GAIN Capital continues to defend itself in a patent infringement lawsuit brought by OANDA.

On April 29, 2025, GAIN submitted a letter at the New Jersey District Court requesting leave of Court to serve a subpoena for the deposition of non-party witness Mr. Ken Ford, who GAIN believes has information relevant to a prior art system, PrimeTrade FX.

An important defense to patent infringement is that an asserted patent is invalid because the claimed invention is not novel and/or is obvious considering the prior art.

The patent statute allows for different types of prior art to invalidate a patent, including earlier patents and printed publications as well as products/systems that were in public use or publicly known before a patent’s priority date.

OANDA filed suit against GAIN on May 11, 2020, almost 20 years after the earliest claimed priority date of the asserted patents (March 8, 2001) and over 13 years after the first of the two patents issued (December 5, 2006).

GAIN argues that the asserted patents are invalid over the prior art. PrimeTrade FX – commercialized by Credit Suisse—is one such prior art system that GAIN contends was publicly known and in public use over 24 years ago—before the asserted patents’ earliest claimed priority date.

GAIN’s outside co-counsel served prior art document and deposition subpoenas to Credit Suisse in this action to obtain discovery about PrimeTrade FX. Credit Suisse represented to counsel that because of the time passage and the acquisition of Credit Suisse by a non-party, the documents still in its possession were limited.

Credit Suisse ultimately produced a handful of documents that focus on client-facing aspects of PrimeTrade FX or high-level system architecture descriptions. Counsel diligently pursued discovery from Credit Suisse of individuals who developed the PrimeTrade FX product for months, only to learn that individuals who worked on the PrimeTrade FX product were no longer with the company.

Credit Suisse also could not (or would not) identify by name any individual who did work on PrimeTrade.

Consequently, GAIN researched press releases and online resources to find potential witnesses who were involved in FX trading using PrimeTrade at Credit Suisse prior to March 2001.

GAIN believes that Mr. Ford is an available witness residing in New Jersey who has relevant knowledge about the prior art PrimeTrade FX product.

Mr. Ford likely has relevant information through his use of the PrimeTrade FX product.

In sum, GAIN has good cause for the proposed subpoena to Mr. Ford because he likely has relevant knowledge about the prior art PrimeTrade FX product, which is relevant to GAIN’s invalidity defenses against the asserted patents, and GAIN acted diligently in discovering Mr. Ford’s relevance to the prior art and notifying the Court about this issue.

This is a patent case involving electronic trading of foreign currencies. OANDA filed a complaint against GAIN on May 11, 2020 alleging that GAIN infringes two patents, U.S. Patent No. 7,146,336 (the “’336 patent”) and U.S. Patent No. 8,392,311 (the “’311 patent”).

The Asserted Patents are related (the ’311 patent is a child of the ’336 patent) and share the same specification. The patent claims are directed generally to using computer networks to trade currencies, and more specifically by aggregating rates from financial institutions, determining a market exchange rate, and executing a trade if the rate falls within a trader’s acceptable parameters.

The ’336 patent contains “system” claims that recite various “servers” and “engines” that purportedly take part in executing a trade. The ’311 patent contains method claims reciting steps performed by a “trading system server” and a “trading client system” to effect a trade.