A patent infringement lawsuit brought by multi-asset online trading company OANDA against online trading major GAIN Capital continues at the New Jersey District Court. In this lawsuit, OANDA alleges that GAIN infringes two patents, U.S. Patent Nos. 7,146,336 (“the ’366 patent”) and 8,392,311 (“the ’311 patent”).

GAIN has moved to dismiss OANDA’s complaint for failure to state a claim and the motion is still pending. But GAIN has also tried a different maneuver. On September 14, 2020, and September 15, 2020, GAIN filed covered business method (CBM) petitions for each of the two Asserted Patents. GAIN’s pending petitions request that the PTAB invalidate every claim of the Asserted Patents. While the review is pending, GAIN has sought to stay the patent infringement case brought by OANDA.

This week, the companies have locked horns over whether such a stay should be granted. GAIN insists that no damage will be done to OANDA due to the stay, whereas OANDA insists that the proceedings have to continue.

One of the main arguments raised by GAIN concerns the timing of OANDA’s action. Indeed, the case was filed with the Court on May 11, 2020, seven years after the last Asserted Patent was issued by the U.S. Patent and Trademark Office and over 18 months after OANDA first wrote to GAIN.

According to GAIN, any delay from a stay is inconsequential relative to the many years of delay by OANDA before filing this action after issuance of the asserted patents in 2006 and 2013. Moreover, GAIN stresses that it had been providing online currency exchange services for years prior to 2006.

GAIN Capital says:

“Moreover, had OANDA filed a complaint properly identifying at least one accused product (which it completely failed to do) or promptly amended its complaint, this case might be further along. Thus, OANDA has no one but itself to blame for any “delays.”

Finally, GAIN argues that OANDA’s assertion that direct competition causes prejudice is belied by the fact that OANDA waited years to even notify GAIN of the asserted patents, and then another 18 months to file suit – facts which OANDA has failed to address.

OANDA has now moved to file a sur-reply to GAIN’s arguments.