Silicon Valley IP group joins with Supreme Court and Appellate practice to secure significant patent win

On November 6, the United States Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus filed by SAP in In re: SAP America, Inc. The HSF Kramer team was again at the forefront of an important new patent decision that shapes the landscape of patent litigation. 

In February 2024, HSF Kramer client Cyandia sued SAP for infringement of four patents. SAP responded by asserting affirmative defenses of invalidity and in October 2024, submitted four petitions before the Patent Trial and Appeal Board (PTAB), seeking inter partes review of three of the asserted patents. At the time of the petitions, interim guidance from the Director to the Board was in effect that the Board would not "discretionarily deny institution in view of parallel court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB." The PTAB thereafter changed its interim guidance and SAP raised a constitutional challenge based on the recission of the interim guidance once the PTAB denied institution of several of the petitions. Thereafter, Motorola Solutions and Google filed similar petitions for writ of mandamus on similar constitutional grounds. The issue was well briefed, as these parties, in addition to numerous amicus, presented the issue to the Federal Circuit, and the petitions received a fair bit of legal press and attention by practitioners. 

Ultimately, the Federal Circuit denied SAP's petition, along with Motorola and Google's petitions, finding no colorable constitutional claim. The Court also agreed with Cyandia that SAP failed to raise its challenge before the agency in any event. This decision marks a significant win for the firm's IP practice, reflecting the many cutting-edge and important issues that the group regularly faces. The HSF Kramer team across the Washington D.C., New York and Silicon Valley offices consists of Litigation partner Daniel N. Lerman; partners Paul J. Andre and James Hannah; special counsel Jeffrey H. Price; and associate Zachary N. Ferguson.