Category Archives: PLI Press

Treatise Update – Faber on Mechanics of Patent Claim Drafting (Seventh Edition)

Faber on Mechanics of Patent Claim Drafting spotlights proven claim drafting practices and techniques that have been firmly established by patent authorities and custom. The treatise provides full coverage of U.S. Supreme Court and other court decisions critical to claim drafting. It is an indispensable guide for patent specialists/intellectual property attorneys, corporate counsel, patent agents, patent officials, and inventors.

This new release updates and expands the treatise with practical information and commentary on a variety of issues affecting patent claim drafting. Highlights include:

Chapter 1

Abstract ideas: For complete analysis and implications of XY LLC v. Trans Ova Genetics, see §§ 1:4.8 and 1:5.7.
Software Inventions: See §§ 1:4.2[A] and 3:29.7 for treatment of Rain Computer, Inc. v. Samsung Electronics America, Inc.

Chapter 2

Claiming contrary positions: See new § 2:15 for a discussion of Infinity Computer Products, Inc. v. Oki Data Americas, Inc., and how inconsistent statements by the patentee in the prosecution history could limit the scope of the claim language or render the claims invalid.

Chapter 3

Words of approximation: Section 3:19 is updated with a discussion of Par Pharmaceuticals, Inc. v. Hospira, Inc., in which the Federal Circuit said that “about” means approximately and is determined by using a functional approach, avoiding a strict numerical boundary, and confined to what one skilled in the art would consider to be “about” in the current case.
Singular and plural elements: § 3:11 discusses the meaning of the phrase “a plurality of.”
Means plus function: See new § 3:29.7[A] for a discussion of the implications of claiming elements in terms of function performed rather than physical structure in order to cover a broader range of structures.

Chapter 5

Product-by-Process Claims: Section 5:2 looks at Biogen MA Inc. v. EMD Serono, Inc., noting that the Federal Circuit is expanding product by process to cover a method of treatment claim that includes a product-by-process limitation.
Design claims: Section 5:4 notes that the patent office is considering whether design protection should extend to digital designs that do not require a display screen or other tangible article to be viewable.

Table of Authorities and Index

For this release, the Table of Authorities andIndex have been updated.

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Treatise Update – The Circular 230 Deskbook: Related Penalties, Reportable Transactions, Working Forms

The Circular 230 Deskbook is an essential compliance resource for every tax professional who practices before the IRS. It helps practitioners comply with complex Circular 230 amendments more easily — and avoid costly penalties and sanctions. In addition to demonstrating prescribed duties when advising clients in the preparation of tax returns, it offers quick-reference compliance tools.

This thirty-first release of The Circular 230 Deskbook updates the treatise with the latest developments in tax and estate law relating to IRS Circular 230. Highlights from the new release include:

Chapter 1, Deference: When the Court Must Yield to the Government’s Interpretation and Chapter 4, Circular 230 now include discussions on topics such as how there is no need for Administrative Procedure Act notice and comment in connection with listed-transaction notice and the “reasonable cause” defense under section 6676.
A new section 3:7.7, Injunctive Relief discusses the Supreme Court holding that, despite the Anti-Injunction Act, advisors can seek an injunction on the ground that a notice designating a transaction a Reportable Transaction is invalid.
An updated Table of Authorities and Index are included.

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Treatise Update – Sinclair on Federal Civil Practice (Fifth Edition)

Sinclair on Federal Civil Practice gives quick and authoritative answers for issues arising in federal civil litigation and serves as a guide to the principal rules and tactical considerations guiding lawsuits in the federal courts. This two-volume treatise explains the layout of the court system and the nature of its key personnel, jurisdiction and venue principles, and the sequence of litigation. It also provides insight into the rationale of the rules by citing the key interpretive cases and offering court-tested practice tips.

Highlights of the new release include:

Updates to the Additional Resources and Compendium of Recent Cases (Vol. 1 & Vol. 2): Numerous recent law review articles are added to the Additional Resources section at the end of each chapter, and the chronological circuit-by-circuit Compendium of Recent Cases is updated for each volume.

