Gibbons Law Alert

Gibbons Law Alert

Author: Gibbons P.C.

Natural Phenomenon Takes Back Seat to Analysis

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Posted in Patent / Pharmaceuticals

On August 1, 2017

In a recent decision of the CAFC entitled Millennium Pharmaceuticals, Inc. v. Sandoz Inc., et al, a consolidated appeal of cases 2015-2066, 2016-1008, 2016-1009, 2016-1010, 2016-1109, 2016-1110, 2016-1283, and 2016-1762, decided July 17, 2017, Judge Newman writing the opinion for a unanimous panel reversed a decision of the District Court for the District of Delaware holding the patent (US 6,713,446) on the cancer drug Velcade® invalid for obviousness. That drug had been used clinically to successfully treat multiple myeloma and mantle cell myeloma. The active moiety in Velcade® was the compound D-mannitol N-(2-Pyrazine)carbonyl-L-phenylalanine-L-leucine boronate. That compound arose as a result of a yearlong quest to solve the instability problem with solutions of the non-sugar containing bortezomib compound. When the inventor of the ‘446 patent (a scientist at the NCI and the University of Kansas) lyophilized bortezomib in the presence of mannitol he obtained the aforesaid boronate which had covalently incorporated the mannitol producing a new compound. This compound proved to be not only stabile on storage and in solution but also when administered to a subject functioned as a prodrug for bortezomib. No prior art was presented that taught or suggested a compound whose structure presented a basis for an obvious rejection using standard analysis of a pharmaceutical compound claim. In the District Court case,...

Third Circuit Clarifies Focus of Preliminary Injunction Standard

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Posted in General Litigation

On July 31, 2017

Describing its precedent as “confus[ing]” and “inconsistent,” the Third Circuit recently clarified the test for deciding whether to issue a preliminary injunction. Since the 1970’s, courts in the Third Circuit have decided preliminary injunction applications based upon the following factors: (1) the likelihood of success on the merits; (2) whether the movant will be irreparably harmed in the absence of relief; (3) the possibility of harm to others from grant or denial of the relief; and (4) the public interest. However, courts differed as to how these four factors should be applied. In Reilly v. City of Harrisburg, the Third Circuit shed light on how these factors are to be weighed and, at least in part, who bears the burden on each. The Third Circuit held that a movant seeking a preliminary injunction bears the burden of “meet[ing] the threshold for the first two ‘most critical’ factors.” To satisfy the first prong, the movant “must demonstrate that it can win on the merits” by showing that its chances of success are “significantly better than negligible but not necessarily more likely than not.” To satisfy the second prong, however, the movant must show “that it is more likely than not to suffer irreparable harm in the absence of preliminary relief.” After a movant makes these showings,...

Do You Like What You’re Reading? Rate Our Blog: The ABA Journal’s “Web 100” Award

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Posted in Labor

On July 24, 2017

Thank you for visiting the Gibbons Employment Law Alert blog! Content on our site, authored by members of the Gibbons Employment & Labor Law Department, discusses employment and human resources issues and news within the legal and business industries. How are we doing? To review our blog and nominate the Gibbons Employment Law Alert for this year’s ABA Journal’s “Web 100” award, please visit abajournal.com/blawgs/web100 and share why you are a “fan” of our site (Please note: the voting process closes on Sunday, July 30). Thank you in advance for your support.

New York Bar Association Revises Social Media Ethics Guidelines

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Posted in Litigation Preparedness and Strategies

On June 23, 2017

On May 11, 2017, the Commercial and Federal Litigation Section of the New York State Bar Association issued its third iteration of Social Media Ethics Guidelines. As the authors of the Guidelines aptly recognize: “As use of social media by lawyers and clients continues to grow and as social media networks proliferate and become more sophisticated, so too do the ethics issues facing lawyers.” This recent update adds principles regarding professional competence and attorney use of social media, and addresses ethical considerations regarding maintaining client confidences, handling potential conflicts of interests related to social media, following clients’ social media, and communicating with judges via social media. Issued in 2014 and updated in June 2015, the Guidelines aim to provide “guiding principles” as opposed to “best practices” for the modern lawyer’s evolving use of social media. The authors acknowledge the guidelines’ inherent inability to define universal principles in the face of varying ethics codes, which “may differ due to different social mores, the priorities of different demographic populations, and the historical approaches to ethics rules and opinions in different localities.” The Guidelines are based upon the New York Rules of Professional Conduct and New York bar associates’ interpretation of those rules. The Guidelines do, however, cite ethics opinions where there is a difference of opinion or...

