2023 Institute Agenda

LEAHY INSTITUTE OF ADVANCED PATENT STUDIES

January 15-17, 2023 in Naples, Florida

8th 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.”


Sunday, January 15, 2023


4:30 pm to 7:30 pm Reception and Opening Dinner


Monday, January 16, 2023

8:00 am to 9:00 am Registration and Continental Breakfast

9:00 am to 9:15 am Opening Remarks and Update from the Amicus Committee
Teresa Summers and Andy Baluch, Co-Presidents
David Kappos, Chairman, Advisory Board
Judge Richard Linn
Senator Patrick Leahy (invited)
New from Amicus Committee
Announcing new Scholarship Program

9:15 am to 10:45 am Phoenix Issue I

Patent Prosecution– Proposals for Reforming “Prep and Pros” for the 21st Century

  • What legislative or regulatory changes would you recommend for obtaining better work product “inputs” from patent applicants?
  • Should the United State align its “sufficiency of disclosure,” “continuation” and “restriction” practice with other jurisdictions?
  • How many claims and continuations does an applicant reasonably need to protect her invention?
  • What reforms should be made to “IDS” practice at the USPTO?
  • How can patent offices around the world better coordinate patent examination and the citation of prior art references?
  • How can we incentivize greater third-party participation during prosecution?

Discussion Leaders:
Robert Armitage (moderator), Brian Dorn, Elizabeth Dougherty, Drew Hirshfeld, Janet Pioli, Molly Slifen, Bob Stoll


10:45 am to 11:15 am Break

11:15 am to 12:30 pm Phoenix Issue II

Patent Litigation– Proposals to Ensure that All Litigants Obtain Just, Speedy, and Inexpensive Determination of Every Action

  • What legislative or Federal Rule changes would you recommend for reforming the US patent litigation system?
  • How have the 2015 FRCP changes to Pleading and Discovery affected patent litigation?
  • Are changes to the patent venue statute, or its application, needed?
  • What is the current state of patent damages and injunctions, and are reforms needed?
  • How can judges in the US and abroad handle their respective need for information and/or coordination on cases between the same parties covering the same IP, particularly when there are confidentiality orders in place?
  • What lessons did we learn from the 10-year Patent Pilot Program, which ended last year?
  • Is a Small Claims Patent Court needed, and if so, how should it be designed?

Discussion Leaders:
Judge Faith Hochberg (moderator), Ken Adamo, Judge Susan Braden, Henry Hadad, Samantha Jameson, Brian Kramer, Judge Kathleen O’Malley, Matt Powers


12:30 pm to 2:00 pm Lunch

2:00 pm to 3:15 pm Phoenix Issue III

Administrative Post-Issuance Patent Validity Review – Proposals to Address PTAB, EPO, and JPO Shortcomings

  • How could PGRs and IPRs at the PTAB be improved by incorporating post-issuance validity review practices at the EPO and JPO—and vice versa?
  • What legislative or regulatory changes should be priorities for reforming PGRs and IPRs at the PTAB?
  • If there are too many ways to change and/or challenge a US patent after it issues (re-exam, supplemental exam, reissue, certificate of correction, PGR, IPR), what needs to go—why and how?
  • Should discretionary denials at the PTAB be rethought and, if so, what reforms are needed?
  • Should a stay of district court litigation be automatic if a PTAB review is instituted—or should some other mechanism be used to coordinate and streamline the interface?
  • Is there sufficient transparency and independence of APJ decision-making at the PTAB, and, if not, how should that be addressed?

Discussion Leaders:
Phil Warrick (moderator), Michelle Armond, Shoichi Okuyama, Rob Sterne, Herb Wamsley


3:15 pm to 3:45 pm Break

3:45 pm to 5:00 pm Phoenix Issue IV

Patent-Antitrust Interface and Patent Exclusivity-Public Interest Conflicts – Proposals for Which Should Take Priority and When?

  • When, if ever, should patent holders of “critical” technology be compelled to grant licenses in the US? Around the world?
  • What reforms are needed to address “anti-suit” injunctions, specifically in China, Germany, UK, and US?
  • How should FRAND royalty rate determinations be improved?
  • Should special rules apply for confronting the standard essential patents/antitrust challenges around 5G?
  • How should we improve on the quality of evaluations of SEPs and who should be involved in the process?
  • What needs to change with respect to US Government policy positions on SEP/FRAND/injunction issues?

Discussion Leaders:
Brian Dorini (moderator), Heinz Goddar, Judge Kent Jordan, David Kappos, Otto Licks, Melanie Müller, Richard Rainey


Tuesday, January 17, 2023

8:00 am to 9:00 am Continental Breakfast

9:00 am to 9:15 am Opening remarks and remarks from Senator Leahy (if available)

9:15 am to 10:45 am Phoenix Issue V

Patent Eligibility– After More Than a Decade since Bilski v. Kappos, Where and How Do We Find the Talisman for Fixing the “Validity Goulash”?

  • How might the current jurisprudence at the Federal Circuit in applying the existing Supreme Court’s judicial exceptions to Section 101 be improved?
  • What might legislators learn from other countries’ approach to subject-matter eligibility and its applicability to reforms to 35 U.S.C. §101?
  • Is the “Patent Eligibility Restoration Act of 2022” (introduced August 2022 by Senator Tillis) a realistic path forward—including the bill’s exclusion from eligibility for any “non-technological economic, financial, business, social, cultural, or artistic process”?
  • Does a viable path forward demand some legislative compromise be struck—and does compromise require addressing a non-infringement defense for experimental uses, clarification to Section 112 requirements, infringement exclusions for second opinion diagnostic tests, etc.?

Discussion Leaders:
Kristin Osenga (moderator), Patrick Coyne, Judge Paul Michel, George Pappas, Warren Woessner


10:45 am to 11:15 am Break

11:15 am to 12:30 pm Phoenix Issue VI

Patent Issues Affecting the Life Sciences Globally – What More or Less Should Countries Do To Optimally Incentivize Life Science Innovation?

  • In what respects, if any, is the current state of patent protection for therapeutics, diagnostics, and biologics in the major patent jurisdictions around the world suboptimal and, what initiatives would move the world closer to optimization?
  • Are the “written description” and “enablement” requirements being applied today around the world in an optimal manner or does the balance between the quality/quantity of patent disclosure and the scope of protection available need tweaking?
  • To what extent, if any, should pricing and access be relevant to the scope and duration of IP protection made available to life sciences innovators, including forced or voluntary patent waivers during a global crisis?
  • Are “skinny labels” still a viable way for generics to come to market for off-patent uses after GSK v. Teva, and if not, what would a legislative “safe harbor” look like?

Discussion Leaders:
Aaron Nathan (moderator), Stan Fisher, Deborah Fishman, Phil Johnson, Terry Rea

12:30 pm to 12:45 pm Closing Remarks

6:00 pm Chinese Dinner*

*The Tuesday Chinese Dinner is priced individually on the invitation response form.