Copying charges are limited to the "standard unit cost of duplication" established by the agency. AS 40.25.110(b). The fee for duplicating a public record in the electronic form kept by a public agency may not exceed the actual incremental costs of the public agency. AS 40.25.115(c). In addition, if the production of records for one "requester" in a calendar month exceeds five person-hours, the public agency shall require the requester to pay the personnel costs required during the month to complete the search and copying tasks. Legislative history indicates that the term "requester" refers to a single individual, not to a news organization as a whole, so that each reporter at a paper or station is entitled to five hours in a month from an agency without charge. "Production" does not include a privilege review — e.g., the time spent by a clerk or agency official to determine if some of the requested documents may be nondisclosable because they are subject to a deliberative process privilege or some other claim of privilege — and privilege review time consequently cannot be charged to the party requesting the records. Fuller v. City of Homer (Fuller II), 113 P.3d at 666. Production efforts by an agency for which time spent can be charged to a records requester are those that are those clerical, ministerial functions inherent and necessary in a records search, not executive functions implicating the exercise of professional expertise and judgment Fuller II, 113 P.3d at 665-666. (insofar as any portion of the amount the citizen was required to prepay as a condition of obtaining access to requested documents was attributable to a privilege review, this was improper — even if the review were conducted efficiently — and city was required to repay any such amounts). Id. At 668. If there were good reason to think that the agency was intentionally inefficient in retaining or producing disputed documents the court would be compelled to reduce the recoverable time spent in production. Id. at 667-668. In the event of a dispute, it is for the fact finder to decide whether the amount charged was incurred appropriately, but as a matter of law, the agency cannot charge for time spent on tasks other than searching for and copying the records, and in particular cannot charge for reviewing the documents to determine what might be withheld. Id. at 668.
As of the time of this revision of this outline, it appears that some agencies have begun to erroneously charge for the initial five hours of time spent on searching and copying tasks in a calendar month, if the total time spent exceeds five hours, rather than only charging for the incremental amount of time by which the total exceeds the first five, supposedly free, hours. To date, this practice has not been formally challenged or clarified, but it is contrary to the intent of the Legislature that implemented this provision in 1990.
Unless a specific statutory provision authorizes a higher fee, “any fee for copies shall not exceed the actual costs of reproduction, including the costs of the medium of reproduction, supplies, equipment, and maintenance, but not including existing agency personnel time associated with searching for, retrieving, reviewing, or copying the records.” Ark. Code Ann. § 25-19-105(d)(3)(A)(i) (added by Act 1653 of 2001). The custodian may also charge “the actual costs of mailing or transmitting the record by facsimile or other electronic means.” Id. § 25-19-105(d)(3)(A)(ii). An itemized breakdown of all charges must be provided to the requester. Id. § 25-19-105(d)(3)(B).
Section 6253(b) of the CPRA provides that "each state or local agency, upon a request for a copy of records that reasonably describes an identifiable record or records, shall make the records promptly available to any person upon payment of fees covering direct costs of duplication, or a statutory fee if applicable." Cal. Gov't Code § 6253(b).
With respect to documents, "direct costs" means “the cost of running the copy machine, and conceivably also the expense of the person operating it.” North County Parents Org. v. Dept. of Ed., 23 Cal. App. 4th 144, 148, 28 Cal. Rptr. 2d 359 (1994). It does not mean “the ancillary tasks necessarily associated with the retrieval, inspection and handling of the file from which the copy is extracted.” Id. (rejecting department’s attempt to recover staff time). See also Fredericks v. Superior Court, 233 Cal. App. 4th 209, 237, 182 Cal. Rptr. 3d 526 (2015); County of Santa Clara v. Superior Court, 170 Cal. App. 4th 1301, 1336, 89 Cal. Rprt. 3d 374 (2009).
With respect to computer data, "direct costs" means the cost of "producing a copy of a record in an electronic format." Cal. Gov't Code § 6253.9(a)(2). Direct costs here presumably mean the cost of the disk. However, under the CPRA a requester may be required to bear the additional cost of "constructing a record and the cost of programming and computer services necessary to produce a copy of the record when either of the following applies: (1) In order to comply with the provisions of subdivision (a), the public agency would be required to produce a copy of an electronic record and the record is one that is produced only at otherwise regularly scheduled intervals. (2) The request would require data compilation, extraction or programming to produce the record." Cal. Gov't Code § 6253.9(b). See Fredericks, 233 Cal. App. 4th at 238 (recognizing that under these provisions where production would require generation, compilation and redaction of electronic records, agency may impose fees and costs above direct cost of duplication as a condition of disclosure); Ops. Cal. Att'y. Gen. 04-1105 (2005) (where request for parcel map data was made at time other than when data is periodically produced, charge could include cost to construct the record, cost of programming and computer services, but not expenses associated with initial gathering of information or with initial conversion or maintenance of information in electronic format).
Costs of copies are to be determined in accordance with the Act, which provides that custodian may not charge a fee exceeding $0.25 per page for any standard sized page, and a fee not to exceed actual costs of providing a copy for other sized pages. Colo. Rev. Stat. § 24-72-205(1), (5)(a) (2007). However, an institution that is the custodian of scholastic achievement data on an individual person may charge a “reasonable” fee for a certified transcript of the data. Colo. Rev. Stat. § 24-72-205(5)(b) (2007). In practice, costs of copies depend upon the agency.
Custodians may charge $30/hour (after the first hour of free service) for research and retrieval of public records. Colo. Rev. Stat. § 24-72-205(6)(a). However, to be authorized to charge such fees, the custodian must have posted a written fee schedule as of the date the records request was submitted. Id.
No transmission fee may be charged to the record requester for transmitting public records via e-mail. Colo. Rev. Stat. § 24-72-205(1)(b) (2013).
With respect to state agencies, FOIA provides that the "fee for any copy provided in accordance with [FOIA] . . . shall not exceed twenty-five cents per page;" for all other public agencies, the fee "shall not exceed fifty cents per page." Conn. Gen. Stat. §1-212(a). There is no fee for inspection of public records. Sales tax is not imposed and certified copies cost one dollar for the first page and fifty cents for each additional page. Conn. Gen. Stat. §1-212(c) and (e). Different fees are imposed for copies of certain motor vehicle records and criminal history searches. See Conn. Gen. Stat. § §14-50 and 29-11. See also Williams v. FOIC, 108 Conn. App. 471, 948 A.2d 1058 (2008) (page refers to each side of a document that is copied; not both sides of a single piece of paper).
The Act provides that "[a]ny reasonable expense involved in the copying of such records shall be levied as a charge on the citizen requesting such copy." 29 Del. C. § 10003(a). The Act further provides, "it shall be the responsibility of the public body to establish rules and regulations regarding access to public records as well as fees charged for copying of such records." 29 Del. C. § 10003(d). See also Del. Op. Att'y Gen., No. 91-I003 (Feb. 1, 1991) (holding that the requirement to establish rules and regulations, and fees, is mandatory). The public agency must abide by its regulations pertaining to fees, unless the public agency gives a requester adequate notice of a deviation from its fee regulation. Notice has been held inadequate when it was printed in a town newsletter and posted on the town website. Del. Op. Att'y Gen., No. 04-ib08 (Feb. 9, 2004). Rules and regulations, however, found to violate FOIA's mandate of "easy access to public records" are not permissible. See Del. Op. Att'y Gen., No. 02-ib34 (Dec. 21, 2002). See also Del. Op. Att'y Gen., No. 02-ib31 (Dec. 6, 2002) (concluding that charging $10.00 for a 68-page land-use plan was permissible); Del. Op. Att'y Gen., No. 02-ib10 (Apr. 24, 2002) (concluding that a charge of 50 cents per page is reasonable). Agencies subject to the APA are required to make a "reasonable charge" for copying documents. 29 Del. C. § 10112(b)(5).