Intellectual Asset Management Again Ranks Gibbons Among World’s Leading Patent Professionals

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Posted in Intellectual Property

On June 23, 2017

Intellectual Asset Management (IAM) has again included Gibbons P.C. in its 2017 edition of IAM Patent 1000: The World’s Leading Patent Professionals. David E. De Lorenzi, Chair of the Gibbons Intellectual Property Department, and Department Counsel George W. Johnston and George M. Gould were also recognized individually among IAM’s leading patent practitioners. This is the seventh straight year that IAM has recognized the firm. To compile the IAM Patent 1000, the IAM team conducts extensive research over the course of five months with thousands of private practice attorneys based in dozens of countries, as well as the users of their services, in order to identify the practitioners and practices that are considered to excel at providing patent-related legal services. Among other accolades, IAM recognized that “intellectual property is a central pillar at general practice Gibbons” while also recognizing that the firm’s IP experience “across the board means that patents are prosecuted with aplomb, technology transfers are swiftly sewn up and high-stakes cases are favourably resolved.” Moreover, clients surveyed by IAM remarked that when working with the Gibbons Intellectual Property Department, the client’s “long-term business interests are always kept front and centre.” David E. De Lorenzi was again selected by IAM for his patent litigation and transactional practice: “David is a smart, sensible, practical and cost-effective...

Purported Inventor’s Damaging Deposition Testimony Not Sufficient to Warrant Attorneys’ Fees for Failed Inventorship Challenge

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Posted in Patent

On May 25, 2017

If you practiced at the pharma-academia interface during the past five decades, you have no doubt heard the mantra it’s about the science and not about the money when issues arose. It was almost always about the money. A case in point is provided by the recent CAFC decision in University of Utah v. Max Planck Gesellschaft. In that case, Max Planck successfully defended a group of ten patents directed to improved methodologies relating to RNA interference, identified as the Tuschl II patents, against a claim to revise inventorship in these patents to name a Utah scientist (Dr. Bass) as sole or joint inventor. The factual basis for the inventorship claim arose from an interaction between Drs. Bass and Tuschl regarding the original methodology in RNA interference set out in a scientific publication identified, as Tuschl I. Such interaction resulted in what was deemed a mini review by Dr. Bass in the scientific journal cell which described the technology and set forth several hypotheses of Dr. Bass including one proposing the ‘3’ overhangs as the enzyme feature that was possibly responsible for the observed activity obtained by the Tuschl technology. During depositions taken in the course of discovery, defendants’ counsel obtained several damaging admissions from Dr. Bass which clearly undermined the claim of the University...

California Supreme Court’s McGill Decision Creates Confusion Over the Enforceability of Arbitration Clauses That Limit Public Injunctive Relief

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Posted in Class Action Defense

On May 5, 2017

In McGill v. Citibank, N.A., the California Supreme Court unanimously held that arbitration clauses that waive the right to seek public injunctive relief in any forum are contrary to public policy and therefore unenforceable under California law. The decision is significant, as it potentially limits the type of the relief that is subject to arbitration. It also raises questions regarding the Federal Arbitration Act’s (“FAA”) preemption of California’s so-called Broughton-Cruz rule, which holds that agreements to arbitrate claims for public injunctive relief under the California’s Consumers Legal Remedies Act (“CLRA”), unfair competition law (“UCL”), or the false advertising law are unenforceable in California. Overall, however, the case raises more questions regarding the enforceability of arbitration clauses than it resolves. Plaintiff Sharon McGill (“McGill”) opened a credit card account with Citibank, N.A. (“Citibank”) and purchased a “credit protector” plan (“Plan”) for a monthly premium, which deferred certain credit balances when a qualifying event, such as unemployment, occurred. Although McGill’s original credit card agreement did not contain an arbitration provision, Citibank sent McGill notices in 2001 and 2005 which stated that all claims were subject to arbitration, regardless of the remedy sought, and waived the cardholder’s right to bring any claims on a representative or class-action basis. McGill filed a class action alleging violations of CLRA, UCL,...

