Erika Harmon Arner
Erika Arner chairs Finnegan's patent office practice. She focuses on patent office trials, patent prosecution management, client counseling, and litigation, with an emphasis on electronic technology, computer software, and the Internet. Ms. Arner helps clients of all sizes to establish and grow patent portfolios, align intellectual property strategy with business objectives, and adapt to the evolving legal landscape, including the America Invents Act (AIA).
Ms. Arner is a well-known authority in the area of business method patents and patent-eligibility jurisprudence. She represented the petitioners before the U.S. Supreme Court in Bilski v. Kappos, and has advised clients on issues related to patentable subject matter before the U.S. Court of Appeals for the Federal Circuit, U.S. district courts, and the U.S. Patent and Trademark Office. She has also served as lead counsel before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office (PTAB) in more than 20 post-grant review (PGR) and inter partes review (IPR) proceedings.
Ms. Arner has provided opinions on patentability, infringement, and validity of patents, and drafted or overseen the drafting of hundreds of patent applications for business method, electrical, telecommunications, and software-based technologies. She is a frequent author and lecturer on business method and computer-related patents and practice before the PTAB.
- Chicago Mercantile Exchange Inc. v. Fifth Market Inc. (PTAB). Represented CME as petitioner; PTAB issued final written decision finding unpatentable all of the claims challenged in CBM petition.
- SAP v. Versata Software (PTAB). Lead counsel for SAP in the first PGR of a CBM patent; PTAB ruled that all claims challenged by SAP were invalid under 35 USC 101, concluding an expedited proceeding requested by SAP that lasted just nine months from petition filing to final written decision cancelling Versata's claims.
- ePlus, Inc. v. Lawson Software, Inc. (Fed. Cir.). Represented Lawson as defendant-appellant; Federal Circuit determined that ePlus was not entitled to any damages and reversed district court's findings of infringement on four of the five patent claims, finding two invalid and two not infringed, with result that Lawson's main software product is now clear of any infringement claim.
- Bilski v Kappos (S. Ct.). Represented Bilski as petitioner; coauthored successful petition for a writ of certiorari and petitioner's merits briefs resulting in Court's ruling that business methods cannot be excluded from patenting per se.
- Research Corp. Techs v. Microsoft (Fed Cir.). Represented patent owner RCT as appellant; reversed summary judgment of invalidity, with court ruling that RCT patent claimed patentable subject matter of processing digital images.
- Mayo v. Prometheus (S. Ct.). Authored amicus curiae brief on behalf of SAP.
- Prepared patent policy and procedures, conducted in-house patent committee meetings, and supervised prosecution of patent portfolios for clients in gaming, online advertising, business consulting, government contracting, and software industries.
- Recognized by The Legal 500 U.S. for patent prosecution for utility and design, 2013-2015.
- Recognized by Managing Intellectual Property as an "Outstanding IP Litigator—Virginia", 2014-2015; one of the "Top 250 Women in IP", 2013-2014; and "IP Star" in Reston, VA, 2013-2015.
- Recognized as a leading patent prosecutor in the D.C. area, 2013-2014; and nationally for post-grant procedures by Intellectual Asset Management, 2014.
- Recognized by Law360 as a rising star in intellectual property, 2011.
- Intellectual Property Owners Association (vice chair, Patent Office Practice Committee, 2012-2014; vice chair, Software and Business Method Patents Committee, 2009-2011)
- American Bar Association (patents editor, Landslide® magazine,
2012-2014; lead patents editor, Annual Review of Intellectual Property Developments, 2010-2012)
- Virginia State Bar (Intellectual Property Section Board of Governors,
- American Intellectual Property Law Association (Amicus Brief Committee, 2014; Professional Programs Committee 2014)
- Regular contributor to Finnegan's AIA blog.
- Coauthor. "Section 112(b) and the PTAB: Is the Legal Standard for Indefiniteness Itself Indefinite?" BNA's Patent, Trademark & Copyright Journal, June 12, 2015.
- Coauthor. "The Federal Circuit's Appellate Jurisdiction Under Article III: Not a Walk in the Park for a Consumer Watchdog," BNA's Patent, Trademark & Copyright Journal, Jan. 9, 2015.
- Coauthor. "Reading the Tea Leaves: In re Cuozzo and the Federal Circuit's Consideration of PTAB Institution Decisions and Claim Construction," BNA's Patent, Trademark & Copyright Journal, Nov. 28, 2014.
- Coauthor. "Federal Circuit Jurisdiction Under the America Invents Act: What We Know After Two Years of Post-Grant Proceedings," BNA's Patent, Trademark & Copyright Journal, Oct. 31, 2014.
- Coauthor. "VirtualAgility and Benefit Funding at the Federal Circuit: Stays Under the America Invents Act," BNA's Patent, Trademark & Copyright Journal, Oct. 3, 2014.