§61.3 Requirement for certificates, ratings, and authorizations.
§61.4 Qualification and approval of flight simulators and flight training devices.
§61.7 Obsolete certificates and ratings.
§61.11 Expired pilot certificates and re-issuance.
§61.13 Issuance of airman certificates, ratings, and authorizations.
§61.15 Offenses involving alcohol or drugs.
§61.16 Refusal to submit to an alcohol test or to furnish test results.
§61.19 Duration of pilot and instructor certificates.
§61.21 Duration of a Category II and a Category III pilot authorization (for other than part 121 and part 135 use).
§61.23 Medical certificates: Requirement and duration.
§61.27 Voluntary surrender or exchange of certificate.
§61.29 Replacement of a lost or destroyed airman or medical certificate or knowledge test report.
§61.31 Type rating requirements, additional training, and authorization requirements.
§61.35 Knowledge test: Prerequisites and passing grades.
§61.37 Knowledge tests: Cheating or other unauthorized conduct.
§61.39 Prerequisites for practical tests.
§61.43 Practical tests: General procedures.
§61.45 Practical tests: Required aircraft and equipment.
§61.47 Status of an examiner who is authorized by the Administrator to conduct practical tests.
§61.52 Use of aeronautical experience obtained in ultralight vehicles.
§61.57 Recent flight experience: Pilot in command.
§61.58 Pilot-in-command proficiency check: Operation of aircraft requiring more than one pilot flight crewmember.
§61.59 Falsification, reproduction, or alteration of applications, certificates, logbooks, reports, or records.
§61.63 Additional aircraft ratings (other than for ratings at the airline transport pilot certification level).
§61.64 Use of a flight simulator and flight training device.
§61.67 Category II pilot authorization requirements.
§61.68 Category III pilot authorization requirements.
§61.69 Glider and unpowered ultralight vehicle towing: Experience and training requirements.
§61.71 Graduates of an approved training program other than under this part: Special rules.
§61.73 Military pilots or former military pilots: Special rules.
§61.77 Special purpose pilot authorization: Operation of a civil aircraft of the United States and leased by a non-U.S. citizen.
§61.87 Solo requirements for student pilots.
§61.93 Solo cross-country flight requirements.
§61.94 Student pilot seeking a sport pilot certificate or a recreational pilot certificate: Operations at airports within, and in airspace located within, Class B, C, and D airspace, or at airports with an operational control tower in other airspace.
§61.95 Operations in Class B airspace and at airports located within Class B airspace.
§61.96 Applicability and eligibility requirements: General.
§61.100 Pilots based on small islands.
§61.101 Recreational pilot privileges and limitations.
§61.111 Cross-country flights: Pilots based on small islands.
§61.113 Private pilot privileges and limitations: Pilot in command.
§61.117 Private pilot privileges and limitations: Second in command of aircraft requiring more than one pilot.
§61.131 Exceptions to the night flying requirements.
§61.133 Commercial pilot privileges and limitations.
§61.159 Aeronautical experience: Airplane category rating.
§61.161 Aeronautical experience: Rotorcraft category and helicopter class rating.
§61.163 Aeronautical experience: Powered-lift category rating.
§61.165 Additional aircraft category and class ratings.
§61.191 Additional flight instructor ratings.
§61.197 Renewal requirements for flight instructor certification.
§61.199 Reinstatement requirements of an expired flight instructor certificate.
§61.301 What is the purpose of this subpart and to whom does it apply?
§61.303 If I want to operate a light-sport aircraft, what operating limits and endorsement requirements in this subpart must I comply with?
§61.307 What tests do I have to take to obtain a sport pilot certificate?
§61.311 What flight proficiency requirements must I meet to apply for a sport pilot certificate?
§61.315 What are the privileges and limits of my sport pilot certificate?
§61.317 Is my sport pilot certificate issued with aircraft category and class ratings?
§61.321 How do I obtain privileges to operate an additional category or class of light-sport aircraft?
§61.325 How do I obtain privileges to operate a light-sport aircraft at an airport within, or in airspace within, Class B, C, and D airspace, or in other airspace with an airport having an operational control tower?
§61.327 Are there specific endorsement requirements to operate a light-sport aircraft based on VH?
§61.401 What is the purpose of this subpart?
§61.403 What are the age, language, and pilot certificate requirements for a flight instructor certificate with a sport pilot rating?
§61.405 What tests do I have to take to obtain a flight instructor certificate with a sport pilot rating?
§61.407 What aeronautical knowledge must I have to apply for a flight instructor certificate with a sport pilot rating?
§61.409 What flight proficiency requirements must I meet to apply for a flight instructor certificate with a sport pilot rating?
§61.411 What aeronautical experience must I have to apply for a flight instructor certificate with a sport pilot rating?
§61.413 What are the privileges of my flight instructor certificate with a sport pilot rating?
§61.415 What are the limits of a flight instructor certificate with a sport pilot rating?
§61.417 Will my flight instructor certificate with a sport pilot rating list aircraft category and class ratings?
§61.419 How do I obtain privileges to provide training in an additional category or class of light-sport aircraft?
§61.421 May I give myself an endorsement?
§61.423 What are the recordkeeping requirements for a flight instructor with a sport pilot rating?
§61.425 How do I renew my flight instructor certificate?
§61.427 What must I do if my flight instructor certificate with a sport pilot rating expires?
§61.429 May I exercise the privileges of a flight instructor certificate with a sport pilot rating if I hold a flight instructor certificate with another rating?
This page was last modified on 17 November 2011, at 07:36.


v.l.) m., § 2 (39.21) . sbairr m. and f., § 45 .
Ophir `the golden wedge of O.', Isa. xiii 12 . Cf. Eg. Gl. 557 .
(1900) li 87 . do leanbh dhil a sparra cruise, (1900) lii 6 (perh.
(see note). ó Sparr Átha Deiridh, L. Cl. A. Buidhe 43.28 .
sparra, Ó Bruad. iii 110.15 .
10 sparrad n(cf. spairr, sparr). sbarradh m., IGT Decl. § 11 (55.5) .
sparradh `a fastening or nailing; also to fasten or nail', P. O'C.
` driving, inculcating ', O'R.
sparrag: n feastrach, biorrach, s. ¤ `a muzzle ', Eg. Gl. 284 .
spalpainn-se na spréacha mionn, E. O'Rahilly (ed. 1900) lii 11 .
20iarruim air | go tilleadh dhamh óm dhúthaigh, L. Cl. A.
25speir lanmoir ┐ Stodiacus . . . spas fada = differentiam, Ir.
s. ¤ , Rosa Ang. 76.4 . fēdaig s. ¤ teagmāil a meiri, RSláinte 1612 .
§ 42 (leg. sreb, Stokes).
35a richt in spegdubain, Acall. 5679 ` water-spider ', Gloss.
o speic[h] cosi, Mackinnon Cat. 25.2 .
40 guiding light : 'n-a sbéacla fhear n-ainbheasa, DDána 54.9 .
spéclóir n i,m. (based on Eng. or Lat.) (a) mirror: Colaim . . .
speclair na hogh[achta] = speculum virginitatis, BCC 8.3 .
nochtus dúind mar sbeclair ar nolc féin, Carswell 7.4 .
spéaclóir ar mo chluais, Measgra D. 7.127 .
50the Cross: sbéacláir na cruinne an chroch naomh, DDána 54.1 .
ib. ? Cf. spadán, spegach.
iii 455 , Sc.G.St. iii 62 ).
60 Ir. Gl. 629 . ? Cf. spedán.
speic n= Lat. species (see Sc.G.St. ii 28 ): speig mentastri, Arch.
céiridhe ag an bPairliment sin, PCT 954 .
Texts i 28 § 27 .
┐ speinnséir . . . dá roinn ar chloinn Chríostt, 446.8 . Cf.
do ghearr D. speirreacha each na ccarbad, 2 Sam. viii 4 .
IGT § 14 (69.7) .
talman = et quod umbra terre est conus (Gloss.), Ir. Astr. Tr.
5beauty of its form' (of poetry), Ó Bruad. iii 194.3 .
spéar gréine na cearcuill `solar firmament', Content. v 40 .
speir na greine . . . s. ¤ na nardrennach ndaingen, MS. Mat.
tonn go s. ¤ , Oss. iii 264.20 . dar an sbéir `by heaven', O'Gr. Cat.
