Gibbons Law Alert

Exploration of Sophisticated Cloud Computing Abilities Unnecessary When Responding to Discovery Demands

Posted in E-Discovery: Legal Decisions and Court Rules

On May 29, 2014

A new decision out of the District of New Jersey holds that a company need not utilize its cloud-based comprehensive document search tools absent evidence that its standard custodian-based approach to data collection was deficient. In Koninklijke Philips v. Hunt Control Systems, a multi-billion dollar trademark dispute, defendant Hunt Control Systems, Inc. (“Hunt”) served plaintiff Koninklijke Philips N.V. (“Philips”) with discovery demands that included requests for production of electronically stored information (“ESI”). To prepare its response, Philips requested information from eight specific employees.

AIA Post-Issuance Proceedings – First Claim Amendment Motion Granted in Inter-Partes Review

by Thomas J. Bean

Posted in Patent

On May 28, 2014

Prior to April 22, 2014, and since the filing of the first petition for inter partes review on September 16, 2012, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) had not granted any patent owner’s motion to amend claims of patents under review. On April 22, 2014, this record changed as the PTAB issued its first decision in International Flavors & Fragrances, Inc. v. U.S. Department of Agriculture (IPR2013-00124) partially granting the patent owner’s motion for claim amendment.

New York State Bar Association Environmental Law Section Releases Comments on Brownfield Program Reform Proposals

by David J. Freeman

Posted in Environmental and Green Issues

On May 27, 2014

The Environmental Law Section of the New York State Bar Association has released its Report and Recommendations regarding the proposed extension and reform of the New York State Brownfield Cleanup Program (“BCP” or “Program”). The Report and Recommendations were prepared by the Section’s Brownfield Task Force, co-chaired by David J. Freeman and Lawrence P. Schnapf. The Task Force spent several months reviewing the proposals for reforming the Program made in Governor Andrew Cuomo’s budget bill and draft bill circulated by the staffs of the Senate and Assembly Environmental Conservation Committees.

The FDA Releases New Draft Guidance for Demonstrating Biosimilarity

by Samuel H. Megerditchian

Posted in Biotech

On May 27, 2014

On May 13, the Food and Drug Administration released a new draft guidance on the data needed to establish that a proposed therapeutic biological product is biosimilar to an approved reference product. This new guidance gives sponsors a roadmap, detailing the procedures needed to demonstrate biosimilarity between a proposed drug candidate and a reference product, and highlighting the types of data needed to support such a demonstration.

Rule Amendments Update: Advisory Committee Approves Proposed Changes, But Not Before Rewriting Rule 37(e)

by Gibbons P.C.

Posted in E-Discovery: Legal Decisions and Court Rules

On May 27, 2014

Like many, we’ve been following closely the process to amend the Federal Rules of Civil Procedure. (See our previous blog posts from May 6, 2013 and February 10, 2014.) Last month, the Advisory Committee on Rules of Civil Procedure took the next step in that process by approving the proposed amendments and submitting them to the Standing Committee on Rules of Practice and Procedure for its review and possible approval. But before doing so, the Advisory Committee took the particularly noteworthy step of completely rewriting the proposed amendment to Rule 37(e).

EEOC Focusing on Telecommuting as a Reasonable Accommodation

by Richard S. Zackin

Posted in Disability

On May 21, 2014

The EEOC is heralding a recent decision from the United States Court of Appeals for the Sixth Circuit, Equal Opportunity Employment Commission v. Ford Motor Co., a case in which the agency brought suit on behalf of a Ford employee who alleged she was terminated in retaliation for filing a charge of discrimination with the EEOC. In her charge, the employee alleged Ford violated the Americans with Disabilities Act (“ADA”) by not allowing her to telecommute to work. The district court granted Ford’s motion for summary judgment, but, in a 2-to-1 decision, the Sixth Circuit reversed, finding that the EEOC had presented evidence sufficient to survive summary judgment that (a) by requesting to telecommute the employee had sought a reasonable accommodation for her disability and (b) the alternative accommodations offered by the company were insufficient. Of concern to employers is the little weight given by the majority opinion to the employer’s business judgment that the employee’s presence in the workplace was an essential function of her job.

