Colorado Bar Association
INTELLECTUAL PROPERTY SECTION
Volume 8, Number 5 August 2004
NOT MERE LITIGATION: IP INFRINGEMENT CASES AT THE
INTERNATIONAL TRADE COMMISSION
August 23, 2004
Steven E. Adkins
Shaw Pittman, LLP
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,
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
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
integrate and streamline the different entity
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: <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.
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
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,
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 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 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
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: