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 over 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 over 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.
- Square, Inc. v. Cooper (PTAB). Represented petitioner Square, Inc. in three IPR proceedings; argued and won decisions finding unpatentable all claims challenged by Square. The decisions were later upheld by the Federal Circuit.
- 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 (Fed. Cir., PTAB). Lead counsel for SAP in the first PGR review of a covered business method (CBM) patent; argued and won Federal Circuit affirmance of PTAB ruling that all claims challenged by SAP were invalid under 35 USC § 101.
- 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.
- Serves as a member of the firm's management committee.
- Recognized by The Legal 500 U.S. for patent prosecution, re-examinations, and post-grant proceedings, 2013-2016; and recognized as one of the leading lawyers 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.
- Intellectual Property Owners Association (vice chair, U.S. Post-Grant Patent Office Practice, 2016; 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, 2014-2015; 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.
- 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.