Case 3:20-cv-05784-ZNQ-JTQ Document 217 Filed 07/08/24 Page 1 of 5 PageID: 7057
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`
`
`Arnold B. Calmann
`(973) 645-4828
`abc@saiber.com
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`
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`July 8, 2024
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`
`BY ECF
`
`Honorable Justin Quinn, U.S.M.J.
`United States District Court for the District of New Jersey
`Clarkson S. Fisher Federal Courthouse
`402 East State Street
`Trenton, NJ 08608
`
`Re: Oanda Corporation v. Gain Capital Holdings, Inc., et al.
`Civil Action No. 20-05784-ZNQ-DEA
`
`Dear Magistrate Judge Quinn:
`
`We, along with our co-counsel from Wilson Sonsini Goodrich & Rosati PC, represent
`Defendants GAIN Capital Holdings, Inc. and GAIN Capital Group, LLC (collectively, “GAIN”).
`Following the Court’s claim construction order (Dkt. No. 213) and pursuant to the Joint Case
`Management order (Dkt. No. 166), and to assist the Court as Your Honor transitions to this case,
`Plaintiff OANDA Corp. (“OANDA”) and GAIN submit this joint status letter regarding the status
`of the instant case and the case schedule.
`
`GAIN’s Position
`
`Background
`
`This is a patent case involving electronic trading of foreign currencies. OANDA filed a
`complaint against GAIN on May 11, 2020 alleging that GAIN infringes two patents, U.S. Patent
`No. 7,146,336 (the “’336 patent”) and U.S. Patent No. 8,392,311 (the “’311 patent”) (collectively,
`the “Asserted Patents”). (ECF No. 1.) The Asserted Patents are related (the ’311 patent is a child
`of the ’336 patent) and share the same specification. The patent claims are directed generally to
`using computer networks to trade currencies, and more specifically by aggregating rates from
`financial institutions, determining a market exchange rate, and executing a trade if the rate falls
`within a trader’s acceptable parameters. The ’336 patent contains “system” claims that recite
`various “servers” and “engines” that purportedly take part in executing a trade. (See ECF No. 1-1
`at 18:35-521 (’336 patent, claim 2).) The ’311 patent contains method claims reciting steps
`performed by a “trading system server” and a “trading client system” to effect a trade. See, e.g.,
`ECF No. 1-2 at 17:54-18:24 (’311 patent, claim 1).
`
`
`1 References to “[X]:[Y-Z]” refers to a patent’s column number X and line numbers Y-Z.
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`

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`Case 3:20-cv-05784-ZNQ-JTQ Document 217 Filed 07/08/24 Page 2 of 5 PageID: 7058
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`Hon. Justin Quinn, U.S.M.J.
`July 8, 2024
`Page 2
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`GAIN’s Defenses
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`GAIN has fulsome prior art invalidity defenses under 35 U.S.C. § 103, an unenforceability
`equitable defense (that the patent is unenforceable due to inequitable conduct), and non-
`infringement defenses.
`
`GAIN also previously filed a Rule 12(c) motion for judgment on the pleadings that the
`Asserted Patents fail to meet 35 U.S.C. § 101’s patentable subject matter requirement. (ECF No.
`69). Judge Quraishi applied the Alice two-step legal framework for § 101, which asks (1) whether
`the patent claims are directed to an abstract idea, and if so, then (2) whether the claims include an
`inventive concept such that the claims could be nonetheless eligible for patentability. (ECF No.
`194.) The Court found the claims were directed to an abstract idea at step (1), but at step (2),
`OANDA adequately alleged in its complaint that the claims included an inventive concept
`sufficient to meet its initial pleading requirements.2 (Id. at 9-17.) The Court left the ultimate issue
`of inventiveness under step 2 to be determined. (Id. at 13, 17.) GAIN intends to raise the § 101
`issue again, during summary judgment or at such other time as the Court deems appropriate.
`
`With respect to damages (to the extent OANDA’s patents are not found to be valid or
`unenforceable and are found to be infringed), OANDA has represented that it intends to only seek
`a reasonable royalty in this case, not any lost profits. In addition, OANDA has admitted that it did
`not comply with the marking requirements of 35 U.S.C. § 287 and did not mark products produced
`under the asserted system patent and thus is limited in any damages it may attempt to seek.
`
`Discovery
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`Thus far, some significant discovery has taken place. Document production is largely
`complete. The Court has ruled on multiple discovery motions, including allowing OANDA and
`GAIN to supplement their infringement and invalidity contentions, respectively, and denying an
`OANDA motion to compel certain burdensome discovery from GAIN. (See ECF Nos. 202, 203,
`210.) Some depositions have occurred, but the bulk of depositions have yet to take place.
