The opinion of the court was delivered by: Judge Virginia M. Kendall
MEMORANDUM OPINION AND ORDER
In 2010, plaintiff Trading Technologies International, Inc. ("TT") filed a dozen cases alleging infringement of its electronic trading patents in this District. In two of those cases, TT alleges GL Trade Americas, Inc, SunGard Data Systems, Inc., SunGard Investment Ventures LLC and FuturePath Trading, LLC (collectively "the SunGard Defendants") infringed four of its patents ("2010 Actions"). TT and the SunGard Defendants are not strangers: TT filed two actions in 2005 against the SunGard Defendants for infringement of two other patents. Those 2005 cases are consolidated and remain pending in this District ("2005 Actions"). The SunGard Defendants moved for summary judgment, urging the Court to dismiss the 2010 Actions because TT has impermissibly "split" claims into the 2010 Actions that should have been brought in the 2005 Actions. For the below reasons, the SunGard Defendants' motion (Doc. 136, Case. No. 10 C 716) is denied.
I. MATERIAL UNDISPUTED FACTS
The SunGard Defendants develop and sell electronic trading software for the financial industry. (Doc. 139, TT 56.1 Resp. ¶ 9.) In July and September 2005, TT filed suit against the SunGard Defendants, among others, alleging that they had infringed, and continued to infringe, TT's '304 and '132 patents (the "2005 Patents"). (Id. ¶¶ 11-12, 18; see Case Nos. 05 C 4120 and 05 C 5164.) After being stayed pending the trial and appeal in a related litigation between TT and eSpeed, Inc., those 2005 Actions have been consolidated and remain pending in this District before Judge Chang. (Id. ¶ 13; Doc. 139, TT Add'l Facts ¶ 9.*fn1 ) After TT filed the 2005 Actions, the Patent Office issued a series of additional patents to TT. (Id. ¶¶ 3-6, 8.) Those new patents included the '999 patent that issued May 1, 2007, the '056 patent that issued May 12, 2009, the '416 patent that issued August 12, 2008 and the '411 patent that issued March 9, 2010. (Id.)
In February 2010, TT sued the SunGard Defendants again, this time alleging that they had infringed, and continue to infringe, the '999, '056, '416, and '411 patents ("the 2010 Patents").*fn2 (TT 56.1 Resp. ¶¶ 14, 19; see Case Nos. 10 C 716, 10 C 720.) One of the patents asserted in the 2010 Actions is related to the earlier patents asserted in the 2010 Actions. Specifically, the '411 patent (2010) is a continuation of the '132 patent (2005), and they share a common patent disclosure and provisional application. (TT 56.1 Resp. ¶¶ 21-22.) The '999, '056 and '416 patents (all 2010), on the other hand, are not part of the same patent "family" as the '132, '304 (both 2005) and '411 patents (2010). (TT Add'l Facts ¶ 7.) In both the 2005 and 2010 Actions, TT alleges that the SunGard Defendants have infringed its patents via their GL Win/Quick Trade and PhotonTrader trading software systems. (TT 56.1 Resp. ¶¶ 10, 15.)
Before the Court consolidated all the cases TT filed in 2010 into a single proceeding, the SunGard Defendants filed this same claim-splitting motion in case number 10 C 716 when it was pending before Judge Pallmeyer. (TT Add'l Facts ¶ 20.) Judge Pallmeyer orally denied the motion on January 21, 2011, while TT's consolidation motion was pending. (Id.) During that hearing, Judge Pallmeyer stated:
I have reviewed the briefs. I am familiar with this problem from this case and at least one other, and it seems to me that the two cases that [the SunGard Defendants] believe should really be one do, in fact, raise substantially similar issues. They are not completely overlapping, but they are substantially overlapping. I think the correct result is that these cases belong together.
I don't think that what [TT] has done can fairly be characterized as claim-splitting so much as an effort to expand on the original claim, on the one, hand and potentially get a fresh start on the other; potentially, this is -- I really don't fully understand the whole picture here, but potentially get another judge and start over.
But I don't think its appropriate for me to grant summary judgment in this case because I think that's an end-run around a decision by another judge not to take the cases together. Whether or not I believe that's the right thing to do, I can't force the result. (TT 56.1 Resp. ¶ 24; TT Add'l Facts ¶¶ 20-21; emphasis added.)
As an initial matter, the parties dispute whether this motion is properly considered to be a motion to reconsider Judge Pallmeyer's decision or a Rule 56 motion for decision on the merits.
While Judge Pallmeyer commented on the substance of the motion when she orally denied it, it is clear from the bolded language above that her decision was not based on the merits of the motion, but rather because the consolidation motion remained pending before this Court. Consequently, the Court will address the motion on the merits.
Summary judgment is proper when "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c)(2). In determining whether a genuine issue of fact exists, the Court must view the evidence and draw all reasonable inferences in favor of TT as the party opposing the motion. See Bennington v. Caterpillar Inc., 275 F.3d 654, 658 (7th Cir. 2001); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). However, the Court will "limit its analysis of the facts on summary judgment to evidence that is properly identified and supported in the parties' [Local Rule 56.1] statement." Bordelon v. Chicago Sch. Reform Bd. of Trustees, 233 F.3d 524, 529 (7th Cir. 2000). Where a proposed statement of fact is supported by the record and not adequately rebutted, the court will accept that statement as true for purposes of summary judgment. An adequate rebuttal requires a citation to specific support in the record; an unsubstantiated denial is not adequate. See Albiero v. City of Kankakee, 246 F.3d 927, 933 (7th Cir. 2001); Drake v. Minn. Mining & Mfg. Co., 134 F.3d 878, 887 (7th Cir. 1998) ("'Rule 56 demands something more specific than the bald assertion of the general truth of a particular matter[;] rather it requires affidavits that cite specific concrete facts establishing the existence of the truth of the matter asserted.'").
Regional circuit law applies to general principles of claim preclusion or claim splitting, whereas Federal Circuit precedent governs "[w]hether two claims for patent infringement are identical" because it is a question "particular to patent law." Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008); see also Hallco Mfg. Co. v. Foster, 256 F.3d 1290, 1294 (Fed. ...