This October the U.S. Court of Appeals for the Federal Circuit is scheduled to hear SAP v. Versata Software. Erika Arner, who chairs Finnegan, Henderson, Farabow, Garrett & Dunner's patent office practice, will continue to represent SAP on the appeal.
The case is particularly important because it was the first ruling on covered business method (CBM) patents from the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), Arner told WIPL. “It’s been an incredibly interesting case all along,” she said. “We feel the Federal Circuit will affirm, and that the PTAB got it right.”
The two sides have been litigating for years over the patent in question, which involves a method for pricing products and services. When PTAB became available in September 2012 as a means to challenge post-grant patent validity proceedings and appeals under the America Invents Act (AIA), SAP proceeded with a CBM petition. Arner served as counsel on the case, and PTAB ruled that several claims of the patent were invalid. Versata has appealed to the Federal Circuit.
Since PTAB came into existence two years ago, its impact is starting to be felt. “This is a relatively new body and a relatively new area of law,” said Arner. She suggested that any company involved in patent litigation at least consider an appeal to PTAB as part of its strategy. “I think it’s important for in-house folks to have at least an understanding of how the system can work. They need to be able to explain that there is a new law that allows a whole new trial.”
Arner focuses on patent office trials, patent prosecution management, client counseling and litigation, with an emphasis on electronic technology, computer software and the Internet. She helps clients of all sizes establish and grow patent portfolios, align intellectual property strategy with business objectives and adapt to the evolving legal landscape, including the AIA.