Ps. xix 1 . thugadar na spéirigh fúaim, lxxvii 17 .


text:
Originally published in The Hill, January 15, 2019.
“All animals are equal, but some animals are more equal than others.” George Orwell’s pithy lesson from “Animal Farm” describes the hypocrisy of governments that proclaim the equality of their citizens, while granting special power and privileges to an elite group.
It’s also an apt description of how free speech is treated in America when it comes to corporations, as a recent political speech case in Massachusetts illustrates. Pacific Legal Foundation is asking the Supreme Court to review this case and make it clear that corporate speech is protected speech.
Our Constitution’s First Amendment plainly states that Congress shall make no law abridging the freedom of speech (a limitation extended to the states after the Civil War). It applies to the freedom of speech generally — not to any particular class of speakers. Yet some laws restrict speech solely on the basis of the speaker’s identity, granting some favored speakers power and privileges not shared by all. In 1A Auto, Inc. v. Sullivan, two restricted speakers are asking the Supreme Court to break down these artificial distinctions.
Massachusetts’ ban on corporate campaign contributions prohibits business corporations and other profit-making entities from contributing to state or local candidates. They cannot contribute to a candidate or to a candidate’s committee, establish or administer a political action committee (PAC), or contribute to a PAC that is not an independent expenditure PAC.
Because of this law, two small businesses — an auto shop and a storage facility — are prohibited from making political contributions they otherwise would have made. They sued Michael Sullivan, the Massachusetts Office of Campaign and Political Finance director, arguing the contribution ban violates their First Amendment right to free speech.
The businesses lost in Massachusetts state courts, largely because of the Supreme Court’s decision in Beaumont v. FEC (2003), which upheld the federal ban on corporate contributions as justified by the government’s interest in “preventing corruption and the appearance of corruption.” The businesses are now asking the Supreme Court to review their case, and overrule Beaumont.
First Amendment law has grown more protective of political speech, even when expressed by corporations. Citizens United v. FEC (2010) rejected two of the four reasons underlying Beaumont, while accepting one of the reasons (preventing corruption) and remaining silent as to the fourth (preventing individuals from funneling contributions through corporations).
Then in 2014, McCutcheon v. Federal Election Commission held that the goal of reducing the political power of the wealthy cannot justify campaign finance restrictions. Beaumont’s deteriorating rationale has prompted some courts to hold that its precedential value rests on shaky ground.
No one questions that corporate contributions have influence — as they are intended to do. But influence is not corruption. Central to Beaumont’s holding is the notion that corporate contributions to political actors have a uniquely corrupting influence on the political process and governance generally. However, there is scant evidence that corporate contributions are any different than contributions by wealthy individuals, or nonprofit or trade organizations, such as labor unions.
Massachusetts singles out corporate contributions as inherently corrupting, while declining to tar equivalent speech from other organizations with the same brush. The facts on the ground do not support this distinction.
For example, in Massachusetts, unions are fully engaged in the political process, making both cash and in-kind contributions to political aspirants who share the unions’ policy preferences — often at loggerheads with the corporate employers who employ union-represented employees. Unions and nonprofit organizations can give up to $15,000 to a single candidate in a year, which is 15 times the individual contribution limit of $1,000.
Alas, unions are not immune to the lure of corrupt campaign activity, as demonstrated by the recent resignation of the president of the union that represents Massachusetts State Police troopers because of a federal investigation into possible illegal reimbursement of campaign donations by union members. Even when engaged in legitimate activity not subject to criminal investigation, unions surely have influence comparable to — if not exceeding — that of corporate contributors.
The 1A Auto case also provides the opportunity for the Supreme Court to revisit, and discard, the amorphous “appearance of corruption” justification for contribution restrictions. “Appearance of corruption” has no defined meaning and invites regulation based on the regulators’ biases. It threatens speech based on unproven accusations of wrongdoing — and such accusations are ever-present in political campaigns. The “appearance” justification, defined subjectively and applied selectively, cannot suffice to restrict otherwise protected speech.
This case presents a strong vehicle in which to expressly overrule Beaumont, thus permitting lower courts the latitude to apply more recent speech-protective First Amendment doctrine.
Deborah J. La Fetra is a Senior Attorney with Pacific Legal Foundation (PLF), which litigates nationwide to achieve court victories enforcing the Constitution’s guarantee of individual liberty. PLF filed amicus briefs in 1A Auto, Inc. v. Sullivan, Citizens United v. FEC, and Beaumont v. FEC.

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Developments on the topic of patent subject matter ineligibility continue to progress rapidly. In this piece we revisit the Federal Circuit Court decision in Two-Way Media v. Comcast. This case provides comments in part on the role the patent specification should play when looking for inventive concepts in the second step of the Alice/Mayo test. Two-Way also serves as an important reminder to patent professionals to avoid conflation of the § 101 subject matter eligibility inquiry with § 102 and § 103 novelty and obviousness considerations.
At stake in the trial were four patents (5,778,187, 5,983,005, 6,434,622, 7,266,686) held by Two-Way Media, relating to a multicasting system and method for transmitting audio/visual information over a communication network such as the internet. The question before the court was whether said patents were directed towards an abstract idea. Traditional internet communications are unicast, meaning they involve only one device sending information to one other device. Multicasting, in contrast, involves one computer sending information to multiple receiving computers, and is necessary in order to support tasks such as livestreaming or video conferencing. In a unanimous decision, the Circuit Court affirmed the District Court decision in favor of Comcast, ruling that all of the Two-Way Media patents in dispute were invalid as they are abstract ideas, and thus ineligible subject matter according to U.S.C. § 101. For a complete accounting of the court’s decision and the case in dispute, see our recent previous article.
Prior to the Circuit Court ruling, the District Court had refused (correctly) to consider evidence submitted by Two-Way Media that purportedly showed the novelty and nonobviousness of their invention, because “[t]he novelty and nonobviousness of the claims under §§ 102 and 103 does not bear on whether the claims are directed to patent-eligible subject matter under § 101.” (Emphasis added.) The Circuit Court agreed with this conclusion, noting that “‘even assuming’ that a particular claimed feature was novel does not ‘avoid the problem of abstractness’” (citing and quoting Affinity labs). This conflating of § 101, § 102 and § 103 is a common mistake made by even experienced patent professionals, but it is important to remember that questions of novelty and nonobviousness should not be considered until the eligibility of a claimed invention is first established, as it is entirely possible for an invention to be novel and nonobvious but still be an ineligible abstract idea. Subject matter eligibility is a threshold inquiry.
The court also weighed in on the proper use of the patent specification when determining the eligibility of a patent’s subject matter. Under the Alice/Mayo two-step procedure, determining eligibility entails first determining whether an invention is ‘directed to’ an ineligible subject matter (consisting of a law of nature, natural phenomena, or an abstract idea), and second, should the invention be found to be directed to an ineligible concept, whether the invention contains any saving ‘inventive concepts’ . . . or ‘elements or a combination of elements … sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (Mayo v Promethius).
The main problem that Two-Way Media cannot overcome is that the claim – as opposed to something purportedly described in the specification – is missing an inventive concept. While the specification may describe a purported innovative ‘scalable architecture,” claim 1 of the ‘187 patent does not.
The inquiry is not whether the specifications disclose a patent-eligible system, but whether the claims are directed to a patent ineligible concept.
Discusses only very broad, high-level functionality rather than details about how exactly that functionality is implemented, providing no information about the structure of the software.
The opinions put forward by J. Reyna in the Amdocs dissent sound remarkably similar to the ruling in Two-Way, except now Reyna is in the majority. Surprisingly, J. Reyna makes no mention of Amdocs in his Two-Way verdict.
How courts should use the specification when looking for inventive concepts is a question that remains to be answered. It is well-established that the specification can be used to provide context for better understanding the technical benefits conferred by a particular claim. Courts seem divided, however, on the amount of information that can be imported into the claims from the specification.


In a December 13, 2006 decision, the Federal Circuit sitting en banc addressed the question of the level of intent necessary to establish inducement infringement under 35 U.S.C. §271(b). According to section 271(b) of the patent statute, "[w]hoever actively induces infringement of a patent shall be liable as an infringer." With no dissenting opinion, the Federal Circuit held en banc that an alleged infringer must be shown to know of the patent and actively and knowingly aided and abetted another's direct infringement, not merely knowingly induced the acts that constitute direct infringement.
DSU Medical Corporation owns U.S. Patent No. 5,112,311 ("the '311 patent") and is the exclusive licensee for U.S. Patent No. 5,266,072, both of which are directed to a guard for a winged-needle assembly that reduces the risk of accidental needle-stick injuries. DSU sued JMS Company, Ltd., a large Japanese medical supply company, and its supplier ITL Corporation Pty, Ltd. for patent infringement, inducement to infringe and contributory infringement. ITL is an Australian company that manufactures and sells the alleged infringing plastic needle guard to JMS in Malaysia and Singapore. ITL sold the plastic guard as a stand-alone product to JMS in an open clamshell configuration. JMS subsequently closed the guards around the needle assembly before distributing the combination to customers in the United States.
After a six-week trial, the jury found that JMS infringed the '311 patent, but entered a verdict finding that ITL did not engage in contributory infringement or inducement to infringe. The U.S. District Court for the Northern District of California entered a final judgment of infringement against JMS on certain claims of the '311 patent and of non-infringement for ITL.
After affirming the finding of infringement with respect to JMS, the Federal Circuit rejected DSU's arguments that ITL should have been found liable for contributory infringement under 35 U.S.C. §271(c) and inducing infringement under 35 U.S.C. §271(b). Judge Rader, writing for a three-judge panel on the question of contributory infringement, stressed that §271(c) has an explicit territorial limitation requiring contributory acts to occur in the United States and that, here, DSU failed to show that "ITL engaged in conduct (made sales) within the United States that contributed to another's direct infringement." Since the asserted '311 patent claims the plastic guard in a closed clamshell configuration with the needle assembly, the sale of the open clamshell guards in Malaysia and Singapore could not constitute an act of direct infringement or contributory infringement.
Due to conflicting precedent on the question of the level of intent necessary to establish inducing infringement, the Federal Circuit addressed the question en banc. Judge Rader, writing for ten circuit court judges, confirmed that to establish liability under section 271(b), a patent holder must prove that a defendant knows of the patent and actively and knowingly aided and abetted another's direct infringement. In so holding, the Federal Circuit confirmed the Court's precedent in Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544 (Fed. Cir. 1990) and rejected the Court's precedent in Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464 (1990) to the extent it had been interpreted to require only proof that the purported infringer merely intended to engage in acts that constitute direct infringement.
In applying this standard to determining if ITL induced infringement, the three-judge panel held that the trial court "certainly did not abuse its discretion" in finding no infringement under section 271(b). Rather, the Federal Circuit found the record contained evidence that ITL did not believe its device infringed, including evidence that (1) ITL contacted an Australian attorney, who concluded ITL's accused product would not infringe; (2) JMS and ITL obtained letters from U.S. patent counsel advising that ITL's product did not infringe; and (3) testimony by an owner of ITL who participated in the design of the accused product that ITL had no intent to infringe the '311 patent.
In a November 9, 2006 decision, the Federal Circuit overturned a lower court decision and found the asserted patent anticipated due to prior art and, therefore, invalid. In a decision by Circuit Judge Gajarsa, a unanimous three-judge panel rejected a finding of validity in which the U.S. District Court for the Northern District of Illinois concluded that even though the prior art reference disclosed the same method and composition, it was directed to a different purpose and, therefore, did not anticipate the patent at issue.
Abbott Laboratories and Central Glass Company, Ltd. ("Abbott") sued Baxter Pharmaceutical Products, Inc. and Baxter Pharmaceutical Healthcare Corp. ("Baxter") for infringing a patent directed to an improvement for delivering sevoflurane, an inhalation anesthetic, to patients. The composition of sevoflurane was well-known when Abbott shipped its initial sevoflurane product. However, due to degradation of Abbott's original sevoflurane product on the shelf, Abbott was forced to issue a recall.
After investigation, Abbott discovered the source of the problem was exposure of sevoflurane to Lewis acids, which cause sevoflurane to degrade. Abbott discovered that adding water protects sevoflurane from the degradation reaction since the water binds to and deactivates the Lewis acids. A deliberate addition of water to sevoflurane was counter to the conventional wisdom of the time. Thus, Abbott obtained Patent No. 5,990,176 ("the '176 patent") directed to method and composition for degradation-prevention of sevoflurane.
At trial, Baxter contended that Patent No. 5,684,211 ("the '211 patent") anticipated the '176 patent. The prior art '211 patent disclosed a technique for purifying sevoflurane for use as an inhalation anesthetic that involved the addition of water. The District Court concluded that the '211 patent did not anticipate, noting that prior to the '176 patent no one knew Lewis acids degraded sevoflurane and no one was aware of the stabilizing effect water would have to prevent Lewis acid degradation. Relying on Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001) in which the Federal Circuit held that "newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent," the District Court concluded that the '211 prior art patent did not anticipate the '176 patent since it was not "directed to the same purpose," noting that the prior art disclosed adding water as an intermediate step in the manufacture of sevoflurane and its purpose was not to produce sevoflurane in its final useable form.
In addressing the intersection of the discovery of unknown properties and anticipation, the Federal Circuit first cited extensive case law, going as far back as 1892, to reinforce the principle that a reference may anticipate even when the relevant properties of the prior art disclosure were not appreciated at the time. The Court proceeded to reject the District Court's application of the purpose-based distinction of Bristol-Myers Squibb, noting that this case was only applicable to process claims, not composition claims. The Federal Circuit also disagreed with the lower court's conclusion that the processes described in the '176 patent were not "directed to the same purpose" as applied in Bristol-Myers Squibb. Finding that both the '211 and '176 patents disclosed methods which help to ensure that sevoflurane will be of high purity at the time it is administered to patients, the Federal Circuit concluded the lower court had taken an overly narrow view of the purpose of the invention disclosed in the '211 patent. As a result, the Federal Circuit reversed and found the '176 patent invalid as anticipated by the '211 patent.
In an appeal of a claim construction ruling, the Federal Circuit emphasized that a heavy presumption applies when traditional means-plus-function terminology is absent in the claim. In the September 13, 2006 ruling, the Federal Circuit found the term "circuitry" by itself connotes structure and, when combined with claim language describing the function of the circuit, provided sufficient structure to one of ordinary skill in the art to avoid treatment under 35 U.S.C. §112 ¶6.
Plaintiffs Massachusetts Institute of Technology and Electronics for Imaging, Inc. asserted Patent No. 4,500,919 ("the '919 patent"), which is directed to a color processing system for producing copies of color originals, against a total of 214 defendants. Plaintiffs appealed a claim construction ruling by the U.S. District Court for the Eastern District of Texas after entry of stipulated final judgment dismissing the infringement claims. The Federal Circuit vacated the claim construction ruling and remanded the case for further analysis of the disputed claim construction terms of the '919 patent. The claim limitation in dispute and the subject of the claim construction ruling was: "aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals."
The Eastern District of Texas concluded that aesthetic correction circuitry was a means-plus-function limitation and, therefore, pursuant to the statutory requirement of 35 U.S.C. §112 ¶6, the claim scope was limited to the structure disclosed in the specification of the '919 patent. In reversing, the Federal Circuit began its analysis by noting that because this claim limitation did not contain the term "means," there is a presumption that the claim limitation is not a means-plus-function limitation. However, the presumption can be overcome if it is shown that the claim term fails to recite "sufficiently definite structure" or recites function "without reciting sufficient structure for performing that function."
Relying on technical dictionary definitions, the Court found the term "circuitry" by itself connotes structure in contrast with generic terms such as "mechanism" and "device." The Federal Circuit also noted its own precedent in which the term "circuit," combined with a description of the function of the circuit, provided sufficient structure to one of ordinary skill in the art to avoid treatment under 35 U.S.C. §112 ¶6. With respect to the '919 patent, the Court found the disputed claim limitation did not describe a mere circuit, but rather provided further structure by describing "the operation of the circuit" and, therefore, sufficient structure to avoid §112 ¶6 treatment.
