The Naples RoundtableTM Amicus Committee is responsible for making recommendations to the Officers and Advisory Board for action to be taken regarding issues before the courts in the United States. The Committee’s actions with respect to matters before the Federal Circuit is exclusive and independent of the Advisory Board, as well as anyone attending or participating in the Naples Roundtable or the Leahy Institute of Advanced Patent Studies.
Andrew S. Baluch, Chair
Hon. Sharon R. Barner
Hon. Q. Todd Dickinson
Teresa M. Summers
Senate Hearings on Patent Eligibility
In June 2019, the Naples Roundtable submitted comments for inclusion into the written record of the Senate IP Subcommittee’s hearing on “The State of Patent Eligibility in America.” In its comments, the Naples Roundtable urged Congress to clarify the scope of subject-matter eligibility under Section 101 of the Patent Act and also to make clear that patents do not “preempt” innovation. To that end, the Naples Roundtable pointed to it its international comparative study on patent eligibility and experimental use, and recommended that Congress consider codifying an experimental use defense as a way to mitigate the risk of “preemption,” while also permitting a broader scope of patent eligibility.
In May 2019 The Naples Roundtable Amicus Committee filed an amicus brief on the Patent Trial and Appeal Board’s question:
Whether the service of a pleading asserting a claim alleging infringement, where the serving party lacks standing to sue or the pleading is otherwise deficient, triggers the 1 year time period for petitioner to file a petition under 35 U.S.C. § 315(b).
In response to the Board’s question, The Naples Roundtable respectfully submits that it believes standing is not a requirement under 35 U.S.C. § 315(b) for a properly served complaint to trigger the 1-year time bar.
Andrew Baluch, Teresa Summers and Jason Weil published a whitepaper containing an international comparison of the patent eligibility and experimental use defense codified in several major jurisdictions around the world (United States, Singapore, United Kingdom, Germany, France, South Korea, Japan, and China). Unlike the United States, most other countries most other countries have codified an “experimental use” defense in their patent laws, allowing any patented invention to be used for the purpose of researching, testing, and improving upon a patented invention. Those same countries also tend to permit patenting of subject matter more broadly under their patent laws than the United States. Given the U.S. Supreme Court’s concern that broad patent eligibility poses a risk of “pre-emption,” the United States Congress may wish to consider whether to codify an “experimental use” defense as part of a legislative bargain that also broadens the scope of patent eligibility under 35 U.S.C. § 101.
Proppant Express Investments, LLC v. Oren Technologies, LLC
In December 2018, the Amicus Committee filed an amicus brief in the first-ever Precedential Opinion Panel (“POP”) panel constituted by USPTO Director Iancu. The POP panel called for amicus briefing in Proppant Express Investments, LLC V. Oren Technologies, LLC, Case IPR2018-00914 (PTAB), seeking briefing to help resolve an intra-PTAB conflict regarding the interpretation regarding the inter partes review “joinder” provision of 35 U.S.C. 315(c). In its amicus brief, the Naples Roundtable advocated for a balanced approach to this provision, which empowers the USPTO to join both the same petitioner and new issues to an existing proceeding, but also allows the USPTO to deny joinder, in the USPTO’s discretion, if it perceives that the petitioner is improperly seeking a “second bite at the apple” against the patent.
Helsinn Healthcare, S.A., v. Teva Pharmaceuticals USA
As early as 2016, the Amicus Committee identified Helsinn Healthcare, S.A., v. Teva Pharmaceuticals USA as a case of exceptional importance meriting the organization’s scholarly input. The case involves an issue of first impression regarding the AIA’s first-inventor-to-file provision in 35 U.S.C. § 102(a): whether an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art. Prior to any appellate decision in the case, the Naples Roundtable filed an amicus brief in the Federal Circuit in 2016 urging the original Federal Circuit merits panel to consider Congress’ twin goals in adopting a first-inventor-to-file regime of achieving (a) greater international harmonization with other countries and (b) greater certainty regarding the scope of patent protection. After the petitioner filed a petition for writ of certiorari to the Supreme Court, the Naples Roundtable filed a cert-stage amicus brief in April 2018 urging the Supreme Court to grant the petition. In June 2018, the Supreme Court agreed with the Naples Roundtable and granted the petition. In August 2018, the Naples Roundtable filed a merits-stage amicus brief in support of neither party, which, among other things, brought to the Court’s attention the laws of other countries that do not treat such sales as prior art.