GAIN Capital Holdings Inc v. OANDA Corp

1. Case Identification

• Case #: CBM2020-00021
• Patent #: 8,392,311
• Filed: September 14, 2020
• Petitioner(s): GAIN Capital Holdings, Inc.
• Patent Owner(s): OANDA Corporation
• Challenged Claims: 1-7

2. Patent Overview

• Title: Method and System for Trading Currency Over a Computer Network
• Brief Description: The ’311 patent discloses a computer-implemented method for trading currencies over a network. The system involves a trading server that maintains currency exchange rates and a client system through which a user can submit a trade order with a requested price, which the server then accepts or rejects based on the current rates.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 are Patent-Ineligible under 35 U.S.C. §101

• Core Argument for this Ground: Petitioner argued that all challenged claims are directed to the abstract idea of currency trading—a fundamental economic practice—and lack an inventive concept sufficient to transform the idea into a patent-eligible application. The argument followed the two-step framework established in Alice Corp. v. CLS Bank International.
  • Alice Step 1 (Abstract Idea): Petitioner contended that the claims, at their core, recite the long-standing, conventional steps of a currency trade. Independent claims 1 and 7 describe a process of (i) a dealer (server) determining and maintaining exchange rates, (ii) communicating those rates to a trader (client), (iii) the trader submitting an order with a specified currency pair, amount, and price, and (iv) the dealer comparing the requested price to the current market rate to execute or refuse the trade and notify the trader. Petitioner asserted that these steps were performed by human brokers and dealers for decades prior to the use of computers, merely automating a fundamental economic practice. The dependent claims were argued to add only routine and conventional aspects of this practice, such as the parameters of a standard limit order (claim 2) or a market order (claim 6).
  • Alice Step 2 (Inventive Concept): Petitioner argued that the claims lack an inventive concept because they merely instruct performing the abstract idea of currency trading using generic and conventional computer components. The claims recite a "trading system server" and a "trading client system" performing basic computer functions like maintaining a database, transmitting data over a network, receiving user input, and comparing values. Petitioner provided extensive evidence, including expert testimony and descriptions of prior electronic trading platforms from the 1990s (e.g., MatchbookFX, Deal Station 2000), to show that these functions were well-known and routinely used to implement currency trading before the patent's effective filing date. The ordered combination of these conventional steps was argued to yield nothing more than the expected result of automating a known business practice, failing to transform the abstract idea into a patent-eligible invention.

4. Key Technical Contentions (Beyond Claim Construction)

• Purported "Two-Way Handshake" is Not a Technical Solution: Petitioner argued that the patent’s primary touted innovation—a "two-way handshake" (trader submits an order, dealer executes) that allegedly solves latency problems of a "three-way handshake" (trader requests quote, dealer provides quote, trader accepts)—is not a technical solution and was not new. Petitioner asserted that order-driven trading (including market and limit orders) was a conventional trading method long before the patent and was widely available on numerous prior electronic platforms. Therefore, this process was not a technical solution to an internet-specific problem but rather an implementation of a known business method.
• No Solution to a Technical Problem: Petitioner contended that other alleged technical features mentioned in the ’311 patent’s specification are not recited in the claims and were not technical solutions anyway. These included overcoming firewalls by using HTTP headers, providing "real-time" data communication, or using encryption. Petitioner argued these features were either absent from the claims or relied on standard, off-the-shelf computer capabilities and did not represent a novel technological improvement.

5. Arguments Regarding Discretionary Denial

• Denial under §325(d) is Inappropriate: Petitioner argued that discretionary denial would be improper because the arguments presented in the petition were not substantially the same as those previously considered by the USPTO. During prosecution, the claims were never subjected to a rejection under the Alice framework. The only §101 rejection was made against different, since-canceled claims under the now-defunct "machine-or-transformation" test. Petitioner asserted that the examiner did not have the benefit of the Supreme Court's Alice decision or the extensive expert testimony and evidence submitted with the petition demonstrating that the claimed steps were routine and conventional at the time of the invention.

6. Relief Requested

• Petitioner requests institution of Covered Business Method (CBM) review and cancellation of claims 1-7 of the ’311 patent as unpatentable under 35 U.S.C. §101.