The Federal Circuit emphasized the strength of the presumption that 35 U.S.C. §112 ¶6 does not apply when the term "means" does not appear in a claim and noted that the circumstances have to be unusual to overcome the presumption. The Court also rejected an approach in which means-plus-function treatment applies unless the claim term denotes a specific structure, stating "we have held that it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function," and cited Lighting World Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004).
In this October 27, 2006 decision, the Federal Circuit revisited the long-standing doctrine of Lear v. Adkins, 395 U.S. 653 (1969) and held that a licensee is not relieved from royalty payments unless it actually ceases payment of royalties and provides notice to the licensor that the reason for ceasing payment is because the licensed patent is deemed invalid.
In Lear, the Supreme Court abolished the doctrine of licensee estoppel that had barred licensees from challenging the validity of a patent upon finding the doctrine inconsistent with patent and antitrust policy. As a result, a licensee may cease payments due under a license and contractual royalty provisions will not be enforced during the time the licensee is challenging patent validity in the courts. The Federal Circuit subsequently clarified that the Lear doctrine does not prevent a patentee from recovering royalties until the date the licensee first challenges the validity of the patent. Studiengesellschaft v. Shell Oil, 112 F.3d 1561 (Fed. Cir. 1997). In Go Medical, the Federal Circuit again addressed the issue of when the licensee's obligation to pay royalties expires where the underlying patent is eventually declared invalid.
In 1988, the plaintiff exclusively licensed its rights under Patent No. 4,652,259 ("the '259 patent") to defendant's predecessor-in-interest, Medical Marketing Group, Inc. ("MMG"). The '259 patent is directed to a catheter that reduces the risk of urinary tract infections. In 1992, MMG urged the plaintiff to sue when C.R. Bard entered the market with a competing catheter. As a result of a patent litigation against C.R. Bard, the '259 patent was declared invalid by a District Court in March 1999. In August 2000, the Federal Circuit reversed the District Court's decision and the case settled shortly thereafter.
Meanwhile, in June 1999, MMG notified the plaintiff that in view of the District Court's invalidity ruling, it "no longer had a contract" with the plaintiff and indicated that it was placing its royalty payments in escrow until the validity of the patent was resolved on appeal. Thereafter, the plaintiff terminated the license agreement in August 1999 and sought damages for patent infringement and breach of contract. The litigation ended in favor of MMG as the '259 patent was once again found invalid. The jury awarded damages on the breach of contract theory. However, the District Court applied the Lear doctrine to preclude royalties owed after March 1999, when the '259 patent was initially found invalid in the C.R. Bard litigation.
On appeal, the Federal Circuit vacated the District Court's reduction of contract damages and remanded the case. Pursuant to Lear, the Federal Circuit reiterated its prior holding that a licensee "cannot invoke the protection of the Lear doctrine until it (i) actually ceases payment of royalties, and (ii) provides notice to the licensor that the reason for ceasing payment of royalties is because it has deemed the relevant claims to be invalid." Studiengesellschaft v. Shell Oil, 112 F.3d 1561 (Fed. Cir. 1997).
Under the facts of the case, the Court found that the C.R. Bard litigation had no effect on the contractual relationship between the parties since the invalidity finding was still pending appeal. The Court also noted that MMG's June 1999 notification did not state that it was ceasing payment because it deemed the '259 patent invalid. Instead, the June 1999 letter reported that MMG was placing the royalty payment in escrow until the validity of the patent was resolved on appeal. The Federal Circuit also found it significant that MMG did not file its own declaratory judgment suit and concluded that MMG was contractually obligated to pay royalties until the plaintiffs terminated the licensee agreement in August 1999.
In an appeal from the U.S. District Court for the Southern District of Iowa, the Federal Circuit concluded that even when a jury makes advisory findings that the patentee failed to disclose material information to the Patent Office and acted with deceptive intent, "the court retains discretion to decide whether the patentee's conduct is sufficiently culpable to render the patent unenforceable." Citing to Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d. 1354, 1359, 1372 (Fed. Cir. 2003). In light of the lower court's findings that the Poultry Science article was not "highly material" and that the showing of deceptive intent was "not compelling," the Federal Circuit affirmed the District Court's holding declining to render the '714 patent unenforceable.
