LEAHY INSTITUTE OF ADVANCED PATENT STUDIES
March 16-18, 2022 – VIRTUAL
7th 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.”
Please Note: There will NOT be any recording of the sessions described below. Also, all times listed below are Eastern Standard Time (EST).
Wednesday, March 16, 2022
1:00 pm to 1:15 pm Opening Remarks
Gary Hoffman, President
David Kappos, Chairman, Advisory Board
Andy Baluch, Chairman, Amicus Committee
Senator Patrick Leahy (invited)
1:15 pm to 3:40 pm 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.
Bob Armitage (Moderator), Molly Silfen, Phil Warrick, Judge Kathleen O’Malley, Matt Powers, Herb Wamsley, Dan Lang
- An Enhanced Straw Proposal for Discussion – 2022 by Robert A. Armitage
- Pre-Read – An Enhanced Straw Proposal for Discussion – 2022 by Robert A. Armitage
3:40 pm to 4:00 pm Break
4:00 pm to 5:30 pm 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.
Stan Fisher (Moderator), Judge Kent Jordan, Heinz Goddar, Judge Faith Hochberg, Craig Martin, Monte Cooper, Melanie Mueller, Chris Longman
- FRAND goes global by Adam D Harber, Andrew Trask and Shayon Ghosh
Thursday, March 17, 2022
1:00 pm to 1:15 pm Introductory Comments
1:15 pm to 3:00 pm 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?
David Kappos (Moderator), Bob Stoll, Elizabeth Dougherty, Crystal Sheppard, Laura Coruzzi, Warren Woessner
3:00 pm to 3:30 pm Break
3:30 pm to 5:00 pm Phoenix Issue IV
Are international systems adequately promoting innovation? What can the US learn from other countries’ approach to subject-matter patent eligibility? 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?
- Should the U.S. Congress give Patent Owners the Benefit of a Foreign Jurisdiction’s Determination Regarding Subject-Matter Eligibility? by Andy Baluch
Friday, March 18, 2022
1:00 pm to 1:15 pm Introductory Comments
1:15 pm to 3:00 pm 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?
Teresa Summers (Moderator), Louis Tompros, Bill Atkins, Michelle Armond, Nimalka Wickramasekera, Jessica Kaiser
- How Increased Stays Pending IPR May Affect Venue Choice by Forrest McClellen, Douglas Wilson and Michelle Armond
- A Different Ball Game: Depositions at the PTAB and District Court by Michelle E. Armond and Josepher Li
3:00 pm to 3:30 pm Break
3:30 pm to 5:00 pm 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?
Rob Sterne (Moderator), Michelle Holoubek, Mike Dzwonczyk, Henry Hadad, George Pappas, Terry Rea
- 7 Hot Topics in IP for Pharma AI and Bioinformatics by Michelle K. Holoubek
- The Age of AI and Our Human Future by Henry A. Kissinger, Eric Schmidt, Daniel Huttenlocher (2021)
- Life Force: How New Breakthroughs in Precision Medicine Can Transform the Quality of Your Life & Those You Love by Tony Robbins and Peter H. Diamandis with Robert Hariri
5:00 pm to 5:15 pm Closing Remarks