Case 3:20-cv-05784-ZNQ-JTQ Document 213 Filed 06/26/24 Page 1 of 17 PageID: 7038
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`NOT FOR PUBLICATION
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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`OANDA CORPORATION
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`Plaintiff,
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`v.
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`GAIN CAPITAL HOLDINGS, INC., et al.,
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`Defendants.
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`QURAISHI, District Judge
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`Civil Action No. 20-5784 (ZNQ) (JTQ)
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`CLAIM CONSTRUCTION
`OPINION & ORDER
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`In this claim construction Opinion and Order, the Court construes disputed claim terms in
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`two patents that are directed to systems and methods for currency trading. The parties submitted
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`the following briefs: Opening Brief (“POB,” ECF No. 105) filed by Plaintiff OANDA Corporation
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`(“OANDA” or “Plaintiff”), Opening Brief (“DOB,” ECF No. 106) filed by Defendants Gain
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`Capital Holdings Inc. (“Holdings”) and Gain Capital Group, LLC (“Capital”) (collectively,
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`“Defendants”); Plaintiff’s Responsive Brief (“PRB,” ECF No. 109) and Defendants’ Responding
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`Brief (“DRB,” ECF No. 110). After reviewing the parties’ submissions and conducting a
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`Markman hearing on October 6, 2022, the Court construes the disputed terms as set forth herein.
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`I.
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`BACKGROUND AND PROCEDURAL HISTORY
`The Parties
`A.
`OANDA is the owner, by assignment, of U.S. Patent Nos. 7,146,336 (the ’336 Patent) and
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`8,392,311 (the ’311 Patent) (together, “the Patents.”) 1 (Amended Complaint (“FAC”) ¶ 3, ECF
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`No. 59.) The Amended Complaint alleges that the Patents teach methods and systems that solve
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`1 The ’311 Patent is a continuation of the ’336 Patent. Accordingly, the two patents share a common specification.
`1
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`the deficiencies of then-existing online currency trading, such as allowing for execution of online
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`currency transactions with only two communications instead of the “three-way handshake,”
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`thereby eliminating the previous problems with timing lags, and providing built-in automated
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`protections against price fluctuations. (Id. ¶ 19.)
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`Capital is a Delaware LLC located in New Jersey. (Id. ¶ 5.) Capital owns and operates the
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`website https://forex.com that “provides foreign exchange (‘forex’ or ‘FX’) trading and brokerage
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`services, including an online trading platform that infringes the claims of the patents in suit.” (Id.
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`¶ 6.)
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`Holdings is a Delaware corporation that shares its address in New Jersey with Capital. (Id.
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`¶ 4.) Holdings owns and operates the website https://www.gaincapital.com, and uses the services
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`of Capital “including
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`the application programming
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`interfaces
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`(APIs) provided by
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`https://forex.com, to operate automated trading platform(s).” (Id. ¶ 7.)
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`B.
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`Procedural History
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`Plaintiff filed a Complaint against Defendants on May 11, 2020. (ECF No. 1.) Defendants
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`filed a Motion to Dismiss on July 17, 2020. (ECF No. 24.) Defendants also filed a Motion to Stay
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`this action pending resolution of petitions for Covered Business Method (CBM) Review that they
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`had previously filed with the Patent Trial and Appeals Board (“PTAB”). (ECF No. 34.) In a single
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`decision, the Court denied the Motion to Stay, and granted in part and denied in part the Motion
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`to Dismiss. (ECF No. 52.) The PTAB later declined to institute CBM Review of the Patents.
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`(ECF Nos. 48-1, 48-2.)
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`Plaintiff filed a First Amended Complaint on April 20, 2021 that alleges infringement of
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`the Patents, as well as contributory or induced infringement and willful infringement. (FAC ¶¶ 21–
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`25.) More specifically, Plaintiff alleges that Defendants have infringed one or more claims of the
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`Patents by making, using, selling, offering for sale, or selling products and/or services, and that
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`Capital has made, used, sold, and offered for sale infringing instrumentalities at https://forex.com,
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`2
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`and Holdings has used those infringing instrumentalities, including the application programming
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`interfaces (“APIs”), to operate automated infringing trading systems. (Id. ¶¶ 66, 72.)
