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Colorado Bar Association INTELLECTUAL PROPERTY SECTION NEWSLETTER Volume 8, Number 5 August 2004 NOT MERE LITIGATION: IP INFRINGEMENT CASES AT THE INTERNATIONAL TRADE COMMISSION August 23, 2004 Presented by Steven E. Adkins Shaw Pittman, LLP McLean, VA Steven Adkins is a partner in Shaw Fourth, Fifth and Federal Circuits, and the U.S. Pittman s intellectual property practice. Supreme Court, Among other courts. Mr. Adkins has extensive experience in all phases of complex commercial litigation concerning patent infringement, trademark and trade dress infringement, trade secret misappropriateion, general business disputes, securities law issues, and reinsurance disputes. He has successfully represented both respondents and complainants in Section 337 patent infringement matters before the United States International Trade Commission. Mr. Adkins also has extensive first-chair jury trial experience. In addition to his extensive trial experience, Mr. Adkins has represented clients in appellate matters before various state and federal appellate courts, including the Court of Appeals for the Federal Circuit, as well as before the U.S. Supreme Court. He has spoken before groups in Asia, Europe, and the United States concerning In this Issue: Section 337 (unfair trade) actions before the Steven Adkins ..1 United States International Trade Commission. Article ..2 Federal Circuit Action .3 Mr. Adkins is admitted to practice in Classifieds 7 Virginia, Texas, the District of Columbia, before the Court of International Trade, the Page 2 PTC Newsletter August 2004 Monthly Luncheon ARTICLE Date: Monday, August 23, 2004 COLORADO STATE TRADEMARK REGISTRATIONS Location: Faegre & Benson, LLP 3200 Wells Fargo Center by Ester Martín Maillaro, Adam Lindquist 1700 Lincoln Street Scoville and Randy Roberts Denver, CO 80203 FAEGRE & BENSON, LLP Time: 11:45 a.m. to 1:30 p.m. Colorado's state trademark statute received an overhaul as of July 1, 2004. Most Cost: $15.00 (including lunch) notably for trademark practitioners and owners, at the door or in advance a state trademark registration will no longer (make checks payable to CBA) prevent another entity from registering a confusingly similar entity name, although an Menu: Salad Box Caesar - grilled existing entity name can still prevent another chicken and homemade golden party from obtaining a state trademark croutons, roll and butter, registration. butterscotch cookie The motivation for the July 1, 2004 Sandwich Box Roasted turkey, changes to the Colorado trademark statute is crisp bacon, and swiss on a also worth noting. While the International sesame kaiser roll, potato salad, Trademark Association continues to promote carrot cake the adoption of the Model State Trademark Bill MSTB http://www.inta.org/policy/mstb.html), Sandwich Box Roast beef with replacing existing state statutes, adopting a cheddar cheese and grilled trademark statute that is consistent with the onions on a sesame kaiser roll, MSTB was not the stated goal for the recent chocolate and cream cheese changes to the Colorado trademark statute. In brownie fact, the changes are not in line with the MSTB. The changes to the Colorado trademark statute CLE: 1 Hour General Credit are part of the state s ongoing efforts to (applied for) integrate and streamline the different entity business models. Reservations must be made by Thursday, August 19, 2004 at 5:00 p.m. To make a Effective July 1st, 2004, Title 7, Article reservation, contact Deb Camp at Faegre & 70 of the Colorado Revised Statutes was Benson, LLP at 303.607.3701 or by e-mail at amended by H.B. 03-1377 and H.B. 04-1398. firstname.lastname@example.org. Included below is a summary of the important changes. Please provide your name (and spelling), phone · COLO. REV. STAT. Section 7-70- number and menu choice. Payment should be 102(1)(a) (2004) has been amended made at check-in at the meeting to the Colorado to require any person adopting and Bar Association. Cancellations after noon, using a trademark in Colorado to Friday, August 20, 2004, and no-shows will deliver to the Secretary of State a be billed for the cost of the luncheon. statement of registration of trademark including a specimen or Page 3 PTC Newsletter August 2004 facsimile of the trademark and the district court) within 45 days. true name and mailing address of the Formerly, the applicant would first applicant. A new section 102(a.5) have had 30 days to appeal to the has been added to require applicants Secretary of State, and then could that are entities to provide to the have appealed the Secretary of Secretary of State their business State s decision to the district court. formation and the jurisdiction under · Other changes governing state the law of which they are formed. trademarks are found in the · Amended section 102(1)(b) requires provisions concerning entity name individual applicants that neither and trade name registrations which reside in Colorado, nor maintain a control the effect of a state trademark registered agent in Colorado, to state registration. Under COLO. REV. that