FINAL EXAMINATION
PATENT LITIGATION (LAW-875C)
PROFESSORS BECK AND MORRILL
SPRING 2004
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1. You have two (2) hours to complete this exam.

2. This is an open book, open materials exam. You may use any notes, books or other written materials to assist you in responding to the questions.

3. There are two essay questions on this exam. Each question has equal weight. Answer each question as fully as you can, citing any appropriate cases, public policies and statutes that are relevant. Remember to allocate your time among the two questions.

4. Do not write on both sides of the page. Write legibly or print if your handwriting is difficult to read. If I cannot read your response to a question, your grade will be adversely affected.

5. Write your exam number on your exam envelope, all used blue books and at the top of this exam question packet. Put your student exam # at the top of this page, each page of questions, and each blue book. Do not use your name, student ID number or Social Security Number on any exam materials.

6. At the conclusion of the exam, return all test materials, including blue books, scratch paper, and this exam question packet to the envelope and submit it to the proctor. Do not seal the envelope. Students who do not return all exam materials at the end of the exam may not be graded.


QUESTION 1


RI Company is the assignee of the ‘001 patent, which claims a type of integrated circuit, or IC, called a power MOSFET*. An IC contains a silicon chip imprinted with electrical circuitry, and has electrical connections which connect the chip to the outside. The silicon chips are made, hundreds at a time, on a six inch silicon wafer, and after processing of the wafer is finished, the chips are cut out and packaged in ICs. RI’s patent is to the entire integrated circuit, and not just to the chip that is inside the integrated circuit.

Sungsam (“Sung”), a Chinese electronics company, was selling a MOSFET IC in the United States which RI claimed infringed its ‘001 patent. RI sued Sung for patent infringement. The claims called for an IC containing a chip with “a first cellular polygonal region.”

“Polygonal region” was identified as a disputed claim term. At the Markman hearing, Sung argued that the “polygonal region” must have perfectly straight sides. Sung relied on the dictionary definition of a polygon (“a closed figure bounded by straight lines”) and on the patent drawings, which show the relevant polygons with straight sides. (The specification of the ‘001 patent does not discuss the lines bounding the polygonal region.) RI argued that “polygonal region” meant a closed figure with generally, but not necessarily perfectly, straight sides. RI’s expert testified that one of ordinary skill would recognize that a typical chip manufacturing process would not produce structures with perfectly straight sides, because the process causes blurring of straight lines in the chip layout.

What arguments will each side make on the construction of “polygonal region” and who should prevail? Feel free to rely on any of the cannons or rules of claim construction.

*Although not important to the problem, MOSFET is an acronym for Metal On Silicon Field Effect Transistor or Metal Oxide Silicon Field Effect Transistor, depending on whom you talk to.


QUESTION 2

You represent Upstart Inc. a small software company located in the Bay Area. Upstart has developed a calendaring program for cell phones. Users can maintain personal calendars on their cell phones, and can update those calendars using Outlook on their personal computers. Upstart markets its software to cell phone companies that provide the software to users as part of the cell phone package.

Mega Corp., based in Wheeling West Virginia, is a large computer company. Last week, its VP of Business Development contacted Upstart and asked for a meeting with Upstart’s CEO to discuss a business proposition. Two lawyers from Mega attended the meeting, a licensing attorney and a litigator. The licensing attorney told Upstart that Mega was a leader in the development of remote calendaring systems, and has a large patent portfolio, including specifically the ‘123 patent which Mega believes covers Upstart’s software. The ‘123 patent was filed in 2001 and issued last year, and Mega says it has already been licensed to several other software companies. Mega was willing to license it to Upstart for a royalty of 25% on past and future sales. The litigation attorney explained to Upstart that Mega was aggressive in protecting its intellectual property rights and had never lost a patent case in West Virginia, where it was the largest employer. He also pointed out that the West Virginia district court is a “rocket docket” where patent cases are usually tried within 18 months of filing.

The Mega attorneys also explained that they considered litigation as the last resort, and that Mega preferred to negotiate a license for the ‘123 patent without suing Upstart and Upstart’s customers for infringement of the ‘123 patent. They asked Upstart to respond within 10 days to their proposal or to demonstrate to their satisfaction that the ‘123 patent does not cover Upstart’s product.

Upstart says that it would be impossible to pay anything like a 25% and that its software is completely different from what Mega’s ‘123 patent claims. In addition, Upstart is aware of an earlier software program distributed by IBM that anticipates the claims of the ‘123 patent.

Question 2.


END OF EXAM