recentering vitiates the “static display of prices” or
“common static price axis” claim elements of TT’s patents-in-suit. Rather, we found that “the
eSpeedometer ‘performs substantially the same function as the claimed limitation in
substantially the same way to achieve substantially the same result.’” Id,, at *9 (citing Ethicon

Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1317 (Fed.Cir.1998)), We

held, however, that TT was foreclosed from arguing its doctrine of equivalents theory because

of its prosecution history. TT now challenges our application of amcndment-based



No, 04 C 5312 Page &

TT argues, one so skilled would not have read the amendment to narrow the scope of the
claim. TT raised this argument once before, in response to eSpeed’s motion for summary
judgment of non-infringement. While we recognized that it seemed somewhat convincing, we
rejected it. We explained:

In thinking about why we construed the claims as narrowly as we did, however, we

are reminded that we looked to the claim language, the specification, and the

prosecution history. TT cannot, after having been unsuccessful in arguing for a

broader construction, use our narrower construction as a weapon to essentially

broaden its claims.
(Non-Infringement, at *11)2

The goal of claim construction is to determine how one of ordinary skill in the art would
have understood the claims, and thus the protected technology. In Phillips v. AWH Corp., 415
F.3d 1303 (Fed.Cir.2005), the Federal Circuit suggested that courts should begin claim
interpretation by inquiring as to how a person of ordinary skill in the art understands a claim
term, using the same resources as were available to one so skilled, specifically the patent
specification and prosecution history, Amendment-based estoppel similarly serves a public
notice function. The Supreme Court suggested that the purpose of applying prosecution

history estoppel is “to hold the inventor to the representations made during the application

process and to the inferences that may reasonably be drawn from the amendment.” Festo, 535

US, at 737-38, The Court continued: “By amending the application, the inventor is deemed

We recognize that TT may have a valid argument and note that this was a close call. We also
recognize that our decision may have been influenced by the impending trial and our disinclination to reopen
a significant issue for debate. We bave previously noted that this case is certain to find itself in front of the
Federal Circuit for ultimate resolution and acknowledge our place as a “way station” to the Court of Appeals.
Therefore, we are further convinced that speedy resolution of all issues before this court is in everyone’s best
interest, TT’s motions for reconsideration have preserved their right to argue against our decision regarding
prosecution history estoppel. Thus, we leave in place our original detcrmination for review by the Federal
Circuit.



No. 04 C $312 Paged

lexicographer to specifically define terms of a claim contrary to their ordinary meaning’”),
Therefore, we reject plaintiff’s argument that patents separate and distinct from the patents-
in-suit can stand as evidence that movement does not vitiate a claim contained in the patents-
in-suit.

The analysis set forth above is also relevant to TT’s argument that eSpeed cannot argue
claim vitiation because it submitted a patent application ensuring accuracy that contained both
automatic recentering and a static price axis. TT points to the following language contained
in the recent eSpeed patent application:

[It is an object of the invention to provide systems and methods that clearly

represent price fluctuations while ensuring quick, accurate and efficient execution

of trades.
ee

itis yet another object of the invention to adjust the display of the bid/ask prices and

their associated quantities while maintaining accurate and accessible axes for order

entry at desired price levels
(TT supp. motion, exh. 1 at eS67332-33). TT focuses on the patent application’s objective of
“ensuring quick, accurate and efficient execution of trades.” Remembering that defendants,
and this court, read TT’s similar patent promise to “ensure fast and accurate execution of
trades” to guarantee accuracy, and thus require the price axis to permanently remain still, TT
suggests that eSpeed’s patent application is an admission that automatic recentering does not
vitiate a static claim element. TT contends:

eSpeed’s admission proves that the presence of its particular automatic re-centering

does not vitiate the purpose of a “statie” price axis. eSpeed should be estopped from

even arguing vitiation based on this admission. At a minimum, taking all reasonable

inferences in favor of TT, the non-moving party, certainly there is an underlying

material issue of fact on this issue.

(TT’s suppl. motion, at 2).

We do not find T'T’s argument persuasive. As noted above, claim vitiation rises and falls



No. 04 € 5312 Page 6

prosecution history estoppel to the “drift” recentering feature.

