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Prior Art Combinations Cannot Substantially Reconstruct the Primary Reference ?Çô But POSITAs Are Not Limited to Physically Combinable References

Prior Art Combinations Cannot Substantially Reconstruct the Primary Reference ?Çô But POSITAs Are Not Limited to Physically Combinable References

In University of Maryland Biotech Institute v. Presens Precision Sensing, Nos. 2016-2745, 2017-1057 (Nov. 3, 2017) (nonprecedential) (?Ç£UMBI?Ç¥), the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board?ÇÖs (?Ç£PTAB?Ç¥) inter partes reexamination decision that found U.S. Patent No. 6,673,532 (?Ç£the ?ÇÖ532 patent?Ç¥) invalid as obvious over two prior art references. The Federal Circuit?ÇÖs decision highlighted that, while ?Ç£a person of ordinary skill generally would not be motivated to modify a reference by contradicting its basic teachings [or] by making it inoperable for its intended purpose,?Ç¥ portions or elements of a secondary reference may be combined with and adapted to the particular physical arrangement of a primary reference even if the secondary reference discloses a different or incompatible physical arrangement.?á Id. at 6 (citations omitted). Background The University of Maryland Biotechnology Institute (?Ç£UMBI?Ç¥) owns the ?ÇÖ532 patent, which is directed to methods for measuring and optimizing the parameters of in… Continue Reading

Employee Compensation and Benefits Changes Under the Tax Cuts and Jobs Act

The following post is a general summary of the changes to the Internal Revenue Code made by the recently enacted Tax Cuts and Jobs Act (the ?Ç£Act?Ç¥) that affect employee compensation and benefits: Executive Compensation Updates Loss of Deduction for Compensation in Excess of $1 Million Currently, Section 162(m) of the Internal Revenue Code limits the ability of publicly held corporations to deduct annual compensation paid to a ?Ç£covered employee?Ç¥ in excess of $1 million, with an exception to this limit for certain performance-based compensation. Beginning on and after January 1, 2018, the Act amends Code Section 162(m) to eliminate the exception for ?Ç£qualified performance-based compensation?Ç¥ (which includes stock options, stock appreciation rights, and compensation paid upon the attainment of pre-established performance goals) and commissions. There is limited grandfathering relief available under the Act that preserves the deductibility of existing arrangements that pay out after 2017, provided the ?Ç£written binding… Continue Reading

Delaware Supreme Court Adopts Fairness Standard of Review for Discretionary Equity Compensation for Directors

On December 13, 2017, the Delaware Supreme Court held that discretionary equity compensation grants to directors are subject to an ?Ç£entire fairness?Ç¥ standard of review, rather than the more deferential ?Ç£business judgment?Ç¥ rule, even if the equity incentive plan has been adopted and approved by the company?ÇÖs stockholders. Specifically, the Delaware Supreme Court held that when stockholders have approved an equity incentive plan that gives the company?ÇÖs directors discretion to grant themselves awards within general parameters, the directors will be required to prove the fairness of their awards to the corporation and will not be able to rely on the business judgment rule unless (i) the directors submit specific compensation decisions related to equity grants to themselves for approval by fully informed, un-coerced, and disinterested stockholders, or (ii) the plan is self-executing (i.e., the plan grants awards to directors over time based on fixed criteria, with the specific amounts and… Continue Reading

Three Things Employers Should Know When Seeking EPLI Coverage For Sexual Harassment Claims

At a time when tolerance seems to be an increasingly precious commodity, society can celebrate an awakening intolerance for sexual harassment. For all of the scandal and salacious detail dominating the media in recent months, there is the hope that victims of depravity can find empowerment and healing, if not justice, too. Countless public figures?Çöonce insulated from accountability by wealth, power and status?Çöhave been forced to reckon with the reality of their crimes and consequences. But high-profile resignations and public apologies imply a finality and resolution for wrongdoers that is much slower in coming for those wounded by workplace impropriety. And for every victim, there are countless others?Çöincluding families, friends, institutions and communities?Çöwho are swept up in the aftermath of sexual assault. Among those exposed to significant risk surrounding what can only be called a revolution in public attitudes and societal standards governing sexual harassment are employers, supervisors and others,… Continue Reading

IRS Publishes 2017 Required Amendments List

In Notice 2017-72, the IRS published the Required Amendments List for 2017, which lists statutory and administrative changes in plan qualification requirements that (i) are first effective in the plan year in which the list is published and (ii) may require a plan amendment. This year?ÇÖs list includes three items that relate to (a) certain market rate of return requirements for hybrid and cash balance plans, (b) benefit restrictions for certain defined benefit plans that are eligible cooperative plans or eligible charity plans, and (c) partial annuity distribution options for defined benefit plans. The deadline for adopting any required amendments described in this year?ÇÖs Required Amendments List is December 31, 2019. View Notice 2017-72.

Mastermine v. Microsoft: Following Precedent or Pivoting Away?

At the end of October, in Mastermine Software, Inc. v. Microsoft Corp., No. 2016-2465 (Fed. Cir. Oct. 30, 2017), the Federal Circuit reversed a district court?ÇÖs determination that a system claim was invalid for indefiniteness. The Federal Circuit disagreed with the district court?ÇÖs conclusion that certain claims were indefinite for improperly claiming two different classes of subject matter.[1] The court found that the claims informed those skilled in the art with ?Ç£reasonable certainty?Ç¥[2] in conformity with the Nautilus guidance, specifically on the basis that one can determine when infringement occurs.[3] Overview of the District Court?ÇÖs decision Mastermine asserted U.S. Patent Nos. 7,945,850 and 8,429,518 against Microsoft in the U.S. District Court for the District of Minnesota. In its claim construction order, the District Court held that claims in both patents were invalid for indefiniteness for claiming two different classes ?Çô apparatus and method.[4] Claim 8 of the ?ÇÖ850 Patent recites,… Continue Reading

DOL Delays Claims Procedures for Disability Benefits

The DOL has now officially delayed until April 1, 2018 its regulations that amend the claims review and appeal procedures applicable to ERISA-covered employee benefit plans providing disability benefits. Such regulations were originally scheduled to apply to disability benefit claims filed on or after January 1, 2018. We previously commented on the DOL?ÇÖs proposal to delay these regulations here. The delay gives the DOL time to consider additional comments and data, reassess the impact of the new claims procedures, and revise the regulations as deemed appropriate. Employers should thus expect to receive additional guidance from the DOL before the April 1 effective date. View the final regulations that provide for the delay.

December 2017