Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 1 of 29 PageID: 3447
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`
`Civil Action No.: 20-05784-ZNQ-DEA
`
`JURY TRIAL DEMANDED
`
`OANDA CORPORATION,
`
`Plaintiff,
`
`v.
`
`GAIN CAPITAL HOLDINGS, INC. and
`GAIN CAPITAL GROUP, LLC,
`
`Defendants.
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`Pursuant to Local Patent Rule 4.3 and the Court’s September 29, 2021, Scheduling Order
`
`(Dkt. No. 96), Plaintiff OANDA Corporation (“OANDA” or “Plaintiff”) and Defendants GAIN
`
`Capital Holdings, Inc. and GAIN Capital Group, LLC (“GAIN” or “Defendants”) submit their
`
`Joint Claim Construction and Pre-hearing Statement.
`
`I.
`
`Background
`
`OANDA’s Complaint alleges that GAIN infringes two patents, U.S. Patent Nos. 7,146,336
`
`(“the ’366 patent”) and 8,392,311 (“the ’311 patent”) (“Asserted Patents”). GAIN owns and
`
`operates electronic foreign exchange trading systems, certain of which OANDA has accused of
`
`infringement. GAIN alleges that the asserted claims are invalid, not infringed, and/or
`
`unenforceable.
`
`1
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 2 of 29 PageID: 3448
`
`II.
`
`Claim Construction
`
`A.
`
`The Construction of the Terms on Which the Parties Agree
`
`Pursuant to Local Patent Rule 4.3(a), the parties met and conferred to narrow the number
`
`of terms in dispute and agreed on the construction of the following term.
`
`“continuously checks” – ’336
`Patent, Claims 2-4
`
`“repeatedly performs the process of checking”
`
`B.
`
`Claim Terms in Dispute and the Parties’ Proposed Construction
`
`Pursuant to Local Patent Rule 4.3(b), attached hereto as Exhibit A is a chart identifying the
`
`claim terms and phrases in dispute and the parties’ proposed constructions. Exhibit A also
`
`identifies the intrinsic and extrinsic evidence known to each party on which it intends to rely upon
`
`in support of its constructions or to oppose the other party’s proposed constructions.
`
`C.
`
`Significant or Dispositive Claim Terms
`
`Plaintiff’s Position:
`
`Pursuant to Local Patent Rule 4.3(c), Plaintiff states that the following terms are more
`
`significant because they are terms whose construction would aid the jury in understanding the
`
`technology.
`
`The ’336 Patent:
`“server front-end”
`“rate server”
`“pricing engine”
`
`The ’311 Patent:
`“dynamically maintaining”
`“current exchange rate(s)”
`“requested trade price”
`
`OANDA disagrees with GAIN’s assertion below that its infringement contentions are lacking.
`
`Furthermore, contrary to GAIN’s contention, OANDA has not received all of GAIN’s relevant
`
`2
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 3 of 29 PageID: 3449
`
`source code and still awaits GAIN’s production of its API source code that GAIN has improperly
`
`maintained is not part of this case. See Joint Status Report (Dkt. 102).
`
`Defendants’ Positions:
`
`Pursuant to Local Patent Rule 4.3(c), Defendants state that the following terms are more
`
`significant than the others because they are found in at least all asserted independent claims:
`
`The ’336 Patent:
`“in communication with”
`“server front-end”
`“rate server”
`“pricing engine”
`
`The ’311 Patent:
`“trading client system”
`“determining” or “determined”
`“dynamically maintaining”
`“determining and dynamically maintaining a plurality of currency exchange rates”
`“current exchange rate(s)”
`“current exchange rate at the time”
`“requested trade price”
`
`Defendants further state that the constructions of the following terms are potentially
`
`dispositive of at least certain Claims-in-Suit because if the Court adopts Defendants’ proposed
`
`construction, several of the claims will be invalidated for indefiniteness and/or lack of written
`
`description:
`
`The ’336 Patent:
`“pricing engine”
`“hedging engine”
`
`The ’311 Patent:
`“trading client system”
`“dynamically maintaining”
`“determining and dynamically maintaining a plurality of currency exchange rates”
`“current exchange rate(s)”
`“current exchange rate at the time”
`
`GAIN’s identification of significant terms is limited by the lack of fulsome infringement
`
`contentions by OANDA. Despite having had access to GAIN’s technical documents since at least
`
`3
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 4 of 29 PageID: 3450
`
`October 30, 2021, and GAIN’s source code for at least the current versions of the accused products
`
`since November 12, 2021, OANDA has not provided a chart identifying specifically where each
`
`limitation of each asserted claim is found within each accused instrumentality, as required by Local
`
`Patent Rule 3.1(c). Without these mandatory disclosures, GAIN is unable to assess which claim
`
`terms are most relevant to OANDA’s allegations. GAIN disagrees that OANDA is entitled to any
`
`backend API source code or that it is necessary or even needed to provide proper contentions as to
`
`the currently accused products.