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`II.
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`JURISDICTION
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`Based on Plaintiff’s claims for patent infringement, the Court has subject matter
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`jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338.
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`III. LEGAL STANDARD
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`A patent infringement case involves two steps: construing the claims and determining
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`whether the accused product infringes the claims. See Markman v. Westview Instruments, Inc., 52
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`F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996); Hormone Research Found.,
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`Inc. v. Genentech, Inc., 904 F.2d 1558, 1562 (Fed. Cir. 1990), cert. dismissed, 499 U.S. 955 (1991).
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`Claim construction is primarily a question of law. See Teva Pharm. U.S.A., Inc. v. Sandoz,
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`Inc., 574 U.S. 318, 325–26 (2015). It begins with the claim language. Innova/Pure Water, Inc. v.
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`Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Markman, 52 F.3d at 980.
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`Claim language is generally “given [its] ordinary and customary meaning.” Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims
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`themselves . . . to define the scope of the patented invention.”); see also Interactive Gift Express,
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`Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (“In construing claims, the
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`analytical focus must begin and remain centered on the language of the claims themselves, for it
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`is that language that the patentee chose to use to ‘particularly point [] out and distinctly claim[] the
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`subject matter which the patentee regards as his invention.’”) (quoting 35 U.S.C. § 112). Ordinary
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`meaning is determined by “a person of ordinary skill in the art in question at the time of the
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`invention.”2 Phillips v. AHW Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (collecting
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`cases); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003).
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`2 The parties disagree on the proper definition of a person of ordinary skill in the art, but conceded at oral argument
`that the Court need not decide that issue for the purposes of claim construction. See Markman Tr., at 31:6–25.
`3
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`However, if a patentee has used the claim language in some manner other than its ordinary
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`meaning, as indicated by the balance of intrinsic evidence, such as the specification, then that
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`meaning controls. See, e.g., Phillips, 415 F.3d at 1226; Ecolab, Inc. v. Envirochem, Inc., 264 F.3d
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`1358, 1366 (Fed. Cir. 2001); Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336,
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`1344 (Fed. Cir. 2002) (“It is thus necessary to review [intrinsic evidence] to determine whether
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`the patentee has assigned any special meaning to claim terms.”).
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`Because “there is no magic formula or catechism” for determining ordinary meaning, nor
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`a “rigid algorithm” or “specific sequence,” Phillips, 415 F.3d at 1324, a court must read claims in
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`context. See Medrad Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“We
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`cannot look at the ordinary meaning of the term . . . in a vacuum.”); see also DeMarini Sports, Inc.
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`v. Worth, 239 F.3d 1314, 1324 (Fed. Cir. 2001). To this end, a court must consider “the written
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`description and prosecution history,” Medrad, 401 F.3d at 1319, “the specification,” Phillips, 415
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`F.3d at 1313, which is “always highly relevant to the claim construction analysis,” Vitronics, 90
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`F.3d at 1582, because it “may reveal whether the patentee has used a term in a way different from
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`its plain meaning,” Brookhill-Wilk, 334 F.3d at 1298, and “the surrounding words of the claim.”
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`ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).
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`Even “[o]ther claims of the patent in question, both asserted and unasserted, can [] be
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`valuable sources of enlightenment as to the meaning of a claim term.” Vitronics, 90 F.3d at 1582.
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`In short, the “entire patent” matters, Phillips, 415 F.3d at 1313; Multiform Desiccants, Inc. v.
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`Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998), and “[t]he construction that stays true to the
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`claim language” while “most naturally align[ing] with the patent’s description of the invention will
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`be, in the end, the correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
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`1243, 1250 (Fed. Cir. 1998).
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`In addition to “the words of the claims themselves, the remainder of the specification, [and]
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`the prosecution history,” a court may also consider “extrinsic evidence concerning relevant
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`4
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`scientific principles, the meaning of technical terms, and the state of the art.” Innova, 381 F.3d at
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`1116; see also Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1364 (Fed.
