Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 1 of 37 PageID #:20012
`
`Case No. 10 C 715
`(Consolidated with:
` 10 C 716, 10 C 718,
`10 C 720, 10 C 721,
` 10 C 726, 10 C 882,
`10 C 883, 10 C 884
`10 C 885, 10 C 929,
`10 C 931)
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`TRADING TECHNOLOGIES
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`INTERNATIONAL, INC.
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`Plaintiff,
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`v.
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`)
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`BCG PARTNERS, INC.
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`)
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` Defendant.
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`)
` 
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`
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`
`
`Judge Virginia M. Kendall
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`
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`DEFENDANTS’ REPLY MEMORANDUM OF LAW IN SUPPORT OF
`JOINT MOTION FOR SUMMARY JUDGMENT THAT THE ’056
`PATENT IS INVALID UNDER 35 U.S.C. § 112 ¶ 1 FOR LACK OF
`WRITTEN DESCRIPTION
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`
`
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`  
`
`TRADING TECH EXHIBIT 2005
`TD Ameritrade v. Trading Technologies
`CBM2014-00136
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`Page 1 of 37
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`

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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 2 of 37 PageID #:20013
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`TABLE OF CONTENTS
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`Page(s)
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` 
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`TABLE OF AUTHORITIES ......................................................................................................... ii
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`PRELIMINARY STATEMENT ................................................................................................... 1
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`ARGUMENT ................................................................................................................................ 2
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`I.
`
`II.
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`The Hartheimer Declaration, Even Taken at Face Value,
`does not Show Any Disclosure of the Claimed Method Step…………………………….….. 3
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`
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`A. The Concept of a Default Quantity to be used for Multiple Orders,”
`for which Mr. Hartheimer Finds Support, is not the Claimed Method Step………….…...4
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`B. The Balance of Mr. Hartheimer’s Declaration is Devoted to Knocking
`Down Straw Man Arguments that Defendants do not Make…………………………...…7
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`TT's Attempts to Cure the Deficiency of the Hartheimer Declaration by
`Misstating its Contents and Misrepresenting Defendants’ Arguments should be
`Rejected……………………………………………………………….………….……..……. 8
`
`
`
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`
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`III. Because TT has Failed to Come Forward with Evidence of Adequate
`Written Description of the Claim Limitation at Issue in Response
`to Defendants’ Challenge, Summary Judgment of Invalidity is Appropriate…………..……12
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`TT's Cross-Motion is Unauthorized, Premature and Without Merit…………..……..….….. 13
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`IV.
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`i
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`Page 2 of 37
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 3 of 37 PageID #:20014
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`TABLE OF AUTHORITIES
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`CASES  
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`Page(s)
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`Atlantic Research Marketing Sys., Inc. v. Troy, 2011 WL 4600585 (Fed. Cir. Oct. 6, 2011) ........ 6
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`United States v. Cortez-Rivera, 454 F.3d 1038 (9th Cir. 2006).................................................... 13
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`
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`STATUTES AND RULES
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`35 U.S.C. § 112 ...................................................................................................................... passim
`
`
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` 
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`ii
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`Page 3 of 37
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 4 of 37 PageID #:20015
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`PRELIMINARY STATEMENT
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` As set forth in detail in Defendants’ Memorandum of Law in Support of Joint Motion
`
`for Summary Judgment (Dkt. 374), the written description of U.S. Patent No. 7,533,056 (the
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`“’056 Patent”) fails to provide support, as required under 35 U.S.C. § 112, ¶ 1, for the following
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`limitation which is part of every claim of the ‘056 Patent:
`
`A method of operation used by a computer for displaying transactional
`information and facilitating trading in a system where orders comprise a
`bid type or an offer type, the method comprising:
`… receiving a user input indicating a default quantity to be
`used to determine a quantity for each of a plurality of orders
`to be placed by the user at one or more price levels.
