Two major Forex brokers – OANDA and GAIN Capital, are still engaged in a patent fight in Court. GAIN Capital is now seeking assistance of the New Jersey District Court in resolving plaintiff OANDA Corporation’s refusal to provide source code and factual information regarding OANDA’s own product that may be covered by the asserted patents.

This becomes clear from documents filed by GAIN with the Court on June 9, 2022.

Let’s recall that 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”).

On March 5, 2013, the United States Patent and Trademark Office issued United States Patent No. 8,392,311, entitled “Currency Trading System, Methods, and Software.” 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.

On December 5, 2006, the United States Patent and Trademark Office duly and legally issued United States Patent No. 7,146,336, entitled “Currency Trading System, Methods, and Software.”

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.

Now, GAIN and OANDA clash over certain information requests. GAIN says the information is relevant to determining whether OANDA’s products are covered by the asserted patents, which is critical to several issues in this case, including determining whether OANDA’s damages are limited by its failure to comply with statutory patent marking requirements, other damages issues, and OANDA’s infringement claims in this case.

The three discovery requests seek information regarding OANDA products or software that compete with the accused GAIN product. OANDA has previously argued to the Court in opposing GAIN’s motion to stay that “OANDA would be prejudiced by a stay because GAIN is a direct competitor .”

And OANDA has already confirmed in discovery that OANDA’s “FX trading platform competes with GAIN’s Accused Product.”

OANDA also represented to the United States Patent Office in a sworn declaration that its trading platform was evidence of its conception and the operational invention. But GAIN notes that, now, OANDA says it “may have practiced the claimed inventions.”

Having identified its FX trading platform as a competing product to the accused product, having made conflicting representations about whether its platform does or does not practice its own patents, OANDA now improperly attempts to withhold relevant discovery into this competing product, GAIN says.

OANDA responded that it “will not search for and produce documents [i.e., source code] in response to” Request for Production Nos. 83 and 84. And OANDA responded that it “will not provide a substantive response to” Interrogatory No. 14.

• Request for Production No. 83: “Documents sufficient to show the design, function, and operation of each of the OANDA Competing Product and such functionality therein, including each version or modification of each of the OANDA Competing Product.”
• Request for Production No. 84: “All source code for each OANDA Competing Product.”
• Interrogatory No. 14: “Separately for each OANDA Competing Product, identify each limitation of each asserted Claim-in-Suit that is not found within the OANDA Competing Product and, for each such limitation of each claim, provide a detailed explanation as to the factual basis that such limitation is not found, including an identification of documents and witnesses supporting such facts.”

On the Parties May 31, 2022 meet and confer, OANDA stated that the requested discovery is irrelevant because OANDA does not intend to rely on its products practicing the asserted patents. But, GAIN says, OANDA already has relied on its own products.

GAIN suspects OANDA is trying to improperly refuse this discovery because the facts regarding whether or not its platform practices its patents may impact OANDA’s damages (assuming it proves its infringement case) by cutting off its ability to obtain multiple years of past damages, negatively impact its damages calculus under established factors, and/or reveal fatal inconsistencies in OANDA’s infringement theories.

Thus, GAIN submits that OANDA should be compelled to provide the requested information in full.