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2023 Roundtable Issue #1 – Patent Prosecution Proposals for Reforming “Prep and Pros” for the 21st Century
Phoenix IssuesLitigation2023
For “Patent Wars” Alarmists, Time to Make Peace with the Empirical Data
Phoenix IssuesProsecution2023
New Director Reviews: The Latest IPR Guidance From the Patent Office
Phoenix IssuesProsecution2023
Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights
Phoenix IssuesLitigation2023
Restoring Deterrence: The Case for Enhanced Damages in a No-Injunction Patent System
Phoenix IssuesLitigation2023
Section 101 Patentable Subject Matter
Phoenix IssuesProsecution2023
What The Latest Case Data Reveals About Stays Pending IPR
Phoenix IssuesProsecution2023
2022 Phoenix Issues

A document listing the Phoenix Issues for 2022.

Institute Agendas2022
7 Hot Topics in IP for Pharma AI and Bioinformatics
Phoenix IssuesLitigation2022
A Different Ball Game: Depositions at the PTAB and District Court
Phoenix Issues2022
FRAND goes global
Phoenix IssuesLitigation2022
How Increased Stays Pending IPR May Affect Venue Choice
Phoenix Issues2022
Naples Roundtable Recommends Suspension of Patent Office Relationships With Aggressor States
Amicus PapersInternational2022
OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 (PTAB) and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229 (PTAB)
Amicus PapersPost Grant Oppositions2022
Should the U.S. Congress give Patent Owners the Benefit of a Foreign Jurisdiction’s Determination Regarding Subject-Matter Eligibility?
Phoenix Issues2022
The USPTO Should Give Ukraine Even More Help
Amicus PapersInternational2022
What would a fresh start look like?
Phoenix IssuesLife Science2022
Antitrust Analysis Involving Intellectual Property and Standards: Implications from Economics

Document by Jorge Padilla, Douglas H. Ginsburg, & Koren W. Wong-Ervin on Antitrust Analysis.

Phoenix IssuesLitigation2021
Antitrust Analysis Involving Intellectual Property and Standards: Implications from Economics

Document on antitrust analysis by Jorge Padilla, Douglas H. Ginsburg, & Koren W. Wong-Ervin.

Phoenix Issues2021
Background Materials for Discussion

Document containing background materials for discussion on issue VI by George Pappas.

Phoenix Issues2021
Constitutional Confines of Our Patent System and Subject Matter Eligibility: Nine Answers to Ten Questions That Need Addressing

Document by Robert A. Armitage on questions about the Patent System and Subject Matter Eligibility.

Phoenix IssuesLife Science2021
Federal Circuit Appeals from the PTAB: Summaries of Key 2019 Decisions

Document by Sterne Kessler on key 2019 decisions.

Phoenix IssuesProsecution2021
Federal Circuit Sheds New Light on TCL v. Ericsson: U.S. Patent Office, U.S. Dept. of Justice and NIST Issue New Joint Statement on SEP Remedies

Document on SEP Remedies as related to TCL v. Ericsson by Kenneth Adamo.

Phoenix IssuesLitigation2021
Framework for Analysis of Standard-Essential Patent (SEP) and Fair, Reasonable, and Non-Discriminatory (FRAND) Licensing and Royalty Issues—Stage Two

Document from A Project of The Sedona Conference Working Group on Patent Damages and Remedies (WG9) regarding SEP and FRAND.

Phoenix IssuesLitigation2021
How to improve IPRs without tossing the baby out with the bath water

Document by Russell Slifer on improving IPRs.

Phoenix IssuesProsecution2021
Legislative and Regulatory Proposals to Incentivize Post-Grant Review over Inter Partes Review

Document by Andrew S. Baluch on incentivizing post-grant review.

Phoenix IssuesProsecution2021
Legislative Proposal to Improve Inter Partes Reviews for Both Patent Owners and Petitioners
Amicus Papers2021
Legislative Proposal to Improve Inter Partes Reviews for Both Patent Owners and Petitioners
Amicus PapersEcouraging Innovation2021
OECD Competition Committee Roundtable on “Licensing of IP Rights and Competition Law”

Document by Koren Wong-Ervin on key Licensing of IP Rights and Competition Law.

Phoenix IssuesLitigation2021
Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments

Document by U.S. Patent & Trademark Office (USPTO), the National Institute of Standards and Technology (NIST), and the U.S. Department of Justice, Antitrust Division (DOJ) on remedies for Standards-Essential Patents subject to voluntary F/RAND commitments.

