GAIN Capital Holdings Inc v. OANDA Corp

1. Case Identification

• Case #: CBM2020-00023
• Patent #: 7,496,534
• Filed: September 15, 2020
• Petitioner(s): GAIN Capital Holdings, Inc.
• Patent Owner(s): OANDA Corporation
• Challenged Claims: 1-12

2. Patent Overview

• Title: Method of Trading Assets on a Market
• Brief Description: The ’534 patent discloses a computer-implemented method for trading assets on a financial market. The method involves receiving price and position data, using a plurality of trading "sub-models" where each is based on a different time of day, and calculating a trade recommendation based on information from these sub-models.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 are Patent-Ineligible under 35 U.S.C. §101

• Prior Art Relied Upon: This ground is based on patent ineligibility under 35 U.S.C. §101 rather than anticipation or obviousness. To establish that the claimed concepts were conventional, Petitioner relied on expert testimony and publications describing long-standing financial practices, such as Pictet (a 1992 journal article) and Gencay (a 1998 working paper).
• Core Argument for this Ground: Petitioner argued that the challenged claims are directed to an abstract idea and lack an inventive concept, following the two-step framework from Alice Corp. v. CLS Bank Int'l.
  • Alice Step 1: Directed to an Abstract Idea: Petitioner asserted that all challenged claims are directed to the abstract idea of time-based trade analysis, a fundamental economic practice that long predates the patent. The claims were also argued to be directed to abstract mathematical concepts.
    • Fundamental Economic Practice: Independent claim 1 recites basic steps of this practice: (a-c) gathering and storing price and position data; (d) calculating intermediate "trade recommendation information" using multiple time-of-day-based sub-models; and (e) calculating a final trade recommendation. Petitioner contended these are conventional steps that mirror longstanding human trading analysis.
    • Mathematical Concepts: The core calculating steps (d-e) were described as abstract mathematical calculations performed on generic data. Dependent claims 7-9 were highlighted as reciting generic mathematical formulas, such as weighted averages, to combine the outputs of the sub-models.
    • No Improvement to Technology: Petitioner argued the claims fail to provide a practical application of the abstract idea. The recitation of computer networks and computer-readable media was characterized as minimal and incidental, covering only the basic functions of receiving and storing data. The core analytical steps were not claimed in a way that required a computer, nor did they solve a technical problem or improve computer functionality.
  • Alice Step 2: Lacks an Inventive Concept: Petitioner argued that the claim elements, both individually and as an ordered combination, fail to provide an inventive concept to transform the abstract idea into a patent-eligible application.
    • Conventional Steps: The steps of receiving, storing, and analyzing market data were asserted to be well-understood, routine, and conventional activities in financial trading. The central feature—using sub-models based on different times of day—was argued to be a conventional technique for analyzing known intraday trading patterns and volatility.
    • Conventional Dependent Claim Limitations: The additional limitations in the dependent claims were also argued to be conventional. These included using 24 sub-models (a logical choice for hourly analysis), evaluating models with "risk-sensitive performance measures" (a standard part of risk management), and using specific components like a "price collector" or "gearing calculator" that merely describe routine functions of any trading model. Petitioner noted that the components of claim 6 were described almost verbatim in a 1992 article co-authored by several of the named inventors.
    • No Transformation: Ultimately, Petitioner contended that the claims amount to nothing more than an instruction to apply the abstract idea of time-based analysis using generic computer components for conventional tasks, which is insufficient to confer patent eligibility.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the same or substantially the same arguments and evidence were not previously presented to the U.S. Patent and Trademark Office.
• The claims were prosecuted and issued years before the Supreme Court's decision in Alice, meaning the examiner did not apply the current legal framework for patent eligibility under §101.
• Petitioner asserted that the examiner also lacked the benefit of the extensive evidence and expert testimony submitted with the petition, which demonstrated that the claimed methods and functions were routine and conventional at the time of the invention.

5. Relief Requested

• Petitioner requests institution of a Covered Business Method (CBM) review and cancellation of claims 1-12 of Patent 7,496,534 as unpatentable under 35 U.S.C. §101.