`In light of TT’s acknowledgement that it relied upon this limitation to overcome the
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`PTO’s prior art rejections of the claims that later issued in the ‘056 Patent, it is remarkable to
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`see the lengths to which TT must go to find even the slightest hint of support for just one
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`fragment of this key limitation – “the concept of a default quantity to be used for multiple
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`orders.” (Hartheimer Decl., ¶ 25) But the claims-in-suit require more than just the bare
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`“concept of a default quantity to be used for multiple orders.” The claims very specifically
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`require a computer-implemented methodology that includes the step of “receiving a user input
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`indicating a default quantity” that is “to be used to determine a quantity for each of a plurality of
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`orders to be placed by the user at one or more price levels.”
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`TT’s expert, as explained more fully below, only opines that there is disclosure of the
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`bare concept of a default quantity, and points to no disclosure of the actual method step at issue.
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`TT’s various attempts to paper over this glaring deficiency in its Brief and Rule 56.1 Statement
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`fail. Where, as here, the moving party has challenged the validity of a patent on the grounds
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`that it lacks adequate written description, and the patentee fails to come forward with evidence
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` 
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`1
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`Page 4 of 37
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 5 of 37 PageID #:20016
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`showing adequate written description, there is no triable issue of fact and summary judgment of
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`invalidity should be granted.
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`ARGUMENT
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`
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`TT’s position relies entirely on the disclosure of one of the methods of order entry
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`available in the “Priority View” embodiment of the invention, i.e., using a graphical “order
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`token” 320, 324 to generate an “order icon” 300( ), 304 ( ) that represents the desired quantity
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`and dropping it at a position on a “value axis” 332 that corresponds to the desired price, as
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`illustrated in Figure 3A:
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`Specifically, TT argues, based on various inferences that it draws from Figures 3A-3C,
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`that the order tokens 320, 324 have “predetermined” sizes which do not change “between
`2
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`Page 5 of 37
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 6 of 37 PageID #:20017
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`orders,” and that these predetermined sizes are “default quantities” which a trader can use to
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`enter multiple orders.
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`Even assuming arguendo that TT were correct that the order tokens have a
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`predetermined size that does not change between orders, and that predetermined size can be
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`construed as a “default quantity,”1 TT never shows any disclosure that the computer receives a
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`user input indicating what the predetermined size is, or that it is to be used to determine a
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`quantity for multiple orders to be placed by the user at different price levels.
`
`I. The Hartheimer Declaration, Even Taken at Face Value, does not Show
`Any Disclosure of the Claimed Method Step.
`
`TT’s expert, Richard Hartheimer, states “I conclude that the specification conveys to a
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`person of ordinary skill in the art that each token’s size and quantity remain unchanged
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`between orders, and thus that the inventors were in possession of the concept of a default
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`quantity to be used for multiple orders.” (Hartheimer Decl., ¶ 25) It is notable that Mr.
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`Hartheimer states his conclusion without any reference to the actual language of the claim
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`limitation at issue. This is no accident. All Mr. Hartheimer was able to find in the written
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`description, after searching high and low, is the bare “concept of a default quantity to be used
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`for multiple orders.” He cannot any disclosure that the computer “receiv[es] a user input
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`indicating a default quantity” or that such a user-inputted quantity is “to be used to determine a
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`quantity for each of a plurality of orders to be placed by the user at one or more price levels,”
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`because it is not there.
`                                                            
`1 As set forth in the attached Declaration of Bernard S. Donefer and in Defendants’ Responses
`and Objections to TT’s Rule 56.1 Statement, being filed herewith, these assumptions are in fact
`disputed. The Court, however, may grant summary judgment to Defendants even accepting
`these assumptions as true.
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` 
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`3
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`Page 6 of 37
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 7 of 37 PageID #:20018
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`A. “The Concept of a Default Quantity to be used for Multiple
`Orders,” for which Mr. Hartheimer Finds Support, is not the
`Claimed Method Step.
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`The crux of Mr. Hartheimer’s opinion is set out at paragraphs 10-14 of his Declaration.
