The Phoenix Issues
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.”
CURRENT PHOENIX ISSUES
Phoenix Issue I. Rethinking Our Patent System –Can the Current US Patent System be Retooled to Better Encourage Innovation? Building on the 2021 “fresh start” framework for improving the quality of patent examination and the efficiency of resolving issues of patent validity and infringement, can we forge a consensus for legislation aimed at: (1) patent examination becoming more compact, proceeding to conclusion in a more timely manner, costing less, and focusing exclusively on the patentability issues most critical for a high-integrity work product; (2) post-grant validity determinations being uniformly made faster and fairer, and more predictably and more efficiently; and (3) patent enforcement being similarly streamlined, yet better assuring valid patents secure full compensatory damages and access to injunctive relief and who should be entitled to injunctions and when.
Phoenix Issue II. Navigating Patent-Antitrust Interface and Conflicts – Which should take priority and when? Should patent holders of “critical” technology be compelled to grant licenses in the US? Around the world? Anti-suit injunctions raised by decisions in Wuhan, versus the approach taken in Germany, the UK, India, and the US should have coverage. Has the patent thicket become an unnecessary road block? Confronting the SEP/antitrust challenges around 5G. How should we improve on the quality of evaluations of SEPs and who should be involved in the process? The Administration has suggested that DOJ and DOC consider retracting the 2019 SEP-Patent guidance they put out that focused on the availability of injunctions in SEP litigation.
Phoenix Issue III. Does the current US Patent System meet its primary objectives of incentivizing innovation and competition? Is the current judicial interpretation of Section 101 stifling innovation? Is the US approach to subject-matter eligibility creating a gulf between the US and other major patent jurisdiction? What should be done absent Congressional action? What will be the impact of the Restoring the America Invents Act on innovation if passed? Are we sufficiently fostering innovation of new vaccines and drugs for the next pandemic? Are patent holders being adequately compensated for their development of critical technologies?
Phoenix Issue IV. Are international systems adequately promoting innovation? How can the US, EPO, JPO and KIPO work together to confront systemic challenges? What has been achieved in terms of patent harmonization and work-sharing in recent years and what more should be done? What role is China playing in the international patent system? What is the significance of the “new Trilateral vision” established by USPTO, JPO and EPO? Should there be any compulsory licensing of critical technology? Is there a need for an internationally accepted approach in handling SEP controversies?
Phoenix Issue V. The PTAB Playing Field – Are IPR proceedings meeting their promise, or should they be altered?
- Are IPRs meeting the objectives of simplifying and decreasing the cost of patent litigation?
- Impact of the Supreme Court’s decision in U.S. v. Arthrex.
- Should all the claims and proposed grounds of invalidity be considered?
- Effective ways to succeed in IPR proceedings and assertive use of estoppel.
- Should Discretionary denials be curtailed? Subject to appeal?
Phoenix Issue VI. Does the patent system incentivize life science and artificial intelligence innovations? – Does our systems adequately protect AI, diagnostics, therapeutics, and biologic drugs? The use of AI is pervasive in almost all areas of technology today but does our patent system support innovations of such technology or has the system becoming a stumbling block or an irrelevancy? The development of biologics is becoming a modern-day reality not just a dream for the future, but is our patent system prepared? Are changes needed to the US Patent system to incentivize investment in the advanced diagnostics, therapeutics, and vaccines we will need for the next pandemic? Is a strong US patent system beneficial to global health? The “patent dance” for biologics has been controversial and shrouded in secrecy. But effective June 2, 2021, the information provided by the product sponsor will be available online in the FDA’s purple book. Are courts (Fed. Cir. in particular in Amgen v. Sanofi) defining antibody-based science in a way that is not similar to how scientists view it? How does the US compare to China?
HISTORICAL PHOENIX ISSUES
Phoenix Issue I
Alice and Mayo — What issues are amenable to dispositive motion versus those that should go to trial (or an evidentiary hearing) to fully consider the relevant facts; and should these issues go to the jury? Section 101 after Cardionet, Uniloc, American Axle v Neapco. What can and should the Federal Circuit do to offer guidance to applicants and litigants for the future?
Phoenix Issue II. Does the current US Patent System meet its primary objectives of encouraging innovation and competition?