`
`D.
`
`Anticipated Length of Time Necessary for the Claim-Construction Hearing
`
`Pursuant to Local Patent Rule 3.4(d), the parties state that they anticipate that the Court
`
`will be able to conduct a hearing on the meaning of the disputed terms in about 4 to 6 hours.
`
`E.
`
`Identification of Witness for the Claim-Construction Hearing
`
`Pursuant to Local Patent Rule 4.3(e), as set forth in Exhibit A, the parties may rely on
`
`expert testimony that would be submitted to the Court by declaration. The parties defer to this
`
`Court’s preference regarding live testimony and would be pleased, if the Court requests, to present
`
`such testimony in person if the Court’s rules permit or through a Zoom hearing.
`
`Dated: January 18, 2022
`
`Respectfully submitted,
`
`Michael B. Levin (mlevin@wsgr.com)
`Jamie Y. Otto (jotto@wsgr.com)
`WILSON SONSINI GOODRICH &
`ROSATI P.C.
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Telephone: (650) 493-9300
`
`/s/ Arnold B. Calmann__________________
`Arnold B. Calmann (ACalmann@saiber.com)
`Katherine A. Escanlar
`(KEscanlar@saiber.com)
`SAIBER LLC
`One Gateway Center, Suite 950
`Newark, New Jersey 07102
`Telephone: (973) 622-3333
`
`Natalie J. Morgan (nmorgan@wsgr.com)
`WILSON SONSINI GOODRICH &
`ROSATI P.C.
`
`Attorneys for Defendants GAIN Capital
`Holdings, Inc. and GAIN Capital Group, LLC
`
`4
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 5 of 29 PageID: 3451
`
`12235 El Camino Real
`San Diego, California 92130
`Telephone: (858) 350-2300
`
`Aden M. Allen (aallen@wsgr.com)
`WILSON SONSINI GOODRICH &
`ROSATI P.C.
`900 S. Capital of Texas Hwy
`Las Cimas IV, 5th Floor
`Austin, TX 78746
`Telephone: (512) 338-5400
`
`Drew Koning (pro hac vice)
`drew@kzllp.com
`Blake Zollar (pro hac vice)
`blake@kzllp.com
`Koning Zollar LLP
`169 Saxony Road, Suite 115
`Encinitas, CA 92024
`T: 858.252.3234
`
`Shaun Paisley (pro hac vice)
`shaun@kzllp.com
`Koning Zollar LLP
`470 James Street, Suite 007
`New Haven, CT 06513
`T: 203.951.1213
`
`Erik Dykema
`erik@kzllp.com
`Koning Zollar LLP
`4 Manheim Road
`Essex Fells, NJ 07021
`T: 858.252.3234
`
`/s/ Cynthia S. Betz_________________
`John E. Flaherty
`Cynthia S. Betz
`McCarter & English, LLP
`100 Mulberry Street
`4 Gateway Center
`Newark, NJ 07102
`T: 973-622-4444
`
`Attorneys For Plaintiff
`OANDA Corporation
`
`5
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 6 of 29 PageID: 3452
`
`The Parties’ Proposed Constructions and Evidence Regarding the Disputed Claim Terms and Phrases
`
`EXHIBIT A
`
`Claim Term and
`Corresponding Claim1
`“in communication
`with” (’336 patent at 1-
`5, 7, 11)
`
`
`
`OANDA’s Proposed Construction
`and Evidence
`
`Construction:
`This term uses plain and ordinary words and thus
`requires no construction.
`
`Should the Court determine that a construction is
`necessary, then OANDA proposes a construction
`of “able to exchange data with”
`
`Intrinsic Evidence:
`All evidence cited by GAIN in its Local Patent
`Rule 4.2 disclosures.
`
`Extrinsic Evidence:
`Microsoft Computer Dictionary, Fourth Edition,
`© 1999. p. 98.
