FINAL EXAM

INTELLECTUAL PROPERTY LAW SURVEY

GOLDEN GATE UNIVERSITY SCHOOL OF LAW


THIS IS AN OPEN BOOK, OPEN MATERIALS EXAM . You may use any notes, books or other materials to assist you in responding to the questions.

 There are three (3) essay questions on this exam. The first two questions are worth thirty-three points, and the third question is worth thirty-four points. The third question pertains to patent law. This question will be graded by Adjunct Professor Morrill. YOU MUST ANSWER THE THIRD (PATENT) QUESTION IN A SEPARATE BLUE BOOK, LABELED "PATENT QUESTION". If you need more than one blue book to answer this third question, each blue book you use must be labeled "Patent Question". The remainder of the exam will be graded by Prof. Greenberg. Answer each question as fully as you can, citing any appropriate cases, industry standards, and statutes that are relevant.

 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.

 You have three hours to complete this exam. You are not required to spend the entire time working on the exam - the average time for completion is between two and three hours. You should outline your response to each question, before writing the response. I recommend that you spend one third of the time on each question creating your outline, and the remainder of your time writing your answer. For example, if you spend 1.0 hour per question, devote 20 minutes to the outline, and 40 minutes writing the answer.

 

 

 

QUESTION NO. 1 (33 Points)

A) Your client is ChexCorp, a San Francisco sporting goods company. ChexCorp, plans to engage in interstate commerce for the sale of ice hockey sticks, under the name SKODASTIX. Your client wants to take immediate steps to protect the name for the goods. The hockey sticks will not be ready for sale in interstate commerce for three years. What intellectual property law should ChexCorp., use
 to obtain protection of the SKODASTIX name? Explain, in detail, what steps the client needs to take in order to obtain that protection. What advice do you have for the client with respect to its desire to obtain immediate protection for the SKODASTIX name?

 B) Three years later, after ChexCorp has obtained the protection sought in Part A above, it finds out that PartyCola Company, located in Los Angeles, California, has just begun also selling ice hockey sticks in interstate commerce, under the product name SODASTICKS. According to a survey done by your client, purchasers of SKODASTIX are confused by the similar name and packaging of the SODASTICKS product. Your client wants to bring an action for damages based on confusion in the marketplace. What is the test for likelihood of confusion in this jurisdiction? Identify each of the elements that must be shown in order to succeed in making this kind of claim. Identify any prejudgment remedies that are available in likelihood of confusion cases. What is the likely outcome of ChexCorp's claim?

 

 

QUESTION NO. 2 (33 Points)

Your client, NAMORITA, is a writer of children's books. She asks your advice regarding the following situation: In February 2001 she came up with the idea of writing a book about an underwater kingdom. Living in this kingdom was a race of mer-people, human-looking creatures with gray skin, long green hair, yellow eyes, and webbed feet and hands. Your client has named the king of this land NAMOR, and developed a lengthy outline regarding his appearance and background. Before writing any of her concepts down, she discussed them with her friend PERCY, and asked for his opinion. Three months later, she read in a writer's magazine a short story written by PERCY, which contained content that was very similar to the concepts she discussed with him.

 Upset that this had happened to her, and determined to write and protect her concept, NAMORITA began work on her book. She finished it six months ago, and under the title, NAMOR'S KINGDOM, it was published in July 2001. It does not contain a copyright notice, nor has she registered it with the Copyright Office. She has just learned that in August, 2001, PERCY had published a new book called TRITON'S EMPIRE. The lead character in PERCY's book is described in terms very similar to NAMOR, and the story line is also very similar.

Based on these facts, she asks your advice as to the following:

 1. Does she have any claim(s) against PERCY for his use of the concepts she discussed with him in February? If so, describe the nature of her claim(s), what damages she is entitled to, and her likelihood of success in prosecuting the claim(s). If not, explain why she has no claim(s).

2. Does she have any claim(s) against PERCY relating to his publication of TRITON'S EMPIRE in August? If so, describe the nature of her claim(s), what damages she is entitled to, and her likelihood of success in prosecuting the claim(s). If not, explain why she has no claim(s).

 

 

QUESTION NO. 3 (Patent Question) (34 Points)

Please note that the following relevant statutes, 35 USC §§ 102, 103, 271 and 281-282 and 284, are attached for your convenience.