Phoenix IssuesLitigation2021
Policy Workshop on USPTO’s Rulemaking Authority
Amicus PapersProsecution2021
Section 101 and Life Sciences: What’s Left to Patent After Myriad, Mayo, And Alice?

Document by Warren D. Woessner and Robin A. Chadwick on Section 101 and Life Sciences.

Phoenix IssuesLife Science2021
STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2019

Document on STRONGER Patents Act of 2019 by the 116th Congress.

Phoenix IssuesProsecution2021
The PTAB Handbook Fifth Edition

Fifth edition handbook on PTAB by William P. Atkins.

Phoenix IssuesProsecution2021
“Excessive Royalty” Prohibitions and the Dangers of Punishing Vigorous Competition and Harming Incentives to Innovate

Document on “Excessive Royalty” Prohibitions by Douglas H. Ginsburg, Bruce H. Kobayashi, Koren W. Wong-Ervin, & Joshua D. Wright.

Phoenix IssuesLitigation2020
2020 Phoenix Issues

A document listing the Phoenix Issues for 2020.

Institute Agendas2020
Access to Relevant Prior Art

Postcard by USPTO.

Phoenix Issues2020
AIA’s Failure to Conform the Right to Claim Priority (35 U.S.C. §§ 119 and 120) with Assignee-Filing Authority (35 U.S.C § 118) May Jeopardize Thousands of Patents’ Priority Dates

Document on AIA’s failure to conform the right to claim priority by Andrew Baluch

Phoenix IssuesLitigation2020
Chrimar Systems Inc v. ALE USA INC.
Amicus PapersLitigation2020
Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee: Setting Out The EU Approach To Standard Essential Patents (Brussels, 29.11.2017)

Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee on setting out the EU approach to Standard Essential Patents.

Phoenix IssuesLitigation2020
FTC v. Qualcomm: Part One — Where is Denzel?

Blog by David Long.

Phoenix IssuesLitigation2020
Global Rate-Setting: A Solution for Standards-Essential Patents?
Phoenix IssuesLitigation2020
Guidelines of Guangdong High People’s Court on Adjudicating Cases of Disputes Over Standard-Essential Patents (Trial)
Phoenix IssuesLitigation2020
In the Quest to Strengthen and Improve the Patent System: The Imperative for Elevating Patent Examination Integrity

Document on elevating Patent Examination Integrity by Robert A. Armitage.

Phoenix IssuesLitigation2020
In the Quest to Strengthen Respect for Issued Patents: The Imperative for Further Administrative Reforms for IPRs

Document on further administrative reforms for IPRs by Robert A. Armitage.

Phoenix Issues2020
In The Quest To Strengthen The U.S. Patent System: The Imperative For Addressing The “Implicit Exception” Administratively

Document by Robert A. Armitage on the imperative for addressing the “Implicit Exception” administratively.

Phoenix IssuesProsecution2020
Issue X: Understanding The Conflict of Positions In the SEP / FRAND Issues – Latest US Views

Document on Phoenix Issue X by Ken Adamo.

Phoenix IssuesLitigation2020
Key Patent Harmonization Issues

Document on patent harmonization issues by SUGHRUE MION, PLLC.

Phoenix Issues2020
Patent Eligibility and Experimental Use: An International Comparison

Document by Andrew Baluch, Teresa Summers and Jason Well on patent eligibility and experimental use.

Phoenix IssuesProsecution2020
Phoenix Issue V

Document on Phoenix Issue V for 2019 by Paul Cole.

Phoenix Issues2020
Product Hopping and the Limits of Antitrust: The Danger of Micromanaging Innovation

Document on product hopping and the limits of antitrust by Douglas H. Ginsburg, Koren W. Wong-Ervin, & Joshua D. Wright.

Phoenix IssuesLitigation2020
Proposal to Expedite Joinder in Inter Partes Review

Proposal to Expedite Joinder in Inter Partes Review by Andrew S. Baluch and Teresa Stanek Rea.

Phoenix Issues2020
Recommendations Following the FTC’s October 2018 Hearings on IP and Innovation

Document on recommendations following the FTC’s October 2018 hearings by Koren W. Wong-Ervin & Dr. Georgios Effraimidis.