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`He states that “the disclosure of the Priority View embodiment, and in particular the order
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`tokens, is most pertinent to the issue raised by Defendants’ joint motion.” (Hartheimer Decl., ¶
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`10) He observes that the Priority View displays bid and offer tokens which a user can use to
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`place new orders. The size of the tokens corresponds to a quantity. (Hartheimer Decl., ¶ 11)
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`To place an order using the order tokens, a user can select one of the order tokens with a
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`pointing device, “drag a copy of the selected token to a location in the Priority View 312
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`corresponding to a desired value (e.g., price) and release the pointing device.” (Hartheimer
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`Decl., ¶ 13) A user “can adjust the size of a token . . . until it matches a desired quantity” or,
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`Mr. Hartheimer says, “[i]f the quantity reflected by an order token . . . already matches a desired
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`quantity, the user does not have to adjust the size of the token before placing an order using the
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`token.” (Hartheimer Decl., ¶ 12) According to Mr. Hartheimer, “a person of ordinary skill in
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`the art would clearly recognize that each token’s size and quantity remains unchanged between
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`orders,” and that this is quantity “is a default quantity to be used for multiple orders.”
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`(Hartheimer Decl., ¶ 14)
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`As set forth in the attached Declaration of Bernard S. Donefer and in Defendants’
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`Responses and Objections to TT’s Rule 56.1 Statement, being filed herewith, there is much in
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`Mr. Hartheimer’s reading of the ‘056 Patent disclosure that is subject to dispute. For purposes
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`of their joint motion for summary judgment, however, Defendants will concede these points.
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`Even accepting Mr. Hartheimer’s factual assertions as true, his Declaration on its face
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`does not show that there is any written description of the claim limitation at issue.
`4
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`Page 7 of 37
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 8 of 37 PageID #:20019
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` First, even assuming that Mr. Hartheimer were correct that a person of ordinary skill in
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`the art would understand that the sizes of the order tokens 320, 324 do not change “between
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`orders,” and further that this predetermined size “between orders” corresponds to a “default
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`quantity,” he does not point to any disclosure that the computer performing the method ever
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`receives a user input indicating what the size of any of those tokens is “between orders.”
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`Indeed, there is no mention, example, or depiction anywhere in the specification of a user input
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`that has any effect at all on the size of the tokens 320, 324 that are displayed on the left side of
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`the screen “between orders.” The user can place an order by copying the token to create an
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`order icon, but the user cannot adjust the predetermined size of the token that is displayed
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`“between orders.” Thus, even under Mr. Hartheimer’s reading, there is no disclosure of
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`“receiving a user input indicating a default quantity.”
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`Put another way, even if Mr. Hartheimer were correct that the written description shows
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`that the size of the order tokens does not change between orders and corresponds to a default
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`quantity, he does not show any written description that it is a default quantity that is indicated
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`by a user input – which is what the claims require – as opposed, for example, to being a factory
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`setting that is used unless overridden by a user input.2 If the inventive method included the step
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`that the computer received a user input indicating what the displayed size of the order tokens is
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`“between orders” (the “default quantity” according to Mr. Hartheimer), it would be just as easy
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`as that to say so. But it does not say so, and Mr. Hartheimer does not contend otherwise. Nor
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`                                                            
`2 The term “default” is “used to describe a preset value for some option in a computer program.
`It is the value used when a setting has not been specified by the user.”  TechTerms.com (http://
`www.techterms.com/definition/default)(emphasis added))  The ‘056 Patent specification does
`not use the term “default quantity,” so TT could hardly argue that the inventors acted as their
`own lexicographers and gave it some specialized meaning.
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` 
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`5
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 9 of 37 PageID #:20020
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`does he argue that such an unmentioned functionality could somehow be inferred from what is
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`disclosed. Mr. Hartheimer thus fails to show any disclosure of “receiving a user input
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`indicating a default quantity.”
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`Furthermore, even assuming that Mr. Hartheimer is correct that a person of ordinary
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`skill in the art would understand that a user may choose to enter an order by copying a token
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`and dragging it to the desired price without adjusting its size, there is not the slightest disclosure
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`that this constitutes an indication that the quantity is “to be used to determine a quantity for each
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`of a plurality of orders to be placed by the user at one or more price levels.” To the contrary,
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`the user will have to repeat this process for each and every subsequent order that he or she
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`wishes to place for that same quantity.
