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EEOC Discusses Health Insurance Incentive Programs

by David W. Eckhardt, posted Tuesday, February 09, 2016

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As a follow-up from WHD’s previous blog post regarding wellness programs, this post will address informal comments made by the EEOC regarding wellness programs.
 
The American Bar Association Joint Committee on Employee Benefits met with EEOC staff on May 7, 2015. In that meeting, staff members stated that a program that only measures a participant's waistline would not be subject to ADA rules because measuring a waistline is not a disability-related question or medical examination. However, staff reiterated that incentives tied to answering disability-related questions or underdoing a medical examination cannot exceed 30% of the total cost of self-only coverage.
 
For example, an employer informed an employee and his spouse that the spouse must participate in the program to avoid a reduction in coverage level. EEOC staff indicated that this reduction in coverage would violate both the HIPAA nondiscrimination rules and the similar ADA provision.  

Staff confirmed that a voluntary “Biggest Loser” challenge is not considered a workplace wellness program subject to the proposed ADA wellness rules when it is provided through a third-party vendor. The program is also not part of an employer’s group health plan and does not involve incentives related to the group health plan.
 
These comments provide helpful insight into how the EEOC views these types of wellness programs. With the issuance of regulations under the ACA, ADA and GINA, employers will need to navigate the various laws based on their programs’ specifics.

For more information, please contact David Eckhardt at (414) 978-5414 or deckhardt@whdlaw.com, or another member of the Employee Benefits Team.

 

Federal Court Decision Provides New Guidance for Employers Considering Wellness Programs

by Erik K. Eisenmann and Laura L. Ferrari, posted Monday, January 25, 2016

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On Dec. 30, 2015, Judge Barbara Crabb from the U. S. District Court for the Western District of Wisconsin issued a decision in EEOC v. Flambeau, Inc., a case that clarifies employers’ rights under the Americans with Disabilities Act (ADA) to utilize workplace wellness programs. With employee wellness programs gaining popularity, this decision offers some much-needed guidance as to how this provision applies to the programs and what program features are essential in ensuring employers maintain compliance with the ADA.

   
Key Language in the ADA

2 U.S.C. § 12112(d)(4)(A) generally prohibits employers from requiring a medical examination or making inquiries as to the existence, nature or severity of a disability unless doing so is job-related and consistent with business necessity. There is, however, an exception to this rule that allows employers to conduct voluntary medical exams that are a part of a workplace health program.  
 
Section 12201(c)(2) of the ADA also outlines a safe harbor provision that allows employers to engage in activities to establish the “terms of a bona fide benefit plan that are based on underwriting risks, classifying risks, or administering such risks." 
 
The Employer’s Wellness Program
 
In Flambeau, the employer offered its employees the ability to participate in its self-funded, self-insured insurance plan. Participation was voluntary, and employees were not required to join as a condition of their employment. To be eligible for the insurance plan, however, employees were required to participate in a wellness program, which was comprised of a health risk assessment (including a questionnaire about diet, medical history, etc.), and a biometric test, which was similar to a routine physical exam. With the exception of information about tobacco use, the information associated with individual employees was not used; only aggregate information from all participating employees was used to identify any common health risks and allowed the employer to estimate the cost of insurance, set premiums and adjust co-pays. An employee who lost his coverage due to non-completion of the wellness program requirements sued his employer, claiming that the requirements violated the prohibition in the ADA on mandatory medical exams. The employer, however, maintained that these requirements were terms of the plan, thereby bringing the plan and its prerequisites within the safe harbor provision. Read more...

 

Recent ACA Guidance

by David W. Eckhardt, posted Friday, January 15, 2016

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This post is the first in a series that will address recent guidance issued by the U.S. Treasury Department, Internal Revenue Service (IRS) and U.S. Department of Labor regarding various aspects of group health plans and the Affordable Care Act (ACA). This blog will supplement Employee Benefit Special Reports and provide more informal and frequent posts on employee benefits matters.
 