fact, and provide the mailing STAT. section 7-90-601, although address for service of process in any entity names must be distinguishable action relating to the registration. from other entity names, trade names · Whereas formerly the existence of a and entity name reservations, they no dissolved entity with a confusingly longer need to be distinguishable similar name was a basis for refusal from registered trademarks. The of a trademark for 120 days after the amended statute also takes a dissolution, section 102(4)(a) states narrower view to when entity names that a dissolved entity name is no are distinguishable by allowing longer a basis for refusal. Likewise, registration of the same name when whereas a trademark would followed by a different entity previously have been refused on the designator, for example, Inc., LLC, basis of a confusingly similar entity etc. name reservation (where the entity had not yet been formed), a In short, Colorado state trademarks trademark application will no longer continue to give some limited rights to prevent be refused on this basis. Although infringement within the state (although without these are the only two substantive the prima facie presumptions of validity found changes governing what trademarks in the federal act). However, what might have may be registered, this section used been regarded as one of their key benefits, the to have parallel provisions specifying ability to prevent the registration of an entity that the name of each type of with a confusingly similar name, has been corporation, partnership, etc. was the repealed. basis for refusal of a trademark. The section now simplifies that the name of any domestic or foreign entity (including all the formerly Federal Circuit Action enumerated types) will form a basis for refusal. FEDERAL CIRCUIT GRANTS PETITION · Under section 102(4)(c), an applicant FOR REHEARING EN BANC IN can now appeal the denial of a COLORADO CASE registration to the district court of the county in which the entity is located In an Order dated July 21, 2004, the (or if the entity is not located in the Federal Circuit decided to try to resolve its state and does not have a registered conflicting claim construction precedent by agent in the state, to the Denver granting a petition to rehear Phillips v. AWH en Page 4 PTC Newsletter August 2004 banc: <http://fedcir.gov/opinions/03- COLLATERAL ESTOPPEL; CLAIM 1269o.doc>. Phillips v AWH is a case that CONSTRUCTION; DOCTRINE OF originated in the District of Colorado, Case No. EQUIVALENTS 97 CV 212 (Judge Krieger). Novartis Pharmaceuticals Corp. et al. v. In the en banc rehearing, the Court will Abbott Laboratories., No. 03-1367; 03-1393 address the following issues, among others: (July 8, 2004). should the primary focus of claim Opinion by Prost, joined by Gajarsa; construction be with the specification or Dissenting opinion by Bryson. with dictionaries? The Federal Circuit reversed the district court's if dictionaries provide the primary focus claim construction, but affirmed the district under (1), under what circumstances is a court's grant of a JMOL for noninfringement claim term limited-when the patentee acted under the doctrine of equivalents for Abbott as his own lexicographer, where there is a Laboratories. clear disclaimer, or both-and what language in the specification can provide such a Novartis claimed that Abbott infringed two of limitation? its patents (the '625 and '840 patents), which relate to pharmaceutical compositions of the what is the role of general purpose drug cyclosporin that allow the hydrophobic dictionaries versus technical dictionaries, drug to be absorbed by humans. The jury found and how is a battle of the dictionaries that Abbott did not infringe the '625 patent, but resolved? did infringe the '840 patent. The district court granted a JMOL in favor of Abbott on the '840 if the specification serves as the primary patent, reasoning that, because Span 80 was a focus under (1), do dictionaries serve a role surfactant, Novartis could not establish that the in claim construction and otherwise how can substance was an equivalent to the lipophilic the specification limit claim terms? component. Novartis appealed the claim construction and JMOL in regards to the '840 when, if ever, should claim language be patent. narrowly construed to avoid invalidity? On appeal, Abbott argued that Novartis was what role should the prosecution history and collaterally estopped from challenging either the expert testimony play in resolving claim jury verdict or the JMOL, because the terms construction disputes? "surfactant" and "lipophilic component" are common to both patents, and Novartis failed to what deference should the Federal Circuit challenge the construction of the terms in give the claim construction rulings of district connection with the '625 patent. The Court court judges? found that Abbott had not met its burden to The Court invited the parties (as well as show that the claim construction by the district amici) to submit additional briefs on these court was necessary to the jury's issues sixty days from the date of