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`At best, under Mr. Hartheimer’s reading, the ‘056 Patent discloses an invention that
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`allows a user to repeatedly enter orders for the same quantity over and over by copying,
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`dragging, and dropping an order token representing that quantity – this apparently is what he
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`means by “the concept of a default quantity used for multiple orders.” That, however, is not the
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`claimed invention, in which a computer receives a user input indicating a default quantity which
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`is then used to determine the quantity for place multiple orders to be placed by the user at one or
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`more price levels. Because the claims of the ‘056 Patent “exceed in scope the subject matter
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`that [the inventors] chose to disclose to the public in the written description,” Atlantic Research
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`Marketing Sys., Inc. v. Troy, 2011 WL 4600585, *7 (Fed. Cir. Oct. 6, 2011) – even under Mr.
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`Hartheimer’s generous interpretation of the drawings – summary judgment invalidating those
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`claims under 35 U.S.C. ¶ 112, ¶ 1, is appropriate.
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` 
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`6
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`Page 9 of 37
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 10 of 37 PageID #:20021
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`B. The Balance of Mr. Hartheimer’s Declaration is Devoted to
`Knocking Down Straw Man Arguments that Defendants do not
`Make.
`In the time-honored tradition of experts who cannot really in good conscience say very
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`much that is helpful to a client’s cause, Mr. Hartheimer fills out the balance of his Declaration
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`with makeweight arguments that have no bearing on the matter at hand.
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`First, Mr. Hartheimer devotes six paragraphs (Hartheimer Decl., ¶¶ 15-20) to arguing
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`that the predetermined size of the tokens does not re-set to zero after each order. Although Mr.
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`Hartheimer states that he believes that is how Defendants must interpret the specification, he
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`cites nothing in Defendants’ papers that says that. To the contrary, Defendants’ point is that the
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`specification says nothing about what happens to the size of the tokens “between orders” and
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`therefore a person of ordinary skill in the art does not know whether they re-set to zero, re-set to
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`some non-zero quantity, or do not re-set at all. Moreover, as set forth above, regardless of what
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`happens to the size of the tokens “between orders,” there is no disclosure that the computer
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`performing the patented method receives a user input indicating what the size of any of those
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`tokens is “between orders,” whether it be zero or any other number.
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`Second, Mr. Hartheimer states that he finds “the Defendants’ assertion that the
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`specification requires a user to specify a new quantity for each individual order (Dkt. 373, Def.
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`Br. 14) to be totally unsupported by the specification.” (Hartheimer Decl., ¶¶ 21, emphasis in
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`original) Although Mr. Hartheimer provides a citation for this alleged assertion, this argument
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`is also a red herring. Defendants did not argue that a user must specify a “new” quantity for
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`each individual order, and that is not logically implicated by Defendants’ arguments either.
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`Defendants simply pointed out what is indisputable – that in the invention disclosed in the ‘056
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`Patent specification, the user must indicate his or her desired quantity for each and every order
`7
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 11 of 37 PageID #:20022
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`by copying, dragging, and dropping a token representing the desired quantity each and every
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`time. Defendants never argued, nor need they argue, that a user could not enter two or more
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`consecutive orders for the same quantity. But to do so, the user will have to copy a token
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`having the desired size and drag it to the desired price each and every time.
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`In computer parlance, the sine qua non of a “default” is that it is a setting that is selected
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`once and then automatically used unless and until overridden, not one that must be repeatedly
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`re-entered. TT does not even attempt to argue, for example, that repeatedly re-entering the
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`numeral “5” manually in the quantity box of the “order task bar” 328 of the Priority View for
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`each order would mean that “5” was a default quantity or would constitute “receiving a user
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`input indicating a default quantity to be used to determine a quantity for each of a plurality of
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`orders to be placed by the user at one or more price levels.” But the only difference between
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`that and repeatedly copying, dragging, and dropping a graphical token representing the quantity
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`“5” is that the latter process is even more laborious and time-consuming, and therefore even less
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`like “receiving a user input indicating a default quantity to be used to determine a quantity for
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`each of a plurality of orders to be placed by the user at one or more price levels.”
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`II. TT’s Attempts to Cure the Deficiency of the Hartheimer Declaration by
`Misstating its Contents and Misrepresenting Defendants’ Arguments should be
`Rejected.