 
 
 
IRS Notice 2015-87  
 
While everyone was enjoying the holidays, IRS Notice 2015-87 was issued together with 26 frequently asked questions (FAQs) that covered the following topics:
  • Information reporting penalty relief;
  • Application of ACA reforms to various health care arrangements, such as health reimbursement arrangements and employer payment plans;
  • Application of the employer mandate provisions relating to contributions under HRAs, FSAs, and opt-out payments;
  • The impact of employer contributions on affordability for employees; and
  • COBRA rules related to FSAs.   
As the FAQs are very lengthy, detailed and cover a lot of ground, each topic will be covered in the Employee Benefits blog and Special Reports.

 
Penalty Relief and Reporting Deadlines

 
Starting with some good news for the new year, the Notice reiterates the relief provided for in the preamble to the final regulations under IRC §6056 that the IRS will not impose penalties on employers who can show they have made a good faith effort to comply with the information reporting requirements in 2016 for coverage offered in 2015. However, employers must still timely report to be eligible for the relief.
 
With regard to timing of reporting, the IRS released IRS Notice 2016-4, which delays the due dates for ACA information reporting both for furnishing to individuals and filing with the IRS. The notice delays the due date to furnish reports to individuals from Feb. 1, 2016, until March 31, 2016. The notice delays the filing with the IRS from Feb. 29, 2016, to May 31, 2016, if not filing electronically, and from March 31, 2016, to June 30, 2016, if filing electronically. Employers receive this extension automatically and are not required to submit any further documentation with the IRS.
 
Stay tuned for further blog posts regarding the ACA guidance issued under Notice 2015-87.
 
For more information, please contact David Eckhardt at (414) 978-5414 or deckhardt@whdlaw.com, Michael Taibleson at (414) 978-5514 or mtaibleson@whdlaw.com, or another member of the Employee Benefits Team.
 

 

U.S. Patent Office Institutes First Post-Grant Review of a Pre-AIA Patent

by Ted J. Barthel and Brianna M. Schonenberg, posted Tuesday, January 05, 2016

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PGR2015-00017. USP 8,933,395 owned by Premium Genetics, Ltd. (PG), has a filing date of Jan. 31, 2014, and a long priority chain of continuation and provisional applications reaching back to July 31, 2002 (pre-America Invents Act (AIA)). The ‘395 Patent has 14 claims, with independent claims 1 and 2. It is noteworthy that claim 2 was filed by way of preliminary amendment on the ‘395 Patent filing date—Jan. 31, 2014 (post-AIA).

Challenger Inguran LLC (Inguran) petitioned for a Post-Grant Review (PGR) within nine months of the ‘395 Patent grant date and, in response, Patentee PG, filed a Preliminary Response. In its Dec. 22, 2015 Decision on Institution, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) agreed with Inguran that the ‘395 Patent is available for PGR. PTAB ruled that even though claim 1 was fully supported by the pre-AIA priority application (giving claim 1 a pre-AIA effective filing date), claim 2 was not sufficiently disclosed in the pre-AIA priority application. Central to the PTAB’s reasoning was the analysis of “constriction and flattening of cells” language in claim 2. PG contended that the skilled artisan would understand the meaning of this claim language and pointed to a third-party prior art patent as support. PTAB found PG’s argument unpersuasive, stating that “a prior application itself must describe an invention.” PTAB determined that claim 2 was not supported by the pre-AIA priority application. With an effective filing date of Jan. 31, 2014, PTAB found that claim 2 fulfills the AIA provision of an application containing “at any time” a claim with an effective filing date on/after March 16, 2013. PTAB therefore ruled that all claims (including claim 1) of the ‘395 Patent are subject to PGR.

Interestingly, PTAB determined that Inguran’s § 112 challenge to claim 2’s enablement/definiteness fell short. With respect to enablement, PTAB stated Inguran failed to establish the claim 2 term “constriction and flattening of cells” constituted undue experimentation. With respect to the definiteness requirement, PTAB noted Inguran failed to establish the claim 2 term “all available sides” was ambiguous.

