library

Document Type Tags Year

2023 Roundtable Issue #1 – Patent Prosecution Proposals for Reforming “Prep and Pros” for the 21st Century

Phoenix Issues Litigation 2023

For “Patent Wars” Alarmists, Time to Make Peace with the Empirical Data

Phoenix Issues Prosecution 2023

New Director Reviews: The Latest IPR Guidance From the Patent Office

Phoenix Issues Prosecution 2023

Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights

Phoenix Issues Litigation 2023

Restoring Deterrence: The Case for Enhanced Damages in a No-Injunction Patent System

Phoenix Issues Litigation 2023

Section 101 Patentable Subject Matter

Phoenix Issues Prosecution 2023

What The Latest Case Data Reveals About Stays Pending IPR

Phoenix Issues Prosecution 2023

2022 Phoenix Issues

A document listing the Phoenix Issues for 2022.

Institute Agendas 2022

7 Hot Topics in IP for Pharma AI and Bioinformatics

Phoenix Issues Litigation 2022

A Different Ball Game: Depositions at the PTAB and District Court

Phoenix Issues 2022

FRAND goes global

Phoenix Issues Litigation 2022

How Increased Stays Pending IPR May Affect Venue Choice

Phoenix Issues 2022

Naples Roundtable Recommends Suspension of Patent Office Relationships With Aggressor States

Amicus Papers International 2022

OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 (PTAB) and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229 (PTAB)

Amicus Papers Post Grant Oppositions 2022

Should the U.S. Congress give Patent Owners the Benefit of a Foreign Jurisdiction’s Determination Regarding Subject-Matter Eligibility?

Phoenix Issues 2022

The USPTO Should Give Ukraine Even More Help

Amicus Papers International 2022

What would a fresh start look like?

Phoenix Issues Life Science 2022

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 Issues Litigation 2021

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 Issues 2021

Background Materials for Discussion

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

Phoenix Issues 2021

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 Issues Life Science 2021

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

Document by Sterne Kessler on key 2019 decisions.

Phoenix Issues Prosecution 2021

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 Issues Litigation 2021

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 Issues Litigation 2021

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

Document by Russell Slifer on improving IPRs.

Phoenix Issues Prosecution 2021

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

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

Phoenix Issues Prosecution 2021

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

Amicus Papers 2021

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

Amicus Papers Ecouraging Innovation 2021

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 Issues Litigation 2021

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 Issues Litigation 2021

Policy Workshop on USPTO’s Rulemaking Authority

Amicus Papers Prosecution 2021

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 Issues Life Science 2021

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 Issues Prosecution 2021

The PTAB Handbook Fifth Edition

Fifth edition handbook on PTAB by William P. Atkins.

Phoenix Issues Prosecution 2021

“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 Issues Litigation 2020

2020 Phoenix Issues

A document listing the Phoenix Issues for 2020.

Institute Agendas 2020

Access to Relevant Prior Art

Postcard by USPTO.

Phoenix Issues 2020

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 Issues Litigation 2020

Chrimar Systems Inc v. ALE USA INC.

Amicus Papers Litigation 2020

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 Issues Litigation 2020

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

Blog by David Long.

Phoenix Issues Litigation 2020

Global Rate-Setting: A Solution for Standards-Essential Patents?

Phoenix Issues Litigation 2020

Guidelines of Guangdong High People’s Court on Adjudicating Cases of Disputes Over Standard-Essential Patents (Trial)

Phoenix Issues Litigation 2020

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 Issues Litigation 2020

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 Issues 2020

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 Issues Prosecution 2020

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

Document on Phoenix Issue X by Ken Adamo.

Phoenix Issues Litigation 2020

Key Patent Harmonization Issues

Document on patent harmonization issues by SUGHRUE MION, PLLC.

Phoenix Issues 2020

Patent Eligibility and Experimental Use: An International Comparison

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

Phoenix Issues Prosecution 2020

Phoenix Issue V

Document on Phoenix Issue V for 2019 by Paul Cole.

Phoenix Issues 2020

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 Issues Litigation 2020

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 Issues 2020

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 Issues Litigation 2020

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 Issues Prosecution 2020

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 Issues Litigation 2020

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 Issues Litigation 2020

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 Issues Litigation 2020

Understanding the Conflict of Positions on FRAND

Phoenix Issues Litigation 2020

“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 Issues Post Grant Oppositions 2019

2019 Phoenix Issues

A document listing the Phoenix Issues for 2019.

Institute Agendas 2019

A UK Perspective

Phoenix Issues 2019

A Unified Proposal Superseding The “Implicit Exception” To Patent Eligibility Harmonizing The Aba, Ipo, Aipla, And Banbury Conference Initiatives On § 101 Reform

Phoenix Issues Prosecution 2019

Boundaries, Extraterritoriality, And Patent Infringement Damages

Phoenix Issues Litigation 2019

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 Issues Litigation 2019

Director Andrei Iancu’s Act One

Phoenix Issues Prosecution 2019

Enhancing Patent Damages

Phoenix Issues 2019

Extra-Jurisdictional Remedies Involving Patent Licensing

Phoenix Issues Litigation 2019

Federal Circuit Law on Attorneys’ Fees After Octane Fitness

Phoenix Issues 2019

GOPRO INC. v. 360HEROS, INC. Amicus Brief

Amicus Papers Litigation 2019

Guide to Licensing Negotiations Involving Standard Essential Patents

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

Phoenix Issues 2019

Has the AIA Strengthened the Patent System?