Phoenix IssuesLitigation2020
Section 101: What’s Left To Patent In The Life Sciences After Myriad, Mayo, And Alice?

Document on section 101 by Warren D. Woessner and Robin A. Chadwick.

Phoenix IssuesProsecution2020
The More Things Change: Improvement Patents, Drug Modifications, and the FDA

Document on changes in patents, drug modifications, and the FDA by Dmitry Karshtedt.

Phoenix IssuesLitigation2020
The Sedona Conference Framework for Analysis of StandardEssential Patent (SEP) and Fair, Reasonable, and Non-Discriminatory (FRAND) Licensing and Royalty Issues (Stage One)

Document from A Project of The Sedona Conference Working Group on Patent Damages and Remedies (WG9) on SEP and FRAND.

Phoenix IssuesLitigation2020
Tying and Bundling Involving Standard-Essential Patents

Document on tying and bundling involving standards-essential patents by Koren W. Wong-Ervin, Evan Hicks, & Ariel Slonim.

Phoenix IssuesLitigation2020
Understanding the Conflict of Positions on FRAND
Phoenix IssuesLitigation2020
“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

Phoenix IssuesPost Grant Oppositions2019
2019 Phoenix Issues

A document listing the Phoenix Issues for 2019.

Institute Agendas2019
A UK Perspective
Phoenix Issues2019
A Unified Proposal Superseding The “Implicit Exception” To Patent Eligibility Harmonizing The Aba, Ipo, Aipla, And Banbury Conference Initiatives On § 101 Reform
Phoenix IssuesProsecution2019
Boundaries, Extraterritoriality, And Patent Infringement Damages
Phoenix IssuesLitigation2019
Delrahim speech shows Trump administration DoJ will no longer favour IP users over owners, says Kappos

This article was first published on the IAM daily blog by Globe Business Media Group. To visit IAM please go to www.IAM-media.com.

Phoenix IssuesLitigation2019
Director Andrei Iancu’s Act One
Phoenix IssuesProsecution2019
Enhancing Patent Damages
Phoenix Issues2019
Extra-Jurisdictional Remedies Involving Patent Licensing
Phoenix IssuesLitigation2019
Federal Circuit Law on Attorneys’ Fees After Octane Fitness
Phoenix Issues2019
GOPRO INC. v. 360HEROS, INC. Amicus Brief
Amicus PapersLitigation2019
Guide to Licensing Negotiations Involving Standard Essential Patents

Guide to licensing negotiations involving Standard Essential Patents from the Japan Patent Office.

Phoenix Issues2019
Has the AIA Strengthened the Patent System?

Paper

Phoenix IssuesPost Grant Oppositions2019
Has the AIA Strengthened the Patent System?

Powerpoint

Phoenix IssuesPost Grant Oppositions2019
IAM Response to Delrahim Speech

This article was first published on the IAM daily blog by Globe Business Media Group. To visit IAM please go to www.IAM-media.com.

Phoenix IssuesLitigation2019
Impact of the America Invents Act on US and International Litigation Strategy
Phoenix IssuesPost Grant Oppositions2019
Impression Products Inc. V. Lexmark International, Inc.
Phoenix Issues2019
IP insider: The patent follies of antitrust zealots

This article was first published on the IAM daily blog by Globe Business Media Group. To visit IAM please go to www.IAM-media.com.