- Is the current System providing a sufficient incentive for capital-intensive R&D to take place in the United States?
- Have uncertainties in the System negatively impacted the willingness of Venture Capitalists to invest?
- Does the current System incentivize investment in the advanced diagnostics, vaccines and products we will need for the *next* pandemic?
- Has the current system created any barriers to addressing the current pandemic?
- Does the current System provide adequate protection for AI developments and biopharmaceutical drug developments?
- What major changes are needed to meet these objectives?
Phoenix Issue III. Suppose that you were given the challenge to simplify and streamline U.S. patent law and practice, with the objective of enhancing predictability and certainty, reducing costs, and speeding determinations of patentability and liability for patent infringement. Further assume making such simplifying and streamlining changes was absolutely essential for patent rights to operate as effective property rights, in order for the U.S. patent law to fulfill its constitutional mandate to promote progress in useful arts. Thus, there would be no reason to be timid about proposing needed reforms. Finally, assume that there were no “givens” in terms of what you would need to maintain from the current patent laws in a new simplified, streamlined patent act. Put another way, knowing what we now know, what would a “fresh start” patent law look like?
Phoenix Issue IV. Antitrust – Patent Interface and Conflict in view of FTC v. Qualcomm: How has this case impacted the developing area of law surrounding antitrust and SEPs? Should FRAND disputes focus on the antitrust laws? Is a “no license, no chips” policy better characterizes as a “no license, no problem” policy? Are fair licensing policies simply contract disputes?
Phoenix Issue V. What laws/causes of action/outcomes can litigants and courts use to decrease nuisance lawsuits? Does the system have control over frivolous litigation? Are there ways to more meaningfully focus discovery to reduce litigation cost and duration? Are amendments to the Fed. R. Civ. P. necessary (e.g., pleading standards) or can courts adequately address frivolous litigation through Rule 11 and 12 motions?
Phoenix Issue VI. The future of SEP litigation – Should whichever country decides the rate first be controlling (Unwired v. Huawei (UK Supreme Court sets global FRAND rate))? Are FRAND rates really a global issue? Has Germany Solved the Dilemma of Balancing Interests in Licensing of SEPs?
Phoenix Issue VII. Should Patent Injunction Standards be Revised to make it easier to obtain an injunction? Is Germany moving in the direction of making it harder to obtain injunctions in its Patent Modernization Law? Where is the proper balance to encourage innovation and competition?
Phoenix Issue VIII. Cross-border disputes and multinational litigation: Issues pertaining to strategic use of international post-grant proceedings, harmonization, discovery disputes, and global settlement/licensing.
Phoenix Issue IX. The PTAB Playing Field – Impact of the Recent Changes
Phoenix Issue I. PTAB:
- Should the IPR Model be used to assess all issues of patentability whenever a defense to infringement is patent invalidity? And if so, then how should the IPR process be changed to accomplish this objective?
- Have the recent changes in the PTAB Rules and Decisions had a positive impact in strengthening the patent system? What further administrative changes in the IPR process should the PTO consider?
- Would the changes proposed in the recently introduced “STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2019 ” improve or strengthen the patent system?
Phoenix Issue II. Is there a current conflict between the goals and implementation of the patent laws and antitrust laws that is impeding the effectiveness of the U.S. patent system’s ability to promote investment in developing and marketing new technology?
Phoenix Issue III. Can the Courts and the parties agree on how to determine patent damages and valuation for licensing of SEP/FRAND patents? Is there a need to clarify the current law and adopt a consensus approach? If so then what form should the model take?
Phoenix Issue IV. Section 101 –Will Congress find a politically viable legislative fix to address its Mayo/Alice jurisprudence or alternatively should the Supreme Court provide a way to clarify and correct the issues and if so, then how should the Court do so? If the cert on this issue is taken by the Supreme Court, then what recommendations should be presented to the Supreme Court as a ground for resolution? Has the recent Federal Circuit en banc decision in Athena Diagnostics Inc v Mayo Collaborative Services set up the 101 question for review by the Supreme Court and if so then what new test should the Court develop?