`
`OANDA may offer the testimony of expert
`witnesses:
` Prof. Michael Shamos
`Ivan Zatkovich
`
`on the following:
` Background of the relevant technology;
`
`GAIN’s Proposed Construction
`and Evidence
`
`Construction:
`“in direct communication with”
`
`Intrinsic Evidence:
`Specification
`● ’336 Patent at Fig. 3, Fig. 4, 6:35-7:36, 7:14-
`27, 7:42-51, 7:52-8:40, 8:41-61, 8:62-9:29:19-28,
`9:50-10:29, Claims 1-11.
`Prosecution History
`● Provisional Patent Application No. 60/274,174
`at p. xxv, 1-2, 4-5, 6-7, 10, 12, 15-16,18-19, 34-
`37, 38-39, 46, 51, 53, 59, 76-81, 84-5, 86, 87-88,
`89, 99, 123-24, 131, 132,135, 148, 163-72, 176,
`182, 183, 187, 188, 198, 249, 251, 253-54, 268-
`71, 274, 292,293, 328-29.
`● October 7, 2003 Office Action at pp. 2-8 and
`prior art cited therein.
`● December 30, 2003 Response to October 7,
`2003 Office Action at pp. 6-12 and prior art cited
`therein.
`● March 24, 2004 Office Action at pp. 2-10 and
`prior art cited therein.
`
`1 This list should be understood to include all asserted claims that depend directly or indirectly from the listed claim even if those
`dependent claims are not expressly listed.
`
`A-1
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 7 of 29 PageID: 3453
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
` State of the art prior to the filing and issuance
`of the ’311 and ’336 patents;
` The commonly understood meaning in the
`relevant art as to the claim terms; and
` Rebuttal of any arguments presented by
`Defendants
`
`GAIN’s Proposed Construction
`and Evidence
`● August 24, 2004 Response to March 24, 2004
`Office Action at 8-15 and prior art cited therein.
`● November 16, 2004 Office Action at pp. 2-6
`and prior art cited therein.
`● February 10, 2005 Response to November 16,
`2004 Office Action at pp. 9-18 and prior art cited
`therein.
`● July 13, 2005 Office Action at pp. 2-7 and prior
`art cited therein.
`● September 15, 2005 Response to Office Action
`at p. 7.
`● October 13, 2005 Office Action at 2-5 and
`prior art cited therein.
`● February 13, 2006 Response to Office Action
`at p. 7.
`● July 25, 2006 Notice of Allowance at pp. 2-9
`and prior art cited therein.
`
`Extrinsic Evidence
`● GAIN may offer the testimony of an expert
`witness, Bernard Donefer. Prof. Donefer may
`testify as to the following:
`(1) Background of the relevant technology;
`(2) State of the art prior to issuance of the
`asserted patents;
`(3) The commonly understood meaning in the
`relevant art as to the term
`“communicate” and “in communication with”
`and the meanings of the various
`
`A-2
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 8 of 29 PageID: 3454
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
`
`
`
`“server front-end”
`(’336 patent at 1-5, 7,
`11)
`
`Construction:
`This term uses plain and ordinary words and thus
`requires no construction.
`
`Should the Court determine that a construction is
`necessary, then OANDA proposes a construction
`of “server that is responsible for communication
`with clients”
`
`Intrinsic Evidence:
`’336 Patent, 1:36-42
`’336 Patent, 6:35-7:12
`’336 Patent, Fig. 3
`December 30, 2003, Applicant Remarks in
`Response to Office Action (p. 185 of File
`History).
`All evidence cited by GAIN in its Local Patent
`Rule 4.2 disclosures.
`
`Extrinsic Evidence:
`OANDA may offer the testimony of expert
`witnesses:
` Prof. Michael Shamos
`Ivan Zatkovich
`
`on the following:
` Background of the relevant technology;
`
`A-3
`
`GAIN’s Proposed Construction
`and Evidence
`definitions and uses of that phrase in the claims,
`the specification, the prosecution history; and
`(4) Rebuttal of any arguments presented by
`Plaintiff’s expert.
`Construction:
`“server that is responsible for all communication
`with the web-based clients”
`
`Intrinsic Evidence:
`Specification
`● ’336 Patent at Fig. 1, Fig. 3, Fig. 4, Fig. 16,
`1:47-2:45, 3:32-46, 3:55-63, 4:36-59, 6:3-23,
`6:35-7:13, 9:44-10:29, Claims 1-11.
`Prosecution History
`● October 7, 2003 Office Action at pp. 2-8 and
`prior art cited therein.