the Order. noninfringement decision. Therefore, collateral estoppel does not apply. The following is a review of Federal The Court found that "lipophilic component" Circuit intellectual property cases decided the did not have a well-defined meaning to those of week ending July 9, 2004 ordinary skill in the art, and turned to the specification to elucidate the meaning. The specification taught that a surfactant or mixture of surfactants can comprise a part of the Page 5 PTC Newsletter August 2004 lipophilic phase, but they cannot constitute the disposition are transmitted from within the U.S. entire lipophilic phase. In light of the In so holding, the Federal Circuit determined specification's teaching, Novartis was foreclosed that § 271(f)(1) applies only where components from arguing that Span 80, which the of a patent invention are physically present in specification acknowledges is a surfactant, is the U.S. and either sold or exported in such a equivalent to a non-surfactant lipophilic manner to actively induce the combination of excipient, as required by the Federal Circuit's such components outside the U.S. in a manner claim construction. Thus, no reasonable juror that would infringe the patent if such could conclude that there is a lipophilic combination occurred within the U.S. Here, component in Abbott's product, and there was there was no dispute that the ADMC chips were no basis to reverse the JMOL. not made, used, sold, or offered for sale in the U.S. In addition, the "supplying" or "causing to Judge Bryson dissented, arguing that the be supplied" provision in § 271(f)(1) does not majority's claim construction was incorrect, and refer to instructions or oversight. that there was not a specific exclusion of subject http://www.fedcir.gov/opinions/04-1054.doc matter for purposes of the doctrine of equivalents. http://www.fedcir.gov/opinions/03-1367.doc The following is a review of Federal Circuit intellectual property cases decided the week ending July 16, 2004. 35 U.S.C. § 271(f)(1) CLAIM CONSTRUCTION; PRIOR SALE Pellegrini v. Analog Devices, Inc., No. 04- AND PRIOR USE 1054 (July 8, 2004). Unitherm Food Systems, Inc., v. Swift- Opinion by Lourie, joined by Rader and Eckrich, Inc., Nos. 03-1472, -1473 (July 12, Bryson. 2004). Opinion by Gajarsa, joined by Schall and The district court granted defendant's motion for Linn partial summary judgment of not inducing infringement under 35 U.S.C. § 271(f)(1). The The Federal Circuit held that the district court Federal Circuit affirmed. correctly construed the claims of the '027 patent and affirmed the district court's holding that the Patentee is the owner of U.S. Patent 4,651,069, '027 patent is invalid and unenforceable under directed to brushless motor drive circuits. 35 U.S.C. § 102(b). The Federal Circuit also Defendant develops integrated circuit chips, affirmed the district court's findings regarding including a line called "ADMC" chips. The the tortious interference claims but reversed the ADMC chips are manufactured outside of the district court's findings regarding the antitrust U.S. and most of the ADMC chips are sold and claims. shipped to customers outside the U.S. Patentee sued defendant alleging direct infringement and Unitherm and Jennie-O sued Swift-Eckrich inducement of infringement. (doing business as ConAgra Refrigerated This was a matter of first impression for the Foods) alleging numerous causes of action. The Federal Circuit. The Court held that § 271(f)(1) issues on appeal where the invalidity and does not hold someone liable for infringement unenforceability of the '027 patent, a state law when the components of a product are claim for tortious interference with Unitherm's manufactured outside the U.S. and are never physically shipped to or from the U.S even if prospective economic relationships, and Unitherm's Walker Process claim alleging that those components are designed within the U.S. ConAgra violated Section 2 of the Sherman Act. and the instructions for their manufacture and Page 6 PTC Newsletter August 2004 court further evaluated the meaning of the claim With regard to the patent claim, the Federal term "layer" as partially defined by the method Circuit held that the district court correctly of layer formation. consulted a dictionary for the plain meaning of the term "golden brown" after finding no In its third consideration of the case, the Federal definition for the term in the intrinsic evidence. Circuit held that its prior construction of "layer" Additionally, the district court's finding that was the "law of the case," and that as such, ConAgra's '027 patent was invalid and retrial of the issue of whether that construction unenforceable due to Unitherm's prior sale and was correct was barred in the absence of new use of an identical process was affirmed and evidence, a change in legal authority, or clear supported by evidence in the record. error resulting in "manifest injustice." http://www.fedcir.gov/opinions/03-1472.doc CLAIM CONSTRUCTION The Federal Circuit vacated the district court's claim construction, stating that its original AFG Indus., Inc. v. Cardinal