In July 2024, the Naples Roundtable submitted comments in response to the USPTO’s notice of proposed rulemaking titled “Terminal Disclaimer Practice To Obviate Nonstatutory Double Patenting,” 89 Fed. Reg. 40439 (May 10, 2024). In its comments, the Naples Roundtable urged the USPTO to consider whether the proposed rule will allow parties to circumvent—against congressional intent—the very safeguards Congress included in inter partes review proceedings, namely, the one-year time-bar of 35 U.S.C. § 315(b) and the estoppel of § 315(e). The comments also pointed out that the proposed rule would create an incentive for IPRs to be filed against unasserted, uninfringed patents that otherwise would never have been challenged, but-for the prospect of rendering other patents unenforceable through the proposed rule.

A document listing the Phoenix Issues for 2023.

In June 2023, the Naples Roundtable endorsed the effort and spirit of a paper created by contributing members of Phoenix Issue 1, and encouraged further input, workshopping, and debating the proposals.

In November 2023, the Naples Roundtable submitted an amicus brief in an inter partes review (IPR) on the question of the propriety and proportionality of the Board’s determination of unpatentability in cases of sanctionable misconduct. The amicus brief explained that the Board has authority to cancel claims as a sanction and that such cancellation may be just and proportionate under certain circumstances.

A document listing the Phoenix Issues for 2022.

In response to Russia’s illegal and unprovoked war against Ukraine, the Naples Roundtable identified various worksharing and cooperation agreements between the USPTO and Rospatent which the Naples Roundtable should be suspended or terminated, including the ISA agreement and PPH pilot program.

In August 2022, the Naples Roundtable submitted an amicus brief in an inter partes review (IPR), urging the Director to resolve a split within the Board regarding the requirement to file settlement agreements during the preliminary phase of the proceeding. The amicus brief explained that abusive conduct could be detected and deterred if the Board uniformly required parties to file a copy of their settlement agreement at all stages of the IPR proceeding. When faced with evidence of abusive conduct in a settlement agreement, the Director (and by delegation the Board) should deny parties’ request to terminate such proceeding and, where warranted, refer the matter to the FTC and DOJ.

The Naples Roundtable identified further concrete steps the USPTO can take to help Ukraine’s economy and patent office (Ukrpatent), including (a) recognizing Ukrpatent as an International Searching and Preliminary Examining Authority for international patents filed in the USPTO receiving office, (b) initiating a PPH pilot program with Ukrpatent, and (c) providing capacity building and training to Ukrpatent staff through the USPTO’s GIPA program, as well as IT support to Ukrpatent.

A document listing the Phoenix Issues for 2021.

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

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

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

Document by Sterne Kessler on key 2019 decisions.

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

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

Document by Russell Slifer on improving IPRs.

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

In April 2021, the Amicus Committee released a legislative proposal to improve inter partes reviews (IPRs). The aim of the proposal is to improve the overall functioning of IPRs for parties on both sides of the “v”—including both Patent Owners and Petitioners alike. To this end, the proposed legislative “package deal” contains five Patent Owner-favorable provisions and five Petitioner-favorable provisions. Taken together, these provisions would increase consistency among, and decrease inefficiencies between, IPRs that are handled in the PTO and infringement litigation that are handled in the district courts. The Amicus Committee developed this balanced set of proposals with input from across the patent bar, and a draft was presented and discussed during the sixth annual Naples Roundtable conference.

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

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.

In September 2021, the Amicus Committee held a policy workshop to explore the scope of the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2)(A) (authorizing “regulations, not inconsistent with law, which … shall govern the conduct of proceedings in the Office”). The discussion included several of the country’s top administrative law experts from academia and government. The discussion delved into the legislative history of § 2(b)(2)(A) and considered how several recent Supreme Court decisions—City of Arlington v. FCC (2013) and Cuozzo Speed Technologies v. Lee (2016)—might impact the proper interpretation of that statute and any deference owed to the USPTO’s interpretation of that provision. In City of Arlington, the Supreme Court held that an agency’s interpretation of a statutory ambiguity that concerns the scope of its regulatory authority is entitled to Chevron deference. In Cuozzo, the Supreme Court stated that § 2(b)(2)(A) “does not clearly contain the [Federal] Circuit’s claimed limitation” i.e., that the statute is only “limited to procedural rules” as distinct from substantive rules. In light of these intervening Supreme Court decisions, the Amicus Committee considered:

-After City of Arlington, will the USPTO’s interpretation of 35 U.S.C. § 2(b)(2)(A) be owed Chevron deference?
-After Cuozzo, will the Federal Circuit continue to interpret § 2(b)(2)(A) as being limited to “procedural”—as distinct from “substantive”—rules?
-How should § 2(b)(2)(A) be interpreted?
-What new rules might the Biden Administration offer to test the scope of § 2(b)(2)(A)?

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

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

Fifth edition handbook on PTAB by William P. Atkins.

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

A document listing the Phoenix Issues for 2020.

Postcard by USPTO.

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

The Naples Roundtable is pleased to submit an Amicus Brief in Chrimar v. ALE USA. We argue in support of granting the petition for certiorari and expand upon two points:

First, we argue that the Federal Circuit’s finality rule is contrary to that of other circuits, as well as its own precedent. The Federal Circuit departed from the established standard for finality that has been adopted by the other Circuit courts, calling certainty provided by any court judgment into question. Moreover, the Federal Circuit departed from its own en banc rule for finality, thus intensifying the uncertainty.

Second, the Federal Circuit’s finality rule incentivizes defendants to engage in dilatory litigation tactics and other gamesmanship, which, among other things, weakens the patent system. Specifically, whenever a proceeding is pending before the PTAB, a defendant has every reason to draw out the course of litigation beyond a merits decision in hopes of overturning that decision via a later-decided ruling of an administrative agency. To dampen the effects of this gamesmanship, patentees may cede certain claims or remedies to which they are entitled in order to expeditiously reach a final judgment. We argue that these tactics are deleterious for the judicial system and may strip patentees of important rights granted by the Constitution and federal statute, weakening the patent system. Moreover, there is an asymmetry between the court and the agency: the court is at a disadvantage because the court needs to decide many issues, whereas the PTAB merely needs to decide a portion of validity.

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.

Blog by David Long.

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

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

Document on Phoenix Issue X by Ken Adamo.

Document on patent harmonization issues by SUGHRUE MION, PLLC.

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

Document on Phoenix Issue V for 2019 by Paul Cole.

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

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

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

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

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

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

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

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

A document listing the Phoenix Issues for 2019.

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.

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

Paper

Powerpoint

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.

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.

A document listing the Phoenix Issues for 2018.

Related to Phoenix Issue IV, 2018

A document listing the Phoenix Issues for 2017.

Powerpoint

A document listing the Phoenix Issues for 2016.