LEAHY INSTITUTE OF ADVANCED PATENT STUDIES
February 17-19, 2019 in Naples, Florida
4th Annual Conference run by the Naples Roundtable
Origins of the Original “Phoenix List”: “Upon the creation of the Federal Circuit [in 1982], Chief Judge Howard Thomas Markey created a ‘Phoenix List’ to fulfill what he saw as the “duty of [the new court] of clarify the law of patents itself [which] will require the resolution of numerous apparent conflicts [amongst the circuits] lurking in past decisions and decisional approaches of various courts.” William C. Rooklidge & Matthew F. Weil, En Banc Review, Horror Pleni, and the Resolution of Patent Law Conflicts, 40 Santa Clara L. Rev. 787, 802 (2000)(citing Howard T. Markey, The Phoenix Court, 10 Am. Pat. L. Ass’n Q.J. 227, 232 (1982)). Following Chief Judge Markey’s lead, The Naples Roundtable identifies current issues in need of clarification. These issues focus our attention, foster our discussion, and inspire us to work toward making the U.S. patent system an “engine of innovation.”
Sunday, February 17, 2019
11:30 am to 2:00 pm Naples Princess Networking Lunch Cruise
5:00 pm to 7:15 pm Beachfront Reception and Opening Dinner
Monday, February 18, 2019
7:15 am to 8:00 am Registration and Continental Breakfast
8:00 am to 8:15 am Opening Remarks
Gary Hoffman, President
David Kappos, Chairman, Advisory Board
Andy Baluch, Chairman, Amicus Committee
Senator Patrick Leahy (invited)
8:15 am to 9:45 am
Phoenix Issue I. Has the value of US patents decreased over the last 10 years and are there ways to strengthen and improve the Patent System? What can and should be done to improve the process? Are the pending proposals in Congress needed and if so will they help? Do some of the AIA provisions need to be scrapped or modified? A recent Federal Register notice by the PTO sets forth proposed for the first time in the history of our patent system, a practitioner fee and CLE requirements; should these be imposed?
Judge Paul Michel (Moderator), Andrei Iancu, Mark Lauroesch, Rob Sterne, Henry Hadad and Brian Dorini
9:45 am to 10:15 am Break
10:15 am to 11:45 am
Phoenix Issue II. Is patent litigation being abusively utilized today or have unjustified actions been significantly curbed? Have IPRs, changes in venue selection and the more frequent award of attorneys’ fees helped? Are changes needed in the IPR process and what changes are in the works; will such changes help? What is the impact of recent and proposed changes — considering all claims and proposed grounds of invalidity and claim interpretation standards?
Andrew Baluch (Moderator), Bill Atkins, Don Banowit, Teresa Summers, Terry Stanek Rea and Eley Thompson
Proposal to Expedite Joinder in Inter Partes Review by Andrew S. Baluch and Teresa Stanek Rea
11:45 am to 1:00 pm Lunch
1:00 pm to 2:00 pm
Phoenix Issue III. Is there a problem with Section 101 decisions and will there likely be any legislative fix? If not, then what if anything can be done? Is it easier in foreign countries to obtain patents on subject matter considered abstract and unpatentable in the US? What if any impact is this having on innovation in the US?
Richard Rainey (Moderator), Bob Armitage, Matt Powers, Warren Woessner, Phil Poirier, Phil Warrick and Marian Underweiser
Section 101: What’s Left To Patent In The Life Sciences After Myriad, Mayo, And Alice? by Warren D. Woessner and Robin A. Chadwick
Patent Eligibility and Experimental Use: An International Comparison by Andrew Baluch, Teresa Summers and Jason Weil
2:00 pm to 3:00 pm
Phoenix Issue IV. Should deference (under Chevron) be given to the PTAB decisions and to what extent? Should any change in deference also impact ITC decisions? What is the level of review that should be done by the Federal Circuit on various issues (e.g. claim construction and assignor estoppel)?
Michael Dzwonczyk (Moderator), Donald Dunner, Phil Johnson, Herb Wamsley, Judge O’Malley and Michelle Armond
3:00 pm to 3:30 pm Break
3:30 pm to 4:30 pm
Phoenix Issue V. Is the current law of damages and injunctions adequate in protecting rights of patent holders? What is the impact of investing in and promoting innovation? How does the handling of damage and injunction issues in the US compare to countries in Europe and Asia?