Typically, a determination of "reasonable cost" is something that the parties resolve. The Delaware Superior Court has indicated its willingness to help parties determine "reasonable cost" absent the parties' ability to agree. Bd. of Managers of Delaware Criminal Justice Info. Sys. v. Gannett Co., 2005 WL 2660049 (Del. Super. Sept. 6, 2005).
The D.C. Act is to be construed to minimize the costs associated with obtaining public information. D.C. Code Ann. § 2-531. Search, review and copying fees cannot exceed the actual costs of searching, reviewing and/or copying records. D.C. Code Ann. § 2-532(b). The fee schedules that may be adopted by a public body vary depending on the purpose of the request and the identity of the requester. When records are not sought for commercial use and the request is made by a representative of the news media or by an educational or non-commercial scientific institution for scholarly or scientific research, fees are limited to reasonable standard charges for document duplication. When records are requested for commercial use, fees are limited to reasonable standard charges for searching, duplication and review. For all other requests, fees are limited to reasonable standard charges for document search and duplication. § 2-532(b).
A public body must provide a requested record in any form or format requested by the person, provided that the person pays the costs of reproducing the record in that form or format. D.C. Code Ann. § 2-532(a-1).
The Act permits an agency to impose “a reasonable charge for the search, retrieval, redaction, and production or copying costs for the production of records,” utilizing “the most economical means reasonably calculated to identify and produce responsive, nonexcluded documents.” O.C.G.A. § 50-18-71(c)(1) (emphasis added). The Act does not override fees specifically authorized or prescribed by law for access to or copies of certain kinds of records—e.g., certified records—but in all other instances the Act sets parameters for what is reasonable with respect to charges for search, retrieval, redaction and production on the one hand and for copies of the records, if copying is requested, on the other. Id.
Section 92-21 authorizes the imposition of reasonable costs and fees of not less than five cents per page. Reproduction costs may include the labor cost for search and reproduction, material cost, certification cost, and other related costs. Haw. Rev. Stat. § 92-21 (Supp. 1999). In addition, the UIPA directs the OIP to adopt rules regarding fees and waivers "of fees when the public interest would be served." Haw. Rev. Stat. § 92F-42 (13) (Supp. 1999). The OIP Rules help ensure uniformity of fees among agencies. The OIP Rules set the fees agencies may charge for searching for, reviewing, and segregating government records when processing requests for access to a government record under the open records law. See Haw. Code R. ch. 71.
Idaho Code § 74-102(10)(b) dictates that any fees charged for copying a public record cannot exceed “the actual labor and copying costs associated with locating and copying documents.” The public agency may establish fees to cover these costs if “(i) The request is for more than 100 pages of paper records; or (ii) The request includes records from which nonpublic information must be deleted; or (iii) The actual labor associated with responding to requests for public records…exceeds two (2) person hours.” Idaho Code § 74-102(10)(b)(i)-(iii).
The fees, if any, a public body may charge for producing copies of public records are set forth in 5 ILCS 140/6. Separate fee limitations apply to records in electronic format (5 ILCS 140/6(a)) as opposed to paper records (5 ILCS 140/6(b)). A public body may not charge any fee for producing copies if it failed to respond to an initial request within 5 business days or failed to obtain the requisite extension of time, but later provides the requester with copies of the requested public records. 5 ILCS 140/3.
The statute authorizes the Indiana Department of Administration to establish a uniform copying fee for state agencies. Ind. Code § 5-14-3-8(c). The fee may not exceed the average cost of copying records by state agencies or 10 cents per page, whichever is greater. Id. A public agency that is not a state agency must establish a fee schedule for certification, copying or fax machine transmission of documents. The fee may not exceed the greater of 10 cents per page for black and white copies or 25 cents per page for color copies and the actual cost of copying. Ind. Code § 5-14-3-8(d). Additionally, the cost must be uniform throughout the agency and to all purchasers.). Id. “Actual costs” means the cost of the paper and the per-page cost to use copying or facsimile equipment and does not include labor or overhead costs. Id.
Certain scattered statutes also establish fees for public records. See, e.g., Ind. Code § 9-26-9-3 (setting a minimum fee of $5 as fee for accident reports); Ind. Code § 33-37-5-1(c) (establishing a clerk’s fee of $1 per page for copies of court records); Ind. Code § 36-2-7-10 (setting fee for county recorders).
The lawful custodian may charge a reasonable fee for services rendered in connection with supervision of the records which are the subject of the request. Iowa Code § 22.3; Hackman v. Kolbet for New Hampton Municipal Light Plant, No. 16-2063, 2017 WL 3065168, at *2 (Iowa Ct. App. July 19, 2017) (noting the act “authorizes the entity to charge a reasonable fee in order to execute an open records request”). The custodian may not relinquish control of the records to the requesting individual. 81 Op. Att'y Gen. 76 (April 6, 1981). Thus, fees for supervisory services may also be charged. Supervisor fees, must, however, be uniformly applied to all who request records. Id.
The lawful custodian must provide a suitable place for examination and copying. If it is impracticable to do such work in the offices of the custodian, the person requesting the records must pay the necessary expense of providing a place to work. Iowa Code § 22.3.
"If copy equipment is available at the office of the lawful custodian of any public records, the lawful custodian shall provide any person a reasonable number of copies of any public record in the custody of the office upon the payment of a fee. The fee for the copying service as determined by the lawful custodian shall not exceed the cost of providing the service." Id.
The provisions of § 22.3 generally contemplate reimbursement to a lawful custodian of public records for costs incurred in retrieving public records. The phrase "all expenses of such work" to are indicative of the legislature's intent that a lawful custodian has the authority to charge a fee to cover the costs of retrieving public records. Thus, access to public records does not necessarily mean "free" access. Rathmann v. Bd. of Dirs. of Davenport Cmty. Sch. Dist., 580 N.W.2d 773, 778-79 (Iowa 1998). A reasonable fee may include a reasonable retrieval fee, the actual fees for copying a record, and legal fees accumulated in determining information that is confidential versus information that is public. See id. at 779; Hackman, 2017 WL 3065168, at *2.
Fees for copies of records may not exceed the actual cost of furnishing copies, including cost of staff time. K.S.A. 45-219(c)(1).
$.25/page is reasonable for copies of public records. K.S.A. 45-219(c)(5). Although a public agency may establish subscription fees and online access fees for computerized public records, these records must also be available for a fee not exceeding the actual cost of production. Kan. Att’y Gen. Op. 1995-64.
Any person requesting records may appeal the reasonableness of the fees charge for providing access to or furnishing copies of such records to the Secretary of Administration whose decision shall be final. K.S.A. 45-219(c)(5).
