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Oct. Newsletter

October 2012
Colorado Bar Association
Intellectual Property Section
In this issue...
Upcoming IP Section Events

IP Section Lunch: Pretexting and the New Colorado Ethics Rules

Date and Time: Noon on Thursday, Dec. 6
Location: Denver Chophouse

Attorneys have a duty under Rule 11 to investigate their claims prior to filing suit. The ethical rules, however, constrain an attorney’s ability to perform certain pre-textual pre-filing investigations. This is especially true in intellectual property cases, where attorneys may need to acquire and examine an accused product before filing suit. There have recently been efforts to address these ethical concerns in Colorado that ended without resolution. What does this mean for IP professionals? Come on December 6 to find out.

RSVP by calling Melissa at 303-860-1115 ext. 727, or by emailing

Winter IP Boot Camp

Date and Time: Thursday, Jan. 17—All Day
Location: CBA Offices, 1900 Grant Street, Denver CO 80203

A must-attend for all students, clerks, first-year, and second-year attorneys, and anyone else practicing or hoping to practice IP law! This day is meant to provide newly and recently minted attorneys, or those wishing to transition to intellectual property, with foundational basics in the practice of intellectual property law. We will have an exciting line-up of expert speakers, including talks from Magistrate Judge Mix on how to interact with the Court, and Judge Carparelli will speak on professionalism in the workplace. In addition, an in-house panel will discuss how to interact with clients, as well presentations on the state of the job market and the nuts and bolts of practicing intellectual property law.

Past IP Section Events

Colorado Federal Circuit Visit

During the week of Oct. 2, the CBA IP Section and the Colorado IP American Inn of Court hosted the Federal Circuit Court of Appeals. Throughout the week, the Federal Circuit heard cases at the University of Colorado Law School in Boulder, The University of Denver, and at the US District Court in Denver. In addition, there were numerous activities, including a GALA on the night of Oct. 3 at the Colorado History Museum. At the GALA, CBA members mingled with judges from the Federal Circuit while learning about the history of innovation in Colorado from the keynote speaker Tom Noel, “Dr. Colorado.”

IP Section Website

Don’t forget to check out the CBA IP Section website. Please refer to it often for updates on news and events.
The CBA has posted online member directories for each practice section. Click here to see our directory.
Our contact at the CBA is Melissa Nicoletti, Director of Sections and Committees. She can be reached at 303-824-5321, or

IP Section Blog

The IP Section blog is at You can find news from and links to other Colorado and national IP resources, connect with other IP Section members, provide input to Section Officers, get up-to-date information about IP Section activities, developments regarding the Denver Patent Office, and more. Be sure to register to get the full benefit of the blog.

If you would like to write a blog posting or have anything you would like posted to the blog, please e-mail Danny Sherwinter at

Classified Advertising

Experienced Chemical/Mechanical Patent Attorney

Available for contract/overflow work in patent/trademark prosecution, litigation support and opinion work. Please contact James K. Poole, 970-472-5061,

Patent Searches by Noted Expert

Recommended by Jim Poole (CBA member) and other patent attorneys at Please contact Stan Schwartz at or 301-806-0600 about your search needs and/or for an estimate.

Subject to editorial review, classified advertisements are printed by the IP Section free of charge and will run for three months, unless we receive a request to drop or continue running the ad. Submit or resubmit your ad by e-mailing the proposed text to Danny Sherwinter at

Call for Suggestions, Ideas, and Articles

Luncheon Program Topics and Speakers

The IP Section Officers are also soliciting your suggestions and ideas for topics and speakers for our Luncheon programs for 2013. Please forward any comments you may have to Danny Sherwinter or our Programs Committee Chairperson, John Kennedy.

Articles for The Colorado Lawyer

The IP Section is in the process of compiling and evaluating articles to publish in The Colorado Lawyer this coming year. If you have an interest in submitting an IP-related article for TCL, please contact Danny Sherwinter. We encourage individuals who may be on their own but nonetheless would like to team up with a senior or junior practitioner to contact us so we can help facilitate that relationship.

IP Section Newsletter

Subject to editorial discretion and review, the IP Section Newsletter is open to the submission of short articles and columns on IP topics of interest. If you are interested in contributing, please contact Danny Sherwinter.

ProBoPat Volunteers Needed!

ProBoPat continues to seek volunteer patent attorneys and agents. This is a great opportunity to discharge your pro bono professional responsibility in your actual area of expertise! Signing up to volunteer does not obligate you to take any particular case, and volunteers are able to check conflicts even before agreeing to meet with a potential client. CLE credit is available for volunteers. Applicants are individual inventors who have been pre-screened for income/qualifications. Right now, we have eight qualified applicants who have not yet been matched with volunteers. If interested, please send an email to, or click here to access our volunteer interest form.