`● December 30, 2003 Response to October 7,
`2003 Office Action at pp. 6-12 and prior art cited
`therein.
`● March 24, 2004 Office Action at pp. 2-10 and
`prior art cited therein.
`● August 24, 2004 Response to March 24, 2004
`Office Action at 8-15 and prior art cited therein.
`● November 16, 2004 Office Action at pp. 2-6
`and prior art cited therein.
`● February 10, 2005 Response to November 16,
`2004 Office Action at pp. 9-18 and prior art
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 9 of 29 PageID: 3455
`
`Claim Term and
`Corresponding Claim1
`
`
`
`“rate server” (’336
`patent at 1-5, 7, 9)
`
`OANDA’s Proposed Construction
`and Evidence
` State of the art prior to the filing and issuance
`of the ’311 and ’336 patents;
` The commonly understood meaning in the
`relevant art as to the claim terms; and
` Rebuttal of any arguments presented by
`Defendants
`Construction:
`“Server that obtains and caches currency
`exchange rate information”
`
`Intrinsic Evidence:
`’336 Patent, 7:14-25
`December 30, 2003, Applicant Remarks in
`Response to Office Action (p. 185 of File
`History).
`All evidence cited by GAIN in its Local Patent
`Rule 4.2 disclosures.
`
`Extrinsic Evidence:
`OANDA may offer the testimony of expert
`witnesses:
` Prof. Michael Shamos
`Ivan Zatkovich
`
`on the following:
` Background of the relevant technology;
` State of the art prior to the filing and issuance
`of the ’311 and ’336 patents;
` The commonly understood meaning in the
`relevant art as to the claim terms; and
`
`A-4
`
`GAIN’s Proposed Construction
`and Evidence
`
`Construction:
`“server that obtains currency exchange rate
`information from a variety of external sources
`and stores it locally”
`
`Intrinsic Evidence:
`Specification
`● ’336 Patent at Fig. 3, Fig. 4, 1:47-2:45, 3:32-
`46, 6:50-7:2, 7:14-36, Claims 1-11.
`Prosecution History
`● October 7, 2003 Office Action at pp. 2-8 and
`prior art cited therein.
`● December 30, 2003 Response to October 7,
`2003 Office Action at pp. 6-12 and prior art cited
`therein.
`● March 24, 2004 Office Action at pp. 2-10 and
`prior art cited therein.
`● August 24, 2004 Response to March 24, 2004
`Office Action at 8-15 and prior art cited therein.
`● November 16, 2004 Office Action at pp. 2-6
`and prior art cited therein.
`● February 10, 2005 Response to November 16,
`2004 Office Action at pp. 9-18 and prior art cited
`therein.
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 10 of 29 PageID: 3456
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
` Rebuttal of any arguments presented by
`Defendants
`
`GAIN’s Proposed Construction
`and Evidence
`● July 13, 2005 Office Action at pp. 2-7 and prior
`art cited therein.
`● September 15, 2005 Response to Office Action
`at p. 7.
`● October 13, 2005 Office Action at 2-5 and
`prior art cited therein.
`● February 13, 2006 Response to Office Action
`at p. 7.
`● July 25, 2006 Notice of Allowance at pp. 2-9
`and prior art cited therein.
`Extrinsic Evidence
`● Microsoft Computer Dictionary Fourth Edition
`(1999) at GAIN_0200117-18:
`server: “On the Internet or other network, a
`computer or program that responds to commands
`from a client. For example, a file server may
`contain an archive of data or program files; when
`a client submits a request for a file, the server
`transfers a copy of the file to the client.”
`● GAIN may offer the testimony of an expert
`witness, Bernard Donefer. Prof. Donefer
`may testify as to the following:
`(1) Background of the relevant technology;
`(2) State of the art prior to issuance of the
`asserted patents;
`(3) The commonly understood meaning in the
`relevant art as to the term “rate server” and the
`meanings of the various definitions and uses of
`that phrase in the claims, the specification, the
`prosecution history; and
`
`A-5
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 11 of 29 PageID: 3457
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
`
`
`
`“tick-by-tick basis”
`(’336 patent at 1, 11)
`
`Construction:
`This term uses plain and ordinary words and thus
`requires no construction.
`
`GAIN’s Proposed Construction
`and Evidence
`(4) Rebuttal of any arguments presented by
`Plaintiff’s expert.