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`Cir. 2004).
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`IV. DISCUSSION
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`The parties’ briefing addresses six claim terms, which the Court considers below.
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`A.
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`Term 1: “in communication with”
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`The parties’ first term for construction is “in communication with.” The term is used
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`repeatedly in several of the claims of the ‘336 Patent. For example, claim 1 of the ‘336 Patent
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`recites:
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`1. A system for trading currencies over a computer network,
`comprising:
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`(a) a server front-end in communication with said computer
`network;
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`(b) a database;
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`(c) a transaction server in communication with said server front-end
`and with said database;
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`(d) a rate server in communication with said server front-end; and
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`(e) a pricing engine in communication with said rate server; and
`further comprising an interest rate manager in communication with
`said transaction server and said database, wherein said interest rate
`manager is operative to calculate, pay out, and collect interest on a
`tick-by-tick basis.
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`(‘336 Patent 18:19–35, ECF No. 105-2) (emphases added). In short, the claimed “system” can be
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`viewed as a collection of components that are in communication with each other.
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`OANDA argues that the Court should apply the plain and ordinary meaning of “in
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`communication with” because the language is plain and would be readily understood by a POSA.
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`(POB at 9–11.) Defendants disagree. They contend that “in communication with” should be
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`construed more narrowly as “in direct communication” based on how a POSA would interpret the
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`intrinsic record. (DOB at 14–18.) Defendants highlight the way Figure 3 of the ‘336 Patent depicts
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`5
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`direct connections between the relevant components of the systems. (Id. at 15.) According to
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`Defendants, this is also consistent with the way the ‘336 Patent’s specification uses the terms
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`“communication” and “communicate.” (Id. at 15–16.)
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`Generally, absent lexicography or disclaimer—neither of which the parties argue here—
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`the rule is that a claim term is to be given its ordinary and customary meaning, i.e., the one that a
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`person of ordinary skill in the art would ascribe to it at the time of the invention.3 Phillips, 415
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`F.3d at 1312–3; Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). To
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`discern the meaning of “in communication with”, the Court begins by considering the language of
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`the claims themselves.
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`1.
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`The Claim Language
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`The ’336 Patent includes eleven claims, seven of which are independent. Each of the seven
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`independent claims consistently uses the term “in communication with” to describe the
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`connections between the components of the system. None of the independent claims provide
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`additional limitations that further define or even distinguish the claim term. Likewise, none of the
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`dependent claims introduce additional, potentially informative limitations. Accordingly, the Court
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`finds the claims of the ‘336 Patent provide no guidance.
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`2.
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`The Specification
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`The term “in communication with,” the term does not appear in the specification. As
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`support for their position that “direct” should be inserted, Defendants point to Figure 3, which
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`depicts the trading system. Figure 3 does show certain components joined by unbroken lines in a
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`way that suggests a direct connection between those components. The significance of this is
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`limited however, because as the disclosure of the ‘336 Patent makes clear, Figure 3 is merely
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`describing a preferred embodiment of the claimed system rather than defining the invention. See
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`3 Consistent with the stipulation and order entered in this case, Defendants advise that they are not arguing at this stage
`of the litigation that the term is indefinite, but reserve their right to do so at a later time. DRB at 3 n. 2; (ECF No.
`114).
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`6
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`‘336 Patent4 2:53–54 (“FIG 3. depicts modules of a preferred trading system server.” (emphasis
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`added); 3:5–6, 6:20–9:49 (describing the claimed trading system server within the section of the
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`disclosure devoted to “Detailed Description of the Preferred Embodiments”) (emphasis added).
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`As a corollary to the settled canon of claim construction that limitations from the specification
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`should not be read into the claims,5 the Federal Circuit has advised that “it is improper to read
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`limitations from a preferred embodiment described in the specification—even if it is the only
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`embodiment—into the claims absent a clear indication in the intrinsic record that the patentee
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`intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913
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`(Fed. Cir. 2004). Here, the Court finds no indication in the specification, much less a clear one,
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`that the inventors intended to limit their claims to trading systems whose components were in
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`direct communication with each other. In fact, there is evidence to the contrary. In two points in
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`the specification show below, the inventors specifically call out a direct communication and a
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`direct connection.