`Discovery does not close for approximately seven months. There is no outstanding discovery to
`date, and OANDA has not raised any discovery issues with GAIN. Thus, there are no ripe
`discovery disputes at this time.
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`2 This same argument (that the facts pled in the complaint must be taken as true for a Rule 12
`motion) was rejected by another court on different but similar patents asserted against GAIN’s
`parent, StoneX Group, Inc. (“StoneX”). OANDA Corp. v. StoneX Group, Inc., No. 20-cv-07785
`(N.D. Ill.). There, the Northern District of Illinois Court rejected the argument that OANDA’s
`facts pled in the complaint must be taken as true and found that the asserted patents related to
`currency trading were invalid under § 101 and dismissed OANDA’s claims with prejudice.
`(OANDA v. StoneX, ECF No. 52.) That judgment is now final.
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`Case 3:20-cv-05784-ZNQ-JTQ Document 217 Filed 07/08/24 Page 3 of 5 PageID: 7059
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`Hon. Justin Quinn, U.S.M.J.
`July 8, 2024
`Page 3
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`Future Deadlines
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`Most of the remaining significant deadlines are keyed off the issuance date of the claim
`construction order, which the court issued in late June. (ECF Nos. 166, 213.) The parties agree
`that the schedule does not need modification. Neither the date for pre-trial submissions after
`dispositive briefing nor the trial date have been set.
`
`Settlement Efforts
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`While the parties have engaged in private settlement discussions, such discussions have
`been short and unfruitful.
`
`OANDA’s Position
`
`OANDA disagrees with GAIN’s characterizations of the merits, as well as the motion
`practice and discovery disputes to date, but does not wish to burden the Court with unnecessary
`argument. It will therefore address any relevant disagreements in briefing as the issues arise, or
`upon the Court’s request. For purposes of this Status Report, OANDA adds only that while it is
`correct that the parties have engaged in significant document and written discovery to date,
`additional such discovery remains to be done, including on damages issues, with deposition
`testimony from GAIN’s witness showing that its damages production was incomplete.
`
`Joint Position and Proposed Schedule
`
`The parties agree to the following schedule as determined by the Joint Scheduling Order
`(Dkt. No. 166). The parties, however, have agreed to explore the availability of private mediation
`in lieu of a settlement conference, and will let the court know if and when they have agreed to
`mediation.
`
`
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`Event
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`Parties to meet and confer re
`case schedule in light of
`issued orders
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`Settlement Conference
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`Status Conference with
`Magistrate Judge Quinn
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`Deadline
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`Date calculated
`
`Within 7 days after Markman
`Order
`
`July 3, 2024
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`Within 30 days after
`Markman Order
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`Approximately 30 days after
`Markman Order, at the
`convenience of the Court
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`July 26, 2024
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`July 26, 2024
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`Case 3:20-cv-05784-ZNQ-JTQ Document 217 Filed 07/08/24 Page 4 of 5 PageID: 7060
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`
`Hon. Justin Quinn, U.S.M.J.
`July 8, 2024
`Page 4
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`Event
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`Deadline
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`Date calculated
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`Disclosure of advice of
`counsel (LPR 3.8)
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`Substantial completion of
`document production and
`certification of substantial
`completion (LPR 2.1(a)(6))
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`Close of Fact Discovery
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`45 days after Markman Order August 12, 2024
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`150 days after Markman
`Order
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`November 25, 2024
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`240 days after Markman
`Order
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`February 21, 2025
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`Expert Report: Opening (by
`burden of proof)
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`60 days after close of fact
`discovery
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`April 22, 2025
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`Expert Report: Rebuttal
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`60 days after opening reports
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`June 23, 2025
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`Expert Report: Reply
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`45 days after rebuttal
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`August 7, 2025
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`Expert Report: Plaintiff’s
`Reply on 2d Considerations
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`Close of expert discovery,
`including depositions
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`Settlement conference
`
`45 days after Reply
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`September 22, 2025
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`45 days after last reply report November 6, 2025
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`30 days after close of expert
`discovery
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`December 8, 2025
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`Status Conference with
`Magistrate Judge
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`TBD
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`TBD
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`Deadline to file dispositive
`motions
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`45 days after close of expert
`discovery; subsequent
`briefing schedule TBD
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`December 22, 2026
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`Deadline to file motions in
`limine
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`TBD
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`Deadline to file pre-trial order TBD
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`Pre-trial conference
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`Trial Date
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`TBD
`
`TBD
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`
`
`
`
`TBD
`
`TBD
`
`TBD
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`TBD
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`Case 3:20-cv-05784-ZNQ-JTQ Document 217 Filed 07/08/24 Page 5 of 5 PageID: 7061
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`Hon. Justin Quinn, U.S.M.J.
`July 8, 2024
`Page 5
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`Arnold B. Calmann
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`ABC/kae
`cc: All Counsel of Record (by ECF & email)
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