(3) The public agency may prescribe a reasonable fee for making copies of nonexempt public records requested for use for noncommercial purposes which shall not exceed the actual cost of reproduction, including the costs of the media and any mechanical processing cost incurred by the public agency, but not including the cost of staff required. If a public agency is asked to produce a record in a nonstandardized format or to tailor the format to meet the request of an individual or a group, the public agency may at its discretion provide the requested format and recover staff costs as well as any actual costs incurred.
(a) Unless an enactment of the General Assembly prohibits the disclosure of public records to persons who intend to use them for commercial purposes, if copies of nonexempt public records are requested for commercial purposes, the public agency may establish a reasonable fee.
(b) The public agency from which copies of nonexempt public records are requested for a commercial purpose may require a certified statement from the requester stating the commercial purpose for which they shall be used, and may require the requester to enter into a contract with the agency. The contract shall permit use of the public records for the stated commercial purpose for a specified fee.
The Attorney General has held that public agencies may not charge sales tax for copies. "Providing copies of nonexempt public records is not a sale of the records. There is no provision in the Open Records Act that authorizes an agency to charge a sales tax for copies of public records provided pursuant to an open records request." 98-ORD-88.
No fee shall be charged to any person to examine or review any public records unless the person requests to view the records outside of regular office hours in which case the person examining the record shall pay reasonable compensation for the custodian. La. Rev. Stat. Ann. § 44:32(A), (C). The custodian should attempt to honor all requests during normal business hours. An order requiring after hour examination is subject to "strict scrutiny" and will be allowed only "when the request is of such a magnitude that it disrupts normal office procedure to the point where the office ceases to operate." Op. Att'y Gen. 98-366; Op. Att'y Gen. 92-427; Op. Att'y Gen. 81-614.
The public agency or official may charge a reasonable fee “to cover the cost of copying” and an hourly rate of $15 per hour after the first hour for staff time responding to a request. 1 M.R.S.A. § 408-A(8). The statute does not contain a schedule of copying fees, so fees vary widely.
An official custodian is permitted to charge an applicant a reasonable fee to search for, prepare and reproduce a public record in a customized format. § 4-206(b)(1)(i). For records produced in standard format, an official custodian may charge a reasonable fee for the actual costs of the search, preparation, and production. § 4-206(b)(1)(ii). An official custodian may not, however, charge a fee for the first two hours spent searching for a public record and preparing it for inspection. § 4-206(c). A reproduction fee may not be set by the custodian if the fee is provided for by another law. § 4-206(d)(1). The custodian may charge for the cost of providing facilities for reproduction if the custodian does not have such facilities. § 4-206(d)(2).
The FOIA allows public bodies to charge fees for a public record search, the necessary copying of a public record for inspection, or for providing copies of public records. These fees are to be limited to actual costs of mailing and the actual incremental cost of duplication or publication, "including labor, the cost of search, examination, review, and the deletion and separation of exempt from nonexempt information." Mich. Comp. Laws Ann. § 15.234(1). This is so even when the labor is performed by a public employee during business hours and does not add extra costs to the public body's normal budget. 2001 Op. Att'y Gen. No. 7083 (2001).
But a court must first determine whether the person retrieving the information is an employee or independent contractor since §15.234(1) does not mention independent contractors. Coblentz v. City of Novi, 475 Mich. 588, 719 N.W. 2d 73 (2006): The FOIA also provides that "[a] fee . . . shall not be charged for the cost of search, examination, review, and the deletion and separation of exempt from nonexempt information . . . unless failure to charge a fee would result in unreasonably high costs to the public body because of the nature of the request in the particular instance, and the public body specifically identifies the nature of these unreasonably high costs." Mich. Comp. Laws Ann. § 15.234(3).
The fee limitation, however, does not apply to the costs incurred in the necessary copying or publication of a public record for inspection, or for providing a copy of a public record and mailing the copy. 2001 Op. Att'y Gen. No. 7083 (2001). The phrase "unreasonably high" prohibits a public body from charging a fee for the costs of a search unless the costs incurred by a public body for those activities in the particular instance would be excessive and beyond the normal or usual amount for those services. Id. The Court of Appeals has held that the “key factor in determining whether the costs are unreasonably high is the extent to which the particular request differs from the usual request.” Bloch v. Davison Community Schools, 2011 Mich. App. LEXIS 771, at *6. (Apr. 26, 2011). Also, “nothing in the language of Mich. Comp. Laws 15.243(2) suggests that the determination of whether costs incurred are unreasonably high is to be determined according to the public body’s operating budget.” Id.
The 2015 amendment requires that a public body establish procedures and guidelines to implement the FOIA and create specific procedures and guidelines to the public regarding fee information. Mich. Comp. Laws Ann. § 15.234. The summary shall be in writing and at a minimum will include: how to make a request, how to understand the public body’s written response, what the fees are and how they are calculated, when deposits are required, what the fee appeals process looks like, and a standard form to itemize the FOIA charges. Id. If a public body fails to establish procedures and guidelines, has not created a written summary, or has not made these items publicly available it must still comply with the other requirements of the FOIA and “shall not require deposits or charge fees otherwise permitted under this act until it is in compliance.” Id.
The Public Records Act authorizes the governmental entity to charge a fee, but it may not exceed the actual costs incident to fulfilling the request. Mont. Code Ann. § 2-6-1006(3).
Computerized Data: If the reproduction is of computerized data or printouts on paper, the fee may not exceed the reasonably calculated actual cost of computer run time and the cost of the materials for making the copy.
the production of the report in the form furnished to the requester.
Modem: Counties that transmit a public record by modem may charge a reasonable fee for "such specialized service." The fee must be reasonable and may include a portion of the amortization of the cost of computer equipment and software necessary to provide the service. Although a county may transmit via modem, counties are not required to obtain specialized equipment to do so.
State Gateway Services: If a state agency provides electronic access to public records through a gateway service, the agency may obtain approval of the fee charged pursuant to Neb. Rev. Stat. §§84-1205.02 and 84-1205.03. The approved fee may include the cost for the gateway service.
Also, if the cost of production of documents is estimated by the custodian to exceed fifty dollars ($50), the custodian may require a deposit prior to fulfilling the request. Neb. Rev. Stat. §84-712(1)(d).
A governmental entity may charge a fee for providing a copy of a public record. NRS 239.052(1). The fee cannot exceed the actual cost to the governmental entity except as otherwise set by statute. NRS 239.052(1). An agency must prepare and maintain a list of the fees that it charges. An agency must not charge a fee for determining whether a record is a public record, searching for or retrieving records, staff time for complying with a public records request, a requester’s use of a personal device to copy or photograph public records, or recouping the original cost of developing or producing the records.
The Statute provides: “If a computer, photocopying machine, or other device maintained for use by a public body or agency is used by the public body or agency to copy the governmental record requested, the person requesting the copy may be charged the actual cost of providing the copy, which cost may be collected by the public body or agency. Nothing in this section shall exempt any person from paying fees otherwise established by law for obtaining copies of governmental records or documents, but if such fee is established for the copy, no additional costs or fees shall be charged. RSA 91-A:4,IV.
Except as otherwise provided by law or regulation, the fee assessed for the duplication of a government record embodied in the form of printed matter shall be $0.05 per letter size page or smaller, and $0.07 per legal size page or larger. If a public agency can demonstrate that its actual costs for duplication of a government record exceed the foregoing rates, the public agency shall be permitted to charge the actual cost of duplicating the record. The actual cost of duplicating the record, upon which all copy fees are based, shall be the cost of materials and supplies used to make a copy of the record, but shall not include the cost of labor or other overhead expenses associated with making the copy except as provided for in subsection c. of this section. Access to electronic records and non-printed materials shall be provided free of charge, but the public agency may charge for the actual costs of any needed supplies such as computer discs.
Public bodies may not charge for providing records for inspection but may charge a "reasonable fee for copying public records," not to exceed $1 per page for documents 11" x 17" or smaller. NMSA 1978 § 14-2-9(C)(1)-(2) (2013). The Attorney General has opined that the fee is limited to the actual cost of copying. Public bodies may charge actual costs associated with downloading copies of public records to a computer disk or storage device, including the actual cost of the storage device. NMSA 1978 § 14-2-9(C)(3) (2013).
Except as otherwise provided by law, a public agency may charge only the actual cost of making a copy. “Actual cost” is defined as “direct, chargeable costs related to the reproduction of a public record . . . and does not include costs that would have been incurred by the public agency if a request . . . had not been made.” G.S. § 132-6.2(b). In practice, many public agencies do not charge for copies made in response to routine requests.
A public entity may charge up to 25 cents per impression of a paper copy, defined as a one-sided or two-sided duplicated copy of a size not more than 8.5 by 14 inches. N.D.C.C. § 44-04-18(2). A public entity may charge a “reasonable fee” for making any copy of a record that is not a paper copy. Id. “Reasonable fee” is defined as the actual cost to the public entity of making the copy, including labor, materials, and equipment. Id. The entity may also charge for the actual cost of postage to mail a copy of a record. Id. The entity may require payment before locating, redacting, making, or mailing a copy. Id. The entity may impose a fee not exceeding $25 per hour per request, excluding the initial hour, for locating records, including electronic records. Id. The entity may also impose a fee not exceeding $25 per hour per request, excluding the initial hour, for excising confidential or closed material, including electronic records. Id.
Concerning fees, it is also worth noting that a county official is not required to compile statistical information not already compiled in response to requests made by private individuals, firms or corporations. N.D.C.C. § 11-13-02.1. However, if the official chooses to do so, the board of county commissioners can then determine a fee not to exceed $25 per hour, excluding the initial hour.
The statute provides that copies are available "at cost." Ohio Rev. Code § 149.43(B).
The statute does not define "cost," but the Ohio Supreme Court has interpreted "cost" as actual cost, and does not include any labor expenses for public employee time. See State ex rel. Data Trace Info. Servs., L.L.C. v. Cuyahoga Cty. Fiscal Officer, 131 Ohio St. 3d 255, 264, 963 N.E.2d 1288, 1297, 2012-Ohio-753, ¶ 43. In effect, "cost" is limited to the "actual cost" of depleted supplies, such as toner and paper, used in making copies. Id., citing State ex rel. Warren Newspapers Inc. v. Hutson, 70 Ohio St. 3d 619, 626, 640 N.E.2d 174, 180 (1994); See also State ex rel. Strothers v. Murphy, 132 Ohio App. 3d 645, 725 N.E.2d 1185 (Ohio App. 8th Dist. 1999) (police department required to charge no more than five cents per page for copying public records).
For computer-stored records, the cost charged should generally be the cost of copying the electronic records. State ex rel. Margolius v. City of Cleveland, 62 Ohio St. 3d 456, 584 N.E.2d 665 (1992) (holding that copying computer tapes creates an "increased financial burden" on the public office so the cost can be passed on to the requester). The Ohio Supreme Court held that a county had to pay for the cost of retrieving improperly deleted e-mails where the relator asked to inspect, not to copy, the records. State ex rel. Toledo Blade Co. v. Seneca County Bd. of Comm’rs, 120 Ohio St. 3d 372, 382, 899 N.E.2d 961, 2008-Ohio-6253.
Public offices may pass on the costs of contractors used to extract data from the copyright-protected software entangled with it. State ex rel. Gambill v. Opperman, 135 Ohio St. 3d 298, 305, 986 N.E.2d 931, 938, 2013-Ohio-761, ¶ 31 (reasonable for public office to pass on contractor’s quote for extracting requested electronic data from copyright-exempted software and copying it onto a hard drive as part of the actual cost); see also State ex rel. Margolius v. City of Cleveland, 62 Ohio St. 3d 456, 584 N.E.2d 665, FN4 (1992)(Public Records Act did not preclude the public office from passing costs of copying computer tapes with outside contractors directly to the requester).
The right to inspect, rather than copy, records cannot be conditioned on the payment of any fee, even if officials have to redact information exempt from disclosure before allowing the inspection. State ex rel. Warren Newspapers Inc. v. Hutson, 70 Ohio St. 3d 619, 624, 640 N.E.2d 174, 178 (1994).
"Notwithstanding any state or local provision to the contrary" a public body may recover only the reasonable, direct costs of copying and in no instance shall the cost be more than 25 cents per page for documents less than 8 1/2 x 14 inches or a maximum of one dollar for a certified copy. However, if the request is made solely for a commercial purpose or would cause excessive disruption in gathering the documents, then the public body can charge a reasonable fee to recover the direct cost of the document search. 51 O.S. § 24A.5.3. This provision has been held not to apply to court records because of a superceding state law which provides that “notwithstanding any other provision of law” court clerks may charge one dollar for copying the first page of a document and 50 cents for each subsequent page. 2009 OK AG 27. Obtaining public documents for publication in a newspaper or broadcast by news media is not considered a commercial purpose. 51 O.S. § 24A.5.3. Fees charged by the Department of Public Safety for record in computerized format shall not exceed the direct cost of making the copy unless a separate fee is established by law. 51 O.S. § 24A.5.3.
Under ORS 192.324(4) (formerly ORS 192.440) a fee “reasonably calculated to reimburse” the public body for its actual cost in making the records available may be charged. No more than the actual cost may be charged by a public body. 39 Op. Atty Gen. 721 (1979); see also In Defense of Animals v. OHSU, 199 Or. App. 160, 184-86, 112 P.3d 336 (2005). The records custodian has the burden of demonstrating the reasonableness of charges for “actual costs” and must do so with specific supporting data. Davis v. Walker, 108 Or. App. 128, 132, 814 P.2d 547 (1991). If such data is absent, the charges are per se not reasonable. Davis, supra. If the fee will exceed $25, a public body must first provide an estimate of the fee and confirm that the requester wants to proceed. ORS 192.324(4)(c) (formerly ORS 192.440).
A reasonable charge may be made for the search or retrieval of documents. However, costs are limited to fifteen dollars ($15.00) per hour for search and retrieval, with no costs to be charged for the first hour. R.I. Gen. Laws § 38-2-4(b). The cost for copies of written documents is limited to fifteen cents ($.15) per page if copyable on common business or legal size paper. R.I. Gen. Laws § 38-2-4(a). Multiple requests from any person or entity to the same public body within a thirty (30) day time period are considered to be one request. R.I. Gen. Laws § 38-2-4(b).