Paper

Phoenix Issues Post Grant Oppositions 2019

Has the AIA Strengthened the Patent System?

Powerpoint

Phoenix Issues Post Grant Oppositions 2019

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 Issues Litigation 2019

Impact of the America Invents Act on US and International Litigation Strategy

Phoenix Issues Post Grant Oppositions 2019

Impression Products Inc. V. Lexmark International, Inc.

Phoenix Issues 2019

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 Issues Litigation 2019

Letter to Chairman Tillis

Amicus Papers Ecouraging Innovation 2019

Patent Bar Groups Propose Legislation to Fix Patent Subject Matter Eligibility Problems

Phoenix Issues Prosecution 2019

Patent Eligibility and Experimental Use: An International Comparison

Amicus Papers International 2019

Patent owners should not fear the Unified Patent Court

Phoenix Issues 2019

Patent Strategy in Europe in view of the Unitary Patent System and BREXIT

Phoenix Issues 2019

PGR Basics; Pros/Cons

Phoenix Issues Post Grant Oppositions 2019

PGR vs. IPR Chart

Phoenix Issues Post Grant Oppositions 2019

Post Grant Patent Challenge Procedures Under Fire at The Supreme Court

Phoenix Issues 2019

Potential Impact of Oil States vs. Greene’s Energy Group on Final Written Decisions and Parallel Judgments

Phoenix Issues Prosecution 2019

Proposal for Best Patent Filing/Prosecution Strategy in Europe in View of UP/UPC/BREXIT – State of Considerations December 5, 2017

Phoenix Issues 2019

Structure of the Unified Patent Court

Phoenix Issues 2019

Testimony On International Antitrust Enforcement

Phoenix Issues Litigation 2019

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 Issues Litigation 2019

The Effect of TC Hearland on Patent Review

Phoenix Issues 2019

The Impact of TC Heartland on Hatch-Waxman and BPCIA Litigation

Phoenix Issues 2019

The Role of IP In Economic Growth –Looking Back, Looking Forward

Phoenix Issues Post Grant Oppositions 2019

The Willful Infringement Standard: Notes on its Development, Impact, and Future Trends

Phoenix Issues 2019

UK and UPC: a test of compatibility

Phoenix Issues 2019

Unified Patent Court Procedure

Phoenix Issues 2019

Unitary Patent in Europe & Unified Patent Court (UPC): An overview and a comparison to the “classical“ patent system in Europe

Phoenix Issues 2019

[29] Riley Survey of Trade Secret Investigations at ITC

Phoenix Issues Prosecution 2018

2018 Phoenix Issues

A document listing the Phoenix Issues for 2018.

Institute Agendas 2018

8 Practical Steps for China to Become an Innovation Led Economy by David J. Kappos and David P. Willard

Phoenix Issues Litigation 2018

A Trend Towards Abuse of Discretion Review

Phoenix Issues 2018

Additional PGR Slides

Phoenix Issues 2018

AIPLA Patent Stats 2017 Mid-Winter Paper

Phoenix Issues 2018

At Stanford, Patent Experts Sound Off on Section 101 (Corporate Counsel 12-06-2016)

Phoenix Issues Life Science 2018

BASF Corporation v. SNF Holding Company, Et Al.

Related to Phoenix Issue IV, 2018

Court Filing 2018

Best Strategies in Europe in View of BREXIT by Heinz Goddar

Phoenix Issues 2018

Can We Find a Rational, Principled, Expansive, and Politically Palatable Approach to Statutorily Defining Patent Eligibility by Robert A. Armitage

Phoenix Issues Life Science 2018

CBMPGR Grounds Analysis

Phoenix Issues 2018

Chapter 15

Phoenix Issues 2018

Chapter Two New Global Patent Landscape by Robert Greene Sterne

Phoenix Issues 2018

Creating a Patent System Fostering Only Pro-Patent Sentiments by Robert A. Armitage

Phoenix Issues Litigation 2018

DTSA REVIEW FOR INSIDE COUNSEL

Phoenix Issues Prosecution 2018

Extra-Jurisdictional Remedies Involving Patent Licensing

Phoenix Issues Litigation 2018

HELSINN HEALTHCARE S.A. v. TEVA PHARMACEUTICALS INC. Amicus Brief in Support of Neither Party

Amicus Papers Litigation 2018

Hunter Douglas Inc., Et Al. v.Ching Feng Home Fashions Co.,Ltd.

