z. ARCHIVE – 2021 Institute Agenda


February 15-17, 2021 – VIRTUAL

6th 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).

Monday, February 15, 2021

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 2:45 pm

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?

Discussion Leaders:
David Kappos (Moderator), Director Andrei Iancu, Jessica Landacre, Henry Hadad, Krish Gupta, Judge Paul Michel, Karen Cochran

Patent Public Advisory Committee quarterly meeting – February 11, 2021

2:50 pm to 3:15 pm Break

3:15 pm to 5:00 pm

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?

Discussion Leaders:
Robert Armitage (Moderator), Sharon Barner, Herb Wamsley, Kevin Rhodes, David Schwartz, A. Christal Sheppard

A Fresh Start on a Patent System by Robert Armitage

Tuesday, February 16, 2021

1:00 pm to 2:00 pm

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?

Discussion Leaders:
A. Christal Sheppard (Moderator), Warren Woessner, Robert Stoll, Matthew Powers, Michael Dzwonczyk, Phil Johnson, Janet Pioli

2:10 pm to 3:10 pm

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?  

Discussion Leaders:
Craig Martin (Moderator), Stan Fisher, Hank Gutman, Timothy Holbrook, Judge Douglas Ginsburg

3:10 pm to 3:30 pm Break

3:30 pm to 4:30 pm

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? 

Discussion Leaders:
Steven Auvil (Moderator), George Pappas, Leora Ben Ami, Judge Joy Conti, Judge Kent Jordan, Judge Kathleen O’Malley, Anthony Trenton

4:40 pm to 5:40 pm

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?

Discussion Leaders:
Judge Faith Hochberg (Moderator), Leah Waterland, Heinz Goddar, Judge James Holderman, Monte Cooper, Matteo Sabattini

Recent Developments in SEP-Related Case-Law in Germany by Heinz Goddar

Wednesday, February 17, 2021

1:00 pm to 2:30 pm

Phoenix Issue IX. The PTAB Playing Field – Impact of the Recent Changes

Discussion Leaders:
Teresa Summers (Moderator), William Atkins, Rob Sterne, Teresa Rea, Judge James Smith

[DRAFT] Legislative Proposal to Improve Inter Partes Reviews for Both Patent Owners and Petitioners

2:40 pm to 3:40 pm

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.

Discussion Leaders:
Hal Wegner (Moderator), Otto Licks, Heinz Goddar, Shoichi Okuyama, Roger Hughes, Meredith Addy, Sharon Barner 

3:40 pm to 4:00 pm Break

4:00 pm to 5:00 pm

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?

Discussion Leaders:
Clyde Siebman (Moderator), Azra Hadzimehmedovic, Ken Adamo, Kristen Osenga

5:00 pm to 5:30 pm

Leahy Institute Wrap Up Comments