Section 2:8.1[D] Personal jurisdiction / minimum contacts: Discusses a 2021 Supreme Court decision on the issue of whether personal jurisdiction was appropriately exercised over a vehicle manufacturer incorporated in Delaware and headquartered in Michigan for claims that arose from severe injuries and death suffered as a result of accidents in Montana and Minnesota. The vehicles were previously owned, purchased by the plaintiffs at subsequent resales, and brought into Montana and Minnesota from other states.

New section 8:2.4 Standard of review for Rule 12 motions: A new section discusses the standards of review for a motion to dismiss under Rule 12(b)(6) and a motion for judgment on the pleadings under Rule 12(c). Federal appellate courts disagree as to whether a different standard of review applies to a motion to dismiss brought under Rule 12(b)(1), which challenges the subject matter jurisdiction to hear the claims at issue.

New section 8:2.8 Trial motions: A new section analyzes the motion for judgment on partial findings pursuant to Rule 52(c) and the motion for judgment as a matter of law pursuant to Rule 50(a) or 50(b). While both motions are aimed at expediting trials, they have distinct differences that litigators need to consider, including the type of proceeding (jury or non-jury) in which the motion is available and the applicable standard of review.

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Treatise Update – Mergers, Acquisitions and Tender Offers: Law and Strategies — Corporate, Securities, Taxation, Antitrust, Cross Border

Mergers, Acquisitions and Tender Offers provides battle-tested, real-world advice on the entire M&A process. Packed with best practices, planning tips, checklists, and sample documents/agreements, this treatise offers comprehensive coverage of all aspects of the deal for domestic and cross-border mergers.

Highlights of the new release include:

Section 1:7, “The Current M&A Scene,” presents recent data and information on the state of the M&A marketplace.
Section 2:1.2, “The Impact of COVID-19 on Drafting and Interpreting M&A Agreements,” provides a discussion of issues arising from the pandemic in the drafting of corporate acquisition agreements.
Section 4:5.12[D][4], “Recent Approaches to Determine Fair Value—AXA, Hanover, Golden, Ancestry, Dell, Ramtron, Merion, PetSmart, SWS, Sprint, DFC, Aruba, AOL, Solera, Stillwater, SourceHOV, Panera, Jarden, and Synapse,” briefly discusses several recent appraisal cases.
Section 5:5.2[B][16], “The Pill During COVID,” discusses the Williams Companies case in which the court enjoined a poison pill adopted by the company during the COVID-19 crisis.
Section 6:9, “Introduction to Special Purpose Acquisition Companies (SPACs),” introduces the fundamentals of SPACs and analyzes deal documents.
Section 9:1.4, “President Biden’s Business Tax Proposals,” looks at positions President Biden took on various tax issues during the campaign for the presidency in 2020.
Section 10:7, “Introduction to the SEC’s M&A Accounting Rules When the Consideration Is Stock and Cash; Followed by a Policy Prescription,” briefly explains the SEC rules governing financial disclosures in M&A transactions.
New summary updates to Volume 3 discuss some of the changes that will be made to chapters 14 through 28 in the next version of the treatise which will reflect developments after June 1, 2019.

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Treatise Update: Hillman on Documenting Secured Transactions

As case law exposes costly and needless drafting errors and as courts wrestle with applying a complex law to increasingly intricate deals, Hillman on Documenting Secured Transactions: Effective Drafting and Litigation aims to share best practices in documenting secured transactions within the broad legal framework and to maintain its role as the leading practical guide for attorneys drafting and litigating under Article 9 of the Uniform Commercial Code.

Updated content from the new release includes:

Expanded § 2:4, Rights in the Collateral, explains that a debtor may not grant a security interest in property that is in custodia legis even if the property belongs to the debtor.
Expanded § 3:8.2, Leases Under Current Law, discusses how excise tax cases may provide useful guidance on whether the economic realities of the transaction make it a lease or a secured loan.
Expanded § 14:3, Generic and Other Broad Descriptions, explores the risks in using terms that are similar, but not the same as, the Code generics.
Expanded § 19:2.2, The Superior Rights of Purchase-Money Secured Parties, explains that the starting date of the twenty-day clock for a PMSI claimant to perfect depends on whether the debtor receives the goods in a single lot or in multiple lots on different days.