Fees may be collected but may not exceed the actual cost of the search, retrieval, the making copies of records, and the redaction of them. The fees may not exceed the actual cost of the searching, copying or redaction records. Fees must be uniform for duplication of the same record – the fees may not exceed the prevailing commercial rate for the producing of copies - and the records must be furnished at the lowest possible cost to the requester. Fees cannot be charged for examination and review to determine if the records are subject to disclosure. Records may be furnished at no cost or at a reduced cost where the agency determines that a reduction or waiver of the cost is in the public interest. S.C. Code Ann. § 30-4-30(B).
The record custodian may charge “actual cost of mailing or transmittal, the actual cost of reproduction, or other fee established by statute or administrative rule . . . [and] staff time in excess of one hour . . . .” SDCL § 1-27-35.
The custodian of public records of convictions of traffic violations or other offenses can charge a reasonable fee per copy to defray the costs of producing and delivering the copy or copies. T.C.A. § 10-7-507 (1995).
Section 552.261 provides that “[t]he charge for providing a copy of public information shall be an amount that reasonably includes all costs related to reproducing the public information, including costs of materials, labor, and overhead.” Such a charge even can include the cost of deleting confidential information. Tex. Att’y Gen. ORD-488 (1988). But see Tex. Att’y Gen. ORD-633 (1995) (noting that a requestor cannot be charged for costs incurred in redacting or sorting out information excepted under the Act’s nonmandatory exceptions, such as in the case of sections 552.003, 552.007, and 552.008, because they are not “costs related to reproducing the record” and are not a factor in determining whether the record is “readily available”). However, if “a request is for 50 or fewer pages of paper records, the charge for providing the copy of the public information may not include costs of materials, labor, or overhead, but shall be limited to the charge for each page of the paper record that is photocopied, unless the pages to be copied are located in: (1) two or more separate buildings that are not physically connected with each other; or (2) a remote storage facility.” § 552.261(a)(1), (2).
Section 552.262 sets forth guidelines and rules of the Attorney General, which adopts rules for use by each governmental body in determining charges under the Act. The charges for public information may not be excessive and may not exceed the actual cost of producing the information. The rules of the Attorney General do not apply to a state governmental body that is not a “state agency.” § 552.262(e).
The custodian cannot consider the cost or method of supplying requested information in deciding whether the information is public and subject to inspection. See Indus. Found. of the South, 540 S.W.2d at 687. In Industrial Foundation, a nonprofit corporation sought access to workers’ compensation claims information, much of which was stored on a computer. The governmental agency argued that retrieval would overwork and disrupt agency employees. The Texas Supreme Court held that the agency could not consider the cost or method of supplying the requested information. It further held that the officer for public records and the State Board of Control [now the State Purchasing and General Services Commission] should determine “[t]he least expensive method of supplying the information,” although the Act “makes clear that all costs incurred in providing access to public records must be borne by the requesting party.” Id.
A custodian must provide the requestor with a written, itemized statement if a request for a copy of public information or inspection of a paper record will result in the imposition of a charge that exceeds $40. Tex. Gov’t Code § 552.2615. The itemized statement must detail all estimated charges that will be imposed, including any allowable charges for labor or personnel costs. Id. If a less costly alternative method of viewing the records is available, the statement must include a notice that the requestor may contact the governmental body regarding the alternative method. Id. In 2005, the Texas legislature added a provision requiring the requestor to timely respond within ten business days to the written statement or have the request for information withdrawn. Tex. Gov’t Code § 552.2615(b).
GRAMA states that a government entity may charge a “reasonable fee” to cover the “actual cost of providing a record.” Utah Code § 63G-2-203(1). The government entity also may charge for certain costs incurred in compiling a record in a form other than that maintained by the government entity. See id. § 63G-2-203(2). Fees may be established by the Legislature, by political subdivisions, or by the Judicial Council. See id. § 63G-2-203(3). GRAMA’s fee provisions do “not alter, repeal or reduce fees” established by other state statutes. Id. § 63G-2-203(9).
Under a 1996 amendment to the statute, the Vermont legislature for the first time granted public agencies and subdivisions the authority to recover costs and fees for providing information under the public records law. Agencies may charge and collect the “actual cost of providing the copy,” including “the costs associated with mailing or transmitting the record by facsimile or other electronic means.” 1 V.S.A. § 316(b).
The 1996 amendment directs the Secretary of State to establish the actual cost of providing a copy of a public record, in order to set the fees that may be charged by state agencies. 1 V.S.A. § 316(d). Once the actual cost is determined, the Secretary of State is required to adopt rules establishing “a uniform schedule of public record charges for State agencies.” Id. Political subdivisions of the State are also directed to “establish actual cost charges for copies of public records,” and to post them “in prominent locations in the town offices.” 1 V.S.A. § 316(e).
Under certain circumstances, agencies and political subdivisions “may also charge and collect the cost of staff time associated with complying with a request for a copy of a public record.” 1 V.S.A. § 316(c). These costs may be recovered if: “(1) the time directly involved in complying with the request exceeds 30 minutes; (2) the agency agrees to create a public record; or (3) the agency agrees to provide the public record in a nonstandard format and the time directly involved in complying with the request exceeds 30 minutes.” Id. Where a request for public records is subject to staff time charges, the agency may require that the request be made in writing and that the charges be prepaid. Id.
Fees Limited to Cost: A public body may impose a “reasonable charge not to exceed its actual cost incurred in accessing, duplicating, supplying, or searching for the requested records.” A public body may not “impose any extraneous, intermediary, or surplus fees or expenses to recoup the general costs associated with creating or maintaining records or transacting the general business of the public body.” Va. Code Ann. § 2.2-3704.F. These limits apply equally to records maintained on a computer or other data processing system. Va. Code Ann. § 2.2-3704(G); see generally 1989 Va. Op. Att’y. Gen. 12 (February 21, 1989) (Town may not charge newspaper reporter for the salary of town employee whose sole function for the time charged was to watch the reporter as he inspected the minutes of the town council). Note the special provision in the Act for the costs of creating certain topographical maps, harkening back to processes that have been largely replaced by the availability of electronic mapping. Va. Code Ann. § 2.2-3704.F.
Estimates: An advance cost estimate must be provided if requested by the citizen. Va. Code Ann. § 2.2-3704.F.
No fees may be charged merely for inspection or locating of public records, other than for certain customized requests. RCW 42.56.120. An agency may impose a reasonable charge for providing copies “which charges shall not exceed the amount necessary to reimburse the agency . . . for its actual costs directly incident to such copying.” Id.
The Freedom of Information Act permits each public body to "establish fees reasonably calculated to reimburse it for its actual cost in making reproductions of such records." W. Va. Code § 29B-1-3(e). Moreover, a public body "may . . . provide for reasonable limitations as to the hours and methods of viewing and cost of copying, but in no circumstances may these limitations be used so as to prevent a person from access to the records." Richardson v. Town of Kimball, 340 S.E.2d at 583 n.2 (1986). Considering the broad public policy favoring disclosure of government information as a means of furthering core democratic principles, "the actual cost of reproduction" should be narrowly construed. Such a construction would limit the per page cost to that which is comparable to commercial copying charges.
While charges for research and search time may be imposed under the federal FOIA, a 2015 West Virginia FOIA amendment explicitly prohibits such charges. W. Va. Code § 29B-1-3(e). ("A public body may not charge a search or retrieval fee or otherwise seek reimbursement based on a man-hour basis as part of costs associated with making reproduction of records.").