Eric Hutz (Moderator), Heinz Goddar, Steven Auvil, and Paul Cole
Phoenix Issue V by Paul Cole
4:30 pm to 5:30 pm
Phoenix Issue VI. Is there a current conflict between implementation of the patent laws and antitrust laws?
Antitrust Analysis Involving Intellectual Property and Standards: Implications from Economics by Jorge Padilla, Douglas H. Ginsburg, & Koren W. Wong-Ervin
“Excessive Royalty” Prohibitions and the Dangers of Punishing Vigorous Competition and Harming Incentives to Innovate by Douglas H. Ginsburg, Bruce H. Kobayashi, Koren W. Wong-Ervin, & Joshua D. Wright
Product Hopping and the Limits of Antitrust: The Danger of Micromanaging Innovation by Douglas H. Ginsburg, Koren W. Wong-Ervin, & Joshua D. Wright
Tying and Bundling Involving Standard-Essential Patents by Koren W. Wong-Ervin, Evan Hicks, & Ariel Slonim
Recommendations Following the FTC’s October 2018 Hearings on IP and Innovation by Koren W. Wong-Ervin & Dr. Georgios Effraimidis
The More Things Change: Improvement Patents, Drug Modifications, and the FDA by Dmitry Karshtedt
Tuesday, February 19, 2019
7:00 am to 8:00 am Continental Breakfast
8:00 am to 9:00 am
Phoenix Issue VII. To what extent is the patent system well-served by the extra-territorial enforcement of competition and intellectual property laws?
David Kappos (Moderator), Hal Wegner, Shoichi Okuyama, Otto Licks, Justice Robert Barnes and Doug Wilson
9:00 am to 10:00 am
Phoenix Issue VIII. Is there a need to substantially revise the rules to bring the content of patent applications in line with modern precedent, new types of technologies (e.g. AI) and to impose reasonable limits on the size of specifications and the number of claims that should be allowed in an application? For example, should the requirement for a section entitled “Background of the Invention” be replaced by sections covering “The Scope and Content of the Prior Art’ and “The Level of Ordinary Skill in the Art?” Should the USPTO resurrect its once prevalent use of “undue multiplicity” rejections? Should the Office require applicants to state whether they intend for the preamble of their claims to be construed as a limitation on the scope of the claims? Should the Office require applicants to state whether they intend for their claims to be interpreted as means-plus-function claims?
Bob Stoll (Moderator), Alan Kasper, Brian Nash, Joe Matal, Steve Kunin, Todd Dickinson and Russ Slifer
Access to Relevant Prior Art (postcard by USPTO)
10:00 am to 10:30 am Break
10:30 am to 11:30 am
Phoenix Issue IX. To protect against willful infringement allegations after Halo, should parties obtain opinions from counsel and what waiver issues arrive?
Clyde Siebman (Moderator), Judge Rodney Gilstrap, Azra Hadzimehmedovic, Leora Ben Ami, John Scott, Krish Gupta and George Pappas
11:30 am to 12:30 pm
Phoenix Issue X. Understanding the conflict of positions in the SEP/FRAND issues both in the US and Internationally and can the conflicts be resolved?
Leah Waterland (Moderator), David Long, Mark Selwyn, Mark Wine, Ken Adamo and Judge Holderman
The Sedona Conference Framework for Analysis of StandardEssential Patent (SEP) and Fair, Reasonable, and Non-Discriminatory (FRAND) Licensing and Royalty Issues (Stage One) A Project of The Sedona Conference Working Group on Patent Damages and Remedies (WG9)
Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee: Setting Out The EU Approach To Standard Essential Patents (Brussels, 29.11.2017)
Guide to Licensing Negotiations Involving Standard Essential Patents – Japan Patent Office June 5, 2018
Global Rate-Setting: A Solution for Standards-Essential Patents? by Jorge L. Contreas
FTC v. Qualcomm: Part One — Where is Denzel? (blog) by David Long
6:00 pm Dinner
Additional Judges Accepted: