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1.1 The double-sided written terms are binding for the scope of the deliveries or goods and services (in the following called “services”). The general terms and conditions of the organiser (in the following called “organiser”) are only valid in as much as we have agreed to them in written form.
1.2 Our offers are subject to change without notice. We retain the right to make technical changes or changes in the types of services within reason. Any services ordered by an organiser are binding. We reserve the right to accept the contracted services ordered within two weeks upon receiving the order. The acceptance of the order may be made in written form. The simple acknowledgment that the order has been received does not denote acceptance of the order.
1.3 Our employees are not authorised to make any additional oral agreements or oral promises that go beyond the scope of the written contract.
1.4 Any changes in address, changes in ownership, company structure, or other business relations for sole-proprietorships shall be conveyed to us in written form as soon as possible.
2.1 Fundamentally, the written description of our services is decisive for determining the nature of our services. Any presentation of our services on the Internet, in brochures, or similar such things, is non-binding. We do not provide any guarantees in the legal sense.
2.2 In so far as the contracted software is our standard software SPORTS or other standard software (not Smart Timing), the organiser has the non-exclusive, non-transferable right (limited to the calendar year in which the software was delivered) to use the software for the events stated in the contract in the unchanged form in which the services were contracted for the agreed upon devices. The organiser may make a back-up copy of the software without obtaining prior permission, which must be deleted once the right of use has expired. The organiser does not have the right of use of the software for other purposes, especially for permanent or temporary copying, in part or in full, in any means or form, in translation, in adaptation or new arrangement, for duplicating the results of any adaptations of the original or for duplicating the original in any form or duplicating any piece including renting, public presentation or public accessibility to the software, or for any use of the software outside of the uses for the events denoted in the contract. The organiser may only provide access to the software to third parties with our prior written permission. The organiser must insure that appropriate measures are taken to avoid misuse of the access data.
2.3. If we have provided the organiser the right to access our systems, for instance our results services, as part of our contracted services, the organiser may only provide third parties access to these systems with our prior written permission. The organiser must insure that appropriate measures are taken to avoid misuse of the access data. We shall not be obliged to provide information about measured results to participants or third parties.
2.4. In so far as we are conducting timekeeping services for sporting events (in the following called “events”), we will provide the results to the organisers electronically, if no other arrangements have been agreed upon. The athletic evaluation of the data is not part of the services, which we provide.
2.5 In so far as we are providing services in conjunction with online registration, we will receive the registration of participants in the name of and on account of the organisers. We shall not enter any contractual relations with the participants. This also applies when we do not provide services in conjunction with the online registration of the participants.
2.6 In so far as we provide the organiser with ChampionChips, other transponders, hook and loop strips, or other fasteners to be provided to the participants, the organiser is obligated to return these objects to us if he does not purchase them from us, for instance, in order to sell them to the participants. We thus do not enter any contractual agreements with the participants. The organiser does not have permission to represent us in legal business vis-à-vis the participants in this or any other matter.
2.7 We have the exclusive right to place logos or advertising for us or for third parties on the ChampionChips, other transponders, hook and loop strips, or other fasteners, which we provide.
3.1 In so far as we have agreed to provide the organiser – especially as part of our Smart Timing offer – materials for usage (such as the Timing equipment, hardware, software), we are only obligated to provide the materials for usage when the organiser has paid the contracted security deposit. We are not obligated to hold the security deposit in a separate account. No interest will be paid on the security deposit. If we utilise our right to the retention of goods with respect to the provision of the materials for usage due to delinquent payment of the security deposit, this does not give the organiser the right to withhold payment of the usage fees.
3.2 While the right of use is in effect and after the right of use has expired, we reserve the right to use the security deposit to fulfil our demands from the contract for the right of use, even if protested by the organiser.
3.3 After the right of use has expired, we will settle the security deposit. We have a period of six months after expiration of the right of use to settle. During this period, the organiser shall not have the right of retention due to his claim to return of the security deposit, nor may he apply the deposit to offset outstanding payments.
3.4 The shipment of goods to the organiser and return of goods to us shall take place on behalf of and on account of the organiser. The organiser shall carry the risk of accidental destruction and/or accidental degradation of the materials provided in the time period between the provision of the materials to be utilised to the carrier and the return of the goods via the carrier to us. The organiser shall also be responsible for examining the materials upon arrival to determine if they are damaged and for confirming this with the carrier. Any damages shall be reported immediately and in written form. The organiser shall secure the damaged materials including the packaging to use as evidence.
3.5 The organiser is not permitted to make any changes to the materials provided to them. This also includes the installation or operation of hardware and software we have not explicitly approved.
3.6 For any functional defects for the materials supplied, the organiser shall not conduct any repairs until we have given prior written consent. Rather, the organiser shall notify us immediately about functional defects of any kind. 3.7 The organiser shall not have the right to claim damages or reimbursement of expenses for any damages to provided materials at the conclusion of the contract for which we are not responsible.
4.1 In case of price increases or higher costs between the conclusion of the contract and the date of the contracted services, we reserve the right to adjust prices, in so far as more than four months lie between the date of the conclusion of the contract and the date of the contracted services and we announce the price adjustment at least three weeks before the start of the event in written form. In so far as the price adjustment is greater than 10% of the contracted price at the time of the onset of the services, the organiser has the right to retract from the contract up to one day before the beginning of the contract in written form.
4.2 Payments shall be made to us without any deductions and free of transaction charges.
4.3 The organiser shall have no rights to retention or to withhold payment unless the underlying counterclaim is undisputed or finally determined by court order.
5.1 Until fulfilment of all claims (including balance claims from any open accounts), which may currently or in the future exist for any legal principles against the organiser, we shall retain the following securities, which we can release at our discretion in as much as their value exceeds our demands by more than 10%.
5.2 All delivered goods shall remain our property. Processing or remodelling is always carried out on our behalf, but without any obligation for us. If our (joint) property right is invalidated due to combination, it is already agreed now that the organiser's (joint) property rights to the combined item are transferred to us pro rata (invoice value). The organiser shall keep custody of our (joint) property free of charge. Goods which are our (joint) property are hereinafter called "goods subject to retention of title".
5.3 The organiser has the right to process or sell the goods subject to retention of title in the normal course of business, provided that he is not in default. Pledging the goods as collateral or transfer by way of security is not permitted, nor is it permitted to stipulate non-assignment clauses. The customer already assigns to us now by way of security and to the full extent any claims arising from re-sale or any other legal principle (insurance, illegal action) connected with the goods subject to retention of title (including balance claims from any open accounts). We will accept assignment of the claims.
5.4 Our entire rights of retention of ownership (simple, extended, or lengthened rights of retention) also shall not lapse when goods that we supplied are purchased by a different buyer, in so far as this buyer did not pay us for the goods. This is especially true for the sale of goods within the framework of partner companies. 5.5 Subject to revocation at any time, we authorise the customer to collect in his own name the claims for his invoices which have been assigned to us. This right to collect claims is valid in as far as bankruptcy has not been filed for the organiser‘s assets; this right can otherwise only be retracted if the organiser does not properly comply with his obligations to pay.
5.6 In the event of claims by third parties on the goods subject to retention of title the organiser must state that it is our property and must inform us immediately.
