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									Colorado Bar Association

       Volume 8, Number 5                                                          August 2004

                                        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
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,
              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
              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
                                                        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.
                                                        Included below is a summary of the important
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: <                       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
matter for purposes of the doctrine of
equivalents.                       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,
                                                         Opinion by Gajarsa, joined by Schall and
The district court granted defendant's motion for
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
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."
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
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  
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:
              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
   Lincoln Street, Denver, Colorado 80203; via e-mail to; 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 or
candidate will have two-four years of                         email your resume to 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 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         
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.                     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
/                 hourly rates and flat fees. Member CO, IL,                                                   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).
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 for additional            7689; Email:
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               levinelaw@ix.netcomcom.
              Page 9                           PTC Newsletter   August 2004

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 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:

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