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`(11) Partner Bank Interface 335. This module communicates
`directly with the backend Partner Bank to issue trades and obtain
`account information.
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`‘336 Patent 9:29–31 (emphasis added).
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`For security reasons, the Database 310 is on a separate back-end
`network; this way, it is not connected directly to the Internet and can
`only be accessed by the Transaction Server 355:
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`‘336 Patent 9: 63–66 (emphasis added). This suggests that the inventors were conscious of a
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`distinction between a direct communication and a broader concept of “in communication with”
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`that encompasses both direct and indirect communication. Because the inventors appear to have
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`intentionally specified the broader language in their claims, the Court rejects Defendants’ proposed
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`4 The Court cites to the relevant portions of the patents in this opinion by their column and line.
`5 The Federal Circuit recently re-endorsed this canon in Sorrel Holdings, LLC v. Infinity Headwear & Apparel, LLC,
`App. No. 22-1964, 2024 WL 413432, at *2 (Fed. Cir. Feb. 5, 2024) (“[W]e have repeatedly held that courts should
`not read limitations from the specification into the claims.”)
`7
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`construction of “in direct communication” because it does not “naturally align with the patent’s
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`description.” Phillips, 415 F.3d at 1316 (citation omitted).6 Accordingly, the Court concludes
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`that “in communication with” should be given its plain and ordinary meaning. In order to
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`conclusively resolve the parties’ dispute, the Court finds that the term should be defined as “in
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`direct or indirect communication with.” See O2 Micro Intern. Ltd. v. Beyond Innovation
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`Technology Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs
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`no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more
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`than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the
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`parties’ dispute.”)7
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`B.
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`Term 4: “determining/determined”
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`The ’311 Patent includes seven claims directed to methods of trading currencies. There
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`are two independent claims: 1 and 7. Claim 1 is exemplary and uses the term “determining” in the
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`first step (i) of the method:
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`1. A method of trading currencies over a computer network
`connecting a trading system server and at least one trading client
`system, comprising the steps of:
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`(i) at the trading system server, determining and dynamically
`maintaining a plurality of current exchange rates, each current
`exchange rate relating to a pair of currencies and including a first
`price to buy a first currency of the pair with respect to a second
`currency of the pair and a second price to sell the first currency of
`the pair with respect to the second currency of the pair;
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`6 Although not argued by the parties, the Court further finds that the instances Defendants cite in the specification in
`favor of their proposed construction do not “rise to the level of either lexicography or disavowal” required to narrow
`the construction of “in communication with” to “in direct communication with.” See Thorner v. Sony Computer
`Entertainment America LLC, 669 F.3d 1362, 1368 (Fed. Cir. 2012) (rejecting district court’s construction of
`“attached” that impermissibly narrowed the term’s definition to an attachment to an exterior surface because the
`specification lacked the clear and explicit statement sufficient to justify either lexicography or disavowal.)
`7 A patent’s prosecution history is typically reviewed by a court as part of its consideration of the intrinsic record for
`claim construction. Here, the parties do not cite the prosecution history beyond Defendant’s passing assertions that
`nothing there supports OANDA’s positions. (See DOB at 23; DRB at 1, 22.) Accordingly, the Court does not consider
`the prosecution history of the patents in suit for the purposes of its present claim construction.
