PATENTS

L6338x

Final Examination - December 2008

Professor Harold Edgar

Time Allowed - 4 Hours

This examination consists of 19 pages.

Check now to see that your exam has all pages.

ANSWERS MUST BE WRITTEN IN INK OR TYPEWRITTEN. IF HANDWRITTEN, PLEASE WRITE ON ONE SIDE OF THE PAGE ONLY.

IF YOU ARE A CANDIDATE FOR GRADUATION IN FEBRUARY 2009 WRITE ON THE COVER OF YOUR ANSWER BOOK (OR, IF TYPEWRITTEN, AT THE TOP OF YOUR FIRST PAGE), "CANDIDATE FOR GRADUATION IN FEBRUARY 2009."

Instructions:

This examination is open book. You should have your statute books, the casebook, and the various additional cases assigned for the class with you. You may bring any other written material you want.

Address the various relevant issues, even if you believe that one particular issue may be dispositive, for example render a patent invalid. If you think an issue may depend on facts the question does not provide, indicate what they are, and why they are relevant.

I believe the examination can be answered in 3 hours, 15 minutes. Many of you will complete Part I in less than an hour, and thus have even more time

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PART I (Suggested time; 1 hour)

(Answer each of the 8 short answer questions briefly!! A one sentence explanation is enough.)

Question One

Smith and Jones are both independent inventors resident in the United States. Smith

conceives ofa new and nonobvious method of preparing polysilanes on May 1, 2005. He places

the invention aside to pursue other projects, not turning back to the method of preparing

polysilanes until May 29,2005. He then works on a daily basis on the project, ultimately

reducing the invention to practice on July 7,2005. Smith files a patent application at the U.S.

PTO claiming the method of preparing polysilanes on November 20,2005.

Jones conceives of the identical method of preparing polysilanes on April 12,2005. She

first completes another project before returning to the polysilane method on May 3, 2005. Jones

reduces the invention to practice on August 5,2001.

Which party is entitled to priority of invention on the method of preparing

polysilanes?

Question Two

George is an independent inventor resident in the United States. George conceives of a

new surgical tool on June 17,2005. He then reduces the invention to practice on October 7,

2005. The following events occur as noted:

(A) George begins selling surgical tools embodying his invention in Germany and the

United Kingdom on February 15,2006.

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(B) An article appears in the LANCET, a widely circulated English medical journal,

on March 1,2007, fully describing George's surgical tool.

(C) A competitor of George, the Arneson Company, sells surgical tools identical to

the George design in the United States on October 1, 2006.

(D) George files a patent application in France on December 1, 2006, fully describing

and clearly claiming his new surgical tool. The French Patent Office publishes

George's pending application on June 26,2008. George subsequently abandons

prosecution of the French application.

What is the latest date on which George should file a patent application in the United

States?

Question Three

Luuk van Dijk is a Dutch citizen working in Amsterdam. The Netherlands is a member of the

World Trade Organization and a signatory of the Paris Convention. On November 3,1996, Luuk

reduces to practice athennal desorption apparatus for removing hydrocarbon (petroleum)

contaminants from the soil. Luuk files patent applications claiming the desorption apparatus in

the Netherlands on January 1,2003; in the United Kingdom on November 22,2003; and in the

United States on May 13, 2004. The Dutch patent issues on October 10,2007; the British patent

issues on May 1,2004; and the U.S. patent issues on December 1,2007. No other prior art

applies against Luuk's U.S. patent.

Did the U.S. PTO properly issue a patent to Luuk?

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Question Four

Finrod is an independent inventor resident in Oslo, Norway. Norway is a member of the

World Trade Organization and is a signatory to the Paris Convention. Finrod conceives of a new

and nonobvious method of formulating gasoline on August 12, 2000. Busy with other projects,

he does not resume work on the formulation method until May23, 2001. Finrod then diligently

works on the proj ect until he ultimately reduces the invention to practice on November 1, 200 l.

Finrod files an application at the Norwegian Patent Office on February 10,2002, and at the U.S.

PTO on February 1,2003.

Pertinax is an independent inventor resident in the United States. Pertinax conceives

of the identical method of formulating gasoline on June 21, 200 l. She does not further pursue

work on the formulation method until December 1, 2001. At that time, she diligently works on

reducing the method to practice, which she accomplishes on December 12, 200l. Pertinax files a

patent application at the U.S. PTO on February 1,2002.

Which party is entitled to priority of invention on the method of formulating gasoline?

