The Phoenix Issues
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 has identified current issues in need of clarification. These issues, as well as others that will be identified as the work of The Naples Roundtable and its committees evolves, will be the focus of our attention.
2018 PHOENIX ISSUES FOR DISCUSSION and invited panel participants
Phoenix Issue I. Has the AIA strengthened the patent system and decreased the cost of removing invalid patents? Has AIA gone far enough? What can and should be done to improve the process?
Judge Richard Linn (Moderator), Judge Paul Michel, David Kappos, Rob Sterne, Ken Adamo, Sharon Barner, Herb Wamsley
Phoenix Issue II. Is the existence of the IPR and PGR procedures beneficial to the strength of the patent system and if they are held by the Supreme Court to be unconstitutional in Oil States vs. Greene’s Energy Group then what is the impact and what if anything should be done to replace these procedures?
Andrew Baluch (Moderator), Louis Tompros, Teresa Summers, Bill Atkins, Don Banowit, Henry Hadad
Phoenix Issue III. Is the current level of implementation of Section 101 supportive of having a strong patent system or has it gone too far? If it should be changed then what judicial and legislative actions regarding patent eligibility under Section 101 would best serve the patent system?
Robert Stoll (Moderator), Richard Rainey, Phil Johnson, Kevin Rhodes, Robert Armitage, Douglas Wilson
Phoenix Issue IV. How best should venue issues be determined following the Supreme Court’s recent decision in TC Heartland v. Kraft?
Stanley Fisher (Moderator), Mark Lauroesch, Tina Chappell, Clyde Siebman, George Pappas
Phoenix Issue V. What are the economic and legal consequences (both in the U.S. and internationally) of the Supreme Court’s recent decision in Impression Products v. Lexmark, and what, if any, judicial or legislative action is needed to best address those consequences?
Hal Wegner (Moderator), Judge Faith Hochberg, Adam Mossoff, Robert M. Isackson, John Duffy, Andrew Pincus
Phoenix Issue VI. What actions, if any, are needed to protect the U.S. patent system and U.S. patent holders in light of Brexit and ongoing developments relating to a European Unitary Patent/Unified Patent Court?
Terry Rea (Moderator), John Pegram, Paul Cole, Heinz Goddar
Phoenix Issue VII. To what extent is the patent system well-served by the extra-territorial enforcement of unfair competition and intellectual property laws.
David Kappos (Moderator), Hal Wegner, Shoichi Okuyama, Hon. Roger Hughes, Otto Licks, Koren Wong, Prof. Timothy Holbrook
Phoenix Issue VIII. What more needs to be done following the Supreme Court’s decision in Halo v. Pulse Electronics to properly determine whether a case is sufficiently egregious to warrant an award of enhanced damages? Has Halo resurrected the need to obtain an opinion of counsel, and if so, should that need be restricted to a subset of cases?
Gary Hoffman (Moderator), Judge James Holderman, David Schwartz, John Scott, Leora Ben Ami, Aaron Nathan
Phoenix Issue IX. Has the Supreme Court’s decision in Octane Fitness v. Icon Health adequately addressed the award of attorney fees in exceptional cases?
Judge Kathleen M. O’Malley (Moderator), Matt Powers, Michael Dzwonczyk, Donald Dunner, Michelle Armond, Carter Philips
Phoenix Issue X. Would an exchange of an early set of Patent Damage Contentions, such as now provided for in the NDCA, aid in settling litigation and making proportionality determinations?
Eric Hutz (Moderator), Andrea Jeffries, Patrick Arenz, Krish Gupta, Melissa Finocchio, Samantha Jameson