In this article, Law360 spoke with attorneys from Finnegan and Ropes & Gray LLP on their team effort “to win the first-ever patent challenge under the America Invents Act for SAP America, Inc. last month.” The collaboration started a few months after a jury found that SAP infringed Versata’s U.S. Patent Number 6,553,350, when in September 2011 Congress passed the AIA. This patent reform legislation included provisions for post-grant review of “business method patents—a chance for the Patent Trial and Appeal Board to reconsider the viability of certain patents that lawmakers considered dubious attempts to gain monopoly control of long-standing practices and abstract concepts used in the financial services industry.”
The SAP team decided to “[dive] headfirst into uncharted waters” after it considered the SAP case as a candidate for the new proceedings. “Looking at the type of patent that this legislation was designed to address, the Versata patent was really right in the wheelhouse,” said Finnegan partner Erika Arner. “We began preparing the petition to file it as soon as possible.” Working closely with the USPTO, SAP’s attorneys filed the first post-grant review petition at 12:01 a.m. on the first day the business method patent review program went online.
“I think the board was as excited as the parties were to make sure this new proceeding worked as Congress intended,” Arner said. “It was quite an interesting adventure.” Ropes & Gray partner J. Steven Baughman said, “The board was constantly harking back to the legislative intent and making sure that it was effectuating Congress' purpose in creating this new challenge.”
On June 12, the PTAB issued its first post-grant review decision. Ruling in favor of SAP, it found Versata’s patent covered an abstract idea. “It was a very collaborative effort,” Arner said.
