1. You have two (2) hours to complete this exam.

2. This is an open book exam.

3. This exam consists of three essay questions with point allocation as indicated on the examination.

4. Write your exam number on your exam envelope. Put your correct 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.

5. At the conclusion of the exam, return all test materials, including blue books, scratch paper, and this exam 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.

GOOD LUCK!

Questions

Facts part 1.

V formation owns U.S. Patent No. 5,803,466. The ‘466 patent claims a type of in-line skates. On August 10, 2004, a lawyer from a large firm (which is well known for doing patent litigation) representing V Formation sends Holley Skates a letter stating:

It has come to my client V Formation’s attention that Holley has recently begun the production and sale of a new line of in-line skates. I have compared V Formation’s U.S. Patent No. 5,803,466 (copy enclosed) with one of the new Holley skates and find that the new skates have all of the features described in claim 1 of the patent.

Since it appears that claim 1 of the ‘466 patent reads directly on the new Holley skates, we request that you confer with your intellectual property attorneys concerning the patent and the likelihood of infringement by the new Holley skates.

As you probably know, a patent gives its owner the right to exclude others from making, using, selling, offering for sale, and importing goods that infringe the claims of the patent. Damages for patent infringement can include the loss of profits by the patent owner, attorneys’ fees, prejudgment interest, and up to three times actual damages if the infringement of the patent was willful.

With such severe damages likely to be assessed for infringement, we suggest that Holley carefully compare the ’466 patent with the new Holley skates in order to make Holley’s own determination with regard to infringement.

If Holley concludes that there is no infringement, we request that Holley explain in detail the reasons for its conclusion.

If you or your counsel have any questions, let me know. We will expect a written response to this letter within two weeks.

The August 10, 2004 letter was the only communication between V Formation and Holley Skates prior to Holley’s filing of a suit for declaratory relief in the Northern District of Illinois, located in Chicago, on September 1, 2004. Holley sought a declaration that the ‘466 patent was not infringed and invalid. On October 19, 2004, V Formation filed suit against Holley Skates in the Northern District of Georgia for infringement of the ‘466 patent.

The following facts exist:

1. Holley is a Delaware Corporation with its principal place of business in Bowling Green, Kentucky.

2. V Formation is a Georgia corporation with its principal place of business in Dahlonega, Georgia, which is in the Northern District of Georgia.

3. Neither Holley Skates nor V Formation have any employees or place of business in Illinois, but both have sold their products there, as well as in the Northern District of Georgia.

4. The cost and effort to travel from Bowling Green to Chicago or Dahlonega are about the same.

6. Some parts for Holley Skates’ new in-line skates are made in Bourbon, Indiana, 99.7 miles from Chicago and therefore just within the 100 mile limit for the range of subpoenas from the Northern District of Illinois. Holley Stakes states that it intends to call one of more of the persons involved with the manufacture of those parts in Bourbon as witnesses when the case is tried.
7. V Formation has ten times the annual sales and ten times the profits of Holley.

Question 1. 35 points. If V Formation moves to dismiss the case brought in the Northern District of Illinois by Holley Skates on the ground that it is an improper declaratory relief action, what should the Court do? Please give your analysis, and discuss which of the numbered facts or parts of the letter above are important to the analysis.

Facts Part 2.

The issues described above are resolved and the litigation between V-Formation and Holley Skates continues. V Formation asserts that claim 1 of the ‘466 patent is infringed. Claim 1 claims an in-line roller skate including a boot. The claimed boot has metal toe and heel plates with downwardly extending metal flanges, or edges, attached to each plate. The flanges define a cavity or channel under the toe and the heel of the boot. A “sidewall”, which contains the skate wheels, is mounted in the cavity or channel formed by the flanges.

An annotated set of figures from the ‘466 patent is attached to this examination should you wish to refer to it.

One of the elements of claim 1 reads as follows:

a plurality of fasteners for releasably attaching said sidewalls to said toe and heel plate flanges

Holley Skates admits that its in-line skates have all of the elements of claim 1, except the “plurality of fasteners” claim element quoted above. Holley Skates contends that, since its sidewalls are attached to its toe and heel flanges with rivets, its skates do not have “a plurality of fasteners for releasably attaching said sidewalls to said toe and heel plate flanges”. V-Formation contends that the term “fasteners for releasably attaching” does include rivets, because a rivet can be removed by filing off its head. The parties thus dispute the proper claim construction of “fasteners for releasably attaching” in the claim element quoted above, and in particular whether “fasteners” includes rivets.

At the claim construction hearing, five items are provided to the judge by the parties for construction of the claim term “fasteners for releasably attaching”. They are:

1. The specification of the ‘466 patent, which states that “[I]f one of the sidewalls needs to be removed from the skate frame to be replaced, it can easily be removed without special tools or skills.”

2. A dictionary definition which defines “releasable” as “Intended or configured to release: releasable ski bindings.”

3. A dictionary definition which defines “rivet” as “a metal bolt or pin having a head on one end, inserted through aligned holes in the pieces to be joined, and then hammered on the plain end to as to form a second head.”

4. The Meibock ‘310 patent on in-line roller skates, which was cited during the prosecution of the ‘466 patent and is listed on the cover sheet of the ‘466 patent. The specification of the Meibock patent explains that the toe and heel plates of in-line skates can be “permanently attached through the use of rivets or releasably attached through the use of fasteners such as screws or bolts.”

5. The Federal Circuit decision in K-2 Corp. v. Salomon, S.A., which states that “Screws, unlike rivets, are meant to be unscrewed, that is, to be removed. A rivet, to the contrary, is meant to remain permanent, unremovable unless one is bent on breaking the permanent structure apart.”

Question 2. 35 points. Please (i) state whether each of five items provided to the Court during claim construction is intrinsic or extrinsic evidence, (ii) rank each of the five items as to its relative weight in claim construction and briefly explain your ranking, and (iii) state who should win on the issue of construction of “fasteners for releasably attaching”, and why.

Question 3. 30 points. Assume that Holley Skates wins the issue of claim construction, and its in-line stakes therefore do not literally infringe claim 1. V Formation contends that Holley Skates’ in-line skates nonetheless infringe claim 1 under the doctrine of equivalents because a rivet is equivalent to a fastener for releasably attaching sidewalls to toe and heel flanges. Please analyze V Formation’s doctrine of equivalents claim and decide who should win on the issue of infringement of claim 1 under the doctrine of equivalents.

END OF EXAM