Exam Ticket Number: I N T E L L E C T U A L P R O P E R T Y : P A T E N T L A W Professor Wagner Spring 2001

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1 Exam #: Exam Ticket Number: I N T E L L E C T U A L P R O P E R T Y : P A T E N T L A W Professor Wagner Spring 2001 FINAL EXAMINATION Exam first available: April 24, 2001 Exam last available: May 4, 2001 Time Limit: 6 hours. (No extra time for LLM students.) INSTRUCTIONS 1. The exam consists of eight total questions five short answer questions and three essay questions. A total of 100 points are available; the points for each question are indicated. 2. Start each question on a new page. Be sure to designate clearly which question you are answering. 3. Write your exam ticket number on EVERY page of your answers, as well as the first page of the exam. 4. Be sure to read each question carefully and completely. 5. You have up to six hours to complete this exam. You may allocate your time as you wish, but be sure to allocate ample time for printing and returning the exam to the Registrar s office at the end of your six-hour period. 6. All answers must be typed/printed. (Computer disks will not be accepted by the Registrar.) Please double-space and use a font of at least 11 pts. 7. Each answer has a maximum word limit. DO NOT WRITE BEYOND THE WORD LIMIT FOR EACH ANSWER. Each violation of the word limit will result in a letter grade reduction in your final grade. Note, however, that the word limit is not a suggestion write only as much as you think you need to answer the question. 8. The exam is open book and open notes. The only restriction is that you may not get assistance from another human being. Attribution of sources of ideas or language is not required, though citations are encouraged and will be viewed favorably. 9. Do not discuss the content of the exam with anyone until 5:00 PM on May 4, Good luck, and have a great break from school, whether of the temporary or permanent variety. page 1 of 9

2 SHORT ANSWER QUESTIONS 1. Company 1 and Company 2, both located in California, are in an innovation race, seeking invention A+B+C+D. On March 1, 1998, researchers at Company 1 conceive of the idea of combining A+B+C+D. On March 15, 1998, researchers at Company 2 conceive of the same combination as well, and post news and a detailed description of their achievement on the company web site that same day. Both companies continue their research and development at a brisk pace. Company 2 files a patent application on March 1, 1999; Company 1 files its application on April 1, Can Company 1 patent its invention? Company 2? Explain. [4 points, 200-word limit.] 2. Helen offers her patented tape dispenser for sale under a contract that requires that the purchaser buy Helen s transparent tape. Under what circumstances, if any, will Helen be guilty of patent misuse? Why? [4 points, 200-word limit.] 3. During the January - March 2000 admissions season, the University of Pennsylvania Law School began using a new method of admitting students, involving the following steps: [a] [b] [c] [d] [e] [f] determining the undergraduate GPA, the LSAT score, and Undergraduate institution for each applicant; determinining the likelihood that each applicant would accept an offer of admission from Penn; categorizing each applicant according to likelihood of accepting an offer of admission; inviting applicants categorized as unlikely to accept an offer of admission to apply for a special merit scholarship program; admitting those students who apply for the merit scholarship program; and, rejecting those who fail to apply for the merit scholarship. The Dean, mentioning that he heard that some types of business models are now patentable, asks you today whether the school can patent this novel method of admitting students. Can it? Why or why not? [4 points, 200-word limit.] page 2 of 9

3 [short answer questions, continued] 4. William and Pauline are researchers working for IBM, developing new semiconductor manufacturing techniques. In January 2000, William files an application for a patent disclosing the use of a copper-titanium alloy for semiconductors. The patent issues in March In March 2000, Pauline invents the use of a copper-titanium-aluminum alloy for semiconductors, and files a patent application in April In April 2001, the examiner rejects Pauline s application as being obvious in light of the combination of William s patent and a prior art reference disclosing the use of aluminum alloys for semiconductors. Assuming that the motivation to combine these references exists, is the examiner s rejection correct? Why or why not? [4 points, 200-word limit.] 5. When, if ever, can a patentee receive lost profits damages for unpatented articles? What about damages for unpatented articles based on a reasonable royalty standard? [4 points, 200-word limit.] page 3 of 9

4 6. ESSAY QUESTION FastScooters, Inc. owns US Patent No. 789, entitled Personal Transportation Device, and generally directed to a motorized scooterlike vehicl, where a person stands on a small platform to ride. The 789 patent has two figures, as follows: 789 Patent, Figure Patent, Figure 2 The 789 patent has a single claim, which as originally filed, stated: 1. A personal transportation device comprising: a motor no greater than 100 cubic centimeters in displacement; a platform disposed approximately parallel to the ground during normal operation; two pairs of wheels supporting said platform; a steering shaft connected to said platform; and, a handlebar. While generally describing the embodiments shown in figures 1 and 2 above, the written description of the 789 patent does not provide any special definitions for the claim terms. [question 6 continued on next page] page 4 of 9

