2016 Conference Papers

The Phoenix Issues are reiterated here.  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.

Phoenix Issue I.  To what extent is the Patent System served by judicially extending denial of patent eligibility under 35 U.S.C. § 101 beyond the concept of obviousness as enacted in 35 U.S.C. § 103?  What subject matter lacks patent-eligibility that is not already denied patentability under §§ 102, 103, 112?  How broadly should the § 101 eligibility standard be applied; e.g., in the biotech area, for medical diagnostics, and for all machines controlled by any computer program?

Phoenix Issue I Discussion Outline

A New Approach to Superseding Implicit Exceptions to Patent Eligibliity by Robert A. Armitage

The Sequinom Patent Eligibility Challenge by Harold C. Wegner

The Mossoff-Noonan ’23 Professors‘ Amicus Brief

Ariosa v. Sequenom – A Path to the Supreme Court by Paul Cole


Phoenix Issue II.  Has the Patent System been well served by judicial pronouncements of patent preemption?  (Cf. Bilski, Mayo, Alice denying patent-eligibility on the basis of “preemption” of the basic building blocks of science.)  Should patents preempt experimentation on, and not with, the patented invention?  (Deuterium Corp. v. U.S., 21 Cl. Ct. 132).  Should the “all elements” rule that excludes infringement of a combination claim obviate the “preemption” concern where an otherwise ineligible element is paired in a combination claim that together provides an “inventive” (nonobvious) advance?

Phoenix Issue II Discussion Outline


Phoenix Issue III.  Is innovation well served by the limitation on international patent exhaustion reflected in the result in Jazz Photo?  (Cf. Lexmark on the way to the Supreme Court.)  To what extent do notions of copyright exhaustion shed light on issues of patent exhaustion?

Phoenix Issue III Discussion Outline

Lexmark International Patent Exhaustion by Harold C. Wegner

Doctrine of Exhaustion — The Canadian Experience by Hon. Roger T. Hughes

Price Differentiation and the Conundrum of Exhaustion Principles by Prof. Dr. Heinz Goddar

Exhaustion Outline by Prof. Dr. Heinz Goddar

Exhaustion in Developing Countries The Case in Brazil by Otto Licks


Phoenix Issue IV. What policies should the USPTO adopt to streamline and expedite prosecution; e.g., placing limits on RCEs, creating greater certainty in making actions final, and resurrecting the doctrine of undue multiplicity?

Phoenix Issue IV Discussion Outline


Phoenix Issue V.  What changes are necessary to constructively better implement the AIA?

Phoenix Issue V Discussion Outline

Phoenix Issue V PowerPoint


Phoenix Issue VI.  With the new requirement in the Federal Rules to address proportionality for determining the scope of discovery, how should the District Courts proceed in making the determination?

Phoenix Issue VI Discussion Outline

Chief Justice’s 2015 Year End Report

Sedona Working Group Commentary

Gilead v Merck – Order Denying Motion to Compel (01-13-2016)

Proportionality Under New F R Civ P 26(b)