Supreme Court to Address Evidentiary Requirements for Determining Removal Jurisdiction in Class Actions

by Gibbons P.C.

Posted in Class Action Defense

On May 21, 2014

The Supreme Court of the United States granted certiorari in Dart Cherokee Basin Operating Company, LLC v. Owens, to resolve a circuit split over the evidentiary standard for determining removal jurisdiction pursuant to the Class Action Fairness Act (“CAFA”). Specifically, the Court will consider “[w]hether a defendant seeking removal to federal court is required to include evidence supporting federal jurisdiction in the notice of removal, or is alleging the required ‘short and plain statement of the grounds for removal’ enough?”

AIA Post Issuance Proceedings – Additional Discovery Requested in Inter Partes Review Must Be “Surgically” Tailored

by Thomas J. Bean

Posted in Patent

On May 21, 2014

In comparison to discovery obtainable in federal district court proceedings, discovery obtainable in inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) under the America Invents Act (AIA) is sharply limited. Aside from “mandatory initial disclosures” agreed to by the parties and “routine discovery” largely limited to the cross-examination of experts, additional discovery must be requested by motion to the PTAB, with a showing that such discovery is required “in the interests of justice.” If the request is denied, the moving party can request the motion to be reheard by the PTAB by identifying all matters the party believes the Board misapprehended or overlooked.

Hobbs Act Remains a Formidable Obstacle in Challenging FCC Regulations Under the TCPA

by Caroline E. Oks

Posted in Class Action Defense

On May 19, 2014

In Nack v. Walburg, the plaintiff consented to receive a fax advertisement from the defendant. But, because the fax lacked an “opt-out” notice arguably required by regulations promulgated under the Telephone Consumer Protection Act (“TCPA”), plaintiff filed a class action complaint, seeking millions of dollars in class-wide statutory damages under the TCPA. The district court granted summary judgment in favor of the defendant, holding that the pertinent regulation should be narrowly interpreted to require opt-out notices only for unsolicited faxes, not invited faxes. The Eighth Circuit, however, relying on an amicus brief from the FCC, disagreed and reversed, holding that the Hobbs Act prevented judicial review of administrative regulations, except on appeal from a prior agency review. The court expressed skepticism as to “whether the regulation (thus interpreted) properly could have been promulgated under the statutory section” at issue but suggested that defendant seek a stay of the civil proceedings while it pursued administrative remedies.

Patent 101 Continued

by Charles H. Chevalier

Posted in Patent

On May 13, 2014

Section 101 challenges continue to be front and center at the district court level, including three recent decisions in the United States District Courts for the Northern District of California and Eastern District of Virginia which reflect holdings falling on opposite sides of 101 patentability. In France Telecom S.A. v. Marvell Semiconductor Inc., the court denied defendant’s summary judgment motion because it failed to meet the “high level of proof” needed to succeed on an eligibility challenge under section 101. There, the patent involved correcting errors in telecommunication and other signals (caused by noise or interference which distorts the data) known as turbo coding. After summarizing relevant jurisprudence, the court identified the abstract ideas relevant to the subject matter of the patent claims at issue as “error-correction coding” or “decoding digital data elements.” The court then analyzed whether the claims contained “additional substantive limitations that narrow, confine, or otherwise tie [them] down.” Specifically, the court found that they provide “unique and detailed [error-detection coding or decoding] methods . . . or inventive concepts that exceed the prior art, namely, coding in parallel and a novel method of iterative coding.” Thus, the claimed inventions “provide the necessary substantive claim limitations beyond the mere recitation” of abstract ideas. The court also gave the claims a passing grade in the machine-or-transformation test: “[c]laim 1 takes digital data elements and turns them into a distinct series of coded data elements, which Claim 10 in turn decodes.” The court further found relevant (similar to the court in TQP Development we previously discussed) that the purpose of the patent was “to disclose a method for more accurate and efficient data transmission.”