During the course of prosecuting its patents-in-suit, TT amended the relevant portion of
Claim 22 of the ‘132 patent as follows (deletions marked in brackets, additions in italics):

displaying [the] market depth of [a] ##e commodity [traded in a markct], through a

dynamic display of a plurality of bids and a plurality of asks in the market for the

commodity, including at /east a portion of the bid and ask quantities of the
commodity, the dynamic display being aligned with a static display of prices
corresponding thereto, wherein the static display of prices does not move in response

to a change in the inside market;

({defs’ non-infringement motion, exh. C, at eS65203). Similarly, TT amended the relevant

portions of Claim 41 of the ‘304 patent as follows:
displaying the bid and ask display regions in relation to fixed price levels positioned
along the common static price axis such that when the inside market changes, the price
tevels along the common static price axis do not move and at least one of the first and
second indicators [can] moves in the bid [and] or ask display regions relative to the
common static price axis [when the inside market changes];

(id., exh. D, at eS65741).

In our infringement analysis we looked at those amendments and found that, during
prosecution, TT amended its claims from requiring a price axis that did not change positions
to requiring a price axis that did not move in response to a change in the inside market.
Therefore, we determined, based on amendment-based prosecution history estoppel, TT could
not reclaim claim scope it surrendered during prosecution. Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 733-34 (2002) (“The doctrine of equivalents allows
the patentee to claim those insubstantial alterations that were not captured in drafting the
original patent claim but which could be created through trivial changes. When, however, the

patentee originally claimed the subject matter alleged to infringe but then narrowed the claim

in response to a rejection, he may not argue that the surrendered territory comprised



No. 04 C 5312 Page 9

to concede that the patent does not extend as far as the original claim.” /d., at 738. One of
ordinary skill in the art, reading the patent applications and their amendments, would
conclude that TT thought of asserting a broader claim and had to narrow it to succeed in
achieving patent protection. The doctrine of equivalents was designed to allow for a patentee’s
inability to “capture the essence of innovation,” but a prior application specifically covering
the accused products undercuts that premise. Jd., at 734, Therefore, TT cannot now rely on
our narrow construction of its claim terms to recapture, through the doctrine of equivalents,
the very matter it surrendered in order to achieve patent protection of its innovative
technology.
CONCLUSION
For the reasons stated above, we deny TT’s motion and supplemental motion for

reconsideration.

JAMES B, MORAN

conor Judge, U. S. District Court
: > 2007.



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

TRADING TECHNOLOGIES
INTERNATIONAL, INC,

Plaintiff,

eSPEED, INC., eSPEED INTERNATIONAL,

)
)
)
)
)
vs. ) No, 04 C5312
LTD, and ECCO WARE, LTD., )

)

)

Defendants.

MEMORANDUM OPINION AND ORDER

Plaintiff Trading ‘Technologies International, Inc. (“TT”) brought suit against eSpeed,
Inc., ITSEcco Holdings Limited, Ecco LLC, and EccoWare Ltd. (collectively “eSpeed”),
alleging infringement of U.S. Patent Nos. 6,766,304 (*304) and 6,882,132 (‘132). In a series of
related cases, TT has asserted similar patent infringement allegations against GL Consultants,
Inc. and GL Trade SA (collectively “GL”), CQGT, LLC and CQG, Inc. (collectively “CQG”),
FuturePath Trading, LLC (“FuturePath”), and Rosenthal Collins Group, LLC. (“RCG”).
After a three-day Markman’ hearing, we construed the relevant claims of TT’s patents-in-suit.
Trading Technologies Int’l, Inc. v. eSpeed, Inc., 2006 WL 3147697 (N.D.1IL2006) (“Claim
Construction”). Using that construction, we granted cSpeed summary judgment of non-
infringement for the majority of its accused products, Trading Technologies Int’l, Inc. v.
eSpeed, Inc., — F.Supp.2d —, 2007 WL 1810519 (N.D.I11.2007) (“Non-Infringement”). Our
determination turned primarily on our finding that the automatic recentering features

contained in eSpeed’s products fell outside the ambit of TT’s patent protection. TT has filed

'Markman.v, Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995), aff'd, 517 U.S. 370 (1996),



No. 04 C 5312 Page 7

unforeseen subject matter that should be deemed equivalent to the literal claims of the issued
patent”),

TT suggests that our application of Festo’s amendment-based estoppel was in error. TT
begins with the assertion that claim terms must be construed the same way throughout analysis

of all aspects of the case. See W.L. Gore & Associates, Inc. v. Garlock, Inc., 842 F.2d 1275,