Takeaway: It is perplexing how PTAB determined claim 2 has § 112 enablement/definiteness in the pre-AIA priority application sufficient to withstand Inguran’s challenge, yet claim 2 is not entitled to receive the benefit of the pre-AIA priority application filing date.

For more information, please contact Ted Barthel at (414) 978-5317 or tbarthel@whdlaw.com, Brianna Schonenberg at (414) 978-5567 or bschonenberg@whdlaw.com, or another member of the Intellectual Property Practice Group. We will be monitoring future PGR developments in this case and others in this blog.

 

Using Post-Grant Review to Challenge Pre-AIA Patents

by Ted J. Barthel and Brianna M. Schonenberg, posted Tuesday, December 22, 2015

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As of Dec. 22, 2015, 16 Post-Grant Review (PGR) petitions have been filed with the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Seven PGRs (more than 40%) challenge, or have challenged, a patent with a pre-America Invents Act (AIA) priority claim—i.e., seven patents challenged by PGR claim priority to a patent application with a filing date before March 16, 2013.

This blog post provides a brief overview of the pre-AIA patents challenged under PGR.

 
1. PGR2014-00007. Challenger SDI Technologies, Inc. (SDI), mistakenly filed a petition for Inter Partes Review (IPR) as a petition for PGR on USP 8,364,295, owned by Bose Corp. The ‘295 Patent was filed on Dec. 7, 2006 (pre-AIA) as a continuation application that claims priority to an earlier application having a pre-AIA filing date of Oct. 12, 2000. The PGR was dismissed in view of SDI’s mistake, and SDI proceeded to file two petitions for IPR against the '295 Patent.

2. PGR2014-00008. Challenger LaRose Industries LLC (LaRose) alleged that USP 8,684,420, owned by Choon’s Design Inc., was available for PGR. The ‘420 Patent has a filing date of July 13, 2013, with a priority chain of previous applications extending back to an earliest effective filing date of Nov. 5, 2010 (pre-AIA). LaRose asserted the application that matured into the ‘420 Patent was filed with new claims, the new claims being different than claims in any of the pre-AIA priority applications. In the PGR petition, LaRose provided detailed argument explaining why four key claim terms were not supported in the pre-AIA applications.

Prior to a decision on institution, the parties jointly filed a motion to terminate the PGR, which PTAB granted.

3. PGR2014-00010. USP 8,598,219, owned by Helsinn Healthcare S.A., has a filing date of May 23, 2013, and is a continuation-in-part (CIP) with a long priority chain of continuation and provisional applications reaching back to Jan. 30, 2003 (pre-AIA). However, the Application Data Sheet filed with the application for the ‘219 Patent identified the patent as an AIA application. Indeed, during prosecution, Helsinn Healthcare S.A. argued in an examiner interview that the application falls within the AIA regime.

Prior to a decision on institution, the parties jointly filed a motion to terminate the PGR, which PTAB granted.

4. PGR2015-00017. Challenger Inguran LLC (Inguran) alleges that USP 8,933,395, owned by Premium Genetics Ltd., is available for PGR. The ‘395 Patent has a filing date of Jan. 31, 2014, and has a long priority chain of continuation and provisional applications reaching back to July 31, 2012 (pre-AIA). Inguran asserts that the ‘395 Patent claims were first fully disclosed when they were submitted in a preliminary amendment filed on Jan. 31 2014, as part of the application that matured into the ‘395 Patent. Inguran argues that the ‘395 Patent claims are not entitled to the filing date of any earlier pre-AIA priority application because none of the priority applications disclose the last element of claim 1, namely the “at least one channel disposed at said another end of the apparatus…. Inguran therefore contends that the effective filing date for the ‘395 Patent claims is the filing date of the preliminary amendment, Jan. 31, 2014.