Fees charged for inspection of records are different depending on whether the records are in printed or electronic form. A custodian may not charge for inspection of a printed record, but may charge for the reasonable search and retrieval fees for inspection of an electronic record. Cheyenne Newspapers v. Laramie County School District No. 1, 2016 WY 113.
The Supreme Court has not ruled on what may constitute the reasonable cost of search and retrieval of electronic records. Reasonable fees may also be charged for the copies. Wyo. Stat. § 16-4-204(b). The official custodian may charge a reasonable fee for the services rendered by him or his deputy in supervising the copying, printing or photographing when such copying, printing or photographing is performed by the requester. Fee schedules must be established by rule, regulation, ordinance or law.


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Arrested for Growing Marijuana in Maine?
Drug crimes in Maine are serious crimes that carry hefty penalties. One type of drug crime that is ruled as a felony is the cultivation of marijuana. Growing marijuana is a crime and police looked to crack down on people who are found cultivating drugs. A drug arrest in Maine should not be taken lightly. Some people think that marijuana charges are not serious because it is legal in some states and used for medicinal purposes. This is not true. A conviction for marijuana cultivation can result in years in prison, steep fines and more. In addition, a felony conviction on your record will have a serious impact on your career and educational goals.
cultivation. Since this program was implemented in Maine in 1989, over 130,000 cannabis plants have been confiscated and over 1,200 people have been arrested over a 10-year period. Drug cultivation is a serious charge and can result in felony charges.
Southern Maine, specifically York County, is considered to be the primary cannabis growing area within the state and this area produces "Green Bud" marijuana that sells for $3,000 to $4,000 per pound because of its high quality. The crime of cultivating marijuana is defined in Maine Revised Statute Title §1117 as the intentional growing or cultivating of the cannabis plant.
Drug cultivation charges carry serious consequences. If the number of marijuana plants involved with a cultivation charge is less than five, the defendant will face a Class E crime and minor penalties. The penalties increase for the Class D crime of cultivating more than five but fewer than 100 plants. Cultivating more than one 100 marijuana plants but fewer than 500 will be charged as a Class C crime, and more than 500 plants will result in Class B penalties. As with other drug crimes, the specific penalties will depend on the circumstances of the arrest and other factors as well.
Class E: A jail sentence of up to 6 months and/or up to $1,000 in fines.
Class D: A jail sentence of up to 1 year and/or up to $2,000 in fines.
Class C: A jail sentence of up to 5 years and/or up to $5,000 in fines.
Class B: A jail sentence of up to 10 years and/or up to $20,000 in fines.
Other factors that can add to your sentence include your criminal history and any past drug-related convictions. If a vehicle is used in any form of the cultivation process, license suspension can also be added to the sentence.
Marijuana cultivation can also lead to other drug charges too. Possession of large amounts of any drug will lead police to suspect intent to sell or trafficking. Drug Trafficking is defined as “To sell, barter, trade, exchange or otherwise furnish for consideration” [1999, c. 453, §1 (AMD).] Possession of over one pound of marijuana can lead to drug trafficking charges and the penalties are even greater if you are cultivating it as well.
Medical Marijuana Maine has allowed the limited possession and prescribing of marijuana for medical purposes since 1999, but Medical Marijuana Act was established and reaffirmed by voters in 2009. Maine Governor Paul LePage recently passed the LD 1296, An Act to Amend the Maine Medical Use of Marijuana Act To Protect Patient Privacy in June of 2011, and this law brought about new changes for medical cannabis growers. Now, instead of growing inside an enclosed and locked facility, growers can now grow their plants in a fenced area. Growers are allowed to have six plants for each patient, and many growers throughout the state are part of the nonprofit trade association called Medical Marijuana Caregivers of Maine which provides constant updates on marijuana law. If you are found cultivating marijuana and are not part of this group, you will be arrested for a serious offense even if you claim it is for medical purposes.
Contact our office today to find out how our Maine drug cultivation defense attorneys can protect your rights. We are here to help you.

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Promega – The panel reverses summary judgment, holding that most of the patents in suit are invalid for lack of enablement. Also reversing the grant of JMOL regarding the so-called Tautz patent, the panel finds substantial support for the jury's infringement verdict of direct infringement and induced infringement under 35 U.S.C. § 271(f)(1). This ruling should enable Promega to collect at least some of the $52 million in damages awarded by the jury.
Myriad - Immediately after the Supreme Court's 2013 ruling that Myriad could not patent human genes, Ambry introduced a competing breast cancer test. Myriad sued, and its motion for preliminary injunction was denied because the district court felt Myriad's patents did not recite patentable subject matter. The Circuit affirms, ruling that neither naturally-occurring compositions of matter, nor synthetically created compositions that are structurally identical, are patent eligible.
Stryker Corp. – The panel affirms the jury's finding that the patents in suit are valid and infringed and its award of damages, but reverses the district court's judgment that the infringement was willful. The Circuit therefore vacates an award of treble damages and remands the case.
Promega entered into limited licenses with Life Technologies under several patents directed to systems to compare DNA samples in paternity tests, to monitor bone marrow transplants, and for cancer testing. Promega later sued LifeTech, alleging that LifeTech was selling its kits for uses that fell outside of the terms of the license, thereby infringing Promega's patents. The district court determined that the Promega patents were not invalid for lack of enablement. The lower court also held that LifeTech could only be liable for infringement if more than one component of its kits came from the U.S., given the statutory language that "a substantial portion" of the components be American-made. Finally, the district court determined that the license was not so broad as to cover all the uses for which LifeTech was selling its kits.
The district court held that the patents need not enable unrecited elements covered by open-ended "comprising" claims. However, the panel disagrees. In this field of technology, introducing even a single STR locus to an existing loci multiplex significantly alters the chemistry of, and has an unpredictable effect on, whether the resulting multiplex will successfully co-amplify.
Promega repeatedly argued to the PTO that its then-pending claims were patentable because the prior art did not disclose "methods for selecting, coamplifying, and evaluating the specific sets of short tandem repeat loci" recited in the claims. According to Promega, this lack of disclosure was critical, as the state of the art in this technology area "did not disclose or suggest that any arbitrary combination of loci can be co-amplified without undue experimentation."
But when describing the scope of its claims for purposes of infringement, Promega sings a different tune. Despite the overwhelming evidence that the addition of a single locus to an existing loci combination can fundamentally transform the character of the resulting multiplex reaction, Promega argues that LifeTech's STR kits infringe its claims because any and all co-amplifying loci combinations that include the STR loci recited in the claims are encompassed by the claims. Promega has chosen broad claim language "at the peril of losing any claim that cannot be enabled across its full scope of coverage." Even if this testing process for any one compound would have been routine to a skilled artisan, if practicing the full scope of the claims required "more than routine experimentation," claims are invalid for lack of enablement. Since the Promega patents do not enable a skilled artisan to practice the full breadth of the claim scope without undue experimentation, the challenged claims of the Promega patents are invalid for lack of enablement.
Since the four Promega patents are invalid for lack of enablement, the panel needs only to address the district court's grant of LifeTech's motion for JMOL of noninfringement of the Tautz patent. LifeTech's accused genetic testing kits include a primer mix, a PCR reaction mix, a buffer solution, control DNA, and a polymerase ( Taq), which is necessary for the PCR amplification. LifeTech manufactures this Taq polymerase component in the U.S. LifeTech then ships this component to its facility in the U.K. for incorporation into its accused genetic testing kits, which are sold worldwide, including in the U.S.