1279 (Fed.Cir.1988) (“Having construed the claims one way for determining their validity, it
is axiomatic that the claims must be construed in the same way for infringement”), TT then
points us to our construction of “common static price axis” and “static display of prices.” We
construcd “common static price axis” as “a line comprising price levels that do not change
positions unless a manual re-centering command is received and where the line of prices
corresponds to at least one bid value and one ask value” and “static display of prices” as “a
display of prices comprising price levels that do not change positions unless a manual re-
centering command is received.” (Claim Construction, at *4). Although we adopted TT’s
language of “not chang[ing] positions,” we explicitly held that our definition allowed for no
movement uncontrolled by the user, finding that any such movement would frustrate the
purpose of the patents’ invention. In fact, in rejecting TT’s motion to clarify or reconsider,
we explained: “Where, however, the claim limitation itself —here, a static condition — requires
permanency, any movement (outside of manual re-centering or re-positioning) negates one of
the specified claim limitations.” Trading Technologies Int’l, Inc. v. eSpeed, Inc., 2007 WL
611258, *5 (N.D.IIL2007).

As TT’s original claims included the claim terms “static display of prices” and “common
static price axis,” TT contends that one of ordinary skill in the art would have understood

them to mean that the price axis never moves. ‘Taking the inference to its logical conclusion,



No. 04 C5312 Page 2

two motions for reconsideration regarding our non-infringement determination, which we deal
with together. Because the additional defendants” products also contain automatic
recentering functions, they have been offered the opportunity to submit arguments along with
cSpeed. For the reasons stated herein, we deny TT’s motions for reconsideration.
DISCUSSION

Motions to reconsider are designed te “bring the court’s attention to newly discovered
evidence or to a manifest crror or [sic] law or fact.” Neal v. Newspaper Holdings, Inc., 349 F.3d.
363, 368 (7" Cir.2003) (internal citations omitted). Such motions are not designed to allow
parties to rehash previously rejected arguments. Oto v. Metropolitan Life Ins. Co., 224 F.3d
601, 606 (7" Cir.2000). Motions to reconsider are rarely granted and are only appropriate
where “(1) the court has patently misunderstvod a party; (2) the court has made a decision
outside the adversarial issues presented to the court by the parties; (3) the court has made an
error not of reasoning but of apprehension; (4) there has been a controlling or significant
change in law since the submission of the issue to the court; or (5) there has been a controlling

or significant change in the facts since the submission of the issue to the court.”

Bucciarelli-Tieger vy. Victory Records, Inc., 2007 WL 1610460, *1 (N.D.II1.2007) (citing Bank

of Waunakec v. Rochester Cheese Sales, Inc., 906 F.2d 1185, 1191 (7th Cir.1990)), Defendants

argue that TT’s motions for reconsideration are inappropriate as they rehash old arguments
and reintroduce exhibits already filed. While defendants raise a valid concern, plaintiff has
more fully developed its previous arguments and we will address them on the merits.

First, we turn to the single issue raised in TT’s original motion for reconsideration.

2 although RCG is technically a plaintiff, its interests align with defendants and, for the purposes of
this motion, we refer to all defendants and RCG, collectively, as defendants.



No. 04 €: 5312 Page 3

Thercin, TT suggested that its reccipt of allowance of claims pending in foreign jurisdictions
for claims directed to, in combination, a static price axis and automatic recentering, proves
that automatic recentering does not vitiate a static claim element. TT also points to a similar
application pending before the United States Patent and Trademark Office, which has yet to
be fully accepted, Arguing that “several patent offices have now confirmed what TT has
always contended — the presence of automatic recentcring does not vitiate the purpose of a
static price axis ,” TT requests reconsideration of the construction of the term “static” in the
patents-in-suit and/or reconsideration of our determination that the presence of automatic
recentering vitiates the patents’ static requirements, Defendants contend that TT’s unrelated
patent applications arc irrelevant to both the construction of claim terms contained in the
patents-in-suit and the determination that the presence of any movement vitiates the static
element in the patents,

We agree with defendants. Our construction was based primarily on intrinsic evidence,
as guided by the Federal Circuit, See Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005).
Extrinsic evidence unavailable to those evaluating the patent at the time of the invention is not
germane to a determination of claim construction. Nor is it clear evidence against our finding
of claim vitiation. Analysis of claim vitiation rises and falls with the construction of a claim
term. In this case we determined that, based on our construction of “common static price axis”
and “static display of prices,” the presence of movement uncontrolled by the user vitiates TT’s
claimed element. Another patentee may differently deseribe a static price axis such that the
presence of movement would not vitiate that claim element. See Abraxis Bioscience, Inc, y.
Mayne Pharma (USA) Inc., 467 F.3d 1370, 1376 (Fed.Cir.2006) (While words in a claim are

generally given their ordinary and customary meaning, a patentee can “‘act as his own