5. PGR2015-00019. USP 8,876,991, owned by Gold Standard Instruments, LLC, has a filing date of Jan. 29, 2014, and is a continuation of an application with a priority claim of April 25, 2012 (pre-AIA). Challenger US Endodontics LLC alleges that claim 1 includes a temperature range with a lower limit (“a temperature above 25°C up to but not equal to the melting point of the superelastic …alloy”) that is not supported in the pre-AIA application and the ‘991 Patent claims are therefore not entitled to the pre-AIA filing date. During prosecution, the Examiner presented a § 112 rejection to the lower limit of “a temperature above 25°C.” The Patentee overcame the § 112 rejection by way of 132 Declaration. In the reasons for allowance, the Examiner withdrew the § 112 rejection and the originally filed claims granted with no claim amendments. In the PGR petition, US Endodontics LLC alleges that the Examiner made a mistake in allowing the claims with the lower temperature limit of “above 25°C.

6. PGR2015-00022. USP 8,882,292, owned by S&S Precision LLC, has a filing date of June 26, 2013, and is a CIP that claims priority to an earlier CIP application having a pre-AIA filing date of Jan. 31, 2011. Challenger Core Survival Inc. alleges the originally filed ‘292 Patent claims contained new matter not disclosed in the pre-AIA application and, therefore, the ‘292 Patent claims are not entitled to a pre-AIA filing date. Indeed, during prosecution of the ‘292 Patent, the Examiner stated the application was being examined under the provisions of the AIA.

7. PGR2015-00023. USP 8,876,638, owned by MLB Advanced Media, L.P. (MLB), has a filing date of Jan. 29, 2010 (pre-AIA). Challenger Front Row Technologies, LLC (Front Row) focuses on a claim amendment made during prosecution of the ‘638 Patent as the basis for PGR eligibility. During prosecution, MLB submitted the claim amendment “pitch classes pitches” on Sept. 23, 2013 (post-AIA). The Examiner rejected MLB’s claim amendment under § 112 for lack of support. MLB later overcame the § 112 rejection with the claim amendment “pitch types classes.” Front Row asserts that the “unsupported” claim amendment of Sept. 23, 2013, moved the application that matured into the ‘638 Patent from the pre-AIA regime to the AIA regime. According to Front Row, once an application falls under the AIA, it remains subject to the provisions of the AIA.

For more information, please contact Ted Barthel at (414) 978-5317 or tbarthel@whdlaw.com, Brianna Schonenberg at (414) 978-5567 or bschonenberg@whdlaw.com, or another member of the Intellectual Property Practice Group. We will be monitoring future PGR developments in these cases and others in this blog.

 
 

 

EPA Engine Enforcement Continues

by Phillip R. Bower, posted Wednesday, October 07, 2015

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While Volkswagen’s installation of “defeat devices” on its diesel automobiles has recently received a significant amount of media coverage, enforcement of engine regulations has been part of an ongoing effort by EPA to ensure that importers of vehicles and engines comply with the requirements of the Clean Air Act and that retailers exercise due diligence in ensuring that their products comply fully with the regulations. Companies that import vehicles or engines or that install engines in vehicles or equipment should be aware of the following recent enforcement cases and be vigilant of their own compliance with EPA’s engine regulations. Read more... 

 

Recent Judicial Decisions: Stationary Engines (RICE)

by Phillip R. Bower, posted Wednesday, October 07, 2015

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There have been some recent judicial decisions related to stationary reciprocal internal combustion engines (RICE) and the exemptions for emergency engines to operate for certain non-emergency periods without controls. As discussed in a prior blog post, petitioners sought judicial review of parts of EPA’s Jan. 30, 2013, final rule amending the National Emission Standards for Hazardous Air Pollutants (NESHAPs) for Stationary Reciprocating Internal Combustion Engines and Standards of Performance for Stationary Internal Combustion Engines. Read more...  

 

PTAB Issues Third Decision to Institute Post-Grant Review

by Brianna M. Schonenberg and Ted J. Barthel, posted Monday, August 24, 2015

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On Aug. 4, 2015, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) issued its third decision to institute Post-Grant Review (PGR). Netsirv, LLC and Local Motion MN (collectively, Netsirv) filed a petition for PGR against USP 8,756,166 (assigned to Boxbee, Inc.) on March 17, 2015. No patent litigation is pending between Boxbee and Netsirv. The '166 Patent generally relates to a computerized method for storage container (e.g., the PODS® storage system) tracking and delivery. Netsirv challenged the claims of the '166 Patent under 35 U.S.C. §§ 101, 102 and 103.
    