Phoenix IssuesLitigation2019
Letter to Chairman Tillis
Amicus PapersEcouraging Innovation2019
Patent Bar Groups Propose Legislation to Fix Patent Subject Matter Eligibility Problems
Phoenix IssuesProsecution2019
Patent Eligibility and Experimental Use: An International Comparison
Amicus PapersInternational2019
Patent owners should not fear the Unified Patent Court
Phoenix Issues2019
Patent Strategy in Europe in view of the Unitary Patent System and BREXIT
Phoenix Issues2019
PGR Basics; Pros/Cons
Phoenix IssuesPost Grant Oppositions2019
PGR vs. IPR Chart
Phoenix IssuesPost Grant Oppositions2019
Post Grant Patent Challenge Procedures Under Fire at The Supreme Court
Phoenix Issues2019
Potential Impact of Oil States vs. Greene’s Energy Group on Final Written Decisions and Parallel Judgments
Phoenix IssuesProsecution2019
Proposal for Best Patent Filing/Prosecution Strategy in Europe in View of UP/UPC/BREXIT – State of Considerations December 5, 2017
Phoenix Issues2019
Structure of the Unified Patent Court
Phoenix Issues2019
Testimony On International Antitrust Enforcement
Phoenix IssuesLitigation2019
The Department of Justice’s Long-Awaited and Much Needed Course-Correction on FRAND-Assured Standard-Essential Patents Competition Policy International, forthcoming November 2017
Phoenix IssuesLitigation2019
The Effect of TC Hearland on Patent Review
Phoenix Issues2019
The Impact of TC Heartland on Hatch-Waxman and BPCIA Litigation
Phoenix Issues2019
The Role of IP In Economic Growth –Looking Back, Looking Forward
Phoenix IssuesPost Grant Oppositions2019
The Willful Infringement Standard: Notes on its Development, Impact, and Future Trends
Phoenix Issues2019
UK and UPC: a test of compatibility
Phoenix Issues2019
Unified Patent Court Procedure
Phoenix Issues2019
Unitary Patent in Europe & Unified Patent Court (UPC): An overview and a comparison to the “classical“ patent system in Europe
Phoenix Issues2019
[29] Riley Survey of Trade Secret Investigations at ITC
Phoenix IssuesProsecution2018
2018 Phoenix Issues

A document listing the Phoenix Issues for 2018.

Institute Agendas2018
8 Practical Steps for China to Become an Innovation Led Economy by David J. Kappos and David P. Willard
Phoenix IssuesLitigation2018
A Trend Towards Abuse of Discretion Review
Phoenix Issues2018
Additional PGR Slides
Phoenix Issues2018
AIPLA Patent Stats 2017 Mid-Winter Paper
Phoenix Issues2018
At Stanford, Patent Experts Sound Off on Section 101 (Corporate Counsel 12-06-2016)
Phoenix IssuesLife Science2018
BASF Corporation v. SNF Holding Company, Et Al.

Related to Phoenix Issue IV, 2018

Court Filing2018
Best Strategies in Europe in View of BREXIT by Heinz Goddar
Phoenix Issues2018
Can We Find a Rational, Principled, Expansive, and Politically Palatable Approach to Statutorily Defining Patent Eligibility by Robert A. Armitage
Phoenix IssuesLife Science2018
CBMPGR Grounds Analysis
Phoenix Issues2018
Chapter 15
Phoenix Issues2018
Chapter Two New Global Patent Landscape by Robert Greene Sterne
Phoenix Issues2018
Creating a Patent System Fostering Only Pro-Patent Sentiments by Robert A. Armitage
Phoenix IssuesLitigation2018
DTSA REVIEW FOR INSIDE COUNSEL
Phoenix IssuesProsecution2018
Extra-Jurisdictional Remedies Involving Patent Licensing
Phoenix IssuesLitigation2018
HELSINN HEALTHCARE S.A. v. TEVA PHARMACEUTICALS INC. Amicus Brief in Support of Neither Party
Amicus PapersLitigation2018
Hunter Douglas Inc., Et Al. v.Ching Feng Home Fashions Co.,Ltd.
Court Filing2018
Injunction and Damage in Brazilian Patent Infringement by Liliana Roriz and Otto Licks
Phoenix Issues2018
James Pooley, The Myth of the Trade Secret Troll-Why the Defend Trade Secrets Act Improves the Protection of Commercial Information, 23 George Mason LR 1045 (Summer 2016)
Phoenix IssuesProsecution2018
Japanese Perspective by Dr. Shoichi Okuyama
Phoenix Issues2018
JPO Presentation by Yoshinori Kamiya
Phoenix Issues2018
Letter re Department of Industrial Policy and Promotion’s Discussion Paper on Standard Essential Patents and Their Availability on FRAND Terms by David J. Kappos
Phoenix IssuesLitigation2018
Mediation- Do Claims for Enhanced Damages and Sanctions Affect Mediation Success by Hon. Faith Hochberg
Phoenix Issues2018
Naples Conf 2016 Recent Developments in Claim Construction_(44711542_2)
Phoenix Issues2018
Pleadings After Form 18 How Has the Rubber Hit the Road by Deborah Fishman, Clara Wang, and Aaron Nathan
Phoenix Issues2018
Pooley treatise excerpt re DTSA
Phoenix IssuesProsecution2018
PROPPANT EXPRESS INVESTMENTS, LLC v. OREN TECHNOLOGIES, LLC Amicus Brief
Amicus PapersLitigation2018
Section 101 USPTO Roundtable Speaking Points
Phoenix IssuesLife Science2018
Sedona WG10 Exceptional Case Determination Section (Oct. 2016 publ comm)…
Phoenix Issues2018
Sedona WG10 Patent Lit Best Practices-Heightened Pleading Stnds Ch. (May 2016 publ comm)_05-23-16
Phoenix Issues2018
Sedona WG10 Patent Lit Best Practices-Intro Ch. (July 2015 ed)_07_21_15
Phoenix Issues2018
Sedona WG10 Patent Lit Best Practices-Parallel USPTO Proceedings Ch. – Stg 1 (Oct 2016 ed)_10-15-16
Phoenix Issues2018
Sedona WG10 Patent Lit Best Practices-Sect 101 Motions (Sept. 2016 publ comm)_09-26-16
Phoenix IssuesLife Science2018
Sedona WG10+9 Patent Lit Commentaries – Exec Summary – 11-14-16 ver (links)
Phoenix Issues2018
Seeking Guidance on Willfulness after Halo and Stryker –Look to the Past by Andrew S. Baluch
Phoenix Issues2018
Standard Essential Patents and Market Power
Phoenix IssuesLitigation2018
State of the Patent Trial and Appeal Board by Scott Boalick
Phoenix Issues2018
Strategic patent prosecution in Brazil by Licks Attorneys
Phoenix Issues2018
The Impact of Amended Rule 26(b)(1) on Discovery in Patent Litigation by Byron Holz, Louis Tompros and Chaloea Williams
Phoenix Issues2018
The Impact of Brexit on Intellectual Property
Phoenix Issues2018
The Smallest Salable Patent Practicing Unit and Observations on Its Origins, Development, and Future by David J. Kappos and Paul R. Michel
Phoenix IssuesLitigation2018
Twilio, Inc. v. Telesign Corporation
Court Filing2018
Weighing the Patent System It is Time to Confront the Bias Against Patent Owners in Patent Reform Legislation by Adam Mossoff
Phoenix IssuesLitigation2018
2017 Phoenix Issues