LifeTech admits that sales of these accused kits in the U.S. infringe the Tautz patent under 35 U.S.C. § 271(a). At trial, the jury also awarded lost profits to Promega based on worldwide sales of LifeTech's accused STR kits under 35 U.S.C. § 271(f)(1). The district court, however, granted LifeTech's motion for JMOL that Promega failed to prove infringement under § 271(f)(1), holding that (1) § 271(f)(1) requires the involvement of another, unrelated party to "actively induce the combination of components," and (2) a "substantial portion of the components" requires at least two components to be supplied from the U.S. The majority disagrees with the district court's reading of § 271(f)(1).
a. "Actively induce the combination"
The majority first holds that "to actively induce the combination" does not require involvement of a third party, and it is adequate simply to exhibit the specific intent to cause the combination of the components of a patented invention outside the United States.
To begin, the majority acknowledges that the word "induce" can suggest that one is influencing or persuading "another." However, "induce" also encompasses the more broad concept of "to bring about, to cause." Had Congress wanted to limit "induce" to actions completed by two separate parties, it could easily have done so by assigning liability only where one party actively induced another "to combine the patented components."
Congress enacted § 271(f) in response to a loophole brought to its attention by Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972). In Deepsouth, the Fifth Circuit affirmed an injunction barring use of an infringing shrimp deveining machine within the U.S. The infringer subsequently began making the parts of its enjoined shrimp deveining machine in the U.S., then exported those parts to its foreign buyers, who would ultimately assemble and use the completed machines abroad. The Supreme Court found that the unassembled export of the elements of the infringing shrimp deveining machine did not infringe the patent, which required the completed combination of those elements.
Congress responded to Deepsouth by enacting § 271(f), which closed the Deepsouth "loophole" by expanding the reach of the patent statute to capture certain domestic precursors to extraterritorial activity not previously considered as infringing. In terms of its policy goals, § 271(f)(1) sought to "prevent copiers from avoiding U.S. patents by supplying components of a patented product in this country so that the assembly of the components may be completed abroad."
b. "Substantial portion of the components of a patented invention"
The panel next addresses whether infringement under § 271(f)(1) requires at least two components to be supplied from the U.S. Section 271(f)(1) assigns infringement to anyone who supplies or causes to be supplied " all or a substantial portion of the components of a patented invention." The majority holds that there are circumstances in which a party may be liable under § 271(f)(1) for supplying or causing to be supplied a single component for combination outside the U.S. And, based on the facts of this case, the majority concludes that substantial evidence supports the jury's verdict that LifeTech is liable for infringement under § 271(f)(1) for shipping the Taq polymerase component of its accused genetic testing kits to its U.K. facility.
At trial, LifeTech admitted that some of the sales of its accused genetic testing kits in the U.S. were "technically an infringement" of Promega's patents. Based on LifeTech's own admissions, which are supported in the record, LifeTech's kits made, used, or sold in the U.S. infringe the Tautz patent under 35 U.S.C. § 271(a). Therefore, because substantial evidence supports the jury's finding that LifeTech's accused kits infringe the Tautz patent under both § 271(a) and § 271(f)(1), the panel reverses the grant of LifeTech's motion for JMOL of noninfringement of the Tautz patent.
The 2006 Cross License is a limited field-of-use license for "forensics and human identity applications." The district court ruled that the scope of the 2006 Cross License was limited to sales of LifeTech's STR kits used during "live" forensic investigations conducted by law enforcement agencies, and did not cover sales of the STR kits used for forensic research, education, and training at universities and other non-law enforcement bodies. The panel affirms this ruling.
Chief Judge Prost dissents from the majority's ruling on third party inducement, contending that the Supreme Court precedent does not allow a party to induce itself, and the loophole that was closed by Congress following the DeepSouth case should not be read to close all loopholes for territorial liability.
The Supreme Court addressed some of the patents at issue here in its June 13, 2013, opinion in Association for Molecular Pathology v. Myriad, 133 S. Ct. 2107 (2013), as did the Federal Circuit in Association for Molecular Pathology v. USPTO, 653 F.3d 1329 (Fed. Cir. 2011), vacated, 132 S. Ct. 1794 (2012), and Association for Molecular Pathology v. Myriad, 689 F.3d 1303 (Fed. Cir. 2012), aff'd in part, rev'd in part, 133 S. Ct. 2107 (2013). This case involves claims of those patents not previously considered by the Supreme Court or by the Circuit.
In the 1990s, Myriad and its partners discovered the precise locations and sequences of the BRCA1 and BRCA2 genes, mutations of which are linked to hereditary breast and ovarian cancers. By discovering the particular locations and sequences of the genes, Myriad was able to determine the typical sequences of the genes most often found in humans (i.e., the "wild-type" sequence for each), as well as mutations, which depart from the two wild-type sequences. Some mutations are harmless, but other mutations are correlated with an increased likelihood of developing particular cancers. By testing for the presence of these mutations, doctors can determine whether the patient is particularly prone to developing breast or ovarian cancer.
The Supreme Court, in its Myriad decision, held that claims directed to isolated DNA were drawn to patent-ineligible subject matter because the isolated DNA strands, which are naturally occurring and separated from the rest of the human genome, were natural phenomena. Immediately thereafter, generic competitors, including Ambry, entered the market for medical kits designed to test for susceptibility to particular kinds of cancer. Myriad sued Ambry and moved for preliminary injunction. The district court denied Myriad's motion, holding that the claims were likely drawn to ineligible subject matter.
The four composition of matter claims are directed to primers, which are "short, synthetic, single-stranded DNA molecules that bind specifically to . . . intended target nucleotide sequences." In its 2013 Myriad decision, the Supreme Court held ineligible the isolated DNA claims, explaining: "Myriad did not create or alter any of the genetic information encoded in the BRCA1 and BRCA2 genes. The location and order of the nucleotides existed in nature before Myriad found them." Even if Myriad made a "groundbreaking, innovative, or even brilliant discovery," that is not enough. With respect to the isolated DNA, "Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention." The Court held that "genes and the information they encode are not patent eligible under § 101 simply because they have been isolated from the surrounding genetic material."
The cDNA claims, however, were held to be patent eligible under § 101. cDNA is an exon-only sequence, with no introns, that does not occur in nature, "except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA." To the extent that the exon-only sequence does not exist in nature, the lab technician "unquestionably creates something new when cDNA is made."
The primers before us are not distinguishable from the isolated DNA found patent-ineligible in Myriad and are not similar to the cDNA found to be patent-eligible. Primers necessarily contain the identical sequence of the BRCA sequence directly opposite to the strand to which they are designed to bind. They are structurally identical to the ends of DNA strands found in nature. Contrary to Myriad's argument, it makes no difference that the identified gene sequences are synthetically replicated.
wherein a germline nucleic acid sequence is compared by hybridizing a BRCA1 gene probe which specifically hybridizes to a BRCA1 allele to genomic DNA isolated from said sample and detecting the presence of a hybridization product wherein a presence of said product indicates the presence of said allele in the subject.
Ambry argues that Mayo is directly on point because the method claims here, as there, simply identify a law of nature, and apply conventional techniques. We need not decide if Mayo is directly on point here because the method claims before us suffer from a separate infirmity: they recite abstract ideas.