I2 Corporation manufactures polyethylene plastic laminateo ("polylam") which is used for siding on buildings. Polylam siding is well known in the industry and is made by several companies. It is manufactured in large sheets by heating a polyethylene "sandwich" (a layer of inert filler surrounded on each side by a layer of polyethylene) to a temperature of about 350 degrees to cause the polyethylene to harden and bond to the filler. It is well known in the industry that if a polyethylene sandwich is raised to 400 degrees, the polyethylene layers begin to char, ruining the material. The siding industry has been seeking a polylam siding product which is more resistant to weathering, but all attempts to develop such a product have failed.
( o "laminate" is a product composed of bonded layers, such as plywood)

Igor Inventor, a process developer for I2, has discovered that a polyethylene sandwich can be raised to temperatures as high as 600 degrees without charring, if a flow of nitrogen (an inert gas) is maintained over the face of the polyethylene. Igor also discovered that, when a polyethylene sandwich is treated at temperatures over 400 degrees using his nitrogen process, the resultant polylam siding product is much more resistant to weathering.

Igor made his discoveries on July 1, 1998. The invention was successfully reduced to practice by August 1, 1998.

A patent application on Igor's new process was filed on September 1, 1998, and the patent issued on October 1, 1999.

Polylam+ has been a huge success, and I2 is not able to make enough Polylam+ to fill all the orders it receives.

A competitor named Walls `R Us, Inc. started making and selling a high temperature polylam product in early 2000 and I2 promptly filed a patent infringement suit.

3A. The claim in Igor's patent which is asserted against Walls `R Us reads as follows:

 1. A method of making a polyethylene laminate having superior weathering qualities, consisting of the following steps:

- forming a sheet of material comprising an inert core surrounded by polyethylene of not less than 1/4 inch in thickness;
- placing said sheet in an oven;
- raising the temperature of said oven to at least 550 degrees;
- directing a flow of nitrogen gas over the polyethylene surface of said sheet at all times when said heat exceeds 350 degrees;
- maintaining said heat of 550 degrees for not less than ten minutes;
- and cooling and removing said sheet from said oven.

Walls `R Us uses a process that is exactly like that described in claim 1, except that Walls `R Us does not heat its oven above 545 degrees, and Walls `R Us uses argon, another inert gas, instead of nitrogen. The product which Walls `R Us makes and sells is essentially identical to the Polylam+ product I2 makes using the method described in claim 1.

 What defenses to infringement should Walls `R Us consider raising based on any of the facts stated above in Question 3?  Please state the arguments the attorneys on each side should make, and state which side you believe should win.

3B. Walls `R Us has located a printed publication by Jones that describes a process of producing hardened sheets of Nylon laminate by using a process almost identical to claim 1 of Igor's patent.  The Jones reference was published on June 1, 1998.  Walls `R Us also has located a printed publication published on January 10, 1998 by Smith which states that " . . in general, processes used to process any given plastic can be used, with suitable modifications, to process any other plastic . . .".

 What patent invalidity defenses should Walls `R Us consider raising based on the Jones and Smith references? Please state the arguments the attorneys on each side should make regarding patent invalidity defenses based on the Jones and Smith references, referring to any of the facts stated above in Question 3 which are relevant, and state which side you believe should win.

3C. I2 and Walls `R Us are the only two companies that sell the highly weather resistant polylam, which is priced 1/3 more than regular polylam.  I2 also sells unpatented special fasteners used to attach Polylam+ to a wall, in addition to selling the siding itself.  It normally sells a quantity of fasteners sufficient to attach Polylam+ to the walls of the building in question with each sale of Polylam+. Walls `R Us also sells similar fasteners to attach its polylam product.

I2 believes that it has lost sales of both Polylam+ and fasteners due to Walls `R Us's infringement. What damages should I2 seek? Please state the arguments the attorneys on each side should make regarding damages, referring to any of the facts stated above in Question 3 which are relevant, and state which side you believe should win.

 

 

Appendix-Relevant Statutes
§ 102. Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

 (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

 (c) he has abandoned the invention, or

 (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

 (e) The invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371 (c) of this title before the invention thereof by the applicant for patent, or

 (f) he did not himself invent the subject matter sought to be patented, or

 (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

§ 103. Conditions for patentability; non-obvious subject matter.
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

*****

(c) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability
 under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.

 

§ 271. Infringement of patent.
(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

 (b) Whoever actively induces infringement of a patent shall be liable as an infringer.

 (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

§ 281. Remedy for infringement of patent.
A patentee shall have remedy by civil action for infringement of his patent.

§ 282. Presumption of validity; defenses.
A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim . . . . The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

 The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:

 (1) Noninfringement, absence of liability for infringement or unenforceability,

 (2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,

 (3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,

 (4) Any other fact or act made a defense by this title . . . .

§ 284. Damages.
Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.

 When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed.

The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.