`8
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`(ii) transmitting data from the trading system server to a trading
`client system, the transmitted data representing at least one current
`exchange rate at the time of the transmission;
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`(iii) at the trading client system, displaying the first and second
`prices for each received current exchange rate to a user;
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`(iv) at the trading client system, accepting input from the user
`identifying a pair of currencies the user desires to trade, an amount
`of at least one currency of the pair desired to be traded and a
`requested trade price at which it is desired to effect the trade;
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`(v) transmitting the accepted input from the trading client system to
`the trading system server;
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`(vi) at the trading system server, comparing the requested trade price
`to the respective first price or second price of the corresponding
`current exchange rate at that time and, if the respective first price or
`second price of the corresponding current exchange rate at that time
`is equal to or better than the requested trade price, effecting the trade
`at the corresponding respective current exchange rate first price or
`second price and if the corresponding current exchange rate is worse
`than the requested trade price, refusing the trade; and
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`(vii) transmitting from the trading system server to the trading client
`system an indication of whether the trade was refused or transacted
`and, if transacted, an indication of the price the trade was transacted
`at.
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`‘311 Patent 17:53–18:24 (emphasis added). Thus, claim 1 of the ‘311 Patent is essentially a seven-
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`step method for trading currencies over a network, whose steps include “determining and
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`dynamically maintaining a plurality of current exchange rates” “at the trading system server.”
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`The related term “determined” is used in the claims as well, but only in the dependent
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`claims at claims 2 through 6. As an example, claim 2 depends from claim 1 and uses the term
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`“determined” in the context of providing more detail as to how the requested trade price is set at
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`step (iv) of Claim 1:
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`2. The method of claim 1 wherein the requested trade price is
`derived from a respective one of the first price or second price of the
`received current exchange rate and a user input limit value defining
`a maximum acceptable difference between the respective one of the
`first price or second price of the received current exchange rate
`received at the trading client system and the respective one of the
`first price or second price of the corresponding current exchange rate
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`determined at the trading client system at which the trade can be
`effected.
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`‘311 Patent 18:25–33.
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`OANDA again argues that the Court should apply the plain and ordinary meaning of
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`“determined”/“determining” because the language is plain and would be readily understood by a
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`POSA. (POB at 18.) It cites the patent specification and claims in support of its position. GAIN
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`counter-proposes that the term be construed as “calculated”/“calculating.” It argues that this is
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`consistent with the specification’s use “calculating” when it describes the process of “determining
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`and dynamically maintaining a plurality of exchange rates” as recited in claim 1. (DOB at 19.)
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`GAIN also argues that its position is supported by the language of the claims. (Id. at 20–21.)
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`1.
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`The Claim Language
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`All of the claims that use the terms “determining” and “determined” employ it to refer to
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`some means by which the claimed method arrives at one or more numerical figures. See claims 1,
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`2, 3, 5, and 7 (referring to exchange rates), and claim 4 (referring to appropriate values for input
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`fields at step (b) and requested trade price at step (d)).
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`In its opening brief, OANDA and its expert posit that step (d) of claim 4 describes a step
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`of a user choosing between a first price and a second price. (POB at 20.) OANDA argues that
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`this instance of “determining” that suggests a mere choice between two options rather than a
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`calculation supports a construction of “determining” that is broader than GAIN’s proffered
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`definition. (Id.) OANDA does not reiterate this position in its responsive brief or its
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`contemporaneous expert declaration. In fact, it does not mention claim 4 at all in its responsive
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`brief. As GAIN notes in its opening and responsive briefs, step (d) is more than a choice between
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`two prices. A closer reading of claim 4 together with the specification suggests that step (d) instead
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`involves determining (in some fashion) a requested trade price based on the selected first (buy)
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`price, the selected second (sell) price, and a (user-input) limit value. Based on the context, in this
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`instance more than a choice is at play. The Court therefore finds unpersuasive this argument raised
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`in OANDA’s opening briefing, but abandoned in its responsive brief.
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`Because the claims otherwise provide no distinguishing features to aid in construction, the
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`Court turns next to the specification for guidance.
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`2.
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`The Specification
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`Gain cites the claim phrase “determining and dynamically maintaining a plurality of
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`exchange rates” in both claims 1 and 7. It argues that this step is described in the specification as
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`“calculating,” and that a POSA would therefore understand “determining/determined” to mean
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`calculating. (DOB at 19–20.) Gain cites various examples of this from the specification.
