Bitsgap Holding Ou v. Intercurrency Software LLC

1. Case Identification

• Case #: IPR2024-01278
• Patent #: 10,776,863
• Filed: August 9, 2024
• Petitioner(s): Bitsgap Holding OU, Paybis Ltd., Cryptohopper BV, and Cryptense SAS
• Patent Owner(s): Intercurrency Software LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Method and Apparatus for Displaying Trading Assets in a Preferred Currency
• Brief Description: The ’863 patent relates to a three-tier architecture for electronic trading systems. The disclosed method allows a trader to view and execute transactions for assets in a "preferred currency" (e.g., a domestic currency) that is different from the "market currency" in which the asset is primarily traded by performing currency conversions using a prevailing exchange rate.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 6-10 are obvious over Calo, Rude, and Sellberg

• Prior Art Relied Upon: Calo (Application # 2002/0087454), Rude (Application # 2006/0095361), and Sellberg (Application # 2004/0236664).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Calo and Rude, together, disclose the core elements of a consolidated trading platform as claimed, including a three-tier architecture that receives a user’s preferred currency, displays asset prices in that currency after conversion, and executes trades. Calo teaches a system for cross-border trades that automatically places a foreign exchange order to convert settlement amounts, while Rude discloses a system that automatically converts foreign securities price quotations into a trader’s local operating currency.
  • Motivation to Combine: Petitioner contended that to the extent Calo and Rude do not explicitly teach calculating the prevailing exchange rate immediately before the transaction, Sellberg remedies this. Sellberg teaches using an updated exchange rate, preferably the last one received just prior to submitting an order. A POSITA would combine Sellberg’s timing feature with the platforms of Calo and Rude to achieve the predictable result of minimizing currency risk at the point of transaction.
  • Expectation of Success: Combining these known features from financial trading systems was a simple task that would have yielded predictable results.

Ground 2: Claims 1-4 and 6-10 are obvious over Calo, Rude, and Szoc

• Prior Art Relied Upon: Calo (Application # 2002/0087454), Rude (Application # 2006/0095361), and Szoc (Application # 2002/0023053).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground uses the same foundational teachings from Calo and Rude as Ground 1. Szoc is presented as an alternative to Sellberg for teaching the use of a real-time, prevailing exchange rate for executing transactions. Szoc discloses a system providing real-time foreign exchange quotes that can be locked in, and further teaches limit transactions that execute only when a specific, favorable exchange rate becomes available.
  • Motivation to Combine: A POSITA would be motivated to integrate Szoc’s functionality for executing trades based on specific, real-time exchange rates into the general trading architecture of Calo and Rude. This combination would provide traders with enhanced control over currency risk, a well-known problem in cross-border trading.
  • Expectation of Success: The combination represents the application of a known technique (rate-contingent execution) to a known type of system (cross-border trading platform) and would have been straightforward to implement.

Ground 3: Claims 11 and 12 are obvious over Calo, Rude, and Sellberg or Szoc, in further view of Davidwitz

• Prior Art Relied Upon: The combinations from Grounds 1 or 2, in further view of Davidowitz (Application # 2004/0267655).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses the additional limitations of claims 11 and 12, which involve monitoring both market and currency conditions to determine if a trade should occur. Petitioner argued that Davidowitz teaches an automated system that continuously monitors various markets and automatically executes transactions based on investor-chosen conditions. This includes monitoring relationships between securities in different currencies and revaluing them into a single currency to facilitate a trading strategy.
  • Motivation to Combine: A POSITA would combine the advanced monitoring and conditional execution logic from Davidowitz with the trading platforms of Calo, Rude, and Sellberg/Szoc. This would create a more sophisticated system capable of managing the combined risks of asset price and currency fluctuations, a clear goal in the field of electronic trading.
  • Expectation of Success: Integrating automated market monitoring with automated currency conversion was a predictable extension of existing trading system capabilities with a high expectation of success.
• Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 5 based on the primary combinations in further view of Kidea (Application # 2007/0005481), which teaches a GUI for displaying filled and unfilled portions of an order.

4. Key Claim Construction Positions

• Petitioner proposed that the term "prevailing exchange rate," recited in claims 1, 4, and 6, should be construed to mean "a selected current exchange rate." This construction was based on the patent's specification only describing the use of a "forward" rate or a "spot" rate, both of which are types of selected current exchange rates. Petitioner asserted this construction is critical, as the prior art explicitly teaches the use of such current rates for executing foreign exchange transactions.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) is unwarranted because all petitioners have made a Sotera stipulation. This stipulation contractually prevents Petitioners from pursuing in related district court litigation the same invalidity grounds raised in the petition, or any other grounds that reasonably could have been raised. Petitioner asserted this stipulation resolves any concerns under the Fintiv factors regarding efficiency and duplicative efforts.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-12 of the ’863 patent as unpatentable.