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Fish & Richardson Obtains Federal Circuit Affirmance of Patent Infringement Win for the Chicago Board Options Exchange, Incorporated

Tuesday, April 08, 2014

Fish & Richardson announced today that the Court of Appeals for the Federal Circuit has affirmed that the Chicago Board Options Exchange, Incorporated (CBOE) does not infringe the ‘707 patent owned by International Securities Exchange (ISE). The Federal Circuit’s April 7, 2014 ruling came after nearly eight years of fierce litigation that included two district court cases, two Federal Circuit appeals, and ISE’s request for over $400 million in damages plus trebling.

“This is a huge victory and vindication for our client CBOE. ISE’s case was lost after its first appeal to the Federal Circuit. On remand, it tried to litigate a case it knew it didn’t have, but the District Court held ISE to the unfavorable ruling from the first appeal. Yet somehow ISE thought the Federal Circuit would change its mind about its own ruling in this second appeal,” said Jonathan Marshall, a principal at Fish & Richardson who served as co-lead counsel for CBOE. “While we are thrilled to cement this win for CBOE, this is a case that ISE lost a long time ago, and so should have gone away a long time ago. We applaud the perseverance of CBOE’s management and in-house legal team, who saw this case through and allowed justice to be done,” added Fish principal Michael Zoppo, co-lead counsel for CBOE.

The case dates back to November 2006 when ISE sued CBOE in the U.S. District Court for the Southern District of New York alleging that CBOE infringed its patent on an automated exchange. CBOE operates the Hybrid Trading System, which integrates manual open outcry and electronic trading into a single exchange. Fish got the case transferred to the U.S. District Court for the Northern District of Illinois and obtained summary judgment of non-infringement in March 2011.

On appeal, the Federal Circuit ruled in May 2012 that ISE’s ‘707 patent disavowed open-outcry and partially automated exchanges. ISE kept litigating the case on remand, but did not address the issue of disavowal, which allowed Fish to use a series of pre-trial motions to preclude ISE’s entire theory of infringement. This led to ISE’s March 2013 consent judgment of non-infringement in favor of CBOE – moments before opening statements were scheduled to begin.

The Federal Circuit’s April 8, 2014 ruling quotes largely from its prior May 2012 opinion to affirm that the District Court properly applied its prior ruling on disavowal and to affirm the judgment of non-infringement that ISE stipulated to.

The Fish team representing CBOE included Jonathan Marshall, David Francescani, and Michael Zoppo, principals in the firm’s New York office; Frank Porcelli, a principal in the firm’s Boston office; and New York associates Brian Doyle, Leah Edelman, and Jeffrey Mok.

Fish & Richardson is a global patent, intellectual property (IP) litigation, and commercial litigation law firm with more than 400 attorneys and technology specialists across the U.S. and Europe. Fish has been named the #1 patent litigation firm in the U.S. for 10 consecutive years. Fish has been winning cases worth billions in controversy – often by making new law – for the most innovative clients and influential industry leaders since 1878. For more information, visit

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