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`For the most part TT’s Rule 56.1 Statement and its Responses and Objections to
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`Defendants’ Rule 56.1 Statement (Dkt. 398) employ the same dodge as does Mr. Hartheimer’s
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`Declaration – ignoring the actual claim limitation at issue, especially its requirement of
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`“receiving a user input indicating a default quantity” – and instead just insisting that the bare
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`“concept” of a default quantity is disclosed. For example:
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`8
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`Page 11 of 37
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 12 of 37 PageID #:20023
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`18. The specification’s description of order entry in the priority
`view embodiment contains no disclosure that a trader may input
`a “default quantity” to be used to determine a quantity for
`multiple orders to be placed at one or more price levels or that
`the invention can receive such an input.
`
`
`
`OBJECTIONS AND RESPONSES:
`
`TT denies the allegations set forth in Paragraph 18. Specifically,
`TT denies any suggestion that a default quantity is not disclosed
`in the specification. The specification discloses use of a default
`quantity in multiple locations. (Dkt. 398 at 8, citations omitted)
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` In a few places, however, TT attempts to gild the lily by blatantly misstating the
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`contents of the Hartheimer Declaration to make it appear that it lends far more support for TT’s
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`position than it actually does. For example:
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`23. The specification’s description of order entry in the
`value/quantity view contains no disclosure that a trader may
`input a “default quantity” to be used to determine a quantity for
`multiple orders to be placed at one or more price levels or that
`the invention can receive such an input.
`
`OBJECTIONS AND RESPONSES:
`
`TT admits that the description of the value/quantity view does
`not disclose “that a trader may input a ‘default quantity’ to be
`used to determine a quantity for multiple orders to be placed at
`one or more price levels.” TT denies that the specification
`contains no description that the invention can receive such an
`input. Other portions of the specification clearly teach receiving
`such an input. See, e.g., Hartheimer Decl. ¶¶ 11-20. (Dkt 398 at
`10, emphasis added)
`
`As pointed out a pages 3-6 above, Mr. Hartheimer’s actual Declaration says nothing of
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`the sort, either in the cited paragraphs or elsewhere.
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`Similarly, in TT’s Statement of Undisputed Facts we find this:
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`The use of the term “adjusts” thus conveys that the trader is
`changing the token’s size from something reflecting a quantity
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 13 of 37 PageID #:20024
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`that was previously input by a trader. Hartheimer Decl. ¶ 19.
`(Dkt. 398 at 24-25, emphasis added)
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`But Mr. Hartheimer states only that the use of the term adjusts conveys “that the trader
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`is altering the token’s predetermined quantity.” (Hartheimer Decl., ¶ 19, emphasis added) The
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`difference between a “quantity that was previously input by a trader” and a “predetermined
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`quantity” is significant in the present context, as TT certainly understands. As set forth above at
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`page 5-6, one of the aspects of the claim limitation at issue that is not disclosed in the
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`specification is “receiving a user input indicating a default quantity.” In its misstatement of Mr.
`
`Hartheimer’s Declaration, TT attempts to supply the missing user input by suggesting that the
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`predetermined size of the order token “was previously input by a trader.”
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`In its Memorandum of Law (Dkt. 396), TT takes a different tack to deal with the
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`problem that its expert found disclosure of only “the concept of a default quantity to be used for
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`multiple orders” and not the claimed method step of “receiving a user input indicating a default
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`quantity to be used to determine a quantity for each of a plurality of orders to be placed by the
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`user at one or more price levels.” TT misrepresents Defendants’ arguments to suggest that
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`Defendants made a concession that rendered it unnecessary for them to show there was any
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`disclosure of anything other than “the concept of a default quantity to be used for multiple
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`orders.” Right at the outset of its argument TT states:
`
`Defendants concede that the specification of the ‘056 patent
`discloses receiving a user input indicating a quantity to be used
`for at least one order to be placed by the user at a price level.
`Dkt. 373, Def. Br. 4. Thus, Defendants’ entire motion boils
`down to whether the specification conveys that this quantity can
`be a “default quantity to be used . . . for each of a plurality of
`orders.” (Dkt. 396 at 4-5, emphasis added)
`
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 14 of 37 PageID #:20025
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`And with that sleight of hand, TT never looks backward, the remainder of its brief is
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`devoted to arguing that “the concept of a default quantity to be used for multiple orders” is
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`disclosed, without ever again even referring to the actual method step claimed in the ‘056 Patent
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`that is at issue on this motion.
