Patent and Trade Secret Law
You will be asked to analyze three fact patterns and answer specific questions You may bring in
any written materials of your own that you desire. Your answers should be provided in a blue-book
answer booklet. Write clearly and legibly. Be particular when you rely upon statutory precedent
by stating the section of the statute you are relying upon. Do not make up facts. If you draw
inferences to make answering a question easier, be sure that you consider alternative inferences as
You will have three hours for the examination. Each question is equally weighted. You are
expected to display your own analysis. I do not expect, hope or desire that you try to ascertain what
I think the correct answer is. Please do show the critical basis for conclusions you reach, if you
think that your conclusions are not clear ab initio.
The personal computer industry has been marked by great progress in the past, two decades. This
progress has been in numerous technologies, both in the field of hardware and the field of
software. Numerous hardware companies have developed over the course of years, some very
large, some quite small, but each earmarked with innovative designs, implementations or processes
at their core. In the past five years one of the increasingly profitable areas of development has
been in the field of graphics acceleration. A small company in Berlin, New Hampshire, Northwood
Graphics, has been working in this field. Through the work of its founder, Jeff Adams they have
developed a radical new product.
Jeff has an unusual background in that while he was trained as an engineer, rather than go directly
into the electronics field he had worked in the field of analytical spectroscopy for a number of
years at the University of Arizona's astronomy department. In the astronomy department he
developed a method of developing three dimensional models of far off stars through the use of
LaPlacian transforms. Essentially, the spectra of a star would be broken down and transformed
into a 3 dimensional model. Thus 2 dimensions could be transformed into 3 dimensions and vice
versa. Jeff left Tucson, Arizona and the University in 1990 to form his own business. For several
years he provided complex engineering models to various companies, but finally decided to make a
product. At first he made prototype graphics cards for larger companies, but in the past two years
decided to develop his own product.
In 1997 he started work on a 3-D graphics card that would render a physical form and a textured
outer cover, all on one card. In September of 1998 Jeff filed a patent application with the United
States Patent Office. His utility application claims:
1. A graphics accelerator card comprising:
a. a calculation engine for calculating a wire-frame dimensional shape; and
b. a texture covering calculation engine comprising
b(1). A texture calculation model;
b(2). A cover shape calculator.
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The examiner rejects the claim based upon three different pieces of evidence. The first piece of
evidence is a written publication made prior to any invention or priority date Adams can consider
(hereafter the reference is referred to as "A". "A" relates to the field of computer peripherals,
which includes graphic accelerators and the reference teaches a wire-frame calculation method
and a processor or calculator for practicing the calculation. The second piece of evidence is an
issued U.S. Patent that describes a texture calculation model, hereafter this reference is referred
to as "B1".
The third piece of evidence is the experience of the examiner as a graduate student of
spectroscopy where he learned the general model of how to calculate cover shapes. He cannot
point to nay reference that teaches this method, but insists that the method is used at several
research universities, including the university of Arizona. The examiner is correct in his assertion
that these transform models are well known in spectroscopy to convert 2 dimensional data into 3
dimensional models. The examiner insists that this method is well known to be reversible as well.
There is no written substantiation of the examiner's assertion, however.
Question: Can the examiner rightfully maintain a rejection of the claimed invention as being obvious
over the prior art? What is James' best argument?
Three parties have each filed patent applications in the United States Patent Office for an
automatic tunnel digging mechanism. Party A filed her patent application in April of 1998 even
though she conceived of the invention in December of 1995. Party A was busy in the Peace Corps
and did not have time between 1995 and 1998 to work on the invention.
Party B filed his application in June of 1998, but can prove that he had a working device that was
used in a controlled experiment at the "Big Dig" in Boston as of February 1998, having worked
diligently from his research proposal draft that he showed to his employer in January of 1997.
Party C made detailed drawings of their invention in April of 1996 and diligently tested their device
until they finally filed an application on December 1, 1998. Their device never fully worked, but
Party C used all available resources to make it work.
Each of the parties conducted whatever work they undertook in the United States of America or
one of its possessions.
Who should get the patent assuming each has claimed the invention identically? If Party A had a
working prototype in January of 1996, would that change result of your previous analysis?
Umax Technologies, located in Industry City, California, is the leading, indeed until recently, the
only, source of cameras for surround viewing films. These are the films shown in theaters that
immerse the viewer in the experience depicted by the film. A recent example of this type of movie
was entitled "Glass Barrel Ride" and depicted the plunge over the Niagra waterfalls in a glass
barrel. What is astounding is that Umax knows how to accomplish this effect using a photographic
method and production technique that utilizes standard film. Don't ask, I have no idea how they do
this, and frankly very few people do know. Since 1963 Umax has sold equipment to display their
films and Umax also runs theaters around the world. They have never sold the equipment used to
make the surround vision films that are sent to the various theaters. The equipment has not
changed for the past twenty years, but nevertheless, no one else has entered the market.
Two years ago Frank Pritchard was hired by Umax to help run its film distribution department.
Umax is not a large business if you count the number of employees it has. The film making
operation, along with the film making machines, is kept in a light industrial building. On occasion
Frank would drop into the building to pick up recently manufactured films in order to ship them out
Over the course of time Frank became aware of the general concepts used to run these machines.
He suspected, however, that the machines were very precise, but prone to wear out quickly. Frank
collected worn-out parts that were going to be thrown out. No one complained about this practice.
Frank has recently left the employ of Umax and is interested in setting up a competing business.
He has a two year non-compete agreement and a. two year confidentiality agreement.
Umax is concerned that Frank may be able to copy their secret machines given his knowledge of
their workings and his possession of the worn out parts.
What legal efforts can be made to stop Frank from setting up a competing business?