NLRB Regional Director Continues Board’s Expansion in Higher Ed

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Posted in Labor

On May 2, 2017

A National Labor Relations Board (NLRB) regional director has decided that student resident advisors (“RAs”) are statutory employees under the National Labor Relations Act (NLRA). In George Washington Univ., the regional director ordered that an election take place May 3rd, so that the student RAs can decide whether to unionize through a secret ballot process. The decision is the latest in a string that expands the NLRA’s reach at colleges and universities, and comes on the heels of a memorandum authored by the Board’s general counsel that broadly interprets those decisions. Facts George Washington University requires all undergraduate students to live in residence halls until their senior year as part of the “student experience.” The university staffs its residence halls with student RAs whose role is to assist other students living in the residence halls and build relationships with and among them. The student RAs have wide discretion in performing their role, including the activities they choose to build relationships. Very few student RAs serve in the role for more than a year. There are, of course, parameters around being a student RA. They must be full-time undergraduate students who have completed at least one year of studies and are in good standing at the university. Individuals interested in becoming student RAs undergo an application and...

Turning Back the Clock: NJ Appellate Division Holds That ISRA De Minimis Quantity Exemption Still Available Following Withdrawal of NFA

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Posted in Development/Redevelopment / Environmental and Green Issues

On April 26, 2017

The New Jersey Appellate Division recently announced several interesting holdings regarding the New Jersey Industrial Site Recovery Act (“ISRA”), N.J.S.A. 13:1K-6, et seq. In R&K Associates, LLC v. New Jersey Department of Environmental Protection, Docket No. A-4177-14T1, the Court held that a former owner of an industrial site may apply for an exemption from the ISRA process even when the former owner has not owned the site for many years and elected to not pursue the exemption in the past. The case concerned the final decision of the Department of Environmental Protection (“DEP”) denying a De Minimis Quantity Exemption (“DQE”) under ISRA to the former owner of the subject industrial site. ISRA is the New Jersey law which generally requires owners of industrial sites to remediate on-site environmental contamination or expressly assume responsibility for remediation prior to transferring an ownership of the site. A DQE under ISRA allows an owner of an industrial site to avoid the requirements of ISRA where only trivial amounts of hazardous substances were used on-site. The case has an extensive procedural history with three appeals and numerous DEP actions, beginning with DEP’s withdrawal of a 1997 No Further Action (“NFA”) letter to the former owner. When the former owner sold the site in 1997, it submitted a Preliminary Assessment Report (“PAR”)...

Privilege Claims and the Common Interest Doctrine

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Posted in Patent

On March 24, 2017

In a recent decision, in the District of Massachusetts, Magistrate Judge M. Page Kelley addressed the validity of privilege claims regarding third party communications under the common interest doctrine. In this case, plaintiffs Crane Security Technologies, Inc. and Visual Physics, LLC, a wholly-owned subsidiary of Crane Technologies, Inc. (collectively, “Crane”) alleged that defendant Rolling Optics, AB (“RO”) infringed the Crane patents that “relate generally to optical systems that project synthetic images that ‘move’ and that include image icons formed as voids or recesses” therefore, “useful as [an] anti-counterfeiting feature[] on currency.” Crane is the exclusive licensee to the patents-in-suit from third party, Nanoventions (“NV”). The relationship between the parties began in 2002 when Crane entered into a confidentiality agreement with NV because Crane was interested in using NV’s optical system as a security device on currency. Over the course of the next several years, Crane and NV entered into numerous additional agreements, culminating in Crane’s “purchase[] [of] the intellectual property from NV in 2008.” During discovery, RO challenged approximately 600 entries on Crane’s privilege log regarding certain communications between Crane and third parties pertaining to the Crane’s transactions with NV, including: (1) communications between Crane and NV dated before the 2004 license agreement, while NV was prosecuting the patents-in-suit; (2) communications between Crane and NV...

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