Question Five

Monte is an independent inventor resident in the United States. Monte conceives of a new and

nonobvious flux capacitor on March 1, 200 l. Monte diligently reduces the invention to practice

on May 15,200l. Monte begins selling laptop computers employing the flux capacitor on

November 1,2001. Monte files a patent application at the U. S. PTO fully describing and

definitely claiming the flux capacitor on October 15, 2002.

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Wyatt is an independent inventor resident in the United States. Wyatt conceives of the

identical flux capacitor on December 13, 2000. She then sets the project aside, not pursuing

further work on the project until February 1, 2001. At that point she diligently works on

completing the invention, at last reducing the invention to practice on October 12, 2001. Wyatt

then files a patent application at the U.S. PTO fully describing and definitely claiming the flux

capacitor on December 1, 2002.

Which party is entitled to a patent on the flux capacitor?

Question Six

Aragom is an independent inventor resident in the United States. Aragom reduces to

practice a new fuel injector on February 14, 1999. He files a patent application at the U.S. PTO

on June 12, 1999, fully describing and definitely claiming the fuel injector. During prosecution,

the U.S. PTO examiner becomes aware of an article published in the widely-circulated

JOURNAL OF FUEL INJECTION on January 19, 1999. The journal article fully anticipates

Aragorn's claimed invention.

What information must Aragorn present to the U.S. PTO in order to antedate the

JOURNAL OF FUEL INJECTION reference?

Question Seven

Paul and Leto are both chemical engineers who are employed by the Melange Spice

Company ("Melange"). As part of their employment contracts, each has agreed to assign all

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inventions to Melange. On February 17, 1999, Paul conceives of a new method of making

cinnamon extract. Melange files a patent application at the U.S. PTO on April 1,

1999, claiming the new method developed by Paul.

Paul explains his new method to Leto on March 1, 1999. Paul and Leto then work

together to improve upon Paul's method. On March 15, 1999, Paul and Leto conceive of an

improved method for making cinnamon extract. Working continuously on this method, without

interruption from other projects, they first are able to use their improved technique to make

cinnamon extract on May 1, 1999. Melange files a patent application at the U.S. PTO on June 1,

1999, claiming the improved method jointly developed by Paul and Leto. Although Paul and

Leto's improved method is superior to Paul's original method, it would have been obvious in light

of Paul's original method. May Melange obtain a patent on the improved method of making

cinnamon extract invented jointly by Paul and Leto?

Question Eight

Potter owns a U.S. Patent 5,899,123, pertaining to a machine useful for reconditioning

metallic parts. The' 123 patent issued on August 1, 2000, based upon an application filed on July

15, 1996. Potter's competitor, Malfoy, wishes to pursue a reexamination request against the 123

patent. Which of the following items would provide sufficient basis for the U.S. PTO to issue an

order for reexamination?

(A) A third party, Weasley, publicly used the identical reconditioning machine in

northern California from August 1, 1993 through October 29, 1994.

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(B) Malfoy has employed the identical reconditioning machine on the premises of his

machine parts factory continuously since March I, 1995. Malfoy considered the

machine to be proprietary. Malfoy did not disclose the machine design to

outsiders, and he restricted access to the machine to select employees who had

signed a confidentiality agreement.

(C) Potter gave an oral presentation explaining the workings of the patented

excavation machine in Auckland, New Zealand, on September 5, 1995.

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PART II (Suggested time: 90 minutes)

Emtel owns patent 7,129,970 describing an emergency facility video conferencing

system. Emtel has sued Specialists On Call, Tele-Med Dox, and Doctors Telehealth Network

for direct and induced infringement of claim 4. Claim 4 states as follows: (You probably want to

read the entire question before reading the claim. Defendants concede that all steps of the claim

are performed.)

A business method for delivery of emergency medical services utilizing a

system including first and second emergency care facilities, an emergency room

physician disposed at an emergency medical video-conferencing station, a first

patient and a first skilled medical caregiver disposed at said first emergency care

facility, and a second patient and a second skilled medical caregiver disposed at

said second emergency care facility, the method comprising the steps of:

(a) establishing a first video-conferencing communication link between

said emergency medical video-conferencing station and said first emergency care

facility;

(b) establishing a second video-conferencing communication link

between said emergency medical video-conferencing station and said second

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emergency care facility;

( c) displaying an image of said first patient on a first monitor disposed in

said emergency medical video-conferencing station via said first

video-conferencing communication link;

(d) viewing said image of said first patient by said emergency room

physician;