Phoenix Issue V. International Patent Issues — What should be the future direction of harmonization efforts in connection with the substantive law among the top 5 patent offices (the IP5). What are the priority areas for substantive law harmonization? Compare patent validity challenges in the Federal German Patent Court, JPO, CNIPO to provide a comparison on stats and trends globally?
Phoenix Issue VI. Is the patent litigation being abusively utilized today or have “Troll” actions been significantly curbed? Have IPRs, recent Court decisions, changes in venue selection and the more frequent award of attorneys’ fees helped? What actions should be taken to improve the quality of the patents that are issued?
Phoenix Issue VII. Damages and injunctions – Are the current tests for obtaining injunctions after eBay supportive or an obstruction to innovation? What is the impact in investing in and promoting and marketing new technologies? Does the current damages law put too great a burden on plaintiffs or too little to reach the right result? Are Daubert motions being properly used by the parties and the Courts? Have the limits on damages impacted innovation in the U.S.?
Phoenix Issue VIII. Coping with issues arising from Litigation Funding; Does such funding models play a role in encouraging and rewarding innovation?
- Ethics and issues around litigation funding in view of the old issues of barratry, champerty, usury, and maintenance
- Discovery Issues
- Disqualification Issues
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?
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 ground of invalidity and claim interpretation standards?
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?
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)?
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?
Phoenix Issue VI. Is there a current conflict between implementation of the patent laws and antitrust laws?
Phoenix Issue VII. To what extent is the patent system well-served by the extra-territorial enforcement of competition and intellectual property laws?
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?
Phoenix Issue IX. To protect against willful infringement allegations after Halo, should parties obtain opinions from counsel and what waiver issues arrive?
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?
Phoenix Issue I. Has the AIA strengthened the patent system and decreased the cost of removing invalid patents? Has AIA gone far enough? What can and should be done to improve the process?
Phoenix Issue II. Is the existence of the IPR and PGR procedures beneficial to the strength of the patent system and if they are held by the Supreme Court to be unconstitutional in Oil States vs. Greene’s Energy Group then what is the impact and what if anything should be done to replace these procedures?
Phoenix Issue III. Is the current level of implementation of Section 101 supportive of having a strong patent system or has it gone too far? If it should be changed then what judicial and legislative actions regarding patent eligibility under Section 101 would best serve the patent system?
Phoenix Issue IV. How best should venue issues be determined following the Supreme Court’s recent decision in TC Heartland v. Kraft?
Phoenix Issue V. What are the economic and legal consequences (both in the U.S. and internationally) of the Supreme Court’s recent decision in Impression Products v. Lexmark, and what, if any, judicial or legislative action is needed to best address those consequences?
Phoenix Issue VI. What actions, if any, are needed to protect the U.S. patent system and U.S. patent holders in light of Brexit and ongoing developments relating to a European Unitary Patent/Unified Patent Court?
Phoenix Issue VII. To what extent is the patent system well-served by the extra-territorial enforcement of unfair competition and intellectual property laws?
Phoenix Issue VIII. What more needs to be done following the Supreme Court’s decision in Halo v. Pulse Electronics to properly determine whether a case is sufficiently egregious to warrant an award of enhanced damages? Has Halo resurrected the need to obtain an opinion of counsel, and if so, should that need be restricted to a subset of cases?
Phoenix Issue IX. Has the Supreme Court’s decision in Octane Fitness v. Icon Health adequately addressed the award of attorney fees in exceptional cases?
Phoenix Issue X. Would an exchange of an early set of Patent Damage Contentions, such as now provided for in the NDCA, aid in settling litigation and making proportionality determinations?
Phoenix Issue I. FRAND/SEP Litigation — Policy Struggles. Sorting out today’s problems.
Phoenix 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?
Phoenix 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?
Phoenix Issue IV. Section 101 issues. Abstract ideas? Products of nature? Diagnostic tests? Medical Procedures? Computer software (is this a dead area for protection?
Phoenix Issue V. Is there a growing anti-patent sentiment? Impact on the system? Impact on International Competition? Evaluating international litigation.
Phoenix Issue VI. Comparative Law Forum – Current Topics in Comparative and International Law.
Phoenix Issue VII. New Federal Trade Secret laws.
Phoenix 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?
Phoenix 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?
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 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 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 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 V. What changes are necessary to constructively better implement the AIA?
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?