A document listing the Phoenix Issues for 2017.

Institute Agendas2017
A New Approach to Superseding Implicit Exceptions to Patent Eligibliity by Robert A. Armitage
Phoenix IssuesLife Science2017
Ariosa v. Sequenom – A Path to the Supreme Court by Paul Cole
Phoenix IssuesLife Science2017
Chief Justice’s 2015 Year End Report
Phoenix Issues2017
Doctrine of Exhaustion — The Canadian Experience by Hon. Roger T. Hughes
Phoenix Issues2017
Exhaustion in Developing Countries The Case in Brazil by Otto Licks
Phoenix Issues2017
Exhaustion Outline by Prof. Dr. Heinz Goddar
Phoenix Issues2017
Gilead v Merck – Order Denying Motion to Compel (01-13-2016)
Phoenix Issues2017
Lexmark International Patent Exhaustion by Harold C. Wegner
Phoenix Issues2017
Phoenix Issue I Discussion Outline
Phoenix IssuesLife Science2017
Phoenix Issue II Discussion Outline
Phoenix IssuesLife Science2017
Phoenix Issue III Discussion Outline
Phoenix Issues2017
Phoenix Issue IV Discussion Outline
Phoenix Issues2017
Phoenix Issue V Discussion Outline
Phoenix IssuesPost Grant Oppositions2017
Phoenix Issue V PowerPoint

Powerpoint

Phoenix IssuesPost Grant Oppositions2017
Phoenix Issue VI Discussion Outline
Phoenix Issues2017
Price Differentiation and the Conundrum of Exhaustion Principles by Prof. Dr. Heinz Goddar
Phoenix Issues2017
Proportionality Under New F R Civ P 26(b)
Phoenix Issues2017
Sedona Working Group Commentary
Phoenix Issues2017
The Mossoff-Noonan ’23 Professors‘ Amicus Brief
Phoenix IssuesLife Science2017
The Sequinom Patent Eligibility Challenge by Harold C. Wegner
Phoenix IssuesLife Science2017
2016 Phoenix Issues

A document listing the Phoenix Issues for 2016.

Institute Agendas2016
HELSINN HEALTHCARE S.A. ROCHE PALO ALTO LLC v. TEVA PHARMACEUTICALS USA, INC. Amicus Brief
Amicus PapersLitigation2016