`Construction:
`“based on each change in current value of the
`asset”
`
`Should the Court determine that a construction is
`necessary, then OANDA proposes that the term
`“on a tick-by-tick basis” has a construction of “at
`each price change”
`
`Intrinsic Evidence:
`’336 Patent, 7:52-8:40
`August 24, 2004, Applicant Remarks in Response
`to Office Action (p. 217 of File History).
`All evidence cited by GAIN in its Local Patent
`Rule 4.2 disclosures.
`
`Extrinsic Evidence:
`OANDA may offer the testimony of expert
`witnesses:
` Prof. Michael Shamos
`Ivan Zatkovich
`
`on the following:
` Background of the relevant technology;
` State of the art prior to the filing and issuance
`of the ’311 and ’336 patents;
` The commonly understood meaning in the
`relevant art as to the claim terms; and
`
`Intrinsic Evidence:
`Specification
`● ’336 Patent at 7:52-8:40, 8:62-9:2, 12:62-
`13:13, Claims 1, 11.
`Prosecution History
`● October 7, 2003 Office Action at pp. 2-8 and
`prior art cited therein.
`● December 30, 2003 Response to October 7,
`2003 Office Action at pp. 6-12 and prior art cited
`therein.
`● March 24, 2004 Office Action at pp. 2-10 and
`prior art cited therein.
`● August 24, 2004 Response to March 24, 2004
`Office Action at 8-15 and prior art cited therein.
`● November 16, 2004 Office Action at pp. 2-6
`and prior art cited therein.
`● February 10, 2005 Response to November 16,
`2004 Office Action at pp. 9-18 and prior art cited
`therein.
`● July 13, 2005 Office Action at pp. 2-7 and prior
`art cited therein.
`● September 15, 2005 Response to Office Action
`at p. 7.
`
`A-6
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 12 of 29 PageID: 3458
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
` Rebuttal of any arguments presented by
`Defendants
`
`
`
`“pricing engine” (’336
`patent at claims 1-7,
`11)
`
`Construction:
`“Software that sets a currency exchange rate
`made available to currency traders”
`
`A-7
`
`GAIN’s Proposed Construction
`and Evidence
`● October 13, 2005 Office Action at 2-5 and
`prior art cited therein.
`● February 13, 2006 Response to Office Action
`at p. 7.
`● July 25, 2006 Notice of Allowance at pp. 2-9
`and prior art cited therein.
`
`Extrinsic Evidence
`● Cross, S.Y., “All About…the Foreign
`Exchange Market in the United States,” Fed.
`Reserve Bank N.Y. (1998) (“Cross 1998”) at p.
`34 [GAIN_0000653].
`● A Dictionary of Finance and Banking Second
`Edition (1997) at GAIN_0200111:
`tick (point): “The smallest increment of price
`fluctuation in a commodity market.”
`● GAIN may offer the testimony of an expert
`witness, Bernard Donefer. Prof. Donefer may
`testify as to the following:
`(1) Background of the relevant technology;
`(2) State of the art prior to issuance of the
`asserted patents;
`(3) The commonly understood meaning in the
`relevant art as to the term “tick”
`and “tick-by-tick” and the meanings of the
`various definitions and uses
`Construction:
`These terms are indefinite under
`35 U.S.C. § 112 ¶ 6.
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 13 of 29 PageID: 3459
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
`Not a means plus function term.
`
`Should the Court determine that this claim term is
`governed by § 112 ¶ 6, OANDA identifies
`sufficient structure disclosure in the ’336 Patent.
`See ’336 Patent, Fig. 3-4, 16; ’336 Patent, 9:52-
`10:15; 1:45-2:45; 6:3-9:48.
`
`Intrinsic Evidence:
`’336 Patent, 1:45-2:45
`’336 Patent, 5:35-41
`’336 Patent, 7:14-35
`’336 Patent, 6:3-9:48
`’336 Patent, 9:52-10:15
`’336 Patent, Fig. 3-4, 16;
`Response to Office Action (p. 185 of File
`History).
`All evidence cited by GAIN in its Local Patent
`Rule 4.2 disclosures.
`
`Extrinsic Evidence:
`OANDA may offer the testimony of expert
`witnesses:
` Prof. Michael Shamos
`Ivan Zatkovich
`
`on the following:
` Background of the relevant technology;
` State of the art prior to the filing and issuance
`of the ’311 and ’336 patents;
`
`A-8
`
`GAIN’s Proposed Construction
`and Evidence
`Intrinsic Evidence:
`Specification
`● ’336 Patent at Fig. 3, Fig. 4, 1:47-2:45, 5:35-
`47, 6:50-7:2, 7:14-36, 9:11-18, Claims 1-11.