This patent infringement suit involved two patents: Patent No. 5,382,714 ("the '714 patent"), which is directed to a purified lutein product containing no traces of toxic chemicals, and Patent No. 5,648,564 ("the '564 patent"), which claims a process for producing purified lutein. Lutein is a carotenoid incorporated into dietary health supplements. The '714 patent was owned by Catholic University of America and exclusively licensed to plaintiff Kemin Foods, L.C., and the '564 patent was assigned to Kemin Foods. Defendant Pigmentos Vegetales Del Centro S.A. DE C.V. ("PIVEG") counterclaimed, seeking a declaratory judgment that the two patents were invalid as obvious and unenforceable based on alleged inequitable conduct before the Patent Office.
With respect to the '714 patent, both the invalidity and inequitable conduct allegations stemmed from an article in Poultry Science, which was known to the president of Kemin Foods during prosecution of the '714 patent but was never disclosed to the Patent Office. In order to establish a patent is unenforceable for inequitable conduct, the Federal Circuit confirmed that a District Court must find the patentee failed to disclose material information to the Patent Office and acted with deceptive intent, and that the patentee's conduct was "sufficiently culpable" to render the patent unenforceable. Although Kemin Foods' president was not a named inventor, defendant alleged that he was sufficiently involved with prosecution of the patent to have acquired a duty of disclosure to the Patent Office.
At the end of trial, the jury found that the defendant failed to meet its burden of proving by clear and convincing evidence that the asserted claim of the '714 patent would have been obvious in view of the Poultry Science article. However, in response to special interrogatories posed by District Court Judge Gritzner of the Southern District of Iowa, the jury, acting in an advisory capacity, found the Poultry Science article was material to the patentability of the '714 patent and that the president of Kemin Foods withheld the article with deceptive intent. Nonetheless, the District Court concluded that the "levels of materiality and intent are not so high as to warrant a finding of culpable intent such that the '714 patent should be held unenforceable." Defendant appealed.
The Federal Circuit affirmed the District Court's ruling on inequitable conduct. With respect to materiality, the Federal Circuit found no particular evidence or any argument by defendants that would compel a finding the prior art was "highly" material. In so finding, the Federal Circuit noted that the prior art did not render the patent invalid and that the evidence suggested that the method disclosed in the article may not work as intended. Relying on this evidence, the Court concluded that the withheld article was not "highly material."
Turning to the issue of intent, the Federal Circuit agreed with the District Court's conclusion that PIVEG did not make a "strong showing of intent to deceive" the Patent Office. The Federal Circuit noted that the '714 patent was directed to lutein fit for human consumption, and the Poultry Science article did not contemplate using lutein in humans. Because of the difficulty in removing toxic chemicals from luteins, a necessary step before human consumption, the Federal Circuit found the explanation from Kemin Foods' president that he didn't consider the article material plausible. The Federal Circuit also noted that Kemin Foods' president was only tangentially involved in the prosecution of the underlying patent as evidenced by the more than two-year lapse between the time he became aware of the article and the start of prosecution.
On October 27, 2006, the Supreme Court agreed to review the question of whether damages for infringement of a U.S. patent can extend to software products copied and sold abroad. The controversy arises from a dispute between Microsoft and AT&T concerning digital speech compression code in Microsoft Window's operating system software. The case has potential significant ramifications for international patent licensing and could resolve the question of whether U.S. patent law extends to software products sold outside the United States.
Microsoft sends master copies of the Window's operating system software to foreign manufacturers for copying and assembly into computer systems sold abroad. In July 2005, the Federal Circuit affirmed a ruling that Microsoft was liable for both U.S. and foreign sales of the Windows software. Microsoft was found liable for the foreign sales under 35 U.S.C. §271(f), which permits a finding of patent infringement if "a substantial portion of the components of a patented invention" are supplied from the United States "in such manner as to actively induce the combination of such components outside the United States."
The specific issues certified by the Supreme Court for consideration are: (1) whether digital software code may be considered a "component of a patented invention" under section 271(f)(1), and (2) whether copies of such a "component" made in a foreign country are "supplied ... from the United States" under section 271(f)(1). Oral arguments are scheduled for February 21, 2007.
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