PTAB allowed Netsirv to correct the page count of its originally filed petition (82 pages) to meet the allowed page limit of 80 pages. Boxbee responded to the petition by explicitly waiving its right to file a preliminary response.
 
PTAB held that it is more likely than not that Netsirv will prevail in showing that the '166 Patent claims fail to recite "significantly more" than the abstract idea of "facilitating containerized storage," as required under the Alice Corp. decision.
 
PTAB found Netsirv's § 102 challenge that the '166 Patent was publicly known before the effective filing date was deficient. The only evidence proffered by Netsirv to establish prior public use was an affidavit by the president and CEO of Local Motion MN, the co-PGR petitioner. Citing to the "rule of reason" analysis of In re Reuter, PTAB ruled testimony from an interested party—alone and with no corroborating evidence—was insufficient to establish prior public use. PTAB also determined Netsirv's § 103 challenge was lacking. PTAB found that the same affidavit from Local Motion MN's CEO was insufficient evidence to fulfill deficiencies in the combination of two asserted prior art patent references.
 
Takeaways: 1. Self-interested testimony alone is not enough to establish unpatentability in a PGR proceeding. A challenger must present other corroborating evidence. 2. Boxbee's explicit waiver to a preliminary response is interesting. It appears Boxbee's strategy may be not to defend the '166 Patent in the PGR. Boxbee has a pending continuation application that claims priority to the '166 Patent. Boxbee's plan may be to respond to PTAB's PGR ruling by way of claim amendment in the pending continuation application.
 
For more information, please contact Brianna Schonenberg at (414) 978-5567 or bschonenberg@whdlaw.com, Ted Barthel at (414) 978-5317 or tbarthel@whdlaw.com, or another member of the Intellectual Property Practice Group. We will be monitoring future PGR developments in this case and others in this blog.
  

 

What is Patent Post Grant Review and Why Use It?

by Brianna M. Schonenberg and Ted J. Barthel, posted Tuesday, July 28, 2015

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Post Grant Review (PGR) is a U.S. Patent and Trademark Office (USPTO) proceeding where a third party can challenge a granted America Invents Act (AIA) patent. To be eligible for PGR, a patent must contain a claim with an effective filing date on or after March 16, 2013. A petition for PGR must be filed within nine months of the date of patent grant. Any third party may use PGR to challenge a granted patent's validity. PGR enables a third party to challenge on any ground of patentability—subject matter eligibility (§ 101), novelty (§ 102), obviousness (§ 103) and written description/enablement (§ 112). Unlike litigation, a patent in PGR is not provided a presumption of validity and patent claims are given their broadest reasonable interpretation (instead of the narrower Phillips construction of litigation). After a PGR is instituted, the USPTO must issue a final written decision on the case within one year. Similar to litigation, a PGR can be terminated by the parties through settlement before the USPTO issues a final written decision.
 
PGR can be used offensively and defensively by a third party. A third party concerned about future infringement charges may use PGR offensively by petitioning for PGR of a granted patent before any charges are made. A third party already charged with infringement may defensively petition for PGR in order to take advantage of PGR's lower evidentiary threshold for patent invalidity (preponderance of the evidence) as opposed to the higher evidentiary threshold of clear and convincing evidence applicable in federal court patent litigation. Note that a third party cannot petition for PGR if it has already challenged the validity of the claims in litigation.
 
Of course, if the nine-month window for PGR has passed, Inter Partes Review (IPR) or Covered Business Method Patent Review (CBM) are other USPTO mechanisms available for a third-party challenger.
 