5.7 In the event of the customer failing to meet his contractual obligations, especially in the case of default on payment, we shall have the right to take back at the customer's expense the goods subject to retention of title, or, as the case may be, demand the assignment of the organiser's right to recovery against third parties. Unless subject to the regulations on financial assistance between entrepreneurs and consumers (Article 503 German Civil Code/BGB), the taking back or seizure of reserved goods shall not constitute withdrawal from the contract.
5.8 Upon request, the organiser shall inform us of his purchaser and inform him of the cession as well as give us the necessary documents for asserting our rights. We also shall have the right to notify the organiser’s purchaser of the cession.
6.1 Where we collect, process and utilize personal data (especially participants’ personal data) in the context of our services, this shall be done within the framework of “commissioned data processing”. The organiser as "controller" within the meaning of Art. 4 No. 7 GDPR is obliged pursuant to Art. 28 (1) GDPR to carefully select the contractor taking particular account of the suitability of the technical and organisational measures he has taken; the organiser confirms with the conclusion of the contract that he has selected us accordingly.
6.2 (1) According to Article 4 Nr.1 GDPR, personal data means any information concerning the personal or material circumstances of an identified or identifiable individual (data subject).
(2) According to Art.4 Nr.8 GDPR Commissioned data processing is the order processing of personal data in accordance with the instructions by of the controller.
(3) Instruction means an order given by the customer as controller concerning a certain action relating to data privacy (e.g. anonymization, blocking, deletion, issue) and associated activities by the contractor in relation to personal data. The instructions are defined by the order and can then be changed, supplemented or replaced by the organizer in writing or in an electronic format (text form) to the place designated by us by individual instructions (individual instructions). Instructions that are not provided for in the order are treated as requests for service changes. Oral instructions must be confirmed immediately in writing or in text form.
(a) Registration for the event.
The data necessary for the organisation of the events are collected from the data subject. The data subject provides the information either in the form of the online registration on the website of the organizer or on the website of mika:timing or in written form on the registration form for the respective event.
For the pre-registered participants, bib numbers and other documents for the event are usually compiled by the organizer (or on his behalf by us) and the participation fee is collected in advance by direct debit or, if desired, by credit card from the athlete's account. For this purpose, the bank details or credit card details of the athlete are requested.
Both gender and year of birth are used as criteria for determining the ranking for the evaluation of event results. The event result can be presented both as an overall ranking and as a ranking within certain age groups (under 20 years, between 30 and 39 years, ...).
(b) Preparation and presentation of results.
The measurement of the performance (time) on the day of the competition takes place via so-called transponder chips with a unique number, which either belong to the participant personally or are made available on loan by the organizer on the day of the event. The time recording system only records the times and the corresponding chip number. Only an assignment of the chip number to the person and their data allows a representation of the athlete's performance and a ranking for the results list.
On separate written order of the organizer, we keep the results of the event in a historical database for several years and thus enable the organizer, for example, to honour athletes who have participated in the event several times. The scope of the order includes making the results of an event available on the Internet for all participants and other interested parties. Since often several 100 or even several 1000 athletes participate in an event, the results can be searched and filtered according to various criteria. Usual criteria are the name, the club and the bib number of the athlete as well as the course, if different courses are offered at an event.
If ordered, the position of the data subject is also displayed on a map during the event via GPS location.
The organiser assures that he fulfils the necessary information obligations for (a) to (d) to the data subjects concerned and has obtained any necessary consent to (a) to (d).
if necessary, a team manager who does not need to participate in the event himself.
We confirm to the organizer that we are aware of the relevant data protection regulations of the GDPR, and other relevant legal norms. We observe the principles of proper data processing and guarantee the data security measures specified in this agreement and prescribed by law.
(1) We may only process data of data subjects within the scope of the order and the instructions of the customer unless there is an exceptional case within the meaning of Article 28 (3a) GDPR. We will inform the client immediately if we are of the opinion that an instruction violates applicable laws. We may suspend the implementation of the instruction until it has been confirmed or amended by the client.
(2) In our area of responsibility, we have designed the internal organization in such a way that it meets the special requirements of data protection. We have taken technical and organisational measures to adequately protect the client's data which meet the requirements of the GDPR (Art. 32 GDPR).
The technical and organisational measures taken ensure the long term confidentiality, integrity, availability and resilience of the systems and services in connection with the data processing. The client is aware of these technical and organisational measures and is responsible for ensuring that they assure an appropriate level of protection for the risks of the data to be processed.
We reserve the right to change the security measures taken, however, we ensure that they do not fall below the contractually agreed level of protection.
(4) We guarantee that our employees dealing with the processing of the client's data and other persons working for us are prohibited from processing the data outside the instructions. Furthermore, we guarantee that the persons authorised to process the personal data are bound to confidentiality even beyond the existence of the employment relationship or are subject to an appropriate legal duty of confidentiality. The confidentiality obligation shall continue to apply even after termination of the order.
(5) We will inform the customer immediately if we become aware of any violations of the protection of the customer's personal data. We take the necessary measures to secure the data and to minimise possible adverse consequences of the persons concerned and discuss these immediately with the client.
(6) We shall name the customer the contact person for data protection questions arising within the scope of the contract.
(7) We guarantee to comply with our obligations under Art. 32 (1) lit. d GDPR and to establish a procedure for the regular review of the effectiveness of technical and organisational measures to ensure the security of processing.
(8) We correct or delete the contractual data if the customer instructs us to do so and if this is covered by the framework of instructions. If deletion in conformity with data protection or a corresponding restriction of data processing is not possible, we shall undertake the destruction of data carriers and other materials in conformity with data protection on the basis of an individual order by the customer or we shall return these data carriers to the customer, unless this has already been agreed in the order. In special cases to be determined by the client, the goods shall be stored or handed over. A remuneration or corresponding protective measures in this regard are to be agreed separately, unless this has already been correspondingly agreed in this contract.
(9) Data, data carriers and all other materials shall either be surrendered or deleted at the request of the organizer at the end of the order/contract.
(10) In the event of a claim against the organizer by a data subject with regard to any claims pursuant to Art. 82 GDPR, we undertake to support the customer in defending the claim within the scope of our possibilities.
(1) The client must inform us immediately and completely if he detects errors or irregularities with regard to data protection regulations in the order results.
(3) The customer shall inform us of his contact person for data protection questions arising within the scope of the contract.
(1) If a person data subject contacts us with claims for correction, deletion or information, we will refer the data subject to the customer, provided that an attribution to the customer is possible according to the data of the data subject. We will forward the application of the person data subject to the client without delay.
(2) We support the customer within the scope of our possibilities, on instruction and as far as agreed.
We are not liable if the request of the person data subject is not answered by the client, not correctly or not in due time.
(1) We shall prove to the customer that we have complied with the obligations laid down in this contract by suitable means.
(2) If inspections by the client or an auditor commissioned by the client are required in individual cases, they shall be carried out during normal business hours without disrupting operations after notification, taking into account an appropriate lead time. We may make this conditional upon prior registration with a reasonable lead time and the signing of a confidentiality agreement with regard to the data of other clients and the technical and organisational measures set up. If the inspector commissioned by the client is in a competitive relationship with the contractor, the contractor has a right of objection against the contractor commissioned by the client.
