AJG and Boston IP Inns of Court & BPLA Present Decision Makers
Rachel Emsley, Finnegan
The BPLA Contested Matters Committee joined forces with New Hampshire’s Gajarsa Inn of Court and the Boston IP Inn of Court for an exciting event to explore judicial decision making. About 100 members of these three organizations witnessed excellent advocacy in three 20-minute mock arguments before PTAB Judge Scott A. Daniels, Ret. Federal Circuit Judge Arthur J. Gajarsa, and District Court Judge Marianne B. Bowler. First, John Johnson (Fish & Richardson) and Anita Spieth (Choate Hall & Stewart) presented an argument on a Motion to Stay Pending IPR in the District Court. Despite John Johnson’s well-articulated presentation, Anita Speith won the stay, arguing that her small startup client would be harmed by a delay in the proceedings, which were nearing the close of fact discovery. Judge Bowler emphasized how important it was to her that the trial date was already set, and the advanced stage of discovery. Next, Kurt Glitzenstein (Fish & Richardson) and Sandra Badin (Mintz Levin) argued whether a petitioner, who has not been sued, has standing to appeal the PTAB decision to the Federal Circuit. Judge Gajarsa probed both sides with hypotheticals and explored the precedent, keeping both parties on their toes and ultimately deciding in Sandra Badin’s client’s favor based on established Supreme Court precedent requiring more than just a hypothetical injury to find Art. III standing. Despite his ruling, Judge Gajarsa was concerned about the lack of agency review of the PTAB under such scenario. Finally, Scott Kamholz (Covington) and Stephen Brodsky (Bose Corp.) sparred in a PTAB oral hearing about whether a company’s presentation submitted in an information disclosure statement and presented at a conference--years earlier--was sufficiently publicly accessible to achieve prior art status. APJ Daniels pressed both parties to articulate how the Klopfenstein factors should be weighed and found in favor of the Petitioner (represented by Scott Kamholz) determining that, on balance, the presentation was publicly accessible because the audience members had ample time to fully understand the invention despite the display lasting only 1.5 minutes! Each argument gave the audience much to think about as they enjoyed a beautiful cocktail reception overlooking the Seaport. The Contested Matters Committee looks forward to announcing a date for its Annual PTAB Summit - styled as a year in review - to be held in January.
Volume 49, Issue 4