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Gopal Singh

ENGR 330

Spring 2012

Dr. William Gallagher

Take-Home Final Exam

Problem 1)

In this problem, we are analyzing whether Mr. McVolt is potentially infringing the patent for the

Velcro-strapped electromechanical lithium-ion battery chargers. Mr. McVolt has already

confirmed that he is creating the same exact device as PowerAthletes patented device.

Another interesting thing to notice is that Mr. McVolts design of the device mimics many of the

claims prescribed by PowerAthletes patent.

When we look at the claims PowerAthleletes is making to define their device we see that Mr.

McVolts device is infringing Claims 1, 2, and 3 of the patent. Mr. Mcvolts shoes use a Velcro to

attach the device to the shoe (claim 1), uses the Velcro to hold the lithium batteries (claim 2),

and has an electrical-mechanical converter (claim 3).

Nevertheless, if we take a look at claim 4 of the patent description, we see that both devices

were designed for different audiences. Mr. McVolt has 3 variations of his device manufactured

for three distinctive groups of people those who are lightweight, who weigh more than 190

pounds, and the general population. On the other hand, the model for PowerAthletes, is

designed for those between 120 pounds and 160 pounds (claim 4).


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Running for Energy is infringing PowerAthletes device based off of claims 1, 2, and 3 but not

claim 4. Furthermore, in the court case Larami Corporation, Plaintiff-appellee, v. Alan Amron,

Defendant-appellant,and Talk to Me Products, Inc. the court decides that a patent infringement

is only present when all claims of the patent are met with the alleged infringed product. In our

case, PowerAthletes may not be able to establish a patent infringement upon Running for

Energy because claim 4 does not apply to PowerAthletes. A patent holder can seek to

establish patent infringement in either of two ways: by demonstrating that every element of a

claim (1) is literally infringed or (2) is infringed under the doctrine of equivalents. ). If even

one element of a patent's claim is missing from the accused product, then there can be no

infringement as a matter of law . . .

Applying the doctrine of equivalents for claim 4, we can then determine that Mr. McVolts

device is not infringing the asserted patent.

Mr. McVolt also asserts that there is a 1998 patent which PowerAthletes may be infringing.

Nonetheless, I believe that PowerAthletes patent is still valid because the first patent is

specified to power an LED light while the other is to charge a lithium ion battery. Both devices

are novel and are intended for separate applications and therefore Mr. McVolts patent is valid.

(35 U.S.C. 101)

Therefore, Mr. McVolt will probably be invulnerable of being declared invalid by the Court

because of the above reasons.


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Problem 2)

In this problem, Barbara Baker is trying to protect her recipe from other competitors. Barbara

Baker stores the recipe in a closed room which she can only access and she monitor those who

have an extra copy of the recipe. As time passes, one of the chefs at HoneyBun is bribed to

disclose the recipe to CopyCat. Taking a look at the story, we can see that Barbara Baker is

trying to protect her recipe and that her bagel recipe is a trade secret.

This is a case of stealing a trade secret because CopyCat is using anothers trade secret in order

to sell a product similar to their competitors without their permission. To some extent, Barbara

Baker has always tried to keep their recipe a secret from the general public and potential

competitors. This makes Barbara Bakers bagel recipe a trade secret.

Although, Barbara took great care guarding her recipe, the problem description emphasizes

that Barbara never marked the place where her trade secret was stored as confidential or

tradesecret. Furthermore, there is no section in the statute for Trade Secret Law that

outlines whether or not you need to label your trade secrets. So if CopyCat claims that Barbara

never labeled her recipe as a trade secret she can claim that there is no phrase in the statues

that outline the use of labels to protect a trade secret.

Also, CopyCat obtained the recipe by bribing a chef at HoneyBun which is obviously an

improper way outlined in the statues Trade Secret Law. CopyCat obtained information through

an improper means and is in turn violation California Civil Code 3426 which lists bribery as

a way of obtaining information improperly.


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Barbara Boxer could also litigate CopyCat for receiving information of the recipe through

misappropriation means. This means that CopyCat acquired by improper means a secret of

another by a person who knows or has reason to know that the secret. (California Civil Code

3426.1).

In short, Barbara can place a legal claim against CopyCat for obtaining her trade secret through

misappropriation means and place a legal claim against the chef for sharing information with

a competitor through improper means. (CA Civil Code 3426.1.)


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Problem 3)

In this problem, Karen comes up with an idea for creating a cookbook that discusses the culture

and recipes from selected regions of the world. Karen shares her idea with Brian, someone

whose ideas she values, who in return publishes a cookbook similar to Karens.

Karens concept of creating the cookbook in which she structured her book in a certain way is a

novel process and I would encourage her to get a patent for her cookbook concepts if she

hasnt obtained one yet. Once Karen receives a patent on her cookbook concepts she may be

able to prosecute Brian for patent infringement because Brians published book presents the

concepts exactly how Karen had intended. However, Karen can only prosecute Brian if she

obtains a patent on her cookbook process. With that patent, Karen can argue with the court

that she is the sole inventor of the subject matter and that Brian should be litigated for patent

infringement. I believe that Karen would be successful in bringing legal claims against Brian for

stealing her book idea based off of patent infringement.

