GAIN Capital files counterclaim against OANDA
About a fortnight after OANDA Corporation filed an amended complaint against GAIN Capital for alleged patent infringement, GAIN has responded to the allegations and has filed a counterclaim against OANDA.
According to the latest filings with the New Jersey District Court, seen by FX News Group, GAIN is seeking declarations that it is not infringing OANDA’s patents.
Let’s recall that, in this case, OANDA Corporation alleges patent infringement by GAIN Capital Holdings, Inc. and GAIN Capital Group, LLC (dba FOREX.com) of two patents: ‘336 and ‘311.
The ʼ336 Patent teaches, among other things:
In one aspect, the present invention comprises a system for trading currencies over a computer network. A preferred embodiment comprises: (a) a server front-end; (b) at least one database; (c) a transaction server; (d) a rate server; (e) a pricing engine; (f) an interest rate manager; (g) a trade manager; (h) a value at risk server; (i) a margin control manager; (j) a trading system monitor; and (k) a hedging engine. In another aspect, the present invention comprises methods for trading currency over a computer network. In another aspect, the present invention comprises software for currency trading over a computer network.
The ’311 Patent teaches, among other things:
In one aspect, the present invention comprises a system for trading currencies over a computer network. A preferred embodiment comprises: (a) a server front-end; (b) at least one database; (c) a transaction server; (d) a rate server; (e) a pricing engine; (f) an interest rate manager; (g) a trade manager; (h) a value at risk server; (i) a margin control manager; (j) a trading system monitor; and (k) a hedging engine. In another aspect, the present invention comprises methods for trading currency over a computer network. In another aspect, the present invention comprises software for currency trading over a computer network.
Now, GAIN pushes for a judgment dismissing OANDA’s First Amended Complaint for Patent Infringement, as well as for a declaration that GAIN has not infringed any claim of the ’336 and ’311 Patents. GAIN also seeks a declaration that the claims of the ’336 and ’311 Patents are invalid, void, and/or unenforceable.
The defendant also requests a declaration that this case is exceptional and an award to GAIN of its reasonable costs and expenses of litigation, including attorneys’ fees and expert witness fees.
Also, GAIN seeks a judgment limiting or barring OANDA’s ability to enforce the ’336 and ’311 Patents in equity, as well as a judgment enjoining and restraining OANDA, and those persons in active concert or participation with OANDA, from further charges of infringement or acts of enforcement based upon the ’336 and ’311 Patents against GAIN, its actual and prospective customers, suppliers, and anyone else in privity with GAIN.
GAIN argues that there is a definite and concrete, real and substantial, justiciable, and continuing case or controversy existing between GAIN and OANDA regarding the validity and enforceability of the patents in question that is of sufficient immediacy and reality to warrant the issuance of a Declaratory Judgment.
According to GAIN, the ’311 and ‘336 Patents are invalid for failure to satisfy one or more of the conditions of patentability specified in Title 35 of the United States Code, including, but not limited to 35 U.S.C. §§ 101, 102, 103, and 112 and/or for being otherwise in violation of one or more of the sections of Parts I, II, and III of Title 35 of the United States Code.
GAIN says that the claims of the patents are invalid under 35 U.S.C. § 101 because they are directed to an abstract idea without a sufficient inventive concept to transform the abstract idea into a patent-eligible application. In addition, and without limitation, the claims of the patent are invalid under 35 U.S.C. §§ 102 and/or 103 because they are anticipated or rendered obvious by relevant prior art, including but not limited to prior art of record during prosecution of the patents, and additional prior art that will be identified during discovery in this case.
Furthermore, according to GAIN, the patents is also unenforceable by reason of OANDA’s unclean hands and/or patent misuse in attempting to enforce the patents in bad faith, knowing that the patents are invalid, unenforceable, and/or not infringed by GAIN.
In addition, GAIN says that, as a result of Plaintiff’s lack of ownership of the ’336 Patent, Plaintiff is not entitled to enforce the ’311 Patent due to the terminal disclaimer Plaintiff filed on October 1, 2012 stating that the ’311 Patent shall be enforceable only for and during such period that it and the ’336 Patent are commonly owned.
GAIN says that a decree by the Court with respect to the issue of invalidity and/or unenforceability of the claims of the patents, as between GAIN and OANDA, is reasonably calculated to prevent needless additional litigation in this and other jurisdictions between GAIN and OANDA.