`Prosecution History
`● October 7, 2003 Office Action at pp. 2-8 and
`prior art cited therein.
`● December 30, 2003 Response to October 7,
`2003 Office Action at pp. 6-12 and prior art cited
`therein.
`● March 24, 2004 Office Action at pp. 2-10 and
`prior art cited therein.
`● August 24, 2004 Response to March 24, 2004
`Office Action at 8-15 and prior art cited therein.
`● November 16, 2004 Office Action at pp. 2-6
`and prior art cited therein.
`● February 10, 2005 Response to November 16,
`2004 Office Action at pp. 9-18 and prior art cited
`therein.
`● July 13, 2005 Office Action at pp. 2-7 and prior
`art cited therein.
`● September 15, 2005 Response to Office Action
`at p. 7.
`● October 13, 2005 Office Action at 2-5 and
`prior art cited therein.
`● February 13, 2006 Response to Office Action
`at p. 7.
`● July 25, 2006 Notice of Allowance at pp. 2-9
`and prior art cited therein.
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 14 of 29 PageID: 3460
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
` The commonly understood meaning in the
`relevant art as to the claim terms; and
` Rebuttal of any arguments presented by
`Defendants
`
`
`
`“hedging engine” (’336
`patent at claim 7)
`
`Construction:
`“Software that determines when to control risk in
`a currency trading system”
`
`A-9
`
`GAIN’s Proposed Construction
`and Evidence
`Extrinsic Evidence
`● Microsoft Computer Dictionary Fourth Edition
`(1999) at GAIN_0200115:
`engine: “A processor or portion of a program
`that determines how the program manages and
`manipulates data. The term engine is most often
`used in relation to a specific use; for example, a
`database engine contains the tools for
`manipulating a database, and a Web search
`engine has the ability to search World Wide Web
`indexes for matches to one or more key words
`entered by the user. Compare back-end
`processor, front-end processor.”
`● GAIN may offer the testimony of an expert
`witness, Bernard Donefer. Prof. Donefer may
`testify as to the following:
`(1) Background of the relevant technology;
`(2) State of the art prior to issuance of the
`asserted patents;
`(3) The commonly understood meaning in the
`relevant art as to the term “pricing engine” and
`the meanings of the various definitions and uses
`of that phrase in the claims, the specification, the
`prosecution history; and
`(4) Rebuttal of any arguments presented by
`Plaintiff’s expert.
`Construction:
`These terms are indefinite under
`35 U.S.C. § 112 ¶ 6.
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 15 of 29 PageID: 3461
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
`
`Not a means plus function term.
`
`Should the Court determine that this claim term is
`governed by § 112 ¶ 6, OANDA identifies
`sufficient structure disclosure in the ’336 Patent.
`See ’336 Patent, Fig. 3-4, 16; ’336 Patent, 9:52-
`10:15; 1:45-2:45; 6:3-9:48.
`
`Intrinsic Evidence:
`’336 Patent, 6:65-67
`’336 Patent, 9:19-25
`’336 Patent, 1:45-2:45
`’336 Patent, 6:3-9:48
`’336 Patent, 9:52-10:15
`’336 Patent, Fig. 3-4, 16
`All evidence cited by GAIN in its Local Patent
`Rule 4.2 disclosures.
`
`Extrinsic Evidence:
`OANDA may offer the testimony of expert
`witnesses:
` Prof. Michael Shamos
`Ivan Zatkovich
`
`on the following:
` Background of the relevant technology;
` State of the art prior to the filing and issuance
`of the ’311 and ’336 patents;
` The commonly understood meaning in the
`relevant art as to the claim terms; and
`
`A-10
`
`GAIN’s Proposed Construction
`and Evidence
`Intrinsic Evidence:
`Specification
`● ’336 Patent at Fig. 3, Fig. 4, 1:47-2:45, 5:35-
`60, 6:50-7:2, 9:11-29, 9:25-28 (citing U.S. patent
`application Ser. No. 09/764,366, filed Jan. 18,
`2001, to Müller et al., issued as U.S. Patent No.
`7,467,110), Claims 1-11.
`Prosecution History
`● October 7, 2003 Office Action at pp. 2-8 and
`prior art cited therein.
`● December 30, 2003 Response to October 7,
`2003 Office Action at pp. 6-12 and prior art cited
`therein.