Court Filing 2018

Injunction and Damage in Brazilian Patent Infringement by Liliana Roriz and Otto Licks

Phoenix Issues 2018

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 Issues Prosecution 2018

Japanese Perspective by Dr. Shoichi Okuyama

Phoenix Issues 2018

JPO Presentation by Yoshinori Kamiya

Phoenix Issues 2018

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 Issues Litigation 2018

Mediation- Do Claims for Enhanced Damages and Sanctions Affect Mediation Success by Hon. Faith Hochberg

Phoenix Issues 2018

Naples Conf 2016 Recent Developments in Claim Construction_(44711542_2)

Phoenix Issues 2018

Pleadings After Form 18 How Has the Rubber Hit the Road by Deborah Fishman, Clara Wang, and Aaron Nathan

Phoenix Issues 2018

Pooley treatise excerpt re DTSA

Phoenix Issues Prosecution 2018

PROPPANT EXPRESS INVESTMENTS, LLC v. OREN TECHNOLOGIES, LLC Amicus Brief

Amicus Papers Litigation 2018

Section 101 USPTO Roundtable Speaking Points

Phoenix Issues Life Science 2018

Sedona WG10 Exceptional Case Determination Section (Oct. 2016 publ comm)…

Phoenix Issues 2018

Sedona WG10 Patent Lit Best Practices-Heightened Pleading Stnds Ch. (May 2016 publ comm)_05-23-16

Phoenix Issues 2018

Sedona WG10 Patent Lit Best Practices-Intro Ch. (July 2015 ed)_07_21_15

Phoenix Issues 2018

Sedona WG10 Patent Lit Best Practices-Parallel USPTO Proceedings Ch. – Stg 1 (Oct 2016 ed)_10-15-16

Phoenix Issues 2018

Sedona WG10 Patent Lit Best Practices-Sect 101 Motions (Sept. 2016 publ comm)_09-26-16

Phoenix Issues Life Science 2018

Sedona WG10+9 Patent Lit Commentaries – Exec Summary – 11-14-16 ver (links)

Phoenix Issues 2018

Seeking Guidance on Willfulness after Halo and Stryker –Look to the Past by Andrew S. Baluch

Phoenix Issues 2018

Standard Essential Patents and Market Power

Phoenix Issues Litigation 2018

State of the Patent Trial and Appeal Board by Scott Boalick

Phoenix Issues 2018

Strategic patent prosecution in Brazil by Licks Attorneys

Phoenix Issues 2018

The Impact of Amended Rule 26(b)(1) on Discovery in Patent Litigation by Byron Holz, Louis Tompros and Chaloea Williams

Phoenix Issues 2018

The Impact of Brexit on Intellectual Property

Phoenix Issues 2018

The Smallest Salable Patent Practicing Unit and Observations on Its Origins, Development, and Future by David J. Kappos and Paul R. Michel

Phoenix Issues Litigation 2018

Twilio, Inc. v. Telesign Corporation

Court Filing 2018

Weighing the Patent System It is Time to Confront the Bias Against Patent Owners in Patent Reform Legislation by Adam Mossoff

Phoenix Issues Litigation 2018

2017 Phoenix Issues

A document listing the Phoenix Issues for 2017.

Institute Agendas 2017

A New Approach to Superseding Implicit Exceptions to Patent Eligibliity by Robert A. Armitage

Phoenix Issues Life Science 2017

Ariosa v. Sequenom – A Path to the Supreme Court by Paul Cole

Phoenix Issues Life Science 2017

Chief Justice’s 2015 Year End Report

Phoenix Issues 2017

Doctrine of Exhaustion — The Canadian Experience by Hon. Roger T. Hughes

Phoenix Issues 2017

Exhaustion in Developing Countries The Case in Brazil by Otto Licks

Phoenix Issues 2017

Exhaustion Outline by Prof. Dr. Heinz Goddar

Phoenix Issues 2017

Gilead v Merck – Order Denying Motion to Compel (01-13-2016)

Phoenix Issues 2017

Lexmark International Patent Exhaustion by Harold C. Wegner

Phoenix Issues 2017

Phoenix Issue I Discussion Outline

Phoenix Issues Life Science 2017

Phoenix Issue II Discussion Outline

Phoenix Issues Life Science 2017

Phoenix Issue III Discussion Outline

Phoenix Issues 2017

Phoenix Issue IV Discussion Outline

Phoenix Issues 2017

Phoenix Issue V Discussion Outline

Phoenix Issues Post Grant Oppositions 2017

Phoenix Issue V PowerPoint

Powerpoint

Phoenix Issues Post Grant Oppositions 2017

Phoenix Issue VI Discussion Outline

Phoenix Issues 2017

Price Differentiation and the Conundrum of Exhaustion Principles by Prof. Dr. Heinz Goddar

Phoenix Issues 2017

Proportionality Under New F R Civ P 26(b)

Phoenix Issues 2017

Sedona Working Group Commentary

Phoenix Issues 2017

The Mossoff-Noonan ’23 Professors‘ Amicus Brief

Phoenix Issues Life Science 2017

The Sequinom Patent Eligibility Challenge by Harold C. Wegner

Phoenix Issues Life Science 2017

2016 Phoenix Issues

A document listing the Phoenix Issues for 2016.

Institute Agendas 2016

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

Amicus Papers Litigation 2016