PATENT LITIGATION
FINAL EXAMINATION
PROFESSORS MORRILL & BECK
FALL 2002
Saturday, December 14, 2002



1. 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.

2. You have three (3) hours to complete this exam.

There are three (3) essay questions on this exam. Question 1 is worth 30 points; Question 2 and 3 are worth 35 points. Answer each question as fully as you can, citing any appropriate cases, public policies, and statutes that are relevant. Remember to all ocate your time among the three questions.

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

4. Write your exam number on your exam envelope, all used blue books and at the top of this exam question packet. Do not use your name, student ID number, or Social Security Number.

5. 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.


QUESTION NO. 1 (30 Points)


Your client, SuperTech, Inc., owns U.S. Patent No. 5,5.5,555 which covers a new memory chip which is able to read and write data at twice the peed of prior art chips because of a novel address circuit. MicroMem Corp., a small startup comany, has announced that it will begin taking orders for a compatible memory chip early next year, and has begun distributing data sheets describing its product. The data sheets do not describe the address circuit in detail, but SuperTech's engineers believe that any compatible memory chip must use a design very similar to the SuperTech address circuit. Your client, which is headquartered in Silicon Valley, has asked for your advice about how to proceed. MicroMem is a Delaware corporation, with sales offices in Silicon Valley. MicroMem's chips are being manufactured in China. SuperTech has asked for your advice regarding its rights.

You are to prepare a memo discussing the following issues:

A. Can SuperTech file suit now?

B. What steps, if any, should SuperTech take before filing suit?

C. Where, if anywhere, can SuperTech file suit, and what are the advantages and disadvantages of the various forums?

D. What are the advantages and disadvantages of seeking a preliminary injunction?


QUESTION 2 (35 Points)



Alpha Enterprises ("Alpha") makes video poker machines that are popular alternatives to slot machines in casinos. In video poker, the player deposits money in the machine, and a five card poker hand is displayed on a video screen. The player can then discard some of the cards and have new cards dealt. Payoffs are based on the poker hand obtained by the player. Machines generally conform to the standard rules of poker. However, Alpha's "Player's Edge" machine differs from conventional machines in that in addition to the five cards dealt, the player sees the sixth card, and therefore knows the first replacement card before selecting discards. Alpha has patented this version of its poker machine.

The `040 patent specification describes one embodiment which is shown in Fig. 1. Claim 1 of the `040 patent recites:



Bermuda Games, an internet gaming site located in Bermuda, has come out with its own version of "Player's Edge" for the internet. Players using their home computer can log onto the Bermuda Games system. Bets are charged against the player's credit card, and winnings are credited to the card. Bermuda Games also has a variant of "Player's Edge" in which the sixth card is face down, and only the seventh card is revealed to the player. Bermuda Games also offers a variety of other games on its system besides poker.

Discuss the following issues regarding claim construction in an infringement suit brought by Alpha against Bermuda Games:

QUESTION 3 (35 Points)

Jones has sued Apex Tools, alleging the Apex tape measure and recorder product infringes plaintiff's U.S. Patent 6,543,210. The `210 patent claims a combination tape measure and digital sound recorder, which permits the user to audio record and playback measurements.

Claim 1 recites:


The `210 inventor, Jones, is a toy designer. He never built a product as claimed in the `210 patent, but prepared a design drawing on April 20, 1992 which he sent; to his patent attorney in November 1992. However, the patent attorney's files have been lost, and no copy of the drawing remains. The application was filed on June 15, 1993, and issued February 10, 1995. The defendant offers the following evidence:


Identify and briefly discuss the possible invalidity defenses available to Apex.


END OF EXAM