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April 20, 2014

SAP Files Ex Parte Reexamination Request for Patent Review using Prior Art from Ongoing Litigations

As you may recall from earlier posts, on September 16, 2012, SAP filed a petition for review of U.S. Pat. No. 6,553,350 to begin the first covered business method patent review (CBM2012-00001) under the America Invents Act.  To advance its PTAB trial date, SAP agreed to limit its argument to 35 U.S.C. 101 challenges set forth in its petition and not assert its prior art  challenges in the CBM.

The PTAB trial was held on April 17, 2103, and we are awaiting a decision in that trial.  The Federal Circuit also just decided the appeal in the parallel district court action last week.  The Federal Circuit affirmed the infringement and damages findings by the lower court, but remanded for correction of the injunction ordered by the lower court.

SAP recently filed papers in the PTAB action indicating that it has requested an ex parte reexamination based on its prior art R/3 documentation of the same ’350 patent.  Ex parte reexamination requests are still prosecuted in the Central Reexamination Unit and using “special dispatch.”  It will be interesting to see if the CRU will be able to expedite these reexaminations in light of the changes brought by the AIA.  One important change being the shift of future inter partes proceedings to the PTAB (legacy inter partesreexaminations are still being completed in the CRU).

© 2014 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.

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Timothy Bianchi is a patent attorney with bachelor's and master's degrees in electrical engineering. He advises businesses in domestic and international patenting, reexamination, opinions, licensing and enforcement. Tim's patent experience includes electronics, software, medical devices, telecommunications, e-commerce, digital electronics, digital signal processing, computer security, embedded processor designs, hearing aids, network hardware and software, wireless signaling, and RFID. He represents a variety of large and small companies. Tim has engineering experience from...

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