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`• “calculating a market exchange rate for the received currency
`trade order” (’311 Patent at 1:65-66, 2:8-9)
`• “the most current ‘market rates’ (as calculated by the system)”
`(’311 Patent at 4:17-18)
`• “where the market price is calculated based on such factors as
`market data, size of the transaction, time of day, the Trading
`System’s current exposure, and predictions on market direction”
`(’311 Patent at 4:47-50)
`• “a current market price for the currency the trader desires to
`purchase is calculated” (’311 Patent at 5:17-18)
`• “the calculated market price is within the limits set by the trader
`in the market order form” (’311 Patent at 5:20-24)
`• “Various methods of calculating such rates are known to those
`skilled in the art” (’311 Patent at 7:17-18)
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`(Id. at 19.)
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`In response, OANDA contends that the inventors’ use of “calculated” in the specification
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`versus “determined” in the claims actually favors its position. In its view, the difference indicates
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`that the inventors were aware of the two terms and could have used the term “calculated” in their
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`claims but chose not to do so.
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`The Court finds OANDA’s argument persuasive. Moreover, Gain’s support from the
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`specification cites either to passages that describe one “aspect” of the invention, i.e., merely one
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`example of the invention,8 or to passages from the detailed description of preferred embodiments.9
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`Imposing a limitation in the way Gain suggests, without a clear indication that the inventors
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`intended one would also be improper under Federal Circuit guidance, as set forth above. Liebel-
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`Flarsheim, 358 F.3d at 913. The Court finds no such clear indication, especially given that the
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`specification itself employs “determining/determined” at four separate points, and its usage in
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`those instances suggests a broader construction insofar as it describes the operation of different
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`elements of the system:
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`For orders, [the Server Front-End] executes the orders by issuing
`appropriate requests to the transaction server after checking the
`margin requirements, the availability of funds, and using rates as
`determined by the pricing engine.
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`‘336 Patent 6:50–62 (emphasis added).
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`The daemons continuously monitor the current rates to determine
`whether action is required.
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`‘336 Patent 8:54–55(emphasis added).
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`This information is made available (a) to the Pricing Engine 325
`(where it is used to set the currency exchange rates made available
`to the traders), (b) to the Hedging Engine 340 so that it can
`determine when to issue trades with the Partner Bankend Bank, [sic]
`and (c) to system operators and Trading System financial engineers
`in real time via a feature-rich Web interface.
`
`‘336 Patent 9:11–17(emphasis added).
`
`(10) Hedging Engine 340. This module continuously monitors
`current Trading System currency positions, the positions held in the
`trader accounts, recent trading activity, and the market direction and
`volatility to determine when to issue a trade with the backend
`Partner Bank.
`
`
`
`8 (’311 Patent at 1:65-66, 2:8-9)
`9 (’311 Patent at 4:17-18), (’311 Patent at 4:47-50), (’311 Patent at 5:17-18), (’311 Patent at 5:20-24), and (’311
`Patent at 7:17-18).
`
`12
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`Case 3:20-cv-05784-ZNQ-JTQ Document 213 Filed 06/26/24 Page 13 of 17 PageID: 7050
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`‘336 Patent 9:19–23 (emphasis added). In sum, the Court rejects Gain’s attempt to narrow the
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`term “determined/determining” to “calculated/calculating,” and finds that its plain and ordinary
`
`meaning should instead apply.
`
`Having resolved the parties’ dispute, the Court finds that no further construction beyond
`
`plain and ordinary meaning is required as to this term. See GPNE Corp. v. Apple Inc., 830 F.3d
`
`1365, 1372 (Fed. Cir. 2016) (“[A] sound claim construction need not always purge every shred
`
`of ambiguity.”) (citation omitted); PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355
`
`(Fed. Cir. 1998) ( “[A]fter the court has defined the claim with whatever specificity and
`
`precision is warranted by the language of the claim and the evidence bearing on the proper
`
`construction, the task of determining whether the construed claim reads on the accused product is
`
`for the finder of fact.”)
`
`C.
