Nasdaq vs. MIAX: CBM Reviews and Patent Validity Challenges
In early October, the Patent Trial and Appeal Board (PTAB) conducted a series of Covered Business Method (CBM) reviews on Nasdaq’s patents. Miami International Holdings (MIAX), a trading platform provider, initiated these reviews to challenge the validity of patents asserted by Nasdaq in a U.S. district court against MIAX.
Patents Under Review
The PTAB prioritized CBM reviews on several patents owned by Nasdaq:
U.S. Patent No. 7246093:
- Title: Computerized Exchange for Trading Financial Instruments
- Issued: June 2007
- Description: Covers an automated exchange for financial instruments, enhancing liquidity and ensuring fair order handling within the market.
U.S. Patent No. 6618707:
- Same Title as ‘093 Patent
- Issued: September 2003
- Description: Covers an automated exchange specifically for options contracts, enabling the purchase and sale of financial instruments.
U.S. Patent No. 7921051:
- Title: Securities-Based Order Processing Method
- Issued: April 2011
- Description: Covers a system in an electronic securities market with configurable lookup tables for processing orders efficiently.
These patents form part of a series of seven patents Nasdaq cited in a patent infringement suit against MIAX in the District of New Jersey. Nasdaq alleged that MIAX, leveraging technology initially developed by Nasdaq and employing at least 15 former Nasdaq employees, expedited the launch of two options exchanges in 2012 and 2017.
CBM Review and Challenges
The CBM reviews initiated by PTAB on Nasdaq’s patents primarily challenge the validity of patent claims based on 35 U.S.C. § 101 grounds, asserting them as directed to patent-ineligible subject matter. For instance, PTAB subjected all nine claims of the ‘093 patent to a Section 101 patent eligibility test based on the framework established in Alice Corp. v. CLS Bank International (2014).
In the first step, PTAB determined that claim 1 of the ‘093 patent was directed to a fundamental economic practice prevalent in the exchange system. Despite Nasdaq’s argument that the claims involved complex software and fully automated systems, PTAB, in the second step of the Alice test, concluded that the claims mainly involved generic and common computer technologies.
Alongside the three Nasdaq patents recently undergoing CBM reviews, MIAX has also challenged the other four patents asserted by Nasdaq in the district court on Section 101 grounds. These challenges are currently in the pre-administration stage at PTAB.
These reviews signify a critical examination of patent validity and the evolving landscape of patent law, especially concerning financial instruments and automated trading systems.