We may charge an appropriate fee for assistance in carrying out an inspection. The cost of an inspection is generally limited to one day per calendar year.
(1) The client agrees that we may call in subcontractors. We will inform the client before involving or replacing the subcontractors.
The client can object to the change - within a reasonable period - for an important reason - at the contact person designated by us. If there is no objection within this period, consent to the change shall be deemed given.
(2) If we place orders with subcontractors, it is incumbent on us to transfer our duties under data protection law from this contract to the subcontractor.
(3) Sub-contracting relationships within the meaning of this agreement do not include services which we make use of with third parties as an ancillary service to support the execution of the order. These include, for example, telecommunications services, maintenance and user service, cleaning staff, inspectors or the disposal of data carriers. However, in order to guarantee the protection and security of the organizer's data, we are obliged to make appropriate and legally compliant contractual agreements and to take control measures, even for ancillary services provided by third parties.
(1) Should the client's data be endangered by seizure or confiscation, by insolvency or settlement proceedings or by other events or measures taken by third parties, the contractor shall inform the client immediately. The contractor shall immediately inform all persons responsible in this context that the sovereignty and ownership of the data lies exclusively with the client as "person responsible" within the meaning of the Basic Data Protection Ordinance.
(2) In the event of any contradictions, these data protection regulations take precedence over the regulations of the order.
(6.10) The processing and use of the data shall take place exclusively in the territory of the Federal Republic of Germany, in a member state of the European Union or in another contracting state to the Agreement on the European Economic Area. Any transfer to a third country requires the prior consent of the organiser and may only take place if the requirements of Art. 45 GDPR are complied with.
(6.11) (1) In accordance with Art. 4 No.7 GDPR, the organiser is responsible for the use of data within the scope of this order and is therefore also responsible for ensuring that the regulations of the GDPR and other regulations on data protection are complied with.
(2) We are subject to the instructions in all matters of the obligations arising from the service agreement concluded between the organizer as client and us as contractor (in the sense of Art. 28 (3) GDPR).
(6.12) (1) By organizational and/or technical measures we ensure that the bank/account data of the participants are irretrievably deleted at the latest 15 months after the end of the respective event, unless otherwise instructed by the customer or unless there is a legal obligation to keep the data safe.
(6.13) If the organiser hands over transponders, e.g. ChampionChips, which can (also) be used for further events of other organisers to participants, we are entitled to store the data of the participants required for the use of the transponders at further events and to continue to use them in future for the purpose of using the transponders; in this respect we are "controller" within the meaning of Art. 4 No.7 GDPR. The organiser shall obtain the consent of the data subjects and draw their attention to the fact that otherwise the transponder cannot be used for future events.
(6.14) The organiser will inform the participants that he is "controller" in the sense of data protection and for what purpose the data should be processed and used (e.g. for the organisation of the event concerned).
(6.15). If we perform online registration services, we will inform the participants in the online registration form according to sections 6.3, 6.12 and 6.13 and obtain the consent of the participants according to section 6.12.
7.1 Damages and claims for reimbursement of expenses by the organiser (in the following called “damage claims) are limited to the amount of the contractual net remuneration from the respective complete contract (e.g. for an event or for the use of a Smart Timing), regardless for what legal reasons, in particular due to claims to damages on account of breaches of duties from the contractual relationship and from tort.
7.2 The above shall not apply in the case of mandatory liability, e. g. under the German Product Liability Act, in the case of intent, gross negligence, injury of life, body or health, or breach of a condition which goes to the root of the contract. However, claims for damages arising from a breach of a condition which goes to the root of the contract shall be limited to the foreseeable damage which is intrinsic to the contract, unless caused by intent or gross negligence or based on liability for injury of life, body or health. The above provision does not imply a change in the burden of proof for the organiser.
7.3 The period that the organiser has a valid claim for damages is 12 months. This does not apply in so far as the law according to § 438 Sect.1, No. 2 [Construction works and goods for construction works], 479 Sect. 1 [Right of recourse] and 634a Sect. 1, No. 2 [Construction defects] of the BGB does not specify longer periods, in cases of bodily injury, sickness or disease or death, if there is an intentional or grossly negligent breach of duty by us, and in the event of fraudulent concealment of a defect. This shall not affect statutory regulations relating to suspension of the period of limitations and recommencement of warranty periods.
7.4 In the case of valid compensation claims by the organiser according to clauses 7.1 and 7.2, these demands are subject to a limitation period as specified in clause 7.3. In the case of claims for damages under the German Product Liability Act, the statutory provisions governing limitation periods shall apply.
within the framework of the contract is under the care of the organiser, or when the organiser is utilising our equipment for an event, the organiser is liable for loss or damage. This does not apply if the loss or damage was not caused by the fault of the organiser. The burden of proof lies with the organiser. In as much as the organiser has taken on the surveillance of equipment that is in our care, the burden of proof lies with us that the loss or damage is not by our fault.
8.1 If the organiser is a chartered merchant, a legal entity under public law or special federal funding, the sole venue shall be Bergisch Gladbach in the Federal Republic of Germany for all disputes resulting directly or indirectly from the contractual relationship. We also reserve the right to take the organiser to court at the venue of his legal jurisdiction.
8.2 Legal relations existing in connection with this contract shall be governed by German substantive law, to the exclusion of the United Nations Convention on Contracts for the International Sale of Goods (CISG).
8.3 The contract remains valid and binding in its other provisions even if individual provisions are legally null and void. This shall not apply where adhering to the contract would represent an unreasonable hardship for a party.
1.1 We shall process the payments by the participants via our interface in the name and on behalf of the organiser. We shall verify the payment details securely and electronically. The data will be stored electronically. The organiser shall have the right to access the participant data and registrations for the respective contractual event at any time.
1.2 The online payment system accepts Visa and MasterCard cards from all countries. The payment will be authorised when the card number and expiration dates are valid. The authorisation data shall be transferred automatically. The declaration of liability for the respective credit card agency shall apply. The credit card disagio (3.60 percent of the transaction) will be deducted by us. The organiser does not require his own credit card contract.
1.5 The texts and links provided by us shall not be altered in any manner. It is not permitted to open the registration form in a separate frame or Java window. We shall not be liable for incorrect linking and any costs accrued thereby. The logo for the online payment, which we provide, shall be integrated in the race form.
2.1 We are not responsible for the obligations of the participants to make payment of the race fees or any other fees to the organiser.
2.2 We shall transfer the race fees in regular intervals to the organiser’s account, at the latest four weeks after receipt of the payment of at least 500 Euros. The payments we receive will not collect interest nor will they be saved in a separate account from our other assets. We have the right to deduct any contractual payments, any disagios or reverse payment fees. Any commissions to the benefit of the organiser shall be calculated and paid out after the registration deadline has ended.
2.3 We reserve the right to offset any demands from this and/or other contractual relations with the registrations fees which we collect.