IG Co., No. 03- construction of "layer" "did not invite further 1078 (July 13, 2004). refinements" by the district court. The Federal Opinion by Rader, joined by Michel; dissent Circuit held that the district court's construction by Newman of "layer" "impermissibly import[ed] a process limitation into a pure product claim... the The Federal Circuit, by a vote of 2-1, vacated determination of whether a particular structure the district court's grant of summary judgment is a 'layer' within the meaning of the claim is not of noninfringement, and remanded. affected by the method of creation of that structure." This case, which was on its third trip to the Federal Circuit, involved technology for coating Because, given the Federal Circuit's claim window panes to reflect infrared light and construction, genuine issues of material fact reduce heat transfer through the glass. The existed as to whether there was infringement, Federal Circuit first considered the case in 1999, the court vacated the grant of summary when it reversed the district court's grant of judgment of non-infringement and remanded summary judgment of non-infringement and once again to the district court. remanded the case for a more precise claim construction. In 2001, the Federal Circuit Judge Newman dissented from the decision to determined that the district court's claim remand the case for further proceedings. She construction of the term "layer" was improper, would have relied upon the extensive record and construed the term to mean "a thickness of from the three prior Markman hearings to material of substantially uniform chemical decide the issue of infringement and bring composition, but excluding interlayers having a finality to the case. thickness not to substantially affect the optical http://www.fedcir.gov/opinions/03-1078.doc properties of the coating." Federal Circuit Review is intended to be informative On remand, the district court reevaluated the only and not to give legal advice or opinions. Any claim construction in light of the Federal views expressed or implied are not necessarily those of Patterson, Belknap, Webb and Tyler LLP, its attorneys Circuit's opinion. While basing its opinion on or clients. the Federal Circuit's construction, the district Ó Patterson, Belknap, Webb & Tyler LLP 2003 All rights reserved. This document may be copied and distributed, so long as this in not done for profit, no text is changed and all pages are included. Patterson, Belknap, Webb & Tyler LLP, 1133 Avenue of the Americas, New York, NY 10036-6710, 212-336-2000, Fax: 212-336-2222, E-mail: email@example.com Page 7 PTC Newsletter August 2004 CLASSIFIED ADVERTISING Classified advertisements are printed by the PTC Corporation, IP Law Dept. 10-A3, 1551 Section free of charge. Ads may be submitted on disk, Wewatta Street, Denver, CO 80202, Fax to via e-mail, or by fax. Submit your ad to Debbi Camp at Attn: Patent Dept.303-744-4653, Email: Faegre & Benson, LLP, 3200 Wells Fargo Center, 1700 firstname.lastname@example.org Lincoln Street, Denver, Colorado 80203; via e-mail to email@example.com; or fax to 303-607-3600. The Salt Lake City office of Holme Roberts & Owen LLP, seeks a mid-level intellectual property associate. The ideal candidate will have three-four years of experience in patent Employment Opportunities prosecution with an emphasis in writing software and networking patent applications. Strong academic credentials and an undergraduate degree in either computer science Heimbecher & Assoc., LLC seeks a mid-level or EE is preferred. Must be registered with the intellectual property associate. The ideal USPTO. Apply online at www.hro.com or candidate will have two-four years of email your resume to firstname.lastname@example.org. No experience in patent prosecution with an agencies please. EOE. emphasis on drafting mechanical and some electrical patent applications. Strong academic Klaas, Law, O Meara & Malkin, P.C., a 7- credentials are preferred. Must be registered attorney Denver, Colorado IP firm with a large with the USPTO and a member of the Colorado prosecution practice, seeks ME and EE patent Bar. Send cover letter and resume via fax to attorneys with 2+ years patent prosecution 303.985.0651 or via email to experience. Mail or fax resume, references, and email@example.com. No agencies please. writing samples in confidence to William P. Meara, Klaas, Law, O Meara & Malkin, P.C., Patent/Trademark Attorney, Tomkins plc, 1999 Broadway, Suite 2225, Denver, Colorado through its Gates Corporation subsidiary, a 80202; Fax 303-297-2266. Denver, CO based multinational engineered rubber products company, is seeking a highly productive attorney with approximately 2-10 Services Offered years patent experience to manage a broad scope of intellectual property matters for Gates and other Tomkins affiliates. Candidates should Patent Attorney seeks overflow and contract have a chemical engineering degree, mechanical patent preparation and prosecution work. engineering degree or equivalent background Specializing in the mechanical and material and experience enabling the candidate to handle science arts. Experience in law firms with top both mechanical and chemical materials-related national intellectual property law practices. Flat technologies. The position requires excellent fee or reasonable hourly rates. Kurt writing and communication skills to Leyendecker, 9241 S. Lark Sparrow Drive, independently draft a variety of documents and Highlands Ranch, CO 80126. 