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Treatise Update – Trade Secrets: A Practitioner’s Guide (Second Edition)

Trade Secrets: A Practitioner’s Guide discusses all aspects of protecting trade secrets. It provides sample forms, checklists, and trial testimony from actual cases. The treatise compares and contrasts trade-secret protection with other forms of intellectual property such as copyright, patents, and trademarks.

This release contains new discussions of the law of trade secrets and related topics. Highlights include:

Chapter 4

Secrecy ended by disclosure: Updates to § 4:9.3 include coverage of Attia v. Google LLC, where the Ninth Circuit affirmed dismissal of a claim under the DTSA, finding that disclosure of the subject matter of a trade secret in a published patent application vitiated its trade secret status.
Security measures: Updates to § 4:13 include coverage of Inteliclear, LLC v. ETC Global Holdings, Inc., where the Ninth Circuit reversed summary judgment for the defendant in a trade-secret misappropriation case, disagreeing with the district court’s conclusion that insufficient secrecy was pleaded.

Chapter 5

Ownership: New § 5:11 focuses on Advanced Fluid Systems, Inc. v. Huber, where the Third Circuit ruled that a contractor on a NASA project that possessed trade secrets but did not own them could bring a misappropriation claim. (Other issues in this case are covered in § 4:13 on security measures and § 13:3.7 on punitive damages.)

Chapter 6

Wrongful means: New § 6:12 examines Compulife Software Inc. v. Newman, a case involving a misappropriation-by-use claim in which the Eleventh Circuit ruled, among other things, that a magistrate judge had erred in reasoning that the public availability of quotes on the plaintiff’s site automatically precluded a finding that scraping those quotes constituted misappropriation.

Chapter 10

Identifying trade secrets with specificity: Updates to § 10:9.1 include discussion of TLS Management and Marketing Services, LLC v. Rodriguez-Toledo, an appellate decision addressing the plaintiff’s burden of establishing that a trade secret exists and the enforceability of nondisclosure agreements.

Chapter 13

Unjust enrichment: Updates to chapter 13 include discussion of Epic Systems Corp. v. Tata Consultancy Services Ltd., where the court of appeals affirmed an award of unjust enrichment damages (see § 13:3.5) and found that the punitive damages award was justified by the evidence but unconstitutional in amount (see § 13:3.7).

Table Authorities and Index

In addition, this release includes an updated Table of Authorities and Index.

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Treatise Update: Hedge Fund Regulation (Second Edition)

Covering one of the most dynamic sectors of the asset management industry, Hedge Fund Regulation (Second Edition) is a comprehensive guide providing insight into the history, investment strategies, structure, management, and market activities of hedge funds. It addresses current regulatory concerns that impact these innovative investment vehicles, their managers, and investors.

This seventeenth release to the treatise updates it with the latest considerations in structuring, launching, and operating a hedge fund. Highlights include:

Chapter 4, Private Placement. Now discusses the recent adoption of new Rule 152 that contains a single safe harbor simplifying the integration framework for securities offerings under the Securities Act of 1933.
Chapter 5, Commodity Pools. Revised in conjunction with other chapter updates.
Chapter 6, Marketing the Manager. Significantly updated to address the new Marketing Rule under the Investment Advisers Act of 1940.
Chapter 8, Anti-Money Laundering Regulations. Adds a discussion of the Anti-Money Laundering Act of 2020.
Chapter 13, Compliance. Revised to reflect revisions to the SEC’s whistleblower program.
Chapter 14, Books and Records. Updated with changes resulting from the SEC’s new Marketing Rule and revisions to CFTC Form CPO-PQR.
Chapter 18, Commodity Pool Operators and Commodity Trading Advisers. Adds discussion of amendments to CFTC Regulation 3.10(c) that provides a registration exemption for non-U.S. commodity pool operators (CPOs); new NFA Compliance Rule 2-50 requiring registered CPOs to notify the NFA upon the occurrence of certain events affecting a commodity pool operated by the CPO; and a new NFA requirement requiring Registered CPOs and Commodity Trading Advisers to adopt a written supervisory framework for outsourcing the performance of regulatory functions to third parties.
Chapter 24, Disclosures of Market Participation. Expanded discussion of Sections 13(d) and 16 under the Securities Exchange Act of 1934 and a new section addressing the CFTC’s Speculative Position Limits.
Chapter 26, Derivatives Markets Participants. Revisions including those addressing final CFTC regulations imposing capital requirements on swap dealers and major swap participants that are not subject to the capital requirements of a prudential regulator, and those governing real-time swaps public reporting, swaps regulatory reporting, and swaps data verification.

