2017 Conference Papers

The Issues to be discussed at the 2017 Patent Experts conference are set forth below.  Following each of the issues are current papers accepted by The Naples Roundtable and posted to stimulate discussion and debate.  The papers posted here represent the views of the authors and do not necessarily reflect the views of  The Naples Roundtable, its officers and directors, its Advisory Board members, or any other participant in Naples Roundtable activities.  It is the responsibility of the authors to note on the first page whether any paper was prepared on behalf of a client or third person or organization.

Issue I  FRAND/SEP Litigation — Policy Struggles. Sorting out today’s problems.

The Smallest Salable Patent Practicing Unit and Observations on Its Origins, Development, and Future by David J. Kappos and Paul R. Michel

Letter re Department of Industrial Policy and Promotion’s Discussion Paper on Standard Essential Patents and Their Availability on FRAND Terms by David J. Kappos

8 Practical Steps for China to Become an Innovation Led Economy by David J. Kappos and David P. Willard

Extra-Jurisdictional Remedies Involving Patent Licensing

Standard Essentail Patents and Market Power

Issue II  The impact of recent changes to the Federal Rules of Civil Procedure?  Have the changes simplified litigation? Have they impacted the cost of litigation? Curbing frivolous litigation. What is working and what is not?

The Impact of Amended Rule 26(b)(1) on Discovery in Patent Litigation by Byron Holz, Louis Tompros and Chaloea Williams

Pleadings After Form 18 How Has the Rubber Hit the Road by Deborah Fishman, Clara Wang, and Aaron Nathan

Sedona WG10 Patent Lit Best Practices-Heightened Pleading Stnds Ch. (May 2016 publ comm)_05-23-16

Sedona WG10+9 Patent Lit Commentaries – Exec Summary – 11-14-16 ver (links)

Issue III  The impact of recent decisions giving greater power to the district courts. The impact of new standards for enhanced damage awards, awards of attorneys’ fees and for review of claim construction rulings (Octane, Halo and Teva). How best to proceed and how best to protect your client? Will this encourage or discourage more litigation and/or NPE litigation?

Seeking Guidance on Willfulness after Halo and Stryker –Look to the Past by Andrew S. Baluch

Naples Conf 2016 Recent Developments in Claim Construction_(44711542_2)

Sedona WG10 Exceptional Case Determination Section (Oct. 2016 publ comm)…

AIPLA Patent Stats 2017 Mid-Winter Paper

Sedona WG10 Patent Lit Best Practices-Intro Ch. (July 2015 ed)_07_21_15

Mediation- Do Claims for Enhanced Damages and Sanctions Affect Mediation Success by Hon. Faith Hochberg

A Trend Towards Abuse of Discretion Review

Issue IV  Section 101 issues. Abstract ideas? Products of nature?   Diagnostic tests?   Medical Procedures? Computer software (is this a dead area for protection?

Section 101 USPTO Roundtable Speaking Points

Can We Find a Rational, Principled, Expansive, and Politically Palatable Approach to Statutorily Defining Patent Eligibility by Robert A. Armitage

At Stanford, Patent Experts Sound Off on Section 101 (Corporate Counsel 12-06-2016)

Sedona WG10 Patent Lit Best Practices-Sect 101 Motions (Sept. 2016 publ comm)_09-26-16

Issue V  Is there a growing anti-patent sentiment? Impact on the system? Impact on International Competition? Evaluating international litigation.

Weighing the Patent System It is Time to Confront the Bias Against Patent Owners in Patent Reform Legislation by Adam Mossoff

Creating a Patent System Fostering Only Pro-Patent Sentiments by Robert A. Armitage

Issue VI  Comparative Law Forum – Current Topics in Comparative and International Law.

Best Strategies in Europe in View of BREXIT by Heinz Goddar

The Impact of Brexit on Intellectual Property

Strategic patent prosecution in Brazil by Licks Attorneys

Injunction and Damage in Brazilian Patent Infringement by Liliana Roriz and Otto Licks

Japanese Perspective by Dr. Shoichi Okuyama

JPO Presentation by Yoshinori Kamiya

Issue VII  New Federal Trade Secret laws.

Pooley treatise excerpt re DTSA

James Pooley, The Myth of the Trade Secret Troll-Why the Defend Trade Secrets Act Improves the Protection of Commercial Information, 23 George Mason LR 1045 (Summer 2016)

DTSA REVIEW FOR INSIDE COUNSEL

[29] Riley Survey of Trade Secret Investigations at ITC

Issue VIII  PTAB – Current issues. Has the process stabilized? Impact on Pharma’s molecule patents today? Use of Rule 36 affirmances in PTAB appeals? Is the Federal Circuit affirming most of the PTAB decisions? What have we learned from initial filings of PGRs

Chapter Two New Global Patent Landscape by Robert Greene Sterne

Additional PGR Slides

CBMPGR Grounds Analysis

State of the Patent Trial and Appeal Board by Scott Boalick

Chapter 15

Issue IX  Impact of PTAB proceedings on handling of District Court litigation and how courts can/should handle multi party cases where only some of the defendants have filed IPRs. Estoppel implementation, particularly when all claims not considered or all prior art not considered?

Sedona WG10 Patent Lit Best Practices-Parallel USPTO Proceedings Ch. – Stg 1 (Oct 2016 ed)_10-15-16