PTAB Makes Its First Decision, Declaring Patent in $345M Court Case Patent Ineligible

In its first decision on a post-issuance patent challenge, the Patent Trial and Appeal Board found in favor of Finnegan client SAP, ruling on June 11 that patent owner Versata’s “challenged claims of a ‘covered business method’ patent were ineligible.”

“SAP is very pleased with this outcome,” said Finnegan partner Erika Arner who represented SAP at oral argument. The decision is the first since CBM proceedings were enacted as part of the America Invents Act. “We feel it really demonstrates an example of the reason Congress enacted this new statute—giving the patent office a chance to reconsider some of the patents that slipped through the cracks . . . when business methods were suddenly being filed in record numbers and the patent office admitted it was ill-equipped to handle them.” She noted that the patent at issue in this case is among “the group of patents that Congress was talking about. This brings to fruition the congressional goal when it enacted the statute.”

To date, the PTAB has seen less CBM petitions filed than expected. When asked if the decision might lead to more filings, Arner said, “The speed of the process will be attractive to defendants,” however, considering the difficult standing requirements, “I don't think we'll see a huge jump in the number of filings.”