Recently Filed U.S.D.C. Colorado Cases

Filed 9/25/12–10/31/12

Caption Type Date Filed Case Number Judge Filing Attorneys
Malibu Media, LLC v. Wieland Copyright 9/25/12 12cv02549 Marcia S. Krieger Jason Aaron Kotzker
Hill, et al. v. Public Advocate of the United States Copyright 9/26/12 12cv02550 Wiley Y. Daniel Christopher L. Larson
Daniel D. Williams
Daralyn J. Durie
Joseph C. Gratz
Christine P. Sun
Superior Medical Supply, Inc. v. Superior Medical Company, et al. Trademark 9/27/12 12cv02566 Philip A. Brimmer Gregg I. Anderson
Combat Zone Corp. v. Does 1-5 Copyright 9/28/12 12cv02587 R. Brooke Jackson Thomas G. Jacks
Coach, Inc., et al. v. Rocky Mountain Couture, Inc. Trademark 9/28/12 12cv02592 Marcia S. Krieger Erin Anne Kelly
Malibu Media, LLC v. John Does 1–37 Copyright 9/30/12 12cv02595 Wiley Y. Daniel Jason A. Kotzker
Malibu Media, LLC v. John Does 1–31 Copyright 9/30/12 12cv02597 Wiley Y. Daniel Jason A. Kotzker
Malibu Media, LLC v. John Does 1–22 Copyright 9/30/12 12cv02598 Robert E. Blackburn Jason A. Kotzker
Malibu Media, LLC v. John Doe 1 Copyright 9/30/12 12cv02599 William J. Martinez Jason A. Kotzker
Wyers Products Group v. Trimas Corporation Patent 10/05/12 12cv02640 Robert E. Blackburn Aaron P. Bradford
West Coast Productions, Inc. v. Does 1–38 Copyright 10/05/12 12cv02642 R. Brooke Jackson Sanjin Mutic
West Coast Productions, Inc. v. Does 1–37 Copyright 10/05/12 12cv02644 Christine M. Arguello Sanjin Mutic
Digitech Systems, Inc. v. John Grden, et al. Trademark 10/08/12 12cv02656 Christine M. Arguello J. Mark Smith
L. Jay Labe
Stan Lee Media, Inc. v. The Walt Disney Company Copyright 10/09/12 12cv02663 William J. Martinez Jon-Jamison Hill
Robert S. Chapman
John V. McDermott
Kong Company, LLC v. Perzov A.D.I. Ltd., et al. Trademark 10/15/12 12cv02740 Marcia S. Krieger Todd P. Blakely
Consumer Capital Partners LLC v. Tom’s Diner, Inc. Trademark 10/16/12 12cv02745 Christine M. Arguello Emily J. Cooper
Nadya C. Bosch
Donald A. Degnan
Burris Company, Inc. v. Aim Sports, Inc. Patent 10/19/12 12cv02780 William J. Martinez Gregg I. Anderson
Denver Mattress Co., LLC v. Mattress & Furniture Outlet LLC Trademark 10/23/12 12cv02814 R. Brooke Jackson Kathryn L. Bohmann
David E. Sipiora
Pickles, LLC v. Tru Protection, Inc. Trademark 10/25/12 12cv02828 Marcia S. Krieger Scott L. Terrell
National Jewish Health v. WebMD Health Services Group, Inc., et al. Patent 10/25/12 12cv02834 Wiley Y. Daniel Ellen E. Stewart
Gary R. Maze
James L. Wooll
Kristina M. Kalan
Heath v. Does 1–5 Trademark 10/29/12 12cv02857 Marcia S. Krieger Shane A. Garman
DE-KOR by Mile High Balusters, Inc. v. Creative Industries, LLC, et al. Patent 10/30/12 12cv02859 William J. Martinez Robert E. Purcell
Ranch-Way Feed Mills, Inc. v. Bomgaars Supply, Inc. Trademark 10/31/12 12cv02879 Robert E. Blackburn William W. Cochran
Erik G. Fischer

Please email Danny Sherwinter at with any interesting Colorado District Court IP decisions or IP news involving Colorado Companies.

IP Law Developments from BNA

Copyrights/First Sale Doctrine

Coalition Seeks to Lobby Congress in Support Of Stronger Rights Under First Sale Doctrine

Key Development: A group of organizations has come together to lobby lawmakers to support stronger protections under the first sale doctrine.

Next Steps: The Supreme Court is currently considering whether the first sale doctrine applies to creative works manufactured overseas and brought to the United States as gray market goods.

By Anandashankar Mazumdar

A coalition trumpeting the slogan “You bought it, you own it (you have a right to resell it!)” issued a statement on Oct. 23 announcing its intention to lobby lawmakers in support of stronger protections for consumers under the first sale doctrine.

The announcement comes just days before the Supreme Court is set to hear oral arguments in a case requiring resolution of a conflict between the first sale doctrine and a statute giving copyright holders the right to control distribution of their works on a country-by-country basis.