5 [question 6, continued] In the course of prosecution, the applicant amended the claim. The final claim as issued reads: 1. A personal transportation device comprising: a motor no greater than 100 cubic centimeters in displacement; a platform disposed approximately parallel to the ground during normal operation; where the platform is of a size suitable to allow a person to stand; two pairs of wheels supporting said platform; where the axis of said wheels is disposed approximately parallel to axis of the shoulders of the operator during normal operation; a steering shaft with a top and bottom end, wherein the bottom end is connected to said platform; and, a handlebar connected to said top end of said steering shaft. These amendments were not prompted by any rejections by the examiner, and were accompanied by a statement by the patentee explaining that: These amendments are made to more clearly describe what the applicant regards as his invention and are not intended to alter the scope of the claim. [question 6 continued on next page] page 5 of 9

6 [question 6, continued] Wheels, Inc., the primary rival to FastScooters in the market for small personal transportation vehicles, has begun to sell a scooter it calls the Glider The Glider 3000 is a two-wheeled vehicle with a 95 cubic centimeter engine, shown in the figure on this page. The Glider 3000 vehicle, by Wheels, Inc. FastScooters has filed suit in US District Court, alleging that the Glider 3000 device infringes claim 1 of the 789 patent. You are a law clerk to the judge assigned the FastScooters v. Wheels case. Write a bench memo to your judge, analyzing whether -- based on the facts above -- FastScooters is likely to prevail on its claim of infringement. If additional facts are necessary to your analysis, explain why they are important and how they would effect your analysis. [35 points, 2000-word limit] [end of Question 6] page 6 of 9

7 7. ESSAY QUESTION Sally, a researcher working for OrangeCo, a major fruit grower and distributor, has been working for years to develop an improved method for freezing fresh fruit for shipment. Such methods have three basic steps: the selection and arrangement of the fresh fruit into a container, the introduction of a small quantity of water into the container, and the rapid freezing of the fruit and water mixture. The presently-available methods show that the freezing step is conducted at a rate such that the fruit goes from room temperature to 10º Fahrenheit in between 8 and 12 seconds. (10º Fahrenheit is the standard temperature at which fresh-frozen fruit is shipped and stored.) In early 1998, Sally has a general idea that the improved method she is looking for will involve an even more rapid freezing step ( ultrarapid less than 6 seconds), and the substitution of another fluid for the water. She then begins experimenting with combinations of liquid and freezing rates. Because the technology for extremely ultra-rapid freezing is still in the development stage itself, Sally establishes a relationship with Jennifer, the lead engineer for ColdSpot, Inc., a major freezing equipment supplier. Throughout 1998, Sally sends Jennifer samples of fruit and liquid combinations; Jennifer tests them in the latest ColdSpot prototype freezers, and sends Sally the collected data relating to the speed and reliability of the freezing step. Sally then retrieves the samples and conducts further tests (related to taste and freshness). Using all of the information, Sally then selects new parameters for the next experiment. In November and December 1998, Jennifer sends Sally technical specifications for ColdSpot s next generation of freezers ( Model 2000 ), which will allow for a freezing step to occur as quickly as 4.5 seconds. The Model 2000 freezers ship in May In June 1999, as a result of the 1998 experimental process, Sally settles on the use of a specially-formulated purified glycerin as the liquid, and a freezing step of about 4.5 seconds. She files a patent application naming herself as the inventor, and includes the following claim: 1. A method for freezing fresh fruit comprising the following steps: selecting a desired quantity of fresh fruit; placing said fruit into a suitable container; introducing liquid glycerin into said container with said fruit; and, freezing said container and its contents for approximately 4.5 seconds or less. [question 7 continued on next page] page 7 of 9

8 [question 7, continued] In the written description, Sally fully describes the formula for the liquid glycerin, as well as the possible sizes and composition of the container. The written description describes the freezing step as accomplished by the use of commercially-available freezers, and explains how the ultra-rapid freezing step is advantageous, but does not specifically mention ColdSpot or Jennifer at any point -- nor does Sally make any other filings to the PTO in this vein. In March 2000, the PTO issues US Patent No. 123 to Sally (assigned to OrangeCo). The claim is unchanged. You ve been hired by OrangeCo to analyze the strength of the 123 patent. Write a brief memorandum assessing -- based on the facts above -- the validity and/or enforceability of the 123 patent. If applicable, discuss steps that OrangeCo might take remedy any problems. [25 points, 1500-word limit.] [end of question 7] page 8 of 9

9 8. ESSAY QUESTION A United States Senator has recently introduced legislation that would alter the text of 35 U.S.C to read as follows: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any reasonable person to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The remainder of section 112 would be unchanged. The Senator, in writings accompanying the bill, suggests that such a change is necessary to keep the United States at the forefront of international research and development, by ensuring that inventors who receive a patent do their part to inform the public of the nature of their invention. Your boss, another Senator, asks you to evaluate this proposal. Specifically, she asks you to write a short memo answering the following specific questions: 1. Will this amendment have effects beyond Section 112? Explain. 2. Overall, how do you think that this amendment relates to the various goals of the US Patent system? Are there winners and losers? Will society benefit? 3. Might there be other ways that Congress could legislate to address the problem suggested by the sponsoring Senator? [20 points, 1250-word limit.] [end of exam] page 9 of 9