`● March 24, 2004 Office Action at pp. 2-10 and
`prior art cited therein.
`● August 24, 2004 Response to March 24, 2004
`Office Action at 8-15 and prior art cited therein.
`● November 16, 2004 Office Action at pp. 2-6
`and prior art cited therein.
`● February 10, 2005 Response to November 16,
`2004 Office Action at pp. 9-18 and prior art cited
`therein.
`● July 13, 2005 Office Action at pp. 2-7 and prior
`art cited therein.
`● September 15, 2005 Response to Office Action
`at p. 7.
`● October 13, 2005 Office Action at 2-5 and
`prior art cited therein.
`● February 13, 2006 Response to Office Action
`at p. 7.
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 16 of 29 PageID: 3462
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
` Rebuttal of any arguments presented by
`Defendants
`
`GAIN’s Proposed Construction
`and Evidence
`● July 25, 2006 Notice of Allowance at pp. 2-9
`and prior art cited therein.
`● U.S. patent application Ser. No. 09/764,366,
`filed Jan. 18, 2001, to Müller et al., issued as U.S.
`Patent No. 7,467,110 at Fig. 7, Fig. 8, 1:24-35,
`1:64-65, 2:10-13, 2:25-40, 2:42-53, 2:54-3:3, 3:4-
`29, Claims 1-36.
`
`Extrinsic Evidence
`● Microsoft Computer Dictionary Fourth Edition
`(1999) at GAIN_0200115:
`engine: “A processor or portion of a program
`that determines how the program manages and
`manipulates data. The term engine is most often
`used in relation to a specific use; for example, a
`database engine contains the tools for
`manipulating a database, and a Web search
`engine has the ability to search World Wide Web
`indexes for matches to one or more key words
`entered by the user. Compare back-end
`processor, front-end processor.”
`● GAIN may offer the testimony of an expert
`witness, Bernard Donefer. Prof. Donefer may
`testify as to the following:
`(1) Background of the relevant technology;
`(2) State of the art prior to issuance of the
`asserted patents;
`(3) The commonly understood meaning in the
`relevant art as to the term “hedging engine” and
`the meanings of the various definitions and uses
`
`A-11
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 17 of 29 PageID: 3463
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
`
`
`
`“trading client system”
`(’311 patent, all
`claims)
`
`Construction:
`This term uses plain and ordinary words and thus
`requires no construction.
`
`Should the Court determine that a construction is
`necessary, then OANDA proposes a construction
`of “system that receives currency market
`information over a computer network from a
`trading system server”
`
`Intrinsic Evidence:
`’311 Patent, 1, 3
`’311 Patent, 2:4-48.
`’311 Patent, 6:30-45
`’311 Patent, 10:18-30
`’311 Patent, 11:9-36
`All evidence cited by GAIN in its Local Patent
`Rule 4.2 disclosures.
`
`Extrinsic Evidence:
`OANDA may offer the testimony of expert
`witnesses:
` Prof. Michael Shamos
`Ivan Zatkovich
`
`on the following:
` Background of the relevant technology;
`
`A-12
`
`GAIN’s Proposed Construction
`and Evidence
`of that phrase in the claims, the specification, the
`prosecution history; and
`(4) Rebuttal of any arguments presented by
`Plaintiff’s expert.
`Construction:
`These terms are indefinite under
`35 U.S.C. § 112 ¶ 1.
`
`Intrinsic Evidence:
`Specification
`●’311 Patent at Fig. 1, Fig. 3, Fig. 4, Fig. 16,
`1:36-42, 1:47-2:45, 3:8-63, 4:10-20, 4:36-
`66, 6:3-9:57, 10:30-10:45-17:26, Claims 1-7.
`Prosecution History
`● August 31, 2010 Response to March 31, 2010
`Office Action at pp. 7-9 and prior art cited
`therein.
`● November 9, 2010 Office Action at pp. 2-12
`and prior art cited therein.
`● May 9, 2011 Response to November 9, 2010
`Office Action at pp. 5-9 and prior art cited
`therein.
`● August 2, 2011 Office Action at pp. 2-8 and
`prior art cited therein.
`● January 4, 2012 Response to Final Office
`Action of August 2, 2011 at pp. 1-4 and prior art
`cited therein.
`● September 3, 2012 Respond to Final Office
`Action of August 2, 2011 at p. 1 and prior art
`cited therein.