(e) controlling a video-camera disposed in said first emergency care

facility from said emergency medical video-conferencing station to control said

image of said first patient;

(1) aiding a treatment of a medical condition of said first patient at said

first emergency care facility by said emergency room physician from said

emergency medical video-conferencing station;

(g) displaying an image of said second patient at said emergency

video-conferencing station via said second video-conferencing communication

link;

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(h) controlling a video-camera disposed in said second emergency care

facility from said emergency medical videoconferencing station to control said

image of said second patient; and

(I) aiding a treatment of a medical condition of said second patient at said

second emergency care facility from said emergency medical video-conferencing

station contemporaneously with said step of aiding the treatment of said first

patient.

1. The Patent Specification

The patent specification is helpful in describing what this technology is, and how it

works.

BACKGROUND OF THE INVENTION

1. Field of the Invention

This invention relates generally to the field of video-conferencing wherein a two-way video and audio system is provided enabling one or more parties at one location to be in communication with one or more parties at another location. More specifically, the present invention pertains to a medically related video-conferencing system that is particularly suited to emergency medical activities and enables a physician at a central location to diagnose and control treatment of patients located at one or more remote medical facilities. Even more specifically, the present invention concerns the use of portable video-conferencing units at each of one or more remote emergency facility locations and having components, such as a video-conferencing CODEC (Compressor/Decompressor), that can be controlled by the physician from the physician's central location to thus enable efficient diagnosis of the patient and to ensure proper treatment of the patient by the medical personnel of the remote facility.

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2. Description of the Prior Art

Although the field of video-conferencing has been under development only in recent years, a number of processes, procedures and interactive communications systems have been developed to enable video-conferencing in a wide variety of commercial environments. Examples of methods and apparatus associated with video-conferencing are presented in U.S. Pat. No. 4,719,513 of Peterson, U.S. Pat. No. 5,489,938 of Maruyama, et al. U.S. Pat. No. 5,767,897 of Howell, and U.S. Pat. No. 5,900,907 of Malloy, et al. U.S. Pat. No. 4,719,513 discloses a compact video system in the form of a mobile cart having compartments for containing video and video recording equipment such as a video camera and video recorder as well as a battery for providing a source of electrical power for operation of the video and video recording system (VCR) in remote conditions and to facilitate ease of using the equipment. The mobile cart device is also provided with a camera mount enabling the video camera to be appropriately mounted on the mobile cart for use. U.S. Pat. No. 5,489,938 discloses television conference apparatus in the form of a mobile cart which has a number of storage compartments within which apparatus such as a video camera, a manuscript table, a fax machine, etc. may be stored and may be subsequently used simply by opening compartment doors, operating lights or positioning equipment.

U.S. Pat. No. 4,755,881 also discloses a mobile cart within which various video apparatus such as a video monitor, VCR, battery, video camera, etc. may be stored so as to be readily available for use. U.S. Pat. No. 5,900,907 discloses a video-conferencing unit intended to be mounted to or supported by a video monitor and being designed with a differential signal sensing sound system enabling the video camera, or its lens to be automatically directed to the source of the sound, i.e., such as an individual speaking at a video conference, by the differential sound signal.

An interactive video/audio communications system has also been developed for medical treatment of remotely located patients as set forth in U.S. Pat. No. 5,810,755. In this case, a medical practitioner's station is in communication with a medical treatment station via video-conferencing apparatus each having video cameras, audio speakers, etc. This particular medical apparatus is particularly designed for ensuring identification of the patient and for ensuring payment for medical services via credit card or insurance card.

When a remotely located patient is being treated, especially during emergency treatment at a remotely located emergency facility, the patient's condition may not

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be well known. It is thus desirable for a medical practitioner, located at a central facility to have the capability of controlling the orientation of a patient inspection video, including panning up or down, right or left and actuating a zoom feature of the video lens. This feature will permit the medical practitioner remote from the emergency facility to conduct independent patient inspection and to discuss aspects of the patient's condition with the medical personnel and perhaps also with the patient during the time the local medical personnel are engaged in the conduct of independent patient care of treatment activities at the direction of the medial practitioner. It is desirable, therefore, to provide an emergency room video-conferencing system wherein a medical practitioner is enabled via a video-conferencing system to direct medical personnel at several remote locations to treat patients, particularly emergency patients, according to diagnosis and treatment controlled by the medical practitioner and further enabling the medical practitioner to inspect the condition of the patient for the purpose of diagnosis and to observe the medical treatment that is being administered by local staff personnel.

