The Phoenix Issues

The Phoenix Issues

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), David Kappos, Rob Sterne, Ken Adamo, Sharon Barner, Herb Wamsley

“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

The Role of IP In Economic Growth –Looking Back, Looking Forward by David J. Kappos and Jessica M. Goodman

Paper: Has the AIA Strengthened the Patent System? by Kenneth R. Adamo

PowerPoint: Has the AIA Strengthened the Patent System? by Kenneth R. Adamo

Impact of the America Invents Act on US and International Litigation Strategy by Kenneth R.  Adamo

PGR Basics; Pros/Cons by Kenneth R. Adamo

PGR vs. IPR Chart by Kenneth R. Adamo

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

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

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

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

Patent Bar Groups Propose Legislation to Fix Patent Subject Matter Eligibility Problems by Robert L. Stoll

Director Andrei Iancu’s Act One by Robert L. Stoll

Phoenix Issue IV. 
How best should venue issues be determined following the Supreme Court’s recent decision in TC Heartland v. Kraft?

Mark Lauroesch (Moderator), Joseph Matal, Tina Chappell, Clyde Siebman, George Pappas, James Dabney, Stanley Fisher

The Effect of TC Hearland on Patent Review by Clyde Siebman and Michael C. Smith

BASF Corporation v. SNF Holding Company, Et Al.

The Impact of TC Heartland on Hatch-Waxman and BPCIA Litigation by George F. Pappas and Jihong Lou

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?

Judge Faith Hochberg (Moderator), Hal Wegner, Adam Mossoff, Robert M. Isackson, John Duffy, Andrew Pincus

Post Grant Patent Challenge Procedures Under Fire at The Supreme Court by Harold C. Wegner

Impression Products Inc. V. Lexmark International, Inc. by Robert M. Isackson

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, Warren Woessner

Patent owners should not fear the Unified Patent Court by John Pegram

UK and UPC: a test of compatibility by John Pegram

Unified Patent Court Procedure by John Pegram

Patent Strategy in Europe in view of the Unitary Patent System and BREXIT by Eva Liesegang and Dr. Andreas Lucke

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

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

A UK Perspective By Paul Cole

Structure of the Unified Patent Court


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

Boundaries, Extraterritoriality, And Patent Infringement Damages by Timothy R. Holbrook

Extra-Jurisdictional Remedies Involving Patent Licensing by Koren W. Wong-Ervin, Joshua D. Wright, Bruce H. Kobayashi, and Douglas H. Ginsburg

Testimony On International Antitrust Enforcement by Koren W. Wong-Ervin

The Department of Justice’s Long-Awaited and Much Needed Course-Correction on FRAND-Assured Standard-Essential Patents Competition Policy International, forthcoming November 2017 by Douglas H. Ginsburg and Koren W. Wong-Ervin

These articles were first published on the IAM daily blog by Globe Business Media Group. To visit IAM please go to

IP insider: The patent follies of antitrust zealots by David J. Kappos and and David J. Teece

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

IAM Response to Delrahim Speech by Joff Wild

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, John Scott, Leora Ben Ami, Aaron Nathan

The Willful Infringement Standard: Notes on its Development, Impact, and Future Trends by Leora Ben-Ami and 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

Federal Circuit Law on Attorneys’ Fees After Octane Fitness by Michelle Armond

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

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

Twilio, Inc. v. Telesign Corporation