FALL 2008

Trade Secrets


Course No. 9200-704 (and 804)-801

ID No. 16545

MW 3:00 - 4:30 p.m.
Room L-134
Professor Jay Dratler, Jr.
Room 231D (IP Alcove)
(330) 972-7972
Copyright © 2000, 2002, 2003, 2006, 2008   Jay Dratler, Jr.   For permission, see CMI.

Questions and Notes on Acuson Corp.

1.  Both this case and Tabor v. Hoffman involved a defendant that copied the plaintiff's unpatented product.  Yet in Tabor the plaintiff won, whereas here the defendant won.  Can you distinguish the two cases on their facts?  Can you justify the distinction on the basis of social and economic policy?

2.  This case is the first of many that involve so-called "reverse engineering."  Reverse engineering can be defined as starting with a product (usually a competitor's) and working backward to determine how it works or how it was made, with the goal of duplicating it or duplicating its function in a similar product.

The techniques of reverse engineering vary widely, depending upon the type of product and the goal of the "reverse engineer."  Typical techniques including observation and measurement, disassembly, and scientific testing, such as chemical analysis.

Reverse engineeing may be nondestructive, for example, taking a mechanical product apart and putting it back together.  Or it may be destructive.  For example, certain kinds of chemical analysis vaporize or otherwise destroy the chemical sample, and one method of reverse engineering "chips" (integrated circuits) involves removing their successive layers with etching acid in order to photograph and analyze the underlying layers.  In the field of computer software, reverse engineering usually involves so-called "reverse compiling" or "disassembly"—processes in which unrelated computer programs are used to convert the binary executable code in which most software is marketed into the source code in which most software is written and can be modified.

3.  Patent protection does not permit reverse engineering.  It does not matter how a competitor arrives at the patented product; if the competitor's product is described by the claims of the patent, it infringes.  Trade secret law, however, permits everse engineering.  Why?  What differences in legal theory support allowing a business to reverse engineer a competitor's unpatented product without objection under trade secret law?  What social and economic policies support such a rule?  (As you think about these questions, consider the differences between patent and trade secret protection.)

4.  In Acuson Corp., the defendant had to break the internal padlock's on the plaintiff's machines in order to study them and complete the job of reverse engineering.  If the court had found breaking the padlocks unlawful, would it have had to find other kinds of destructive reverse engineering unlawful as well?  Which result better supports the ancient common-law principle that chattels freely alienated should be free from restraint?

5.  It is often said that trade secret law protects inventions before they are patented, i.e., while the inventor is still experimenting with them, and while the patent application is still pending but not yet granted.  Is the notion that reverse engineering is permissible consistent with the notion of trade secrets as a "pre-patent" form of intellectual property protection?  Is the result in Acuson Corp.?

6.  This court rejected plaintiff's claim that the defendant had wrongfully procured the plaintiff's product (for purposes of reverse-engineering) by misrepresenting the actual purchaser.  Was the court right to reject this claim?  If the court had outlawed reverse engineering of products obtained by such subterfuges, could businesses easily find ways to circumvent the rule that reverse engineering is generally lawful?  What if defendant had stolen an Acuson machine from Acuson's plant?  Would reverse engineering that machine be lawful then?  Would it make any difference whether the machine had already been produced and sold to the general public?
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