To enable a medical practitioner, especially during emergency conditions, to deliver high quality of medical care to a patient, from the standpoint of close inspection and diagnosis, and to ensure that local medical personnel, such as nursing personnel are enabled to concentrate on patient treatment, rather than expend time and effort manually positioning a video camera or a mobile emergency center cart having a video camera, it is desirable that the medical practitioner have the capability of independently causing the video camera to move as desired for efficient visual inspection of the patient, including close-up viewing of selective portions of the anatomy of the patient. It is also desirable that the medical practitioner have the capability of selectively controlling the video-conferencing camera from a remote location for video-conferencing with the nursing personnel at one or more emergency medical centers and for viewing both the patient and the nursing personnel at such one or more centers to thus ensure delivery of the highest quality medical care to the patient.

II. The Lawsuit

The Accused Telemedicine Systems

Specialists on Call, Tele-Med Dox, and Doctors Telehealth Network (together,

defendants) provide what they characterize as "telemedicine support services" in the form of

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videoconferencing network links. They enter into contracts with physicians or physician groups

who agree to work as independent contractors in providing diagnostic and treatment services.

The defendants also enter into contracts with remote medical-care facilities under which the

defendants agree to provide outsourced video-conferenced medical services through the affiliated

physicians or physician groups.

The defendants receive requests for medical help, generally in a specialized area, from a

remote medical facility, such as a hospital or emergency room. (And in this case, the sole

activity at issue concerns emergency rooms.) The defendants have in place equipment that

allows them to establish and maintain a videoconferencing connection between a physician who

specializes in the area responsive to the request for medical help and the remote emergency room

where the patient is located. The defendants arrange for the appropriate physician to respond to

the request from the remote facility through videoconferencing.

The defendants each maintain centralized computer servers that receive requests for

medical services from the remote facilities, match the requests to available physicians with the

relevant speciality, and connect the appropriate physician with the requesting facility by a

videoconferencing link established through the servers. The physician communicates with the

remote healthcare facility through the server-established video-conferencing link. Specialists On

Call maintains a toll-free call center that receives telephone requests for consultations from

remote facilities and uses proprietary call-handling and information-gathering protocols to

identify and contact the appropriate specialist physician.

Under the defendants' contracts with the physicians or physician groups, the defendants

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agree to provide business, administrative, and technological support to their affiliated physicians,

as well as the necessary videoconferencing equipment. Under these contracts, the physicians

agree to provide medical services through the defendants' telemedicine networks. The contracts

require the physicians to: provide medical care that conforms to generally accepted professional

standards; maintain medical malpractice insurance and notify the defendants of any disciplinary

action or mal-practice claims; be available to provide care to a certain number of patients or be

available to provide care on a certain schedule to be determined; and to provide care for a

specified fee or rate. The contracts identify the physicians as independent contractors who

exercise independent judgment and maintain discretion over the medical care they provide to the

patients.

Each of the defendants has billing and fee arrangements with the affiliated physicians.

They bill and collect fees in the name of and on behalf of their affiliated physicians, and their

affiliated physicians pay them a monthly fee based on the physicians' revenue.

Each of the defendants concedes that its equipment is set up so that images representing

patients in a number of separate "emergency care" facilities can be seen and that the patients and

others in the room are heard at the remote "emergency medical video conferencing center" and

further that physicians at the conferencing center can control the video equipment. Indeed, all

parties agree that either defendants or the local emergency room personnel perform each step of

the patented process.

The defendants also acknowledge that they contract with individual physicians and

physician groups, compensate them for medical services, require that the medical services

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conform with generally accepted professional standards, provide administrative support for the

physicians, and match which physician has the expertise for a particular telemedicine consult. But

the contracts also stipulate that the physicians maintain discretion and control over the diagnoses

they perform, the medical instructions they provide, and the medical treatment they aid in

providing.

Plaintiff Emtel does not dispute that the defendants exercise no control or direction over

how or what medical diagnoses, instructions, or treatment are provided by the physicians.

You are a junior associate at the law firm representing all three defendants. The partner in

charge asks you to sketch briefly what patent law defenses you think may be available to the

defendants, both with respect to the patent's validity, and to their liability for direct infringement

or inducing others' infringement.

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PART III (Suggested time: 45 minutes)

Jensen manufactures commercial sewing machines. One of its best customers is

Simmons, a manufacturer of luxury mattresses and pillows. Simmons asked Jensen whether

Jensen could develop a machine to automate what is now an expensive part of the pillow

production process, attaching a gusset to the seam of the pillow, and pleating or "ruffling" it.