To date, 11 petitions for PGR have been filed—two PGRs settled before the USPTO Patent Trial and Appeal Board (PTAB) issued a decision on institution, one PGR was dismissed because the petitioner mistakenly filed a petition for IPR as a petition for PGR, and two PGRs have been instituted by PTAB.
 
Because of the limited nine-month window to file a PGR, it is important to stay aware of competitors’ pending patent applications. Recently, the USPTO released a free patent application alert service that allows users to set up customized email alerts to receive notification when a patent application is published which meets criteria set by the user (available at www.uspatentappalerts.com).

For more information, please contact Brianna Schonenberg at (414) 978-5567 or bschonenberg@whdlaw.com, or Ted Barthel at (414) 978-5317 or tbarthel@whdlaw.com, or another member of the Intellectual Property Practice Group. We will be monitoring future PGR developments in these cases and others in this blog.
   

 

Post Grant Review Trumps Reissue

by Ted J. Barthel and Brianna M. Schonenberg, posted Thursday, July 16, 2015

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Patentee Leachman Cattle of Colorado (Leachman) filed a reissue application requesting reissue of USP 8,660,888 on Oct. 16, 2014. Thirty-six days later, American Simmental Association (American Simmental) filed a petition for Post Grant Review (PGR) of the '888 Patent. In a teleconference with the Patent Trial and Appeal Board (PTAB) 20 days after American Simmental filed its petition for PGR, Leachman requested authorization to file a motion to stay the PGR proceeding pending conclusion of the reissue application. Leachman made its request prior to filing a preliminary response to American Simmental’s petition for PGR—indicating Leachman was attempting to avoid the costs of defending the '888 Patent in PGR. However, PTAB held that Leachman was not authorized to file a motion to stay at the time because PTAB had not yet decided whether to institute PGR. PTAB noted Patentee Leachman had made no claim amendments in the reissue proceedings. Thus, PTAB found that it would be premature to consider a motion to stay the PGR proceeding.
 
Within one week of instituting the PGR, PTAB unilaterally ordered a stay on the reissue proceeding. PTAB reasoned that duplication of efforts and possible inconsistencies between the reissue proceeding and the PGR justified a stay of the reissue. Claim amendment in the reissue would cause inconsistency in claim scope between the reissue and the PGR.
 
Takeaway: If the '888 Patent is invalidated in PGR, the stayed reissue may benefit Patentee Leachman, as it may offer Leachman the opportunity to play the last hand by later amending claims in the reissue proceeding. Reissue proceedings allow more flexibility for claim amendment compared to the limited ability to amend claims in America Invents Act post-grant proceedings. On the other hand, a PGR-invalidated patent may be Patentee Leachman’s last play. A patent examiner will undoubtedly give weight to PTAB's PGR decision, thereby severely limiting or eliminating Leachman’s attempt at claim amendment. Moreover, invalidation of a patent in PGR triggers patent owner estoppel, which bars a patent owner from obtaining a patent on a claim unless the claim is patentably distinct from the invalidated claims.
 
In a separate PGR proceeding, PTAB stayed the reissue proceedings of USP 8,725,557 for the same reasons. The '557 Patent is also owned by Leachman and PTAB issued a Decision to Institute PGR based on American Simmental's petition for PGR on June 19, 2015.
 
For more information, please contact Ted Barthel at (414) 978-5317 or tbarthel@whdlaw.com, or Brianna Schonenberg at (414) 978-5567 or bschonenberg@whdlaw.com, or another member of the Intellectual Property Practice Group. We will be monitoring future PGR developments in these cases and others in this blog.  
  

 

PTAB Issues First Two Decisions to Institute Post Grant-Review on Same Day

by Brianna M. Schonenberg and Ted J. Barthel, posted Wednesday, June 24, 2015

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The America Invents Act (AIA) created the Post-Grant Review (PGR) proceeding before the U.S. Patent and Trademark Office's (USPTO) Patent Trial and Appeal Board (PTAB). PGR is a USPTO proceeding to review the validity of a granted AIA patent on any ground of patentability. To be eligible for PGR, a patent must contain a claim with an effective filing date on or after March 16, 2013. A petition for PGR must be filed within nine months of the date of patent grant. Any third party may use PGR to challenge a granted patent's validity. To date, 10 petitions for PGR have been filed-two PGRs settled before the PTAB issued a decision on institution, and one PGR was dismissed because the petitioner mistakenly filed a petition for Inter Partes Review as a petition for PGR. On June 19, 2015, PTAB issued its first two decisions to institute PGR. Read more...  