TRANSLATION DISCLAIMER: This document is a non-binding English translation of the contract. Therefore, only the original German version of the contract shall be binding. Mika Timing GmbH shall not be held liable for any inconsistency, mistake, misrepresentation, falsehood or misleading statement as contained herein resulting from a mistake in the translation, or inadequate or inappropriate translation. For all purposes, the German version shall prevail.

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Art. 45
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§ 438


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In the recent decision by the US Fifth Circuit Court of Appeals in the McBride v. Estis Well Services, LLC case it was ruled that punitive damages are not available to seamen or their survivors under the general maritime law or the Jones Act.
In so ruling, a majority of the judges, sitting en banc (so that the case could be argued before and decided by all of the then 15 judges of the Appeals Court), reversed a decision that had previously been rendered by a three-judge panel of the same Court. It is noteworthy that six judges did not agree with the en banc decision and filed strong dissenting opinions.
To understand the significance of this decision, it is helpful to review some of the history preceding it.
The underlying case arose out of an occurrence on a barge supporting a truck-mounted drilling rig (the ESTIS RIG 23). One crew member was fatally injured and three others seriously injured when the truck overturned. Haleigh McBride, on behalf of the estate and the minor children of the deceased worker, sought recovery of compensatory and punitive damages, alleging unseaworthiness of the barge under general maritime law and negligence under the Jones Act. (Three other plaintiffs, Saul Touchet, Joshua Bourque and Brian Suire, filed similar separate actions which were later consolidated by the court).
In May 2012, the District Court granted a motion by the defendant employer to dismiss the plaintiff’s claims for punitive damages. Due to the District Court’s acknowledgement that the punitive damages issue was one of national importance concerning which there was no judicial consensus, plaintiffs were granted an immediate appeal to the Fifth Circuit Court of Appeals, when in October 2013, the three-judge panel reversed the District Court. For a fuller discussion of this decision see the earlier Insight article, Punitive damages for unseaworthiness claims in the USA – a cauldron boiling over?
Punitive damages are designed to punish and deter reckless misconduct. The misconduct justifying punitive damages is variable and imprecise and can include acts such as bad faith, malice, violence and recklessness. A punitive damages award is not intended to compensate the plaintiff for injuries or damages actually sustained, but to ensure that the defendant and others similarly situated refrain from such conduct in the future. Unlike damages such as those awarded for loss of earnings or pain and suffering, which can be quantified (pecuniary damages), punitive damages are “non-pecuniary” and can greatly exceed the actual loss sustained by the plaintiff. While punitive damages are generally available under US law, they have historically been more limited in maritime cases.
The US Supreme Court addressed the question of whether non-pecuniary damages were available in Jones Act cases in its 1990 decision in Miles v. Apex. Miles involved a claim for non-pecuniary damages for loss of society (benefits each family member receives from love, affection etc.), rather than punitive damages. The Supreme Court ruled that Jones Act seamen could only recover pecuniary damages, which did not include damages for loss of society. The reasoning in the Miles decision and the cases following it, which became known as the "Miles uniformity principle", was that courts could not expand the damages remedies beyond those allowed by Congress in enacting the Jones Act, which, according to long-standing judicial interpretation, was limited to recovery of pecuniary damages.
Applying the Miles uniformity principle, most courts ruled that punitive damages should also not be available in seamen’s cases arising under the general maritime law. Thus, in 1995, the Fifth Circuit Court of Appeals in Guevara v. Maritime Overseas Corp ruled that punitive damages being non-pecuniary in nature, and therefore unavailable under the Jones Act, were also not to be considered as a remedy under the general maritime law, including claims for failure to pay maintenance and cure.
However, in 2008, the Supreme Court upheld the recovery of punitive damages for a (non-seaman) general maritime law claim in Exxon v. Baker. More recently, in 2009, in a 5:4 decision, the Supreme Court in Atlantic Sounding v. Townsend overturned Guevara and allowed an award of punitive damages when a seaman’s employer arbitrarily and capriciously failed to pay maintenance and cure.
It was against this background that the original Fifth Circuit Court of Appeals in McBride reversed the District Court and ruled that seamen may seek punitive damages in claims arising under the general maritime law for unseaworthiness. The three-judge panel, led by Justice Higginson, emphasized that Miles did not directly address the issue of punitive damages and offered a historical basis for their finding. In their opinion, "…the availability of punitive damages for unseaworthiness claims arising under general maritime law was largely unquestioned", although they were not generally sought or awarded. Since unseaworthiness claims were first recognized by the courts in the late 19th century, long before Congress enacted the Jones Act, Congress must be presumed to have known and accepted that punitive damages would remain available for unseaworthiness claims.
The majority opinion of the en banc Court in McBride was written by Judge Eugene Davis, who opined that Atlantic Sounding v.Townsend did not affect or alter the Supreme Court’s earlier decision in Miles v. Apex with respect to a seaman’s right to recover non-pecuniary damages, including punitive damages, in a case involving a claim for unseaworthiness. While Atlantic Sounding v. Townsend allowed punitive damages for arbitrary and capricious failure to pay maintenance and cure, it had explicitly reaffirmed Miles v. Apex, stating the "the reasoning of Miles remains sound."
The two dissenting opinions are mainly a recitation of the original panel's decision, which was authored by Judge Higginson. The dissenting judges argue that punitive damages should be available in all unseaworthiness cases; and that claims under the Jones Act and general maritime law are and should be considered distinct from one another. Thus, Congress's decision to disallow non-pecuniary damages for Jones act negligence claims does not necessarily lead to the same determination for claims arising under general maritime law.
For now, the McBride en banc decision is binding only on district courts in the Fifth Circuit, which comprises Mississippi, Louisiana and Texas. While the Fifth Circuit is often considered to be the leading circuit court for maritime cases, courts in other circuits are not bound to follow its precedent. The waters continue to be “muddy” with respect to the availability of punitive damages in US seamen’s cases. The Ninth Circuit, which includes Alaska, Arizona, California, Hawaii, Idaho, Montana, Nevada, Oregon, Washington, Guam and the Mariana Islands is seemingly in accord with the Fifth Circuit’s views, but other circuits could deviate. If that should happen in a future case, conditions may be ripe for the issue to be considered by the US Supreme Court.
And what of the McBride case itself? At a presentation on 22 October 2014 at the Philadelphia meeting of the US Maritime Law Association, it was stated that it is possible the plaintiff in McBride will not choose to seek an appeal to the US Supreme Court, however, we have since learned that the attorney for the plaintiff may be seeking aide for an amicus brief for judicial review of the decision. Amicus briefs are often filed in appeals concerning matters of a broad public interest by a person or a government with a strong interest in the subject matter. Even though they are not a party to the action, they may apply to the court for permission to file a brief on behalf of the plaintiff, but in reality, to submit its own views. An application to the Supreme Court for judicial review does not mean the Court will hear the case. It will not be known for certain whether the case will be appealed until after the time for filing an appeal expires in early December 2014.
As always, Gard Members should seek the guidance of Gard and our local correspondents when faced with seamen's cases in the US, which, as can be seen from the above discussion, often present complex legal issues.