[A gusset is a triangular or square piece of fabric inserted into a seam to add breadth and

reduce stress; it can be ruffled, i.e. pleated or gathered along the edge. This examination question

is written so that you do not need to know anything about the technology described.}

Jensen and Simmons entered a contract where both agreed to keep the development

confidential. Jensen further agreed that if the development was successful, Jensen would transfer

any patent on the machine to Simmons, and sell its gusset ruffling machines only to Simmons.

In succession, Jensen developed four prototypes over a period of four years. The first two

prototypes were delivered to Simmons in April of 1999 and January of2000. Jensen sent with

each prototype a sales order which included a price quotation for sales of subsequent machines.

Both prototypes were tested by Simmons at its secure facilities, where all employees had signed

confidentiality agreements. Simmons sold no commercial products produced by using the

machines it tested. In both cases, Simmons declined to pay for the prototypes because they

required significant operator control of the process. Simmons made extensive comments and

returned each prototype to Jensen.

In September 2000, Jensen sent Simmons a price quotation for a third prototype machine it

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developed in response to Simmons' criticism. The price set for the prototype gave no profit to

Jensen, but reflected the materials cost of building the machine. This time Simmons paid the

invoice for the machine. Simmons tested prototype three at its facilities.

In February 2001, Jensen sent Simmons an invoice stating that it would sell Simmons 200

of these machines at $5,000 each, with anticipated installation of machines to begin no later than

March 2001.

Simmons said it was impressed by prototype three. This machine adjusted sewing speeds

without operator intervention, recognized the corner of a pillow panel and automatically turned on

the ruffling function and turned off the ruffler when complete.

Nonetheless, Simmons declined to buy it because it did not work at the speed Simmons

desired. It returned the prototype, and Jensen returned the payment Simmons had made.

Jensen delivered a final prototype machine on April 10, 2001. This machine was

substantially similar to prototype three, but it used a pneumatic piston instead of an "eccentric

drive" to control the pleat generator. The sole advantage of the pneumatic piston was that it kept

the machine from vibrating when operating at high speed, and would thus likely reduce machine

maintenance costs.

Simmons experimented with this prototype until June 2001, and various minor

improvements were made. Ultimately, Simmons decided that it would not purchase any machines

from Jensen based on Jensen's design. Under the contract, Jensen was free to sell them to others.

On March 5, 2002, Jensen filed a patent application. The application yielded U.S. Patent

No. 6,834,603 ("'603 Patent"), issued on December 28, 2004. The patent is directed at a machine

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that automatically attaches a gusset to a panel of a pillow, rotating the panels at the comers, and

pleating the comers of the gusset.

Jensen filed suit in 2007 alleging that Leggett & Platt's GPT-IOOO series sewing machines,

a machine first marketed in 2006, infringed the single claim of the '603 patent. Leggett & Platt

concedes that its machine infringes the claim. The claim states:

A system for attaching a gusset to a panel, comprising:

a. a gusset forming station for automatically forming the gusset from a

strip of gusset material;

b. a sewing table having an upper surface supporting the panel as the

gusset is attached thereto;

c. a sewing machine adjacent the upper surface of the sewing table,

positioned along sewing path for the panel, for attaching the gusset to the panel;

d. a pleat generator for forming at least one pleat in the gusset at a desired

location about the panel, said pleat generator operated in timed relation with said

sewing machine, sewing the gusset to the panel; and

e. a system controller controlling a sewing operation for attaching the

gusset to the panel, wherein said system control can control the sewing of the

gusset to the panel at varying rates to enable high speed sewing of the gusset to the

panel and sewing at a different rate for generation of the pleats in the gusset as

needed.

Leggett and Platt asserts that the '603 patent is invalid due to the on-sale bar, and also

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unenforceable due to inequitable conduct.

Jensen concedes that the "Prototype 3" system included all the elements subsequently

claimed in the '603 patent. It insists, however, that prototype 3 was never "on sale," and that its

use was for experimental purposes only, to improve and perfect the machine.

For that reason, Jensen asserts, it had no duty to inform the patent examiner about the tests

and other activities that it had engaged in with Simmons. For that reason, the patent application

contains no mention of the prior uses of Jensen's machines.

You work as a law clerk to the Federal District judge to whom the case is assigned. She

wants a brief memorandum discussing these issues.

END OF EXAMINATION

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