 

EPA Proposes Amendments to NSPS for Grain Elevators

by Phillip R. Bower, posted Tuesday, November 25, 2014

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As part of a required Clean Air Act review process, the U.S. Environmental Protection Agency (EPA) recently proposed amendments to the new source performance standards (NSPS) for grain elevators found at 40 C.F.R. Part 60, Subpart DD. EPA is accepting comments on the proposal through Dec. 22, 2014. Read more...

 

EPA Publishes Two Engine-related Items to Federal Register

by Phillip R. Bower, posted Friday, October 31, 2014

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The U.S. Environmental and Protection Agency (EPA) recently published two items in the Federal Register related to engine regulations. The first notice addresses mobile engines and provides some new minimum standards on maintenance, as well as more flexibility for the use of auxiliary emission control devices in emergency vehicles and in nonroad equipment. The second notice addresses a reconsideration of rules related to the use of emergency stationary reciprocal internal combustion engines (RICE) in non-emergency situations. Read more...

 

More Flexibility for Nonroad Diesel Engine Replacement and Technical Hardship

by Phillip R. Bower, posted Tuesday, June 10, 2014

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Under the U.S. Environmental Protection Agency’s (EPA) Tier 4 emission standards rule, nonroad diesel equipment manufacturers are required to install engines that meet current emission standards in their equipment unless an exemption applies. The EPA recently amended the Tier 4 rule to provide for additional flexibility under two of the exemptions – the replacement engine exemption and the technical hardship provisions under the Transition Program for Equipment Manufacturers (TPEM). See 79 Fed. Reg. 7077 (Feb. 6, 2014). Read more...

 

Outsourcing Review: PCI Data Security Standards for Mobile Payments

by Andrew J. Schlidt, posted Monday, June 18, 2012

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The mobile payment industry is exploding and the framework of regulations governing mobile payments is evolving at a similar speed. Gartner, Inc. projects that worldwide mobile payment transaction values will surpass $617 billion and 448 million users by 2016. In recognition of the revolution in mobile payment solutions, on May 16, 2012, the PCI Data Security Standards Council published guidance on best practices for securely accepting payments via mobile devices – “At a Glance: Mobile Payment Acceptance Security.”  
 
Merchants that accept credit card payments through participating brands such as American Express, Discover, MasterCard, and Visa are required to implement security programs in compliance with the PCI Data Security Standards. All merchants engaged in mobile payment acceptance are well-advised to review this newly released guidance for compliance with PCI Data Security Standards in the context of mobile payments. 
 
Outsourcing Review provides commentary on legal developments affecting companies engaged in technology outsourcing (ITO) or business process outsourcing (BPO).

 

Outsourcing Review: 2012 Working Paper on Outsourcing IT to the Cloud

by Andrew J. Schlidt, posted Tuesday, June 12, 2012

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Companies continue to move IT operations to the cloud given the efficiencies and convenience offered by cloud environments. While the cloud is often seen as a practical technological and financial solution by CIOs and CFOs, it conversely raises liability concerns for company risk managers, compliance officers, and in-house lawyers. An International Working Group on Data Protection in Telecommunications recently published a Working Paper in April 2012 to help this latter group wrap its arms around the privacy and data protection issues arising from cloud computing. The Working Paper contains guidance on 44 “best practices” that should be of interest to all cloud customers, especially those with operations, customers, or employees located in the European Union.
 
Outsourcing Review provides commentary on legal developments affecting companies engaged in technology outsourcing (ITO) or business process outsourcing (BPO).