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`Defendants, however, never conceded that the ‘056 Patent discloses receiving a user
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`input indicating a quantity to be used “for at least one order” to be placed by the user at a price
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`level. Quite the contrary, the ‘056 Patent discloses receiving a user input indicating a quantity
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`to be used for only one order, not at least one order. Indeed, Defendants’ opening brief was
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`quite specific in pointing out that the disclosure shows that user must input a quantity each time
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`he or she places an order:
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`Figure 6 of the ‘056 Patent, a flow chart illustrating “an
`embodiment of a method of generating an order icon in
`accordance with the priority view,” shows a “specified” quantity
`and a price being received for each order 604 and contains no
`step of receiving a default quantity input by the user to be used to
`determine a quantity for plurality of orders (i.e., more than one
`order) at one or more price levels. . . .
`
`The text accompanying Figure 6 states that an order type, value,
`and quantity is specified for each order, and that “[t]he quantity
`… is specified by the trader either entering the number directly
`into the order task bar or by adjusting the size of the order token.”
`(Dkt. 373 at 4-5, emphasis added)
`
`Thus, Defendants argued, and the specification clearly shows, that the invention
`
`disclosed in the ‘056 Patent only allows a user to input a quantity for one order at a time.
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`In addition to relying upon a misrepresentation of Defendants’ argument, TT’s attempt
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`to avoid having to show disclosure of the claimed step fails because it is internally inconsistent.
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`Under TT’s theory, the claimed “default quantity” is the predetermined size of the order tokens
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 15 of 37 PageID #:20026
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`that does not change “between orders.” TT attempts to combine this with the user’s act of
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`specifying a quantity to place an order to establish that there is disclosure of “a user input
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`indicating a default quantity.” But the disclosed “user input” that TT relies upon – the copying,
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`dragging, dropping of an order token to place an order— has nothing to do with the
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`predetermined size of the order tokens “between orders”, and therefore is not “indicating a
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`default quantity,” even under TT’s theory of what the “default quantity” is.
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`
`
`III. Because TT has Failed to Come Forward with Evidence of Adequate
`Written Description of the Claim Limitation at Issue in Response to
`Defendants’ Challenge, Summary Judgment of Invalidity is Appropriate.
`
`It is readily apparent on the face of Mr. Hartheimer’s Declaration that the best TT can
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`do is show written description support for the general “concept of a default quantity to be used
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`for multiple orders.” It cannot show support for the method step ““receiving a user input
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`indicating a default quantity to be used to determine a quantity for each of a plurality of orders
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`to be placed by the user at one or more price levels.” Because TT failed to come forward with a
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`showing of support in the written description for its later-claimed method, summary judgment
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`of invalidity is appropriate and should be granted.
`
`TT acknowledges that under Federal Circuit case law, “in some situations” where an
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`accused infringer challenges a patent as not supported by written description, the burden of
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`going forward with evidence shifts to the patentee. (TT Br. at 12) TT attempts to distinguish
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`such cases on the ground that they involved “priority disputes,” i.e., a situation in which
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`intervening prior art invalidates the patent-in-suit unless it is given the benefit of an earlier
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`application’s filing date. That is a distinction without a difference. First, the Federal Circuit’s
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`recent en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349
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` 
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`12
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`Page 15 of 37
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`

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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 16 of 37 PageID #:20027
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`(Fed. Cir. 2010) (en banc), makes it clear that the written description requirement is not limited
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`to priority disputes and is applied in the exact same where priority is not in dispute.
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`Second, as pointed out in Defendants’ opening brief, “this motion could easily be re-
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`characterized as a dispute over whether the claims of the ‘056 Patent are entitled to the 1999
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`priority date of the ‘550 Application.” (Dkt. 374 at p.17, n.1)
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`Third, TT’s suggestion that the rationale for placing this burden of going forward in a
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`priority dispute is that “a patent examiner does not necessarily need to consider priority unless
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`the examiner is faced with prior art requiring the patentee to claim priority,” is simply wrong.