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This subchapter cited in 34 Pa. Code § 129.110 (relating to preaudit exchange of information); 34 Pa. Code § 129.114 (relating to contesting final determinations); 34 Pa. Code § 129.409 (relating to preaudit exchange of information); 34 Pa. Code § 129.413 (relating to contesting final determinations); 34 Pa. Code § 129.460 (relating to preaudit exchange of information); 34 Pa. Code § 129.464 (relating to contesting final determinations); 34 Pa. Code § 129.705 (relating to contesting denial of credential recognition or recognition as a qualified accident and illness prevention services provider); 34 Pa. Code § 129.1007 (relating to certification); 34 Pa. Code § 129.1008 (relating to certification renewal affidavit); and 34 Pa. Code § 129.1011 (relating to contesting final determinations).
§ 129.1302. Request for hearing.
(e) Any party to the hearing aggrieved by a decision rendered under subsection (d) may, within 30 days, appeal the decision to the Commonwealth Court. The hearing officers determination will include a notification to the parties of their appeal rights.
(f) Subsections (a)(e) supplement 1 Pa. Code Part II (relating to the General Rules of Administrative Practice and Procedure).
(g) If, after all appeals have been exhausted, the group self-insurance fund or individual self-insured employer is subject to a final determination that its accident and illness prevention program is inadequate, the group self-insurance fund or individual self-insured employers certificate to self-insure its obligations under the act shall be void. The group self-insurance fund or individual self-insured employers failure to properly insure its obligations under the act, through an insurer licensed to provide that coverage in this Commonwealth, within 15 days of the final determination may result in criminal liability under section 305 of the act (77 P. S. § 501).
(h) If, after all appeals have been exhausted, the insurer is subject to a final determination that its accident and illness prevention program is inadequate, the Bureau will notify the Commissioner that the insurer has failed to comply with section 1001(a) of the act (77 P. S. § 1038.1(a)). In that notification, the Bureau may recommend that the insurers license to write that insurance in this Commonwealth be revoked.


• How to approach patent opinion drafting.
A program schedule and list of speakers for each of the locations can be found here. Patent Docs authors Kevin Noonan (Chicago co-chair) and Donald Zuhn will be presenting on day 1 at the Chicago seminar.
The registration fee for the conference is $1,895. Those interested in registering for the conference can do so at the PLI website.
• To which PTAB post-grant proceeding do the new rules apply?
• What are the pros and cons of generating and presenting new evidence in the patent owner preliminary response?
• When might a claim under state law still be the best option?
• What jurisdictional questions will arise if there are state and federal cases over the same issues?
• What will be best practices after the DTSA's rejection of the "inevitable disclosure" doctrine?
• How will damages under the law be proved?
• What changes are employers now required to make to written employment policies and nondisclosure agreements?
The American Intellectual Property Law Association (AIPLA) will be offering a webinar entitled "Protection 360: The interplay between patent protection, licensing, and trade secret protection in light of the current regulatory and legal environment" on May 4, 2016 from 12:30 - 2:00 pm (Eastern). Timur Slonim of Mintz Levin Cohn Ferris Glovsky and Popeo, PC will moderate a panel consisting of Robert Greenfeld of Steptoe & Johnson, LLP; Kristoffer Leftwich of Sidley Austin, LLP; Douglas Wilson of Heim Payne & Chorush, LLP. The panel will analyze the decision-making processes involved in establishing and reviewing an IP portfolio, including the balance between patent and trade secret protection, as well as a discussion of software license agreements for software protection and system access and an update on strategies for litigation matters involving trade secrets.
In a recent book entitled Imbeciles: The Supreme Court, American Eugenics, and the Sterilization of Carrie Buck, author Adam Cohen examines the case of Buck v. Bell, where Justice Oliver Wendell Holmes wrote that "[t]hree generations of imbeciles are enough" to justify the forced sterilization of a woman the State of Virginia had labeled "feebleminded." This term was used to identify immigrants, epileptics, and women of "loose morals," among others, deemed to be a blight on America's genetic heritage, and cast as a societal threat by the American eugenics movement.
The tragedy, first explored by Stephen Jay Gould in "Carrie Buck's Daughter," The Flamingo's Smile (1985), was that not only was Carrie not an imbecile but neither were her mother nor her daughter (who was less than one year old at the time). Justice Holmes rendered his opinion based on this factual inaccuracy and, according to Mr. Cohen, his own prejudices about race and class as a Boston Brahmin of the turn of the 20th Century. While the Justice had more than adequate help in coming to the wrong conclusion, ultimately Mr. Cohen shows that the combination of predilection and factual error informed one of the cruelest aphorisms in American jurisprudence (which remains good law today).
But there is another way to look at it. And the other way to look at it -- and that's what I would like your comment about -- is that there are these things, for better words, let's call them patent trolls, and that the Patent Office has been issuing billions of patents that shouldn't have been issued. I overstate  but only some. And what happens is some person in business gets this piece of paper and looks at it and says, oh, my God, I can't go ahead with my invention.
And so what we're trying to do with this process is to tell the Office, you've been doing too much, too fast. Go back and let people who are hurt by this come in and get rid of those patents that shouldn't have been issued. Now, we will give you, again, once the same chance we gave you before, and that is you can amend it once if you convince the judge you should have done it before. But if, on the broadest possible interpretation, you know, reasonable interpretation, it shouldn't have been issued, we're canceling it. And that is for the benefit of those people who were suffering from too many patents that shouldn't have been issued in the first place. I don't know.
Today's patent world is not a steam engine world. We have decided to patent tens of thousands of software products and similar things where hardly anyone knows what the patents really about. A company that's a startup, a small company, once it gets a letter, cannot afford to pay $10,000 to $100,000 for a letter from Counsel, and may be willing to run its chances.
You start saying, little company, you must pay $10,000 to $100,000 to get a letter, lest you get willful damages against you should your bet be wrong.
We have one more path leading us to national monopoly by Google and Yahoo or their equivalence, and the patent statute is not designed to create monopolies throughout the United States. It's designed to help the small businessman, not to hurt him. So leave those words for interpretation to the expert court, and in this area it may well be the Federal Circuit.
We have all kind of amicus briefs that say that's the truth. And indeed, thousands and thousands and thousands of small businessmen are trying to break into businesses that they just can't do without software. And when you have tens or hundreds of thousands of patents on software by other companies, that means we can't break in.
Can you in fact  now, this is  -- look, there are 42 briefs in this case. I actually read them and I found them very, very helpful up to the point where I have to make a decision, because they're serious. I mean, you know  now, the problem that I came away with is the one that you're beginning to discuss, that if you simply say, take an idea that's abstract and implement it on a computer, there are  -- you're going to get it much faster, you're going to be able to do many, many things, and if that's good enough, there is a risk that you will take business in the United States or large segments and instead of having competition on price, service and better production methods, we'll have competition on who has the best patent lawyer. You see where I'm going on that one?
And if you go the other way and say never, then what you do is you rule out real inventions with computers.
And so in those 42 briefs, there are a number of suggestions as to how to go between Scylla and Charybdis. Now, I would like to know  -- I don't know if you can step back from your representational model. That's a problem. But you're all we have now. And from my point of view, I need to know what in your opinion is the best way of sailing between these two serious harms.
