The PTAB held that all of the challenged claims of U.S. Patent No. 7,933,827 titled “Multi-parallel Architecture and Method of Using the Same,” are unpatentable under 35 U.S.C. Section 101. MIAX is represented in this proceeding by Christine M. Morgan, Lisa A. Chiarini, Eric Hutz, James C. Martin, Sidharth Kapoor and Amardeep Grewal of the Reed Smith’s IP, Tech & Data Practice. Lisa A. Chiarini, Christine M. Morgan and Sidharth Kapoor also represent MIAX in the related district court litigation.
“Today’s decision, coupled with the PTAB’s previous invalidations of every other patent Nasdaq asserted against MIAX, further strengthens MIAX’s right to operate its successful trading exchanges,” said Morgan. “These rulings may allow more entrepreneurial FinTech companies to enter the securities trading market and permit competition to flourish,” said Chiarini.
Morgan argued before the PTAB in July that the claims of the ’827 patent are invalid under the 2014 U.S. Supreme Court decision Alice Corp v. CLS Bank, which held that claims directed to an abstract idea are not patentable under Section 101 of the U.S. Patent Code. Based on the Alice precedent, MIAX asserted that Nasdaq’s patent claims, as with those in Nasdaq’s ’051 Patent previously invalidated by the PTAB, merely recite routing information to a particular destination using generic computer technology. The PTAB agreed with MIAX that under Alice, such processes are not patent-eligible. Previously, the PTAB had accepted Chiarini’s successful argument that Nasdaq’s ’506 Patent is invalid because it merely claims the abstract idea of monitoring the availability of a primary recipient using well-known, conventional technology.
MIAX has therefore successfully derailed all of Nasdaq’s claims of patent infringement in the related district court litigation.
“These decisions in MIAX’s favor reinforce that FinTech patents that claim abstract ideas implemented on generic electronic systems are invalid,” said Chiarini. Hutz added, “they have staked out the boundary of what is not ‘patentable’ in this space and provide additional clarity about the reach and applications of the holding in Alice.”
“This decision, as with the others, is well reasoned, thorough, and supported by the evidence of record. We anticipate that the decisions in favor of MIAX will be upheld upon any attempts by Nasdaq to appeal to the Federal Circuit,” said Chiarini.
About Reed Smith
Reed Smith is a dynamic international law firm, dedicated to helping clients move their businesses forward. Its long-standing relationships, international outlook, and collaborative structure make it a go-to partner for speedy resolution of complex disputes, transactions, and regulatory matters.
About Reed Smith’s Fintech IP Practice
At Reed Smith, we recognize the complexity that the FinTech sector causes you and your business. Our market-leading experience within the financial industry, intellectual property litigation, corporate transactions, capital markets, investment management and funds, information technology, privacy and data security sectors means we are uniquely positioned to provide our skills, services and advice for the FinTech sector. By combining the litigation firepower and trial experience of a leading international law firm with our deep knowledge of FinTech technology, we readily apply a pragmatic and commercial approach to preserve and protect your most valuable assets. We litigate IP disputes of all types, including those involving patents, copyrights, trademarks, designs, unfair competition and trade secrets.
For further information, please visit reedsmith.com.