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New Title! FinTech, RegTech, and the Financial Services Industry

PLI Press is proud to announce the publication of the new treatise FinTech, RegTech, and the Financial Services Industry.

Editor Clifford Kirsch, a leading securities lawyer with more than 25 years of regulatory, corporate counsel, and private practice experience, and a team of 39 experts offer extensive analysis of the legal and compliance issues arising out of the increasingly rapid developments in financial technology, including crowdfunding, blockchain technology and cryptocurrency, and the advent of robo-advisors, and the emerging regulatory framework.

Divided into seven parts, this treatise:

Provides introductory discussions tracing the development of fintech, regtech, and suptech, as well as a review of the regulatory agencies that cover financial products and services that fall under the fintech umbrella.
Examines the business applications of fintech and their attendant regulatory implications, such as the use of digital technology by financial services firms to interact with customers; raising equity capital through the SEC’s Regulation Crowdfunding; and more.
Covers the concept of creating a general ledger through blockchains, which can be relied upon by the public as a source of information of ownership.
Examines the issues that arise when considering the handling and use of data by fintechs.
Considers anti-money laundering in the fintech context.
Provides a discussion of the legal effectiveness of electronic signatures, electronic records, electronic delivery (“e-delivery”) of records, and electronic retention of records.
Discusses firms’ integration of data analytics into their compliance programs, as well as regulators’ use of data analytics to surveil financial markets for potential misconduct.

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More PLI Press books by Clifford Kirsch:

PLI Chronicle: Special AALL Edition

Dear Readers,

PLI launched the online journal the PLI Chronicle in September 2020 with a simple mission: to present engaging and timely discussions about the legal industry from a diverse range of perspectives. Chronicle editor Alyse Greer explains, “Since everyone offers value to their fellow industry associates, all legal and accounting professionals are encouraged to submit articles. The publication gives authors a platform to educate others and the freedom to write in their own voices.”

We compiled this “special edition” of the Chronicle from articles published in previous issues as a way to familiarize librarians with this new content type. The selection reflects what we identified as themes running throughout this year’s American Association of Law Libraries (AALL) conference: 1) Diversity, equity, and inclusion in the legal profession; 2) The future of legal technology, education, and research; and 3) Mental health for legal practitioners.

In the articles below, you’ll find wellness tips from an attorney who overcame depression and addiction; a two-part look into the Internet of Things and open source software; musings on the role of curiosity in fostering inclusion and diversity initiatives; and more. You don’t need a subscription to read these articles. Everything published in the Chronicle is available for anyone and everyone to read. All you need is a PLI account, which is both free and easy to set up.

Our hope is that this curated edition will enhance the conference experience and perhaps even inspire some of our colleagues in law libraries to publish with us.

Sincerely,
Jennifer Fiore, J.D., M.A.
Associate Legal Editor, Publishing and PLI Plus

New Edition! Legal Guide to the Business of Marijuana

PLI Press is proud to announce the publication of the new edition of Legal Guide to the Business of Marijuana: Cannabis, Hemp and CBD Regulation (2021 Edition).

This is a unique resource for lawyers who represent clients in the fast-growing legal cannabis industry. For lawyers new to representing marijuana clients, the authors provide an understanding of the definitions of marijuana and other cannabis products, as well as a review of the policy and political issues that have led to the controversy and uncertainty of the current environment.

The book also offers critical guidance on a wide range of interrelated topics, including:

The complex and varying state regulation of medical and non-medical marijuana;
Federal law, enforcement, and preemption and their implications for employment, taxes, and banking;
Various aspects of establishing and managing a marijuana enterprise, including the growing, licensing, labeling, transporting, and distribution of marijuana and related products.

The new edition adds the latest on regulation of CBD products, the Final Rule for the Establishment of a Domestic Hemp Production Program, and the laws of the latest states to adopt some form of cannabis legalization—New Mexico, New York, South Dakota, and Virginia.

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