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 18 of 29 PageID: 3464
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
` State of the art prior to the filing and issuance
`of the ’311 and ’336 patents;
` The commonly understood meaning in the
`relevant art as to the claim terms; and
` Rebuttal of any arguments presented by
`Defendants
`
`
`
`“determining” or
`“determined” (’311
`patent at all claims)
`
`Construction:
`This term uses plain and ordinary words and thus
`requires no construction.
`
`Should the Court determine that a construction is
`necessary, then OANDA proposes a construction
`of “calculating, ascertaining, or deciding” or
`“calculated, ascertained, or decided”
`
`A-13
`
`GAIN’s Proposed Construction
`and Evidence
`● September 3, 2012 Notice of Allowability at
`pp. 2-4 and prior art cited therein.
`● September 4, 2012 Supplemental Response to
`Final Office Action of August 2, 2011 at pp. 1-4
`and prior art cited therein.
`● September 4, 2012 Declaration under 37 C.F.R.
`§1.131 with attached Exhibits.
`
`Extrinsic Evidence
`● GAIN may offer the testimony of an expert
`witness, Bernard Donefer. Prof. Donefer may
`testify as to the following:
`(1) Background of the relevant technology;
`(2) State of the art prior to issuance of the
`asserted patents;
`(3) The commonly understood meaning in the
`relevant art as to the term “trading client system”
`and the meanings of the various definitions and
`uses of that phrase in the claims, the
`specification, the prosecution history; and
`(4) Rebuttal of any arguments presented by
`Plaintiff’s expert.
`Construction:
`“calculating” or “calculated”
`
`Intrinsic Evidence:
`Specification
`● ’311 at Fig. 5, Fig. 11, Fig. 12, Fig. 13, Fig. 15,
`Fig. 16, 1:61-2:48, 3:15-18, 3:32-63, 4:8-23,
`4:26-28, 4:42-62, 5:9-43, 6:35-46, 6:51-62, 7:14-
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 19 of 29 PageID: 3465
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
`
`Intrinsic Evidence:
`’311 Patent, 6:45-65
`’311 Patent, 8:45-60
`’311 Patent, 9:1-18
`’311 Patent, Claims 1-7
`All evidence cited by GAIN in its Local Patent
`Rule 4.2 disclosures.
`
`Extrinsic Evidence:
`Dictionary.com
`OANDA may offer the testimony of expert
`witnesses:
` Prof. Michael Shamos
`Ivan Zatkovich
`
`on the following:
` Background of the relevant technology;
` State of the art prior to the filing and issuance
`of the ’311 and ’336 patents;
` The commonly understood meaning in the
`relevant art as to the claim terms; and
` Rebuttal of any arguments presented by
`Defendants
`
`A-14
`
`GAIN’s Proposed Construction
`and Evidence
`35, 8:54-58, 9:11-13, 10:39-43, 11:49-54, 11:52-
`54, 12:23-26, 13:49-62, 15:6-8, 15:33-36, 15:47-
`62, 16:10 -12, 16:27-30, 17:17-21, 17:28-32,
`17:35-38, 18:15-18, Claims 1-7.
`Prosecution History
`● August 31, 2010 Response to March 31, 2010
`Office Action at pp. 7-9 and prior art cited
`therein.
`● November 9, 2010 Office Action at pp. 2-12
`and prior art cited therein.
`● May 9, 2011 Response to November 9, 2010
`Office Action at pp. 5-9 and prior art cited
`therein.
`● August 2, 2011 Office Action at pp. 2-8 and
`prior art cited therein.
`● January 4, 2012 Response to Final Office
`Action of August 2, 2011 at pp. 1-4 and prior art
`cited therein.
`● September 3, 2012 Respond to Final Office
`Action of August 2, 2011 at p. 1 and prior art
`cited therein.
`● September 3, 2012 Notice of Allowability at
`pp. 2-4 and prior art cited therein.
`● September 4, 2012 Supplemental Response to
`Final Office Action of August 2, 2011 at pp. 1-4
`and prior art cited therein.
`● September 4, 2012 Declaration under 37 C.F.R.
`§1.131 with attached Exhibits.
`
`Extrinsic Evidence
`
`

`

`Case 3:20-cv-05784-ZNQ-DEA Document 103 Filed 01/18/22 Page 20 of 29 PageID: 3466
`
`Claim Term and
`Corresponding Claim1
`
`OANDA’s Proposed Construction
`and Evidence
`
`
`
`“derived” (’311 paten