Karen can also take a trademark infringement action against Brian because the title of Brians

book, Eating Globally, is very similar to Karens title, Global Eats. After Karen has federally

registered her name she can then file a case against Brian because of dilution and may also be

eligible to receive compensation to any damages done to her. The reason why Karen can claim

a dilution by blurring is because of the likelihood a consumer may confuse the similar book

titles amongst each other. (Referring to Lanham Act 1125) I would recommend Karen register

her book title at the Trademark office which would make it easier to prosecute Brian for

trademark infringement. A drawback or what may cause some complications in this case is if


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Brian has already obtained a trademark for his name or if Karen is unable to prove that she

came up with the name first. This will cause the case to run for a more indefinite amount of

time.

Lastly, Karen may be eligible to claim against Brian for copyright infringement if her book/ideas

were in a tangible format when discussing them with Brian or before Brian began writing his

book. However, I dont think that Karens book/ideas were in any tangible format when she

had discussed them with Brian. It is also highly unlikely that Brian would have violated any

copyright infringement upon Karens work because Karen doesnt have her book registered

with the US Copyright Office or had her book in any tangible format before Brians book came

to be. Thus, without her original works of authorship fixed in any tangible medium of

expression, Karen would likely be unsuccessful and wouldnt be able to defend herself if she

claims against Brian for copyright infringement to the court. (17 U.S.C. 102)

To sum up, Karen is likely to be successful if she claims against Brian for trademark and patent

infringement and would probably be unsuccessful if she claims against Brian for copyright

infringement.


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Problem 4)

For this problem, MOBIL is asking whether PEGASUS CAR WASH is violating any IP rights. This

question arises because PEGASUS CAR WASH has a similar logo to MOBIL and many customers

are questioning whether these two chains are affiliated with each other.

The only IP right that PEGASUS CAR WASH may seem to be violating is a trademark

infringement. MOBIL has become quite famous with their logo and has spent millions of dollars

advertising their brand. PEGASUS CAR WASH is a relatively new company which also uses a

flying winged horse in their logo. This in turn may cause confusion to the consumer and believe

that PEGASUS CAR WASH has an association with MOBIL. MOBIL may be able to file a civil

action lawsuit based upon Lanham Act 1125 section (A). I believe that MOBIL would be

successful in winning the case provided that they have warned PEGASUS CAR WASH to change

their logo. Even if PEGASUS CAR WASH doesnt change their logo, MOBILs civil action case

would still be strong because PEGASUS CAR WASH hasnt applied federal registration for its

word mark. Besides that, even if PEGASUS CAR WASH does apply for a federal registration for

their word mark it is highly likely that they would be refused registration because their word

mark is deceptive cause confusion of affiliation with MOBIL. (referring to Lanham Act 1052

(a))

We can also take a look atAMF Inc. v. Sleekcraft Boats where the court set out factors relevant

to the likelihood of confusion. Out of the list outlined for these factors, I can easily see

proximity of the goods (both being markets intended for car owners) (2), similarity of the marks

(3), and evidence of actual confusion (4) as the main causes of confusion with the two goods.


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MOBIL would also be able to file a case against PEGASUS CAR WASH based on the concept of

dilution. Since MOBILs mark has become famous, PEGASUS CAR WASHs mark is likely to cause

dilution by blurring even if any actual confusion, competition, or economic injury can be found.

(referring to Lanham Act 1052 (c)) MOBIL already has evidence that PEGASUS CAR WASHs

word mark is causing a dilution by blurring to 16 customers in vast areas. MOBIL would

definitely be successful in bringing claims against PEGASUS CAR WASH for trademark

infringement.

Lastly we shouldnt forget that MOBIL has a registered trademark since 1967 whereas PEGASUS

CAR WASH does not. Based upon Trademark Law, this makes MOBIL the sole owner of having a

winged horse as their word mark.

Hence, MOBIL will be successful in bringing claims of class action and dilution against PEGASUS

CAR WASH for trademark infringement.

Figure 1: Mobilgas logo which consists of a flying winged horse over the word "Mobilgas".


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Problem 5)

A case that I found the most interesting from our class reader is Diamond, Commissioner of

Patents and Trademarks v. Chakrabarty.

In this case, the plaintiff Chakrabarty files a patent application for engineering a bacterium and

Diamond files a writ of certiorari to the US Supreme Court.

The basis of the dispute was whether Chakrabartys third patent claim is valid for a patent. In

other words, if its possible to obtain a patent on a living organism even though patentable

inventions at that time didnt constitute living organisms.

The Supreme Court then tries to understand whether 35 USC 101 can be applied to the new

patent and the judges rule that the bacterium is analogous to a composition of matter and

that any new composition of matter should receive a liberal encouragement.

What is interesting about the case is that the Supreme Court takes a broad interpretation to the

statues that go back to the Patent Act of 1793. I also found it interesting for the technique the

Supreme Court used to understand whether a living organism was patentable by understanding

the statues and acts that form the foundation to todays patent laws.

The court case ruled in favor of Chakrabarty because he had managed to manufacture a new

type of bacteria that is not found in nature.

I believe this was a very effective court case because it went over the key requirements that are

needed in order for something to be patentable. This case also helped me understand the roles

our Supreme Court plays when it makes it decisions. Near the end of the case, the Supreme


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Court states that its task is determining what Congress meant by the words it used in the

statute; once that is done our powers are exhausted. The last paragraph also emphasizes that

the Supreme Court will stand by its decision unless Congress decides to exclude genetically

engineered organisms from being patented.

A key question I had after reading this case was what roles were biotechnology and

nanotechnology playing in terms of the way we understand our IP law? Another question that

rises is if someone found the cure for cancer or AIDS and they were not willing to allow anyone

to infringe the patent, what legal complications could rise? In other words, It seems to me that

the patentee would always be protected but would happen if he doesnt agree to have his

patent used to save the world from dying off?

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