The purpose of these short preparation exercises is to help students focus on key issues in the readings prior to the discussions of them in class. Replies are submitted to the instructor the morning of the class meeting. Students may want to bring a copy with them for their own use in class. Letter grades are not assigned for these exercises, but the instructor will read them prior to class as a means of finding out beforehand what issues the students are having difficulty understanding. Whenever a student has difficulty with an exercise, he or she should try to explain what it is that is difficult to understand.
Describe briefly (in 100 words or fewer) what appears to be the most essential difference between the patentability requirement set forth in 35 USC §102(a) [Section 102(a) of Title 35 of the United States Code] and the requirement set forth in 35 USC §102(b).
What are the central legal questions that the court felt called upon to resolve in Graham v. John Deere, and what are the conclusions it reached to those questions? (You should not need more than about 100 words.)
The Court of Appeals for the Federal Circuit in Structural Rubber Products v. Park Rubber reversed the trial court's judgment that the invention described in the '051 patent lacked the requisite novelty to be patentable. This was done even though the jury in the trial court found that the invention was not novel. What was the appellate court's reason for reversing the trial court? (You should not need more than about 100 words.)
The Supreme Court in O'Reilly v. Morse provided several related reasons for rejecting Morse's eighth claim. Briefly (100 words or fewer) describe the reason that seems to you to be the most central.
The court in Baker v. Selden contrasted copyright protection for a book that describes an invention with patent protection for the invention itself. After reading that case and the assigned statutory sections of 17 USC, and perhaps reviewing portions of Thomas Field's survey article (the first assignment of the term), you will probably see many differences between copyright and patent protection. Briefly identify three such differences, one with regard to each of the following three issues:
The appellate court in Selle v. Gibb concluded that the plaintiff had not presented sufficient evidence during the trial to justify a jury's finding that the defendant copied plaintiff's copyrighted song. The court reached this conclusion even though the testimony of plaintiff's expert witness included his opinion that "the two songs had such striking similarity that they could not have been written independent of one another" (at 899). Why was this testimony, together with the rest of plaintiff's evidence, held insufficient to permit a jury to find, as a question of fact, whether or not the defendant had copied plaintiff's song?
Assume that Richard Spinello's scenario "Whose Program Is This?" takes place in the Commonwealth of Pennsylvania after Wexler v. Greenberg was decided. Under Pennsylvania law as set forth in the Wexler decision, do you think Ellen's plan to take copies of the U-PAY design specs and source code with her to her new job would infringe her former employer's trade secrets? Is there any additional information you would like to have? Explain your answer in between 100 to 200 words.