Erika Harmon Arner
Erika Arner, former leader of Finnegan's patent office practice, 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 has represented patent owners and petitioners in more than 100 post-grant review (PGR) and inter partes review (IPR) trials before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), serving as lead counsel in more than 50. She has also argued and won appeals from PTAB trials to the U.S. Court of Appeals for the Federal Circuit, many of which involve issues of first impression in this emerging area of patent law.
In addition to her extensive experience in patent office practice, 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 Federal Circuit, U.S. district courts, and the USPTO. Ms. Arner is a frequent author and lecturer on business method and computer-related patents and practice before the PTAB.
- CQG v. Trading Technologies, Inc. (Fed. Cir.). Argued on behalf of patent owner Trading Technologies, obtaining ruling that claims to inventive graphical user interface are patentable under 35 USC 101.
- Global Tel-Link v. Securus Technologies (PTAB). Lead counsel for patent owner Securus Technologies, resulting in some or all challenged claims being confirmed in seven patents.
- FIS v. DataTreasury (Fed. Cir. and PTAB). Represented petitioner FIS in two covered business method (CBM) proceedings; argued and won decisions at the PTAB and Federal Circuit cancelling all claims challenged by FIS.
- Square, Inc. v. Cooper. (PTAB). Represented petitioner Square, Inc. in three IPR proceedings; argued and won decisions finding all claims challenged by Square unpatentable.
- SAP v. Versata Software (Fed. Cir. and PTAB). Lead counsel for petitioner SAP in the first PGR review of a CBM patent; argued and won Federal Circuit affirmance of PTAB ruling that all claims challenged by SAP were invalid under 35 USC 101.
- Serves as a member of the firm's management committee.
- Recognized by The Legal 500 U.S. as a leading lawyer in patent prosecution, re-examinations, and post-grant proceedings, 2016.
- Recognized by Intellectual Asset Management as a leading patent litigator in the D.C. area, 2013-2016; and nationally for post-grant procedures, 2014-2016.
- Recognized by Managing Intellectual Property as an "Outstanding IP Litigator—Virginia," 2014-2016; one of the "Top 250 Women in IP," 2013, 2014, 2016; and as an "IP Star" in Virginia, 2013-2016.
- Selected by her peers for inclusion in The Best Lawyers in America® for patent litigation, 2017.
- PTAB Bar Association (interim president-elect 2016-2017, co-founder).
- Intellectual Property Owners Association (vice chair, U.S. Post-Grant Patent Office Practice, 2016-2017; 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, 2012-2015; lead patents editor, Annual Review of Intellectual Property Developments, 2010-2012)
- Virginia State Bar (Intellectual Property Section Board of Governors, 2013-2015)
- American Intellectual Property Law Association (Amicus Brief Committee, 2014-2015; Professional Programs Committee 2014-2015)
- Coeditor. The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board, Second Edition, American Bar Association, Section of Intellectual Property Law, 2016.
- Serves as an editor for Finnegan's AIA blog on PTAB trials and AIA provisions.
- Coauthor. "Wait, There's a Second Issue in Cuozzo?" BNA's Patent, Trademark & Copyright Journal, Feb. 5, 2016.
- 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.
- Coeditor. The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board, American Bar Association, 2014.