MIAX’ Victory on Patent Dispute

Reed Smith completed its third successive victory for Miami International Holdings, Miami International Securities Exchange, MIAX PEARL, and Miami International Technologies (“MIAX”).

In a series of recent PTAB decisions, MIAX invalidated five of six Nasdaq patents asserted against MIAX in related district court litigation in New Jersey. Reed Smith made it a clean sweep, invalidating the sixth and final patent.

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.

Reed Smith team 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.

Reed Smith team representing MIAX in this proceeding was led by Christine M. Morgan (Picture), Lisa A. Chiarini, Eric Hutz, James C. Martin, Sidharth Kapoor and Amardeep Grewal of the Reed Smith’s IP, Tech & Data Practice.

Involved fees earner: Lisa Chiarini – Reed Smith; Amardeep Grewal – Reed Smith; Eric Hutz – Reed Smith; Sidharth Kapoor – Reed Smith; James Martin – Reed Smith; Christine Morgan – Reed Smith;

Law Firms: Reed Smith;

Clients: Miami International Technologies;

Author: Ambrogio Visconti