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Versata Dev. Group, Inc. v. SAP Am., Inc.

United States Court of Appeals for the Federal Circuit

July 9, 2015, Decided

2014-1194

Opinion

 [*1309]  [***1683]   Plager, Circuit Judge.

Introduction

This is a covered business method ("CBM") patent case, under § 18 of the [**3]  Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat. 284 (2011).  [*1310]  It comes to us as an appeal of a final written decision of the Patent Trial and Appeal Board ("PTAB"),1 the recently-created adjudicatory arm of the United States Patent and Trademark Office ("USPTO" or "Government").2 The case originated as a petition to the USPTO, submitted by appellees SAP America, Inc. and SAP AG (collectively, "SAP"), pursuant to the provisions of the AIA.

SAP requested that the USPTO institute review of the validity of certain claims in U.S. Patent No. 6,553,350 ("'350 patent"). The '350 patent is owned by the appellant, Versata Development Group, Inc. ("Versata"), who had sued SAP for infringing the patent. In its petition to the USPTO, SAP alleged that the patent was a covered business method [**4]  patent.

] Covered business method patents are subject to the special provisions of AIA § 18. See 125 Stat. at 329-31.3 Section 18 establishes a separately-designated transitional program4 under which the USPTO conducts post-grant review proceedings concerning the validity of covered business method patents. As the title suggests, the special program provided by § 18 is available only for "covered business method patents," as that term is defined by the statute. However, for purposes of conducting proceedings thereunder, § 18 is considered a part of the broader chapter 32 provisions of title 35, U.S. Code, governing post-grant review [***1684]  ("PGR"), 35 U.S.C. §§ 321-329; § 18 expressly incorporates, with certain exceptions not relevant here, the standards and procedures found in that chapter.5 § 18(a)(1).

In addition to the merits of the decision rendered by the PTAB (which held the claims at issue invalid), the parties to the appeal dispute several predicate issues. These include:

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793 F.3d 1306 *; 2015 U.S. App. LEXIS 11802 **; 115 U.S.P.Q.2D (BNA) 1681 ***

VERSATA DEVELOPMENT GROUP, INC., Appellant v. SAP AMERICA, INC., SAP AG, Appellees, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY, DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor

Subsequent History: US Supreme Court certiorari denied by Versata Dev. Group, Inc. v. SAP Am., Inc., 2016 U.S. LEXIS 4213 (U.S., June 27, 2016)

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board, in No. CBM2012-00001.

SAP America, Inc. v. Versata Development Group, Inc, 2013 Pat. App. LEXIS 3788 (Bd. Pat. App. & Interferences, June 11, 2013)

Disposition: AFFIRMED.

CORE TERMS

patent, business methods, invalidate, invention, written decision, technological, abstract idea, post-grant, judicial review, limitations, district court, merits, recite, organizational, argues, hierarchy, cases, parties, instituting, proceedings, provisions, decisions, reasons, price information, agency's action, regulations, initiation, unpatentable, predicate, eligible

Business & Corporate Compliance, Patent Law, US Patent & Trademark Office Proceedings, Reexamination Proceedings, Patent Law, Appeals, Jurisdiction & Review, Subject Matter Jurisdiction, Administrative Law, Judicial Review, Reviewability, Reviewable Agency Action, Evidence, Burdens of Proof, Clear & Convincing Proof, Standards of Review, Deference to Agency Statutory Interpretation, Governments, Courts, Judicial Precedent, Nonobviousness, Elements & Tests, General Overview, Defenses, Patent Invalidity, Legislation, Interpretation, De Novo Review, Subject Matter, Utility Patents, Process Patents