The coalition, going by the name the Owners’ Rights Initiative, expressed alarm at what it called a trend of “sudden erosion of ownership rights,” according to a statement by its executive director, Andrew Shore.

The Supreme Court on Oct. 29 heard arguments in Kirtsaeng d/b/a Bluechristine99 v. John Wiley & Sons Inc., No. 11-697 (U.S., oral arguments Oct. 29, 2012) (85 PTCJ 4, 11/02/12).

At issue is a decision by a federal appeals court that the first sale doctrine does not apply to a claim of copyright infringement regarding a copy of a work lawfully made overseas and imported into the United States without the authorization of the copyright owner.

In that case, an individual from Thailand studying in the United States had cheap versions of textbooks sent to him from Thailand to be sold for a profit here on the eBay online auction website.

The problem arises from the interplay of the first sale doctrine, 17 U.S.C. §109(a), and 17 U.S.C. §602(a)(1), which gives copyright owners the right to control the initial release of a work in the United States.

Fears That Production Will Move Overseas

A legal advisor to the ORI, Marvin Ammori, was quoted in the press release as saying, “It is hard to conceive that Congress intended to incentivize manufacturers to move operations overseas, force American consumers to pay higher prices, make it hard for us to donate our own stuff to charity, and cripple the ability of libraries to lend books—without saying anything like that in the law. … [B]eing able to sell your own property is a fundamental liberty recognized for centuries and a pillar of a market economy.”

EBay Inc.’s Hillary Brill said that in considering the Kirtsaeng case, “The Supreme Court has an opportunity to protect the right of small businesses and individuals to sell legitimate goods across borders, which will benefit consumers, businesses and the overall Internet-enabled economy.” The ORI coalition includes the American Free Trade Association, the American Library Association, the Association of Research Libraries, the Association of Service and Computer Dealers and the North American Association of Telecommunications Dealers, Chegg, eBay Inc., Goodwill Industries International Inc., the Home School Legal Defense Association, Impulse Technology, the Internet Commerce Coalition, the International Imaging Technology Council, Network Hardware Resale,, Powell’s Books, Quality King Distributors Inc., Redbox, the United Network Equipment Dealers Association, and XS International.


En Banc Federal Circuit Decides That PTO Can Nix Patent Despite Contrary Court Ruling

Summary: The Federal Circuit affirms en banc that the PTO can reject a patent on reexamination for obviousness ever after the appeals court had ruled that the patent was not invalid in an obviousness challenge.

By Tony Dutra

Concluding that a panel properly upheld a Patent and Trademark Office patent rejection after a contrary appeals court holding, the U.S. Court of Appeals for the Federal Circuit denied an en banc rehearing petition Oct. 26 (In re Baxter International Inc., Fed. Cir., No. 2011-1073, en banc rehearing denied 10/26/12).

A split panel ruled May 17 that patent reexamination should take notice of a court decision, but that the PTO need not come to the same conclusion as the court. 678 F.3d 1357, 102 USPQ2d 1925 (Fed. Cir. 2012) (84 PTCJ 143, 5/25/12).

Judge Pauline Newman, who dissented to the panel majority opinion, also wrote in dissent to the en banc rehearing denial. A three-judge opinion concurring with the denial rebutted the dissent.

BPAI Rejects Patentability Despite Court Ruling

Baxter International Inc. owns a patent (5,247,434) related to hemodialysis machines. The patent claims an apparatus and methods using a computer interface to control the level of dialysates flowing through the machines. The patent issued in 1993.

Ten years later, Fresenius USA Inc. filed a declaratory judgment action in the U.S. District Court for the Northern District of California, seeking a finding of patent invalidity for obviousness.

The district court granted judgment as a matter of law in favor of Baxter. In 2009, the Federal Circuit affirmed as to the ‘434 patent, but for different reasons than cited by the lower court. Fresenius USA Inc. v. Baxter International Inc., 582 F.3d 1288, 92 USPQ2d 1163 (Fed. Cir. 2009) (78 PTCJ 604, 9/18/09). The Supreme Court denied Fresenius’s petition for writ of certiorari.

However, Fresenius had also instigated a reexamination at the PTO in 2006, and an examiner rejected the claims. The Board of Patent Appeals and Interferences had the benefit of the Federal Circuit's ruling when it handled Baxter's appeal. Nevertheless the board denied patentability for obviousness.

The board relied in part on some prior art references that had not been considered in the court’s decision. It also said, “the agency is not bound by the court’s determination.”

Baxter Appealed

The May 17 panel majority—Judge Alan D. Lourie wrote the opinion joined by Judge Kimberly A. Moore—affirmed the patent rejection for obviousness by the BPAI. The court said, “the fact is that Congress has provided for a reexamination system that permits challenges to patents by third parties, even those who have lost in prior judicial proceedings.”

