GAIN Capital seeks to stay patent infringement lawsuit brought by OANDA

Maria Nikolova

GAIN has filed petitions with the PTAB in order to invalidate every claim of two of OANDA’s patents.

GAIN Capital Holdings, Inc., and GAIN Capital Group, LLC are pushing for a stay of the action brought by OANDA against them over alleged patent infringement.

On September 17, 2020, GAIN filed a motion to stay with the New Jersey District Court. In the supporting brief, GAIN explains that it seeks to stay the litigation pending resolution of GAIN’s petitions for covered business method (“CBM”) review filed on September 14, 2020, and September 15, 2020, before the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB).

Let’s recall that OANDA alleges that GAIN infringes two patents, U.S. Patent Nos. 7,146,336 (“the ’366 patent”) and 8,392,311 (“the ’311 patent”) (collectively, “Asserted Patents”). OANDA filed its Complaint on May 11, 2020. GAIN moved to dismiss for failure to state a claim on July 17, 2020, with the crux of the motion being that OANDA failed to identify any GAIN product of infringement and failed to describe how any GAIN product alleged infringes at least one claim of each patent. Thus, the accused products are not yet actually identified in this case, GAIN notes.

On September 14, 2020, and September 15, 2020, GAIN filed CBM petitions for each of the two Asserted Patents. GAIN’s pending petitions request that the PTAB invalidate every claim of the Asserted Patents.

According to GAIN’s petitions, the claims of the Asserted Patents are directed to the abstract idea of currency trading, which is an age-old business practice stretching back generations. While the platform for currency trading has shifted over time—from physical markets, to phones, to computers—the fundamental aspects of the trading process have endured. Regardless of the underlying platform, traders have long been able to interact with currency dealers to receive price quotes, negotiate rates, and make trades, much like any other financial transaction.

The claims of the Asserted Patents merely describe a standard currency trade being performed by generic computers, GAIN says. In the ’311 patent, a generic server sets and maintains exchange rates and then communicates those rates to a client, just as currency dealers and brokers have done for generations. The trader then submits a standard order – identifying the currency, the amount to be traded, and a requested price – using a generic client system. The generic server then accepts or rejects the order, checking the request price against the currently available price, and informs the trader if the trade is accepted. The claims thus broadly describe a conventional order-based currency trade, GAIN says.

In the ’336 patent, each system includes an off-the-shelf server front-end and database, as well as generic computer modules associated with basic currency trading functions: a “transaction server,” a “rate server,” and a “pricing engine.” Beyond these generic components, each claim recites an additional, but equally conventional currency trading feature that again reflects a longstanding currency trading practice, GAIN explains. The claims thus broadly describe a generic computer system that performs a fundamental economic practice recited at a high level of generality.

According to GAIN, the claims made in OANDA’s patents broadly describe conventional currency trading practices performed on a computer. Yet the mere use of a generic computer to replicate a longstanding business practice does not render an abstract idea eligible for a patent, GAIN says.

The PTAB is expected to issue institution decisions for GAIN’s CBM petitions in March 2021. If the PTAB institutes, then a final determination on the merits is expected by March 2022.

GAIN says that the facts weigh strongly in favor of immediately staying this litigation, which is only in its infancy, pending CBM review because: (1) no schedule has been set and no discovery has taken place; (2) a stay until completion of the CBM proceedings will simplify—and potentially wholly eliminate—the issues for trial; (3) OANDA will suffer no undue prejudice or tactical disadvantage from a stay because OANDA delayed in filing this litigation and elected to forgo seeking a preliminary injunction; (4) and a stay will reduce the burden of litigation on the parties and the Court.

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