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

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

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

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

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

Section 101 Patentable Subject Matter

What The Latest Case Data Reveals About Stays Pending IPR

2022 Phoenix Issues

7 Hot Topics in IP for Pharma AI and Bioinformatics

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

FRAND goes global

How Increased Stays Pending IPR May Affect Venue Choice

Naples Roundtable Recommends Suspension of Patent Office Relationships With Aggressor States

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

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

The USPTO Should Give Ukraine Even More Help

What would a fresh start look like?

Antitrust Analysis Involving Intellectual Property and Standards: Implications from Economics

Antitrust Analysis Involving Intellectual Property and Standards: Implications from Economics

Background Materials for Discussion

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

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

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

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

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

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

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

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

OECD Competition Committee Roundtable on “Licensing of IP Rights and Competition Law”

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

Policy Workshop on USPTO’s Rulemaking Authority

Section 101 and Life Sciences: What’s Left to Patent After Myriad, Mayo, And Alice?

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

The PTAB Handbook Fifth Edition

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

2020 Phoenix Issues

Access to Relevant Prior Art

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

Chrimar Systems Inc v. ALE USA INC.

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)

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

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

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

In the Quest to Strengthen and Improve the Patent System: The Imperative for Elevating Patent Examination Integrity

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

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

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

Key Patent Harmonization Issues

Patent Eligibility and Experimental Use: An International Comparison

Phoenix Issue V

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

Proposal to Expedite Joinder in Inter Partes Review

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

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

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

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

Tying and Bundling Involving Standard-Essential Patents

Understanding the Conflict of Positions on FRAND

“The Impact of Bad Patents on American Businesses”

2019 Phoenix Issues

A UK Perspective

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

Boundaries, Extraterritoriality, And Patent Infringement Damages

Delrahim speech shows Trump administration DoJ will no longer favour IP users over owners, says Kappos

Director Andrei Iancu’s Act One

Enhancing Patent Damages

Extra-Jurisdictional Remedies Involving Patent Licensing

Federal Circuit Law on Attorneys’ Fees After Octane Fitness

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

Guide to Licensing Negotiations Involving Standard Essential Patents

Has the AIA Strengthened the Patent System?

Has the AIA Strengthened the Patent System?

IAM Response to Delrahim Speech

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

Impression Products Inc. V. Lexmark International, Inc.

IP insider: The patent follies of antitrust zealots

Letter to Chairman Tillis

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

Patent Eligibility and Experimental Use: An International Comparison

Patent owners should not fear the Unified Patent Court

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

PGR Basics; Pros/Cons

PGR vs. IPR Chart

Post Grant Patent Challenge Procedures Under Fire at The Supreme Court

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

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

Structure of the Unified Patent Court

Testimony On International Antitrust Enforcement

The Department of Justice’s Long-Awaited and Much Needed Course-Correction on FRAND-Assured Standard-Essential Patents Competition Policy International, forthcoming November 2017

The Effect of TC Hearland on Patent Review

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

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

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

UK and UPC: a test of compatibility

Unified Patent Court Procedure

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

[29] Riley Survey of Trade Secret Investigations at ITC

2018 Phoenix Issues

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

A Trend Towards Abuse of Discretion Review

Additional PGR Slides

AIPLA Patent Stats 2017 Mid-Winter Paper

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

BASF Corporation v. SNF Holding Company, Et Al.

Best Strategies in Europe in View of BREXIT by Heinz Goddar

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

CBMPGR Grounds Analysis

Chapter 15

Chapter Two New Global Patent Landscape by Robert Greene Sterne

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

DTSA REVIEW FOR INSIDE COUNSEL

Extra-Jurisdictional Remedies Involving Patent Licensing

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

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

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

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)

Japanese Perspective by Dr. Shoichi Okuyama

JPO Presentation by Yoshinori Kamiya

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

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

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

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

Pooley treatise excerpt re DTSA

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

Section 101 USPTO Roundtable Speaking Points

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

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

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

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

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

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

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

Standard Essential Patents and Market Power

State of the Patent Trial and Appeal Board by Scott Boalick

Strategic patent prosecution in Brazil by Licks Attorneys

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

The Impact of Brexit on Intellectual Property

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

Twilio, Inc. v. Telesign Corporation

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

2017 Phoenix Issues

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

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

Chief Justice’s 2015 Year End Report

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

Exhaustion in Developing Countries The Case in Brazil by Otto Licks

Exhaustion Outline by Prof. Dr. Heinz Goddar

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

Lexmark International Patent Exhaustion by Harold C. Wegner

Phoenix Issue I Discussion Outline

Phoenix Issue II Discussion Outline

Phoenix Issue III Discussion Outline

Phoenix Issue IV Discussion Outline

Phoenix Issue V Discussion Outline

Phoenix Issue V PowerPoint

Phoenix Issue VI Discussion Outline

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

Proportionality Under New F R Civ P 26(b)

Sedona Working Group Commentary

The Mossoff-Noonan ’23 Professors‘ Amicus Brief

The Sequinom Patent Eligibility Challenge by Harold C. Wegner

2016 Phoenix Issues

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