303.921.9536. agreements, and to counsel corporate personnel Fax 303.683.8393. located around the world. Candidates should Kurt@Leyendeckerlaw.com. mail, email or fax their resume to: The Gates Page 8 PTC Newsletter August 2004 Patent Agent with 20 years technical Forum at Cherry Creek, 425 So. Cherry Street, experience seeks overflow patent work. Suite 920, Denver, CO 80246. (303) 322-2116. Technical experience: Biochemistry degree from Harvard, MS in Physics from Naval Patent Attorney seeks overflow work. Postgraduate School, former chief Engineer of University of Michigan Law School 1977, PTO- nuclear warship, startup management, four years 1984. Patent applications, amendments, as independent IT consultant with multiple inventor counseling, infringement analysis, etc. Fortune 100 clients, author of 2 issued and 5 Experience in large corporation and law firms. pending patents in IT field. Brian Galvin, 5701 Member of CO and TX Bars. Henry L. Smith, Tinnin Rd NW, Albuquerque, NM 87107. Jr., 9273 S. Cornell Circle, Highlands Ranch, (505) 341-9439. firstname.lastname@example.org CO 80130-4141. Phone/fax 303-346-5045. Patent Attorney with 12 years patent law plus Patent Attorney with 10 years patent and 7 15 years engineering experience seeks overflow years computer design experience seeks or contract work. Specializing in software, overflow or contract patent work. Electrical computer, and electrical arts patent preparation Engineering and Software (double major) and prosecution. Reasonable hourly or fixed degree from Carnegie Mellon University. price rates. Member CO, AZ, USPTO bars. Specializing in software and digital hardware Bruce E. Hayden, P.O. Box 205, Dillon, patent prep. and pros. in telecommunications, Colorado 80435. 303-526-2671/ 602-403-7678 computing and other electrical arts. Reasonable /email@example.comfirstname.lastname@example.org/@highdow hourly rates and flat fees. Member CO, IL, n.com. USPTO bars. Mark A. Thomas, 10138 South Cottoncreek Drive, Highlands Ranch, CO Patent Attorney with 20+ years chemical, 80130. 303-470-3838 (Office) and 303-470- mechanical and design experience seeks 3837 (Fax). Mark_Thomas@comcast.net. overflow or contract work prosecution, opinions, etc. U.S. Naval Academy grad with Global Connections provides high quality M.S., Chem.; corporate and firm experience. translation and interpretation services in all Reasonable hourly rates for excellent service. major languages. We offer ATA accredited Member D.C. and CA bars, Registered USPTO. translators specializing in legal (patents, James K. Poole, P.O. Box 925, Loveland, CO trademarks and copyrights), technical, 80539. Tel. (970) 472-5061, FAX (970) 472- engineering, medical, telecommunications, 5041. marketing and financial translations. We also offer Court Certified interpreters for hearings, All Language Alliance, Inc. provides depositions, meetings, trials, etc. For more accurate legal, technical, medical and financial information, please contact Global Connections, translation services. Court certified interpreters 9400 E. Iliff Avenue, Suite 62, Denver, CO are available for depositions and trials. Please 80231. Ph.: (303) 750-7611; Fax: (303) 750- visit www.languagealliance.com for additional 7689; Email: email@example.com information. Call 303-470-9555 to request a free copy of A Lawyer s Guide to Cross- Trademark Attorney with 10 years Cultural Depositions." experience managing large international and domestic portfolios for major corporations seeks Intellectual Property Litigator with over 20 contract work or part-time position. Registered years experience in complex commercial and to practice in Colorado and California. Lisa K. intellectual property litigation seeks contract Levine, 9 Mourning Dove Lane, Littleton, CO work. Analysis, research, pleadings, briefs, trial 80127. (720) 981-8782, preparation materials. Carole Jeffery, The firstname.lastname@example.org. Page 9 PTC Newsletter August 2004 ONLINE CLE COURSE: CROSS- CULTURAL DEPOSITIONS Attorneys in Colorado, Arizona, California, Missouri, Montana, and New York can receive 1 general/ethics credit hour for taking the online CLE course, A Lawyer s Guide to Cross- Cultural Depositions. For details please visit www.languagealliance.com/white-paper or call (303) 470-9555. Patent Agent (BSEE/MSA), fluent in English, French and Italian, who has extensive international experience in computer software engineering, software quality assurance, and complex business procedures, seeks to affiliate with a Denver area law firm which has a substantial patent practice in these areas and is interested in growing its international practice. Please contact Roberto Ruschena at (303) 220- 9575 or (720) 771-7774; or e-mail at: email@example.com.