Boston, MA, Oct. 15, 2019 — Fish & Richardson has secured three significant victories for its client Miami International Holdings (MIH) on its petitions for Covered Business Method (CBM) review at the Patent Trial and Appeal Board (PTAB). The petitions challenged the validity of patents asserted by MIH’s competitors concerning securities trading. In each decision, the PTAB found that the challenged patents claimed ineligible subject matter, resulting in a finding that all challenged claims of all three patents were invalid — a sweeping victory for our client.
MIH developed and operates the Miami International Securities Exchange (MIAX), a trading platform designed to meet the unique functional and performance demands of derivatives trading. The company has rapidly expanded its market share in the stock options space over the past several years.
“A far larger competitor picked a fight with MIH, but MIH didn’t back down,” said Michael Zoppo, a principal with Fish. “This is a huge win for MIH and the financial services industry as a whole. And Fish continues its legacy of success handling the most important and contentious IP disputes in the financial services sector.”
In the two petitions filed against Nasdaq ISE, Miami International Holdings, Inc. et al. v. Nasdaq ISE, LLC (CBM2018-00021 and CBM2019-00031), MIH requested the review of two separate patents (6,618,707 and 7,246,093) that claimed an automated exchange for trading derivative securities. In its decisions, issued on Oct. 1, the PTAB found that MIH had “met the burden of showing, by a preponderance of the evidence,” that the challenged claims of ISE’s patents were invalid.
In Miami International Holdings, Inc. et al. v. FTEN, Inc. (CBM2018-00020), issued Oct. 10, the PTAB issued the same ruling regarding FTEN’s patent (8,386,371) that claimed a system for canceling orders for financial articles of trades.
“These cases yet again demonstrate the role of CBM, and post-grant proceedings generally, in driving patent quality,” said Principal Karl Renner, lead PTAB counsel and co-chair of Fish & Richardson’s Post-Grant practice. “Through these proceedings, MIH was able to resolve questions of patent eligibility without suffering the inefficiencies and distraction of full blown litigation. This is a victory for our patent system.”
CBM review is a post-grant proceeding established under the America Invents Act (AIA) that is available exclusively for patents covering financial products and services. The proceedings are scheduled to expire in September 2020 in accordance with the AIA’s sunset provisions.
Fish’s trial team that represented MIH included Renner, Zoppo; Principals Thomas Rozylowicz and Andrew Patrick; Associate Yao Wang; and Technology Specialist/Patent Agent Usman Khan. MIH also received invaluable guidance and insight from its general counsel, Barbara Comly.
Fish & Richardson, a premier global intellectual property law firm, is sought after and trusted by the world’s most innovative brands and influential technology leaders. Fish offers patent prosecution, counseling and litigation; and trademark and copyright prosecution, counseling and litigation. Our deep bench of attorneys with first-chair trial experience in every technology makes us the go-to firm for the most technically complex cases. We have an established reputation as a top-tier firm for patent portfolio planning, strategy and prosecution, as well as post-grant proceedings at the PTAB. Fish was established in 1878, and now has more than 400 attorneys and technology specialists in the U.S., Europe and China. Our success is rooted in our creative and inclusive culture, which values the diversity of people, experiences and perspectives. For more information, visit fr.com or follow us at @FishRichardson.