It's highly abstract language. I gather you, like I, have read some of these claims. They are very hard to understand and when you get to the bottom of it, the abstract nature of the language, plus the fact that it has something to do with computer input, plus the fact that, you know, you suspect very strongly it's baseless, but you really don't like to say something that isn't true and you can say, well, I could see how somebody might think there was something to this claim, just in that tone of voice, which you can't write down that tone of voice.
Well, how  what do you do with the government's argument here, which I take it as being on page 17, they make an argument which, as I understood it, which is a big qualification,  that  some of these things are awfully complicated.
You might have a  a claim or, really, it's a set of claims that cover 48 pages with all kinds of symbols and 42 different sort of division possibilities.
And then the so called infringer, or the person who falls outside the coverage, is looking at his product, and it's one of the most complex things you've ever seen. And he has to think to himself, well, how am I supposed  -- how does the claim cover this? And it's --  there are many, many, many possibilities. I take it that's what they mean when they say it makes sense to put the burden of demonstrating how the claim limitations map onto the accused product because infringement may be found only when the product falls within the scope of the asserted claim or claims in every respect.
Your client, who's the patentee, knows how. Otherwise, he wouldn't be bringing this infringement suit or the inside the coverage suit or responding to someone who says it's outside the coverage. But the person who is the alleged infringer might not know it, and therefore, it makes sense to put everything in the same place; notice of infringement, burden of production, burden of proof. And that way, it will be easier to focus on what's at stake.
Now it is certainly the case that Justice Breyer is fond of outrageous hypotheticals to probe the parties' positions and there is nothing wrong with that. (At least we should hope that his reference to billions of patents being improvidently granted by the USPTO was an exaggeration; after all, the Office has issued only about 9,000,000 patents in its 220 year history, and the Justice should know this.) But behind the quoted statements is a clear concern about the possibly pernicious effects of patents, and it is fair to ask whether these concerns are grounded in reality. While there certainly are those who agree with the Justice, there are also clear disconnects between these sentiments and how patents play out in the real world.
For example, it isn't generally the case that large companies use patents to intimidate or inhibit innovation by small companies. They don't need to: large companies have the wherewithal to ignore small companies and on some occasions simply expropriate whatever innovation those smaller companies have disclosed in their patents. No, the rise in patent litigation has been by "trolls," as that term has been applied to small companies, universities, and patent aggregators to whom these entities have turned when they have lost their technologies to larger companies, in an attempt to recoup through litigation what could not be obtained by the traditional route, licensing. There is not (although some large companies will portray things this way) a drag on innovation; indeed, the term "patent troll" was invented by a Cisco employee on an anonymous blog several years ago. This situation is illustrated by the long history of patent litigation involving Data Treasury, a small Long Island firm that invented methods for electronic check cashing. The banking industry not only didn't license Data Treasury's patents but, after adopting these method with a license attempted to absolve themselves of infringement liability in the court of public opinion, labeling the company as a patent troll, and getting their elected representatives to do the same. When that didn't work, a provision that would have exempted the banks from their liability was introduced at the eleventh hour as part of S.1145, a predecessor to the America Invents Act debated by the Senate in 2008. This provision was scuttled only when the Bush Administration realized that, as an Act of Congress any such exemption would cost the American people upwards of $1 billion as a taking (see "The (Un)intended Consequence of the Law").
In actuality, the need for and reaction to "trolls" is related to the short obsolescence horizon for most non-pharma innovation, and also its interrelatedness; an advantageous, patented feature of a product can become widespread, and there does not seem to be a universal standard setting body to referee these situations (unlike patents for prior like inventions, such as connectivity protocols for modems a generation ago). But, particularly in view of the history of Data Treasury and other small firms trying to protect their technology, the concerns voiced by Justice Breyer seem at best misplaced and yet clearly inform his thinking.
Similarly, the idea that patent claims are a complicated tangle is inconsistent with the patent statute and how it is applied by the PTO and (at least the inferior) courts. Certainly the subject matter can be complex to a layman, no matter what the technology. But there is no mystery (and, insofar as the Court's Nautilus decision remedies any laxity in how 35 U.S.C. §112(b) is applied, no uncertainty) about what a claim means. Satisfying § 112 has, over the past twenty years, become a major question in patent litigation and a resource for challenging patents, and a patentee who does not "particularly point out and distinctly claim" what is her invention is at a serious disadvantage in enforcing her claims. It can even be said that in some instances the strictures of § 112 have ensured a heightened level of clarity and disclosure: in the genomic era at the turn of this century it was certainly possible to publish a scientific paper identifying a newly discovered gene (found in a database of human gene sequences elucidated inter alia by the Human Genome Project) distinguished merely by homology to other genes and speculation about what such a gene might do. Not so at the Patent Office: the Office required disclosure of the function of the protein product of such a gene, relying on the Court's decision in Brenner v. Manson that "a patent is not a hunting license." This points to the different functions of a patent and a scientific paper, but also illustrates that the patent system requires a practically effective level of disclosure. This is consistent with the understanding that Congress has delegated its Article I power to grant patents only to promote progress, and that progress is promoted not only by invention but disclosure thereof "in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same." Which is not how Justice Breyer apparently sees the situation, but that doesn't mean that there has been a wholesale abandonment of these requirements, by the Office, the courts, or the inventing community.
MR. WALTERS: Mr. Bowman went to a grain elevator and he bought from the grain elevator without restriction seeds to -- and it was his purpose to plant them. Now, the only way that he can make use –- if you assume in the first instance that there is exhaustion to the seeds that Mr. Bowman purchased from the grain elevator, you are taking away any ability for him to use that seed or use the invention . . . .
Now, if you say that there is exhaustion in the seeds that Mr. Bowman purchased from the grain elevator, but you say it doesn't apply to the progeny, you are not allowing him to actually practice the invention to grow more seeds.
JUSTICE BREYER: No, but you are allowing him to use those seeds for anything else he wants to do. It has nothing to do with those seeds.
There are three generations of seeds. Maybe three generations of seeds is enough.
JUSTICE BREYER: It is for this example. First of -- you have the Monsanto, the first generation they sold. They have children, which is the second generation. And those children have children, which is the third generation, okay? So bad joke.
One week after the House Judiciary Committee unanimously reported the Defend Trade Secrets Act of 2016 to the House floor, the full House approved the bill, 410-2. The two no votes were from tea party Republicans, Rep. Justin Amash (R-MI) and Rep. Thomas Massey (R-KY). Oddly, Rep. Massey is himself an inventor and former technology business owner who holds numerous patents and has two engineering degrees. Regardless, the bill now moves to the President for his signature, which the White House has already indicated the President will provide. As a result, there will soon be -- for the first time -- a Federal private right of action for trade secret misappropriation.
The provisions of the Defend Trade Secrets Act were written against the backdrop of the Uniform Trade Secrets Act, which governs trade secret law in most of the states. Despite its name, the Uniform Trade Secrets Act has been enacted in various forms in the states, with different definitions of trade secrets and burdens of proof on showing whether information has been misappropriated. In addition, state law has been found onerous to enforce when the misappropriating party is out of the state or out of the country, especially when the misappropriating party is likely to flee or destroy evidence.
