Erika Harmon Arner
Erika Arner chairs Finnegan's patent prosecution practice. She focuses on patent prosecution management, client counseling, and litigation, with an emphasis on electronic technology, computer software, and the Internet. Ms. Arner has helped 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.
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) (formerly the U.S. Board of Patent Appeals and Interferences) in post-grant review proceedings involving covered business method patents.
Ms. Arner has provided opinions on patentability, infringement, and validity of patents, and drafted or overseen the drafting of more than 150 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.
- SAP v. Versata Software (PTAB). Lead counsel for SAP in the first post-grant review of a covered business method 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 (U.S. Sup. 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.
- Managed prosecution and strategy for patent portfolio of over 400 U.S. and foreign patent applications for software and services company.
- Mayo v. Prometheus (U.S. Sup. 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.
- Serves as a regular contributor to Finnegan's AIA blog (www.aiablog.com).
- Recognized by Managing Intellectual Property as one of the "Top 250 Women in IP" and as an "IP Star" in Virginia, 2013.
- Recognized as a leading patent prosecutor in the D.C. area by Intellectual Asset Management, 2013.
- Recognized by Law360 as a rising star in the field of intellectual property, 2011.
- Intellectual Property Owners Association (vice chair, Patent Office Practice Committee, 2012-2013; vice chair, Software and Business Method Patents Committee, 2009-2011)
- American Bar Association (patents editor, Landslide® magazine, 2012-2013; lead patents editor, Annual Review of Intellectual Property Developments, 2010-2012)
- Virginia State Bar (Intellectual Property Section Board of Governors, 2013)
- American Intellectual Property Law Association
- Coauthor. "CLS Bank v. Alice Leads to an Even Murkier Morass," Managing Intellectual Property, May 28, 2013.
- Coauthor. "Kappos Leaves Big Shoes to Fill at Patent Office," The National Law Journal, Feb. 4, 2013.
- Coauthor. "Supreme Court Contemplates Patent Obviousness and Equivalents," Bloomberg Law Reports, March 5, 2012.
- Coauthor. "Golan v. Holder: Potential Shift in Judicial Scrutiny," Law360, Dec. 19, 2011.
- Coauthor. "How Will Patent Reform Affect the Software and Internet Industries?" The Computer & Internet Lawyer, Dec. 2011.
- Coauthor. "Treatment of Business Method Patents in Pending Patent Reform Legislation: Bilski Backlash?" BNA's Patent, Trademark & Copyright Journal, July 15, 2011.
- Coauthor. "High Court IP Roundup — Last Session, and What's Next," Law360, Sept. 21, 2010.
- "Practical Considerations for Working with Business Method Patents," Electronic and Software Patents Law and Practice, 2007-2010.
- Coauthor. "U.S. Supreme Court Decides Fate of Three Key § 101 Cases," June 29, 2010.
- Coauthor. "Bilski and Beyond the Uncertain State of Patent-Eligible Subject Matter in the United States," Managing Intellectual Property Chinese Edition, June 2010.