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Collateral Estoppel is Allowed to Apply to Rule 36 Affirmances of the PTAB

The Federal Circuit has affirmed that a Rule 36 judgment may serve as a basis for collateral estoppel in Patent Trial and Appeal Board (PTAB) proceedings, in addition to district court proceedings. In VirnetX Inc. v. Apple, Inc., Nos. 2017-2490, 2017-2494 (Fed. Cir. Dec. 10, 2018), the Federal Circuit affirmed the PTAB’s determination in two Inter Partes Reviews (IPRs) that a prior art document was a printed publication. While the PTAB’s final written decision did not reach the merits of any collateral estoppel argument,[1] the Federal Circuit affirmed the PTAB’s determination in those two IPRs that a prior art document was a printed publication expressly on the basis of collateral estoppel in view of a Rule 36 affirmance.[2] How did we get here? Apple challenged U.S. Patent No. 8,504,696 (the ’696 Patent), owned by VirnetX, in two IPR proceedings (IPR2016-00331 and IPR-2016-00332).[3] In IPR2016-00331, and in the companion case IPR2016-00332,… Continue Reading

Top Ten Insurance Tips For Year-End Transactions

The end is near.  2018 is fast coming to a close, and it is that time of year when corporate lawyers are counting—not the number of shopping days left until Christmas, but the number weeks, days and hours left before the end of the fiscal year.  Admittedly, in the scramble to close deals, insurance requirements and indemnity provisions may not be at the top of the list of critical deal points for clients and counsel.  But, in the larger scheme of things, law libraries and LEXIS are littered with the sad stories of parties, who paid too little attention to such details.  Money is the mother’s milk of litigation, and ensuring the availability of adequate insurance and indemnity coverage cannot be overemphasized. For those working on corporate transactions, here are some practical reminders and best practices for drafting indemnity provisions and insurance requirements.  As always, individual circumstances may vary.  What… Continue Reading

IRS Provides Initial Guidance on New Tax Benefits Under Code Section 83(i)

The Tax Cuts and Jobs Act of 2017 amended Section 83 of the Internal Revenue Code by adding a new Section 83(i) (“Code Section 83(i)”), which allows certain employees of privately-held corporations to defer the recognition of income (for up to five years) attributable to the vesting or receipt of certain qualified company stock transferred to such employees upon the exercise of stock options or the settlement of restricted stock units. On December 7, 2018, the IRS released Notice 2018-97, which provides initial guidance on certain aspects of Code Section 83(i). In particular, the notice provides guidance on (i) the application of the requirement in Code Section 83(i)(2)(C)(i)(II) that equity grants be made to at least 80 percent of all employees who provide services to the corporation in the United States, (ii) the application of tax withholdings on the deferred income related to the qualified company stock, and (iii) the… Continue Reading

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