The Defend Trade Secrets Act adds three critical new elements. First, a private right of action for trade secret misappropriation that can be brought in the Federal courts. Second, an ex parte seizure provision that allows a trade secret owner to ensure trade secrets are not further disseminated and evidence is not destroyed. Third, whistleblower protection provisions that prevent retribution against whistleblowers who reveal trade secrets to the government or in litigation claims, as long as the revelation is done under seal. All three elements are intended to address concerns with the Uniform Trade Secrets Act.
First, the new Federal claim for trade secret misappropriation brings with it a single definition of trade secrets, a definition of "improper means" of obtaining trade secrets, and the certainty and ease of the Federal Rules of Civil Procedure. The definition of trade secrets amends what has previously been used in Federal criminal cases, applying to information (1) for which an owner has taken reasonable measures to maintain secrecy and (2) which derives independent economic value from not being known and not being readily ascertainable through proper means by another person who can obtain economic value from the disclosure or use of the information. The definition of "improper means" expressly excludes reverse engineering and independent derivation, which are not expressly excluded from the definition in all states. And the Federal Rules of Civil Procedure provide a clear, simple path for obtaining evidence from other states.
Second, an unprecedented provision allows for the ex parte seizure of trade secrets from an accused misappropriator in extraordinary circumstances. "Extraordinary circumstances" is not intended to be an independent hurdle, but establish that there must be some exigency (such as a fleeing person or threat of destruction of evidence) to invoke the ex parte seizure provision rather than traditional equitable procedures. The bill has extensive rules, both procedural and substantive, for when the ex parte seizure provision can be invoked and how it should be applied.
Third, the bill frees a whistleblower from any potential criminal or civil liability under any trade secret law, Federal or state, for disclosing a trade secret confidentially. The protections extend to both disclosure to government officials for the purpose of investigating a potential violation of the law and filing of a complaint under seal. Furthermore, the bill requires employers to inform all new employees and contractors of the whistleblower protections.
In summary, we will soon see access to the Federal courts for claims of trade secret misappropriation on a par with other forms of intellectual property. Thanks to Congress's bipartisan support of the Defend Trade Secrets Act, companies will have an additional weapon at their disposal to protect their trade secrets, and a much stronger way to prevent dissemination after they are first misappropriated.
On April 13, 2016, the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a covered business method (CBM) patent review of U.S. Patent No. 8,041,805. This decision favors patent owners in that the PTAB focused on what the claims recited when determining if the claims were directed to some financial product or service. While this is the standard to follow as recited by the AIA statute, the PTAB has in the past repeatedly instituted CBM review of patents that include claims with no financial aspects whatsoever (see Motorola Mobility, LLC, v. Intellectual Ventures I, LLC (PTAB 2016), and Square, Inc. v. Protegrity Corp. (PTAB 2016).
OpinionLab, Inc. is the owner of the '805 patent, and Qualtrics, LLC filed a Petition for CBM review of all 33 claims of the '805 patent. In a previous inter partes review (IPR) proceeding, Qualtrics challenged many of the same claims of the '805 patent as it did in the CBM review, only on different grounds. In the IPR, the PTAB determined that Qualtrics had failed to prove, by a preponderance of the evidence, that the claims of the '805 patent were unpatentable under 35 U.S.C. § 103. In seeking CBM review, Qualtrics challenged the claims of the '805 patent under 35 U.S.C. § 101 as being directed to a patent-ineligible abstract idea.
The '805 patent is the subject of two district court actions: OpinionLab, Inc. v. Qualtrics Labs, Inc., 1:13-cv-01574 (N.D. Ill.), and OpinionLab, Inc. v. iPerceptions Inc., 1:12-cv-05662 (N.D. Ill.), and thus, the CBM petition may be considered.
wherein the user-selectable element is viewable within a browser window upon initial display of the particular web page and remains viewable within the browser window, at least prior to the user selection, regardless of user scrolling.
As the petitioner, Qualtrics bears the burden of demonstrating that the '805 patent is a CBM patent. The AIA defines a CBM patent as "a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions." AIA § 18(d)(1).
The determination of whether a patent is eligible for CBM review focuses on "what the patent claims." Office Patent Trial Practice Guide, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (response to comment 8). A patent need have only one claim directed to a CBM to be eligible for review.
First, Qualtrics argued that the claimed invention is directed to a financial product or service because the specification states that the claimed invention may be used in connection with websites that conduct "commercial transactions." But, the PTAB was strict on the relevant inquiry being on the claims and whether they are directed to a financial product or service. Here, the claims are devoid of any terms that could be reasonably argued as rooted in the financial sector or limited to a monetary transaction. Instead, the claims recite a software capability of general utility that crosses many sectors, commercial and non-commercial alike.
The PTAB simplified the claims as reciting a "user-selectable element," i.e., an icon, that solicits and receives feedback from users without requiring them to navigate between webpages, i.e., "while the user remain[s] at the particular webpage" and "regardless of user scrolling." The PTAB concluded that the claimed invention is nothing more than a website tool for gathering information -- a quick and easy way to solicit contemporaneous reactions from website users, and soliciting feedback from website users is hardly the exclusive domain of the financial sector.
The PTAB noted that the specification contemplates both commercial and non-commercial applications for the claimed website tool, and as such, the PTAB did not characterize the claimed invention as limited to "commercial" applications when both the claims and the specification indicate a more general utility.
Qualtrics also argued that the claimed invention is limited to a financial product or service because "collecting user feedback is primarily used to improve the effectiveness of websites, including their marketing, interface usability, and customer communications functions." But the PTAB stated that the use of consumer feedback to improve the capabilities of a website does not necessarily make that use financial in nature, and that the statute authorizing review of CBM patents was not meant for "technologies common in business environments across sectors and that have no particular relation to the financial services sector, such as computers, communications networks, and business software."
Qualtrics further argued that the specification's mention of using the claimed invention as a measure of the website's value suggests it is financial in nature. The PTAB shut down this argument, and stated that this potential use is purely exemplary, and that, both the specification and the claims actually speak in broader terms that include not only valuing the website in terms of "clicks," but also collecting information for purposes of "polling, surveying, product development research, market research, [and] usability testing."
Over and over again, the PTAB maintained focus on the claims, which simply recite that user feedback is collected "for reporting to an interested party," without any further restriction. In that regard, the PTAB did not find any claim language that gives rise to a fee or other movement of money.
The PTAB noted that the fact that the specification may describe the website tool as capable of being used for commercial purposes does not mean that the claims are limited to such applications.
The PTAB summarized Qualtrics' position as being that any patent claiming something that might have potential application to a financial product or service would be eligible for CBM patent review, regardless of its general utility and application outside of finance. The PTAB then noted that this position is not consistent with the statutory language, which requires a focus on what is recited by the claims.
The PTAB thus concluded that Qualtrics failed to demonstrate that the '805 patent is a covered business method patent as defined by § 18(d)(1) of the AIA, and thus, the Petition for CBM review was denied and no trial will be instituted. Because the PTAB found that that '805 patent did not claim a financial product or service, the PTAB did not consider the exception of whether the patent covered a technological invention.
This decision follows proper application of the AIA statute and evaluation of the patent claims. But this decision is far from the norm, as other PTAB judges easily may have found the patent to be eligible for CBM review. Hopefully, this decision starts a trend of enforcing the statutory language for CBM institutions so that there is less randomness as to which patents are subject to CBM review.