 

Last Best Chance to Report Foreign Bank Accounts and Comply with FBAR Filing Requirements

by Douglas A. Pessefall, posted Thursday, April 19, 2012

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Foreign bank accounts and assets are increasingly common in today’s world. Such accounts may be legally opened and used by persons who live, work, conduct business, own real estate, study or play abroad (not just alleged “tax cheats”). However, law imposes a number of reporting requirements (some new and some old) on persons who have an interest in or authority over such accounts as well as significant criminal and/or civil penalties for noncompliance. The Internal Revenue Service (IRS) continues to make compliance with those reporting requirements a high priority enforcement item and, within the next two years, expects to receive information directly from foreign financial institutions on accounts owned by persons. The information provided by those institutions will be cross-checked with IRS records to determine whether the accounts were properly reported. This article identifies two of those reporting requirements and explains how noncompliance can be corrected. To view the full article, click here.

 

Outsourcing Review: A Case of “Text Spam” and Vicarious Liability for Vendor Acts

by Andrew J. Schlidt, posted Tuesday, March 13, 2012

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Many companies outsource portions of their marketing program to third party marketing firms. With the continued popularity of text messaging, marketing firms often encourage clients to enhance brand awareness through multiple channels of electronic communication, including text messaging.

Keep in mind that the sending of unauthorized, automated commercial text messages likely violates the Telephone Consumer Protection Act. In a recent “text spam” class action case before the U.S. District Court for the Southern District of California (In re Jiffy Lube International Inc., S.D. Cal., No 11-2261, 3/8/12), six named plaintiffs claimed that the defendants violated the Act for sending unauthorized, automated text messages to cell phones. One of the defendants sought dismissal from the case on grounds that its third party marketing firm sent the messages. The court rejected this particular defendant’s argument and ruled that the defendant should not be relieved of liability under the Act “merely because it hired a different firm to send advertisements to its customers.”

This ruling is a reminder that companies may be held vicariously liable for the acts of their outsource providers. Companies are well-advised to address compliance with laws and allocation of liability for non-compliance in their underlying outsourcing agreements.

Outsourcing Review provides commentary on legal developments affecting companies engaged in technology outsourcing (ITO) or business process outsourcing (BPO).

 

Beware of Unofficial Solicitations Regarding Your Trademarks & Domain Names

by Melinda S. Giftos, posted Wednesday, March 07, 2012

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Have you recently received one or more official-looking notices or invoices relating to your trademarks, but were unsure who the notice was actually coming from? Does the notice indicate for a small fee, you can obtain registration or monitoring services? Were you surprised the notices were sent to you directly from the trademark office rather than through your attorney? If you answered yes to these questions, you have probably been the recipient of one or more trademark registry scams. Read more...

 

U.S. Patent and Trademark Office Launches America Invents Act Online Guide

by Michael J. Cronin, posted Wednesday, September 28, 2011

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On September 16, 2011, President Obama signed the America Invents Act (AIA) into law. The AIA makes numerous changes to U.S. Patent Laws. To help with the transition, the U.S. Patent and Trademark Office (USPTO) has created an on-line guide that contains information about the changes the Act will bring. Some of those changes, such as patent fees, went into effect on Monday, September 26, 2011.  Other changes will fall into place over the next twelve to eighteen months. The site also includes a timeline that shows some major highlights in the coming year.  Finally, the USPTO website provides the opportunity to submit comments on the AIA and the agency’s implementation of the law.

 

President Obama Signs Leahy-Smith America Invents Act

by Michael J. Cronin, posted Friday, September 16, 2011

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Earlier today President Obama signed the Leahy-Smith America Invents Act (AIA) into law, just several days after the USPTO issued the eight millionth patent. The AIA represents the most comprehensive change to U.S. Patent Law in more than 50 years. While many provisions do not take immediate effect, the provision mandating a 15% increase in many USPTO fees takes effect on September 26, 2011. If you have an application nearly ready to be filed, a patent maintenance fee due, or an issue fee that can be paid, taking action by September 26, 2011 will avoid the 15% fee increase.