z. ARCHIVE – 2018 Institute Issues and Papers

The Issues discussed at the 2018 Leahy Institute of Advanced Patent Studies are set forth below.  Following each of the issues are papers accepted by The Naples Roundtable and posted to stimulate discussion and debate during the conference.  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.  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?

“The Impact of Bad Patents on American Businesses” Supplemental Statement of Judge Paul R. Michel (Ret.) Before the Subcommittee on Courts, Intellectual Property, and the Internet, Committee on the Judiciary, United States House of Representatives

The Role of IP In Economic Growth –Looking Back, Looking Forward by David J. Kappos and Jessica M. Goodman

Paper: Has the AIA Strengthened the Patent System? by Kenneth R. Adamo

PowerPoint: Has the AIA Strengthened the Patent System? by Kenneth R. Adamo

Impact of the America Invents Act on US and International Litigation Strategy by Kenneth R.  Adamo

PGR Basics; Pros/Cons by Kenneth R. Adamo

PGR vs. IPR Chart by Kenneth R. Adamo

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?

Potential Impact of Oil States vs. Greene’s Energy Group on Final Written Decisions and Parallel Judgments by Louis W. Tompros

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?

A Unified Proposal Superseding The “Implicit Exception” To Patent Eligibility Harmonizing The Aba, Ipo, Aipla, And Banbury Conference Initiatives On § 101 Reform by Robert Armitage

Patent Bar Groups Propose Legislation to Fix Patent Subject Matter Eligibility Problems by Robert L. Stoll

Director Andrei Iancu’s Act One by Robert L. Stoll

Phoenix Issue IV. 
How best should venue issues be determined following the Supreme Court’s recent decision in TC Heartland v. Kraft?

The Effect of TC Hearland on Patent Review by Clyde Siebman and Michael C. Smith

BASF Corporation v. SNF Holding Company, Et Al.

The Impact of TC Heartland on Hatch-Waxman and BPCIA Litigation by George F. Pappas and Jihong Lou

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?

Post Grant Patent Challenge Procedures Under Fire at The Supreme Court by Harold C. Wegner

Impression Products Inc. V. Lexmark International, Inc. by Robert M. Isackson

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?

Patent owners should not fear the Unified Patent Court by John Pegram

UK and UPC: a test of compatibility by John Pegram

Unified Patent Court Procedure by John Pegram

Patent Strategy in Europe in view of the Unitary Patent System and BREXIT by Eva Liesegang and Dr. Andreas Lucke

Unitary Patent in Europe & Unified Patent Court (UPC): An overview and a comparison to the “classical“ patent system in Europe by Leffert & Steffan

Proposal for Best Patent Filing/Prosecution Strategy in Europe in View of UP/UPC/BREXIT – State of Considerations December 5, 2017 by Heinz Goddar

A UK Perspective By Paul Cole

Structure of the 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?

Boundaries, Extraterritoriality, And Patent Infringement Damages by Timothy R. Holbrook

Extra-Jurisdictional Remedies Involving Patent Licensing by Koren W. Wong-Ervin, Joshua D. Wright, Bruce H. Kobayashi, and Douglas H. Ginsburg

Testimony On International Antitrust Enforcement by Koren W. Wong-Ervin

The Department of Justice’s Long-Awaited and Much Needed Course-Correction on FRAND-Assured Standard-Essential Patents Competition Policy International, forthcoming November 2017 by Douglas H. Ginsburg and Koren W. Wong-Ervin

These articles were first published on the IAM daily blog by Globe Business Media Group. To visit IAM please go to www.IAM-media.com.

IP insider: The patent follies of antitrust zealots by David J. Kappos and and David J. Teece

Delrahim speech shows Trump administration DoJ will no longer favour IP users over owners, says Kappos by Joff Wild

IAM Response to Delrahim Speech by Joff Wild

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?

The Willful Infringement Standard: Notes on its Development, Impact, and Future Trends by Leora Ben-Ami and Aaron Nathan

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?

Federal Circuit Law on Attorneys’ Fees After Octane Fitness by Michelle Armond

Enhancing Patent Damages by Dmitry Karshtedt

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?

Hunter Douglas Inc., Et Al. v.Ching Feng Home Fashions Co.,Ltd.

Twilio, Inc. v. Telesign Corporation