2018 Institute Agenda

2018 Institute Agenda


February 18-20, 2018 in Naples, Florida

3rd 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 has identified ten current issues as being in need of clarification.  These issues will be the focus of discussion at the 2018 Leahy Institute.

Sunday, February 18, 2018

11:30 am to 2:00 pm Naples Princess Networking Lunch Cruise

5:00 pm to 7:15 pm Beachfront Reception and Opening Dinner


Monday, February 19, 2018

7:15 am to 8:00 am Registration and Continental Breakfast

8:15 am to 8:45 am Opening Remarks

Gary Hoffman, President
David Kappos, Chairman, Advisory Board
Andy Baluch, Chairman, Amicus Committee
Senator Patrick Leahy– via video comments

8:45 am to 10:00 am

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?

Discussion Leaders:
Judge Richard Linn (Moderator), David Kappos, Rob Sterne, Ken Adamo, Sharon Barner, Herb Wamsley

10:00 am to 11:00 am

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

Discussion Leaders:
Andrew Baluch (Moderator), Louis Tompros , Teresa Summers, Bill Atkins, Don Banowit, Henry Hadad

11:00 am to 11:15 am Break

11:15 am to 12:30 pm

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?

Discussion Leaders:
Robert Stoll (Moderator), Richard Rainey, Phil Johnson, Kevin Rhodes, Robert Armitage, Douglas Wilson

12:30 pm to 1:30 pm Lunch

1:45 pm to 3:00 pm

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?

Discussion Leaders:
Judge Faith Hochberg (Moderator), Hal Wegner, Adam Mossoff, Robert M. Isackson, John Duffy, Andrew Pincus

3:00 pm to 4:00 pm

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?

Discussion Leaders:
Terry Rea (Moderator), John Pegram, Paul Cole, Heinz Goddar, Warren Woessner

4:00 pm to 4:15 pm Break

4:15 pm to 5:30 pm

Phoenix Issue VII.  To what extent is the patent system well-served by the extra-territorial enforcement of unfair competition and intellectual property laws.

Discussion Leaders:
David Kappos (Moderator), Hal Wegner, Shoichi Okuyama, Hon. Roger Hughes, Otto Licks, Koren Wong, Prof. Timothy Holbrook


Tuesday, February 20, 2018

7:00 am to 7:45 am Continental Breakfast

8:00 am to 9:15 am

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

Discussion Leaders:
Mark Lauroesch (Moderator), Joseph Matal, Tina Chappell, Clyde Siebman, George Pappas, James Dabney, Stanley Fisher

9:15 am to 10:15 am

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?

Discussion Leaders:
Gary Hoffman (Moderator), Judge James Holderman, John Scott, Leora Ben Ami, Aaron Nathan

10:15 am to 10:30 am Break

10:30 am to 11:45 am

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?

Discussion Leaders:
Judge Kathleen M. O’Malley (Moderator), Matt Powers, Michael Dzwonczyk, Donald Dunner, Michelle Armond, Carter Philips

11:45 am to 1:00 pm

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?

Discussion Leaders:
Eric Hutz (Moderator), Andrea Jeffries, Patrick Arenz, Krish Gupta, Melissa Finocchio, Samantha Jameson

6:00 pm Chinese Dinner

Additional Judges Accepted:

Chief Judge Ruschke
Judge Plager
Judge Lifland
Judge Yeakel
Judge Stark
Judge Kennelly