Laws of nature are not the only implicit exception to patentable subject matter identified by 35 U.S.C. § 101. Natural phenomena and abstract ideas are also not patentable. See Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354 (2014). In Alice the Supreme Court reiterated its two-step test to determine patent eligibility for any claims that allegedly encompass abstract ideas. First, "we determine whether the claims at issue are directed to a patent-ineligible concept. If so, we then ask, 'what else is there in the claims before us?'" That is, we next ask whether the remaining elements, either in isolation or combination with the other non-patent-ineligible elements, are sufficient to "'transform the nature of the claim' into a patent-eligible application." Put another way, there must be a further "inventive concept" to take the claim into the realm of patent eligibility.
Here, we treat separately the first paragraphs of claims 7 and 8, which describe the comparison of wild-type genetic sequences with the subject's genetic sequence and correspond to the first step of Alice, and the second paragraphs, which describe the techniques to be used in making the comparisons and correspond to the second step of Alice.
We have already addressed the first paragraphs—the comparison step—in our own 2012 Myriad decision. Claims 7 and 8 at issue here depend from claim 1. Claim 1, which is the first paragraph of claims 7 and 8, is the comparison step. In our 2012 decision, we held that claim 1 was patent ineligible because it claimed an abstract mental process of 'comparing' and 'analyzing' two gene sequences.
Having determined that the comparison steps of claims 7 and 8 are abstract ideas, we move to the second step of Alice and ask whether the particular mechanism for the comparisons added by claims 7 or 8 renders the claims patent-eligible. For this step, Alice dictates that we ask whether the remaining elements, either in isolation or combination with the other non-patent-ineligible elements, are sufficient to "'transform the nature of the claim' into a patent-eligible application." There must be a further inventive concept to take the claim into the realm of patent-eligibility. The second paragraph of claim 7 describes the way in which the sequences are compared: they are compared by 1) hybridizing a BRCA gene probe and 2) detecting the presence of a hybridization product. Similarly, claim 8 requires 1) amplification of the BRCA1 gene and 2) sequencing of the amplified nucleic acids.
The non-patent-ineligible elements of claims 7 and 8 do not add "enough" to make the claims as a whole patent-eligible. The district court found, and Myriad does not challenge, that the elements of the second paragraphs of claims 7 and 8 "set forth well-understood, routine and conventional activity engaged in by scientists at the time of Myriad's patent applications." Nothing is added by identifying the techniques to be used in making the comparison because those comparison techniques were the well-understood, routine, and conventional techniques that a scientist would have thought of when instructed to compare two gene sequences.
The patents at issue concern pulsed lavage devices. Pulsed lavage devices deliver pressurized irrigation for certain medical therapies, including orthopedic procedures and cleaning wounds. The particular devices at issue in this case are portable, battery powered, and handheld. They include both suction and discharge tubes, so they both spray fluid from an external source and also suction off fluid and debris. These devices represent an improvement over older pulsed lavage systems that required a central power source and external mechanical pumps, which meant they needed to be wheeled around the hospital.
The panel affirms the district court's claim construction, the judgment of infringement, and the finding that the patents in suit are not invalid. However, the panel concludes that Zimmer's claim construction and non-infringement arguments were not unreasonable. Because the Circuit reverses the finding of willful infringement and the award of attorney fees, this summary will focus on those parts of the opinion.
The only asserted claim of the '329 patent describes features of a "pulsed irrigation surgical handpiece." According to this claim, the handpiece comprises a "hollow housing," which includes a "handle," and, in relevant part in this case, "an electric motor spaced between the top and bottom of said handle and located in said handle" adjacent to an irrigation tube within the housing. Zimmer contends that this limitation is critical for the purposes of infringement because, as indicated by the arrows below, the motor in its accused Pulsavac Plus device is not located in the handle—rather, it is located in the "nub" of the handpiece, the protrusion behind the barrel.
To establish willful infringement, the patentee has the burden of showing "by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). "The state of mind of the accused infringer is not relevant to this objective inquiry." Only if the patentee establishes this "threshold objective standard" does the inquiry then move on to whether "this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer." We have held that objective recklessness, even though "predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review." Bard Peripheral Vascular, Inc. v. WL. Gore & Assocs., Inc., 682 F.3d 1003, 1007 (Fed. Cir. 2012). Objective recklessness will not be found where the accused infringer's "position is susceptible to a reasonable conclusion of no infringement." Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1310 (Fed. Cir. 2011).
According to the panel, the district court failed to undertake an objective assessment of Zimmer's specific defenses to Stryker's claims. Instead, the court's analysis of objective reasonableness summarily asserted that "the jury heard testimony" that Zimmer "all but instructed its design team to copy Stryker's products." The district court further concluded that the "pioneering" nature of Stryker's inventions and the secondary considerations of non-obviousness "made it dramatically less likely that Zimmer's invalidity arguments were reasonable."
First, with respect to the '329 patent, the motor in Zimmer's Pulsavac Plus is located in the nub at the rear of the barrel of its pistol-shaped device. Stryker's infringement case relied on first persuading the district court to broadly construe the claim term "handle" to include the barrel of a pistol-shaped device—even though the patent specification only describes the handle and barrel separately. Then, Stryker had to persuade the jury that the barrel nub was a part of the device "designed to be held by hand," even in light of prosecution history in which Stryker distinguished between the location of the motor in the handle as opposed to the barrel. Though Stryker ultimately prevailed, Zimmer's arguments were not unreasonably founded on the plain meaning of "handle" in the context of a pistol-shaped device, the specification's exclusive disclosure of pistol-shaped devices, and the prosecution history—all on which it could have relied to provide notice of what the patent claims covered.
Second, with respect to the '807 patent, the specification only disclosed female nozzles on the front end of the device and male nozzles on the removable tip, which would be consistent with the claim requiring that the front end "receive" the tip. Zimmer's devices had the exact opposite configuration: tapered male nozzles on the front end and female nozzles on the tip. Furthermore, the prior art Var-A-Pulse devices included all of the asserted claims' limitations except one. In light of the district court's claim construction, Stryker's defense to Zimmer's argument relied on persuading the jury that even though the tip's nozzles could fit into the handpiece and be held in place through friction with internal housing grooves, that did not mean they were "secured or fastened." Again, though Stryker prevailed, Zimmer's defenses were not unreasonable.
Third, with respect to the '383 patent, Zimmer's obviousness argument relied on a combination of references that was also raised by a PTO examiner during Stryker's prosecution of a related patent application—in an office action that occurred during discovery in this litigation. Zimmer's reliance on this combination was not without reason, in particular since the references related to pressured water irrigation systems used in hospitals and clinics. Therefore, even if Zimmer's defenses failed at trial, it still made a reasonable case that the '383 patent's asserted claims were obvious and thus invalid.
In sum, we find that Zimmer's defenses to the infringement of each patent claim that Stryker asserted were not objectively unreasonable, and, therefore, it did not act recklessly.
As the panel reverses the district court's determination of willful infringement, and the district court's award of attorneys' fees was based on that determination, the panel vacates the district court's grant of attorneys' fees. However, because there exist further allegations of litigation misconduct in this case and because the standard for finding an exceptional case has changed since the district court issued its finding regarding attorneys' fees, the Circuit remands this issue for further consideration.