GAIN Capital seeks to defend itself in OANDA patent infringement lawsuit
GAIN Capital Holdings, Inc. and GAIN Capital Group, LLC (collectively, “GAIN”) have responded to OANDA’s complaint which alleges patent infringement.
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.
On October 5, 2021, GAIN filed a document in the New Jersey District Court, seeking to defend itself against OANDA’s claims. GAIN denies all allegations in Plaintiff’s First Amended Complaint for Patent Infringement.
GAIN also presents a number of affirmative defenses.
FIRST DEFENSE (NONINFRINGEMENT)
Without shifting the burden of proof, which remains with OANDA, GAIN says that it does not infringe and has not infringed any valid and enforceable claim of the ’336 and ’311 Patents directly or indirectly, either by inducement or contribution, whether literally or under the doctrine of equivalents.
SECOND DEFENSE (INVALIDITY)
GAIN argues that the claims of the ’336 and ’311 Patents are invalid, void, and/or unenforceable for failure to satisfy one or more of the requirements and/or conditions for patentability under Title 35 of the United States Code, including, inter alia, Sections 101, 102, 103, and 112.
THIRD DEFENSE (PROSECUTION HISTORY ESTOPPEL AND/OR PROSECUTION DISCLAIMER)
GAIN argues that OANDA’s claims are barred in whole or in part by the doctrines of prosecution history estoppel and/or prosecution disclaimer because admissions, amendments, arguments, or statements made to the United States Patent and Trademark Office during prosecution of the applications leading to, or related to, the issuance of the ’336 or ’311 Patents.
FOURTH DEFENSE (NOTICE AND MARKING)
Upon information and belief, Plaintiff’s claims for damages are barred, in whole or in part, by failure to provide adequate notice, to mark, or to have its licensees mark under 35 U.S.C. § 287.
FIFTH DEFENSE (FAILURE TO STATE A CLAIM)
According to GAIN, the plaintiff fails to state a claim upon which relief can be granted under Federal Rule of Civil Procedure 12(b)(6).
SIXTH DEFENSE (NO WILLFUL INFRINGEMENT)
The Plaintiff is prohibited from recovering damages for activities alleged to have occurred before Plaintiff provided actual notice of the Patents-in-Suit and the specific activities alleged to infringe.
SEVENTH DEFENSE (LIMITATION ON DAMAGES)
Upon information and belief, Plaintiff’s claim for damages are barred, in whole or in part, for failure to comply with 35 U.S.C. § 286.
EIGHTH DEFENSE (LIMITATION ON COSTS)
Plaintiff is barred from recovering any claims for costs according to 35 U.S.C. § 288.
NINTH DEFENSE (LICENSE AND EXHAUSTION)
To the extent that Plaintiff has licensed or otherwise exhausted its right and remedies as to products and services that are accused, GAIN is not liable to Plaintiff for any alleged acts of
infringement related to such products or services.
TENTH DEFENSE (EXTRATERRITORIALITY)
According to GAIN, Plaintiff’s claims for patent infringement are precluded in whole or in part to the extent that any accused functionality or acts are located or performed outside of the United States.
ELEVENTH DEFENSE (NO EQUITABLE RELIEF)
To the extent that Plaintiff establishes an entitlement to relief, Plaintiff has an adequate remedy at law and no basis exists for the grant of equitable relief.
Let’s also note the 13th defense. GAIN argues that OANDA does not own the ’336 patent, that OANDA is not the exclusive licensee of the ’336 patent, and OANDA does not possess the right to enforce the ’336 patent.
GAIN argues 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.
The lawsuit continues at the New Jersey District Court.