`
`Term 2 (“pricing engine”) and Term 3 (“hedging engine”) ,
`
`The parties dispute over “pricing engine” and “hedging engine” is whether the terms should
`
`be treated as means-plus-function limitations under 35 U.S.C. § 112 ¶ 6. Gain argues for the
`
`application of § 112 ¶ 6, OANDA argues against its application.
`
`Means-plus-function claiming occurs when a claim term is drafted in a manner that invokes
`
`35 U.S.C. § 112, para. 6, which states:
`
`An element in a claim for a combination may be expressed as a
`means or step for performing a specified function without the recital
`of structure, material, or acts in support thereof, and such claim shall
`be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc).
`
`A means-plus-function claim construction analysis requires a two-step process. Dyfan,
`
`LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (citation omitted). First, a court
`
`determines whether the disputed limitation is drafted in means-plus-function format, i.e., “whether
`
`[or not] it connotes sufficiently definite structure to a person of ordinary skill in the art.” Id. If
`
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`Case 3:20-cv-05784-ZNQ-JTQ Document 213 Filed 06/26/24 Page 14 of 17 PageID: 7051
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`the claim limitation does connote sufficiently definite structure, it is not written in means-plus-
`
`function format and § 112 ¶ 6 does not apply. However, if the claim limitation is written in means-
`
`plus-function format, the court continues to step two, which requires it to determine “what
`
`structure, if any, disclosed in the specification corresponds to the claimed function.” Williamson
`
`v. Citrix Online, LLC, 792 F.3d, 1339, 1351 (Fed. Cir. 2015) (citation omitted).
`
`In the absence of the word “means,” there is a rebuttable presumption that the limitation is
`
`not drafted in means-plus-function format. Dyfan, 28 F.4th at 1365. This presumption “can be
`
`overcome and § 112 [¶] 6 will apply if the challenger demonstrates that the claim term fails to
`
`‘recite[ ] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure
`
`for performing that function.’” Williamson, 792 F.3d at 1348–49 (citation omitted).
`
`Gain concedes that it must overcome a presumption against means-plus-function treatment
`
`because the disputed terms do not include the word “means.” (DOB at 5–6.) It (and its expert)
`
`nevertheless insists it should still be applied because “pricing engine” and “hedging engine” do
`
`not readily connote structure to a POSA. (Id. at 9–10.) Moreover, they assert that a POSA would
`
`understand that the term “engine” is a nonce term similar to “module,” that should be construed as
`
`means-plus-function terms. (Id. at 9.)
`
`OANDA maintains that its claim language recites sufficient structure to avoid § 112 ¶ 6
`
`treatment and submits its own expert declaration. It argues that the plain and ordinary meaning of
`
`the term should apply. (POB at 14–15.) It objects to Gain’s attempt to characterize “engine” as a
`
`nonce term, and cites various out-of-district court decisions concluding that the term “engine” is
`
`understood to be a software program and is therefore not considered a nonce term. (Id. at 15–17.)
`
`With respect to a means-plus-function analysis, software-related patents differ from other
`
`patents to some degree. Notably, the Federal Circuit has acknowledged that “[u]nlike in the
`
`mechanical arts, the specific structure of software code and applications is partly defined by its
`
`function.” Dyfan, 28 F.4th at 1368. A court can look beyond a term to the functional language to
`
`14
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`Case 3:20-cv-05784-ZNQ-JTQ Document 213 Filed 06/26/24 Page 15 of 17 PageID: 7052
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`see if a POSA would have understood the claim limitation as a whole to connote sufficiently
`
`definite structure. Id.
`
`As a starting point, the claim terms themselves appear to at least suggest their own
`
`functions. It is a “pricing engine” or a “hedging engine” that the claims recite, not merely a generic
`
`engine. As to structure, based on claim 1 of the ‘336 Patent, a POSA would understand, for
`
`example, that a pricing engine is part of the claimed system that is in communication with a rate
`
`server, which is in communication with a server front-end, which is in communication with a
`
`computer network. See ‘336 Patent 18:19-34. This favors