Baxter then filed the petition for rehearing by the panel or en banc. The en banc court denied the petition.

Newman: Cost, Delay, and Uncertainty for Inventors

In her original panel dissent, Newman characterized the decision as a violation of the “constitution plan,” allowing an administrative body to nullify a final decision by the judiciary. She repeated her concerns and arguments in her dissent to the en banc rehearing denial.

My concern is not with the principle of patent reexamination and the useful purposes for which it was designed; my concern is that reexamination is inappropriate for redetermination of issues that have been finally determined in judicial proceeding. Since only valuable patents on successful inventions are litigated, the court has created an additional burden and disincentive to inventors, for reexamination after a patent has been sustained in court is a multiplier of cost, delay, and uncertainty, in direct negation of the principles of res judicata.

Concurrence: PTO Follow-On ‘Unremarkable.’

Judge Kathleen M. O'Malley wrote a concurring opinion to the denial, essentially as a rebuttal to Newman’s dissent.

“Nothing in [the panel] opinion, or in those on which it relies, alters the governing legal principles of res judicata or abandons the concept of finality those principles further,” O’Malley said.

In fact, she characterized as “unremarkable” the idea that the PTO could conclude that a patent was invalid “despite a final court judgment reaching a contrary conclusion as between the patent holder and one alleged infringer.” She quoted the PTO’s response to the petition here that “a subsequent reexamination decision that the patent is invalid does not disturb the judgment of the court or alter its binding effect on the parties.”

In a footnote in the dissent, Newman criticized the concurrence for the “unremarkable” remark. “Such a weighty matter should not be so casually dismissed,” Newman said.

In any case, O’Malley concluded the concurrence as follows:

The dissent’s fears, and the premise of the petition for rehearing en banc are unfounded. Well-established principles of res judicata will govern the continuing relationship between the parties to any court proceeding and will dictate whether the PTO’s reexamination ruling will have any impact on them going forward. Reassured by this fact, I concur in the denial of the request for rehearing en banc in this matter.

Chief Judge Randall R. Rader and Judge Richard Linn joined the concurring opinion.

William F. Lee of Wilmer Cutler Pickering Hale and Dorr, Boston, represented Baxter. PTO Associate Solicitor Sydney O. Johnson Jr. represented the agency. Michael E. Florey of Fish & Richardson, Minneapolis, represented Fresenius.

Trademarks/Domain Names

New TLD Applicants Push Back Against Call for Added Trademark Rights Protections

Amy E. Bivins

The time for incorporating trademark protections into the new top-level domain names program is over, applicants complained in an Oct. 24 letter to the Internet Corporation for Assigned Names and Numbers.

Rights protections are not a new issue, they wrote. “After different—and numerous—processes and negotiations, including the Implementation Recommendation Team (IRT), the Special Trademarks Issues Working Team (STI), various draft guidebooks, and the GAC-Board consultations, the ICANN Community and Board agreed, through a bottom-up consensus based process, to a balanced policy of mandatory requirements for the protection of trademarks in the final Guidebook,” they said.

The applicants’ letter took aim at an Oct. 17 letter to the Board of Directors from ICANN’s Intellectual Property Constituency and Business Constituency. Those groups called for additional trademark protections at the second level of the new domains, including an option for a paid registration block list that would apply to each new TLD.

No Second Bite

The ICANN community has already weighed added rights protections at length, the applicants complained. The new TLDs program has extensive rights protections beyond those required for existing TLDs, they wrote, adding that additional restrictions would put new registry operators at a competitive disadvantage.

“These last-minute policy recommendations amount to just another bite of the same apple that already has been bitten down to its core,” the applicants said.

Any new rights protections for new TLDs should be applied to incumbent registry operators, as well, they added. The new TLD applicant group said it has no objection to finalization of implementation details, such as resolving the costing issue of the Uniform Rapid Suspension System, but that the applicant guidebook is in final form and should not be changed this late in the process.

A special thanks goes to BNA for allowing the IP Section to print its stories. If you are interested in receiving a free 15 day trial from BNA, please contact George Tanguay at 1-800-542-1113 or at

IP Section Officer Contact Information


Michael P. Dulin
Polsinelli Shugart, P.C.
1515 Wynkoop Street #600
Denver, CO 80202

Vice Chair

Mollybeth (Molly) Kocialski
Oracle America, Inc.
500 Eldorado Blvd., M/S UBRM 01-200
Broomfield, CO 80021


Danny Sherwinter
Marsh Fischmann & Breyfogle LLP
1881 9th Street, Suite 335
Boulder, CO 80301


All correspondence, phone calls, facsimiles, and emails concerning this newsletter, as well as advertising submissions should be directed to Danny Sherwinter at

This newsletter is for information only and does not provide legal advice.

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