Patent and Trade Secret Law
Fall 1998
Final Examination


Instructions:

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 well.

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.








Question One

Background:

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.

Page 2 of 5

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?






Question Two

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?





Question Three

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 more quickly.

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?