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`The burden of coming forward with evidence is placed on a party that does not bear the ultimate
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`burden of persuasion where, as here, it would be unfair or impractical to require a party to prove
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`a negative in a vacuum. United States v. Cortez-Rivera, 454 F.3d 1038, 11042 (9th Cir. 2006)
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`(“[F]airness and common sense often counsel against requiring a party to prove a negative fact,
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`and favor, instead, placing the burden of coming forward with evidence on the party with
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`superior access to the affirmative information.”) It makes sense in any dispute over the
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`adequacy of written description to require the party that drafted the claims to, in the first
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`instance, show where it finds support for the claims that it drafted in the written description.
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`Here TT’s showing is inadequate on its face, and therefore it has failed to meet its burden of
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`going forward with evidence.
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`IV. TT’s Cross-Motion is Unauthorized, Premature and Without Merit.
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`TT has cross-moved for summary judgment that the ‘056 Patent “is not invalid” for lack
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`of written description. The cross-motion is without merit.
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` 
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`13
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`Page 16 of 37
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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 17 of 37 PageID #:20028
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`First, TT’s cross-motion exceeds the scope of this Court’s Scheduling and Discovery
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`Order of June 3, 2011. That order gave leave to Defendants to file a motion for summary
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`judgment of invalidity as to the ‘056 Patent only to the extent it could be “addressed now as a
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`matter of law with no new discovery.” It made no provision for any cross-motion by TT
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`regarding the ‘056 Patent. TT, however, has not only filed a cross-motion with respect to the
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`specific written description issue raised by Defendants’ joint motion, its cross motion goes
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`further and seeks a blanket declaration that the ‘056 Patent “is not invalid for lack of written
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`description under 35 U.S.C. § 112 ¶ 1.” (Dkt. 393) There is every likelihood that Defendants
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`would wish to raise additional written description issues after discovery and claim construction,
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`and TT’s attempt to foreclose such matters in advance should be rejected. Should the Court be
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`willing to entertain a cross-motion from TT at this time regarding the adequacy of the written
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`description of any claim limitation beyond that raised by Defendants’ joint motion, it will be
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`necessary to permit discovery and separate briefing on it.
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`Further, as set forth in the preceding sections, the Hartheimer Declaration fails on its
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`face to establish that the written description of the ‘056 Patent provides adequate support for the
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`claim limitation at issue here, and that in fact summary judgment should be granted in favor of
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`Defendants, even if the factual assertions contained therein are accepted as true.
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`Finally, even if the Court concludes that it cannot grant judgment as a matter of law for
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`the Defendants, the Declaration of Bernard S. Donefer attached hereto shows that there are
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`numerous factual assertions in the Hartheimer Declaration that are subject to dispute. Although
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`the Court need not reach these disputed issues to grant summary judgment to the Defendants;
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`those factual issues preclude granting summary judgment for TT.
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` 
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`14
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`Page 17 of 37
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`

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`Case: 1:10-cv-00715 Document #: 409 Filed: 10/07/11 Page 18 of 37 PageID #:20029
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`Respectfully submitted,
`
`By: s/ Andrew Johnstone
`George C. Lombardi (glombardi@winston.com)
`Andrew M. Johnstone (ajohnstone@winston.com)
`Winston & Strawn LLP
`35 West Wacker Drive
`Chicago, Illinois 60601
`(312) 558-5600
`Gary A. Rosen (grosen@logarpc.com)
`Law Offices of Gary A. Rosen, P.C.
`63 West Lancaster Avenue, Suite 1
`Ardmore, PA 19003
`(610) 658-8790
`
`
`Attorneys for Defendants eSpeed Markets, L.P.,
`BGC Capital Markets, L.P., and Eccoware, Ltd.
`(10-C-715)
`
`
`Lora A. Moffatt
`Anthony B. Ullman (ID No. 1981349)
`SALANS LLP
`Rockefeller Center
`620 Fifth Avenue
`New York, NY 10020-2457
`Tel: 212-632-5500
`Fax: 212-632-5555
`
` Philippe Bennett
`ALSTON & BIRD LLP
`90 Park Avenue
`New York, New York 10016
`Tel: 212-210-9400
`Fax: 212-210-9444
`
`
`Brian W. Norkett
`BU