[Y]ou could look at this new law as you [Cuozzo] were looking at it, as trying to build a little court proceeding. If I thought it was just doing that, I would say you were right. But there is another way to look at it. And the other way to look at it . . . is that there are these things, for better words, let's call them patent trolls, and that the -- the Patent Office has been issuing billions of patents that shouldn't have been issued -- I overstate -- but only some. . . . And so what we're trying to do with this process is to tell the office, you've been doing too much too fast. Go back and let people who are hurt by this come in and get rid of those patents that shouldn't have issued. . . . If it's that second purpose, then I would think, well, maybe this is right, what they [the PTAB] are doing.
And, not surprisingly, during the oral argument, the Justices appeared to be struggling with just what these proceedings are, and what the intent of Congress was in creating them.
I apply for a patent because I have this thing that instead of putting red cellophane on the speedometer, I put purple cellophane on the speedometer. It signals the presence of a hot dog stand. All right. [Laughter] I -- I then try to patent it. And they look at this patent and, no, absolutely not.
Of course, Justice Breyer was not accurately portraying Cuozzo's patent with this example, because it was not as simplistic as simply selecting a particular color for the indicator. Instead, this example more betrays Justice Breyer's distrust of the Patent Office and the patents they have issued. This, unfortunately, may also be a signal how he would decide the issue.
On the other end of the spectrum, Chief Justice Roberts seemed persuaded that IPR proceedings are an alternative to district court litigation, and as such, the rules should be as similar as possible in both forums. For example, he questioned the Assistant to the Solicitor General regarding the Patent Office's position that the BRI standard is proper because it is the standard used in its other proceedings. Picking up on a comment made earlier by Justice Ginsburg, Chief Justice Roberts noted that IPR proceedings are "a hybrid entity with characteristics of the PTO and the district court." He continued: "So why -- why should we be so wedded to the way they do business in the PTO with respect to the broadest possible construction when the -- the point is not to replicate PTO procedures. It's supposed to take the place of district court procedures." More importantly, he observed that "it's a very extraordinary animal in legal culture to have two different proceedings addressing the same question that lead to different results." And, finally, after discovering that the district court's interpretation of a claim is not binding on the Patent Office, and vice versa, Chief Justice Roberts complained: "It just seems to me that that's a bizarre way to conduct legal -- decide a legal question."
Aren't those tools used in determining the broadest -- the broadest reasonable reading, meaning how can the PTO decide what a broad reasonable reading is unless it looks at all those factors and decides that the specifications and all the other things don't cure, continue to provide ambiguity in the patent?
Justice Sotomayor appeared to point to the prosecution history as the potential source of this confusion. Cuozzo's counsel noted that the Patent Office does not look to the prosecution history during initial examination -- because it obviously does not exist yet. The implication appeared to be that the PTAB also does not look to the initial prosecution history. However, the Assistant to the Solicitor General disabused the Justices of this impression. He stated: "It's true in the initial examination context that the PTO does not use prosecution history, but it has expressly noted that it will use prosecution history in a proceeding like this the IPR -- because it's already in existence." It will be interesting to see how the resolution of this question will influence Justice Sotomayor's thinking (and possibly the thinking of the Justices) on the outcome of the case.
A decision in this case is expected by the end of June. At that time, we will report on the conclusion of the Court and any potential implications the decision will have on IPR and other post-grant proceedings before the PTAB.
Teva Pharmaceuticals USA Inc. et al. v. Biocon Ltd. et al.
• Plaintiffs: Teva Pharmaceuticals USA Inc.; Teva Pharmaceutical Industries Ltd.; Teva Neuroscience Inc; Yeda Research and Development Co Ltd.
• Defendants: Biocon Ltd.; Apotex Corp.
Infringement of U.S. Patent Nos. 8,232,250 ("Low Frequency Glatiramer AcetateTherapy," issued July 31, 2012), 8,399,413 (same title, issued March 19, 2013), 8,969,302 (same title, issued on March 3, 2015), and 9,155,776 (same title, issued October 13, 2015) following a Paragraph IV certification as part of defedants' filing of an ANDA to manufacture a generic version of Teva's Copaxone® (glatiramer acetate injection, used for the reduction or frequency of relapses in patients with relapsing-remitting multiple sclerosis). View the complaint here.
Forest Laboratories, LLC et al. v. Apotex Inc. et al.
• Plaintiffs: Forest Laboratories, LLC; Forest Laboratories Holdings, Ltd.; Cerexa, Inc.; Takeda Pharmaceutical Co. Ltd.; Allergan USA, Inc.
Infringement of U.S. Patent No. 6,417,175 ("Phosphonocephem Derivatives, Derivatives, Process for the Preparation of the Same, and Use Thereof" issued July 9, 2002) following a Paragraph IV certification as part of Apotex's filing of an ANDA to manufacture a generic version of Forest's Teflaro® (ceftaroline fosamil injection, used for the treatment of community-acquired bacterial pneumonia and for the treatment of acute bacterial skin and skin structure infections). View the complaint here.
Merck Sharp & Dohme Corp. v. Bristol-Myers Squibb Co. et al.
• Defendants: Bristol-Myers Squibb Co.; E.R. Squibb & Sons, L.L.C.; Ono Pharmaceutical Co., Ltd.
Declaratory judgment of invalidity and non-infringement of U.S. Patent Nos. 8,779,105 ("Monoclonal Antibodies to Programmed Death 1 (PD-1)," issued July 15, 2014) and 9,084,776 ("Methods for Treating Cancer Using Anti-PD-1 Antibodies," issued July 21, 2015) based on Merck's manufacture and sale of its Keytruda® product (pembrolizumab, an anti-PD-1 antibody, used to treat metastatic melanoma). View the complaint here.
May 18, 2016 - "The PTAB Front and Center at the Federal Circuit and the Supreme Court: The First Year of Appellate Review" (McDonnell Boehnen Hulbert & Berghoff LLP) - 10:00 am to 11:15 am (CDT).
The meeting can be viewed online here. Additional information regarding the BCP customer partnership meeting, including registration information for those wishing to attend the meeting, can be found here.
The lunch keynote speaker will be Chief Judge Sharon Prost of the U.S. Court of Appeals for the Federal Circuit.
The registration fee for the webinar is $250 (FCBA members) or $295 (non-members). Additional information regarding the program, including an agenda and registration details, can be found here.
The American Intellectual Property Law Association (AIPLA) will be offering a webinar entitled "Patent Prosecution Conflicts of Interest for Clients Having Competing Technologies" on April 27, 2016 from 12:30 - 2:00 pm (Eastern). Frederick W. Gibb of Gibb & Riley; William R. Griffin, U.S. Patent & Trademark Office, Deputy Director Office of Enrollment & Discipline; and Mercedes K. Meyer of DrinkerBiddle will examine caselaw and disciplinary decision examples that explain conflicts of interest, whether an attorney-client relationship actually exists, and representation of competing clients using screening walls.
The program will be free and open to the public. The event will also be webcast. Additional information about the Symposium, including registration information and details for accessing the webcast can be found here.