Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
The Supreme Court on Jan. 21 denied software giant SAP America Inc.'s petition for writ of certiorari in SAP Am., Inc. v. Versata Software, Inc. ( U.S., No. 13-716, review denied 1/21/14), appealing the ruling by the U.S. Court of Appeals for the Federal Circuit affirming a jury's award of $345 million for infringing Versata Software Inc.'s product pricing patent. Versata Software Inc. v. SAP Am., Inc., 717 F.3d 1255, 2013 BL 115505, 106 U.S.P.Q.2d 1649 (Fed. Cir. 2013) (85 PTD, 5/2/13).
The patent at issue in the case was also the subject of a “covered business method” challenge by SAP at the Patent Trial and Appeal Board. In its first decision on an America Invents Act-enabled post-grant opposition, the PTAB found Versata's business method patent claims ineligible for patenting under 35 U.S.C. §101. SAP Am. Inc. v. Versata Dev. Grp. Inc., No. CBM2012-00001, 107 U.S.P.Q.2d 1097 (P.T.A.B. June 11, 2013) (114 PTD, 6/13/13).
According to SAP's cert petition, “the court of appeals denied a stay of the infringement action without explanation.”
Thus, one of the three questions presented in the petition was:
Whether a patent infringement action should be stayed where the Patent Trial and Appeal Board has declared invalid all patent claims at issue in the infringement action and the defendant, which sought such review at the first opportunity, might otherwise be compelled to pay an enormous damages judgment and be subjected to a permanent injunction on the basis of the invalid claims.
Versata took only six days to file its opposition brief, saying, “Even a successful defense before the [Patent and Trademark Office] cannot override a final court decision.”
The case also involved an unusual situation in which a defendant succeeded in getting a second damages trial, but the second jury increased the award by more than $200 million. Nevertheless, the appeals court affirmed the award. It reviewed the arguments made by Versata Software Inc.'s damages expert favorably for the most part, giving a tutorial of sorts on proper economic analysis for patent infringement damages.
• Whether a computer software manufacturer may be liable for direct infringement of a patent drawn to computer instructions where the software, as shipped, does not contain sufficient instructions to perform the claimed operations.
• Whether flaws in an expert's methodology may be raised as part of a challenge to the sufficiency of the evidence or only to the testimony's admissibility.
Douglas Hallward-Driemeier of Ropes & Gray LLP, Washington, D.C., represented SAP. Jeffrey A. Lamken of MoloLamken LLP, Washington, D.C., represented Versata.
SAP's cert petition is available at http://pub.bna.com/ptcj/130716petition.pdf.
Versata's opposition is available at http://pub.bna.com/ptcj/130716response.pdf
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
To contact the editor responsible for this story: Naresh Sritharan at firstname.lastname@example.org
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)